UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/164,561
`
`10/18/2018
`
`Marcel VAN OS
`
`P22848USC5/77770000362205
`
`1055
`
`DENTONS US LLP — Apple
`4655 Executive DI'
`Suite 700
`
`San Diego CA 92121
`
`APPLE. KIRSTEN SACHWITZ
`
`3697
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`PAPERNUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/05/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`dentons_PAIR @ firs ttofile. com
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`patents .us @ dentons .Com
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
`
`Application No.
`16/164,561
`Examiner
`KIRSTEN APPLE
`
`Applicant(s)
`VAN os etal.
`Art Unit
`3697
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 6/3/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—13 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)D All
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`b)I:I Some**
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`c)CI None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190829
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Detailed Action
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`This action is in response to the application filed on 6/3/2019.
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`Restriction
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`Newly submitted claim 22 directed to an invention that is independent or distinct from
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`the invention originally claimed for the following reasons: claims 22 is newly submitted claims
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`not related to the others and not related to figure 11 which was the basis of removing the 112
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`rejection and understanding of the claim. The examiner will address the other newly submitted
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`claims as she does not feel they are restrictable.
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`Since applicant has received an action on the merits for the originally presented
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`invention, this invention has been constructively elected by original presentation for prosecution
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`on the merits. Accordingly, the above cited newly submitted claims are withdrawn from
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`consideration as being directed to a non—elected invention. See 37 CFR 1.142(b) and MPEP §
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`821.03.
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`Claim Rejections - 35 US C § 112
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`In view of the applicants amendments the 112 rejections is hereby withdrawn.
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`Claim Rejections - 35 US C § 101
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`35 USC. 101 reads as follows:
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`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
`any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
`requirements of this title.
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`

`

`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 3
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`All claims are rejected under 35 U.S.C. 101 because the claimed invention is directed to
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`non—statutory subject matter.
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`Claims are rejected under 35 U.S.C. § 101 due to the unanimous decision by the Supreme
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`Court (June, 2014) which held that the patent claims in Alice Corporation Pty. Ltd. V. CLS Bank
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`International, et a1. (“Alice Corp”) are not patent—eligible under 35 U.S.C. §101.
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`The claimed invention is not directed to patent eligible subject matter. Based upon
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`consideration of all of the relevant factors with respect to the claim as a whole, claim(s) is/are
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`determined to be directed to an abstract idea. The rationale for this determination is explained
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`below: There are no meaningful limitations beyond generally linking the use of an abstract idea
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`to a particular technological environment. The claims require no more than a generic computer to
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`perform generic computer functions that are well—understood, routine and conventional activities
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`previously known to the industry. Applying an abstract idea or mere instructions to implement an
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`abstract idea on a computer is not statutory. There are no improvements to another technology or
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`technical field. Further, there are no improvements to the functioning of the computer itself.
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`The claims do not pass the two part analysis. As for the first part of the analysis the steps
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`of displaying content and a activatable user interface object, detecting an activation, displaying a
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`transaction overlay, and instructions for authenticating the secure transaction as disclosed in the
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`claims are a fundamental economic practice, methods of organizing human activities and/or an
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`idea of itself. As for the second part of the analysis the disclosure of the above abstract ideas, do
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`not make improvements to another technology, to the functioning of the computer itself or
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`impose meaningful limitations beyond generally linking the use of an abstract idea to a
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`particular computer/processor. Any computer can be programmed to carry out the limitations
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`of the claims.
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 4
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`While claim language includes a display and an processor this does not overcome the 101
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`rejection.
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`Since there are no meaningful limitations in the claims that transform the exception into a
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`patent eligible application such that the claims amounts to significantly more than the exception
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`itself, the claims are rejected under 35 U.S.C. § 101 as being directed to non—statutory subject
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`matter.
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`In the instant case, none of the limitations carried out via the use of a computer or
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`processor, has any meaningful limitations beyond generally linking the use of an abstract idea to
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`a particular technological environment. Further these abstract ideas require no more than a
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`generic computer to perform generic computer functions that are well—understood, routine and
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`conventional activities previously known to the industry. The limitations of the claims, such as
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`“displaying content and a activatable user interface object, detecting an activation, displaying a
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`transaction overlay, and instructions for authenticating the secure transaction” do not have any
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`meaningful limitations beyond generally linking the use of these processes to a generic
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`computer. These are well known, routine and conventional activities. Any generic computer can
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`be used to carry out the steps of the proposed invention.
