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 .
1. Acknowledgement is made to the preliminary amendment, filed 7/31/2025. Claims 1-20 are pending.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
2. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-12, & 15-19 of U.S. Patent No. 12,367,501, hereinafter US ‘501. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to the same subject matter and recite similar claim limitations. See the table below for a mapping of the limitations for independent claims 1, 12, & 17 where similar claim limitations will be in bold and/or highlight:
Instant Application (19/244,581)
US 12,367,501
1. A method comprising:
receiving, at a payment server and from a payment terminal of a merchant, attestation data based at least in part on execution of an attestation routine comprising test criteria;
based at least in part on the attestation data and payment transaction data corresponding to a payment transaction conducted at the payment terminal, determining, by the payment server, a first indication of fraud associated with the payment transaction or a first indication of a tamper attempt associated with the payment transaction;
receiving, by the payment server, a second indication, wherein the second indication indicates an improper denial or improper acceptance of the payment transaction;
based at least in part on the first indication and the second indication, updating, by the payment server, the test criteria to updated test criteria; and
generating, by the payment server, an updated attestation routine comprising the updated test criteria.
1. A method comprising:
receiving, at a payment server from a payment terminal of a merchant, an initial request to attest the payment terminal;
generating, by the payment server, an attestation routine, wherein the attestation routine comprises test criteria;
sending, by the payment server to the payment terminal, the attestation routine;
receiving, at the payment server and from the payment terminal, attestation data based at least in part on execution of the attestation routine;
based at least in part on the attestation data and payment transaction data, determining, by the payment server, one or more indications of one or more fraudulent transactions or tamper attempts associated with one or more payment transactions;
storing the one or more indications in association with the attestation data and the payment transaction data in a transaction database;
receiving, by the payment server, feedback data, wherein the feedback data includes, for an individual payment transaction of the one or more payment transactions, an indication that the payment transaction was improperly denied or improperly accepted;
storing the feedback data in association with the payment transaction data in the transaction database;
based at least in part on the one or more indications and the feedback data, updating, by the payment server, the test criteria to updated test criteria; and
generating, by the payment server, an updated attestation routine comprising the updated test criteria.
2. The method of claim 1, further comprising:
generating, by the payment server, the attestation routine in response to receiving an initial request from the payment terminal to attest the payment terminal; and
sending, by the payment server, the attestation routine to the payment terminal,
wherein receiving the attestation data is responsive to sending the attestation routine.
5. The method of claim 1, wherein the first indication is of fraud associated with the payment transaction.
6. The method of claim 1, wherein the first indication is of a tamper attempt associated with the payment transaction.
12. A system comprising:
one or more processors; and
one or more non-transitory computer-readable media storing instructions executable by the one or more processors, wherein the instructions cause the one or more processors to perform acts comprising:
receiving, at a payment server and from a payment terminal of a merchant, attestation data based at least in part on execution of an attestation routine comprising test criteria;
based at least in part on the attestation data and payment transaction data corresponding to a payment transaction conducted at the payment terminal, determining, by the payment server, a first indication of fraud associated with the payment transaction or a first indication of a tamper attempt associated with the payment transaction;
receiving, by the payment server, a second indication, wherein the second indication indicates an improper denial or improper acceptance of the payment transaction; and
based at least in part on the first indication and the second indication, generating, by the payment server, an updated attestation routine by updating the test criteria to updated test criteria.
10. A system comprising:
one or more processors; and
one or more non-transitory computer-readable media storing instructions executable by the one or more processors, wherein the instructions cause the one or more processors to perform acts comprising:
receiving, at a payment server from a payment terminal of a merchant, an initial request to attest the payment terminal;
generating, by the payment server, an attestation routine, wherein the attestation routine comprises test criteria;
sending, by the payment server to the payment terminal, the attestation routine;
receiving, at the payment server and from the payment terminal, attestation data based at least in part on execution of the attestation routine;
based at least in part on the attestation data and payment transaction data, determining, by the payment server, one or more indications of one or more fraudulent transactions or tamper attempts associated with one or more payment transactions;
storing the one or more indications in association with the attestation data and the payment transaction data in a transaction database;
receiving, by the payment server, feedback data, wherein the feedback data includes, for an individual payment transaction of the one or more payment transactions, an indication that the payment transaction was improperly denied or improperly accepted;
storing the feedback data in association with the payment transaction data in the transaction database;
based at least in part on the one or more indications and the feedback data, updating, by the payment server, the test criteria to updated test criteria; and
generating, by the payment server, an updated attestation routine comprising the updated test criteria.
