DETAILED ACTION
This action is in response to amendments filed 9/25/2026. Claim 1 has been amended with claims 2-20 newly added.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/24/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Nonstatutory 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 claim 1-20 of U.S. Patent No. 11,777,933. Although the claims at issue are not identical, they are not patentably distinct from each other because each and every element of the above independent claim 1 of the present application is broader and therefore anticipated by the corresponding independent claim 1 of U.S. Patent No. 11,777,933.
Claim 1
11,777,933 claim 1
A method comprising:
A method, comprising:
assigning, by a server in a database, an expected card identifier to a contactless card, the contactless card associated with an account, the server comprising a memory and a processor circuit;
receiving, by a server from a client device, a request comprising a digital link, wherein a parameter of the digital link includes a card identifier associated with a contactless card;
receiving, by the server from a client device, a request comprising a uniform resource locator (URL), a parameter of the URL comprising a card identifier, wherein the URL is transmitted by the contactless card to the client device;
extracting, by the server, the card identifier from the URL;
comparing, by the server, the extracted card identifier to the expected card identifier in the database;
determining, by the server, that the card identifier matches an expected card identifier associated with the contactless card;
determining, by the server based on the comparison, that the extracted card identifier matches the expected card identifier;
authenticating the request by the server based on the card identifier matching the expected card identifier; and
authenticating the request by the server based on the extracted card identifier matching the expected card identifier; and
transmitting, by the server to the client device, an indication specifying that the request was authenticated.
transmitting, by the server to the client device, an indication specifying that the request was authenticated.
Claims 1-20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,284,183. Although the claims at issue are not identical, they are not patentably distinct from each other because each and every element of the above independent claims 1-20 of the present application is broader and therefore anticipated by the corresponding independent claim 1 of U.S. Patent No. 12,284,183.
Claim 1
12,284,183 claim 1
A method comprising:
A method, comprising:
receiving, by a server from a client device, a request comprising a digital link, wherein a parameter of the digital link includes a card identifier associated with a contactless card;
receiving, by a server from a client device, a request comprising a uniform resource locator (URL), an entirety of the URL being a card identifier of a contactless card, wherein the URL is received by the client device from the contactless card, wherein the contactless card is associated with an account;
determining, by the server, that the card identifier matches an expected card identifier associated with the contactless card;
comparing, by the server, the card identifier to an expected card identifier associated with the contactless card in a database;
determining, by the server based on the comparison, that the card identifier matches the expected card identifier;
authenticating the request by the server based on the card identifier matching the expected card identifier; and
authenticating the request by the server based on the card identifier matching the expected card identifier; and
transmitting, by the server to the client device, an indication specifying that the request was authenticated.
transmitting, by the server to the client device, an indication specifying that the request was authenticated.
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 1-20 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.
With respect to claim 1, 8 and 15 the newly added limitation of "digital link" is not disclosed in the specification. The terms "digital link" do not show up in the specification.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DEVIN E ALMEIDA whose telephone number is (571)270-1018. The examiner can normally be reached on Monday-Thursday from 7:30 A.M. to 5:00 P.M. The examiner can also be reached on alternate Fridays from 7:30 A.M. to 4:00 P.M.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Rupal Dharia, can be reached on 571-272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN E ALMEIDA/Examiner, Art Unit 2492
