DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 06/12/2026.
Claims 2-15 are elected.
Claims 1 and 16-21 are cancelled.
Claims 2, and 3 are amended.
Claims 22-26 are new.
Claims 2-15 and 22-26 are pending.
Claims 2-15 and 22-26 have been examined.
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 .
Restriction/Election Acknowledgement
The Applicant’s election on claims 2-15 without traverse in the reply on 06/12/2026 is acknowledged. Claims 16-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group(s).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of U.S. Patent No. 11,127,001 (“Patent Document”). Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 13 of the Patent Document recites all the limitations of claim 2 of the instant application; however, claim 13 of the Patent Document differs since it further recites additional claim limitations.
Instant Application
Patent Document
A secure communication method, the method comprising:
A secure communication method for execution by a fuel dispenser that includes a wireless transceiver configured to communicate wirelessly with a customer's mobile device, a secure element configured to store one or more pre-validated cryptographic keys, and a processor coupled to the secure element and the wireless transceiver, the method comprising:
receiving, via the wireless transceiver, an authentication request from the customer's mobile device, the authentication request including a public key and a random number, the transceiver comprising a near-field communication (NFC) transceiver of the fuel dispenser, and the authentication request begins a product purchase transaction between the fuel dispenser and the customer's mobile device for purchase of fuel that is dispensable from the fuel dispenser;
authenticating the customer's mobile device by using the processor to validate the public key received within the authentication request based on the one or more cryptographic keys stored in the secure element;
after validating the public key, using the processor to generate a session key based on the random number received in the authentication request;
transmitting, via the wireless transceiver, when the customer's mobile device is successfully authenticated, an authentication response including the session key to the customer's mobile device;
receiving, via the wireless transceiver, secure information from the customer's mobile device in reply to the transmitted authentication response, the secure information being encrypted by the session key;
decrypting the secure payment information using the session key;
using the decrypted secure payment information to complete the product purchase transaction;
generating, using the processor, a dispenser-specific key pair including a dispenser-specific private key and a dispenser-specific public key;
receiving at a product management security system, from a wireless transceiver of a dispenser, a dispenser-specific key pair generated by the dispenser and including a dispenser- specific private key and a dispenser-specific public key;
transmitting, via the wireless transceiver, the dispenser-specific public keys to a product management security system that is external to the fuel dispenser;
after receiving the dispenser-specific public key, transmitting, from the product management security system to the wireless transceiver:
after transmitting the dispenser-specific public key to the product management security system, receiving, via the wireless transceiver, from the product management security system
the dispenser-specific public key encrypted with a private key of the product management security system,
a unique identifier for the dispenser-specific public key encrypted with the private key, the unique identifier and dispenser-specific key pair encrypted with the private key defining a first certificate,
the dispenser-specific public key encrypted with a private key of the product management security system,
a unique identifier for the dispenser-specific public key encrypted with the private key, the unique identifier and dispenser-specific key pair encrypted with the private key defining a first certificate,
a second certificate that is superior to the first certificate, and
a plurality of mobile-side certificates that are each associated with a different one of a plurality of mobile devices; and
a second certificate that is superior to the first certificate, and
a plurality of mobile-side certificates that are each associated with a different one of a plurality of mobile devices;
initiating a product purchase transaction for purchase of a product dispensable from the dispenser
“the authentication request begins a product purchase transaction between the fuel dispenser and the customer's mobile device for purchase of fuel that is dispensable from the fuel dispenser”
responsive to an authentication request received from a customer's mobile device included in the plurality of mobile devices and associated with at least one mobile-side certificate received by the dispenser from the product management security system.
storing the first certificate, the second certificate, and the mobile-side certificate in the secure element;
wherein the authentication request is received after storing the first certificate, the second certificate, and the mobile-side certificate in the secure element; and
wherein the customer's mobile device is authenticated by validating the public key received in the authentication request based on the mobile-side certificate stored in the secure element that is associated with the customer's mobile device and based on at least one of the first and second certificates stored in the secure element.
Claim 13 of the patent document contains the additional elements of the fuel dispenser and the wireless transceiver.
The claims are directed to the same subject matter, perform the same method steps and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other inventions. Additionally, the dependent claims are directed to the functions of the dispenser. The instant application claims are generic to the limitations in the Patent Document. Each limitation in the instant application is fully encompassed in the Patent Document claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-15 and 22-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 2 is directed to a method.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receiving … key pair… transmitting,… key, … identifier… certificate… and initiating a product purchase transaction….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, receiving and transmitting information for a purchase transaction. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application.
Accordingly, even in combination, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receiving … key pair… transmitting,… key, … identifier… certificate… and initiating a product purchase transaction….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Dependent claims 3-15 and 22-26 discuss functions in more descriptive detail of the steps geared toward the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 3-15 and 22-26 are also rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-15 and 22-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 2 recites “certificate that is superior to the first certificate”, claim 7 recites “private key that is superior to the public key in a certificate hierarchy…” and claim 12 recites “location in the certificate hierarchy that is superior to the third location”. The claim is unclear and indefinite. The term “superior…” is not defined in the disclosure and is not a term of art with regards to keys, certificates and locations. Therefore, it is unclear as to what the term “superior…” refers to. The claims are unclear and indefinite. Dependent claims 3-15 and 22-26 are also rejected.
