]FINAL OFFICE ACTION
REISSUE OF U.S. PATENT NO. 11,270,301
TABLE OF CONTENTS
1. ACKNOWLEDGEMENTS 3
2. ADDITIONAL TERMS 4
3. REISSUE PROCEDURAL REMINDERS 5
4. STATUS OF CLAIMS 5
5. PRIORITY AND AIA STATUS 6
6. INFORMATION CONSIDERED 6
7. PRIOR ART CITED 7
8. RESPONSE TO ARGUMENTS 7
8.1. Drawings 7
8.2. Objections to the Specification 8
8.3. Claim Objections 9
8.4. Original Patent Requirement (35 USC § 251) 9
8.5. New Matter (35 USC §§ 112 and 251) 10
8.6. Indefiniteness (35 USC § 112) 12
9. DRAWINGS 13
10. SPECIFICATION 14
11. BROADEST REASONABLE INTERPRETATION (BRI) 15
12. CLAIM INTERPRETATION AND 35 USC § 112, SIXTH PARAGRAPH 18
12.1. Functional Phrase #1 or FP#1 19
12.1.1. Prong (A) 19
12.1.2. Prong (B) 21
12.1.3. Prong (C) 22
12.1.4. Corresponding Structure for Functional Phrase #1 22
12.2. Functional Phrase #2 24
12.2.1. Prong (A) 24
12.2.2. Prong (B) 24
12.2.3. Prong (C) 25
12.2.4. Corresponding Structure for Functional Phrase #2 26
13. CLAIM REJECTIONS – 35 USC § 251 (Original Patent Requirement) 26
14. CLAIM REJECTIONS – 35 USC § 251 (New Matter) 28
15. CLAIM REJECTIONS – 35 USC § 112, FIRST PARAGRAPH 29
15.1. New Matter 29
16. CLAIM REJECTIONS – 35 USC § 112, SECOND PARAGRAPH 36
16.1. Insufficient Disclosure Of Corresponding Structure 36
16.2. Conclusion of 35 USC § 112, Second Paragraph Rejection 37
17. ALLOWABLE SUBJECT MATTER 37
18. CONCLUSION 40
ACKNOWLEDGEMENTS
This final Office action addresses U.S. reissue application No. 19/201,245 (“Instant Application”). Based upon a review of the Instant Application, the actual filing date is 07 May 2025 (“Actual Filing Date”).
The Instant Application is a reissue application of U.S. Patent No. 11,270,301 (“Patent Under Reissue” or “'301 Patent”) titled “SYSTEM AND METHOD FOR MANAGING MERCHANT-CONSUMER INTERACTIONS.”
An application for the Patent Under Reissue was filed on 09 June 2014 (“Base Application Filing Date”) and assigned by the Office non-provisional U.S. patent application number 14/299,653 (“Base Application” or “'653 Application”) and issued on 08 March 2022 with claims 1–17 (“Originally Patented Claims”).
On 14 October 2025, a non-final Office action was issued (“Oct 2025 Non-Final Action”).
On 08 January 2026, Applicant submitted a response to the Oct 2025 Non-Final Action (“Jan 2026 Response”).
This final Office action addresses the Jan 2026 Response.
ADDITIONAL TERMS
The following terms may appear in this Office action and, unless expressly noted otherwise, are defined as follows:
“POSITA” refers to a Person of Ordinary Skill in the Art.
“BRI” refers to Broadest Reasonable Interpretation.
“MPEP” refers to Manual of Patent Examining Procedure, Ninth Edition, Rev. 01.2024.
“IFW” refers to Image File Wrapper.
“35 USC” refers to Title 35 of the United States Code.
“37 CFR” refers to Title 37 of the Code of Federal Regulations.
“AIA ” refers to America Invents Act.
“Original Application” means the prosecution history of the Base Application, including the applications in the patent family’s entire prosecution history. See MPEP § 1412.02.
“Original Disclosure” means the substantive sections of the Base Application (i.e., the abstract, drawings, specification, and original claims) that were present in the Base Application on the Base Application Filing Date.
“Applicant” (uppercase) refers to the Applicant of the Instant Application.
“applicant” (lowercase) refers to an applicant(s) generally.
“patent owner” (lowercase) refers to a patent owner(s) generally and not the Applicant.
“Examiner” (uppercase) refers to the Examiner of the Instant Application.
“examiner” (lowercase) refers to an examiner(s) generally, e.g. the examiner of the Base Application, or any examiner(s) other than the Examiner.
REISSUE PROCEDURAL REMINDERS
Disclosure of other proceedings. Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the Patent Under Reissue is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Disclosure of material information. Applicant is further reminded of the continuing obligation under 37 CFR § 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue appli-cation.
These disclosure obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Manner of making amendments. Applicant is reminded that changes to the Instant Application must comply with 37 CFR § 1.173, such that all amendments are made in respect to the Patent Under Reissue as opposed to any prior changes entered in the Instant Application. All added material must be underlined, and all omitted material must be enclosed in brackets, in accordance with Rule 173. Applicant may submit an appendix to any response in which claims are marked up to show changes with respect to a previous set of claims, however, such claims should be clearly denoted as “not for entry.”
STATUS OF CLAIMS
Claims 1–10 and 18, as set forth in the Jan 2026 Response, are currently pending (“Pending Claims”) and currently examined (“Examined Claims”).
Regarding the Examined Claims and as a result of this Office action:
Claims 1–10 and 18 are rejected under 35 USC § 251.
Claims 1–10 and 18 are rejected under 35 USC § 112 ¶1.
Claim 4 is rejected under 35 USC § 112 ¶2.
PRIORITY AND AIA STATUS
Domestic Priority. Based upon a review of the Instant Application and the Patent Under Reissue, the Examiner finds that in the Instant Application there is a claim for benefit of domestic priority under 35 USC §§ 120 or 119(e) to parent application no. 13/282,292 (“Parent Application”). To the extent the disclosure of the Parent Application supports the Pending Claims under 35 USC § 112, First Paragraph, the supported claims receive benefit of an effective date of 26 October 2011, which is the filing date of the Parent Application.
