Acknowledgements
This communication is in response to applicant’s response filed on 08/17/2026.
Claims 1-20 are pending and have been examined.
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 .
Response to Arguments
Regarding applicant’s arguments: Applicant’s arguments, see pgs. 9-18, filed 08/17/2026, with respect to the rejection(s) of claim(s) 1-20 under Claim Rejections - 35 USC § 101 regarding claim 1, 7, and 14 that the abstract idea in integrated into a practical application because “the combination of the recitations in Claim 1 is integrated into a specific technical arrangement in which the booking management system performs a first transaction that verifies card information without transferring payment, receives and stores a digital verification key on behalf of a third-party service, later initiates a second transaction using the previously stored digital verification key, and causes a third transaction involving transfer among different accounts, as described at least at [0013]-[0018], [0027]-[0030], [0052]-[0055], and [0060]-[0063] of Applicant's Specification. The recitations define how the claimed system uses stored authentication or authorization-related data from an earlier machine-implemented transaction to support later delayed transaction processing in a specific downstream transaction flow. Furthermore, these recitations address technical problems in conventional booking management systems that merely pass payment card information to third-party services without confirming validity, thereby risking incorrect or false payment card information and failed recovery of later fees or penalties” have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Priority
Applicant's claim for the benefit of a US Patent Application No. 18/753,876 filed on 06/25/2024 is acknowledged. Applicant's claim for the benefit of a US Patent Application No. 18/317,014 filed on 05/12/2023 is acknowledged. Applicant's claim for the benefit of a US Patent Application No. 16/730,427 filed on 12/30/2019 is acknowledged.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 7, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 12,530,633 B2, claims 1 and 11 of U.S. Patent No. 12,045,745 B2, and claims 1, 13, and 17 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claims 1, 7, and 14 has a similarly-worded limitation in claims 1 and 10 of U.S. Patent No. 12,530,633 B2, claims 1 and 11 of U.S. Patent No. 12,045,745 B2, and claims 1, 13, and 17 of U.S. Patent No. 11,651,297 B2. For example, claims 1 and 10 of U.S. Patent No. 12,530,633 B2, claims 1 and 11 of U.S. Patent No. 12,045,745 B2, and claims 1, 13, and 17 of U.S. Patent No. 11,651,297 B2 comprise the concept of “receiving, from a user device, user card information regarding a user card associated with a first account; initiating a first transaction with a user card transaction processing system based at least partly on the user card information, wherein the first transaction verifies the user card information without initiating a transfer of payment; receiving, from the user card transaction processing system, a digital verification key, wherein the digital verification key indicates authorization to make a charge against the user card; storing the digital verification key on behalf of a third-party service; providing, to the third-party service, a transaction interface that includes an input field to receive a value of a delayed charge and a display of details of the first transaction; and in response to a cancellation deadline having passed: retrieving the user card information; initiating a second transaction with the user card transaction processing system based at least partly on the user card information and the digital verification key that had been stored; sending, to the third-party service, virtual card information regarding a virtual card…and initiating a third transaction with a virtual card transaction processing system using the virtual card information, wherein the third transaction comprises transfer of the delayed charge from a third account associated with the computing system into a second account associated with the computing system and the virtual card, and wherein the third account, second account, and first account are each different accounts.”
Claims 2, 9, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 12 of U.S. Patent No. 12,530,633 B2, claims 2 and 12 of U.S. Patent No. 12,045,745 B2, and claims 1, 13, and 17 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claim 2 has a similarly-worded limitation in claims 2 and 12 of U.S. Patent No. 12,530,633 B2, claims 2 and 12 of U.S. Patent No. 12,045,745 B2, and claims 1, 13, and 17 of U.S. Patent No. 11,651,297 B2. For example, claims 2 and 12 of U.S. Patent No. 12,530,633 B2, claims 2 and 12 of U.S. Patent No. 12,045,745 B2, and claims 1, 13, and 17 of U.S. Patent No. 11,651,297 B2 comprise the concept of “wherein the second account is associated with a zero balance, the method further comprising: obtaining, from the virtual card transaction processing system, the virtual card information regarding the virtual card associated with the second account associated with the computing system, and presenting, via the transaction interface accessible to the third-party service, an itemized list of one or more delayed charges as one or more respective fees or penalties.”
