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
CONTINUATION
This application is a continuation application of U.S. application no. 18/478,313 filed on September 29, 2023, now U.S. Patent 12,387,211 (“Parent Application”). See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on July 18, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being 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 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,387,211.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1 and 12 merely remove language from issued claim 1 and therefore claim 1 of the issued patent anticipates instant claims 1 and 12.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Liu et al. (U.S. Patent Publication 2018/0150816, hereinafter referred to as Liu) is the closest prior art that was revealed in Examiner’s search. Liu discloses a personal device associated with a personal POS terminal residing on the device (Abstract, 0017-0018) where a script is integrated into either the user device and/or a merchant system (0012). The personal POS terminal may be a system (or an application on a mobile device) through which a consumer may pay for transactions by providing a payment token to the personal POS terminal. The personal POS terminal may comprise a payment instrument acceptance device (PIAD) for payments by a physical instrument (e.g., a charge card) associated with a transaction account (0018). The PIAD may be configured to receive a payment token from a physical payment instrument (e.g., charge card) being in contact with or proximity to the user device by exchanging Application Protocol Data Unit (APDU) via NFC (0020). PIAD may utilized the hardware allowing NFC communication to receive the payment token from the physical instrument during a transaction (0020). A device identifier is assigned to the consumer’s device and is used to link the device belonging to the consumer and to associate and communicate the transaction data between the user device and a service system (0022) which may comprise an acquirer system (0023). Once the personal POS terminal is activated the service system may instruct the user device to display the transaction details (e.g., merchant identification, products/services being purchased, monetary amount, date of transaction, etc.) which are then displayed on a display screen (0032). When the consumer accepts the transaction service system and/or personal POS terminal may request payment from the consumer for the transaction (0033). The consumer may either place a physical payment instrument (e.g., a credit or debit card) in proximity to or in contact with the PIAD of the user device from which personal POS terminal will receive a payment token or unlock electronic wallet to pay with a virtual payment instrument stored in the electronic wallet (0033). Personal POS terminal, in response to receiving the payment token, may transmit the payment token to service system. A payment token may comprise a unique identifier associated with the transaction account and/or payment instrument used for the transaction, transaction and merchant data/identifiers, and a cryptogram over the transaction details to secure the payment token from unauthorized alternation, and to provide authenticity of the presence of the payment instrument issued by issuing banks. Service system may transmit the received payment token to a separate acquirer service for onward processing. If service system comprises acquirer system, service system may process the payment transaction by affiliating with and requesting the transaction account issuer to authorize the transaction, and communicate the approval or decline decision back to the virtual terminal system of merchant system (0034). The virtual payment instrument is not described in any particular detail and as a result Examiner could not determine whether the virtual payment instrument contains the details of the actual credit or debit card or if instead the virtual payment instrument is a tokenized version of credit or debit card details.
In reviewing Liu while a script is disclosed as being used it is clear that Liu does not fairly teach or suggest a “set” of platform-specific scripts as recited in claims 1 and 12. Liu, while disclosing sending a token from the personal POS terminal to a service system, also does not clearly teach or suggest the generation of a transaction processing request message using the set of platform-specific scripts as recited in claims 1 and 12. Also with regard to claims 1 and 12 Liu does not teach or fairly suggest that a separate server is transmitting the set of platform-specific scripts to a resource provider computer as in Liu the service system is taught as supplying the script but whether these are being obtained from an external source by Liu’s service system is outside the scope of Liu. No prior art was found that would correct any of the deficiencies of Liu. The closest non-patent literature found by Examiner was Maggini “Deciding between native and cross-platform mobile frontend programming frameworks”, IBM Developer, Published July 2, 2019 with Internet Archive retrieval date of August 5, 2020, 16 pages which describes the tradeoffs between using a plurality of native code instances written for each of a plurality of platforms or using one piece of code for use on a plurality of platforms and includes a discussion on the use of JavaScript that can be bound to native user interface widgets in order to achieve performance closer to that of native code. However Maggini does not correct the deficiencies of Liu as cited above. Therefore as no prior art alone or in combination fairly teaches or suggests each and every element of the claim Examiner deems that claims 1-20 would be allowable over the prior art once the issue of double patenting has been satisfied.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 5 AM to 2 PM Monday through Thursday.
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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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/JAMES D NIGH/Senior Examiner, Art Unit 3699
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