AIA Status. Because the purported effective filing date is before 16 March 2013, the AIA provisions do not apply. Instead, the pre-AIA “First to Invent” provisions will govern this proceeding. See 35 USC § 100 (note). In the event the determination of the status of the application as subject to pre-AIA 35 USC §§ 102 and 103 is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
INFORMATION CONSIDERED
The information disclosure statement filed 08 January 2026 (“Jan 2026 IDS”) has been considered. An initialed copy of the Jan 2026 IDS is enclosed herewith.
In accordance with MPEP § 1406, the Examiner has reviewed and considered the prior art cited or “of record” in the original prosecution of the Patent Under Reissue. Applicant is reminded that a listing of the information cited or “of record” in the original prosecution of the Patent Under Reissue has been considered in the Instant Application and need not be resubmitted.
PRIOR ART CITED
The following prior art patents and printed publications are cited below:
U.S. Patent Application Publication 2011/0258121 (“Kauniskangas”); and
U.S. Patent Application Publication 2014/0114780 (“Menefee”).
RESPONSE TO ARGUMENTS
Applicant’s arguments presented in the Jan 2026 Response have been fully considered by the Examiner. A response to Applicant’s arguments is provided in the following enumerated subsections.
Drawings
With respect to “Item (1),” Applicant’s arguments on pages 19–25 have been fully considered and are not persuasive. For example, Applicant does not persuasively argue that the drawings show the communication interface (i.e., interface 68 in fig. 5) is communicatively coupled to a point of sale terminal (POS terminal), as claimed. Nowhere in fig. 5 is the interface 68 directly coupled to a POS terminal or to anything else for an indirect coupling to a POS terminal. With respect to fig. 3, there is disclosure of a “POS station” (box 46). The box 46 (of fig. 3) does appear to be in communication with computer(s) 49, though it is not clear that the POS station itself is in communication with computer(s) 49. Nevertheless, even assuming that POS station is in communication with computer(s) 49, fig. 3 does not show that it is the interface 68 (of fig. 5) that is coupled with the POS station. Therefore, the objection is maintained, since the figures do not show “a communication interface that is communicatively coupled to a server in communication with a mobile device of a user and a Point of Sale (POS) terminal that is located a merchant location,” as recited by claim 1.
With respect to “Item (2),” Applicant’s arguments on pages 25–26 have been fully considered and are not persuasive. Applicant argues that “one or more processors” is inherent to figs. 3–5. However, Applicant has not shown that the alleged inherent one or more processors is configured with “the server” (as claimed) to perform the claimed functions. Therefore, the objection is maintained, since the figures do not show “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: send […]; receive […]; verify […]; form […]; and transmit […],” as recited by claim 1.
Objections to the Specification
The Examiner objects to the specification for lack of antecedent basis with respect to claim elements (1)–(5). See below section titled “SPECIFICATION.”
With respect to claim elements (1) and (2), Applicant argues that antecedent basis is provided for the same reasons as argued above for the drawings. Jan 2026 Response at page 27. For the same reasons discussed above, this argument is not persuasive.
With respect to claim elements (3)–(6), Applicant argues that antecedent basis exists at C7:L46–55, C7:L55–67, C8:L1–20, C9:L12–26, C14:L48–67, and C15:L1–11. See Jan 2026 Response at pages 28–31. The Examiner has considered these specific citations and the emphasis placed on particular passages by Applicant. Id. The Examiner finds that these particular citations and emphasized passages do not provide antecedent basis for claim elements (3)–(6). Therefore, the objection is maintained.
Applicant argues the new matter objection is addressed by removing the previously added subject matter. Jan 2026 Response at page 31. The Examiner agrees that the removal of the previously added subject matter overcomes the new matter objection.
Claim Objections
Applicant’s arguments on pages 31–33 of the Jan 2026 Response are persuasive and the objection to the claims is withdrawn.
Original Patent Requirement (35 USC § 251)
Applicant argues,
As a general matter, the Applicant has changed claim 1 to return the “server” of the original '301 Patent to the claims. Further, the Applicant has addressed the use of the “one or more processors” and “communications interface” which performs the above functions, by at least the remarks in the “Objections to the Drawings” section above, the “Objections to the Specification” section above, and the “Claim Rejections - 35 U.S.C. § 112, First Paragraph” section below. Accordingly, as changed, claim 1 meets the original patent requirement of 35 U.S.C. § 251.
Jan 2026 Response at pages 34–35. This argument is not persuasive. The issue raised by the Original Patent Requirement rejection is that the newly claimed combination of features is not clearly and unequivocally disclosed as a separate invention from the embodiment(s) of figs. 3–7. In fact, a large portion of the new combination of features is not supported by the original patent under 35 USC § 112, First Paragraph (see rejection below). Applicant has not shown where the now claimed invention is clearly and unequivocally disclosed as a separate invention. Therefore, Applicant’s argument is not persuasive and the rejection is maintained.
New Matter (35 USC §§ 112 and 251)
With respect to Ground #1, Applicant argues “In addition to the support identified by the Office Action (at 25), further support of the communication interface and server communicating with a POS terminal or POS station is found in at least FIG. 3 and the communication of the system 49 in step 46, using the ‘POS station.’” Jan 2026 Response at page 37. The Examiner respectfully disagrees. Fig. 3 does not show that the POS station is in communication with or coupled to the interface 68.
Moreover, with respect to Ground #1, Applicant argues “Further, one of skill in the art would clearly understand that a POS terminal or POS station communicates with the communication interface and server using the acquirer API 66 of FIG. 4 and acquirer API 66 of FIG. 5.” Jan 2026 Response at page 37. The Examiner respectfully disagrees. A POSITA would understand that an acquirer would communicate using an acquirer API, not a POS terminal/station.
With respect to Ground #2, Applicant argues “For example, the system, using the one or more processors and the server ‘send’ as explained further below regarding Ground 3, ‘receive’ and ‘verify’ as explained further below regarding Ground 4, and ‘transmit’ as explained further below regarding Ground 5. The Examiner respectfully disagrees for the same reasons that follow with respect to Grounds #3, #4, and #5.
