DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 6/24/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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.
Status of Claims
Claims 1-20 are currently pending.
Claims 1-20 are rejected as set forth below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9189778. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the ‘778 claims anticipate the scope of the instant claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10810573. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the ‘573 claims anticipate the scope of the instant claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12373815. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the ‘815 claims anticipate the scope of the instant claims.
Claim Rejections - 35 USC § 112(b)
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 1-20 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.
As per claims 1, 11, the limitation “a payment service provider (PSP), the PSP being an internal consumer wallet account” renders the scope of the claim indefinite. It is unclear how a payment service provider is equivalent to a single internal customer wallet account. Typically, a payment service provider processes transactions for a plurality of internal customer wallet accounts. For purposes of examination, the payment service provider will be interpreted as a payment service provider that processes transactions for a plurality of internal customer wallet accounts.
By virtue of their dependence, the dependent claims are similarly rejected.
As per claims 4, 14, the limitation “wherein the consumer is a third-party entity” renders the scope of the claim indefinite because it contradicts itself. In the context of payments, a third-party entity is an intermediary entity that facilitates transactions from the payer and the payee. Therefore, it is unclear how a consumer, i.e. a payer, can be interpreted as a third-party entity1.
As per claims 7, 17, the limitation “the PSP being at least one of: a credit account, a bank account, and a third-party PSP” renders the scope of the claim indefinite. It is unclear how a payment service provider is equivalent to a single customer account. Typically, a payment service provider processes transactions for a plurality of internal customer wallet accounts. For purposes of examination, the payment service provider will be interpreted as a payment service provider that processes transactions for a plurality of internal customer wallet accounts.
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 1-3, 5-13, 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20160005043 to Goldstone in view of United States Patent Application Publication No. 20230196328 to Xiu.
As per claims 1, 8, 18¸ Goldstone teaches:
A non-transitory computer-readable storage medium having embodied thereon a program, the program being executable by a processor to perform a method for conducting a secure transaction over a network, the method comprising: sending a registration message to a merchant; receiving, from the merchant, identifying information associated with the merchant in response to the registration message; validating the identifying information; sending a validation message associated with the validating of the identifying information to either: an external payment service provider (PSP), or the PSP being an internal consumer wallet account; ([0040], “For example, a symmetric key technique, such as keyed-hash message authentication code (HMAC), may be employed, whereby a symmetric key is shared between the merchant and the transaction provider when the merchant initially registers with the transaction provider. The merchant server 130 may then apply the symmetric key to the transaction information to be transferred in data transfer 215 and transmit the MAC alongside the transaction information in data transfer 215. Upon receipt of data transfer 215, the transaction provider node 142 may use the merchant ID to retrieve the symmetric key associated with that merchant, for example from a hardware protected key stored (HSM) where the symmetric key may be stored and associated with the merchant ID, and use the symmetric key and MAC to verify the transaction information.”; [0049], “The transaction may be executed for example using a Faster Payments Service transfer or any other payment mechanism, from a source of funds of the consumer, for example a bank account, credit card or payment wallet that the consumer linked to the app 122 when registering the app 122 with the transaction provider, to an account that the merchant specified when registering for the transaction service, wherein the merchant to be paid and the amount to be paid is obtained by the communications gateway 150 from the database 144 using the transaction identifier included in the transaction instruction. The communications gateway may have the capability to execute the transaction itself using that information, or to instruct a financial institution to do so, and so may alternatively be described as a transaction processing server.”)
receiving a request from a consumer; sending the request to the merchant; receiving, from the merchant, a payment order associated with the request and including a unique identifier, the payment order being received via a merchant programmable user interface; confirming the payment order to transform the payment order to a confirmed payment order; sending the confirmed payment order to a user; ([0032]-[0034], “The consumer may use the browser 112 to browse for a product or products on the merchant's website. When the consumer decides to purchase the product(s), they may put the product(s) in their ‘shopping basket’ and enter the checkout process in data transfer 205 between the browser 112 and the merchant server 130. If the product will ultimately require delivery to the consumer and the merchant offers the consumer straightforward delivery options, for example expedited delivery or standard delivery, this may also be selected by the consumer when entering the checkout process, and the delivery information, for example cost and type of delivery and expected delivery date etc, may also be included in data transfer 205.”; [0037], “The merchant server 130 may also generate a tracking reference, which is a unique code that may subsequently be used by the merchant and consumer to identify the transaction.”; [0039], “Having been informed that the consumer would like to use the transaction provider's service, the merchant server 130 transmits the transaction information, comprising the merchant ID, the tracking reference and a basket amount, which indicates the total costs of all of the products in the consumer's basket, to the transaction provider node 142.”)
receiving, from the user, a payment authorization associated with the confirmed payment order, the payment authorization being received via a consumer programmable user interface, and performing a transaction in accordance with the payment authorization, the performing of the transaction in accordance with the payment authorization using a secure internal switch and being associated with the internal consumer wallet account, the internal consumer wallet account being associated with an account of the user; and the account of the user being at least one of: a credit account, a debit account, a savings account, a loyalty account, and a virtual currency account. ([0049], “In order to complete the transaction, the consumer may select a ‘confirm’ button on the app 122, which transmits an instruction from the app 122 to the communications gateway 150 in data transfer 250 so that the communications gateway may execute the transaction. The transaction may be executed for example using a Faster Payments Service transfer or any other payment mechanism, from a source of funds of the consumer, for example a bank account, credit card or payment wallet that the consumer linked to the app 122 when registering the app 122 with the transaction provider, to an account that the merchant specified when registering for the transaction service, wherein the merchant to be paid and the amount to be paid is obtained by the communications gateway 150 from the database 144 using the transaction identifier included in the transaction instruction. The communications gateway may have the capability to execute the transaction itself using that information, or to instruct a financial institution to do so, and so may alternatively be described as a transaction processing server.”)
