DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
This application is a continuation application of U.S. application no. 18/742,184 filed on June 13, 2024, now U.S. Patent no. 12,430,636 (“Parent Application”), which is a continuation application of U.S. application no. 17/985,407 filed on November 11, 2022, now U.S. Patent no. 12,086,971, which is a continuation application of U.S. application no. 14/205,605 filed on March 11, 2014, now U.S. Patent 11,599,873 which is a continuation-in-part of U.S. application no. 14/147,330 filed on January 3, 2014, now U.S. Patent 11,475,436, which is a continuation-in-part of U.S. application no. 13/483,711 filed on May 30, 2012, currently pending, which is a continuation-in-part of international application no. PCT/US11/40055 filed on June 10, 2011. U.S. application no. 13/483,711 is also a continuation-in-part of international applications PCT/US11/20570 filed on January 7, 2011 and PCT/US11/49338 filed on August 26, 2011. 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).
Applicant’s claim for the benefit of U.S. provisional patent applications 61/776,594 filed March 11, 2013, 61/779,334 filed March 13, 2013, 61/748,679 filed January 3, 2013, 61/799,500 filed March 15, 2013, 61/491,791 filed May 31, 2011, 61/491,813 filed May 31, 2011, 61/496,397 filed June 13, 2011, 61/496,404 filed June 13, 2011, 61/354,469 filed June 14, 2010, 61/354,470 filed June 14, 2010, 61/360,327 filed June 30, 2010, 61/293,413 filed January 8, 2010 and 61/377,800 filed August 27, 2010 under 35 U.S.C. 119(e) is acknowledged.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Provisional Application Nos. 61/748,679, 61/799,500, 61/491,791, 61/491,813, 61/496,397, 61/496,404, 61/354,649, 61/354,470, 61/360,327, 61/293,413 and 61/377,800 and Non-Provisional Application Nos. 14/147,330 and 13/483,711 and International Application Nos. PCT/US11/40055, PCT/US11/20570 and PCT/US11/49338 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claims 7-8 and 15-16 claim an “NFC chip” which does not appear to be supported until March 11, 2013 in provisional application no. 61/776,594. With regard to claims 9-10, 17 and 19-20 which claim a smart chip and a rewriteable magnetic stripe these features also do not appear to be supported until March 11, 2013 in provisional application no. 61/776,594. Therefore priority for claims 7-10, 15-17 and 19-20 will only be extended until March 11, 2013.
Claim 18 recites that the electronic wallet “…has consumer specified parameters for use and restriction of the proxy card”. Examiner does not see where any of the provisional applications provide any teaching regarding use and restriction of the proxy card that can clearly be viewed as being “consumer specified” as recited in the claim. The earliest application that appears to provide support for this language would appear to be the parent application 13/483,711 filed on May 30, 2012 (at paragraph 0043 of U.S. Patent Publication 2013/0054470). Therefore priority for claim 18 will only be extended to May 30, 2012.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on December 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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-19 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19 of prior U.S. Patent No. 12,430,636. This is a statutory double patenting rejection.
Instant claims 1-19 are an exact duplicate of allowed claims 1-19 from U.S. Patent 12,430,636 and therefore no difference in scope is present between the allowed claims and instant claims 1-19. Therefore instant claims 1-19 are directed towards the same invention that was already claimed by claims 1-19 of the issued patent.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 13-19 of U.S. Patent No. 11,599,873 and claims 1-8, 10-16 and 18-19 of U.S. Patent No. 12,086,791.
Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the issued patent contain all of the subject matter in instant claims 1-19 along with other subject matter and claims 1-19 of the instant application merely broaden the scope of issued claims 1-8 and 13-19 of issued patent 11,599,873 and 1-8, 10-16 and 18-19 of U.S. Patent 12,086,791 but as the claim scope is encompassed by the issued claims the issued claims can be viewed as anticipating the instant claims (MPEP § 804 (II)(B)(2). Therefore a patent issued on the instant claims would represent unjustified or improper timewise extension of the “right to exclude” granted by said patent and would allow possible harassment by multiple assignees.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Independent claims 1, 11 and 19 each require a combination of a proxy card/wallet redemption card with a rewriteable magnetic stripe and an electronic wallet-generated virtual stored value number. Paltenghe et al. (U.S. Patent Publication 2002/0004783, hereinafter referred to as Paltenghe) teaches a virtual wallet that Paltenghe describes as “a hybrid between a wallet that resides local with the owner, 2 and a wallet that resides remotely, such as with a server, 4” (0045). Paltenghe describes the local residence of a wallet as potentially including a smart card (0046). In the example of paragraphs 0090-0096 Paltenghe describes that the card may have an area “equivalent to the magnetic strip on current cards” (0093) and additionally describes that such an area would “…allow the physical card to become a proxy for any of the cards contained in the wallet” which would seem to indicate that this area would be rewriteable when switching amongst different cards but Paltenghe does not describe anything that would read on the electronic wallet-generated virtual stored value number recited in claims 1, 11 and 19. Spodak et al. (U.S. Patent Publication 2013/0024372, hereinafter referred to as Spodak) discloses a dynamic magnetic stripe (0042-0043) on a universal card which would also appear to read on the rewriteable magnetic stripe but does not explicitly disclose that an electronic wallet-generated virtual stored value number is used as payment information (Examiner is interpreting the electronic wallet-generated virtual stored value number as a form of token for the actual account number and based on the language of paragraph 0089 of the written disclosure “… an e-wallet user may start using their e-wallet to pay for goods and services even when merchants do not support an e-wallet as a form of payment through use of a physical or virtual proxy card enabling the customer to make in-person or online payments by generation of a virtual stored value number generated in the e-wallet to access the actual payment instrument in the customer's e-wallet” the token is generated at the wallet and is in a form that allows