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 .
Status of Claims
Claims 1-20, as originally filed 06/24/2025, are pending and have been examined on the merits (Claims 1, 9, and 15 being independent). The instant application is a CON of application number, 18/589,299 (Patent No. US 12,367,482 B2) which has ‘482 patent’s two immediate parents (Patent No. US 11,954,670 B1 and Patent No. US 11,501,287 B1).
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 time wise 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 claims at issue 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); and 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 provision a I 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.lll(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 Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim Rejections - Double Patenting (Obviousness-type)
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,367,482 B2. With respect to independent claim 1 of the instant application, independent claim 1 of the instant application, and independent claim 1 of the '482 patent both recite substantially similar limitations for the method and system which (1) transmitting, by a user device to a computing system, an input from a user regarding opening an account; (2) establishing, by the user device, a communication session based on exchanging encryption information between the user device and the computing system; (3) in response to establishing the communication session, automatically installing, by the user device, a client application; (4) receiving, by the user device, an indication of an activation of the account from the computing system. The ‘482 patent is narrower in that claim 1 of ‘482 patent have limitations directed towards (1) transmitting, by a user device to a computing system, an input from a user regarding opening an account at an institution associated with the computing system; (2) establishing, by the user device, a communication session based on exchanging encryption keys between the user device and the computing system; (3) in response to establishing the communication session, automatically installing, by the user device, a client application; (4) displaying, via the client application on the user device, a graphical user interface (GUI) comprising a request for a user verification; (5) transmitting, by the user device via the communication session, a received user verification to the computing system; (6) receiving, by the user device, an indication of an activation of the account at the institution from the computing system. That is, the claim under examination is anticipated by the reference claims of the ‘482 patent (i.e., the entire scope of the reference claim falls within the scope of the claim under examination). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the ‘482 patent and is covered by the ‘482 patent since the ‘482 patent and the instant application are claiming common subject matter.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,954,670 B1. With respect to independent claim 1 of the instant application, independent claim 1 of the instant application, and independent claim 1 of the '670 patent both recite substantially similar limitations for the method and system which (1) transmitting, by a user device to a computing system, an input from a user regarding opening an account; (2) establishing, by the user device, a communication session based on exchanging encryption information between the user device and the computing system; (3) in response to establishing the communication session, automatically installing, by the user device, a client application; (4) receiving, by the user device, an indication of an activation of the account from the computing system. The ‘670 patent is narrower in that claim 1 and claim 1 of ‘670 patent have limitations directed towards (1) transmitting, by a user device to a computing system, a first input from a user regarding opening an account at an institution associated with the computing system; (2) establishing, by the user device, a communication session based on exchanging encryption keys between the user device and the computing system; (3) in response to establishing the communication session, automatically installing, by the user device, a client application; displaying, via the client application on the user device, a graphical user interface (GUI) comprising a request for a user verification; (4) transmitting, by the user device via the communication session, a received user verification to the computing system; receiving, by the user device, a second input to add the account associated with the institution to a mobile wallet on the user device; (5) prompting, by the user device, the user for a value regarding the account based on the second input to add the account to the mobile wallet; (6) receiving and storing, by the user device via the communication session, a payment token for transactions via the mobile wallet before a physical card associated with the account of the computing system is received by the user based on the value matching a stored value regarding the account. That is, the claim under examination is anticipated by the reference claims of the ‘670 patent (i.e., the entire scope of the reference claim falls within the scope of the claim under examination). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the ‘670 patent and is covered by the ‘670 patent since the ‘670 patent and the instant application are claiming common subject matter.