Goldstone does not explicitly teach, but Xiu teaches:
the payment authorization from the user comprising: a secure, encrypted, Internet Protocol (I1) message using encryption hashed with public and private key management; ([0197], “The credit payment token can be digitally signed by using asymmetric key encryption to generate the credit payment code. The server can generate a private key based on the user identity information or payment information to encrypt the credit payment token. In some cases, the private key is used to encrypt part of the credit payment token. For example, a private key can be generated for the user account to sign the security content included in the credit payment token, and a public key can be used to encrypt the user identity information.”)
One of ordinary skill in the art would have recognized that applying the known technique of Xiu to the known invention of Goldstone would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such encryption features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the payment authorization from the user so it is comprised of a secure, encrypted IP message using encryption hashed with public and private key management results in an improved invention because applying said technique ensures that the IP message is secured by asymmetric encryption, thus improving the overall security of the invention.
As per claims 2, 12¸ Goldstone teaches:
the merchant programmable user interface configured to perform: authorizing a payment from the PSP to the merchant; preauthorizing the payment from the PSP; voiding the payment from the PSP; refunding the payment from the PSP; and settling the payment from the PSP. ([0091], “In an implementation of the present application, after the collecting credit authorization data for a current transaction obtained by an intelligent terminal from a remote server, the method further includes: performing one or more of the following operations to verify the credit authorization data: comparing time information included in the credit authorization data with a current time, and if the current time is later than the time information included in the credit authorization data, determining that the credit authorization data has expired, and canceling the current transaction; determining whether a random number included in the credit authorization data exists in previous transaction data; and if yes, determining that the credit authorization data is repeatedly used, and canceling the current transaction; and determining whether an amount of the current transaction exceeds a credit limit included in the credit authorization data, and if yes, canceling the current transaction.”)
Goldstone does not explicitly teach, but Xiu teaches:
wherein the merchant programmable user interface is coupled with a mobile Points Of Sale (mPOS) terminal, the merchant programmable user interface configured to perform: registering the terminal; managing the terminal; ([0136], “The POS machine is also registered with the remote server, and the remote server delivers a public key to the POS machine.”)
One of ordinary skill in the art would have recognized that applying the known technique of Xiu to the known invention of Goldstone would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such POS terminal management features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the merchant programmable user interface so it is coupled with a mobile point of sale terminal that is registered results in an improved invention because applying said technique ensures that a POS terminal can be verified as registered before proceeding with a transaction, thus improving the overall security of the invention.
As per claims 3, 13¸ Goldstone teaches:
wherein the performing a transaction in accordance with the payment authorization further comprises: sending a payment confirmation to the merchant in accordance with the payment authorization;([0084], “If the current payment status indicates that the transaction has been completed successfully, the transaction provider node 142 will have returned to it in data transfer 520 a confirmation of successful transaction, which might include any relevant transaction information, for example what the transaction amount was, the tracking reference for the order, the time and date of payment and some attribute information, such as a delivery address. Using this information, the transaction provider node 142 may generate a payment confirmation token and send return that to the merchant server 130 via the browser 112 in data transfer 525.”)
issuing a receipt to the consumer; ([0087], “The merchant may also go about fulfilling the product order, for example by dispatching the product(s) to the consumer's delivery address, and may issue a receipt of purchase to the consumer, for example by post or to an email address of the consumer also included in the payment confirmation token as part of the attribute information held on the database 144.”)
As per claims 5, 15¸ Goldstone teaches:
wherein the secure internal switch applies signing, authentication, and business rules to the secure transaction, which is managed via a fraud control policy, risk management, and end-to-end business rules; ([0067], “In response to the polling, the transaction provider node 142 may request the required attribute information from the database 144 in data transfer 416 and then receive the requested information in data transfer 417 if the requested information has been added to the transaction information on the database 144, for example if the consumer has added their delivery address to the database 144 in earlier data transfers 405 and 410. Having received the requested attribute information, the transaction provider node 142 will generate an attribute confirmation token and send it to the merchant server 130 via the browser 112 in data transmission 420. The attribute confirmation token may also include an indication of how trustworthy the attribute information is, for example if it is from a verified source, such as the information that the consumer registered with the transaction provider, or an external source such as a credit rating agency, it may be marked as very trustworthy. However, if the consumer has just submitted the attribute information themselves, it may be marked as potentially untrustworthy. This allows the merchant server 130 to make policy decisions regarding whether or not to go ahead on the basis of how trustworthy the information is.”; [0086], “The transaction provider node 142 may apply a digital signature and encryption or other integrity controls to the payment confirmation token so that the merchant server 130 can confirm who the payment confirmation token was issued by and that the payment confirmation token has not been tampered with. As explained above, any keys that are issued to the merchant server 130 and transaction provider node 142 for such purposes may be stored using software, or more preferably in a hardware protected key store (HSM) for additional security.”)
