Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 1 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 1 of 13
`
`EXHIBIT 3
`EXHIBIT 3
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 2 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 2 of 13
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`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`Applicant(s):
`Title:
`Serial No.:
`Filing Date:
`Confirmation:
`Examiner:
`Group Art Unit:
`DocketNo.:
`
`Xiangzhen Xie et al
`Trusted Service Management Process
`14/728, 349
`06/02/2015
`5346
`Ashford Hayles
`3687
`RFID-085C 1
`
`Mail Stop: No-Fee Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`November 28, 2019
`
`Responseto First OA (2"7 RCE)
`
`Dear Sir:
`
`In response to Office Action dated 08/28/2019, the Applicant respectfully
`
`requests the Examiner to enter the following amendments:
`
`AMENDMENTSTO THE CLAIMS arereflected in the listing of claims which
`begins on page 2 of this Response.
`
`REMARKS/ARGUMENTSbegin on page8of this Response.
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 3 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 3 of 13
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`AMENDMENTSTO THE CLAIMS
`
`Please amend Claims 1, 4, 7, 12 and 18 asfollows:
`
`1.
`
`(Currently amended) A method for mobile payment, the method comprising:
`
`causing a mobile device to capture data directly from a tag physically presented
`
`thereto, wherein the tag receives the data directly from a POS device and allows
`
`the mobile device to capture the data therefrom, the data embeddedin the tag
`
`Ye
`includs:
`s an electronic invoice and settlement information with a merchant
`
`associated with the POS device;
`
`extracting the electronic invoice from the captured data in the mobile device;
`
`displaying the electronic invoice on a display of the mobile device to show an
`
`amount to be paid by a user of the mobile device, wherein the mobile device is
`
`configured to execute an installed application therein to capture the data from the
`
`tag;
`
`receiving an entry by the mobile device, the entry including the amourtt for the
`
`invoice and an additional amount from the user when needed:
`
`calculating a total amount by adding the additional amount to the amountin the
`
`electronic invoice;
`
`generating a payment request in the mobile device in response to the electronic
`
`invoice after the user has chosen_an siecironic purse (e-purse} mainiained locally
`
`
`
` Quis
`RSAo.
`Mss
`
`SESheaysEASeeANY
`
`displaying the electronic invoice on the display of the mobile device for the user to
`BEEN
`ms
`
`verify the payment request Sans
`ext
`QS
`ASOT
`BQMAG IASON
`
`verifying the total amount with a balance in the e-purse, wherein said verifying the
`
`total arnaunt wiih |
`balance in the e-purse is performed within the mobile devic
`
`
`
`
`
`without sending the oayment request to a payment gateway:
`
`cisslaying @ denial of the payment request when the balance is less than the total
`
`amount:
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 4 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 4 of 13
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`sending the payment request from the mobile device to &-inepayment gateway,
`
`wherein the balance is sufficient to honor the payment request. the payment
`
`gateway sends a message directly to the POS device that a monetary transaction
`
`per the payment request sent from the mobile device has been successfully
`completed-s333
`
`eyed vaspthy th ON
`Se evden Seeae aes en enoe me een
`
`
`SSR SESSSIIISBSSSSE
`
` displaying a confirmation in the mobile device that the balance in the s-
`purse has beer reduced bythe tolal arriounismeas
`yet fen Sa on hasten est
`SOGES-ESSSG
`
`2.
`
`(Previously amended) The method as recited in claim 1, wherein said causing a
`
`mobile device to capture data directly from a tag physically presented thereto
`
`includes placing the mobile device near the tag.
`
`3.
`
`(Previously amended) The method asrecited in claim 2, wherein the POS device
`
`provides security and authentication to generate the electronic bill and transfer the
`
`data to the tag.
`
`4.
`
`(Currently amended) The methodasrecited in claim 1, wherein said displaying the
`
`electronic invoice on a-ihedisplay of the mobile device comprises:
`
`allowing the user to verify the amountin the electronic invoice and make a change
`
`to the amount when needed; and
`
`paying the total amount with the chosen paying instrument, wherein the chosen
`
`paying instrumentis selected from a group consisting of an electronic wallet
`
`already created in the mobile device, a traditional credit or debit card, and an
`
`electronic transfer.
`
`5.
`
`(Previously amended) The methodas recited in claim 1 further comprising: causing
`
`the mobile device to execute an installed module upon detecting the POS device in
`
`a near field of the mobile device, wherein the installed module is executed to receive
`
`