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`Claim Rejections - 35 US C § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
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`Claims listed below in this section are rejected under 35 U.S.C. 103(a) as being
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`unpatentable over Kalgi (US. Patent Pub 2013/0013499) in view of Leston (US. Patent Pub
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 5
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`2012/0215553) in view of Mullen (US Patent Pub 2008/0054081) in view of Dorogusker (US
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`Patent 9,519,901) in view of Dorogusker (US patent 9,519,901)
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`Re claim 1 & 12 & 13: Kalgi discloses:
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`An electronic device, comprising: a display; a touch—sensitive surface; one or more
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`processors; and memory storing one or more programs configured to be executed by the one or
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`more processors, the one or more programs including instructions for (see Kalgi Figure 1 item 1—
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`02b):
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`A non—transitory computer—readable storage medium storing one or more
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`programs configured to be executed by one or more processors of an electronic device with a
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`display and a touch—sensitive surface, the one or more programs including instructions for: ( see
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`Kalgi Figure 1 item 1—02b)
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`A method, comprising: (see Kalgi Figure 4—12):
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`displaying, on the display, a user interface that includes an activatable user interface
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`object that, when activated initials a process for authenticating a secure transaction related to the
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`content included in the user interface (see Kalgi Figure 17c);
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`While displaying the user interface, detecting, via the touch—sensitive surface, an
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`activation of the activatable user interface object (see Kalgi paragraph 0051 + Figure 5 item 5—
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`11);
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`in response to detecting the activation of the activatable user interface object, displaying,
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`on the display, a transaction overlay wherein the transaction overlay covers a first portion of
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`interface and the activatable user interface object are no longer visible on the display (see Kalgi
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`Figure 17c—17d note first portion is “Acme supermarket address”);
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 6
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`the transaction overlay does not cover a second portion of the user interface such that the
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`second portion of the user interface remains visible on the display, and the transaction overlay
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`includes a representation of an account for user in the secure transaction and (see Kalgi Figure
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`l7c—l7d note second portion is everything below “Acme supermarket address”);
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`while concurrently displaying the transaction overlay, and the second portion of the user
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`interface that was displayed prior to detecting the activation of the activatable user interface
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`object, displaying, in the transaction overlay, instructions for authenticating the secure
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`transaction related to the content included in the user interface. (see Kalgi Figure l7c item 17—34
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`note second portion is everything below “Acme supermarket address”);
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`While examiner believes, Kalgi teaches the features of applicant, should the limitations
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`be argued and for the sake of compact prosecution additional reference, Leston and Mullen and
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`Dorogusker additionally teaches the limitations of the applicant particular the first and second
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`portions. Leston shown on figure 3B with part of ID on left and full ID on right. Mullen shown
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`on Figure 1 item 130. Dorogusker shows this in figure 5 above the line is first portion and below
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`the line is second portion that changes. If the data is contained in a database it is, inherent that
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`part can be shown before verification and full data can be show after verification such as
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`explicity show in Leston and Mullen and Dorogusker.
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`Therefore it would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to modify Kalgi by adapting any features of Leston and Mullen and
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`Dorogusker.
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 7
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`It is clear that one would be motivated to combine prior art elements according to know
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`methods to yield predictable results. Specifically both Kalgi and Leston and Mullen and
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`Dorogusker all relate to same subject area of payment verification.
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`While examiner believes, Kalgi teaches the features of applicant, should the limitations
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`be argued and for the sake of compact prosecution additional reference, Dorogusker additionally
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`claims fingerprint biometric as in title and Figure 3 and throughtout whole patent.
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`Therefore it would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to modify Kalgi in view of Leston by adapting fingerprint biometric of
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`Dorogusker.
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`It is clear that one would be motivated to combine prior art elements according to know
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`methods to yield predictable results. Specifically both Kalgi and Dorogusker both relate to same
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`subject area of mobile payment verification with biometric.