With respect to Ground #3, Applicant’s arguments on pages 40–42 of the Jan 2026 Response are persuasive in-part. In view of the remarks, the portion of the rejection of Ground #3 that would be maintained is merely cumulative to Ground #2 and/or Ground #6. Therefore, Ground #3 is withdrawn. However, with respect to the claim limitation “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: send, using the communication interface, a checkout code to the mobile device […],” as recited by claim 1, Applicant’s argument is not persuasive. Therefore, this aspect is maintained via Ground #2. In particular, Applicant first argues that “in FIG. 4, the system 60 clearly communicates with the mobile device using the server.” Jan 2026 Remarks at page 40. The Examiner respectfully disagrees. Figs. 4–5 clearly show that system 60 communicates with mobile device through interface 68 and SMS Gateway 65, not through the “SERVER” of fig. 4. Applicant does not provide any other evidence in the form of original disclosure that supports the claim limitation “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: send, using the communication interface, a checkout code to the mobile device […],” as recited by claim 1. Therefore, this aspect of the rejection of Ground #3 is maintained via Ground #2. Further aspects are maintained via Ground #6, infra.
With respect to Ground #4, Applicant argues that step 46 of fig. 3 and C8:L54–C9:L11 supports the claim limitation “receive, using the communication interface, a request to perform the payment transaction, wherein the request include a merchant code assigned to the merchant location,” as recited by claim 1. Jan 2026 Remarks at page 44. The Examiner respectfully disagrees. There is no disclosure of one or more processors or server using interface 68 to receive a request that includes the merchant code. At best, fig. 3, box 46, and corresponding disclosure at C8:L54–C9:L11, merely describes merchant code received at POS station. For example, at C9:L1–3, the '301 Patent discloses “merchant’s cashier 53 enters the prefix/merchant code provided to the merchant by the system, plus the consumer’s six digit suffix/checkout code.” Furthermore, Applicant does not traverse that the combination of FP#1 with the limitation “form a virtual payment account number by merging the checkout code with the merchant code,” is new matter. For at least these reasons, the rejection of Ground #4 is maintained.
With respect to Ground #5, Applicant argues support is found at C9:L21–26 “showing a plug-in application at the merchant obtaining entry of the VPAN as if the register/POS terminal had been programmed with the VPAN.” Jan 2026 Response at page 46. The Examiner finds that C9:L21–26 discloses “The actual entry of the number can be manual or can be through plug in application at the card terminal or merchant register. This results in the register/terminal processing as if a physical card had been presented (though without the card-swipe), or through the actual swipe of a card that has been programmed with the VPAN.” This clearly does not support the claim limitation “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: […] transmit, using the communication interface, the virtual payment account number to the POS terminal.” Therefore, the rejection is maintained.
With respect to Ground #6, Applicant argues support is found at C7:L45–55 and C14:L48–C15:L11. However, these sections make clear that it is some other device that detects the mobile device located at the merchant, not the mobile device itself. For example, C7:L53 discloses “other mobile device that detects the consumer’s location” (emphasis added). Therefore, the rejection of Ground #6 is maintained.
With respect to Ground #7, Applicant argues that the claim limitation at issue is supported by the disclosure of “range of VPANs” at C7:L36. The Examiner respectfully disagrees.
Indefiniteness (35 USC § 112)
Grounds #1 and #2 are withdrawn in view of the claim amendments.
With respect to claim 4, Applicant argues that corresponding structure for the claimed function can be found at C7:L46–55. Applicant does not point to what specific structure therein is the corresponding structure of FP#2. Therefore, the rejection is maintained since there does not appear to be sufficient corresponding structure for the entire claimed function.
DRAWINGS
The drawings are objected to under 37 CFR § 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following claim features must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
(1) “a communication interface that is communicatively coupled to a server in communication with a mobile device of a user and a Point of Sale (POS) terminal that is located a merchant location” (claim 1); and
(2) “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: send […]; receive […]; verify […]; form […]; and transmit […]” (claim 1).
Corrected drawing sheets in compliance with 37 CFR § 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as “Amended,” and any added figure must be identified as “New.” In the event that a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.” All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. If the changes are not accepted by the Examiner, the Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
SPECIFICATION
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR § 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
(1) “a communication interface that is communicatively coupled to a server in communication with a mobile device of a user and a Point of Sale (POS) terminal that is located a merchant location” (claim 1); and
(2) “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: send […]; receive […]; verify […]; form […]; and transmit […]” (claim 1);
(3) “send, using the communication interface, a checkout code to the mobile device in response to the mobile device detecting that the mobile device is located at the merchant location, wherein the checkout code is specific to the payment transaction” (claim 1; emphasis added);
(4) “receive, using the communication interface, a request to perform the payment transaction, wherein the request include a merchant code assigned to the merchant location” (claim 1; emphasis added); and
(5) “transmit, using the communication interface, the virtual payment account number to the POS terminal” (claim 1; emphasis added).
Moreover, the amendment to the abstract filed with the Jan 2026 Response is objected to under 35 USC § 132(a) and/or 35 USC § 251 because it introduces new matter into the disclosure. 35 USC § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. 35 USC § 251 states that no new matter shall be introduced into the application for reissue. The added material which is not supported by the original disclosure is as follows:
The virtual payment account number generation service is also operable to send the virtual payment account number and send a checkout code to a consumer using the consumer’s mobile device. The system sends the checkout code in response to the mobile device detecting that the mobile device is located at the merchant location. The checkout code is specific to the payment transaction. The system receives, using the communication interface, a request to perform the payment transaction. The request include a merchant code assigned to the merchant location. The system transmits the virtual payment account number to a Point of Sale (POS) terminal. The POS terminal processes the payment transaction using the virtual payment account number and an external payment processing system.
BROADEST REASONABLE INTERPRETATION (BRI)
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01 I. Moreover, it is improper to import claim limitations from the specification, e.g., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01 II. Therefore, unless otherwise noted below, the Examiner will interpret the limitations of the Pending Claims using the broadest reasonable interpretation.
After careful review of the original specification, the Examiner finds he cannot locate any lexicographic definitions (either express lexicographic definitions or implied lexicographic definitions) with the required clarity, deliberateness, and precision. Because the Examiner cannot locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his own lexicographer. See MPEP § 2111.01 IV.
