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 .
This is a final office action in response to the applicant’s amendment received on 07/28/2026 (“Amendment”).
Claims 1, 9, and 17 have been amended. Claims 1-20 are pending.
Continuation
This application is a continuation application of U.S. application no. 17/493,548 filed on 2021-10-14, now US Patent No. 12,499,433 (Parent Application), which is a continuation of U.S. application no. 16/291,917 filed on 2019-03-04, now US Patent No. 11,138,593 (Parent Application), which is a continuation of U.S. application no. 15/081,500 filed on 2016-03-25, now US Patent No. 11,188,919 (Parent Application) which claims priority over US provisional application 62/139,411 filed 2015-03-27. 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 Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2.
Official Notice Taken in Last Office Action
As official notice was taken in the previous office action, the common knowledge or well-known in the art statement is taken to be admitted prior art because the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate (see MPEP 2144.03 C). The common knowledge or well-known in the art statement is taken to be admitted prior art include: updating a database to disallow subsequent transaction associated with the token (i.e., card) based on receiving that the card is lost.
Information Disclosure Statement (IDS)
IDS received on 4/29/2026 and 8/06/2026 are being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 1-8 are directed to a method (i.e., process), claims while claims 9-16 are directed to a system, while claims 17-20 are directed to a to a non-transitory computer-readable media. Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Step 2A, 1st prong:
Claim 1 recites: A method of activating a card, the method comprising:
a) providing the card in a non-activated state;
b) activating the card prior to a transaction, wherein activating the card comprises:
b1) receiving, from a mobile device via a wireless transmission from the card to the mobile device, an authentication request including a cryptogram and a transaction charge amount;
b2) determining, using the transaction charge amount, that the authentication request is a transaction request;
b3) processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram;
b4) decrypting the cryptogram to reveal information regarding at least one of the card or a user;
b5) comparing the revealed information to information in a database;
b6) updating the database to indicate that the revealed information is confirmed; and
b7) activating, in response to a successful user authentication at the mobile device, the card for the transaction based on updating the database and the successful user authentication information; and
c) providing, to the mobile device, a token associated with the card for a mobile transaction using the mobile device involving the card..
(Emphasis added on the additional element(s))(Underlined represents newly added limitation)
The claim recites a process a) providing the card in a non-activated state; b) activating the card prior to a transaction by: b1) receiving an authentication request that includes a cryptogram and a transaction charge amount; b2) determining, using the transaction charge amount, that the authentication request is a transaction request; b3) processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram; b4) decrypting the cryptogram to reveal information regarding at least one of the card or user; b5) comparing the revealed information to stored information retrieved from a ledger; b6) updating the ledger to indicate that the revealed information is confirmed; and b7) in response to a successful user authentication, activating the card for the transaction based on updating the ledger and the successful user authentication information; and c) providing a token associated with the card for a transaction.
Under the broadest reasonable interpretation, the claim recites a process of activating a card that is issued in a non-activated state by authenticating a user and information from the card and providing a token (number representing the card) associated with the card to a user for transaction using the token. As such, the claim recites certain methods of organizing human activity (i.e., fundamental economic practices and commercial/legal interactions).
The examiner further submits that the steps of b2)-b5) are mental process as the steps can be performed in human mind using a pen and paper.
For these reasons, the claim recites an abstract idea. The other independent claims, i.e., claims 9 and 17, are significantly similar to claim 1. As such, claims 9 and 17 recite abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e., mobile device, wireless transmission card, database, non-transitory computer-readable media with computer-executable instructions, computing system comprising one or more processors, etc., amount to mere instructions to implement the abstract idea and/or merely uses a computer/computer components as a tool to perform an abstract idea – see MPEP 2106.05(f). There is no indication that claim improves the recited system or its components individually or in combination.
The examiner also submits that receiving from a mobile device via a wireless transmission from the card to the mobile device an authentication request is merely data gathering.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claim(s) as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component and generally linking the use of the judicial exception to a particular technological environment cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited computer component(s).