Claims 4 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claims 4 and 18 have a similarly-worded limitation in claim 8 of US Patent 11,651,297 B2. For example, claim 8 of US Patent 11,651,297 B2 comprises “wherein the at least one security measure is initiated through a pop-out window on the user device, redirecting the user device to an online interface associated with the user card transaction processing system, or an embedded window which can be accessed without redirecting the user device and which connects to the online interface associated with the user card transaction processing system.”
Claims 5 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,530,633 B2, claim 5 of U.S. Patent No. 12,045,745 B2, and claim 10 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claims 5 and 19 have a similarly-worded limitation in claim 4 of U.S. Patent No. 12,530,633 B2, claim 5 of U.S. Patent No. 12,045,745 B2, and claim 10 of U.S. Patent No. 11,651,297 B2. For example, claim 4 of U.S. Patent No. 12,530,633 B2, claim 5 of U.S. Patent No. 12,045,745 B2, and claim 10 of U.S. Patent No. 11,651,297 B2 comprise “determining the delayed charge value based on policies associated with the third-party service.”
Claims 6 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,530,633 B2, claim 6 of U.S. Patent No. 12,045,745 B2, and claim 11 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claims 6 and 20 have a similarly-worded limitation in claim 5 of U.S. Patent No. 12,530,633 B2, claim 6 of U.S. Patent No. 12,045,745 B2, and claim 11 of U.S. Patent No. 11,651,297 B2. For example, claim 5 of U.S. Patent No. 12,530,633 B2, claim 6 of U.S. Patent No. 12,045,745 B2, and claim 11 of U.S. Patent No. 11,651,297 B2 comprise “receiving an amount for the delayed charge value through the transaction interface.”
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,530,633 B2, claim 11 of U.S. Patent No. 12,045,745 B2, and claim 13 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claim 8 has a similarly-worded limitation in claim 10 of U.S. Patent No. 12,530,633 B2, claim 11 of U.S. Patent No. 12,045,745 B2, and claim 13 of U.S. Patent No. 11,651,297 B2. For example, claim 10 of U.S. Patent No. 12,530,633 B2, claim 11 of U.S. Patent No. 12,045,745 B2, and claim 13 of U.S. Patent No. 11,651,297 B2 comprise “the chargeable event is a delayed charge event.”
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,530,633 B2 and claim 13 of U.S. Patent No. 12,045,745 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claim 10 has a similarly-worded limitation in claim 13 of U.S. Patent No. 12,530,633 B2 and claim 13 of U.S. Patent No. 12,045,745 B2. For example, claim 13 of U.S. Patent No. 12,530,633 B2 and claim 13 of U.S. Patent No. 12,045,745 B2 comprise “wherein the digital verification key is authorization data used to facilitate secure processing of transactions with the user card transaction processing system, and wherein the digital verification key allows the user card transaction processing system to process a transaction without user input.”
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,530,633 B2, claim 14 of U.S. Patent No. 12,045,745 B2, and claim 1 of U.S. Patent No. 11,651,297 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claim 11 has a similarly-worded limitation in claim 14 of U.S. Patent No. 12,530,633 B2, claim 14 of U.S. Patent No. 12,045,745 B2, and claim 1 of U.S. Patent No. 11,651,297 B2. For example, claim 14 of U.S. Patent No. 12,530,633 B2, claim 14 of U.S. Patent No. 12,045,745 B2, and claim 1 of U.S. Patent No. 11,651,297 B2 comprise “the digital verification key is an authentication cryptogram.”
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,530,633 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because every limitation in instant claim 13 has a similarly-worded limitation in claim 18 of U.S. Patent No. 12,530,633 B2. For example, claim 18 of U.S. Patent No. 12,530,633 B2 comprises “the chargeable event is determined to have occurred based on a deadline having passed.”