The Examiner hereby adopts the following interpretations under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), the Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these interpretations are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
CPU (or processor) “n. Acronym for central processing unit. The computational and control unit of a computer. The CPU is the device that interprets and executes instructions. Mainframes and early minicomputers contained circuit boards full of integrated circuits that implemented the CPU. Single-chip central processing units, called microprocessors, made possible personal computers and workstations. Examples of single-chip CPUs are the Motorola 68000, 68020, and 68030 chips and the Intel 8080, 8086, 80286, 80386, and i486 chips. The CPU—or microprocessor, in the case of a microcomputer—has the ability to fetch, decode, and execute instructions and to transfer information to and from other resources over the computer’s main data-transfer path, the bus. By definition, the CPU is the chip that functions as the ‘brain’ of a computer. In some instances, however, the term encompasses both the processor and the computer’s memory or, even more broadly, the main computer console (as opposed to peripheral equipment). See the illustration. See also microprocessor.”
PNG
media_image1.png
206
142
media_image1.png
Greyscale
Microsoft Computer Dictionary (5th Ed. 2002).
engine “A dedicated processor, architecture, or system component that is used for a single and special purpose; for example, an inferencing co-processor (inferencing engine), floating-point processor, a print engine in a laser printer, or a database engine (software engine).” IEEE 100: The Authoritative Dictionary of IEEE Standards Terms (7th Ed. 2000).
server “2. On the Internet or other network, a computer or program that responds to commands from a client.” Microsoft Computer Dictionary (5th Ed. 2002).
CLAIM INTERPRETATION AND 35 USC § 112, SIXTH PARAGRAPH
The following is a quotation of pre AIA § 35 USC § 112, Sixth Paragraph2 (emphasis added):
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
One exception to the broadest reasonable interpretation standard occurs when a claimed phrase is interpreted in accordance with 35 USC § 112, Sixth Paragraph (“§ 112 ¶ 6”). See MPEP § 2181 et seq. To invoke § 112 ¶ 6, a claimed phrase must meet the three prong analysis (“3 Prong Analysis”) as set forth in MPEP § 2181 I.
Use of the word “means” in a claim with functional language creates a rebuttable presumption that the claim limitation should be interpreted in accordance with § 112 ¶ 6. The presumption that the claim limitation is interpreted under § 112 ¶ 6 is rebutted when the claim limitation recites sufficient structure to perform the entire claimed function.
Absence of the word “means” in a claim creates a rebuttable presumption that the claim limitation is not to be interpreted in accordance with § 112 ¶ 6. The presumption that the claim limitation is not interpreted under § 112 ¶ 6 is rebutted when the claim limitation recites function without reciting sufficient structure to perform the entire claimed function.
Claim limitations that use the word “means” are therefore being interpreted under § 112 ¶ 6, except as otherwise indicated below. Conversely, claim limitations that do not use the word “means” are not being interpreted under § 112 ¶ 6, except as otherwise indicated below.
The following phrases will be first identified and then analyzed using the MPEP’s 3 Prong Analysis to determine if the claimed phrase invokes § 112 ¶ 6. If a phrase invokes § 112 ¶ 6, the corresponding structure for the phrase will also be determined.
Functional Phrase #1 or FP#1
The first functional phrase to be considered is “one or more processors and the server are collectively configured to: […] verify an identity of the user using identifying characteristics of the mobile device.” Claim 1 (“Functional Phrase #1” or “FP#1”).
Prong (A)
In accordance with the MPEP, Prong (A) requires “the claim limitation uses the term ‘means’ […] or a term used as a substitute for ‘means’ that is a generic placeholder […] for performing the claimed function.” MPEP § 2181 I. (“Prong (A)”).3
As an initial matter, the Examiner finds that FP#1 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
With respect to the presumption that 35 USC § 112 ¶ 6 is not invoked, “[t]he question is not whether a claim term recites any structure but whether it recites sufficient structure—a claim term is subject to § 112(f) if it recites ‘function without reciting sufficient structure for performing that function.’ Williamson, 792 F.3d at 1348 (emphasis added) (quoting Watts, 232 F.3d at 880).” Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1374 (Fed. Cir. 2020).
“And, again, the question is not whether [the claim term] is utterly devoid of structure but whether the claim term recites sufficient structure to perform the claimed functions.” Egenera at 1374.
Moreover, in assessing whether or not FP#1 meets Prong (A), the Examiner must not only consider the introductory phrase “one or more processors and the server,” but the entire FP#1. “In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.” MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019).
The Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “one or more processors and the server” has achieved recognition as a term denoting structure for performing the claimed function. Similarly, the Examiner’s review of the record and search of the prior art finds no evidence that this term has achieved recognition as denoting structure for performing the claimed function. Therefore, based upon consultation of dictionaries, a review of the record, and a search of the prior art patents in this field, the Examiner concludes that the term “one or more processors and the server” is not an art-recognized structure to perform the claimed function, and claim 1 does not recite any other structure that would perform this claimed function. Therefore, FP#1 meets Prong (A).
Prong (B)
In accordance with the MPEP, Prong (B) requires “the term ‘means’ […] or the generic placeholder is modified by functional language, typically, but not always linked by the transition word ‘for’ […] or another linking word or phrase, such as ‘configured to’ or ‘so that.’” MPEP § 2181 I. (“Prong (B)”).
Based upon the claim language itself, the Examiner finds the function of FP#1 is “verify an identity of the user using identifying characteristics of the mobile device.” Claim 1 (“Function of FP#1”).
Because nothing in the Patent Under Reissue or the prosecution history of the Base Application suggests otherwise, the Function of FP#1 will have its ordinary meaning. “Ordinary principles of claim construction govern interpretation of this claim language […] and, for all the reasons discussed in the preceding two sections, we construe this function according to its ordinary meaning […].” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004)(citations omitted). “Ordinary principles of claim construction govern interpretation of the claim language used to describe the function.” Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002)(citations omitted).
Moreover, based upon consultation of dictionaries, a review of the record, and a search of the prior art patents in this field, the Examiner concludes that the Function of FP#1 is not coextensive with a general-purpose computer or microprocessor. Therefore, it appears special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#1.