As per claims 6, 16¸ Xiu teaches:
wherein at least one of the encrypted payment order, the encrypted confirmed payment order, and the encrypted payment authorization is encrypted using a secure, encrypted, Internet Protocol (IP) message using encryption hashed with public and private key management; ([0197])
As per claims 7, 17¸ Goldstone teaches:
wherein the validation message is sent to the external PSP and performing of the transaction is associated with the external PSP, the external PSP being at least one of: a credit account, a bank account, and a third-party PSP. ([0049])
As per claims 8, 18:
Applicant attempts to further limit the invention by describing characteristics of the unique identifier. However, this is representative of non-functional descriptive material as characteristics of the unique identifier does not result in a functional relationship with the invention and therefore cannot be used to differentiate Applicant's invention from the prior art invention. See MPEP 2111.05; In re Gulack, 217 USPQ 401 (Fed. Cir. 1983) (“When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability.”). Specifically, the steps of receiving/confirming the payment order that includes a unique identifier is carried out the same way regardless of the type of unique identifier: there is no evidence the characteristics of the unique identifier changes the efficiency or the accuracy or any other characteristic of the receiving/confirming. See Ex Parte Nehls, 88 USPQ2d 1883 (BPAI 2008) (“Here, the descriptive material (SEQ ID NOs) recited in the claims is not functional material like the data structures in Lowry. There is no evidence that SEQ ID NOs 9-1008 functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison. Rather, the SEQ ID NOs are merely information being manipulated by a computer; the SEQ ID NOs are inputs used by a computer program that calculates the degree of similarity between a target sequence and each of the sequences in a database. The specific SEQ ID NOs recited in the claims do not affect how the method of the prior art is performed – the method is carried out the same way regardless of which specific sequences are included in the database (emphasis added).”)
As per claims 9, 19¸ Goldstone teaches:
sending, to the consumer and the merchant, one or more payment confirmations associated with the performing of the transaction in accordance with the payment authorization. ([0084], “The merchant may obtain confirmation by instructing the browser 112 to poll the transaction provider node 142 in data transfer 510 for confirmation of a successful transaction. In response to a polling request, the transaction provider node 142 may use the transaction identifier to check the current payment status on the database 144 in data transfer 515. If the current payment status indicates that the transaction has been completed successfully, the transaction provider node 142 will have returned to it in data transfer 520 a confirmation of successful transaction, which might include any relevant transaction information, for example what the transaction amount was, the tracking reference for the order, the time and date of payment and some attribute information, such as a delivery address. Using this information, the transaction provider node 142 may generate a payment confirmation token and send return that to the merchant server 130 via the browser 112 in data transfer 525. At the same time, the transaction provider node 142 may update the database 144 to record in the transaction information that the payment confirmation token has been sent to the browser 112.”)
As per claims 10, 20¸ Goldstone teaches:
downloading by the consumer an application to shop for goods and services offered by the merchant; and receiving a selection of at least one of the goods and the services from the customer for purchase via an application installed on a computing device of the customer. ([0030], “The mobile terminal 120, which may be, for example, a tablet computer or a smart phone, comprises a transaction application 122, referred to from hereon as an ‘app’.”; [0045]-[0047], “FIG. 3 shows an example of a browser display after the browser 112 has generated and displayed the QR code 114. Alongside the QR code 114, a basket description 310, which details the contents of the basket as earlier selected by the consumer using the browser 112, a basket amount 320, which shows the cost of the products selected by the consumer using the browser 112, and any available delivery details if the consumer selected a particular delivery option using the browser 112 upon ‘check-out’ of the basket, for example delivery costs and type. The consumer may then use the app 122 on the mobile device 120 to scan the QR code 114 and extract the transaction identifier, thus transferring the transaction identifier from the browser 112 to the app 122 in data transfer 225. So that the consumer may confirm the details of the transaction using the app 122, the app 122 transmits the transaction identifier to the communications gateway 150 in data transfer 230.”)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
United States Patent No. 10296887 to Kingsborough discloses card-free programs provided by a merchant to a customer, whereby the customer has access to functions such as payment options and/or loyalty program benefits without needing to present a physical card at a point of sale. For example, a customer may make a card-free purchase of goods or services from a merchant, whereby the customer need not present a card such as a debit card, credit card, loyalty card, or other physical tender to make a purchase. Further, the customer need not provide biometric data or otherwise use an electronic device or identifier to make a purchase. Alternatively or additionally, the customer may access a loyalty program without needing to provide a physical card or data associated with a card.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anita Coupe can be reached on (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY HUANG/Primary Examiner, Art Unit 3619
1 https://www.investopedia.com/terms/t/third-party-transaction.asp
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