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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on May 29, 2026, is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
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 1-4, 6-10, 12-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,541,756. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 7, and 13
‘756 Patent
A method comprising:
Claim 1: A method comprising:
generating, by a computing system, an encryption key pair;
Claim 1: generating, by a computing system, an encryption key pair;
providing, by the computing system and to a mobile device of a user, a first encryption key of the encryption key pair, the first encryption key for generating a cryptogram for authentication of a transaction;
Claim 1: providing, by the computing system and to a mobile device of a user, a first encryption key of the encryption key pair, the first encryption key for generating a cryptogram for authentication of a transaction;
receiving, by the computing system, a transaction request associated with a rewards account of the user including the cryptogram;
Claim 1: receiving, by the computing system, a transaction request associated with a rewards account of the user including the cryptogram;
authenticating, by the computing system and using a second encryption key of the encryption key pair and the cryptogram, the transaction request as being provided by the mobile device of the user;
Claim 1: authenticating, by the computing system and using a second encryption key of the encryption key pair and the cryptogram, the transaction request as being provided by the mobile device of the user;
determining, by the computing system, a currency conversion value of a rewards balance, the currency conversion value based on a multiplier that is activated based on a location of the mobile device; and
Claim 1: determining, by the computing system, a currency conversion value of a rewards balance based on the activated rewards promotion, wherein the currency conversion value is based on a multiplier that is activated based on the location of the mobile device
determining, by the computing system, that the currency conversion value of the rewards balance is sufficient to complete the transaction request.
Claim 1: determining, by the computing system, that the currency conversion value of the rewards balance based on the activated rewards promotion is sufficient to complete the transaction request.
Claims 2, 8, and 14
‘756 Patent
wherein the rewards balance of the rewards account is accepted by an institution associated with the computing system.
Claim 2: wherein the rewards balance of the rewards account are accepted by an institution associated with the computing system.
Claims 3, 9, and 15
‘756 Patent
receiving, by the computing system, an indication of a backup funding source.
Claim 3: receiving, by the computing system and from the mobile device, an indication of a backup funding source.
Claims 4, 10, and 16
‘756 Patent
associating, by the computing system, the backup funding source with the rewards account, wherein the backup funding source is available to complete a transaction.
Claim 4: associating, by the computing system, the backup funding source with the rewards account, wherein the backup funding source is available to complete a transaction.
Claims 6, 12, and 20
‘756 Patent
transmitting, by the computing system to a merchant computing system, an approval message approving the transaction request.
Claim 5: transmitting, by the computing system to a merchant computing system, an approval message approving the transaction request.
Claim 17
‘756 Patent
wherein the backup funding source supplements the rewards balance in the rewards account to prevent the transaction from being denied for an insufficient value of the rewards balance.
Claim 15: wherein the backup funding source supplements the rewards balance in the rewards account to prevent the transaction from being denied for an insufficient value of the rewards balance.
Claim 18
‘756 Patent
wherein the backup funding source is a credit card account.
Claim 16: wherein the backup funding source is a credit card account.
Claims 5, 11, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,541,756 in view of U.S. Patent Pub. No. 2012/0099780 to Smith et al.
Claims 5, 11, and 19
Smith
displaying, by the mobile device, an active payment source from among a plurality of available payment sources; and
¶ 91: FIG. 4 is a diagram of a screen 2100 for displaying a listing 2002A of balances for accounts corresponding to tokens 147 that have been processed and stored by the token recognizer 105 and which are available to a user of a PCD 102. Screen 2100 can display account balances for any type of account such as banking accounts, fuel accounts, gift cards, stored value accounts, and loyalty cards. In the exemplary embodiment illustrated in FIG. 4, a gift card or stored value account balance option 2002 has been selected by the user of the client device 120. In response to this selection, the PCD 102 may display the listing 2002A of stored value accounts that may be accessed with the PCD 102. The listing 2002A of stored valued accounts may comprise various icons that represent the different merchants 120 associated with the stored value account.
displaying, by the mobile device and when a rewards account is selected as the active payment source, the currency conversion value of the rewards balance based on the multiplier that is activated.
¶ 92: Screen 2200 may also display other human readable card information 2202 that may include, but is not limited to, and available balance of the stored value account, a card number associated with the stored value account, and a personal identification number (“PIN”) associated with the stored value account.
Claims 1-4, 6-10, 12-18, and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,823,179. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claims 1, 7, and 13
‘179 Patent
A method comprising:
Claim 1: A method, comprising:
generating, by a computing system, an encryption key pair;
Claim 1: generating, by the computing system, an encryption key for generating a cryptogram that serves as an authentication code for a transaction involving the token;
providing, by the computing system and to a mobile device of a user, a first encryption key of the encryption key pair, the first encryption key for generating a cryptogram for authentication of a transaction;
Claim 1: transmitting, by the computing system, the encryption key to the mobile device;
receiving, by the computing system, a transaction request associated with a rewards account of the user including the cryptogram;
Claim 1: receiving, by the computing system, a transaction request associated with the rewards account and the cryptogram;
authenticating, by the computing system and using a second encryption key of the encryption key pair and the cryptogram, the transaction request as being provided by the mobile device of the user;
Claim 7: authenticate the transaction request, wherein the authenticating includes decrypting the cryptogram;
determining, by the computing system, a currency conversion value of a rewards balance, the currency conversion value based on a multiplier that is activated based on a location of the mobile device; and
Claim 1: determining, by the computing system, a value of a rewards balance based on the activated rewards promotion, wherein the value of the rewards balance based on the activated rewards promotion is greater than an initial value of the rewards balance;
determining, by the computing system, that the currency conversion value of the rewards balance is sufficient to complete the transaction request.
