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 .
CROSS-REFERENCE TO RELATED APPLICATIONS
This application is a continuation of U.S. patent application No. 19/068,156, filed 03/03/2025, which is a continuation of U.S. patent application No. 18/923,969, filed 10/23/2024, which is a continuation of US patent application No. 18/741,641, filed June 12, 2024, which is a continuation of U.S. patent application No. 18/482,880, filed October 8, 2023, which is a continuation-in-part of U.S. patent application No. 17/592,528, filed February 4, 2022, which is a continuation-in-part of U.S. patent application No. 16/724,361, filed December 22, 2019, now U.S. Patent No. 11,308,477. Application No. 16/724,361 is a continuation-in-part of U.S. patent application No. 15/787,805, filed October 19, 2017, now U.S. Patent No. 10,521,786, which is a continuation-in- part of U.S. patent application No. 15/606,270, filed May 26, 2017, now U.S. Patent No. 10,289,833, which is a continuation-in-part of U.S. patent application No. 15/134,545, filed April 21, 2016, now US. Patent No. 9,727,867, which is a continuation-in-part of U.S. patent application No. 14/835,707, filed August 25, 2015, now U.S. Patent No. 9,391,985, which is a continuation-in-part of U.S. patent application No. 14/479,266, filed September 5, 2014 and now abandoned, Application No. 14/479,266 is a continuation-in-part of U.S. patent application No. 14/145,862, filed December 31, 2013, now U.S. Patent No. 9,033,225, which is a continuation- in-part of U.S. patent application No. 13/479,235, filed May 23, 2012, now U.S. Patent No. 8,770,477, which is a continuation-in-part of U.S. patent application No. 13/065,691 filed March 28, 2011, now US. Patent No. 8,640,197, which is a continuation-in-part of U.S. patent application No. 12/260,065 filed on October 28, 2008 and now abandoned, which is a continuation-in-part of U.S. patent application No. 11/346,240 filed on February 3, 2006, now US Patent No. 7,503,489, which in turn claims priority from U.S. provisional application No. 60/674,709, filed Apr. 26, 2005. U.S. patent application No. 13/065,691 is also a continuation-in-part of U.S. patent application No. 12/357,380, filed on January 21, 2009, now U.S. Patent No. 8,656,458, which is a continuation-in-part of U.S. Patent application No. 11/405,789 filed on April 18, 2006, now U.S. Patent No. 8,590,007, which in turn claims priority from U.S. provisional application No. 60/711,346 filed on Aug. 25, 2005. US Application No. 13/065,691 is also a continuation-in-part of U.S. patent application No. 12/600,808, filed on May 29, 2007, now U.S. Patent No. 8,370,909, which in turn is a 371 (National Stage in the US) of PCT/US07/012552 filed May 29, 2007. U.S. Application No. 13/479,235 is also a continuation-in-part of U.S. patent application No. 13/290,988, filed on November 7, 2011, now U.S. Patent No. 8,413,898, which in turn is a divisional of U.S. Application No. 12/260,065, supra.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 10, and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Suzuki, US patent No. 6,612,488, in view of Voice, US Pub. 2005/0144449.
Regarding claims 1, 10, and 15, Suzuki discloses a method and system to prevent fraudulent payment in credit/debit card transaction comprising: the steps of: receiving via the mobile phone 100 the identity, wherein the identity has been input into the mobile phone, wherein the identity is at least one of the following: a social security number, a driver license number, the mobile phone number, a credit card number and a debit card number ( the main controller 120 includes credit administration processor for sending card information, Fig. 2); obtaining a confirmation of the identity (sending the user PIN to validate the process); see Fig. 2; Col. 6, line 58 to col. 7).
Suzuki fails to disclose a multi-factor authentication technique, including sending a random number to the cell phone, to validate card information.
Voice discloses a method and apparatus for providing mutual authentication between a sending unit and recipient comprising: smart cards, magnetic strip-based cards, and other transaction cards that facilitate banking transactions, credit card transactions, or any other suitable transactions; using a multi-factor authentication technique employs the use of a hardware token such as a battery operated smart card that displays a periodically changing and seemingly random number on a portion of the smart card (wherein sending the random to the user cell phone is a similar process for performing the same step of further securing the transaction which therefore, obvious); when a user wishes to execute a transaction with the smart card, the user enters the seemingly random number that changes often; the receiving transaction server compares the received code entered by the user as displayed on the smart card with a corresponding number generated by a code source generator; if the code entered by the user matches the number generated by the code source generator, the transaction is approved and the user is granted a particular right such as accessing a bank account, purchasing goods, obtaining information, gaining access to a website or other software application, or any other suitable right as desired. (see par. 0018).