Dependent claims 2, 10, and 18 recite intended use of the token. In other words, the intended use of the token does not further limit the scope of the claim. Even if the intended use limits the scope of the claim, the additional element of application on the mobile device to add the card and present a status of the card is merely storing of the card information and displaying of the card information which represents adding insignificant extra-solution activity to the judicial exception – see MPEP 2106.05(g). The claim does not provide an inventive concept.
Dependent claims 3 and 11 further expand on the abstract idea of receiving indication that the card is lost or stolen. The additional element of a selectable element on a GUI amounts to no more than use of computer component to perform the abstract idea and does not provide an inventive concept.
Dependent claims 4, 11, and 19 further expand on the abstract idea of updating the ledger in the case of receiving the indication that the card is lost or stolen thereby subsequent transaction would not be allowed using the token and providing a replacement token. The claims do not recite further additional element(s) than those that have been identified in the independent claims above.
Dependent claims 5 and 13 recite additional element in reciting that the wireless transmission is a NFC tap with the mobile device. The additional element, however, amounts no more than use of instructions and/or computer component to perform the abstract idea. Furthermore, the NFC tap with the mobile device is in the context of receiving the authentication request which amounts to data gathering or adding insignificant extra-solution activity to the judicial exception. The claim as a whole or individually does not provide an inventive concept.
Dependent claims 6 and 14 recite further abstract idea of using one of PIN, biometric data, or answer to an identification question in authenticating prior to activating the card. The claims do not recite further additional element(s) than those that have been identified in the independent claims above.
Dependent claims 7 and 15 recite further abstract idea of generating of an encryption key and providing the generated encryption key for generating of the cryptogram, which falls within mental process that can be performed with human mind and/or certain methods of organizing human activity, i.e., risk mitigation.
Dependent claims 8, 16, and 20 recite further abstract idea that the cryptogram is encrypted using the encryption key and further recitation that the confirming the revealed information comprises verifying that the cryptogram was generated by the card which falls within mental process that can be performed with human mind and/or certain methods of organizing human activity, i.e., risk mitigation.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 5-6, 9, 13-14, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 12,373,821 (“Brickell”) in view of US Patent Publication No. 20020117541 (“Biggar”), US Patent Publication No. 20150081461 (“Adrangi”) and US Patent No. 6,000,608 (“Dorf”).
Per claims 1, 9, and 17, Brickell discloses a method of provisioning of a token associated with a card for a mobile transaction using a mobile device involving card, the method comprising:
providing the card (col. 14, lines 57-61, the user receives the payment card device 120 in the mail along with an approval of the user’s application for the payment device); and
providing, to the mobile device, a token associated with the card for a mobile transaction using the mobile device involving the card (col. 23, lines 7-8, the user computing device receives a token from the issuer system; col./line 23/18-24/5, the token comprises a virtual credit number and is associated with the payment card device used for transaction).
Brickell further teaches a system comprising one or more processors; and non-transitory computer readable media storing instructions.
PNG
media_image1.png
680
916
media_image1.png
Greyscale
PNG
media_image2.png
800
652
media_image2.png
Greyscale
Brickell does not particularly teach, but Biggar teaches, the card that is in a non-activated state; activating the card prior to a transaction wherein the card comprises: comparing a received information to information in a database; updating the database to indicate that the received information is confirmed; and activating, in response to a successful user authentication at the device, the card for the transaction based on updating the database and the successful user authentication information (see [0021], card information is processed by comparing previously-stored databased information; [0022]; [0024], if the card information does match the system data [0031], userID and password; [0033]-[0034], authenticates that the cardholder is the person who is supposed to correspond to the card; [0035], approves the card for use by the cardholder, updates its database and corresponding databases).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine the technique of activation as taught by Biggar to Brickell as the combination enhances Brickell by ensuring that others may not be able to use the issued card (see [0004]).
While Brickell/Biggar generally teaches the activation based on authentication and updating the database as described above, the combination does not particularly that verification of the information by receiving, from a mobile device via a wireless transmission from the card to the mobile device, an authentication request including a cryptogram; decrypting the cryptogram to reveal the information.