Independent claim 2 recites “receiving at a product management security system… transmitting, from the product management security system… initiating a product purchase transaction for purchase of a product dispensable from the dispenser….” The scope of the claims are unclear and indefinite. The claim recites the functions of the “product management security system” and it is unclear whether the “initiating” is performed by the dispenser, additionally, all dependent claims, except dependent claim 15, are directed to functions of the dispenser or surrounding the “customer’s mobile device”. The scope of the claims are unclear and indefinite. The claims are unclear and indefinite. Dependent claims 3-15 and 22-26 are also rejected.
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.
Claims 2-5, 9, 13, 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kakii (US 20060020782) (“Kakii”), and further in view of Schibuk (US 20090132813) (“Schibuk”).
Regarding claim 2, Kakii discloses receiving at a product management security system, from a wireless transceiver of a dispenser, a dispenser-specific key pair generated by the dispenser and including a dispenser- specific private key and a dispenser-specific public key (¶ 45, 49, 95-99, 106, 114, 154-156, 195, 213);
after receiving the dispenser-specific public key, transmitting, from the product management security system to the wireless transceiver: the dispenser-specific public key encrypted with a private key of the product management security system, a unique identifier for the dispenser-specific public key encrypted with the private key, the unique identifier and dispenser-specific key pair encrypted with the private key defining a first certificate, and a plurality of mobile-side certificates that are each associated with a different one of a plurality of mobile devices; and (Figure 8, 9; ¶ 8, 10-13, 33, 123-138, 147, 163, 195);
Kakii does not disclose a second certificate that is superior to the first certificate, initiating a product purchase transaction for purchase of a product dispensable from the dispenser responsive to an authentication request received from a customer's mobile device included in the plurality of mobile devices and associated with at least one mobile-side certificate received by the dispenser from the product management security system.
Schibuk teaches a second certificate that is superior to the first certificate (¶ 305-317), initiating a product purchase transaction for purchase of a product dispensable from the dispenser responsive to an authentication request received from a customer's mobile device included in the plurality of mobile devices and associated with at least one mobile-side certificate received by the dispenser from the product management security system (¶ 200-215, 305-317).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Kakii(¶ 34), which teaches “it is possible to conduct the transmission of the public key certificate and the like while maintaining the communication path to be secured” and Schibuk(¶ 200), which teaches “a device may be used to pay for a soft drink, purchase small items like stamps or candy, pay a fee at a toll booth or a parking meter, or any of a myriad of other uses… dispensing devices are protected by PKI and isolated to short-range communications, thus providing a very high level of security” in order to provide further protection in a transaction with a dispensing device (Schibuk; ¶ 2-4, 200).
Regarding claim 3 , Schibuk teaches wherein the dispenser receives, via the wireless transceiver, the authentication request from the customer's mobile device after the dispenser stores the first certificate, the second certificate, and the mobile-side certificate in a secure controller of the dispenser (¶ 4, 125-129, 135-150, 200-210).
Regarding claim 4, Schibuk teaches wherein the authentication request begins the product purchase transaction between the dispenser and the customer's mobile device for the purchase of the product that is dispensable from the dispenser (¶ 200-210).
Regarding claim 5, Schibuk teaches wherein the authentication request includes a public key and the dispenser authenticates the customer's mobile device by validating the public key received in the authentication request based on the mobile-side certificate stored in the secure controller that is associated with the customer's mobile device and based on at least one of the first and second certificates stored in the secure controller (¶ 4, 125-129, 135-150, 200-210).
Regarding claim 9, Schibuk teaches wherein validating the authentication request using the processor comprises: using a lookup table to determine whether a first public key specified in the unique identifier is stored in the secure controller and pre-validated, the first public key having a first location in the certificate hierarchy; and if the first public key is stored in the secure controller and pre-validated, retrieving the first public key and decrypting the public key using the first public key(¶ 256, 261, 305-317).
Regarding claim 13, Schibuk teaches wherein the dispenser completes an entire mutual authentication process with the customer's mobile device in a single exchange that includes the authentication request and the authentication response (¶ 123-153, 305-317).
Regarding claim 25, Schibuk teaches wherein the dispenser includes a cash dispenser, and the product includes cash(¶ 200-210).
Regarding claim 26, Schibuk teaches wherein the dispenser includes a snack or beverage dispenser, and the product includes a snack or beverage(¶ 200-210).
Claims 6-8, 10-12, 14, 15 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Kakii (US 20060020782) (“Kakii”), in view of Schibuk (US 20090132813) (“Schibuk”) and further in view of Tang et al. (US 20090103725) (“Tang”).
