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 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.
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Claims 1-5 and 8-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12, 347, 284. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are obviously found and implied in the instant application.
Claim 1 of the instant application recites the following limitations :
1. A method, comprising: receiving, by a first application executing on a purchasing system, action data from a contactless card, wherein the action data comprises a link; determining, by the first application based on the link, a second application associated with the link; opening, by the first application, the second application; determining, by the first application based on an output of the second application displayed on a display of the purchasing system, a first context of a plurality of contexts of the purchasing system; and causing, by the first application, performance of one or more rules-based actions based on the action data, the first context, or both.
Whereas in claim 1 of US Patent No. 12, 347, 284 the applicant claims the following:
. A point-of-sale (POS) terminal, comprising: a processor; and a memory storing instructions that, when executed by the processor, cause the processor to: receive action data via a near-field communication (NFC) exchange with a contactless card, wherein the action data comprises a link; determine, based on the link, a first application associated with the link and a first page of a plurality of pages of the first application associated with the link; open the first page of the first application; determine, based on an output of the first application displayed on a display of the POS terminal, a first context of a plurality of contexts of the POS terminal, wherein the first application is one of a plurality of applications stored by the POS terminal; determine one or more rules-based actions to be performed based on the action data, the first context, or both; and cause performance of the one or more rules-based actions.
The instant claims obviously encompass the claimed invention of US Patent No. 12, 347, 284 and differ only by terminology which is well within the level of one of ordinary skill in the art. Reading claims 1-20 of the application in light of the specification, the examiners find that claims 1-20 merely recited and obvious variant of the invention already allowed in claims 1-17 of US Patent No. 12, 347, 284.
The correspondence of claims is as follows:
Claims 1, and 10 of the instant application corresponds to claims 1, 8, and 12 of US Patent No. 12, 347, 284.
Claim 2 of the instant application corresponds to claims 2, 13 of US Patent No. 12, 347, 284.
Claim 3 of the instant application corresponds to claims 3, 14 of US Patent No. 12, 347, 284.
Claim 4 of the instant application corresponds to claims 2 and 9 of US Patent No. 12, 347, 284.
Claim 5 of the instant application corresponds to claim 4 of US Patent No. 12, 347, 284.
Claim 8 of the instant application corresponds to claim 7 of US Patent No. 12, 347, 284.
Claim 9 of the instant application corresponds to claims 5 and 6 of US Patent No. 12, 347, 284.
Claim 11 of the instant application corresponds to claims 5 and 6 of US Patent No. 12, 347, 284.
Claim 12 of the instant application corresponds to claim 9 of US Patent No. 12, 347, 284.
Claim 13 of the instant application corresponds to claim 10 of US Patent No. 12, 347, 284.
Claim 14 of the instant application corresponds to claim 2 of US Patent No. 12, 347, 284.
Claim 15 of the instant application corresponds to claims 11 and 15 of US Patent No. 12, 347, 284.
Claim 16 of the instant application corresponds to claim 3 of US Patent No. 12, 347, 284.
Claim 17 of the instant application corresponds to claims 5, 16, and 6 of US Patent No. 12, 347, 284.
Claim 18 of the instant application corresponds to claims 7 and 17 of US Patent No. 12, 347, 284.
Claim 19 of the instant application corresponds to claim 14 of US Patent No. 12, 347, 284.
Claim 20 of the instant application corresponds to claims 7 and 17 of US Patent No. 12, 347, 284.
Claim Rejections - 35 USC § 102
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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 1-6 and 8-20 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by US Miranda et al. US Publication No. 20160364938.
Re Claim 1, Miranda discloses a method, comprising:
receiving, by a first application (navigation application) action data (NFC action data ) , from a contactless card (payment card SC), wherein the action data (Actions trigged by tapping) comprises a link (Paragraph 34 -P35 and See Figure 2, Steps 160 and 170 The user terminal 11, after the tapping step 160, launches at step 170 a navigation application, such as an Internet browser, with the activation URL US read from the payment card SC);
determining, by the first application(navigation application) based on the link (activation URL US), a second application (activation webpage Ap, step 190, Fig. 2 and Fig. 3) associated with the link (activation URL US); opening, by the first application(navigation application), the second application (activation webpage Ap) ; determining, by the first application (navigation application) based on an output of the second application (activation webpage Ap Fig. 3) displayed on a display of the purchasing system, a first context (activation code data ) of a plurality of contexts (Activation page record contexts , P40-43, Activation page contexts see figure 4, record used in association with the system and method to activate a payment card) of the purchasing system; and
causing, by the first application (navigation application), performance of one or more rules-based actions based on the action data, the first context, or both (P48, performing, at step 190, supplying to the user terminal access to an activation code input mask, i.e. the activation page AP, shown in FIG. 3, corresponding to the activation URL US, corresponding to the payment card SC, upon a step of submission 220 of the activation code SS, in particular through the activation page AP, performing a step 230 of comparing 230 the submitted code SS with the activation code AS generated at the server 14 and, in case of matching between the submitted code SS and the activation code AS, activating 240 the payment card SC.
Re Claim 2, Miranda discloses the method of claim 1, wherein the action data is received from the contactless card via near-field communications (NFC), wherein the action data is in an NFC Data Exchange Format (NDEF) (P25).
Re Claim 3, Miranda discloses the method of claim 1, wherein the action data is used to determine the one or more rules-based actions (activation actions) associated with a tap of the contactless card to the purchasing system (P8).
Re Claim 4, Miranda discloses the method of claim 3, wherein the action data received from the contactless card is based on a user-defined action stored in the contactless card and associated with the tap (P32) .
