DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 filed May 7, 2025 are pending and are hereby examined.
Double Patenting
3. 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).
4. 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).
5. 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.
6. 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.
7. Claims 1-20 are rejected on the ground of provisional nonstatutory double patenting as being unpatentable over claims 1-2, 4-5, 7-9, 11-12, 14-16, 18-19, and 21-27 of U.S. Patent 12,327,234. In fact, the ‘234 patent is more detailed and more specific and encompasses almost all of the elements of the broader, current ‘460 application as seen below.
8. This is an obviousness nonstatutory double patenting rejection because although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed limitations from the present application and U.S. Patent 12,327,234 above are significantly similar and the claimed features seem to be identical with various obvious alternate methods. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375. For these reasons, claims 1-20 of the instant application are not identical to claims 1-2, 4-5, 7-9, 11-12, 14-16, 18-19, and 21-27 of U.S. Patent 12,327,234, but they are not patentably distinct.
Claim Rejections - 35 USC § 103
9. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
10. 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.
11. 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.
12. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
13. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over D’Souza et al (US 2018/0241577) in view of Piparsaniya et al (US 2020/0097952) and Thakkar et al (US 2019/0386984).
14. Re Claims 1, 10, 16: D’Souza discloses comprising:
one or more processors (see [0055, 0103] processor);
memory storing thereon instructions that, as a result of being executed by the one or more processors, cause the system to perform a method including (see [0103, 0104] memory):
emitting a presence audial tone at a point-of-sale device, wherein the presence audial tone denotes a presence at the point-of-sale device, and wherein when the presence audial tone is received at a user device, the user device establishes a secure communications session with the point-of-sale device (see [0058] computing devices may be separated by spatial gap up to 6 feet, authentication may be restricted to taking place only within predefined physical proximity, [0028] receiving acoustic data, [0044] detecting acoustic signal, decoding data);
and processing the authenticated transaction by demodulating the confirmation audial tone to obtain the payment confirmation (see [0053] frequency demodulation).
However, D’Souza fails to disclose the following. Meanwhile, Piparsaniya teaches:
receiving a confirmation audial tone through the secure communications session at the point-of-sale device, wherein the confirmation audial tone encodes payment confirmation corresponding to a transaction (see [0078] confirmation regarding generation of voice currency token to payor or designated payee, transferring either or both encrypted voice currency token and confirmation regarding generation of voice currency token);
comparing the confirmation audial tone against the expected characteristics to authenticate the transaction (see [0071] comparing information extracted from voice data);
From the teaching of Piparsaniya, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify D’Souza’s proximity-based security with Piparsaniya’s confirmation in order “… for secure electronic payment transactions based on voice generated currency tokens (see Piparsaniya Abstract).”
However, D’Souza and Piparsaniya fail to disclose the following. Meanwhile, Thakkar teaches:
determining expected characteristics of the confirmation audial tone using an algorithmic library (see [0026] determine two-factor authentication password through encryption of audio communications).
From the teaching of Thakkar, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify D’Souza’s proximity-based security with Piparsaniya’s confirmation in and Thakkar’s teaching of expected characteristics in order “… for two-factor authentication through ultrasonic audio transmissions (see Thakkar Abstract).”
15. Re Claims 2, 11, 17: However, D’Souza and Piparsaniya fail to disclose the following. Meanwhile, Thakkar teaches wherein the expected characteristics are based on a current time (see [0026] determine two-factor authentication password through encryption of audio communications). From the teaching of Thakkar, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify D’Souza’s proximity-based security with Piparsaniya’s confirmation in and Thakkar’s teaching of expected characteristics in order “… for two-factor authentication through ultrasonic audio transmissions (see Thakkar Abstract).”
16. Re Claims 3, 12, 18: However, D’Souza and Piparsaniya fail to disclose the following. Meanwhile, Thakkar teaches wherein the expected characteristics are based on identifying information corresponding to the point-of-sale device (see [0026] determine two-factor authentication password through encryption of audio communications). From the teaching of Thakkar, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify D’Souza’s proximity-based security with Piparsaniya’s confirmation in and Thakkar’s teaching of expected characteristics in order “… for two-factor authentication through ultrasonic audio transmissions (see Thakkar Abstract).”
17. Re Claims 4, 13, 19: D’Souza discloses wherein the point-of-sale device is implemented without network connectivity (see [0027] without need for Bluetooth, wireless, or network connectivity; see [0050] user-requested authentication).
18. Re Claims 5, 14, 20: D’Souza discloses further comprising rejecting a replayed audial tone, wherein the replayed audial tone is identical to the confirmation audial tone (see Fig. 5C rejection).
19. Re Claim 6: D’Souza discloses further comprising receiving a user device audial tone that encodes cryptographic information for performing a handshake process to establish the secure communications session (see [0075, 0080] handshake).
20. Re Claim 7: However, D’Souza and Piparsaniya fail to disclose the following. Meanwhile, Thakkar teaches further comprising displaying an indication that the authenticated transaction has been processed (see [0086] completion message displayed). From the teaching of Thakkar, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify D’Souza’s proximity-based security with Piparsaniya’s confirmation in and Thakkar’s teaching of processed transactions in order “… for two-factor authentication through ultrasonic audio transmissions (see Thakkar Abstract).”
21. Re Claim 8: D’Souza discloses wherein the presence audial tone encodes information of an entity associated with the point-of-sale device (see [0029] encodes).
22. Re Claim 9: D’Souza discloses wherein the expected characteristics include frequency, pitch, amplitude, or pattern (see [0029] frequency, [0056] amplitude, [0027] acoustic pattern).
Examiner Notes
23. The Examiner suggests clarifying what devices are performing these steps exactly (emitting presence audial tone, receiving confirmation audial tone, determining expected characteristics, comparing confirmation audial tone, processing authentication transaction). The Examiner suggests incorporating dependent claims 5, 6, 8, and 9 together into the independent claims. The Examiner suggests clarifying how the proximity is detected. The Examiner suggests clarifying what is receiving the device audial tone, and what does that audial tone consist or compose of. The Examiner suggests clarifying what is meant by device audial tone, from which device exactly. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
Conclusion
24. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Zakariyya et al (An Efficient Polar Coding Scheme for Uplink Data Transmission in Narrowband Internet of Things Systems, NPL) is found to be the most pertinent NPL prior art.
25. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
26. 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.
27. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Florian Zeender can be reached on 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627