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-12, and 15-19 of U.S. Patent No. 11,501,287 B1. With respect to independent claim 1 of the instant application, independent claim 1 of the instant application, and independent claim 1 of the '287 patent both recite substantially similar limitations for the method and system which (1) transmitting, by a user device to a computing system, an input from a user regarding opening an account; (2) establishing, by the user device, a communication session based on exchanging encryption information between the user device and the computing system; (3) in response to establishing the communication session, automatically installing, by the user device, a client application; (4) receiving, by the user device, an indication of an activation of the account from the computing system. The ‘287 patent is narrower in that claim 1 of ‘287 patent have limitations directed towards (1) transmitting, by a user device to a financial computing system, a first input from a user regarding opening an account at a financial institution associated with the financial computing system; (2) establishing, by the user device, a communication session based on exchanging encryption keys between the user device and the financial computing system; (3) in response to establishing the communication session, automatically installing, by the user device, a mobile wallet client application; displaying, via the mobile wallet client application on the user device, a graphical user interface (GUI) comprising a request for a user verification; (4) transmitting, by the user device via the communication session, a received user verification to the financial computing system; updating, by the user device, the GUI to display a request to establish a personal identification number (PIN) for a physical payment card associated with the account; receiving, by the user device via the GUI, the PIN from the user; (5) transmitting, by the user device via the communication session, a second input comprising the PIN and a request to provision the account to the user device; receiving, by the user device via the communication session, a payment token associated with the account before the physical payment card associated with the account of the financial computing system is received by the user; (6) storing, by the user device, the payment token for transactions via the user device; and wherein the mobile wallet client application is sandboxed such that a unique customer ID (UID) is assigned to the mobile wallet client application, and wherein other applications installed on the user device that include the UID are configured to share the payment token. That is, the claim under examination is anticipated by the reference claims of the ‘287 patent (i.e., the entire scope of the reference claim falls within the scope of the claim under examination). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the ‘287 patent and is covered by the ‘287 patent since the ‘287 patent and the instant application are claiming common subject matter.
With respect to independent claims 1, 9, and 15 of the instant application, claims 1, 9, and 15 recite substantially similar limitations to independent claims 1, 8, and 15 of the ‘482 patent, independent claims 1, 8, and 15 of the ‘670 patent, and independent claims 1, 9, and 17 of the ‘287 patent and therefore is rejected under the same rational.
Claim Rejections – 35 U.S.C. § 103
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 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 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 1-3, 5, 9-12, and 15-17 are rejected pursuant to 35 U.S.C. §103 as unpatentable over U.S. PGP 2017/0124653 A1 dated May 4, 2017 to Dunkin, et al. (“Dunkin”) in view of U.S. PGP 2014/0181931 A1 dated June 26, 2014 to Bokarius (“Bokarius”).
Per claim 1, Dunkin teaches transmitting, by a user device to a computing system, an input from a user regarding opening an account (see Dunkin, at least [0071] disclosing that “the account user interface element 500 can display information regarding whether the financial account has fulfilled all activation requirements for opening the financial account” and at least [0072] disclosing that “[t]he user also can access each of the documents that have been submitted with respect to the financial account … by selecting the ‘Documents Received’ tab from the series of tabs”, the selection of the “documents received tab” being a transmission from a user device to a computing system of “an input from a user regarding opening an account”); automatically installing, by the user device, a client application (see Dunkin, at least [0033] disclosing that “a user may install a software application … onto a client device 120a-c to facilitate performance of these tasks”); and receiving, by the user device, an indication of an activation of the account from the computing system (see Dunkin, at least [0071] disclosing “as an example, as shown in FIG. 8, the account user interface element 500 can display information regarding whether the financial account has fulfilled all activation requirements for opening the financial account”, the use of the term “whether” at least suggesting the case where the user interface element confirms that the user has met all requirements for activation of the account).The closest art of record, US Publication Number 2017/0310647 A1 to Hu et al., discloses “authenticating user device interactions with an external application or device is provided . The method includes establishing a secure communication session between trusted code and the external application or device . The trusted code executes within a trusted execution environment in a user authentication device , and the external application or device is external to the trusted execution environment.”.
Dunkin does not expressly establishing, by the user device, a communication session based on exchanging encryption information between the user device and the computing system or that the installation of the client application was in response to establishing the communication session, but these operations were known in the art before the effective filing date of the claimed invention.