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`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 5 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 5 of 13
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`the data directly from the tag carrying the electronic invoice and the settlement
`
`information.
`
`6.
`
`(Previously amended) The method as recited in claim 5, wherein the data further
`
`includes security information about the merchant associated with the POS device,
`
`the security information includes an account and bank information of the registered
`
`merchant, an identifier of the tag or the POS device.
`
`7.
`
`(Currently amended) The method as recited in claim 6, wherein said sending the
`
`payment request from the mobile device to a-thepayment gateway comprises:
`
`transporting the payment request over a secured channel to the payment gateway,
`
`wherein the payment gateway is configured to perform the monetary transaction
`
`per the payment request by deducting as-ihe total amount from as the e-purse
`
`SESSAAWSMQsss-and generates an electronic notification for sending to
`
`the POS device.
`
`8.
`
`(Previously amended) The methodasrecited in claim 7, wherein said displaying the
`
`electronic invoice on the display of the mobile device comprises:
`
`allowing the user to modify the amountin the electronic invoice when needed;
`
`paying the total amount with an electronic payment provided by an installed
`
`module in the mobile device, wherein the installed module in the mobile deviceis
`
`configured to generate the payment request including the data pertaining to the
`
`electronic invoice to the payment gateway for processing.
`
`9.
`
`(Previously amended) The methodasrecited in claim 8, wherein data exchange
`
`between the mobile device and the payment gateway is conducted in a secured
`
`channel established therebetween.
`
`10. (Previously amended) The methodas recited in claim 9, wherein the mobile device
`
`includes a secure element providing security and confidentiality required to support
`
`secure data communication between the mobile device and the payment gateway.
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 6 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 6 of 13
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`11.(Previously amended) The method asrecited in claim 9, wherein said notifying the
`
`user in the mobile device that then monetary transaction per the payment request
`
`has been successfully completed with the POS device comprising: sending a
`
`notification of successful payment to the merchant of the POS device.
`
`12. (Currently amended) A method for mobile payment, the method comprising:
`
`generating a set of data in a point of sale (POS) device, the data including an
`
`electronic invoice and settlement information with a merchant associated with the
`
`POS device;
`
`embedding the data directly to a tag;
`
`presenting the tag to &-amobile device;
`
`causing the mobile device to capture the data from the tag, wherein the mobile
`
`device executes an installed application therein to retrieve an amountin the
`
`electronic invoice from the data and generate a payment requestin response to
`
`the captured data, the payment requestis dered in the mobile device when the
`
`amour is more than a balance of an electronic purse (e-purse) maintained locally
`
`
`inthe mobile device the payment request is Saisa-sent to a payment gateway
`
`
`wher the arount is fess than a balance of an electronic purse (e-nurse
`
`
`
`
`
` {Sasokthesnaiisnchs
`
`receiving a message in the POS device directly from the payment gateway that the
`
`
`electronic invoice has been settled-Sussansseiaiaamaaustaer
`
`SISSSSSSCHAAS-SISSS
`
` ucinwesas, wherein the payment gateway is configured to
`
`cause the balance in ihe e-purse reduced by the amountsencines
`
`
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 7 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 7 of 13
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`13. (Previously amended) The method as recited in claim 12, wherein the tag is
`
`presented near the mobile device to allow the user to use the mobile device to
`
`capture the data.
`
`14. (Previously amended) The methodasrecited in claim 13, wherein the POS deviceis
`
`provided with security and authentication to generate the electronic invoice.
`
`15. (Previously amended) The methodas recited in claim 14, wherein the data includes
`
`security information of the merchant associated with the POS device, the security
`
`information includes an account and bank information, an identifier of the tag or the
`
`POS device.
`
`16. (Previously amended) The methodas recited in claim 15, wherein the message
`
`received in the POS device shows how much has been received from the user of the
`
`mobile device.
`
`17.(Previously amended) The method as recited in claim 12, wherein data exchange
`
`between the mobile device and the payment gateway is conducted in a secured
`
`channel established between the mobile device and the payment gateway.
`
`18.(Currently amended) A system for mobile payment, the system comprising:
`
`a point of sale (POS) device provided to generate a set of data including an
`
`electronic invoice upon receiving an entry, wherein the data including the electronic
`
`invoice and settlement information is transferred to a tag, a mobile deviceis
`
`executing a module configured to capture the data directly from the tag physically
`
`presented thereto, extract an amount expressedin the electronic invoice and
`
`display the amountin the mobile devicesssss; and wherein
`
`the POS device receives an electronic notification directly from a payment gateway
`
`that the electronic invoice has been settled for a total amount including an
`
`additional amount and the amount expressedin the electronic invoice, the
`
`additional amount is added bythe user, after the user of the mobile devices verifies
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 8 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 8 of 13
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`the electronic invoice displayed on the mobile device and authorizes a payment to
`
`the electronic invoice, the mobile device is configured to generate a payment
`
`request, wherein ihe payrient request is denied within ihe mobile device without
`
`sending the payment request to the payment gaeteway when ihe amount is less
`
`than a balance of an electronic purse (e-purse) maintained locally in the mobile
`
`device: ihe payment request ists-sssent to the payment gateway to proceed with a
`
`payment according to the payment request. when the aniournt is more than the
`
`balance of ihe e-purse.
`
`19.(Previously amended) The system asrecited in claim 18, wherein the data from the
`
`POS device includes an account and bank information of the merchant of the POS
`
`device.
`
`20. (Previously amended) The system as recited in claim 19, wherein the payment
`
`gateway acts to deduct an amount equivalent to the total amount from an account
`
`associated with the user of the mobile devices and generates the electronic
`
`notification for the POS device.
`
`

