SUPPLEMENTAL 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 .
Claim Rejections - 35 USC § 102
This office action supersedes the office action filed 12/17/25.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2-6, 8-11, 13-18 and 20-21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Allen et al, US Pub. 2004/0124246.
Allen et al disclose a smart card integrated circuit; different card applications programs may be provided on and executed by IC 318; the same IC 318 may be programmed to behave like a credit card issued by a card issuer such as American Express or MasterCard, a bank card issued by a local bank, or a health insurance card issued by an insurance carrier; each functionality may be selected by a use; when a user selects a particular card application, software on IC 318 may be programmed such that only the selected application is visible to card reader 104, i.e., communicates with card reader 104 via electrical interface plate 226; the card reader 104 may be provided as a contactless interface with a corresponding antenna on smart card 102 as an interface device for IC 318; when the user is authenticated, the user is prompted to select a card application from a list of personalities associated with the card, such as a credit card, a debit card, or a healthcare card; private key infrastructure can be implemented between the embedded terminal 302 and the smart card IC 318 to encrypt communication messages. (See par. 0058-0078). The system and method of this prior art can perform all the functions and method steps set forth in the claims.
Allen et al disclose a system and method for validating and operating an access card comprising: receive, by an application executing on the processor from an account application executing on a device and via a network, authentication credentials associated with an account (Fig. 4, step 404); determine, by the application, that the authentication credentials are valid to access the account (verify and authenticate the user, par. 0070); receive, by the application, a request to activate a contactless card assigned to the account, the request comprising encrypted data, the encrypted data based at least in part on a private key assigned to the contactless card (par. 0070, 0078); decrypt, by the application, the encrypted data based on the private key (once a private key selected to encrypt the data, the private key will also be used to decrypt); determine, by the application, a type of the contactless card; determine, by the application, a plurality of terms associated with the type of the contactless card (par. 0060); transmit, by the application, the determined plurality of terms to the account application executing on the device (par.0081); receive, by the application from the account application, an indication specifying acceptance of the plurality of terms (once a decision is made the server will notify through the application); and storing, by the application based on the decryption of the encrypted data and the received indication specifying acceptance of the plurality of terms, an indication in a database specifying the contactless card is activated for use (par. 0091); the computer-readable program code executable by the processor to cause the processor to: transmit an indication to the account application executing on the device specifying that the contactless card is activated for use (par. 0070, 0076); the computer-readable program code executable by the processor to cause the processor to: receive, by the application, a plurality of attributes from a user profile associated with the contactless card, the plurality of attributes comprising at least the type of the contactless card and an address associated with the contactless card; and determine, by the application, the plurality of terms based on the type of the contactless card and the address associated with the contactless card, wherein at least one term of the plurality of terms is based on the address (par. 0053, Fig. 4, the information such as the card number and address associated with the card to activate the card); the computer-readable program code executable by the processor to cause the processor to: determine, by the application based on a user profile associated with the contactless card, that the contactless card is a replacement of a previous contactless card specified in the user profile; determine, by the application, a date of the previous contactless card; determine, by the application, a previous plurality of terms associated with the previous contactless card; and determine, by the application based on the date of the previous contactless card and a date of the contactless card, a subset of the plurality of terms associated with the contactless card that have changed relative to the plurality of terms associated with the previous contactless card (the system is able to activate new of replacement card); the computer-readable program code executable by the processor to cause the processor to: format, by the application, the subset of the plurality of terms according to a modified format, wherein the modified format comprises one or more of a highlight effect, a bold effect, or an italics effect applied to the subset of plurality of terms; and transmit, by the application, the formatted subset of the plurality of terms to the account application (the system can interface with the user, using bold or italics, Fig. 4, 10); the computer-readable program code executable by the processor to cause the processor to: transmit, by the application to the account application executing on the device, a uniform resource locator (URL) directed to the plurality of terms associated with the contactless card (the server has unique URL for communication between the card user and the server, par. 0024).
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. 11,210,656 (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 7, 12, and 19 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 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 receiving a request to activate a contactless card, determining the type of the contactless card based on a profile associated with the contactless card, transmitting the information to a user device, receiving an indication specifying acceptance of the information from the user device, determining a date of a previous contactless card to determine previous information associated with the previous contactless card, determining, by the server based on the date of the previous contactless card and a date of the contactless card, a subset of the information associated with the contactless card that have changed relative to the information associated with the previous contactless card, formatting, by the server, the subset of the information according to a modified format, wherein the modified format comprises one or more of a highlight effect, a bold effect, or an italics effect applied to the subset of the information, and transmitting, by the server, the formatted subset of the information to the device. These limitations in conjunction with other limitations in the claims were not shown by the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mossler et al (US Pub. 2021/0004786) disclose systems and methods for providing online hybrid card interactions. Eckert et al (US Patent No. 8,162,208) disclose systems and methods for user identification string generation for selection of a function.
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
/DANIEL ST CYR/Primary Examiner, Art Unit 2876