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 .
Continuation Application
This Application is a continuation of US Application No. 18/640,420 filed on 04/19/2024 now patent US 12,536,550 B2 (“Parent Application”). See MPEP § 201.07. In accordance with MPEP § 609.02 (II)(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) is/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) desires the information to be printed on a patent issuing from this application. See MPEP § 609.02 (II)(A)(2).
Information Disclosure Statement
The Information Disclosure Statements filed 01/07/2026, 03/20/2016 and 07/28/2016 have been considered. Initialed copies of the forms PTO-1449 are enclosed herewith.
Acknowledgements
This Office Action is in response to the claims filed on 01/07/2026.
Claims 1-20 were newly introduced.
Claims 1-20 are pending.
Claims 1-20 were examined.
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 1-3 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-17 and 19 of U.S. Patent No. US 12,536,550 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims were broadened by removing the loyalty transaction component, as follows (differences marked in bold):
Current Application 19/442210
U.S. Patent No. US 12,536,550 B2
1.An integrated selling system platform with integrated global tokenization orchestration middleware, comprising:
a workstation comprising one or more processors and a memory system comprising a plurality of instructions executable by the one or more processors to provide a point-of-sale (POS) application and a middleware, wherein source code of the middleware is configured to be compiled and run on a variety of workstation operation systems, and the middleware comprises multiple communication interfaces, each of the multiple communication interfaces corresponding to one of multiple communication protocols, and the middleware is POS and point-of-interaction (POI) device agnostic;
wherein the workstation is configured to interface with a hosted platform used to perform both payments and global tokenization services inside, or outside, of a restricted jurisdiction for primary account number (PAN) export and storage, and a hosted network token provisioning system; and
wherein the middleware is configured to:
receive a request from the POS application to obtain a global token from the hosted platform;
receive a request via one of the communication protocols to obtain the global token through a POI device that reads and encrypts credit card data;
receive and forward the request to obtain the global token to an in-region hosted system to decrypt the encrypted credit card data using a hardware security module that provisions an international credit card scheme network token;
receive the international credit card scheme network token via one of the communication protocols;
execute a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token;
receive the merchant-specific global token; and
return the merchant-specific global token back to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token.
6. An integrated selling system platform with integrated global tokenization orchestration middleware, comprising:
a workstation comprising one or more processors and a memory system comprising a plurality of instructions executable by the one or more processors to provide a point-of-sale (POS) application and a middleware, wherein source code of the middleware is configured to be compiled and run on a variety of workstation operation systems, and the middleware comprises multiple communication interfaces, each of the multiple communication interfaces corresponding to one of a plurality of communication protocols, and the middleware is POS and point-of-interaction (POI) device agnostic;
wherein the workstation is configured to interface with a hosted platform used to perform both payments and global tokenization services inside, or outside, of a restricted jurisdiction for primary account number (PAN) export and storage, and a hosted network token provisioning system; and
wherein the instructions, when executed by the one or more processors, cause the one or more processors to implement:
receiving, by the middleware, a request from the point-of-sale (POS) application to execute a loyalty transaction and obtain a global token from a hosted platform;
receiving, by the middleware, a request via one of the plurality of communication protocols to obtain the global token through a point-of-interaction (POI) device that reads and encrypts credit card data;
receiving and forwarding, by the middleware, an encrypted credit card number to an in-region hosted system for decryption using a hardware security module that provisions an international credit card scheme network token;
receiving, by the middleware, the international credit card scheme network token via one of the plurality of communication protocols;
executing, by the middleware, a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token;
receiving, by the middleware, the merchant-specific global token;
generating and sending, by the middleware, a loyalty transaction request and the merchant-specific global token to the hosted platform;
receiving, by the middleware, a result of the loyalty transaction; and
sending, by the middleware, the loyalty transaction result and the merchant-specific global token to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token.