Adrangi, however, teaches receiving, from a mobile device via a wireless transmission from the card to the mobile device, an authentication request including a cryptogram; decrypting the cryptogram to reveal the information (see [0042]; [0044], payment instrument can transmit cryptogram via wireless connection with the reader; [0046], cryptogram comprises encrypted information that can be decrypted by the processor and can verify the payment instrument is a valid payment instrument).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to utilize the technique as described in Adrangi to Brickell/Biggar as the combination provide automation of delivering of the authentication information. Furthermore, one of ordinary skill in the art prior to the effective filing of instant claim would have recognized that by utilizing cryptogram technique, i.e., encrypted information, enhances Brickell/Biggar to ensure secure communication.
Brickell/Biggar/Adrangi does not disclose that the authentication request includes a transaction charge amount; determining, using the transaction charge amount, that the authentication request is a transaction request; and processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram.
Dorf, however, teaches authentication request that includes a transaction charge amount; determining, using the transaction charge amount, that the authentication request is a transaction request; and processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram (see col./line 5/50-6/22, nominal transaction amount for activation of the card).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine technique of using nominal transaction amount in activating the card to the activation process of the Brickell/Biggar/Adrangi since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claims 5 and 13, Brickell/Biggar/Adrangi/Dorf further teaches wherein the wireless transmission is a near-filed communication (NFC) tap with the mobile device (see Brickell: Fig. 1: NFC)(Adrange: [0014]-[0016]).
As per claims 6 and 14, Brickell/Biggar/Adrangi/Dorf further teaches receiving, from the mobile device, at least one of a PIN, biometric data, or an answer to an identification question prior to activating the card, wherein activating the card for the transaction is further in response to receiving a successful response of the at least one of the PIN, the biometric data, or the answer to the identification question (see Biggar: userID and password; [0033]-[0034], authenticates that the cardholder is the person who is supposed to correspond to the card using questions relating to the cardholder’s personal information or like identifiers; [0035], approves the card for use by the cardholder, updates its database and corresponding databases).
Claim(s) 2-4, 10-12, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brickell/Biggar/Adrangi/Dorf as applied to claims 1, 9, and 17 above, and further in view of US Patent Publication No. 20100076833 (“Nelson”).
Per claims 2, 10, and 18, Brickell/Biggar/Adrangi/Dorf further teaches wherein the token causes an application on the mobile device to add the card (see Brickell, col. 5, lines 30-52, token is also stored in the digital wallet application on the computing device allowing user to select; col./line 9/27-10/5, user interface for option to add a payment card device and selecting the payment card device for transaction).
Brickell/Biggar/Adrangi/Dorf does not, however, Nelsen teaches present a status of the card (see Fig. 8 – Fig. 11).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique of presenting a status of the card as taught by Nelsen to Brickell/Biggar/Adrangi/Dorf as the combination generally improves upon usability of the Brickell/Biggar/Adrangi/Dorf to provide pertinent information of the card to the user.
The applicant is reminded that the expression of “causes an application …” is intended use of the token.
As per claims 3 and 11, Brickell/Biggar/Adrangi/Dorf /Nelson further teaches receiving communication that the card is lost or stolen (see Brickell: col. 3, lines 50-53, the user lost a payment card and requests a replacement col. 14, lines 15-18).
Brickell does not particularly teach that an input, i.e., a selectable element on a GUI. However, as Nelson teaches selectable element on a GUI (see Fig. 4-11), it would have been obvious to one of ordinary skill prior to the effective filing of the claimed invention to utilize the selectable element on a GUI as a means for the user to notify and request the replacement card in Brickell as the combination generally improves upon usability of Brickell.
Claim(s) 4 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brickell/Biggar/Adrangi/Dorf/Nelson as applied to claims 3 and 11 above, and further in view of Admitted Prior Art (“APA”).
As per claims 4 and 12, and 19, while Brickell/Biggar/Adrangi/Dorf/Nelson teaches providing, to a replacement mobile device, a replacement token (see Brickell: col./line 3/50-col./line 4/2, the user lost a payment card and requests a replacement; col. 5, lines 20-32), Brickell/Biggar/Adrangi/Dorf/Nelson does not teach updating the database to disallow subsequent transactions associated with the token based on the input that the card is lost or stolen.
APA, however, discloses updating a database to disallow subsequent transaction associated with the token (i.e., card) based on receiving that the card is lost.
