DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status
2. This communication is in response to the Preliminary Amendment filed on 03.28.2025. Accordingly, claims 8 and 10 have been amended; claim 9 has been cancelled, and new claim 21 has been added. Therefore, claims 1-8, and 10-21 remain pending in this application.
Oath/Declaration
3. The Applicant’s oath/declaration has been reviewed by the Examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
4. As required by M.P.E.P. 609(C), the Applicant’s submission of the Information Disclosure Statement (IDS) dated 03.10.2025 is acknowledged by the Examiner. The cited references have been considered in the examination of the claims. As required by M.P.E.P 609 C (2), a copy of the PTOL-1449 initialed, signed and dated by the Examiner is attached to the instant Office action.
Priority / Filing Date
5. Applicant’s claim for priority of US Application filed on 11.16.2016 is acknowledged. The Examiner takes the US Application date of 11.16.2016 into consideration.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
7. Claims 1-8, and 10-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Patent No.: 11,049,087. Although the claims are not patentably distinct from each other because the claims are directed to the same invention.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The mapping of Exemplary Claim 1 of the immediate application to Exemplary Claim 1 of the patent:
Immediate Application
Patent No.: 11,049,087
Claim 1: A method of submission of payment transaction requests from a point of sale (POS) terminal to a transaction server of a financial institution, the method comprising: reading financial institution routing information from a payment vehicle by way of a payment device connected to a point of sale (POS) terminal; reading a payment vehicle certificate from the payment vehicle by way of the payment device connected to the POS terminal; ….. and submitting a payment transaction request to the transaction server of the financial institution over a computer network using the financial institution routing information, a POS terminal certificate, and the payment vehicle certificate.
Claim 1: A method of submission of payment transaction requests from a point of sale (POS) terminal to a transaction server of a financial institution, the method comprising: reading a payment vehicle certificate from a payment vehicle by way of a payment device connected to a point of sale (POS) terminal; …..; and submitting a payment transaction request to the transaction server of the financial institution over a computer network using financial institution routing information, a POS terminal certificate, and the payment vehicle certificate.
Claim Rejections - 35 USC § 103
8. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
9. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
10. Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hammad, Pub. No.: US 2010/0293381 in view of Kawan et al., Patent No.: US 8,117,125.
As per claim 1, Hammad discloses a computer-implemented method for processing a request through an authentication service [see at least ¶0034 (e.g., user presents his or her portable consumer device to a merchant at a point-of-sales location to pay for an item or service), and the abstract (e.g., optionally to a payment processing network), and see FIG. 1 below], the method comprising:
receiving, by the authentication service, a first request for validating a POS terminal from a POS terminal [see at least ¶0010 (e.g., the verification token and the entity (e.g., validation entity or gateway) may perform a mutual authentication process before the verification token sends the identification information), and see FIG. 1 below];
validating, by the authentication service, the POS terminal [see at least ¶0010 (e.g., the verification token and the entity (e.g., validation entity or gateway) may perform a mutual authentication process before the verification token sends the identification information), and see FIG. 1 below];
receiving, by the authentication service, a second request for validating a payment vehicle certificate and financial institution routing data from the POS terminal; validating, by the authentication service, the payment vehicle and the financial institution routing data [see at least ¶0014 and 0015 (e.g., transmitting the device verification value to a payment processing network), and see FIG. 1 below]:
FIG. 1 illustrates some exemplary embodiments of the invention.
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Hammad discloses all elements per claimed invention as explained above. Hammad does not expressly disclose a terminal certificate. However, Kawan discloses Methods and systems for controlling certificate-based open payment transactions involving a merchant and a customer utilizing various types of networks and terminals. Prior to accessing a merchant POS terminal or, for example, a merchant website, a customer obtains a certificate from a service provider (SP), such as a bank, certifying his identification (ID) and his relevant financial information, in a form that is understandable by the SP. The SP is capable of performing multiple functions. For example, the SP is capable of acting as a certificate authority when it issues the customer's certificates, an authenticator when it receives private-key encrypted certificates from the customers to be decrypted using the corresponding public-key, and an authorizing authority when it checks the value available in a customer' chosen payment account against the requested purchase or transfer amount [see at least the abstract].