use of the virtual stored value number as a proxy for the actual account number at merchants with legacy systems). While Paltenghe and Spodak would presumably write an actual account number to the magnetic stripe of their respective cards, this would be an assigned account number and not a form of token that is generated by the wallet itself. Raghunathan (U.S. Patent Publication 2010/0057580) was cited in the parent application for a unified payment card that would read on the claimed proxy card. However Raghunathan does not explicitly disclose that the proxy card comprises a rewritable magnetic stripe. Wankmueller (U.S. Patent Publication 2001/0027441) was cited in the parent application for an electronic wallet-generated virtual stored value number (a cryptogram at 0022 and 0030 which is more akin to a dynamic CVV as opposed to a token linked to an account number) but is also deficient with regard to a rewriteable magnetic stripe. Krause (U.S. Patent 6,398,115) was cited in the parent application for the feature of a rewriteable magnetic stripe but does not disclose where a smart chip on the proxy card is configured to receive payment information from the electronic wallet, send the payment information to a rewritable magnetic stripe via an interface, and wherein the interface is configured to write the payment information including an electronic wallet-generated virtual stored value number for the proxy card to the rewritable magnetic stripe. Therefore the recited references do not fairly teach or suggest the combination of smart chip, rewriteable magnetic stripe and electronic wallet-generated virtual stored value number as is being claimed. There are a few non-patent literature references that Examiner views as pertinent to proxy cards containing a smart chip. The first is EMV Mobile Contactless Payment: Technical Issues and Position Paper, Version 1.0, October 2007, EMVCo, 37 pages, hereinafter referred to as EMV Mobile. EMV Mobile is directed towards the implementation of contactless payment on a mobile device including provisioning and personalization of the secure element on a mobile platform (1.1). This includes usability of the mobile device for user authentication and cardholder verification, multiple payment applications on a single mobile device and payment credential selection process amongst others (1.1). EMV Mobile builds on other references including identification cards comprising contactless integrated circuit cards ISO/IEC 14443, NFC, proximity payments, personalization as specified by the Mobile Payment Forum and the GlobalPlatform Card Specification (1.2). Figure 1 shows a typical mobile platform environment including a plurality of payment applications placed into the secure element (1.4.1). Figures 2 and 3 show example implementations of logical interfaces which include a wide area modem and a contactless modem (also 1.4.1). In section 1.5 a discussion is made with regard to the provisioning and personalization of the mobile device by the card issuer and in Figure 4 the use of a mobile device in a payment transaction at a merchant point of sale device is illustrated. Section 2 goes into length with regard to the provisioning and personalization process. However EMV Mobile does not disclose any form of magnetic stripe. EMV Contactless Specifications for Payment Systems: EMV Contactless Communication Protocol Specification, Version 2.0, August 2007, 159 pages, hereinafter referred to as EMV Contactless, discloses the minimum functionality required of Proximity Integrated Circuit Cards (PICCs) and Proximity Coupling Devices (PCDs) where the PCDs are representative of a terminal that uses inductive coupling to provide power to the PICC and also to control the data exchange with the PICC (1.1, 1.6). EMV Contactless clearly shows the intended environment in which the contactless card is used (section 2.1, Figure 2.1) along with the detailed requirements for the RF interface (section 3). However EMV Contactless fails to disclose a magnetic stripe as is claimed. GlobalPlatform Card Specification, Version 2.2.1, Public Release, January 2011, 303 pages, hereinafter referred to as GlobalPlatform, is directed toward the reduction of barriers hindering the growth of cross-industry, multiple Application smart cards in payments and communications industries, the government sector and the vendor community (1). The specification states that “Through the Open Platform initiative, first Visa International and now GlobalPlatform have been working with the chip card industry to deliver a missing and critically important chip card standard – a hardware-neutral, vendor-neutral, Application-independent card management specification. This new specification provides a common security and card management architecture that protects the most important aspect of a chip card system investment – the infrastructure” (1). The work relies on established standards involving smart cards, cryptography and key management, messaging protocols, identification cards and other (1.3). GlobalPlatform is intended to run on top of any secure, multi-application card runtime environment which provides a hardware-neutral API for applications as well as a secure storage and execution space for applications to ensure that each application’s code and data can remain separate and secure from other applications on the card. The card’s runtime environment is also responsible for providing communications services between the card and off-card entities (3.3). The cards comply with standards such as ISO/IEC 7816-3, ISO/IEC 7816/4, ISO/IEC 14443-3 and ISO/IEC 14443-4 (3.3). GlobalPlatform Environment (OPEN) provides an API to applications, command dispatch, Application selection, (optional) logical channel management, and Card Content Management (3.5). Card Content is available in the form of an Executable Load File that may be stored at the time of manufacture in the form of Immutable Persistent Memory or loaded or removed during Pre-Issuance or Post-Issuance in Mutable Persistent Memory (3.7). The card therefore is very flexible in the ability to host multiple cards. However GlobalPlatform does not teach or fairly suggest that a smart chip is configured to write the payment information including an electronic wallet-generated virtual stored value number for the proxy card to the rewritable magnetic stripe. No prior art alone or in combination fairly teaches or suggests this feature. Therefore claims 1-20 contain allowable subject matter in view of the prior art.
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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/JAMES D NIGH/Senior Examiner, Art Unit 3699
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