Bokarius teaches provision of “a highly integrated application for mobiles and desktops” for providing secure communications (see Bokarius, at last [0014]). Bokarius further teaches establishing, by the user device, a communication session based on exchanging encryption information between the user device and the computing system (see Bokarius, at least [0073] disclosing establishment of secure sockets layer (SSL) sessions between computers, the SSL sessions being based on “a digitally signed statement that binds the value of a public key to the identify of person, device or service that holds the corresponding private key”, encrypted communications being inherent aspects of public keys, private keys and digital signatures) and in response to establishing the communication session, automatically installing, by the user device, a client application (see Bokarius, at least [0073] disclosing that “such certificates are conventionally used in secure sockets layer (SSL) sessions, when installing software”, the disclosure inherently requiring or at least suggesting that establishment of the SSL session precedes the installation of the software).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to install a client application on a user device per the teaching of Dunkin in response to establishing a communication session based on an exchange of encrypted data between the user device and a server per the teaching of Bokarius, in order to improve the safety of and establish trust in the software installation (see Bokarius, at least [0002] and [0004]). The foregoing combination of elements would have yielded predictable results.
Per claim 2, Dunkin does not explicitly disclose the following, however, Bokarius further teaches displaying, via the client application on the user device, a graphical user interface (GUI) comprising a request for a user verification; (see Bokarius, at least [0062] disclosing that “If this is the first use of system 200 in a while to access a secure website, agent program 230 will pop-up a dialog box requiring the user to input their master pin, e.g., digital signature 223.”); transmitting, by the user device via the communication session, a received user verification to the computing system. (see Bokarius, at least [0083] disclosing that “the secret PIN entered by the user is sent to the server along with the encryption signature of the token ID to the server.”)
Per claim 3, Dunkin does not explicitly disclose the following, however, Bokarius further teaches in response to establishing the communication session, receiving, by the user device, an account registration packet configured to display the GUI comprising the request for the user verification. (see Bokarius, at least [0069] disclosing that “When the user tries to open an account at a third-party website 520, a service in ID vault run-time client 530 is called to get a "protected" encryption key 542 needed to access a locked, local encrypted vault 544. That call passes a message 546 that includes a copy of GUID 534, a signature of GUID 534 using the private key for WINDOWS root certificate 532, and a freshly acquired PIN 548 (which is required to match the original PIN 536 used during registration for the user to be authenticated).”)
Per claim 5, Dunkin does not explicitly disclose the following, however, Bokarius further teaches receiving, by the user device, a login credential for accessing the account; (see Bokarius, at least [0062] disclosing that “If this is the first use of system 200 in a while to access a secure website, agent program 230 will pop-up a dialog box requiring the user to input their master pin, e.g., digital signature 223.”); transmitting, by the user device via the communication session, the login credential to the computing system. (see Bokarius, at least [0083] disclosing that “the secret PIN entered by the user is sent to the server along with the encryption signature of the token ID to the server.”)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to install a client application on a user device per the teaching of Dunkin in response to establishing a communication session based on an exchange of encrypted data between the user device and a server per the teaching of Bokarius, in order to improve the safety of and establish trust in the software installation (see Bokarius, at least [0002] and [0004]). The foregoing combination of elements would have yielded predictable results.
Claims 4, 6, 13, and 18 are rejected pursuant to 35 U.S.C. §103 as unpatentable over U.S. Dunkin in view of Bokarius in further view of Ginsberg, Phillip (hereinafter Phillip), WO 2014/144006 A3.
Per claim 4, Dunkin and Bokarius do not explicitly disclose the following, however, Phillip further teaches wherein the GUI depicts one or more account details related to the account, and wherein the one or more account details comprise information related to account fees. (see Phillip, at least [00213] disclosing that “charge account and other banking type fees (e.g., any analogous fee charged by a bank such as a fee for a checking account, monthly fee, overdraft fee, late fee, etc.); and/or contest entry fees.”)