Claims 3, 9, 12, 15, and 17 are rejected based on rejected base claims 1, 7, and 14.
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over U.S. Patent Nos. 12,530,633 B2, 12,045,745 B2, and 11,651,297 B2 (37 CFR 1.321(b) and (c)).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application will determine what form 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/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: As per claim 1, the closest prior art of record, United States Application No. 20150161596 to McCarthy teaches a card transaction is processed at a merchant with a token in lieu of a card number (PAN) placed in an authorization message sent to a transaction processing system. The token is obtained from a tokenization service with alphanumeric characters that are not usable as the PAN in the event the merchant's system is breached. A transaction processing system receives the authorization message from the merchant and determines whether a token is present. If present, the transaction processing system requests a PAN from the tokenization service and replaces the token with the PAN. FIG. 4A illustrates a more detailed flow diagram in accordance with one embodiment of the invention. In this described embodiment, the merchant is a hotel and the cardholder provides a card number to a booking engine (operated by the hotel, or on behalf of the hotel by a third party). Various steps illustrated in FIG. 4A are presented to show each party (and its systems) that are involved performing those steps. Accordingly, FIG. 4A shows the parties involved as a “Cardholder,” a “Booking Engine,”, a “Tokenization Service,” a “Merchant (Hotel),” a “Message Evaluation Application,” and a “Transaction Processing System.” By way of explanation, the Booking Engine is a system to which a cardholder provides a card number in order to guarantee a reservation and to also have a card account against which the cost of the hotel room is charged when the cardholder checks out. The Message Evaluation Application is a software module that performs steps similar to the steps 230-236 described above in conjunction with FIG. 2 and can be resident at the transaction processing system 124, in a separate system associated with the transaction processing system 124, or in another system or switch placed in the flow of messages between the merchant and the issuer system. In addition, United States Patent Application No. 20200051084 to Williamson teaches a computer-implemented method for verifying cardholder authenticity when provisioning a token is provided. The method uses an authentication server system having a processor and a memory. The method includes receiving, by the processor, a payment card account identifier provided by a payment requester. The payment card account identifier for identifying a payment account associated with a cardholder. The method also includes determining a plurality of authentication data associated with the payment requestor, and performing an authentication process using the plurality of authentication data. The authentication process is configured to determine if the payment requestor is the cardholder. The method further includes determining an assurance level associated with the authentication process. The assurance level represents a level of confidence in the authentication process. Moreover, the method includes generating a token for the payment account, and storing the token with the payment card account identifier and the assurance level. In addition, United States Patent Application No. 20160232527 to Patterson teaches transactions may involve no show charges. For example, when a consumer completes a reservation with a hotel, the hotel may generate an authorization request to validate the consumer account. However, the account may not be charged until the consumer checks in. Any cryptography associated with the initial authorization may not be stored by the merchant. If the consumer does not cancel the reservation prior to the “Terms and Conditions” provided by the merchant, it may be valid for the merchant to submit a transaction to charge the consumer. The merchant may or may not generate an authorization. The no show transaction may be identified in the submitted transaction so that the merchant can be protected from chargeback. In addition, United States Patent Application No. 20150348030 to Cauwenberghs teaches a system for processing a payment transaction, comprises a first entity configured to initiate a payment transaction with a merchant, a second entity configured to issue an account number in respect of the payment transaction, and a transaction processor configured to route the payment transaction between the merchant and the second entity in order to obtain authorization for the payment transaction from the second entity. The system is provided with an escrow account facility configured to hold an advanced fund associated with the payment transaction, the escrow facility being controlled by the transaction processor. The invention is also expressed in a method for processing a payment transaction. In addition, United States Patent Application No. 20180005228 to Anderson teaches systems, devices, apparatuses, and methods for providing tokenization as a service are provided. Embodiments of the invention involve decoupling “tokenization service” from other services offered by a merchant service provider, and offering the tokenization service as a stand-alone service. In accordance with an embodiment, a merchant service provider can receive payment data associated with a transaction between a consumer and a first entity. The merchant service provider can generate a payment token that represents the payment data and transmit a copy of the payment token to