Hence, as Brickell/Biggar/Adrangi/Dorf/Nelson fairly teaches a technique of updating database of status of the card, issuance of a token used to perform transaction, requesting for a replacement in the case of lost card (see Brickell: col./line 3/50-col./line 4/2)(Biggar: [0035], updates its database and corresponding databases upon approving the card usage), it would have been obvious to one of ordinary skill in the art prior to the effective filing of the claimed invention to include the well known technique of updating the database to disallow subsequent transaction associated with the token upon notification that the card is lost to Brickell/Biggar/Adrangi/Dorf/Nelson in order to make sure that the lost card cannot be used by unauthorized entity.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brickell/Biggar/Adrangi/Dorf as applied to claim 17 above, and further in view of Admitted Prior Art (“APA”).
As per claim 19, while Brickell/Biggar/Adrangi/Dorf teaches providing, to a replacement mobile device, a replacement token (see Brickell: col./line 3/50-col./line 4/2, the user lost a payment card and requests a replacement; col. 5, lines 20-32), Brickell/Biggar/Adrangi/Dorf does not teach updating the database to disallow subsequent transactions associated with the token based on the input that the card is lost or stolen.
APA, however, discloses updating a database to disallow subsequent transaction associated with the token (i.e., card) based on receiving that the card is lost.
Hence, as Brickell/Biggar/Adrangi/Dorf fairly teaches a technique of updating database of status of the card, issuance of a token used to perform transaction, requesting for a replacement in the case of lost card (see Brickell: col./line 3/50-col./line 4/2)(Biggar: [0035], updates its database and corresponding databases upon approving the card usage), it would have been obvious to one of ordinary skill in the art prior to the effective filing of the claimed invention to include the well known technique of updating the database to disallow subsequent transaction associated with the token upon notification that the card is lost to Brickell/Biggar/Adrangi/Dorf in order to make sure that the lost card cannot be used by unauthorized entity.
Claim(s) 7-8, 15-16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brickell/Biggar/Adrangi/Dorf as applied to claims 1, 9, and 17 above, and further in view of US Patent Publication No. 201150046339 (“Wong”).
Per claims 7 and 15, Brickell/Biggar/Adrangi/Dorf does not particularly teach generating an encryption key for the card; and providing, to the mobile device, the encryption key for generating the cryptogram.
Wong, however, teaches generating an encryption key for the card; and providing, to the mobile device, the encryption key for generating the cryptogram (see Fig. 7).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique of key management as taught by Wong to Brickell/Biggar/Adrangi/Dorf for the purpose of enabling the entity that is providing the service to control the key management in ensuring the security.
As per claims 8, 16, and 20, Brickell/Biggar/Adrangi/Dorf/Wong further teaches wherein the cryptogram is encrypted using the encryption key, and wherein confirming the revealed information comprises verifying that the cryptogram was generated by the card (see Wong: Fig. 7)( Adrangi: [0042]; [0046]).
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 1-8 of U.S. Patent No. 12,499,433. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Per claim 1, ‘433 discloses a method of activating a card, the method comprising (claim 1):
providing the card in a non-activated state (claim 1: providing the card in a non-activated state);
activating the card prior to a transaction, wherein activating the card comprises (claim 1: activating the card prior to an initial card transaction, wherein activating the card comprises):
receiving, from a mobile device via a wireless transmission from the card to the mobile device, an authentication request including a cryptogram and a transaction charge amount (claim 1: receiving, from a mobile device via a wireless transmission from the card having the contactless chip to the mobile device, an authentication request including a cryptogram and a transaction charge amount of $0.00 or $0.01);
determining, using the transaction charge amount, that the authentication request is a transaction request; processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram (claim 1: processing, based on the transaction charge amount, the authentication request as a transaction request to reveal the cryptogram [processing necessarily teaches that the authentication request is a transaction request]);
decrypting the cryptogram to reveal information regarding at least one of the card or a user (claim 1: decrypting the cryptogram to reveal information regarding at least one of the card or a user);
comparing the revealed information to information in a database (claim 1: comparing the revealed information regarding the at least one of the card or the user to information in a customer database);
updating the database to indicate that the revealed information is confirmed (claim 1: updating the customer database to indicate that the revealed information regarding the at least one of the card or the user is confirmed and verified); and
activating, in response to a successful user authentication at the mobile device, the card for the transaction based on updating the database and the successful user authentication information (claim 1: activating, in response to a successful user authentication at the mobile device, the card for the initial card transaction based on updating the customer database and the successful user authentication); and
providing, to the mobile device, a token associated with the card for a mobile transaction using the mobile device involving the card (claim 1: providing, to the mobile device, a payment card token associated with the card as part of a mobile wallet transaction using the mobile device involving the card).
