DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Amendment filed on 05/26/2026 is acknowledged.
Claims 1-20 are pending and have been examined.
Response to Amendment/Arguments
Double Patenting Rejection
Applicant' s amendments to claims 1, 9 and 16 have not overcome the previous rejections of the nonstatutory obviousness-type double patenting over U.S. Patent No. 11,775974 and 12,265,967, set forth in the prior office action; therefore, the rejection(s) are maintained.
Rejections under 35 U.S.C. §101
Applicant' s amendments to claims 1, 9 and 16 have overcome the previous rejections under 35 U.S.C. §101. Accordingly, the previous rejections are withdrawn.
Rejections under 35 U.S.C. §103
Applicant' s amendments to claims 1, 9 and 16 have overcome the previous rejections under 35 U.S.C. §103. Accordingly, the previous rejections are withdrawn.
Double Patenting
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,775,974 (“ ‘974 patent”).
Independent claims 1, 9 and 16 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the ‘974 patent recites:
A computing system for detecting compromised merchants in a payment card network, the computing system comprising:
at least one processor in communication with at least one memory; and
the at least one memory storing instructions, that when executed by the at least one processor, cause the at least one processor to perform the steps of:
receiving historical transaction data associated with a plurality of historical transactions carried out at a plurality of merchants;
determining, based upon the historical transaction data, historical values for key merchant variables for each merchant of the plurality of merchants;
storing the historical key merchant variable values in the at least one memory;
receiving current transaction data associated with a plurality of current transactions from a merchant of the plurality of merchants, wherein the plurality of current transactions are processed at the merchant of the plurality of merchants, wherein the plurality of current transactions comprises transactions and test transactions of payment accounts, wherein the test transactions are initiated at the merchant over the payment card network during a testing period;
determining, based upon the current transaction data, current values for the key merchant variables for the merchant;
generating, utilizing at least one of machine learning and artificial intelligence techniques, one or more detection models based upon the historical key merchant variable values to identify abnormalities in the current transaction data;
comparing, in real-time utilizing the one or more detection models, the current key merchant variable values with the historical key merchant variable values for the merchant;
identifying, in real-time utilizing the one or more detection models, abnormalities between the current key merchant variable values and the historical key merchant variable values for the merchant;
determining, based upon the identified abnormalities, that the merchant is a compromised merchant and the test transactions processed at the compromised merchant are fraudulent;
identifying a merchant computing system of the compromised merchant being used to process the test transactions, wherein the merchant computing system is a compromised merchant computing system;
based on the identified compromised merchant computing system, identifying at least one of code fixes and security patches for the compromised merchant computing system of the compromised merchant; and
transmitting a notification to the compromised merchant, wherein the notification comprises an alert of the compromised merchant computing system, and the at least one of code fixes and security patches for the compromised merchant computing system, wherein the transmitting the notification further comprises deploying the at least one of the code fixes and the security patches to the compromised merchant computing system.
Claim 1 of the ‘974 patent differs since claim 1 of the ‘974 patent recites additional claim limitations, “receiving historical transaction data associated with a plurality of historical transactions carried out at a plurality of merchants;” “determining, based upon the historical transaction data, historical values for key merchant variables for each merchant of the plurality of merchants;” “storing the historical key merchant variable values in the at least one memory;” “receiving current transaction data associated with a plurality of current transactions from a merchant of the plurality of merchants, wherein the plurality of current transactions are processed at the merchant of the plurality of merchants, wherein the plurality of current transactions comprises transactions and test transactions of payment accounts, wherein the test transactions are initiated at the merchant over the payment card network during a testing period;” “generating, utilizing at least one of machine learning and artificial intelligence techniques, one or more detection models based upon the historical key merchant variable values to identify abnormalities in the current transaction data;” “comparing, in real-time utilizing the one or more detection models, the current key merchant variable values with the historical key merchant variable values for the merchant;” “…in real-time utilizing the one or more detection models…” “transmitting a notification to the compromised merchant, wherein the notification comprises an alert of the compromised merchant computing system, and the at least one of code fixes and security patches for the compromised merchant computing system…” However, it would have been obvious to a person of ordinary skill in the art to modify claim 1 of the ‘974 patent by removing the limitations directed to the historical transaction data processing and the use of machine learning and artificial intelligence techniques resulting generally in the claims of the present application since the claims of the present application and the claim recited in the ‘974 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 9 and 16 of the present application are also rejected on the same basis as reciting similar limitations to claim 1 of the present application. Claims 9 and 16 of the present application correspond to claims 1 and 16 of the ‘974 patent.
Dependent claims 2-8, 10-15, 17-20 of the present application
Claims 2, 10 and 17 of the present application correspond to claims 2, 10 and 17 of the ‘974 patent.
Claim 3 of the present application corresponds to claim 3 of the ‘974 patent.
Claims 4, 11 and 18 of the present application correspond to claims 4, 11 and 18 of the ‘974 patent.
Claims 5, 12 and 19 of the present application correspond to claims 5, 12 and 19 of the ‘974 patent.
Claims 6, 13 and 20 of the present application correspond to claims 6, 13 and 20 of the ‘974 patent.
Claims 7 and 14 of the present application correspond to claims 7 and 14 of the ‘974 patent.