It would have been obvious for a person of ordinary skill in the art at the time the invention was to modify the teachings of Suzuki to include providing a random number to the user terminal for authenticating the user in order to approve the transaction. Such modification would enhance the system security and eliminate frauds. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claim 2, further comprising, after the verification of the association between the identity and the mobile phone, the steps of: receiving a notification of the transaction, and generating a decision comprising at least one of: (i) allowing the transaction, (ii) sending an alert concerning the transaction, and (iii) preventing the transaction (Suzuki as modified by Voice would approve or deny the transaction based on the verification process).
Regarding claim 3, wherein the identity is confirmed by a bank associated with the transaction and authorized to process the user's financial transactions (see Fig. 4 of Suzuki).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 8, 15, 21-37 of copending Application No. 19/068,156 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention is a broader recitation of the reference application. For instant, in claim 1 of the current application and in the reference application, the applicant claims:
Application No. 19/201,970
Application No. 19/068,156
A method for verifying an association between a user's identity and the user's mobile phone having a mobile phone number, prior to the use of the identity and the mobile phone in a transaction, comprising, in order, the steps of: receiving via the mobile phone the identity, wherein the identity has been input into the mobile phone, wherein the identity is at least one of the following: a social security number, a driver license number, the mobile phone number, a credit card number and a debit card number; obtaining a confirmation of the identity; sending a random number to the mobile phone number; and receiving the random number via the mobile phone.
A method for monitoring a credit or debit card transaction, comprising the steps of: prior to the transaction, receiving via a mobile phone at least the last four digits of a credit or debit card number, wherein the credit or debit card is associated with a user of the mobile phone; communicating, prior to the transaction, the at least the last four digits of the card number to a bank or credit card company authorized to process transactions utilizing the credit or debit card; requesting, prior to the transaction, that a random number sent to the mobile phone be entered into the mobile phone; and receiving a geographical location associated with the transaction; at least a calculated distance between a location of the mobile phone and a location associated with the transaction, wherein the location of the mobile phone has been stored on the mobile phone and has been determined via at least one of GPS, Wi-Fi, antenna triangulation, and cellular base station ID; wherein, prior to the transaction, an association between the mobile phone and the credit card or debit card has been verified at least by:
(i) the at least the last four digits of the card number having been received via the mobile phone; and (ii) the random number having been sent to the mobile phone; and wherein the transaction is at least one of an electronic purchase and a cash withdrawal and is associated with the mobile phone.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of the claims of the reference application as a general teaching for verifying an association between a user's identity and the user's mobile phone having a mobile phone number method of authentication users and/or transaction, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the reference application and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of the reference application [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 4-9, 11-14, and 16-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and up filing of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: The applicant teaches a method for verifying an association between a user's identity and the user's mobile phone having a mobile phone number, prior to the use of the identity and the mobile phone in a transaction which includes receiving via the mobile phone the identity, obtaining a confirmation of the identity, sending a random number to the mobile phone number; and receiving the random number via the mobile phone, generating a decision having at least one of: (i) allowing the transaction, (ii) sending an alert concerning the transaction, and (iii) preventing the transaction; wherein the decision is based on at least one of a calculated score and a calculated travel speed for the transaction, and wherein the at least one of a calculated score and a calculated travel speed is based on at least: (i) a location of the mobile phone and a time associated with the location of the mobile phone, (ii) a time difference between a time associated with the transaction and the time associated with the location of the mobile phone; and (iii) the geographical proximity of the location of the mobile phone to a geographical location associated with the transaction; wherein the location of the mobile phone was obtained from the mobile phone and was determined via at least one of GPS, Wi-Fi, antenna triangulation, and cellular base station ID. These limitations in conjunction with other limitations in the claims were not shown by the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached on M to F 8:00-8:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL ST CYR/ Primary Examiner, Art Unit 2876