2.The integrated selling system platform of claim 1, wherein the middleware is further configured to:
receive an encrypted credit card number from the POI device that recognizes a POI device type, automatically connects and communicates based on the POI device type, initiates a command to accept a credit card read or a manually entered credit card number, and encrypts the credit card number, within a payment card industry (PCI) validated point-point encryption (P2PE) solution;
recognize the communication protocol of the hosted network token provisioning system;
construct an information, including the encrypted card number; and
transmits the information to the hosted network token provisioning system to decrypt the information and provision a network token, and in turn is exchanged for the merchant-specific global token.
7. The integrated selling system platform of claim 6, wherein receiving and forwarding, by the middleware, the encrypted credit card number comprises:
receiving an encrypted credit card number from the POI device that recognizes a POI device type, automatically connects and communicates based on the POI device type, initiates a command to accept a credit card read or a manually entered credit card number, and encrypts the credit card number, within a payment card industry (PCI) validated point-point encryption (P2PE) solution;
recognizing a communication protocol of the hosted network token provisioning system;
constructing an information, including the encrypted card number; and
transmitting the information to the hosted network token provisioning system to decrypt the information and provision the international credit card scheme network token.
3.A computer-implemented method comprising:
receiving, by a system comprising one or more processors configured to execute a plurality of instructions stored in a memory system, a request from a point-of-sale (POS) application to obtain a global token from a hosted platform;
receiving, by the system, a request via a communication protocol of multiple communication protocols supported by a middleware to obtain the global token through a point-of-interaction (POI) device that reads and encrypts credit card data;
receiving and forwarding, by the system, the request to obtain the global token to an in-region hosted system to decrypt the encrypted credit card data using a hardware security module that provisions an international credit card scheme network token;
receiving, by the system, the international credit card scheme network token via one of the communication protocols;
executing, by the system, a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token;
receiving, by the system, the merchant-specific global token; and
returning, by the system, the merchant-specific global token back to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token.
1. A computer-implemented method, within a middleware of an integrated selling system platform, to provide a credit card account number linked with a loyalty account comprising:
receiving, by the middleware, a request from a point-of-sale (POS) application to execute a loyalty transaction and obtain a global token from a hosted platform;
receiving, by the middleware, a request via one of a plurality of communication protocols to obtain the global token through a point-of-interaction (POI) device that reads and encrypts credit card data;
receiving and forwarding, by the middleware, an encrypted credit card number to an in-region hosted system for decryption using a hardware security module that provisions an international credit card scheme network token;
receiving, by the middleware, the international credit card scheme network token via one of the plurality of communication protocols;
executing, by the middleware, a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token;
receiving, by the middleware, the merchant-specific global token;
generating and sending, by the middleware, a loyalty transaction request and the merchant-specific global token to the hosted platform;
receiving, by the middleware, a result of the loyalty transaction; and
sending, by the middleware, the loyalty transaction result and the merchant-specific global token to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token.
10. A computer program product comprising a storage medium embodied with computer program instructions that when executed by one or more processors cause the one or more processors to implement:
receiving a request from a point-of-sale (POS) application to obtain a global token from a hosted platform;
receiving a request via a communication protocol of multiple communication protocols supported by a middleware to obtain the global token through a point-of-interaction (POI) device that reads and encrypts credit card data;
receiving and forwarding the request to obtain the global token to an in-region hosted system to decrypt the encrypted credit card data using a hardware security module that provisions an international credit card scheme network token;
receiving the international credit card scheme network token via one of the communication protocols;
executing a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token;
receiving the merchant-specific global token; and
returning the merchant-specific global token back to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token.
8. A computer program product comprising a non-transitory storage medium embodied with computer program instructions that when executed by one or more processors cause the one or more processors to implement:
receiving, by a middleware, a request from a point-of-sale (POS) application to execute a loyalty transaction and obtain a global token from a hosted platform;
receiving, by the middleware, a request via one of a plurality of communication protocols to obtain the global token through a point-of-interaction (POI) device that reads and encrypts credit card data;
receiving and forwarding, by the middleware, an encrypted credit card number to an in-region hosted system for decryption using a hardware security module that provisions an international credit card scheme network token;
receiving, by the middleware, the international credit card scheme network token via one of the plurality of communication protocols;
executing, by the middleware, a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token;
receiving, by the middleware, the merchant-specific global token;
generating and sending, by the middleware, a loyalty transaction request and the merchant-specific global token to the hosted platform;
receiving, by the middleware, a result of the loyalty transaction; and
sending, by the middleware, the loyalty transaction result and the merchant-specific global token to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token.
