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 .
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.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,645,656 (hereinafter ‘656 Patent). 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 ‘656 Patent. For instance in claim 1 of the current application and in the ‘656 Patent, the applicant claims:
Application No. 19/203,665
Patent No. 11,645,646
A method, comprising: receiving, by a server
from a device, a request to activate a
contactless card, the request comprising
encrypted authentication data generated by
the contactless card; decrypting, by the server,
the encrypted authentication data;
determining, by the server based on a profile
associated with the contactless card, that the
contactless card is a first type of contactless
card of a plurality of types of contactless
cards; determining, by the server, information
associated with the first type of the
contactless card; transmitting, by the server,
the information to the device; receiving, by
the server from the device, an indication
specifying acceptance of the information; and
storing, by the server based on the decryption
of the encrypted authentication data and the
received indication specifying acceptance of
the information, an indication specifying the
contactless card is activated for use; wherein
the encrypted authentication data is distinct
from payment data generated by the
contactless card.
A method, comprising: receiving, by a server, a request from a device, the request comprising a cryptogram, wherein the cryptogram is generated by a contactless card and read by the device; decrypting, by the server, the cryptogram; receiving, by the server, a plurality of attributes from a user profile associated with the contactless card, the plurality of attributes comprising at least a type of the contactless card and an address associated with the contactless card; determining, by the server based on the type of the contactless card, that the contactless card is a first type of contactless card of a plurality of types of contactless cards; determining, by the server based on the type of the contactless card and the address associated with the contactless card, a plurality of terms associated with the first type of contactless card, wherein at least one term of the plurality of terms is based on the address; transmitting, by the server, the plurality of terms to the device; receiving, by the server from the device, an indication specifying acceptance of the plurality of terms; and storing, by the server based on the decryption of the cryptogram and the received indication specifying acceptance of the plurality of terms, an indication in a database specifying the contactless card is activated for use.
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 claims 1-20 of the ‘656 Patent as a general teaching for a method to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘656 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘656 Patent [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).
Allowable Subject Matter
Claims 2-21 will be allowed upon filing of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: The applicant teaches a computing apparatus and a method for activating contactless cards which includes requesting activation of a contactless card wherein the request has encrypted authentication data generated by the contactless card, determining the type of the contactless card based on a profile associated with the contactless card, receiving an indication specifying acceptance of the information from the user device, determining by the server information associated the type of the contactless card, transmitting the information to a user device, receiving by the server from the device an indication of acceptance of the information by the user, etc. These limitations in conjunction with other limitations in the claims were not shown by the prior art of record.
Response to Arguments
Applicant's arguments filed 5/28/26 have been fully considered but they are not persuasive. See examiner remarks.
Remarks:
In view of the arguments, the prior art rejection has been withdrawn. The claims remain rejected on the ground of nonstatutory double patenting. The instant claims obviously encompass the claimed invention of the ‘656 Patent and differ only in terminology. For instance: the instant claims recite receiving, by a server from a device, a request to activate a contactless card, the request comprising encrypted authentication data generated by the contactless card … while the ‘656 Patent recites receiving, by a server, a request from a device, the request comprising a cryptogram, wherein the cryptogram is generated by a contactless card. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘656 Patent [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 applicant’s argument is not persuasive. Refer to the rejection above.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached on M to F 8:00-8:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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
/DANIEL ST CYR/Primary Examiner, Art Unit 2876
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