Per claim 6, Dunkin and Bokarius do not explicitly disclose the following, however, Phillip further teaches wherein the login credential comprises a biometric credential including at least one of a fingerprint biometric, a facial biometric, or a voice biometric. (see Phillip, at least [00208] disclosing that “account login may require account credentials such as a user ID, password, fingerprint or other biometric identification, second device verification (e.g., authorization code text sent to mobile phone prior to login), and/or other authentication”)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to install a client application on a user device per the teaching of Dunkin account login may require account credentials such as a user ID, password, fingerprint or other biometric identification per the teaching of Phillip, in order to improve secure transactions (see Phillip [00208] and [00213]). The foregoing combination of elements would have yielded predictable results.
Regarding claim 13: it is similar scope to claim 6, and thus it is rejected under similar rationale.
Regarding claim 18: it is similar scope to claims 5 and 6, and thus it is rejected under similar rationale.
Claims 7-8, 14, and 19-20 are rejected pursuant to 35 U.S.C. §103 as unpatentable over U.S. Dunkin in view of Bokarius in further view of Richelson, Elliot (hereinafter Elliott), WO 00/67178.
Per claim 7, Dunkin and Bokarius do not explicitly disclose the following, however, Elliott further teaches wherein the input from the user regarding opening the account comprises a request to receive a physical card associated with the account. (see Elliott, at least [page 16] disclosing that “Broker computer 10 assigns account opening information based upon the opening amount chosen by consumer 22 and sends that account information to terminal 386 through network 40.”; “Once terminal 3 86 receives the account opening information from broker computer 10 it may print a card 23 for consumer 22.”)
Per claim 8, Dunkin and Bokarius do not explicitly disclose the following, however, Elliott further teaches receiving, by the user device, an authorization to receive the requested physical card from the computing system; (see Elliott, at least [page 16] disclosing that “Terminal 38b next prompts consumer 22 to enter the associated PIN number. This data is then sent through network 40 to a payment verification service. Once credit payment is verified, terminal 386 queries broker computer 10 for account opening information.”); receiving, by the user device, a card number associated with the physical card. (see Elliott, at least [page 16] disclosing that “Once terminal 3 86 receives the account opening information from broker computer 10 it may print a card 23 for consumer 22. On card 23 will be printed the account opening information. For example this information may include: 1) account number 26……”)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to install a client application on a user device per the teaching of Dunkin once terminal receives the account opening information from broker computer it may print a card for consumer. On card will be printed the account opening information such as account number per the teaching of Phillip, in order to provide a card with number (see Elliott, at least [page 16]). The foregoing combination of elements would have yielded predictable results.
Regarding claims 14 and 20 and: it is similar scope to claim 8, and thus it is rejected under similar rationale.
Regarding claim 19: it is similar scope to claim 7, and thus it is rejected under similar rationale.
Patent Eligibility- 35 U.S.C. § 101
The 101 rejection is not applicable because even though the claims recite an abstract idea, the limitations when considered in ordered combination are indicative of integration into a practical application because the claims are directed to a particular method and system {that} involve establishing a communication session based on exchanging encryption keys when viewed as a whole, they represent improvements that are technical in nature as improving upon conventional computing environments and/or another technical field. Further, when the claim limitation for automatically installing by the user device, a client application in response to establishment of the session is combined with establishment of the session, the limitations begin to seem more “meaningful” from a technical perspective, than merely establishing a communication session by exchanging encrypted data. For the reasons stated above, claims 1-20 have been deemed to be patent eligible under 35 U.S.C. 101.
Conclusion
The prior art made of record but not relied upon herein but pertinent to Applicant’s disclosure is listed in the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG S PARK whose telephone number is (571)272-8349. The examiner can normally be reached on M-F 9:00-5:00 PM, EST.
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/YONGSIK PARK/Examiner, Art Unit 3694
July 17, 2026
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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