Prong (C)
In accordance with the MPEP, Prong (C) requires “the term ‘means’ […] or the generic placeholder is not modified by sufficient structure […] for performing the claimed function.” MPEP § 2181 I. (“Prong (C)”).
Based upon a review of FP#1, the Examiner finds that FP#1 does not contain sufficient structure for performing the entire Function of FP#1.
In particular, based upon the express wording of FP#1, the Examiner finds that, to a POSITA, the claim language itself within FP#1 does not recite an algorithm for accomplishing the Function of FP#1 (i.e., “verify an identity of the user using identifying characteristics of the mobile device”). For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#1 is not expressly recited in claim 1.
Moreover, the term “one or more processors and the server” is not sufficient structure for executing the claimed function, nor is it modified by sufficient structure for executing the function.
Because FP#1 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#1 meets Prong (C). Because FP#1 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#1 invokes § 112 ¶ 6.
Corresponding Structure for Functional Phrase #1
“The next step in construing a means-plus-function claim limitation is to look to the specification and identify the corresponding structure for that function.” In re Aoyama, 656 F3d 1293, 1297 (Fed. Cir. 2011) quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004). “Under this second step, structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Aoyama, 656 F3d at 1297 quoting Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
Furthermore, if the claimed phase is meant to cover software, “[i]t is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 621, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015). In other words, “[i]f special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies.” Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012).
Based upon a review of the Patent Under Reissue, the Examiner finds the Function of FP#1 (i.e., “verify an identity of the user using identifying characteristics of the mobile device”) is clearly linked or associated to corresponding structure (i.e., an algorithm) found in the specification.
For example, according to the 301 Patent, “new consumer 41 creates an account and supplies information such as name, address, phone [number] and other identifying information” (C6:L67–C7:2; emphasis added), “the consumer may authenticate himself to the service by entering his phone number” (C12:L53–54; emphasis added), and “the system successfully authenticates the phone number” (C13:L14–15). In view of this disclosure, the corresponding structure of the Function of FP#1 appears to be an algorithm comprising comparing a phone number entered by the consumer to a phone number registered by the consumer as identifying information of the consumer, and determining that the phone numbers match.
Functional Phrase #2
The second functional phrase to be considered is “user’s mobile phone providing a secure identification of a valid user of a particular payment card, based on location, phone number, and phone device.” Claim 4 (“Functional Phrase #2” or “FP#2”).
Prong (A)
As an initial matter, the Examiner finds that FP#2 does not use the term “means.” Therefore the issue arising under Prong (A) then becomes whether or not the presumption that 35 USC § 112 ¶ 6 is not invoked can be overcome.
The Examiner has looked to both general and subject matter specific dictionaries and finds no evidence that the term “mobile phone” has achieved recognition as a term denoting structure to perform the claimed function. Similarly, the Examiner’s review of the record and search of the prior art finds no evidence that this term has achieved recognition as denoting structure to perform the claimed function. Therefore, based upon consultation of dictionaries, a review of the record before us, and a search of the prior art patents in this field, the Examiner concludes that the term “mobile phone” is not an art-recognized structure to perform the claimed function, and claim 4 does not recite any other structure that would perform this claimed function. Therefore, FP#2 meets Prong (A).
Prong (B)
Based upon the claim language itself, the Examiner finds the function of FP#2 is “providing a secure identification of a valid user of a particular payment card, based on location, phone number, and phone device.” Claim 4 (“Function of FP#2”).
Because nothing in the Patent Under Reissue or the prosecution history of the Base Application suggests otherwise, the Function of FP#2 will have its ordinary meaning.
Moreover, based upon consultation of dictionaries, a review of the record, and a search of the prior art patents in this field, the Examiner concludes that the Function of FP#2 is not coextensive with a general-purpose computer or microprocessor. Therefore, it appears special programming (or algorithm) is required for a general-purpose computer to perform the Function of FP#2.
Prong (C)
Based upon a review of FP#2, the Examiner finds that FP#2 does not contain sufficient structure for performing the entire Function of FP#2.
In particular, based upon the express wording of FP#2, the Examiner finds that, to a POSITA, the claim language itself within FP#2 does not recite an algorithm for accomplishing the Function of FP#2 (i.e., “providing a secure identification of a valid user of a particular payment card, based on location, phone number, and phone device”). For at least this reason, the Examiner finds that an algorithm to perform the entire Function of FP#2 is not expressly recited in claim 4.
Moreover, the term “mobile phone” is not sufficient structure for executing the claimed function, nor is it modified by sufficient structure for executing the function.
Because FP#2 does not contain sufficient structure for performing the entire claimed function, the Examiner concludes that FP#2 meets Prong (C). Because FP#2 meets the 3 Prong Analysis as set forth in MPEP § 2181 I., the Examiner concludes that FP#2 invokes § 112 ¶ 6.
Corresponding Structure for Functional Phrase #2
Based upon a review of the Patent Under Reissue and the Original Disclosure, the Examiner is unable to clearly link or associate the Function of FP#2 to sufficient corresponding structure (e.g., a sufficient algorithm) found in the specification.
Because each of the Patent Under Reissue and the Original Disclosure fails to clearly link or associate the Function of FP#2 to some corresponding structure, claim 4 is indefinite under 35 USC § 112, Second Paragraph. A rejection under 35 USC § 112, Second Paragraph is set forth below for claim 4.
CLAIM REJECTIONS – 35 USC § 251 (Original Patent Requirement)
The following is a quotation of the appropriate paragraphs of 35 USC § 251 that form the basis for the rejections under this section made in this Office action:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1–10 and 18 are rejected as failing to satisfy the original patent requirement of 35 USC § 251.
To satisfy the original patent requirement where a new invention is sought by reissue, “[…] the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares Pharma, Inc., 771 F.3d at 1363, 112 USPQ2d at 1871.
The Examined Claims include a system that broadens the Originally Patented Claims by removing limitations from the remote server and point of sale terminal (see amendment filed in the Jan 2026 Response), and instead now claim limitations to a “communications interface” communicatively coupled to “one or more processors and the server” collectively configured to perform various functions.