Re Claim 5, Miranda discloses the method of claim 1, further comprising: receiving, by the first application, a rule for causing performance of the one or more rules-based actions; and determining, by the first application, that an account associated with the contactless card satisfies the rule (P35, P36; Figure 2 ; Step 180, Step 240).
Re Claim 6, Miranda discloses the method of claim 1, wherein the output of the second application (activation webpage Ap Fig. 3) comprises an account field number, wherein the one or more rules-based actions comprise: outputting a notification to tap the contactless card to the purchasing system; receiving an account number from the contactless card; and copying the account number to the account number field (P48) .
Re Claim 8, Miranda discloses the method of claim 1, wherein the one or more rules-based actions comprise a first action and a second action of a plurality of actions, wherein the one or more rules-based actions comprise instructions to cause performance of the first action and the second action based on the action data and the determined first context (P48) .
Re Claim 9, Miranda discloses the method of claim 1, wherein the second application (STEP 190, Fig. 2) is one of a plurality of applications stored by the first application (P47) .
Re Claim 10, Miranda discloses a non-transitory computer-readable storage medium, the computer-readable storage medium including instructions that when executed by a processor of a computing system, cause the processor to:
receive, by a first application (navigation application) executing on the computing system, action data (NFC action data ) from a contactless card (payment card SC), wherein the action data (NFC action data ) comprises a link (Paragraph 34 -P35 and See Figure 2, Steps 160 and 170 The user terminal 11, after the tapping step 160, launches at step 170 a navigation application, such as an Internet browser, with the activation URL US read from the payment card SC);;
determine, by the first application (navigation application) based on the link, a second application (activation webpage Ap, step 190, Fig. 2 and Fig. 3) associated with the link (activation URL US)
open, by the first application, the second application (activation webpage Ap, step 190, Fig. 2 and Fig. 3);
determine, by the first application(navigation application) based on an output of the second application (activation webpage Ap, step 190, Fig. 2 and Fig. 3) displayed on a user interface of the computing system, a first context (activation code context ) of a plurality of contexts (Activation page record contexts see figure 4of the computing system P40-43,record used in association with the system and method to activate a payment card); and
cause, by the first application, performance of one or more rules-based actions based on the action data, the first context, or both(P48, performing, at step 190, supplying to the user terminal access to an activation code input mask, i.e. the activation page AP, shown in FIG. 3, corresponding to the activation URL US, corresponding to the payment card SC, upon a step of submission 220 of the activation code SS, in particular through the activation page AP, performing a step 230 of comparing 230 the submitted code SS with the activation code AS generated at the server 14 and, in case of matching between the submitted code SS and the activation code AS, activating 240 the payment card SC).
Re Claim 11, Miranda discloses the computer-readable storage medium of claim 10, wherein the action data comprises a plurality of elements of data action, wherein the instructions cause the processor to: parse each element of data action; and cause the performance of one or more rules-based actions based on at least one parsed element of data action (P30-P38).
Re Claim 12, Miranda discloses the non-transitory computer-readable storage medium of claim 10, wherein the action data is received via near-field communications (NFC), wherein the action data is in an NFC Data Exchange Format (NDEF) (P25).
Re Claim 13, Miranda discloses the non-transitory computer-readable storage medium of claim 10, wherein the action data is used to determine the one or more rules-based actions (activation actions) associated with a tap of the contactless card to the computing system(P8).
Re Claim 14, Miranda discloses the non-transitory computer-readable storage medium of claim 13, wherein the action data received from the contactless card is based on a user-defined action stored in the contactless card and associated with the tap(P32).
Re Claim 15. Miranda discloses The non-transitory computer-readable storage medium of claim 10, wherein the instructions further cause the processor to: receive a rule for causing performance of the one or more rules-based actions; and determine that an account associated with the contactless card satisfies the rule (P35, P36; Figure 2 ; Step 180, Step 240).
Re Claim 16, Miranda discloses The non-transitory computer-readable storage medium of claim 15, wherein the instructions further cause the processor to, based upon the contactless card satisfying the rule, request additional information from the contactless card to complete a transaction(P35, P36).
Re Claim 17, Miranda discloses The non-transitory computer-readable storage medium of claim 10, Re Claim wherein the one or more rules-based actions comprise a first action of a plurality of actions and a second action of the plurality of actions (See figure 2) .
Re Claim 18, Miranda discloses The non-transitory computer-readable storage medium of claim 17, wherein the one or more rules-based actions comprise instructions to cause performance of the first action and the second action based on the action data and the determined first context (See Figure 2).
Re Claim 19, Miranda discloses The non-transitory computer-readable storage medium of claim 10, wherein the computing system comprises a purchasing system, wherein the action data comprises action data for completing a transaction (Fig. 2).
Re Claim 20, Miranda discloses the non-transitory computer-readable storage medium of claim 10, wherein the second application is one of a plurality of applications stored by the first application(P47).
Allowable Subject Matter
Claim 7 is 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to disclose wherein the output of the second application comprises a payment request, wherein the one or more rules-based actions comprise applying rewards points from the contactless card to the payment request.
Conclusion
The following reference is cited but not relied upon:
Royyurur discloses storing, at the merchant terminal, a merchant file containing a merchant file list of one or more application identifiers (AIDs) established by the merchant and preferred by the merchant in conducting the transaction, each AID identifying one of the plurality of payment applications, with the AIDs in the merchant file list having a preferred order of use established by the merchant.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONJI N JOHNSON whose telephone number is (571)270-5266. The examiner can normally be reached 9am-9pm.
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SONJI N. JOHNSON
Examiner
Art Unit 2876
/SONJI N JOHNSON/ Primary Examiner, Art Unit 2876