DETAILED ACTION
Status of Application
This action is a Non-Final Rejection. This action is in response to the application filed on June 24, 2025.
Claims 1-20 are pending and rejected.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 8, 2025 has been considered by the examiner.
Claim Interpretation Note
Independent claim 1 recites “establishing, by the computing system, an account for the customer.” Independent claims 9 and 15 recite “in response establishing an account for the customer, providing a token for the account of the customer to the third-party computing system, wherein the token is automatically provisioned to the mobile device via a second NFC tap between the mobile device and the third- party computing system.” These limitations are being interpreted in light of Applicant’s Specification as requiring that the establishing of the account is part of the process that occurs while the mobile device is interacting with the third party computing device and are not being interpreted to mean that an account is established prior to the computer system receiving the mobile device identifier. If Applicant believes that the broadest reasonable interpretation of the independent claims should include that the account is established before the rest of the claimed process occurs, Applicant should make note of it on the record and point out where that interpretation is described in the Specification.
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 1-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Does the Claim Fall within a Statutory Category? (see MPEP 2106.03)
Yes, with respect to claims 1-8, which recite a method and, therefore, are directed to the statutory class of process.
Yes, with respect to claims 9-14, which recite a system and, therefore, are directed to the statutory class of machine or manufacture.
Yes, with respect to claims 15-20, which recite a non-transitory computer readable medium and, therefore, are directed to the statutory class of manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited? (see MPEP 2106.04(a))
The following claims (Claims 1-8 are representative) identify the limitations that recite the abstract idea in regular text and that recite additional elements in bold:
1. A computer-implemented method, comprising:
receiving, by a computing system, a mobile device identifier associated with a mobile device, wherein the mobile device identifier is received based on a first near-field communication (NFC) tap between the mobile device and a third-party computing system;
binding, by the computing system, the mobile device identifier to a customer;
establishing, by the computing system, an account for the customer; and
providing, by the computing system, a token for the account of the customer to the third-party computing system, wherein the token is automatically provisioned to the mobile device via a second NFC tap between the mobile device and the third-party computing system.
2. The method of claim 1, wherein the token is automatically provisioned to the mobile device prior to a transaction between the customer and a retailer associated with the third-party computing system.
3. The method of claim 1, wherein the token for the account is specific to the mobile device based on the mobile device identifier.
4. The method of claim 1, further comprising:
receiving, by the computing system, an indication of an acceptance from the customer to a mobile device binding arrangement; and
validating, by the computing system and based on the indication, the mobile device as belonging to the customer.
5. The method of claim 1, further comprising:
receiving, by the computing system, information regarding the account of the customer,
wherein the account of the customer is established based on the information received regarding the account of the customer.
6. The method of claim 5, wherein the information regarding the account is received from the third-party computing system.
7. The method of claim 1, further comprising transmitting, by the computing system, to the mobile device, an application regarding the account, wherein the application is pre-filled with identification information regarding the customer.
8. The method of claim 1, further comprising transmitting, by the computing system, a communication to the third-party computing system to prompt a third party to obtain information from the customer regarding the mobile device.
Yes. But for the recited additional elements as shown above in bold, the remaining limitations of the claims recite certain methods of organizing human activity. The claims are directed to establishing a payment account that includes a payment token. This type of method of organizing human activity is a fundamental economic practice because similar to issuing credit and a commercial interaction such as sales activities or behaviors and business relations. Thus, the claims recite an abstract idea.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application? (see MPEP 2106.04(d))
No. The claims as a whole merely use a computer as a tool to perform the abstract idea. The computing components (i.e., additional elements that are in bold above) are recited at a high level of generality and are merely invoked as a tool to implement the steps. For example, only a programmed general purpose computing device (i.e., claimed computing system) is needed to implement the claimed process. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, there is no improvement to the functioning of a computer or technology. Therefore, the abstract idea is not integrated into a practical application.
Step 2B: Does the Claim Provide an Inventive Concept? (see MPEP 2106.05)
No. As discussed with respect to Step 2A, Prong 2, the additional elements in the claims, both individually and in combination, amount to no more than tools to perform the abstract idea. Merely performing the abstract idea using a computer cannot provide an inventive concept. Therefore, the claims do not provide an inventive concept.
As such, the claims are not patent eligible.
35 USC §§102 and 103
The claims are not rejected under 35 USC §§102 or 103 based on both a prior determination in at least parent application number 18/603,043 and an updated search of the prior art. The combination of features of receiving a mobile device identifier via an NFC tap, binding the mobile device identifier to a customer, establishing an account for the customer, and providing a token to the mobile device via a second NFC tap has not been found in the prior art.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,361,407 B2.
Instant Application – Claim 1
Patent Number 12,361,407 B2 (Application Number 18/603,043) – Claim 1
1. A computer-implemented method, comprising:
receiving, by a computing system, a mobile device identifier associated with a mobile device, wherein the mobile device identifier is received based on a first near-field communication (NFC) tap between the mobile device and a third-party computing system;
binding, by the computing system, the mobile device identifier to a customer;
establishing, by the computing system, an account for the customer; and
providing, by the computing system, a token for the account of the customer to the third-party computing system, wherein the token is automatically provisioned to the mobile device via a second NFC tap between the mobile device and the third-party computing system.
1. A computer-implemented method, comprising:
receiving, by a computing system, a mobile device identifier associated with a mobile device, wherein the mobile device identifier is received based on a first near-field communication (NFC) tap between the mobile device and a third-party computing system;
validating, by the computing system, the mobile device as belonging to a customer based on the received mobile device identifier;
binding, by the computing system, the mobile device identifier to the customer based on the validation;
establishing, by the computing system, an account for the customer;
generating, by the computing system, a token for the account of the customer; and
in response to generating the token, providing, by the computing system, the token to the third-party computing system, wherein the token is automatically provisioned to the validated mobile device via a second NFC tap between the mobile device and the third-party computing system.