For example, the “one or more processors and the server” of claim 1 is “collectively configured to” perform the following five functions:
(1) “send, using the communication interface, a checkout code to the mobile device in response to the mobile device detecting that the mobile device is located at the merchant location”;
(2) “receive, using the communication interface, a request to perform the payment transaction, wherein the request include a merchant code assigned to the merchant location”;
(3) “verify an identity of the user using identifying characteristics of the mobile device”;
(4) “form a virtual payment account number by merging the checkout code with the merchant code”; and
(5) “transmit, using the communication interface, the virtual payment account number to the POS terminal.”
The Examiner finds that the original '301 Patent discloses an embodiment of figures 3–5, including “in step 44, the consumer checks in or is detected in a participating merchant location” (C7:L46–47); “in step 46, the consumer provides the merchant with the checkout code that was sent to them during check-in” (C8:L54–56); “[t]he merchant’s cashier 53 enters the prefix/merchant code provided to the merchant by the system, plus the consumer’s six digit suffix/checkout code” (C9:L1–3); and “[t]he cashier then combines the consumer checkout code with the merchant code and enters it as a ‘card number’ in the register or on the card ‘swipe’ terminal or via other means” (C9:L17–20). Similar embodiments are disclosed in relation to figures 6 and 7. These embodiments fairly represent the invention(s) disclosed in the original patent.
However, the Examiner finds that the face of the original '301 Patent does not disclose an embodiment of the invention where “one or more processors and the server,” collectively, uses a “communication interface,” coupled thereto, to (1) send a checkout code to the mobile device in response to the mobile device detecting that the mobile device is located at the merchant location; (2) receive a request to perform a payment transaction, wherein the request include a merchant code assigned to the merchant location; (3) verify an identity of the user using identifying characteristics of the mobile device; (4) form a virtual payment account number by merging the checkout code with the merchant code; and (5) transmit the virtual payment account number to the POS terminal, as now claimed by the broadened Examined Claims.
Therefore, the combination of features in newly amended claim 1 is not clearly and unequivocally disclosed as a separate invention, e.g., as an invention separate from the invention disclosed in the original patent, supra.
Because the specification does not clearly and unequivocally disclose the newly claimed invention as a separate invention, the Examined Claims do not meet the original patent requirement of § 251.
CLAIM REJECTIONS – 35 USC § 251 (New Matter)
Claims 1–10 and 18 are rejected under 35 USC § 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is described below in § CLAIM REJECTIONS – 35 USC § 112, FIRST PARAGRAPH.
CLAIM REJECTIONS – 35 USC § 112, FIRST PARAGRAPH
The following is a quotation of the first paragraph of pre-AIA 35 USC § 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 1–10 and 18 are rejected under 35 USC § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain 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(s), at the time the application was filed, had possession of the claimed invention.
New Matter
Ground #1
Claim 1 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitation introduces new matter, “a communication interface that is communicatively coupled to a server in communication with a mobile device of a user and a Point of Sale (POS) terminal that is located a merchant location.”
Applicant’s disclosure does not use the term “communication interface.” Nevertheless, the '301 Patent discloses “Backbone 67 includes interface 68 that manages communications to and from external components 61.” C11:L32–34. Therefore, because “interface 68” “manages communications,” the Examiner finds that “interface 68” provides sufficient written description support for the claimed “communication interface.” The Examiner also finds that “interface 68,” as shown in figure 5, is a component of “system” 60 or “generation engine” 60. See '301 Patent at C11:L5–41. The Examiner also finds that “interface 68” is coupled to a mobile phone through SMS Gateway 65. See '301 Patent at figs. 4–5. However, while system 60 is shown in fig. 4 as coupled to a “SERVER,” neither of fig. 4 or fig. 5 show that it is “interface 68” that is coupled to the “SERVER.” Moreover, the “interface 68” is not disclosed as “communicatively coupled to” “a Point of Sale (POS) terminal that is located a merchant location,” as claimed. While the '301 Patent discloses that a merchant uses the web browser 62 to interact with system 60 (see C12:L11–12), there is no disclosure that such interaction includes a POS terminal coupled to the interface 68. Therefore, claim 1 includes new matter.
Dependent claims 2–10 and 18 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Ground #2
Claim 1 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitations introduce new matter, “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: send […]; receive […]; verify […]; form a [VPAN] […]; and transmit [the VPAN] to the POS terminal.”
Applicant’s disclosure does not use the term “one or more processors.” As discussed above with respect to Ground #1, the disclosed “interface 68” provides support for the claimed “communication interface.” The Examiner also finds that database 72 (fig. 5) provides support for the claimed “database.” Therefore, the Examiner finds sufficient written description support for “the database and the communication interface,” as claimed. However, there is no disclosure of “one or more processors that are communicatively coupled” to database 72 and interface 68, let alone one or more processors that are configured (collectively with the server) to perform the specific functions of “send […]; receive […]; verify […]; form a [VPAN] […]; and transmit [the VPAN] to the POS terminal,” as now claimed. For example, fig. 3 shows system 49 as, what appears to be, a group of three computers. In that case, a POSITA would understand the three computers to be “one or more processors,” as claimed. However, the '301 Patent does not disclose that the system 49 performs the functions of “send […]; receive […]; verify […]; form a [VPAN] […]; and transmit [the VPAN] to the POS terminal,” as now claimed.
Dependent claims 2–10 and 18 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Ground #4
Claim 1 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitations introduce new matter, “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: […] [2] receive, using the communication interface, a request to perform the payment transaction, wherein the request include a merchant code assigned to the merchant location, [3] verify an identity of the user using identifying characteristics of the mobile device, [4] form a virtual payment account number by merging the checkout code with the merchant code.”
As discussed above with respect to Ground #1, the disclosed “interface 68” provides support for the claimed “communication interface.” The '301 Patent also discloses “At check out, consumer 91 presents the checkout code 106 to the merchant 94, and merchant 94 combines the merchant code (the prefix, as described with reference to FIGS. 2b and 2c) with the consumer’s checkout code (the suffix) to create the [VP]AN to be used in the transaction. The merchant then enters the VPAN as the payment mechanism for the transaction 107 which is sent to the merchant’s acquirer 95.” C15:L51–58. However, there is no disclosure that one or more processors (coupled to database 72 and interface 68) and the server use the interface 68 to perform the function “receive […] a request to perform [a] payment transaction, wherein the request includes a merchant code assigned to the merchant location,” as now claimed.