the first entity. The first entity can then transmit the payment token and order information to a second entity specified in the transaction. The merchant service provider can subsequently receive a request to complete the transaction from the second entity. The request can include the copy of the payment token from the second entity. For example, a first entity, such as are online travel agent (e.g., ORBITZ), which provides reservation services for, among other things, rental cars, uses a merchant service provider's (e.g., CYBERSOURCE) hosted payment acceptance services to collect credit card data on its behalf. Further, according to this example, the online travel agent uses the merchant service provider's tokenization service to tokenize the collected credit card data. Thus, according to this example, when a customer enters his credit card data in the online travel agent's website to pay for a rental car, the merchant service provider would collect the credit card data on travel agent's behalf, generate a payment token for the credit card, and pass the payment token back to the online travel agent. In addition, Japanese Patent No. JP 6448837 B1 to Ageless teaches a reservation management server which receives reservation information of a customer accepted by a shop from a store and manages reservation, the reservation management server comprising: a communication unit for sending and receiving information; and information for specifying a customer / A reservation information database that stores reservation information including at least information of the reservation management server and information of the reservation date, and a control unit that controls the operation of the reservation management server. The control unit includes a preliminary settlement information processing unit for sending the URL information of the Web page for guiding the pre-settlement procedure by the credit card to the contact address of the customer included in the reservation information, and a pre- A token information processing unit for acquiring token information for which a settlement surrogate server has performed a token process on a credit card number from a settlement substitution server and storing the token information in a registration reservation information database; When receiving information on the price of a service provided to a customer who visited the store, or information on a cancellation fee charged to a customer who did not visit on the reservation date, it corresponds to information on the price or information on the cancellation fee and the reservation And a token information to the settlement agent server and apply for settlement. This reservation management server can manage all the reservations accepted by the store by phone or the like. In addition, the customer inputs the card information used for payment of the accepted reservation from the Web page, so the sense of resistance is small. In the case where the customer who inputs the card information performs doctor cannon or no-show, it is possible to collect the cancellation fee by using the card information.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim, initiating a first transaction with a user card transaction processing system based at least partly on the user card information, wherein the first transaction verifies the user card information without initiating a transfer of payment; receiving, from the user card transaction processing system, a digital verification key, wherein the digital verification key indicates authorization to make a charge against the user card; storing the digital verification key on behalf of a third-party service; providing, to the third-party service, a transaction interface that includes an input field to receive a value of a delayed charge and a display of details of the first transaction; and in response to a cancellation deadline having passed: retrieving the user card information; initiating a second transaction with the user card transaction processing system based at least partly on the user card information and the digital verification key that had been stored; sending, to the third-party service, virtual card information regarding a virtual card; presenting, via the transaction interface accessible to the third-party service, an input space to provide a delayed charge value, the virtual card information comprising a card number, an expiration date, a security code, and an amount loaded onto the virtual card, one or more booking details and itemized charge details, and a notification that the virtual card can be charged; and initiating a third transaction with a virtual card transaction processing system using the virtual card information, wherein the third transaction comprises transfer of the delayed charge from a third account associated with the computing system into a second account associated with the computing system and the virtual card, and wherein the third account, second account, and first account are each different accounts.
Claims 2-6 are dependent on claim 1 and contain allowable subject matter for the same reasons stated above. In addition, claim 7 is analogous to claim 1, and thus contains allowable subject matter for the same reasons stated above. Claims 8-13 are dependent on claim 7 and contain allowable subject matter for the same reasons stated above. In addition, claim 14 is analogous to claim 1, and thus contains allowable subject matter for the same reasons stated above. Claims 15-20 are dependent on claim 14 and contain allowable subject matter for the same reasons stated above.
Conclusion
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.
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/COURTNEY P JONES/Primary Examiner, Art Unit 3699
