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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on July 16, 2025, is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,393,934. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 11
‘934 Patent
A method comprising:
Claim 1: A method of transaction authentication, the method comprising:
receiving, from a merchant in a first transaction, first data comprising authentication data and second data associated with the first transaction and data identifying an authentication process in which the merchant authenticates a card holder, wherein the merchant is unauthorized to store the first data;
Claim 1: receiving, from a merchant in a first transaction, first data comprising authentication data and second data identifying the first transaction and including a characteristic of the first transaction, the characteristic of the first transaction comprising a transaction identifier or a time and date of the first transaction, and data identifying a specific authentication process in which the merchant authenticates a card holder, wherein the first transaction is between the merchant and the card holder, wherein the merchant is unauthorized to store the first data;
responsive to receiving the first data and the second data, generating a cryptographically signed token corresponding to the first transaction by cryptographically signing the second data;
Claim 1: responsive to receiving the first data and the second data, generating a cryptographically signed token corresponding to the first transaction by cryptographically signing the second data such that the cryptographically signed token comprises cryptographically signed (1) the characteristic of the first transaction comprising the transaction identifier or the time and date of the first transaction, and (2) data identifying the specific authentication process;
transmitting the cryptographically signed token to the merchant, the merchant thereafter storing the cryptographically signed token;
Claim 1: transmitting the cryptographically signed token to the merchant, the merchant thereafter storing the cryptographically signed token;
receiving, from the merchant, data corresponding to a second transaction and the cryptographically signed token, wherein the data corresponding to the second transaction is devoid of the first data and any additional authentication data;
Claim 1: receiving, from the merchant, data corresponding to a second transaction and the cryptographically signed token, wherein the data corresponding to the second transaction is devoid of the first data and any additional authentication data;
authenticating the cryptographically signed token using a public key, wherein a successful authentication of the cryptographically signed token validates that the first transaction has genuinely occurred and was successfully authenticated;
Claim 1: authenticating the cryptographically signed token by cryptographically validating the cryptographically signed token using a public key of a public key certificate, wherein a successful authentication of the cryptographically signed token confers confidence that the first transaction has genuinely occurred and was successfully authenticated since the cryptographically signed token was generated using data identifying the specific authentication process associated with the first transaction, thereby
determining that an authenticated association exists between the second transaction and the first transaction based on the successful authentication of the cryptographically signed token using the public key; and
Claim 1: determining that an authenticated association exists between the second transaction and the first transaction based on the successful authentication of the cryptographically signed token using the public key; and
authorizing the second transaction when the authenticated association exists between the second transaction and the first transaction.
Claim 1: authorizing the second transaction when the authenticated association exists between the second transaction and the first transaction.
Claims 2 and 12
‘934 Patent
transmitting data indicative of a result of the authentication of the cryptographically signed token to a payment card issuer.
Claim 2: transmitting data indicative of a result of the authentication of the cryptographically signed token to a payment card issuer.
Claims 3 and 13
‘934 Patent
wherein the second transaction comprises a resubmission of the first transaction.
wherein the second transaction comprises a resubmission of the first transaction.
Claims 5 and 15
‘934 Patent
wherein the first transaction is a card-not-present transaction, and the authentication data comprises a card security code.
Claim 6: wherein the first transaction is a card-not-present transaction.
Claim 7: wherein the authentication data comprises a card security code.
Claims 6 and 16
‘934 Patent
wherein at least the second transaction is one of a series of recurring transactions, each of the series of recurring transactions occurring in accordance with a pre-determined schedule.
Claim 8: wherein at least the second transaction is one of a series of recurring transactions, each of the series of recurring transactions occurring in accordance with a pre-determined schedule.
Claims 7 and 17
‘934 Patent
wherein the first transaction comprises authorization for one or more subsequent transactions including at least the second transaction, and in which at least one of a number, timing, and monetary amount of the one or more subsequent transactions was unknown when the first transaction was conducted.
Claim 9: wherein the first transaction comprises authorization for a subsequent transaction or transactions including at least the second transaction, and in which at least one of a number, timing, and monetary amount of said subsequent transaction or transactions was unknown when the first transaction was conducted.
Claims 8 and 18
‘934 Patent
wherein the second data includes one or more of a transaction identifier, a time and date of the first transaction, data regarding channels in which subsequent transactions can occur without further authentication, or data identifying the merchant.