Moreover, with respect to the claimed function “verify an identity of the user using identifying characteristics of the mobile device,” i.e., Function of FP#1 (discussed above), the Examiner finds that the corresponding structure is an algorithm comprising comparing a phone number entered by the consumer to a phone number registered by the consumer as identifying information of the consumer, and determining that the phone numbers match. However, this verification procedure is done with respect to forming a VPAN as a combination of the user’s phone number and checkout code, which is an alternative embodiment to forming a VPAN by merging a checkout code with a merchant code, as claimed. Therefore, the new claim including the use of the verification procedure (algorithm noted above) with the checkout code and merchant code is new matter. In other words, there is no disclosure of “form a virtual payment account number by merging the checkout code with the merchant code,” in combination with “[Function of FP#1],” as now claimed, where the verification procedure is an algorithm comprising comparing a phone number entered by the consumer to a phone number registered by the consumer as identifying information of the consumer, and determining that the phone numbers match.
Finally, with respect to the now claimed “form a virtual payment account number by merging the checkout code with the merchant code [i.e., the merchant code that is received, using the communication interface, in the request to perform the payment transaction].” (Emphasis added). While the “form a [VPAN]” function is generally supported by the disclosure at C15:L51–58, the merging disclosed (i.e., the disclosure of “combines the merchant code […] with the consumer’s checkout code” – '301 Patent at id.) does not use a merchant code that is “receive[d], using the communication interface, [in] a request to perform the payment transaction,” as now claimed. Moreover, there is no support that the “form a [VPAN]” function is performed by “one or more processors” coupled to the interface and database, “and the server,” as now claimed. For example, the above noted disclosure at C15:L51–58 includes combining the checkout code and merchant code at the POS terminal, which does not read on the claimed “one or more processors that are communicatively coupled to the database and the communication interface” (at least because the one or more processors also perform the claimed function “transmit […] the [VPAN] to the POS terminal”).
Dependent claims 2–10 and 18 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Ground #5
Claim 1 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitation introduces new matter, “one or more processors that are communicatively coupled to the database and the communication interface, wherein the one or more processors and the server are collectively configured to: […] transmit, using the communication interface, the virtual payment account number to the POS terminal.”
As discussed above with respect to Ground #1, the disclosed “interface 68” provides support for the claimed “communication interface.” However, there is no disclosure of using interface 68 to transmit the VPAN to the POS, as now claimed. For example, the '301 Patent discloses “At check out, consumer 91 presents the checkout code 106 to the merchant 94, and merchant 94 combines the merchant code (the prefix, as described with reference to FIGS. 2b and 2c) with the consumer’s checkout code (the suffix) to create the [VP]AN to be used in the transaction. The merchant then enters the VPAN as the payment mechanism for the transaction 107 which is sent to the merchant’s acquirer 95.” C15:L51–58. This disclosure does not reasonably support using interface 68 to transmit the VPAN the POS, as claimed. The Examiner is unable to locate any other sufficient disclosure for this limitation.
Dependent claims 2–10 and 18 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Ground #6
Claim 1 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitation introduces new matter, “the mobile device detecting that the mobile device is located at the merchant location.”
The '301 Patent discloses,
As shown in step 44, the consumer checks in or is detected in a participating merchant location. This can be accomplished by any known or future mechanism, such as by having the consumer send a text or SMS message to the system, having the user activate an app on a smart phone that reads a bar code or Quick Response (QR) code at the merchant location, using a geo location or geo fencing feature or a phone or other mobile device that detects the consumer’s location, social networking, or any other mechanism to alert, detect and/or verify the consumer’s location.
'301 Patent at C7:L45–55 (emphasis added). The above disclosure describes how a consumer “checks in […] in a participating merchant location” or how a consumer “is detected in a participating merchant location.” However, this disclosure does not provide support for the claim language “the mobile device detecting that the mobile device is located at the merchant location,” which requires that the mobile device perform “detecting that the mobile device is located at the merchant location.”
Moreover, this computer-implemented functional language does not have adequate written description support under 35 USC § 112 ¶1 because the specification does not disclose a mobile device (computer) and algorithm in sufficient detail for performing the function “detecting that the mobile device is located at the merchant location.” In other words, the '301 Patent does not set forth how the inventor intends to achieve “the mobile device detecting that the mobile device is located at the merchant location,” as claimed. See MPEP § 2161.01 I.
Dependent claims 2–10 and 18 fail to cure this deficiency of independent claim 1 (set forth directly above) and are rejected accordingly.
Ground #7
New claim 18 does not comply with the written description requirement because it contains new matter. Particularly, for the reasons set forth below, the following limitation introduces new matter, “wherein the checkout code is selected from a range of available numbers determined by the merchant code assigned to the merchant location.”
The '301 Patent discloses “[t]he system then sends the merchant 52 the payment prefix(es), or merchant codes(s), which are based on the range of the VPANs used for this merchant for transactions at that merchant.” C7:L34–37. However, there is no disclosure of a checkout code selected from a range of available numbers determined by the merchant code, as now claimed.
CLAIM REJECTIONS – 35 USC § 112, SECOND PARAGRAPH
The following is a quotation of 35 USC § 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 4 is rejected under 35 USC § 112 (pre-AIA ), Second Paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Applicant regards as the invention.
Insufficient Disclosure Of Corresponding Structure
As noted above, FP#2 (claim 4) invokes 35 USC § 112 ¶ 6. See § CLAIM INTERPRETATION AND 35 USC § 112, SIXTH PARAGRAPH.
However, the Original Disclosure fails to disclose the corresponding structure for performing the entire claimed function and to clearly link the structure to the function. See § CLAIM INTERPRETATION AND 35 USC § 112, SIXTH PARAGRAPH, above, for an explanation of why the Original Disclosure does not include the corresponding structure. Therefore, claim 4 is indefinite and is rejected under 35 USC § 112, Second Paragraph.
