DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 1/28/26.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-20 are currently pending.
Claims 1-20 are rejected as set forth below.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12567072. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the ‘072 claims anticipate the scope of the instant claims.
Allowable Subject Matter
Claims 1-20 are allowable contingent on all outstanding rejections being addressed.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim:
receiving, at a biometric identity switch (BIS) computing device, from a point-of-sale (POS) terminal of a first party, a request for an authorization packet for a transaction between the first party and an account of a user, the request including a biometric of the user;
identifying, by the BIS computing device, a biometric provider associated with the biometric, based on at least one of: the POS terminal, a name of the first party, and/or the biometric reader; requesting, by the BIS computing device, from the identified biometric provider, a biometric identifier specific to the user; receiving, by the BIS computing device, the biometric identifier from the identified biometric provider;
converting the biometric identifier to a user identifier, based on a mapping between the biometric identifier and the user identifier, the user identifier including a phone number and/or an email address;
submitting an authorization packet request, which includes the user identifier and details associated with the transaction; receiving, by the BIS computing device, from the commerce engine computing device, the authorization packet in response to the authorization packet request; transmitting, by the BIS computing device, the authorization packet to the POS terminal for use by the POS terminal in compiling an authorization request for the transaction.
Specifically, the closest prior art of record does not teach the aforementioned steps in the context of the specific workflow outlined in claim 1, i.e. a biometric identity switch (BIS) computing device transmitting the authorization packet to the POS terminal for use by the POS terminal in compiling an authorization request for the transaction, wherein the authorization packet includes a credential specific to the user identifier, wherein the user identifier is converted from a biometric identifier, wherein the biometric identifier is identified by a biometric provider based on a biometric, wherein the biometric provider is identified based on at least one of a POS terminal, a name of the first party, and/or the biometric reader, wherein the biometric is captured by a POS terminal.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20170186013 to Pandya discloses a method for facilitating supply of a requested service, being supplied after successful identity authentication. The method includes utilizing a network switch to link a service provider, which offers the requested service, to a biometric data archive, which performs verification of received biometric data to authenticate identity. The method also includes receiving, in the network switch, a result of the biometric data verification from the biometric data archive. The method further includes directing the result to the service provider for the service provider to determine supply of the requested service based on the result.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619
