Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claims 1-15 were pending. On 7/28 after a conversation with the attorney of record, Robert Morris was agreed to restrict without traverse to claims 6-10. Thus claims 6-10 are pending and claims 1-5, 11-15 are withdrawn.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, are, drawn to a payment transaction authorization server, classified in 705/44.
II. Claims 6-10 are, drawn to a payment card with buttons, classified in 705/41.
III. Claims 11-15 are, drawn to a graphical user interface for payments 705/17
The inventions are independent or distinct, each from the other because:
Inventions I, II and III are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as transaction card with buttons. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Three separate searches would otherwise be required.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with attorney Morrison on 7/28/26 a provisional election was made without traverse to prosecute the invention of II, claims 6-10. Affirmation of this election must be made by applicant in replying to this Office action. Claim 1-5,11-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim - 35 USC § 101- not applicable – “payment card” with a button and a magnetic strip.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 6-10 are rejected under 35 USC 102(b) as anticipated by US Patent Publication to Mullen 2009/0159700
As per claim 6 Mullen discloses; A payment card comprising:
at least one button operable by a user to select a third-party application; a dynamic magnetic stripe communication device configured to communicate payment information and user-selected third-party application information to a point-of-sale terminal upon activation; a processor coupled to the dynamic magnetic stripe communication device,
Mullen(stripe 0015 device)
configured to generate signals indicative of the user-selected third-party application in response to user interaction with the button; and memory storing discrete data codes associated with third-party applications selectable by the user. Mullen(0015 buttons)
as per claim 7 Mullin discloses;
The payment card of claim 6, further comprising a display configured to visually indicate the currently selected third-party application to the user.
Mullin(00147)
As per claim 8 Mullion discloses; The payment card of claim 6, further comprising a wireless communication device configured to receive updates for third-party application options selectable via the button. Mullin (0082)
As per claim 9 Mullin discloses; The payment card of claim 6, wherein the processor is configured to alter transaction authorization based on the signals indicative of the user-selected third-party application.
Mullin(0114)
As per claim 10, Mullin discloses;
The payment card of claim 6, further comprising a sensor configured to detect the presence of a magnetic stripe reader to initiate communication of the user-selected third-party application information.
Mullin(0106-7)
As per claim 12 Mullin discloses;
The method of claim 11, wherein the plurality of selectable third-party applications includes currently featured and previously featured applications. Mullin(0071)
As per claim 13 Mullin discloses; The method of claim 11, further comprising receiving feedback from the third-party application indicative of successful completion of an additional service. Mullin(0046)
As per claim 14 Mullin discloses; The method of claim 11, wherein communicating the user-selected third-party application information includes embedding the information within discretionary data of a payment transaction.
Mullin(0020 discretionary data)
As per claim 15, Mullin discloses; The method of claim 11, wherein initiating execution of the third-party application includes performing a piggyback transaction separate from an original payment transaction.
Mullin(Per applicant spec, 0054, this is an additional transaction…. Mullen 0012 talks about consecutive purchases)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, from IP.com
XEPS Enabling Card-Based Payment for Mobile Terminals, IEEE 2009
Wallet-on-wheels — Using vehicle's identity for secure mobile money, IEEE 2013
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693
Prosecution Insights