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 .
Priority
CONTINUATION
This application is a continuation application of U.S. application no. 18/120,513 filed on March 13, 2023, now U.S. Patent 12,248,928 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on November 10, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 21-23, 29-33 and 36-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 12-18 and 20 of U.S. Patent No. 12,248,928.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 merely removes language from issued claims 1, 12 and 20. Claim 22 recites language that was present in issued claims 1, 12 and 20. Claim 23 recites language that was present in issued claims 1, 12 and 20. Therefore claims 21-23 are all anticipated by issued claims 1, 12 and 20. Claim 29 is identical to issued claims 3 and 14. Claim 30 is identical to issued claims 4 and 15. Claims 31 and 32 recite language that is identical to the language of issued claims 2 and 13. Claim 36 recites language that is identical to the language of issued claims 6-7 and 17-18. Claim 37 recites the same operations as instant claim 21 and therefore is also anticipated by issued claims 1, 12 and 20. Claim 38 recites language identical to issued claims 5 and 16. Claim 39 recites operations that are present in issued claims 1, 12 and 20. Therefore claims 21-23, 29-33 and 36-39 are rejected as being anticipated by issued claims 1-7, 12-18 and 20 of issued patent 12,248,928.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-30 and 39-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 23 recites “…validating the cryptogram”. Claim 39 contains a similar recitation. In reviewing the written disclosure it is apparent that no algorithm is recited for performing the validation. MPEP § 2161.01 (I) recites that “… original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” Validating a cryptogram is a specialized function and as the private key is common to both the server and the contactless card (which implies use of a symmetric key) if validating constitutes verifying a signature then some algorithm must be used in tandem with the symmetric key (such as HMAC). However no such algorithm is disclosed and as no further description of the validation is recited that would alternatively dictate some other type of algorithm the claim must be held as merely claiming a result without sufficient detail as to how the inventor intended the function to be performed.
Claims 24-30 are also rejected as being either directly or indirectly dependent upon claim 23.
Claim 40 is rejected as being dependent upon claim 39.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 30 recites the limitation "upon clicking on the deep link or app clip" in the language “The non-transitory, computer-readable medium of claim 27, wherein the user is prompted to tap the contactless card to the user device upon clicking on the deep link or app clip.” There is insufficient antecedent basis for this limitation in the claim. The rejection can be overcome by amending claim 30 to recite “The non-transitory, computer-readable medium of claim [[27]] 29”.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Examiner’s search did not reveal any prior art that fairly read on every element of the claims, nor did Examiner see where the available prior art would lend itself to making any form of combination that would allow for the formation of a combination of references. D’Agostino et al. (U.S. Patent Publication 20190238517, hereinafter referred to as D’Agostino) discloses the use of cryptograms and customer identifiers but the cryptogram is a static cryptogram shared between the issuer and the customer. However in the broadest reasonable interpretation this static cryptogram could be viewed as reading on a customer identifier as it is unique to each customer and provides the issuer with access to the profile of a particular customer. What is clearly not taught by D’Agostino is the API that would be used to provision account information to a merchant device. D’Agostino does teach the use of an API to communicate information from a merchant call center to a terminal device within the call center but the functionality of this API is operating entirely within the confines of the call center as shown in Figures 1 and 2B and as the function of the call center is not clearly explained Examiner does not believe that this part of D’Agostino clearly reads on the merchant device of the claim. Newman et al. (U.S. Patent Publication 2020/0106620, hereinafter referred to as Newman) does disclose a customer identifier (0100) and the use of cryptograms (0120). What is clearly not taught by Newman is the calling of one or more application programming interfaces of a merchant device in response to a payment request message received from the merchant device and subsequently provisioning the account information to the merchant device via the APIs. Yee et al. (US Patent Publication 20220417024, hereinafter referred to as Yee) discloses the encryption of a customer ID (0037, 0038) and the successful decryption of the customer ID but does not involve any merchant transactions and is instead granting access to a device where a notification is sent to the host device that access has been granted. Yee also does not teach anything other than a generic use of APIs in paragraph 0099. Benkreira et al. (U.S. Patent Publication 2021/0365951, hereinafter Benkreira) discloses the decryption of a customer ID (0033) but does not communicate via a user device as Benkreira is only using the card for communication with an ATM (0020-0022). Benkreira discloses merchant APIs (0023) however these are used by the ATM to determine what payment types a particular merchant will accept so that a temporary payment card specific to the merchant may be issued and do not involve using an API to provide account information to a merchant device from a server. Examiner would also comment that two references, U.S. Patent Publications 2022/0345309 and 2022/0139511, disclose some of the recited features (both references disclose a cryptogram based on the customer identifier) but as these references name inventors common to this application are disqualified as prior art under 35 U.S.C. § 102 (b)(1)(B) as falling within the grace period pertaining to an inventor’s own disclosure. The closest non-patent literature that Examiner was able to find was Berg, “Fundamentals of EMV”, Smart Card Alliance, last modified on February 26, 2013, 37 pages which describes an EMV Smart Card and discloses on the Slide “EMV Chip Data” (page 7 of the 37 pages) that two fields are directed towards Cardholder Name and Cardholder Name Extended but does is silent with regard to the use of these fields and is also silent with regard to the provisioning of account data via an API to a merchant device. Therefore as there is no nexus between the references that would allow for forming a combination and even if there were such a nexus would not cover all of the limitations of the recited claims, particularly the calling of the API and the provisioning of account information to the merchant device via the API Examiner deems that claims 21-40 are allowable over the prior art provided that the double patenting rejection and the rejections under section 112 can be overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Do et al. “A Formal Security Analysis of the W3C Web Payment APIs: Attacks and Verification”, July 30, 2021, 70 pages discloses web payment APIs that integrate payment as a native function into web browsers and analyzes potential security problems associated with web payment APIs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 6:00 to 9:45 and 10:30 to 2:45.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699