DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim Rejections - 35 USC § 112
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention without undue experimentation. The Examiner notes the determination that “undue experimentation” would have been needed to make and use the claimed invention is not a single, simple factual determination but it is a conclusion reaching by weighing the above noted factual considerations (Wands Factors).
The claim is broad as the recited “magnetic emulator” and "manner" are not specifically defined structurally. Secondly, the method of operating the card is defined in the claims by the devices and data that communicate with it (readers) without specifying the characteristics of the communication (defining the operation of the card by the readers instead of what the communicating is itself). Even further, the readers are defined by the data they receive, not what they actually do nor their structure (or what data is not received). Thus, according to 2164.01(a) (A) the Examiner has interpreted that due to the breadth of the claims there is not sufficient evident for the enablement requirement. The claim is so broad with respect to the disclosure that one skilled in the art could not make and use the device (perform the method of operating) without undue experimentation.
The nature of the invention is a method of card operation wherein a magnetic emulator of the card communicates first and second data to a stripe and RFID reader in first and second manners (2164.01 (a) (B)). The prior art teaches the use of a card with different interfaces for different communications such as magnetic stripe, RFID, optical, etc. (see Doughty et al. below) and does not teach varying the magnitude and frequency of a driving signal of a single emulator to communicate first and second data to a magnetic stripe reader and RFID reader by varying those characteristics (as per the Applicants specification). The Examiner notes that state of the prior art, at the time the application was filed, regarding magnetic emulation and RFID and magnetic stripe readers, does not support merely changing an operating frequency/ magnitude of a magnetic stripe emulator to change it to communicate data to an RFID reader. While there may be predictability in changing physical parameters of an antenna/ conductors, at the time the invention was filed, there was not enough teachings or guidance in the art to merely drive a magnetic emulator in a second manner to communicate data to an RFID reader (as opposed to a magnetic stripe reader) due to the various standards, frequencies, operation conditions, physical design characteristics, etc. that one would have to consider which would result in undue experimentation when trying to design and drive an emulator capable of both RFID and magnetic stripe communication by “driving” a single emulator differently. (2164.01(a) (C). Even further, Pitroda et al. (US 6705520) supports the Examiners position as. Pitroda et al. teaches that an adapter is used to enable an RFID/ contactless device to interface with a magnetic reader because the contactless device itself is not capable of merely being used in a different manner (different frequency and magnitude) to switch from communicating data from a contactless reader to a magnetic stripe reader. Further, US 2006/0283958 teaches current magnitude and direction control in a conductor for emulating a magnetic stripe but there is no teaching or suggestion that doing so communicates or produces an RFID communication signal. Thus, according to 2164.01(a) (B-C) the Examiner has interpreted that due to the nature of the invention and the state of the prior art, there is not sufficient evident for the enablement requirement.
One of ordinary skill in the art would have experience with antenna/ conductor design and emulator design (typically a core inside a coil) would have experience with designing an antenna for radio frequency communications (RFID) compatible with RFID standards and optimized for such communication protocols. Further, one of ordinary skill in the art would have experience designing an emulator (coil and conductor) so that the output magnetic field is acceptable by conventional magnetic stripe readers. However, the integration of the driving characteristics plus the antenna design poses a challenge in terms of the type of antenna/ conductor that would be required that would permit just a change in frequency and magnitude to change an output signal from a magnetic stripe output for a magnetic stripe reader and an RFID output for an RFID reader (undue experimentation). The specification does not provide details of frequency and magnitude calculations/ specifications/ how such changes would be controlled/ implemented into the device (card). The specification does not provide details on how the manners are switched, how the values are switched, and what values are switched to enable a single emulator to switch communication between RFID reader and magnetic stripe readers. Specifically, current direction and magnitude adjustments for magnetic stripe emulation are known in the art but the specification does not support or teach or provide details on how such adjustments now permit RFID communication with RFID readers.
While RFID emulation (output) and magnetic stripe emulation are well known, the design of such a structure that would permit merely changing the frequency and magnitude driven to an emulator to permit the claimed first and second manner for communicating first and second data to a magnetic stripe reader and a RFID reader, within the scope of the claims is not predictable. The specification shows separate examples of RFID and magnetic stripe emulation (separately) but does not provide additional examples or provide guidance on how a single magnetic emulator would output the claimed first and second data to a magnetic stripe and RFID reader, within the scope of the claims.