11.The computer program product of claim 10, wherein the POS application and middleware are executable by a workstation.
9. The computer program product of claim 8, wherein the POS application and middleware are executable by a workstation.
12.The computer program product of claim 11, wherein the workstation is configured to interface with the hosted platform used to perform both payments and global tokenization services inside, or outside, of a restricted jurisdiction for primary account number (PAN) export and storage, and a hosted network token provisioning system.
10. The computer program product of claim 9, wherein the workstation is configured to interface with the hosted platform used to perform both payments and global tokenization services inside, or outside, of a restricted jurisdiction for primary account number (PAN) export and storage, and a hosted network token provisioning system.
13.The computer program product of claim 12, further comprising computer program instructions that when executed by the one or more processors cause the one or more processors to implement:
receiving an encrypted credit card number from the POI device that recognizes a POI device type, automatically connects and communicates based on the POI device type, initiates a command to accept a credit card read or a manually entered credit card number, and encrypts the credit card number, within a payment card industry (PCI) validated point-point encryption (P2PE) solution;
recognizing the communication protocol of the hosted network token provisioning system;
constructing an information, including the encrypted card number; and
transmitting the information to the hosted network token provisioning system to decrypt the information and provision a network token, and in turn is exchanged for the merchant-specific global token.
11. The computer program product of claim 10, wherein receiving and forwarding, by the middleware, the encrypted credit card number comprises:
receiving an encrypted credit card number from the POI device that recognizes a POI device type, automatically connects and communicates based on the POI device type, initiates a command to accept a credit card read or a manually entered credit card number, and encrypts the credit card number, within a payment card industry (PCI) validated point-point encryption (P2PE) solution;
recognizing a communication protocol of the hosted network token provisioning system;
constructing an information, including the encrypted card number; and
transmitting the information encrypted credit card data to the hosted network token provisioning system to decrypt the information and provision the international credit card scheme network token, and in turn is exchanged for the merchant-specific global token.
14.The computer program product of claim 11, wherein source code of the middleware is configured to be compiled and run on a variety of workstation operation systems.
12. The computer program product of claim 9, wherein source code of the middleware is configured to be compiled and run on a variety of workstation operation systems.
15.The computer program product of claim 11, wherein the middleware comprises multiple communication interfaces, each of the multiple communication interfaces corresponding to one of the multiple communication protocols.
13. The computer program product of claim 9, wherein the middleware comprises multiple communication interfaces, each of the multiple communication interfaces corresponding to one of the plurality of communication protocols.
16.The computer program product of claim 15, wherein the middleware is POS and POI device agnostic.
14. The computer program product of claim 13, wherein the middleware is POS and POI device agnostic.
17.The computer program product of claim 10, wherein the POS application and middleware are executable by an application server.
15. The computer program product of claim 8, wherein the POS application and the middleware are executable by an application server.
18.The computer program product of claim 10, further comprising computer program instructions that when executed by the one or more processors cause the one or more processors to implement:
transmitting a plurality of instructions to the hosted platform used for merchant specific global token provisioning, when requesting a token, to identify a user account number linked to the credit card account number obtained from the POI device, using a network token, and subsequently communicate to a platform with a user account and payment information;
interrogating the user account and payment information to determine whether the user account is eligible for accruing units and /or eligible to redeem units based on information returned to the hosted platform;
receiving information on a plurality of options for accrual and /or redemption from the hosted platform; and
presenting to a customer associated with the credit card account number one or more of the options.