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to incorporate the teaching of Kawan in order to provide methods and systems for facilitating financial transaction over various networks [Kawan: background of the invention].
As per claims 2 and 3, Hammad discloses wherein the first request and the second request include a private encryption key, a public encryption key, identification information, or temporal information [see at least ¶0038 (e.g., The verification token 40 reads the identification information from the user's portable consumer device 5, and sends at least a portion of the identification information in a secure manner (e.g., in an encrypted form) to validation entity 80 to request a device verification value for the portable consumer device 5), see ¶0039, and as shown in FIG. 6].
FIG. 7 illustrates an exemplary identification information that can be send by a verification token and used by a validation entity.
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As per claims 4-6, Hammad discloses further comprising: transmitting, by the authentication service, a validation confirmation of the POS terminal certificate to the POS terminal [see at least the rejection of claim 1 above. Similar rationale is noticed for the combination of Hammad and Kawan, as noted in claim 1 above. In light of the preceding examination, claims 4-6 is hereby rejected on grounds substantially similar to those articulated in the rejection of claim 1. As detailed in the prior rejection, the rationale and basis for rejecting claim 1 are applicable to claims 4-6. For a comprehensive understanding of the rejection grounds, reference is made to the detailed explanation provided in the rejection of claim 1, which is incorporated herein by reference].
As per claim 7, Hammad in view of Kawan discloses verifying, by the authentication service, the financial institution certificate based on validity period or signature data [see at least Kawan (e.g., the electronic memory 23 is capable of storing other large files/programs 24 such as biometric identifying information 36, a digital signature generation program 30, and memo balances 38 as well as the on-card generated encryption keys 28 used to encrypt any or all of these files for security), and also illustrated in FIG. 3 below].
FIG. 3 is a diagram of the electronic memory of a smart card used in practicing the invention.
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Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made to incorporate the teaching of Kawan in order to provide methods and systems for facilitating financial transaction over various networks [Kawan: background of the invention].
As per claims 8 and 10, Hammad discloses transmitting, by the authentication service, a validation confirmation of the financial institution certificate to the POS terminal; and transmitting, by the authentication service, the validation confirmation of the financial institution certificate to the financial institution [see at least the rejection of claim 1 above. Similar rationale is noticed for the combination of Hammad and Kawan, as noted in claim 1 above. In light of the preceding examination, claims 8 and 10 is hereby rejected on grounds substantially similar to those articulated in the rejection of claim 1. As detailed in the prior rejection, the rationale and basis for rejecting claim 1 are applicable to claims 8 and 10. For a comprehensive understanding of the rejection grounds, reference is made to the detailed explanation provided in the rejection of claim 1, which is incorporated herein by reference].
11. Claims 11-17, which are parallel to claims 1-8, and 10 in terms of scope, limitations, and share similar characteristics, as discussed and examined above. Consequently, they are rejected based on the same logical and underlying reasoning, and justification that apply to claims 1-8, and 10. The similarity between these claims necessitates the same grounds for rejection, as explained in detail above [note the discussion of claims 1-8, and 10].
12. Claims 18-21, which are parallel to claims 1-8, and 10 in terms of scope, limitations, and share similar characteristics, as discussed and examined above. Consequently, they are rejected based on the same logical and underlying reasoning, and justification that apply to claims 1-8, and 10. The similarity between these claims necessitates the same grounds for rejection, as explained in detail above [note the discussion of claims 1-8, and 10].
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The PTO-1449 form has been reviewed and considered.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Garcia Ade whose telephone number is (571)272-5586. The examiner can normally be reached on Monday - Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 517-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Garcia Ade/Primary Examiner, Art Unit 3627
/GA/Primary Examiner, Art Unit 3627
GARCIA ADE
Primary Examiner
Art Unit 3687
Prosecution Insights