DETAILED ACTION
1. This is the first action on the merits relating to U.S. Application Serial No. 19/066,317 filed on February 28, 2025.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
3. Applicant’s disclosure of related application information as described in paragraph [0001] is acknowledged.
Preliminary Amendment
4. Receipt is acknowledged of the preliminary amendment filed on October 24, 2025. In the amendment, claims 1-20 were canceled, and claims 21-40 were newly added. Currently claims 21-40 remain in the examination.
Claim Objections
5. Claim 28 is objected to because of the following informalities: please amend the following section “includes at least one of: a triple data encryption algorithm, an advanced encryption standard 128, a symmetric hash-based message authentication algorithm, a symmetric cypher-based message authentication code algorithm, or any combination thereof” to “includes at least one of: a 3DES (Triple Data Encryption Algorithm), Advanced Encryption Standard (AES) 128, a symmetric Hash-Based Message Authentication (HMAC) algorithm, and a symmetric cypher-based message authentication code (CMAC) algorithm such as AES-CMAC or any combination thereof.”
Appropriate correction is required.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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7. Claims 21-23, 29-31, 37, and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,657,754 B1 to Osborn et al. (hereinafter “754 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other as the following claim comparison would show.
Instant Application
754 patent
Claim 21
A computer-implemented method, comprising:
receiving, using at least one processor, a personal identification number (PIN);
comparing, using the at least one processor, the received PIN to a stored PIN; and
generating, using the at least one processor, upon the received PIN matching the stored PIN,
a cryptogram using a dynamic key, the dynamic key being formed using a counter value, the cryptogram including contactless card data encoded using the dynamic key.
Claim 1
A method for dual factor authentication of a request for access to an account associated with a client includes the steps of:
receiving an input personal identification number (PIN) from a user interface; engaging a contactless card, the contactless card storing a PIN associated with the client; communicating the input PIN to the contactless card;
receiving, in response to a match of the input PIN with the stored PIN,
a cryptogram from the contactless card, the cryptogram formed using a dynamic key of the contactless card, the dynamic key formed using a counter value maintained by the
contactless card, wherein the cryptogram comprises contactless card data that is encoded using the dynamic key;
communicating the cryptogram to an authenticating device; and authorizing the request in response to authentication of the cryptogram by the authenticating device.
Claim 22
The method of claim 21, wherein a contactless card is configured to generate the cryptogram.
See claim 1 above (included in claim 1).
Claim 23
The method of claim 22, wherein the contactless card is configured to maintain the counter value.
See claim 1 above (included in claim 1).
As shown in the claim comparison above, the limitation of claim 21 of the instant application is fully disclosed in claim 1 of 754 patent (see the underlined section). Although claims are not verbatim identical, all steps of claim 21 are disclosed in the corresponding claim of 754 patent. Since claim 1 of 754 patent is comprised of additional limitations, the scope of claim 21 of the instant application is broader.
Claims 29-31 are limited to a system but identical to the method claim. Claims 37-38 are limited to a computer program product and they are identical to the method claim. In the art of smart card, a transaction system utilizing the card, the method, the device, the system and the computer program are generally considered as the same subject matter. See the claims of US 11,080,961 for example.
Allowable Subject Matter
8. Claims 24-28, 32-36, 39, and 40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
9. The following is a statement of reasons for the indication of allowable subject matter: Claims are directed at a computer-implemented method, comprising:
receiving, using at least one processor, a personal identification number (PIN); comparing, using the at least one processor, the received PIN to a stored PIN; and generating, using the at least one processor, upon the received PIN matching the stored PIN, a cryptogram using a dynamic key, the dynamic key being formed using a counter value, the cryptogram including contactless card data encoded using the dynamic key wherein the counter value is associated with a transaction.
This is a combination of claims 21 and 24 as an example. The limitations in other objected claims are also allowable.
Conclusion
The pertinent prior arts made of record but not relied are listed in the attached form PTO-892. These are considered pertinent to Applicant's disclosure. Applicant is respectfully suggested to carefully review these references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ahshik Kim whose telephone number is (571)272-2393. The examiner can normally be reached between the hours of 8:00 AM to 5:00 PM Monday thru Friday. Examiner’s fax phone number is (571)273-2393.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael G. Lee, can be reached on (571)272-2398. The fax phone number for this Group is (571)273-8300.
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/AHSHIK KIM/Primary Examiner, Art Unit 2876
February 26, 2026