Per claims 9 and 17, ‘433 claims do not particularly teach a computer system comprising one or more processors and non-transitory computer readable media storing instructions to causes the one or more processors to perform the operations in claim 1. However, computer system comprising one or more processors and non-transitory computer readable media storing instructions to cause the one or more processor to perform operations is ubiquitous in the automation. It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the ubiquitous computing system to perform the steps as recited in claim 1 as automating of manual activity is obvious to one of ordinary skill in the art. See MPEP 2144.04 III.
As per claims 2, 10, and 18, ‘433 discloses wherein the payment card token causes a payment application on the mobile device to add the card and present a status of the card (see claim 2).
As per claims 3 and 11, discloses receiving, via the payment application of the mobile device, a selection of a selectable element on a graphical user interface indicating the card is lost or stolen (see claim 3).
As per claims 4, 12, and 19, ‘433 discloses updating the customer database to disallow subsequent transactions associated with the payment card token based on the indication that the card is lost or stolen; and providing, to a replacement mobile device, a replacement payment card token (see claim 4).
As per claims 5 and 13, ‘433 discloses wherein the wireless transmission is a near-field communication (NFC) tap with the mobile device (see claim 5).
As per claims 6 and 14, ‘433 discloses wherein the successful user authentication includes information associated with at least one of a PIN, biometric data, or an answer to an identification question prior to activating the card (see claim 6).
As per claims 7 and 15, ‘433 discloses generating an encryption key for the card; and providing, to the mobile device, the encryption key for generating the cryptogram (see claim 7).
As per claims 8, 16, and 20, ‘433 discloses wherein the cryptogram is encrypted using the encryption key, and wherein confirming that the revealed information regarding the at least one of the card or the user corresponds to the information in the customer database further comprises verifying the cryptogram was generated by the card (see claim 8).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6, and 7 of U.S. Patent No. 11,138,593.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Per claims 1, 9, and 17, ‘593 discloses a method activating a card, the method comprising:
providing the card in a non-activated state (claim 1: issuing, to a customer, the smart card in a deactivated state; claim 6);
activating the card prior to a transaction, wherein activating the card comprises (claim 1: activating the smart card prior to an initial smart card transaction at a physical point of sale by):
receiving, from a mobile device via a wireless transmission from the card to the mobile device, an authentication request including a cryptogram and a transaction charge amount; determining, using the transaction charge amount, that the authentication request is a transaction request; processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram; (claim 1: receiving an authentication token from a mobile device via a wireless transmission of the authentication token from the smart card in the deactivated state to the mobile device, the authentication token including a cryptogram and customer information; claim 6; claim 7, wherein the authentication request is a transaction authorization of entailing a charge of less than one dollar);
decrypting the cryptogram to reveal information regarding at least one of the card or a user (claim 1: decrypting the cryptogram to reveal resulting information; claim 6);
comparing the revealed information to information in a database (claim 6: comparing the extracted data with stored information regarding the customer issued the payment card);
updating the database to indicate that the revealed information is confirmed (claim 1: updating a customer database to indicate that the extracted data and the revealed resulting information is confirmed to activate the smart card for the initial smart card transaction; claim 6); and
activating, in response to a successful user authentication at the mobile device, the card for the transaction based on updating the database and the successful user authentication information (claim 1: activating the smart card prior to an initial smart card transaction at a physical point of sale by; claim 6); and
providing, to the mobile device, a token associated with the card for a mobile transaction using the mobile device involving the card (claim 1: providing a payment card token associated with the smart card to the mobile device as part of a mobile wallet transaction using the mobile device involving the smart card; claim 6).