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`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 9 of 13
`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 9 of 13
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`REMARKS
`
`Claims 1 - 20 were examined again. In the Office Action dated 08/28/2019,
`
`Claims 1, 2, 4, 5, 12 and 17-20 are rejected under pre-AlA 35 U.S.C. 103(a) as being
`
`unpatentable over Gallagher U.S. Patent Application Publication 2011/0173060
`
`(hereinafter “Gallagher’) in view of Brendell et al. U.S. Patent Application Publication
`
`2013/0048717 (hereinafter “Brendell’), Claims 3, 6-11, 14-15 are rejected under pre-AlA
`
`35 U.S.C. 103(a) as being unpatentable over Gallagher in view of Brendell furtherin
`
`view of Florek et al. 2011/0112968 (hereinafter “Florek”), and Claim 16 is rejected under
`
`pre-AlA 35 U.S.C. 103{a) as being unpatentable over Gallagher in view of Brendell in
`
`view of Florek further in view of Shank et al. U.S. Patent Application Publication
`
`2011/0066550 (hereinafter “Shank’).
`
`The Applicant appreciates the Examiner for providing detailed commentsin the
`
`Office Action. In the foregoing amendments, Claims 1, 4, 7, 12 and 18 have been
`
`amended. No new matters have been introduced. Reconsideration of pending claims is
`
`respectfully requested.
`
`Claim Rejections - 35 USC § 103
`
`On Page7 of this Office Action, Claims 1, 2, 4, 5, 12 and 17-20 are rejected
`
`under pre-AlA 35 U.S.C. 103(a) as being unpatentable over Gallagherin view of
`
`Brendell.
`
`As amended, Claim 1 now recites:
`
`generating a payment request in the mobile device in response to the electronic
`
`invoice after the user has chosen an electronic purse (e-purse) maintained locally
`
`in the mobile device:
`
`displaying the electronic invoice on the display of the mobile device for the user to
`
`verify the payment request
`
`verifying the total amount with a balancein the e-purse, wherein said verifying the
`
`total amount with a balance in the e-purse is performed within the mobile device
`
`without sending the payment request to a payment gateway:
`
`

`

`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 10 of 13
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`displaying a denial of the payment request when the balance is less than the total
`
`amount;
`sending the payment request from the mobile device to the payment gateway,
`wherein the balance is sufficient to honor the payment request, the payment
`gateway sends a message directly to the POS device that a monetary transaction
`
`per the payment request sent from the mobile device has been successfully
`completed; and
`
`displaying a confirmation in the mobile device that the balance in the e-purse has
`been reduced by the total amount.
`
`(emphasis added)
`
`As described in Para [0033] and [0037], a customer may choose to settle the
`charge with an electronic wallet or purse (a.k.a., e-purse) already created in the mobile
`
`device. As further shown in FIG. 2F and FIG. 6C, and described in Para [0064 and
`[0131], the e-purse is a local application but managed remotely by a server. When the
`e-purse is used to settle a charge, the balance of the e-purse can be used to determine
`if the e-purse is sufficient to perform the transaction without verifying with the server.
`
`When the e-purse is sufficient to perform the transaction, the server is responsible for
`the settlement.
`
`In contrast, Gallagher teaches using a check presenter 2 that includes a wireless
`communication device 44 and a transparent window 48. The process taught by
`
`Gallagher is clearly meant for credit or debit payment that is all handled by a remote
`payment server (e.g., operated by a credit company or a bank), there is no any
`indication in Gallagher that the payment could be made by a local instrument (see 114
`of FIG. 4 in Gallagher). Gallagher neither teaches nor suggests the verification of a
`charge against the balance of a local e-purse. In one embodiment of the instant
`
`application, the balance of the e-purse is essentially used as a first step to determine if
`the payment request is to be sent to a payment server. In the case of the e-purse being
`insufficient, the user is allowed to top up (add more money to) the e-purse before the
`transaction happens. Accordingly, the Applicant submits Gallagher neither teaches nor
`suggests but teaches away from "verifying the total amount with a balance in the e-
`
`9
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`