13. The system of claim 12, the acts further comprising:
generating, by the payment server, the attestation routine in response to receiving an initial request from the payment terminal to attest the payment terminal; and
sending, by the payment server, the attestation routine to the payment terminal,
wherein receiving the attestation data is responsive to sending the attestation routine.
17. One or more non-transitory computer-readable media storing instructions executable by one or more processors that, when executed by the one or more processors, cause the one or more processors to perform acts comprising:
receiving, at a payment server and from a payment terminal of a merchant, attestation data based at least in part on execution of an attestation routine comprising test criteria;
based at least in part on the attestation data and payment transaction data corresponding to a payment transaction, determining, by the payment server, a first indication of fraud associated with the payment transaction or a tamper attempt associated with the payment transaction;
receiving, by the payment server, a second indication, wherein the second indication indicates an improper denial or improper acceptance of the payment transaction; and
based at least in part on the first indication and the second indication, generating, by the payment server, an updated attestation routine by updating the test criteria to updated test criteria.
17. One or more non-transitory computer-readable media storing instructions executable by one or more processors that, when executed by the one or more processors, cause the one or more processors to perform acts comprising:
receiving, at a payment server from a payment terminal of a merchant, an initial request to attest the payment terminal;
generating, by the payment server, an attestation routine, wherein the attestation routine comprises test criteria;
sending, by the payment server to the payment terminal, the attestation routine;
receiving, at the payment server and from the payment terminal, attestation data based at least in part on execution of the attestation routine;
based at least in part on the attestation data and payment transaction data, determining, by the payment server, one or more indications of one or more fraudulent transactions or tamper attempts associated with one or more payment transactions;
storing the one or more indications in association with the attestation data and the payment transaction data in a transaction database;
receiving, by the payment server, feedback data, wherein the feedback data includes, for an individual payment transaction of the one or more payment transactions, an indication that the payment transaction was improperly denied or improperly accepted;
storing the feedback data in association with the payment transaction data in the transaction database;
based at least in part on the one or more indications and the feedback data, updating, by the payment server, the test criteria to updated test criteria; and
generating, by the payment server, an updated attestation routine comprising the updated test criteria.
18. The one or more non-transitory computer-readable media of claim 17, the acts further comprising:
generating the attestation routine in response to receiving an initial request from the payment terminal to attest the payment terminal; and
sending the attestation routine to the payment terminal,
wherein receiving the attestation data is responsive to sending the attestation routine.
As shown above, the limitations of claims 1, 2, 5, & 6 of the instant application can be found in independent claim 1 of US ‘501, the limitations of claims 12 & 13 of the instant application can be found in independent claim 10 of US ‘501, and the limitations of claims 17 & 18 of the instant application can be found in independent claim 17 of US ‘501. Furthermore, the limitations of dependent claims 3, 4, 7, & 8 of the instant application can be found in claims 2, 3, 7, & 6 of US ‘501, respectively, the limitations of claim 9 of the instant application can be found in claims 8 & 15 of US ‘501, the limitations of claim 10 of the instant application can be found in claims 9 & 16 of US ‘501, and the limitations of claims 14, 15, 19, & 20 of the instant application can be found in claims 11, 12, 18, & 19 of US ‘501, respectively. Dependent claims 11 & 16 of the instant application depend from rejected base claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAULTEP SAVUSDIPHOL whose telephone number is (571)270-1301. The examiner can normally be reached on M-F,7-3 EST. If the examiner cannot be reached by telephone, he can be reached through the following email address: paultep.savusdiphol@uspto.gov
If attempts to reach the examiner by telephone and email 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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/PAULTEP SAVUSDIPHOL/Primary Examiner, Art Unit 2876