In further reference to claims 9 and 17, ‘593 claims do not particularly teach a computer system comprising one or more processors and non-transitory computer readable media storing instructions to causes the one or more processors to perform the operations in claim 1. However, computer system comprising one or more processors and non-transitory computer readable media storing instructions to cause the one or more processor to perform operations is ubiquitous in the automation. It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the ubiquitous computing system to perform the steps as recited in claim 1 as automating of manual activity is obvious to one of ordinary skill in the art. See MPEP 2144.04 III.
As per claims 2, 10, and 18, ‘593 claims do not particularly teach wherein the token causes an application on the mobile device to add the card and present a status of the card. However, the claimed expression is merely intended use of the token, hence do not further limit the scope of the claim(s).
As per claims 6 and 14, ‘593 further teaches receiving, from the mobile device, at least one of a PIN, biometric data, or an answer to an identification question prior to activating the card, wherein activating the card for the transaction is further in response to receiving a successful response of the at least one of the PIN, the biometric data, or the answer to the identification question (claim 3: receiving at least one of a PIN, biometric data, and an answer to an identification question as part of the confirmation process; in response to receiving a successful response of the at least one of the PIN, biometric data, and the answer to the identification question, the smart card is enabled for the subsequent transaction).
Claims 3, 5, 11, and 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 9 of U.S. Patent No. 11,138,593 in view of “Nelson”.
Per claims 3 and 11, ‘593 discloses receiving an indication that the card is lost or stolen (see claim 9).
‘593 does not particularly teach that the indication is received via an application on the mobile device and a selection of a selectable element on a graphical user interface.
Nelson, however, teaches selectable element on a GUI and ‘593 further teaches a mobile device in claim 1.
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the teaching of the Nelson onto the mobile device of ‘593 to provide a selectable element on a graphical user interface in receiving the indication in ‘593 as the combination generally enhances the usability in providing convenience of GUI to a user.
As per claims 5 and 13, ‘593 does not particularly teach that the short range wireless communication is a near-field communication (NFC) tap.
Nelson, however, teaches short range wireless communication is a near-field communication (NFC) tap (Nelson: [0024], NFC-near field communication).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to substitute any known short range wireless communication technique including a near-field communication (NFC) tap as taught by Nelson as the short range wireless communication in ‘’593 as the simple substitution of one known technique for another produces a predictable result renders the claim obvious.
Claims 4, 12, and 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 9 of U.S. Patent No. 11,138,593 in view of “Nelson” and “Brickell”.
As per claims 4, 12, and 19, ‘593 in view of Nelson discloses claims 3 and 11 as described above. ‘593/Nelson further discloses receiving an input (i.e., Nelson) indicating that the card is lost or stolen and disallowing subsequent transaction (see claim 9).
‘593/Nelson does not particularly teach updating the database to disallow. However, as ‘593 teaches updating of the database for the purpose of controlling the card usage in claims 1 and 6, it would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claims to use this particular technique in controlling any known usage including disallowing subsequent transaction as in claim 9 of ‘593 as one known substitution produces predictable result.
‘593/Nelson does not teach providing to a replacement mobile device a replacement token.
Brickell, however, teaches providing, to a replacement mobile device, a replacement token (see Brickell: col./line 3/50-col./line 4/2, the user lost a payment card and requests a replacement; col. 5, lines 20-32).
It would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claims to include the technique of providing replacement as taught by Brickell to ‘593/Nelson in order to provide continued service to the user.
Claims 7-8, 15-16, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 9 of U.S. Patent No. 11,138,593 as applied in claims 1, 9, and 17 above, in view of “Wong”.
Per claims 7 and 15, ‘593 does not particularly teach generating an encryption key for the card; and providing, to the mobile device, the encryption key for generating the cryptogram.
Wong, however, teaches generating an encryption key for the card; and providing, to the mobile device, the encryption key for generating the cryptogram (see Fig. 7).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to include the technique of key management as taught by Wong to ‘593 for the purpose of enabling the entity that is providing the service to control the key management in ensuring the security.