Conclusion of 35 USC § 112, Second Paragraph Rejection
The Examiner has considered all limitations in the Examined Claims even though some claim limitations are indefinite. See MPEP § 2143.03 I. ¶1 noting that “[a] claim limitation which is considered indefinite cannot be disregarded.” However, the Examiner concludes that because claims 1–10 and 18 are indefinite under § 112 ¶2, these claims, by definition, cannot be properly construed. See e.g. Honeywell International Inc. v. ITC, 341 F.3d 1332, 1342 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Therefore in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing prior art rejections (or indicating allowance of the claims) even though certain claims are indefinite, these indefinite claims are construed and the prior art is currently applied as much as practically possible. Applicant is reminded that when a particular § 112 ¶2 rejection is overcome by Applicant, and the claim limitation can then then be properly construed, the Examiner will reevaluate the prior art using this proper claim construction and then reassess the patentability of the claim over the prior art.
ALLOWABLE SUBJECT MATTER
The Examined claims are rejected under 35 USC §§ 112 and 251, but are allowable over the prior art of record.
With respect to claim 1, Kauniskangas discloses,
send […] a checkout code (“OTP”) to the mobile device […] ([0044], “a predetermined number of OTPs are generated during service initialization and transmitted to the UE 101”),
wherein the checkout code is specific to the payment transaction ([0042], “an OTP is a password that is valid for a single use (e.g., a single transaction or payment)”),
receive […] a request to perform the payment transaction ([0051], “the audio payment manager 109a retrieves the password (e.g., if only an index is specified), a PIN code associated with the user, a user ID of the user, a session code, transaction details, etc. For example, the PIN code may be requested on launching or accessing the audio payment manager 109a. The exact information to be retrieved can be configured based, at least in part, on a security level setting of the audio payment manager 109a, a desired user experience, or similar factors. For example, in some cases, manually entering a PIN code and session code to initiate a payment or access the audio payment manager 109a can be cumbersome. More specifically, requiring entry of both a PIN code and session code can be slower than requiring entry of only the PIN code. Requiring the session code may also require that the user obtain the session code from the merchant terminal 103. However, in many cases the user may need to look at the merchant terminal 103 anyway, for instance, to check the price of the transaction or obtain other transaction details, so there may not be a significant degradation of the user experience by requiring entry of both the PIN code and session code.”; [0065]),
wherein the request include a merchant code (“session code”) assigned to the merchant location ([0064], “The merchant application 109b then derives transaction data from based on the input and transmit the data authorization center 109c to obtain a session code. As discussed previously, the session code enables the system 100 to tie the transaction and resulting audio token to the specified transaction to prevent possible replay attacks. Based on the transaction data, the authorization center generates a session code (step 609) and transmits the code to the merchant code over the data connection (step 611). In response, the merchant application 109b displays the transaction amount and the session code and waits for the consumer application to initiate payment (step 613).”),
verify an identity of the user […] ([0043], “For example, if someone borrows or steals a UE 101 equipped with the audio payment manager 109, it would not be possible to use the manager 109 to make a payment without the PIN code. In another embodiment, the PIN code may be combined with the OTP so that if a hacker reads an OTP from the UE 101, the hacker would nonetheless be unable to create a valid audio token for payment without the PIN code to the manager 109.”; [0051], “For example, the PIN code may be requested on launching or accessing the audio payment manager 109a.”),
form a virtual payment account number (“audio token”) by merging the checkout code (“OTP”) with the merchant code (“session code”) ([0051]–[0054]), and
transmit […] the virtual payment account number to the POS terminal ([0055], “audio payment manager 109a then conveys the audio token to the merchant terminal 103”),
wherein the POS terminal processes the payment transaction using the virtual payment account number and an external payment processing system ([0055], “The merchant terminal 103 then uses its network connection to validate the audio token with the authorization center 107”).
However, Kauniskangas does not expressly disclose that the OTP (checkout code) is sent in response to the mobile device detecting that the mobile device is located at the merchant location, as claimed, nor that the user’s identity is verified using identifying characteristics of the mobile device, as claimed. In particular, and with respect to verifying the user’s identity, Kauniskangas does not disclose the corresponding structure of the Function of FP#1, i.e., an algorithm comprising comparing a phone number entered by the consumer to a phone number registered by the consumer as identifying information of the consumer, and determining that the phone numbers match. Therefore, claim 1 is allowable over Kauniskangas. Moreover, the prior art of record does not cure the deficiencies of Kauniskangas. For example, Menefee teaches send […] a checkout code to the mobile device in response to […] detecting that the mobile device is located at the merchant location ([0032]); however, in Menefee, it is not the mobile device itself that performs the “detecting,” as claimed. Therefore, claim 1 is also allowable over the prior art of record.
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 Jacob Coppola whose telephone number is 571-270-3922.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached at 571-272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of this proceeding may be obtained from the USPTO’s Patent Center. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (in USA or Canada) or 571-272-1000.
General inquiries may also be directed to the Central Reexamination Unit customer service line at (571) 272-7705.
/JACOB C. COPPOLA/Primary Examiner, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
1 While at least one definition, of a term, is cited because the term is found in the Examined Claims, the Examiner may have provided an additional definition(s) to help interpret a word(s), a phrase(s), or a concept(s) found in a definition itself, in the prior art, or in the Patent Under Reissue.
2 “Paragraph 6 of 35 U.S.C. § 112 was replaced with newly designated § 112 ¶ 6 when § 4(c) of the America Invents Act (AIA ), Pub. L. No. 112-29, took effect on September 16, 2012. Because the applications resulting in the patents at issue in this case were filed before that date, we will refer to the pre-AIA version of § 112.” Mobile Media Ideas LLC v. Apple Inc., 780 F.3d 1159, 1168 n3 (Fed. Cir. 2015).
3 See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed Cir. 2000) where the CAFC set forth the standard for determining if a functional phase overcomes the presumption that § 112 ¶ 6 is not invoked (i.e., invokes 112 ¶ 6) when a phrase does not use the word “means.”