Claims 8 and 15 of the present application correspond to claims 8 and 15 of the ‘974 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,265,967B2 (“ ‘967 patent”) in view of the ‘974 patent.
Independent claims 1, 9 and 16 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the ‘967 patent recites:
A computing system for detecting compromised merchants in a payment card network, the computing system comprising:
at least one processor in communication with at least one memory; and
the at least one memory storing instructions, that when executed by the at least one processor, cause the at least one processor to perform the steps of:
storing historical key merchant variable values for each of a plurality of merchants in the at least one memory;
receiving current transaction data associated with a plurality of current transactions from a merchant of the plurality of merchants, wherein the plurality of current transactions comprises test transactions of payment accounts;
determining, based upon the current transaction data, current key merchant variable values for the merchant;
identifying, in real-time, abnormalities between the current key merchant variable values and the historical key merchant variable values for the merchant;
determining, based upon the identified abnormalities, that the merchant is a compromised merchant and the test transactions processed at the compromised merchant are fraudulent and associated with a security breach;
identifying a compromised merchant computing system associated with the compromised merchant;
identifying, based on the identified compromised merchant computing system, at least one of code fixes and security patches tailored to address the security breach associated with the fraudulent test transactions; and
deploying the at least one of code fixes and security patches to the compromised merchant computing system to address the security breach associated with the fraudulent test transactions.
Claim 1 of the ‘‘967 patent differs since claim 1 of the ‘967 patent recites additional claim limitations, “storing historical key merchant variable values for each of a plurality of merchants in the at least one memory;” “receiving current transaction data associated with a plurality of current transactions from a merchant of the plurality of merchants, wherein the plurality of current transactions comprises test transactions of payment accounts;” “determining…and test transactions processed at the compromised merchant are fraudulent and associated with a security breach;” “…in real-time …;” “…the security breach associated with the fraudulent test transactions…” However, it would have been obvious to a person of ordinary skill in the art to modify claim 1 of the ‘‘967 patent by removing the limitations directed to storage of historical key merchant variable values, receipt of current merchant transaction data comprising test transactions of payment accounts and the security breach associated with the fraudulent test transactions resulting generally in the claims of the present application since the claims of the present application and the claim recited in the ‘967 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
The ‘974 patent teaches utilizing at least one of artificial intelligence (AI) or machine learning (ML) techniques for identifying data abnormalities and compromised machine computing system, as well as wherein the deploying comprises causing the identified compromised merchant computing system to execute at least one of the deployed code fixes or the deployed security patches (‘964 patent: claim 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of the ’967 patent to incorporate the teachings of use of artificial intelligence or machine learning techniques for identifying data abnormality and compromised merchant computing system for deployment of code fixes or patches, as disclosed in the ‘974 patent, for improved fraud detection (‘974 patent: 1:53).
Dependent claims 2-8, 10-15, 17-20 of the present application
Claims 2, 10 and 17 of the present application correspond to claims 2, 10 and 17 of the ‘‘967 patent.
Claim 3 of the present application corresponds to claim 3 of the ‘‘967 patent.
Claims 4, 11 and 18 of the present application correspond to claims 4, 11 and 18 of the ‘‘967 patent.
Claims 5, 12 and 19 of the present application correspond to claims 5, 12 and 19 of the ‘‘967 patent.
Claims 6, 13 and 20 of the present application correspond to claims 6, 13 and 20 of the ‘‘967 patent.
Claims 7 and 14 of the present application correspond to claims 7 and 14 of the ‘‘967 patent.
Claims 8 and 15 of the present application correspond to claims 8 and 15 of the ‘‘967 patent.
Allowable Subject Matter
Claims 1-20 would be in condition for allowance if the double patenting rejections are obviated.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclose.
CAMERON et al. (US 2022/0227915A1) teaches a transaction analysis engine with customized service-specific transaction classifiers using service-specific machine learning models being trained based on historical transaction data.
Zoldi et al. (US 11,023,963B2) teaches a method for detecting compromise of financial transaction instruments associated with a merchant or automated teller machine (ATM).
APPADURAI, E. (US 2015/0033216A1) teaches a method for applying hot fixes to metadata customizing user interactions based on a software program.
Gerald et al. (US 2016/0217470) teaches a method for enhancing fraud detection based on transactions at potentially compromised locations.
MICHEL et al. (US 2017/0024828A1) teaches a method for determining a potential payment card that has been tested or a testing site.
Chasko S. (US 6,738,749B1) teaches a system for creating, storing and retrieving secure transaction receipts.
Hayhow (US 2011/0078034A1) teaches point of same terminal fraud detection.
Ding et al. (US 2014/0324699A1) teaches a method of determining a testing model and providing a testing transaction score for transactions.
LEE (WO 2022/005469A1) teaches updates for point of sale devices.
Griegel et al. (US 8,567,669B2) teaches merchant profile builder.
Das (US 2021/0192641A1) teaches processing of clearing records associated with payment transactions.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENYUH KUO whose telephone number is (571)272-5616. The examiner can normally be reached Monday-Friday 8-4 PM EST.
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/CHENYUH KUO/Primary Examiner, Art Unit 3697
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