Although the claims at issue are not identical, the reference claim is not patentably distinct from instant claim 1 because each is drawn to the same invention. Claim 1 is anticipated by reference claim 1. To overcome this rejection, Applicant should file a Terminal Disclaimer or amend the claims.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,523,873 B1.
Instant Application – Claim 1
Patent Number 11,523,873 B1 (Application Number 16/536,966) – Claim 1
1. A computer-implemented method, comprising:
receiving, by a computing system, a mobile device identifier associated with a mobile device, wherein the mobile device identifier is received based on a first near-field communication (NFC) tap between the mobile device and a third-party computing system;
binding, by the computing system, the mobile device identifier to a customer;
establishing, by the computing system, an account for the customer; and
providing, by the computing system, a token for the account of the customer to the third-party computing system, wherein the token is automatically provisioned to the mobile device via a second NFC tap between the mobile device and the third-party computing system.
1. A computer-implemented method performed by an issuer computing system, the method comprising:
receiving, by the issuer computing system from a retailer computing system, identification information for a customer;
pre-approving, by the issuer computing system, the customer for a payment account based on the identification information;
receiving, by the issuer computing system, a request to open the pre-approved payment account;
receiving, by the issuer computing system from the retailer computing system, account registration information regarding the payment account and a mobile device identifier associated with a mobile device, wherein the mobile device identifier is received from the retailer computing system based on a first near-field communication (NFC) tap between the mobile device and a transceiver of the retailer computing system, wherein the mobile device identifier includes at least one of a secure element identifier, an International Mobile Equipment Identity (“IMEI”) value, an electronic serial number (“ESN”), or a Media Access Control (“MAC”) address;
validating, by the issuer computing system, the mobile device as belonging to the customer based on the received mobile device identifier and information from the retailer computing system;
binding, by the issuer computing system, the mobile device identifier to the customer based on the validation;
approving, by the issuer computing system, the customer for opening the payment account based on the account registration information;
establishing, by the issuer computing system, the payment account for the customer;
generating, by the issuer computing system, a payment token for the payment account; and
in response to establishing the payment account and generating the payment token, providing, by the issuer computing system, the payment token to the transceiver of the retailer computing system, wherein the payment token is automatically provisioned to a mobile wallet associated with the mobile device validated based on the mobile device identifier and information from the retailer computing system via a second NFC tap between the mobile device and the transceiver.
Although the claims at issue are not identical, the reference claim is not patentably distinct from instant claim 1 because each is drawn to the same invention. Claim 1 is anticipated by reference claim 1. To overcome this rejection, Applicant should file a Terminal Disclaimer or amend the claims.
Upon double patenting being the only remaining rejection in this application, Examiner will review and update it, as appropriate, in light of the pending claims.
Relevant Prior Art
The following references are relevant to Applicant’s invention:
Ford, JR. et al, U.S. Patent Application Publication No. 2010/0306072 A1. Ford teaches an instant financial credit system. As shown in Figure 13 and associated text, the instant credit processing occurs at a retail location point of sale device. When a customer is checking out, the point of sale device sends a query to a server to determine if the customer is preapproved for instant credit. The customer may then accept the pre-approved offer and provide information needed have credit issued.
Aabye et al., U.S. Patent Application Publication No. 2014/0164243 A1. Aabye teaches an invention for receiving an account token for a transaction. Users are enrolled in a tokenization service by providing an identifier of a payment device. An account token is then generated and transmitted to the payment device.
Chirehdast, U.S. Patent Number 8,504,470 B1. Chirehdast teaches the use of a mobile device identifier for transaction security.
Irwin, U.S. Patent Application Publication No. 2009/0182661 A1. Irwin teaches a method of providing firm credit offers to a customer which includes a soft credit pull.
Tomfohrde et al., U.S. Patent Number 9,256,717 B2. Tomfohrde discusses binding a user identity to a particular device and or service. The device can then be used to authenticate the user. See column 8, lines 19-29.
Griffin et al., U.S. Patent Number 9,172,693 B2. Griffin teaches mobile device binding that allows a customer to have his or her device remembered, thereby not requiring the user customer to enter his or her password when initiating a financial transaction.
Wong et al., U.S. Patent Application Publication Number 2016/0173483 A1. Wong teaches a method for transmitting, by a computing device, an account creation request to a remote server and automatically provisioning the computing device with an access token.
Eason, Jr., U.S. Patent Application Publication Number 2014/0143075 A1. This reference teaches a system and method for point of sale transactions. Paragraph 0020 specifically teaches that a payment token is transmitted to a wallet application via NFC.
Caglayan et al., U.S. Patent Application Publication Number 2014/0379582 A1. This reference teaches the processing of a financial transaction. More specifically, a consumer can use a mobile device to communicate with a point of sale terminal via NFC.
Jain, Chintan. “Using Mobile Device IDs as Additional Factor of Authentication (Something You Have),” medium.com, https://medium.com/@cjainn/using-mobile-device-ids-as-additional-factor-of-authentication-something-you-have-80b6bd885950 (Oct. 13, 2017).
Email Communications
Per MPEP 502.03, Applicant may authorize email communications by filing Form PTO/SB/439, available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, via the USPTO patent electronic filing system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH H ROSEN whose telephone number is (571) 270-1850 and email address is elizabeth.rosen@uspto.gov. The examiner can normally be reached Monday - Friday, 10 AM ET - 7 PM ET.
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/ELIZABETH H ROSEN/Primary Examiner, 3693
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