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 Application
This application is a continuation application of U.S. application no. 18/739,165 filed June 10, 2024, now U.S. Patent 12,488,341 (“Parent Application”), which is a continuation application of U.S. application no. 18/109,030 filed February 13, 2023, now U.S. Patent 12,008,566, which is a continuation application of U.S. application no. 17/080,197 filed October 26, 2020, now U.S. Patent 11,615,414, which is a continuation application of U.S. application no. 14/705,477 filed on May 6, 2015, now U.S. Patent 10,846,692, which is a continuation application of U.S. application no. 14/287,134 filed on May 26, 2014, now abandoned, and U.S. application no. 14/056,440, filed on October 17, 2013, now U.S. Patent 9,082,119. 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 application 61/715,142 filed October 17, 2012, U.S. provisional application 61/811,783 filed April 14, 2013, U.S. provisional application 61/825,865 filed May 21, 3013, U.S. provisional application 61/833,188 filed June 10, 2013 and U.S. provisional application 61/863,593 filed August 8, 2013 under 35 U.S.C. 119(e) is acknowledged.
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 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 12,488,341. This is a statutory double patenting rejection.
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 claim of U.S. Patent No. 12,008,566.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims merely remove descriptive information from the claim limitations and any device that infringes on the issued patent would also necessarily infringe on the instant claims if a patent were granted. The instant claims merely broaden the scope of the issued patent and therefore the patented claims anticipate the instant claims.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Two Patent Publications represent the closest prior art Examiner was able to find in the search. Pourfallah et al. (U.S. Patent Publication 2013/0218769, hereinafter referred to as Pourfallah, discloses mobile funding including receiving a transaction request to transfer funds from a payor to a payee. The transaction request can include a payor device identifier, a payee device identifier and an amount. A payor account identifier associated with the payor device identifier, and a payee account identifier associated with the payee device identifier can each be determined. Additionally, a first service provider associated with the payor device can be determined based on the payor device identifier, and a second service provider associated with the payee device can be determined based on the payee device identifier (Abstract). The payment processing network may determine a payor account identifier associated with the payor device identifier and a payee account identifier associated with the payee device identifier. The account identifiers may be determined in many ways, including generating, converting, or mapping. The account identifiers may be generated randomly or generated using an algorithm. In other embodiments, account identifiers may be mapped to device identifiers and stored in a central registry (e.g., a routing directory) which can be used to identify a user's account identifier based on their device identifier (0040). The device identifiers could be viewed as a form of “secure identification token” as recited in the claim; however the claim recites that the secure identification token comprises data “…associated with the mobile communication device, a user of the mobile communication device, and an account identifier associated with the user of the mobile communication device” and therefore Pourfallah fails to disclose that there are identifiers of the user of the device and an account identifier associated with the user. Furthermore Pourfallah fails to disclose the operation of configuring the “…at least one secure identification token to comprise: data from the at least one authorization data set” as recited by the claim. Therefore Pourfallah does not teach all of the elements of the claim. Hammad (Patent Publication 2011/0225090) discloses “Systems and methods for generating a dynamic verification value for electronic payment transactions are disclosed. A user of a portable consumer device enrolls the account identifier associated with the portable consumer device and specifies one or more customized linkage rules that identify one or more user communication devices and user identifiers that should be used to submit an authentication request message to an entity that generates a dynamic verification value. A server computer that receives an authentication request message determines whether the authentication request message complies with the specified customized linkage rules and generates a dynamic verification value” (Abstract). The “…unique device identifiers of the user communication devices such the verification token 122, user computer 120 and mobile device 118 that are identified by the user 110 to be part of the customized linkage rules are obtained during the enrollment process. The authentication request message can include the unique device identifiers of the user communication devices and/or verification tokens that are being used to generate and submit the authentication request message. The verification module 162 then analyses the authentication request message to determine whether the user and/or the user communication devices being used are authentic. In this analysis, the verification module 162 may compare the unique device identifiers of the user communication devices and verification tokens identified in the authentication request message with the unique device identifiers associated with the account identifier in the database 151” (0097). However Hammad also fails to disclose that there are identifiers of the user of the device and an account identifier associated with the user that are collected to form a secure identification token. Furthermore Hammad fails to disclose the operation of configuring the “…at least one secure identification token to comprise: data from the at least one authorization data set” as recited by the claim. Therefore Hammad also does not teach all of the elements of the claim. The closest non-patent literature is Lampropoulos et al. “Identity Management Directions in Future Internet”, IEEE Communications Magazine, December 2011, pp. 74-83 which teaches user identifiers that are set up with an identity provider IdP but also fails to disclose all of the constituent elements of the secure identification token in the claim or the configuration of the secure identification token with data from an authorization data set. Therefore no prior art alone or in combination teaches all of the elements of the claim. As such claims 1-20 are held as being allowable over 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.
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, 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.
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.
/JAMES D NIGH/Senior Examiner, Art Unit 3699
Prosecution Insights