As per claims 8, 16, and 20, ‘593/Wong further teaches wherein the wherein the cryptogram is encrypted using the encryption key, and wherein confirming the revealed information comprises verifying that the cryptogram was generated by the card (see Wong: Fig. 7)(by providing encryption key and use of the encryption key in communication, Wong teaches verifying that the cryptogram was generated by the card)(‘593, claim 1).
Claims 1-2, 6-10, 14-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 8-9 of U.S. Patent No. 11,188,919 in view of “Biggar” and “Dorf”.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Per claims 1, 9, and 17, ‘919 discloses a method of activating a card, the method comprising (claim 1, underwriting the new smart payment card):
providing the card in a non-activated state (claim 1: provisioning, by a token provisioning logic, a preliminary payment card token to a mobile device associated with the payment card applicant, the preliminary payment card token identifying an issuer of the new smart payment card and disallowing a transaction with the new smart payment card);
activating the card prior to a transaction, wherein activating the card comprises (claim 1: underwriting, by the payment card processing logic, the new smart payment card application):
receiving, from a mobile device via a wireless transmission from the card to the mobile device, an authentication request including a cryptogram (claim 1: receiving, by the mobile device from a short range wireless communication from the new smart payment card, an authentication token comprising a cryptogram);
decrypting the cryptogram to reveal information regarding at least one of the card or a user (claim 1: by decrypting the cryptogram and comparing the decrypted cryptogram to information in a customer database);
comparing the revealed information to information in a database (claim 1: by decrypting the cryptogram and comparing the decrypted cryptogram to information in a customer database);
activating the card for the transaction (claim 1: authenticating, by the token provisioning logic, the authentication token … underwriting, by the payment card processing logic, the new smart payment card application); and
providing, to the mobile device, a token associated with the card for a mobile transaction using the mobile device involving the card (claim 1: provisioning, by the token provisioning logic, an enabling token to the mobile device by replacing the preliminary payment card token, wherein the enabling token allows performance of a transaction via the mobile device with the new smart payment card).
Per claims 9 and 17, ‘433 claims teach the step(s) above in claim 1. ‘433 further teaches a computer system comprising one or more processors and non-transitory computer readable media storing instructions to causes the one or more processors to perform the operations (claim 8: a processing circuit comprising memory and a processor, the processing circuit programmed to …).
‘919 does not particularly, but Biggar, teaches updating the database to indicate that the revealed information is confirmed and the activation is in response to a successful user authentication at the mobile device and updated database (see [0021], card information is processed by comparing previously-stored databased information; [0022]; [0024], if the card information does match the system data [0031], userID and password; [0033]-[0034], authenticates that the cardholder is the person who is supposed to correspond to the card; [0035], approves the card for use by the cardholder, updates its database and corresponding databases).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine the technique of activation as taught by Biggar to ‘919 to ensure that other may not be able to use the issued card (see [0004]).
‘919/Biggar does not particularly teach that the authentication request includes a transaction charge amount; determining, using the transaction charge amount, that the authentication request is a transaction request; and processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram.
Dorf, however, teaches authentication request that includes a transaction charge amount; determining, using the transaction charge amount, that the authentication request is a transaction request; and processing, based on the determination, the authentication request as a transaction request to reveal the cryptogram (see col./line 5/50-6/22, nominal transaction amount for activation of the card).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to combine technique of using nominal transaction amount in activating the card to the activation process of the ‘919/Biggar since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claims 2, 10, and 18, ‘433/Biggar/Dorf does not disclose wherein the payment card token causes a payment application on the mobile device to add the card and present a status of the card (see claims 2 and 9).
As per claims 6 and 14, ‘433/Biggar/Dorf further discloses receiving, from the mobile device, at least one of a PIN, biometric data, or an answer to an identification question prior to activating the card, wherein activating the card for the transaction is further in response to receiving a successful response of the at least one of the PIN, the biometric data, or the answer to the identification question (see Biggar: [0031], userID and password).
As per claims 7 and 15, ‘433 discloses generating an encryption key for the card; and providing, to the mobile device, the encryption key for generating the cryptogram (see claims 1 and 8) (by provisioning of the encryption key suggests generating an encryption key for the card).