16. The computer program product of claim 8, wherein generating the loyalty transaction request comprises:
transmitting a plurality of instructions to the hosted platform to identify a user account number linked to a credit card account number, using the international credit card scheme network token, and subsequently communicating to a platform with a user account and payment information;
interrogating the user account and payment information to determine whether the user account is eligible for accruing units and/or eligible to redeem units based on information returned to the hosted platform;
receiving information on a plurality of options for accrual and/or redemption from the hosted platform; and
presenting to a customer associated with the credit card account number one or more of the options.
19.The computer program product of claim 18, wherein the one or more of the options comprise presenting to the customer associated with the credit card account number, a number of units earned for an associated payment transaction.
17. The computer program product of claim 16, wherein the one or more of the options comprise presenting to the customer associated with the credit card account number, a number of units earned for an associated payment transaction.
20.The computer program product of claim 18, further comprising computer program instructions that when executed by the one or more processors cause the one or more processors to implement:
receiving input from the customer;
transmitting an accrual or redemption request back to the hosted platform to subsequently communicate to the platform, the units of accrual or redemption;
receiving a response back from the hosted platform;
displaying, on the POI device, the number of units accrued or redeemed; and
returning a result to the POS application to add to an order and receipt.
19. The computer program product of claim 16, wherein generating the loyalty transaction request further comprises:
receiving input from the customer;
transmitting an accrual or redemption request back to the hosted platform to subsequently communicate, to the platform, units of accrual or redemption;
receiving a response back from the hosted platform; and
displaying, on the POI device, a number of units accrued or redeemed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 3 and 10 recite the language “the encrypted credit card data” in lines 20, 9 and 10, respectively. There is insufficient antecedent basis for this language in the claims. Examiner notes that "receiving a request via one of the communication protocols to obtain the global token through a POI device that reads and encrypts credit card data" does not provide antecedent basis for "the encrypted credit card data". Examiner suggests reciting the request comprises encrypted credit card data.. Dependent claims 2, 4-9 and 11-20 are also rejected since they depend on claims 1, 3 and 10, respectively.
Claims 8, 18 and 19 recite the language “the credit card account number ” in lines 4 and 11; 6 and 13; and 2, respectively. There is insufficient antecedent basis for this language in the claims. Dependent claims 9 and 20 are also rejected since they depend on claims 8 and 18, respectively.
Prior Art Analysis
Claims 1-20 appear to be allowable contingent on overcoming the current Double Patenting and 35 U.S.C. 112(b) rejections. Payment system models, such as payment service providers performing merchant services and/or cross-border payments is old and well known as evidenced by numerous prior art cited in the record including US Patent Publications US 2006/0294005 A1, US 2015/0154597 A1, US 2017/0068953 A1 and US 2021/0142408 A1, US 2022/0156731 A1. Tokenization, such as provisioning tokens or codes to entities in a payment network is old and well known as evidenced by numerous prior art cited in the record including US Patent Publications US 2012/0018506 A1, US 2013/0117185 A1, US 2013/0212666 A1, US 2013/0332343 A1, US 2014/0201076 A1, US 2016/0239824 A1, US 2017/0221054 A1 and US 2023/0120485 A1.
The prior art of record, however, does not appear to reasonably disclose, in the context of the ordered combination of the claims 1, 3 and 10: receiving, by the system, a request via a communication protocol of multiple communication protocols supported by a middleware to obtain the global token through a point-of-interaction (POI) device that reads and encrypts credit card data; receiving and forwarding, by the system, the request to obtain the global token to an in-region hosted system to decrypt the encrypted credit card data using a hardware security module that provisions an international credit card scheme network token; receiving, by the system, the international credit card scheme network token via one of the communication protocols; executing, by the system, a request to the hosted platform to provision a merchant-specific global token using the international credit card scheme network token; receiving, by the system, the merchant-specific global token; and returning, by the system, the merchant-specific global token back to the POS application for storage and future usage to orchestrate a future payment authorization transaction via the merchant-specific global token, as required by independent claims 1, 3 and 10.
Examiner notes that further search and consideration will be required upon presentation of the rewritten claims. Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shankar et al. (US 2023/0120485 A1) disclose token-for-token provisioning, including generating a cloud access token and binding the cloud access token to a communication device asynchronously from providing a cryptogram.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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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.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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