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`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 11 of 13
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`purse, wherein said verifying the total amount with a balance in the e-purse is
`performed within the mobile device without sending the payment request to a payment
`gateway' and "displaying a denial of the payment request when the balance is less than
`the total amount" and "displaying a denial of the payment request when the balance is
`less than the total amount". It should be noted that the denial allows the user to top up
`the e-purse. Thus Claim 1 as amended shall be allowable over Gallagher.
`
`On Page 10 of the Office Action, the Examiner admits Gallagher fails to explicitly
`state the payment gateway sends a message directly to the POS device that a
`monetary transaction per the payment request sent from the mobile device has been
`
`successfully completed in the payment gateway with the POS device when an amount
`equivalent to the total amount is deducted from an account associated with the user,
`and then cites Brendell to show the teaching in combination.
`
`The Applicant respectfully contests the combination of Gallagher and Brendell as
`
`it is believed that there is no motivation to combine these two references in the manner
`proposed by the Examiner.
`
`Brendell teaches contactless payments in a retail environment in which an
`invoice is generated on a merchant's server (merchant system 202) once a transaction
`
`is about to occur. As explicitly shown in FIG. 3 or 4 in Brendell, a user (consumer) uses
`his/her mobile device to scan a RFID tag 110 to access the invoice based on the tag's
`ID or a link. A payment can be made directly to the merchant system 202, hence a
`notification is sent to the merchant. It is believed that the Examiner has viewed that the
`merchant system 202 and the merchant POS terminal are two different entities. In view
`
`of Claim 1 of the instant application, there is only one payment gateway which is a third
`party to the user and merchant. The payment notification from the merchant system 202
`to a POS terminal is not equivalent to a payment notification from the payment gateway
`to a merchant as the merchant system 202 still needs a payment gateway to settle a
`
`payment. Nevertheless, the modification of Gallagher with Brendell would not cure the
`deficiencies in Gallagher as discussed above. Accordingly, Claim 1 as amended shall
`
`10
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`

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`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 12 of 13
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`be allowable over Gallagher and Brendell, viewed alone or in combination.
`
`Reconsideration of Claims 1-11 is kindly requested.
`
`Claim 12 and Claim 18 have been amended similarly to Claim 1. Without
`repeating the same, the Applicant wishes to rely upon the above arguments/reasons
`supporting Claim 1 to support Claim 12 and 18 and submits the combination of
`Gallagher and Brendell fails to suggest "the payment request is denied in the mobile
`device when the amount is more than a balance of an electronic purse (e-purse)
`maintained locally in the mobile device, the payment request is sent to a payment
`gateway when the amount is less than a balance of an electronic purse (e-purse)
`maintained locally in the mobile device" recited in Claim 12 and "the payment request is
`denied within the mobile device without sending the payment request to the payment
`gateway when the amount is less than a balance of an electronic purse (e-purse)
`maintained locally in the mobile device; the payment request is sent to the payment
`gateway to proceed with a payment according to the payment request when the amount
`is more than the balance of the e-purse" recited in Claim 18. Accordingly, the Applicant
`submits Claim 12 and 18 shall be allowable over Gallagher and Brendell, viewed alone
`or in combination. Reconsideration of Claims 12-20 is kindly requested.
`
`The patentability of the independent claims has been argued specifically as set
`forth above and thus Applicant will not take this opportunity to argue further the merits of
`the rejection with regard to each dependent claim. However, Applicant does not
`concede that the dependent claims are not independently patentable and reserves the
`right to argue the patentability of the dependent claims at a later date if necessary.
`
`In view of the above amendments and remark, the Applicant believes that Claims
`1-20 shall be in condition for allowance over the cited references. Early and favorable
`action is being respectfully solicited.
`
`If there are any issues remaining which the Examiner believes could be resolved
`
`through either a Supplementary Response or an Examiner's Amendment, the Examiner
`is respectfully requested to contact the undersigned at (408)777-8873.
`
`11
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`

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`Case 6:21-cv-00916-ADA Document 43-3 Filed 04/19/22 Page 13 of 13
`
`I hereby certify that this correspondence is
`being deposited with the United States Postal
`Service as first class mail in an envelope
`addressed to " Mail Stop: No-fee Amendment
`Commissioner for Patents, P.O. Box 1450,
`Alexandria, VA 22313-1450", Nov. 29, 2019.
`e-filed.
`
`Respectfully submitted;
`
`/ joe zheng /
`Joe Zheng
`Reg.: No. 39,450
`
`Name: Joe Zheng
`
`Signature: / ioe zhena /
`
`12
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`