As per claims 8, 16, and 20, ‘433 discloses wherein the cryptogram is encrypted using the encryption key, and wherein confirming that the revealed information regarding the at least one of the card or the user corresponds to the information in the customer database further comprises verifying the cryptogram was generated by the card (see claims 1 and 8).
Claims 3-5, 11-13, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 7, 8, 9, 11, 12, and 14 of U.S. Patent No. 11,188,919 in view of “Biggar” and “Dorf” in further view of “Nelson”.
As per claims 3 and 11, ‘919/Biggar/Dorf discloses claims 2 and 10 above. ‘919/Biggar/Dorf further teaches receiving, via the payment application of the mobile device, a selection of a selectable element indicating the card is lost or stolen (see ‘919: claims 4 and 11).
‘919/Biggar/Dorf does not teach that the selectable element is on a graphical user interface.
Nelson, however, teaches selectable element on a GUI (see Fig. 4-11).
It would have been obvious to one of ordinary skill in the art at the time of the invention the include the selectable element on a GUI as taught by Nelson to ‘919/Biggar/Dorf as the combination generally enhances the usability in providing convenience of GUI to a user.
As per claims 4, 12, and 19, ‘433 discloses to disallow subsequent transactions associated with the payment card token based on the indication that the card is lost or stolen; and providing, to a replacement mobile device, a replacement payment card token (see ‘433: claims 5, 7, 12, and 14).
‘433 does not particularly teach updating the database to disallow. However, as ‘433 teaches updating of the database for the purpose of controlling the card usage, it would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claims to use this particular technique in controlling any known usage including disallowing subsequent transaction as one known substitution produces predictable result.
As per claims 5 and 13, ‘433 discloses wherein the wireless transmission is short range wireless communication with the mobile device (see ‘433: claims 1 and 8: receiving, by the mobile device from a short range wireless communication from the new smart payment card).
‘433/Biggar/Dorf does not particularly teach that the short range wireless communication is a near-field communication (NFC) tap.
Nelson, however, teaches short range wireless communication is a near-field communication (NFC) tap (Nelson: [0024], NFC-near field communication).
It would have been obvious to one of ordinary skill in the art before the effective filing of instant claim to substitute any known short range wireless communication technique including a near-field communication (NFC) tap as taught by Nelson as the short range wireless communication in ‘433/Biggar/Dorf as the simple substitution of one known technique for another produces a predictable result renders the claim obvious.
Response to the Argument
101
The applicant asserts that the independent claims, as amended, are not directed to an abstract idea, represent a practical application, and/or amount to significantly more than any alleged abstract idea (see pages 7 and 8 of the Amendment). The applicant does not provide any rationale rather mere assertion(s). The examiner maintains the rejection for the rationale described above in the 101 section.
103
The applicant’s argument is based on newly added limitations. The action has been revised to introduce new prior art to address the amendment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Publication No. 20160180330 disclose a method for deactivation and reactivation of a lost and recovered payment card includes: storing, in an account database, an account profile, wherein the account profile includes data related to a transaction account including at least an account identifier, an account number, authentication data, and an activation flag, the activation flag indicating that a payment card associated with the related transaction account is active; receiving, by a receiving device, an authorization request for a payment transaction, wherein the authorization request includes at least the account number and at least one data field including a value indicative of a lost payment card; updating, by a processing device, the activation flag in the account profile in the account database to indicate that the payment card associated with the related transaction account is frozen; receiving, by the receiving device, a verification message, wherein the verification message includes at least the account identifier and authentication information; authenticating, by the processing device, the received verification message based on at least the included authentication information and the authentication data included in the account profile; and updating, by the processing device, the activation flag in the account profile in the account database to indicate that the payment card associated with the related transaction account is active, wherein the payment card associated with the related transaction account is prohibited from use in payment transactions if the activation flag indicates that the payment card is frozen.
US Patent No. 8,706,559 discloses issuance of an inactive contactless card to a consumer and activation process of activating of the contactless card.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached Monday -Friday: 7:00 - 3:30.
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, Patrick McAtee can be reached at 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN S KIM/Primary Examiner, Art Unit 3698
Prosecution Insights