Regarding claim 6, Neither Kakii nor Schibuk teaches wherein the authentication request includes a public key and a random number; the dispenser authenticates the customer's mobile device by using a processor of the dispenser to validate the public key received within the authentication request based on the one or more cryptographic keys stored in the secure controller; after validating the public key, the dispenser uses the processor to generate a session key based on the random number received in the authentication request; the dispenser transmits, via the wireless transceiver, when the customer's mobile device is successfully authenticated, an authentication response including the session key to the customer's mobile device; the dispenser receives, via the wireless transceiver, secure information from the customer's mobile device in reply to the transmitted authentication response, the secure information being encrypted by the session key; the dispenser decrypts the secure payment information using the session key; and the dispenser uses the decrypted secure payment information to complete the product purchase transaction. Tang teaches wherein the authentication request includes a public key and a random number; the dispenser authenticates the customer's mobile device by using a processor of the dispenser to validate the public key received within the authentication request based on the one or more cryptographic keys stored in the secure controller; after validating the public key, the dispenser uses the processor to generate a session key based on the random number received in the authentication request; the dispenser transmits, via the wireless transceiver, when the customer's mobile device is successfully authenticated, an authentication response including the session key to the customer's mobile device; the dispenser receives, via the wireless transceiver, secure information from the customer's mobile device in reply to the transmitted authentication response, the secure information being encrypted by the session key; the dispenser decrypts the secure payment information using the session key; and the dispenser uses the decrypted secure payment information to complete the product purchase transaction (¶ 18-20, 28-44). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Kakii, Schibuk and Tang(¶ 13), which teaches “a fueling environment may include more than one fuel dispenser wherein each dispenser may be separate from the others such that each fuel dispenser may include its own card reader 110, SPM 120, and controller electronics 155” in order to provide secure transactions with a fuel dispenser (Tang; ¶ 1-4).
Regarding claim 7, Tang teaches wherein the public key is specific to the customer's mobile device, and the public key is encrypted by a private key that is superior to the public key in a certificate hierarchy; the authentication request includes a unique identifier that specifies the chain of public keys in the certificate hierarchy which ultimately decrypts the public key; and the random number encrypted by a private key corresponding to the public key(¶ 18-29).
Regarding claim 8, Tang teaches wherein the authentication request does not include a digital certificate corresponding to the public key(¶ 26-29).
Regarding claim 10, Tang teaches wherein the authentication request includes the first public key and wherein validating the authentication request using the processor comprises: if the first public key is not stored in the secure controller or not pre-validated, using the lookup table to determine whether a second public key specified in the unique identifier is stored and pre-validated in the secure controller, the second public key having a second location in the certificate hierarchy that is higher than the first location of the first public key; and if the second public key is stored and pre-validated in the secure controller, retrieving the second public key and decrypting the first key using the second public key; and if the second public key is not stored in the secure controller or not pre-validated, at least one of requesting the second public key from the customer's mobile device, obtaining the second public key from a network, and rejecting the authentication request as originating from a non- authenticable mobile device(¶ 12, 14-19, 24-42).
Regarding claim 11, Tang teaches wherein the session key comprises a combination of the random number and a random number generated at the dispenser (¶ 28-44).
Regarding claim 12, Tang teaches wherein the authentication response comprises: a third public key specific to the dispenser and having a third location in the certificate hierarchy, the third public key being encrypted by a dispenser-side private key having a fourth location in the certificate hierarchy that is superior to the third location of the third public key; a terminal-side unique identifier that specifies the chain of public keys in the certificate hierarchy which ultimately decrypts the third public key; the session key, the session key being encrypted by the public key that is specific to the customer's mobile device; and a session key checksum generated by the processor, the session key checksum being encrypted by a private key corresponding to the second public key of the dispenser (¶ 12, 14-19, 24-29, 41-42).
Regarding claim 14, Tang teaches wherein the product payment transaction is completed without communication between a mobile payment infrastructure to which the customer's mobile device is coupled and a payment infrastructure to which the dispenser is coupled (¶ 12, 14-19, 24-29, 41-42).
Regarding claim 15, Tang teaches wherein, the product management security system is external to the dispenser (¶ 24-29, 40-43).
Regarding claim 22, Tang teaches wherein the plurality of mobile-side certificates include a level one root certificate, a level two certificate, and a level three certificate (¶ 28, 35, 42, 44).
Regarding claim 23, Tang teaches wherein the plurality of mobile-side certificates are in a certificate hierarchy defined by level one at a root level, by level two that is subordinate to the root level, by level three that is subordinate to level two, and by level four that is subordinate to level three, the level four public key certificate being unique to the payment terminal, and the level one, two, and three public key certificates not being unique to the payment terminal (¶ 18, 19, 21, 24, 28, 34-38, 44).
Regarding claim 24, Tang teaches wherein the dispenser includes a fuel dispenser, and the product includes fuel(Abstract ¶ 20-40).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chutorash et al., (US 20100280956) teaches the fuel pump, mobile device and vehicle system transactions, also includes keys, stores car information.
Frieden et al (US20140351138) teaches payments with a vehicle and mobile device
Betancourt et al. (US 9830637) ("Betancourt") teaches keys, a fuel dispenser with a payment system and back station repository with mobile device and vehicle transactions.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3699