Claim 1: determining, by the computing system, that the value of the rewards balance based on the activated rewards promotion is sufficient to complete the transaction request; and
Claims 2, 8, and 14
‘179 Patent
wherein the rewards balance of the rewards account is accepted by an institution associated with the computing system.
Claim 2: wherein the rewards balance of the rewards account are accepted by the institution.
Claims 3, 9, and 15
‘179 Patent
receiving, by the computing system, an indication of a backup funding source.
Claim 3: receiving, by the computing system and from the mobile device, an indication of a backup funding source.
Claims 4, 10, and 16
‘179 Patent
associating, by the computing system, the backup funding source with the rewards account, wherein the backup funding source is available to complete a transaction.
Claim 4: associating, by the computing system, the backup funding source with the account number, wherein the backup funding source is available to complete the transaction.
Claims 6, 12, and 20
‘179 Patent
transmitting, by the computing system to a merchant computing system, an approval message approving the transaction request.
Claim 1: transmitting, by the computing system to a merchant computing system, an approval message approving the transaction request.
Claim 17
‘179 Patent
wherein the backup funding source supplements the rewards balance in the rewards account to prevent the transaction from being denied for an insufficient value of the rewards balance.
Claim 4: wherein the backup funding source is available to complete the transaction.
Claim 18
‘179 Patent
wherein the backup funding source is a credit card account.
Claim 19: wherein the backup funding source is a credit card account.
Claims 5, 11, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,823,179 in view of U.S. Patent Pub. No. 2012/0099780 to Smith et al.
Claims 5, 11, and 19
Smith
displaying, by the mobile device, an active payment source from among a plurality of available payment sources; and
¶ 91: FIG. 4 is a diagram of a screen 2100 for displaying a listing 2002A of balances for accounts corresponding to tokens 147 that have been processed and stored by the token recognizer 105 and which are available to a user of a PCD 102. Screen 2100 can display account balances for any type of account such as banking accounts, fuel accounts, gift cards, stored value accounts, and loyalty cards. In the exemplary embodiment illustrated in FIG. 4, a gift card or stored value account balance option 2002 has been selected by the user of the client device 120. In response to this selection, the PCD 102 may display the listing 2002A of stored value accounts that may be accessed with the PCD 102. The listing 2002A of stored valued accounts may comprise various icons that represent the different merchants 120 associated with the stored value account.
displaying, by the mobile device and when a rewards account is selected as the active payment source, the currency conversion value of the rewards balance based on the multiplier that is activated.
¶ 92: Screen 2200 may also display other human readable card information 2202 that may include, but is not limited to, and available balance of the stored value account, a card number associated with the stored value account, and a personal identification number (“PIN”) associated with the stored value account.
Claims 1-4, 6-10, 12-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,423,395. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 7, and 13
‘395 Patent
A method comprising:
Claim 1: A method of provisioning a virtual account to a mobile wallet and authorizing a transaction using the provisioned account, the method comprising:
generating, by a computing system, an encryption key pair;
Claim 1: generating, by the financial institution computing system, an encryption key for generating a cryptogram associated with the mobile device that serves as an authentication code for transactions involving the first token;
providing, by the computing system and to a mobile device of a user, a first encryption key of the encryption key pair, the first encryption key for generating a cryptogram for authentication of a transaction;
Claim 1: transmitting, by the financial institution computing system, the encryption key to the mobile device;
receiving, by the computing system, a transaction request associated with a rewards account of the user including the cryptogram;
Claim 1: receiving, by the financial institution computing system, a transaction request, the transaction request associated with the rewards account; receiving, by the financial institution computing system, the cryptogram associated with the mobile device;
authenticating, by the computing system and using a second encryption key of the encryption key pair and the cryptogram, the transaction request as being provided by the mobile device of the user;
Claim 1: authenticating, by the financial institution computing system, the transaction request, wherein the authenticating includes decrypting the cryptogram associated with the mobile device;
determining, by the computing system, a currency conversion value of a rewards balance, the currency conversion value based on a multiplier that is activated based on a location of the mobile device; and
Claim 1: determining, by the financial institution computing system, a first updated balance of the rewards points by multiplying the balance of the rewards points by the multiplier;
determining, by the computing system, that the currency conversion value of the rewards balance is sufficient to complete the transaction request.
Claim 1: determining, by the financial institution computing system, that the first updated balance of the rewards points is greater than or equal to the value of rewards points needed to complete the transaction request;
Claims 2, 8, and 14
‘395 Patent
wherein the rewards balance of the rewards account is accepted by an institution associated with the computing system.