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`Re claim 2 & 14 & 24: see claim 1 +
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`wherein the electronic device includes a biometric sensor, and wherein the instructions
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`for authenticating the secure transaction include instructions for providing biometric
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`authentication, via the biometric sensor, to authenticate the secure transaction. (see Kalgi
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`paragraph 0051 + Figure 5 item 5—11 + Dorogusker Figure 3)
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`Re claim 3 & 15 & 25: see claim 1 +
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`wherein the biometric sensor is a fingerprint sensor, and wherein the instructions for
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`authenticating the secure transaction include a graphical representation of a simulated
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`fingerprint. (see Kalgi paragraph 0051 + Figure 5 item 5—1 l+ Dorogusker Figure 3)
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`Re claim 4 & 16 & 26: see claim 1 +
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 8
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`wherein the one or more programs further include instructions for:
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`while displaying, in the transaction overlay, the instructions for providing biometric
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`authentication, receiving, via the biometric sensor, biometric information; and (see Kalgi
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`paragraph 005 l + Figure 5 item 5 —1 1+ Dorogusker Figure 3)
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`in response to receiving the biometric information, in accordance with a determination
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`that the biometric information is consistent with registered biometric information, displaying,
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`on the display, confirmation information associated with the secure transaction, wherein
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`the displayed confirmation information replaces display of the transaction overlay. (see Kalgi
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`paragraph 005 l + Figure 5 item 5 —1 1+ Dorogusker Figure 3)
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`Re claim 5 & 17 & 27: see claim 1 +
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`wherein the displayed confirmation information further replaces display of the second
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`portion of the content of the user interface. (see Kalgi Figure l7c + Liston Figure 3)
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`Re claim 6 & 18 & 28: see claim 1 +
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`wherein the one or more programs further include instructions for:
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`in response to receiving the biometric information, in accordance with a determination
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`that the biometric information is inconsistent with the registered biometric
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`information, maintaining display of the transaction overlay without displaying the confirmation
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`information. (see Kalgi paragraph 005 l + Figure 5 item 5 —1 1+ Dorogusker Figure 3)
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`Re claim 7 & 19 & 29: see claim 1 +
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`wherein the one or more programs further include instructions for:
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`in response to receiving the biometric information, in accordance with a determination
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`that the biometric information is inconsistent with the registered biometric
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 9
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`information: maintaining display of the transaction overlay; and (see Kalgi paragraph 005 l +
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`Figure 5 item 5 —l l+ Dorogusker Figure 3)
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`displaying, in the transaction overlay, an affordance for authenticating the secure
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`transaction using passcode authentication. (see Kalgi paragraph 0035 + Figure 5 item 5 —l l+
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`Dorogusker Figure 3)
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`Re claim 8 & 20 & 30: see claim 1 +
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`wherein the instructions for authenticating the secure transaction include a graphic
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`representation indicative of a method of biometric authentication. (see Kalgi paragraph 005 l +
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`Figure 5 item 5 —l l+ Dorogusker Figure 3)
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`Re claim 9 & 21 & 31: see claim 1 +
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`wherein the instructions for authenticating the secure transaction include text instructions
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`for providing biometric authentication. (see Kalgi paragraph 005 l + Figure 5 item 5 —l l+
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`Dorogusker Figure 3)
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`Re claim 10 & 22 & 32: see claim 1 +
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`wherein the one or more programs further include instructions for:
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`while displaying, in the transaction overlay, the instructions for authenticating the secure
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`transaction, wherein the instructions for authenticating the secure transaction include
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`instructions for providing biometric authentication, concurrently displaying, in the transaction
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`overlay: shipping information related to the secure transaction, and account information
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`associated with the account for use in the secure transaction.
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`(see Kalgi paragraph 0064 + 005 l
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`+ Figure 5 item 5 —l l+ Dorogusker Figure 3)
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`Re claim 11 & 23 & 33: see claim 1 +
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`wherein the one or more programs further include instructions for:
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
`
`Page 10
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`while displaying, in the transaction overlay, the shipping information and the account
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`information, concurrently displaying, in the transaction overlay, a first affordance for
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`changing the shipping information and a second affordance for changing the account
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`information. (see Kalgi paragraph 0064 + 0051 + Figure 5 item 5 —l l+ Dorogusker Figure 3)
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`Response to Arguments
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`Applicant's arguments have been fully considered but they are not persuasive.
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`In particular, and respect to Claim 1 the Applicant argued 15‘: 112
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`This has been removed
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`Applicants argued 2nd, 103
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`The Examiner refutes the argument made by the Applicant and draws the attention to newly
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`submitted action above. These arguments were focused on amended claims and the examiner has
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`address above.
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`Applicants argued 3rd, 101
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`The examiner refutes the arguments and while the claims are related to techology it is
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`routine and expected use of technology.
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`It should be noted that this claims is nothing more than
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`“how” a GUI is displayed — in other words the image on the screen and just as the words in a book
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`or the cover of a book or a piece of art is not eligible for a utility patent neither is the content of
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`this patent.
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`Contact Information
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Kirsten S. Apple whose telephone number is 571.272.5588. The
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`examiner can normally be reached on Monday — Friday 9:00—5:30.
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`

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`Application/Control Number: 16/164,561
`Art Unit: 3697
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`Page 11
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Kambiz Abdi can be reached on 571—272—6702. The fax phone number for the
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`organization Where this application or proceeding is assigned is (571) 273—8300.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free).
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`ksa
`
`/KIRSTEN S APPLE/
`
`Primary Examiner, Art Unit 3697
`
`