Claim 1: second data identifying the first transaction and including a characteristic of the first transaction, the characteristic of the first transaction comprising a transaction identifier or a time and date of the first transaction, and data identifying a specific authentication process in which the merchant authenticates a card holder
Claim 12: wherein the characteristic of the first transaction further includes data regarding channels in which subsequent transactions can occur without further authentication.
Claims 9 and 19
‘934 Patent
wherein the first data is received from the merchant via an acquirer bank that validates details of the first transaction.
Claim 13: wherein the first data is received from the merchant via an acquirer bank.
Claim 14: wherein the acquirer bank validates details of the first transaction.
Claims 4, 10, 14, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,393,934 in view of U.S. Patent Pub. No. 2002/0111919 to Weller et al.
Claims 4 and 14
‘934 Patent
the authentication process comprises a chip and PIN authentication process.
Claim 16: wherein the authentication process comprises a chip and PIN authentication process.
Weller
wherein the first transaction is a card-present transaction, and
¶ 3: The most common method to authenticate a cardholder's ownership of an account occurs routinely at a point of sale during what is called a "card present" transaction. A card present transaction involves a merchant's representative taking the cardholder's card, swiping it though a payment card terminal to verify account status and credit line availability, and then checking to see that the signature on the back of the card matches the purchaser's signature.
Claims 10 and 20
Weller
wherein a message transmitting the cryptographically signed token to the merchant further comprises an authorization decision associated with the first transaction indicating whether the first transaction is authorized or declined.
¶ 67: After the issuer financial institution processing of the authorization transaction is complete, control of the purchase transaction is then returned to the merchant's storefront software via the payment network. The issuer then returns the authorization response via the payment network to the merchant. In step 5 of FIG. 4, the issuer financial institution will either authorize or decline the transaction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2014/0040144 discloses systems and methods for multi-merchant tokenization may include receiving a transaction from a point of sale terminal of a merchant, validating the merchant ID against merchant logs, and generating a token for the transaction. The token includes a primary account number, expiration, and a group ID. Additionally, the system provides the primary account number to a payment system and receives a response back. The response is then output back to the merchant along with the token. In subsequent transactions, the system may receive the token from a one point of sale terminal of the merchant. The system validates the merchant ID against merchant logs and ensures the merchant is configured for tokenization. The token is decrypted and the group ID is compared to the merchant ID in the merchant logs. When they match, the primary account number is provided to the payment system for approval.
U.S. Patent Pub. No. 2002/0161721 discloses that a first user (110) requests a service provider (130) to create (200,400) a record of a transaction. The service provider (130) creates (230,430) a digital receipt (300,700,900), which includes a description (310,710,720,910,1020) of the transaction understandable by humans, tamper-proof evidence (320) of the transaction, and a verification prompt (330,740,940,1030). A second user (120) who desires to verify the transaction displays (265,465) the digital receipt (300,700,900) and activates (270,470) the verification prompt (330,740,940,1030). Upon activation, the tamper-proof evidence (320) is verified without requiring further human interaction to identify the tamper-proof evidence.
U.S. Patent Pub. No. 2003/0061171 discloses a system for and method of performing a transaction between a consumer (105) and a business entity (110). The method comprising the acts of providing transaction data from a submitter (105) to a transaction facilitator (120), generating a token (130) that identifies the transaction data, storing the transaction data and the token at the transaction facilitator (120), providing the token to the submitter (105), returning the token (130) to the transaction facilitator, obtaining the stored transaction data identified by the token, and using at least a portion of the obtained transaction data to implement the transaction.
U.S. Patent Pub. No. 2005/0156026 discloses that a mobile terminal is enabled to conduct an EMV transaction. A wireless access node in the EMV card-reader terminal is provided for connecting a mobile terminal to the card-reader terminal. An EMV-proxy module executing in the card-reader terminal facilitates communication between the mobile terminal and the card-reader terminal. The EMV-proxy module lets the mobile terminal function in essentially the same way as a regular EMV chip card with respect to the card-reader terminal. The card-reader terminal may then conduct EMV transactions on behalf of the mobile terminal without requiring new software and/or hardware at the EMV issuer. EMV data is stored in the mobile terminal in the form of secure dynamic data objects.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NILESH B KHATRI/Primary Examiner, Art Unit 3699