Claim 2: wherein the rewards points are not accepted by an entity other than the financial institution.
Claims 3, 9, and 15
‘395 Patent
receiving, by the computing system, an indication of a backup funding source.
Claim 3: receiving, by the financial institution computing system and from the mobile device, an indication of a backup funding source.
Claims 4, 10, and 16
‘395 Patent
associating, by the computing system, the backup funding source with the rewards account, wherein the backup funding source is available to complete a transaction.
Claim 4: associating, by the financial institution computing system, the backup funding source with the account number, wherein the backup funding source is available to complete the contemplated transaction.
Claims 6, 12, and 20
‘395 Patent
transmitting, by the computing system to a merchant computing system, an approval message approving the transaction request.
Claim 1: transmitting, by the financial institution computing system to the merchant point-of-sale system, an approval message approving the transaction request;
Claim 17
‘395 Patent
wherein the backup funding source supplements the rewards balance in the rewards account to prevent the transaction from being denied for an insufficient value of the rewards balance.
Claim 4: wherein the backup funding source is available to complete the contemplated transaction.
Claim 18
‘395 Patent
wherein the backup funding source is a credit card account.
Claim 17: wherein the backup funding source is a credit card account.
Claims 5, 11, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,423,395 in view of U.S. Patent Pub. No. 2012/0099780 to Smith et al.
Claims 5, 11, and 19
Smith
displaying, by the mobile device, an active payment source from among a plurality of available payment sources; and
¶ 91: FIG. 4 is a diagram of a screen 2100 for displaying a listing 2002A of balances for accounts corresponding to tokens 147 that have been processed and stored by the token recognizer 105 and which are available to a user of a PCD 102. Screen 2100 can display account balances for any type of account such as banking accounts, fuel accounts, gift cards, stored value accounts, and loyalty cards. In the exemplary embodiment illustrated in FIG. 4, a gift card or stored value account balance option 2002 has been selected by the user of the client device 120. In response to this selection, the PCD 102 may display the listing 2002A of stored value accounts that may be accessed with the PCD 102. The listing 2002A of stored valued accounts may comprise various icons that represent the different merchants 120 associated with the stored value account.
displaying, by the mobile device and when a rewards account is selected as the active payment source, the currency conversion value of the rewards balance based on the multiplier that is activated.
¶ 92: Screen 2200 may also display other human readable card information 2202 that may include, but is not limited to, and available balance of the stored value account, a card number associated with the stored value account, and a personal identification number (“PIN”) associated with the stored value account.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2012/0099780 discloses a system and method for collecting and managing information taken from tokens, like credit cards and gift cards, includes a portable computing device (PCD). The PCD may support a token recognizer that may comprise hardware and/or software that may reside in memory of the PCD. The token recognizer may work in combination with a camera. The token recognizer may comprise a broad recognizer module and an optical character recognition (“OCR”) module. The camera of the PCD may capture images of one or more physical tokens. These captured images of the physical tokens may be processed by the token recognizer so that digital images as well as data provided by the physical tokens may be maintained in memory of the PCD for later presentation to the user. These later presentations on the PCD may be used for account management and for conducting transactions, such as making payment at a point-of-sale (POS) terminal.
U.S. Patent Pub. No. 2005/0203824 discloses a system and method for facilitating a bid transaction over a computerized network using a rewards account balance from any type of cash rewards program. In an exemplary embodiment of the present invention, a participant applies rewards from their rewards account to bid on items in a closed online auction over a computerized network such as the internet. The online auction is open only to participants of a sponsoring or participating cash rewards program and only bids made with accumulated cash rewards are accepted. Further, the present invention provides a system and method for facilitating online management of a rewards account by the participant.
U.S. Patent Pub. No. 2011/0218849 discloses systems and corresponding methods for managing multiple accounts is provided comprising causing an interface screen to be displayed at a client device that allows a user to link a plurality of accounts to a unified payment device, each of the plurality of accounts having a unique identification number; receiving a request to purchase at least one item from a merchant at a point of sale using the unified payment device; identifying at least one of the plurality of accounts linked to the unique unified payment device to be used to pay for the purchase; processing the request to purchase the at least one item with the at least one of the plurality of accounts identified; and communicating approval for the purchase to the merchant.
U.S. Patent Pub. 2017/0316417 discloses a method of incentivizing secure transactions that includes receiving future travel location data and future travel time data. The method includes determining bonus multiplier information based on the travel details, where the bonus multiplier information is indicative of a bonus multiplier. The method includes transmitting the bonus multiplier information to a user computing device. The method includes receiving a transaction authorization request associated with a transaction. The transaction authorization request includes transaction location data and transaction time data, and the transaction authorization request includes a transaction amount. The method includes verifying that the transaction location data matches the travel location data and that the transaction time data matches the travel time data. The method includes transmitting an authorization response via the payment network and determining a new rewards points amount by applying the bonus multiplier to the transaction amount.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
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.
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/NILESH B KHATRI/Primary Examiner, Art Unit 3699
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