Thus, the specification provides sufficient teaching for separate output (RFID and separately magnetic stripe), but not both via the emulator as claimed. The prior art does not provide guidance for merely varying the magnitude and frequency of a magnetic emulator to communicate data to different functionality type readers (RFID and magnetic stripe). The prior art to Bhatt et al. in the rejection below shows there are cards with one antenna/ conductor for low frequency indication power circuits and one antenna for higher frequency data transmission but not 1 antenna/ conductor that does both, further supporting the lack of enablement by viewing the state of the prior art.
The amount of experimentation would be undue because it would require determining specification conditions and designs of a magnetic emulator that would be required in order for it to communicate data compatible with 2 different format readers (RFID and magnetic stripe) while only using one format of output (magnetic emulator), as opposed to an RFID output as well. Since, as discussed above, it is not routine to use a magnetic emulator to output data to both a magnetic stripe reader and an RFID reader (different format/ type of communication), and therefore significant experimentation would be required because there is little guidance and it is not believed that a standard magnetic stripe emulator (coil wrapped around a core) can merely have its frequency and magnitude changed and then result in an RFID reader compatible signal; as that appears to be a special/ unique type of emulator/ antenna that would require significant and undue experimentation as results of existing technology would be unproven as it pertains to the disclose and claimed first and second manner.
The lack of working examples in the specification is present because the Applicant only mentions in paragraph [0006] “driving” the emulator at a “different frequency and a different magnitude”, without reciting how this emulator is designed or operated to enable such functionality. The Examiner notes that such limited mentioning is not enabling to one of ordinary skill in the art absent more details.
Additionally, the Examiner notes that US 20070132555 describes the difference between ultra-low/ low frequency radio and high frequency radio tags, which further challenges the use of a single emulator communicating in two disparate frequency ranges (paragraph [0009]+).
Even further, the Examiner notes that an RFID emulator is understood to operate at fixed frequencies in compliance with industry standards. However, magnetic stripe emulators are understood to not broadcast a RFID signal but instead crates magnetic fluctuations by varying magnetic fields to mimic a stripe when passed by a read head (timing), whereby it generates the sequence of magnetic pulses. Again, the Examiner maintains that the specification does not provide adequate support for one of ordinary skill in the art to make/ use a magnetic emulator to function both as a magnetic stripe emulator card and RFID card by adjusting the frequency and magnitude, without undue experimentation, due to the divergent nature of the two technologies and the amount of physical variables as to the design, size, structure, antenna, chip/ programming that would need to be taken into consideration which do not provide a straight forward and predictable (without undue experimentation) way to implement such a setup for the dual functionality as recited. Example prior art recited in previous actions (Cox US 20070131759) teaches a card with a programmable stripe and separate RFID communications, but this is not interpreted as an emulator driven at different parameters (magnitude and frequency) to communicate to RFID and magnetic stripe readers, but two separate elements for dual functionality. A magnetic emulator ask known in the art is interpreted as a structure such as a coil wrapped core that has current provided therein to generate magnetic fluctuations to mimic a card swipe. The claimed single element dual functionality as recited in the specification and claims, without adequate specific details is not interpreted to be enabled without undue experimentation.
Thus, according to 2164.01(a) (D-H) the Examiner has interpreted that due to the breadth of the claims there is not sufficient evident for the enablement requirement.
Appropriate correction is requested.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. Re the Applicants argument regarding enablement, the Applicant states the processor drive the emulator at a frequency and amplitude to communicate with a magnetic stripe reader and a different frequency and magnitude to communicate with an RFID reader, essentially restating the claim language but not addressing the Examiners rejection regarding undue experimentation of the enablement rejection. The Applicant does not explain how one of ordinary skill in the art would make or use the invention without undue experimentation. The Examiner posed concerns about antenna design, programming of electronics, operating parameters, physical parameters, and the duality of the differing subject matter of RFID vs magnetic stripes. Absent an enabled working example of an emulator that performs such duality of functioning or some explanation of how one would make/ use the invention without undue experimentation, the Applicant has not clarified their solution/ that it is enabled/ that the specification supports in. For example, does the applicants invention involve distinct systems connected to a processor, or distinct coils for magnetic stripe communication and RFID? Physically how is such an antenna/ emulator designed/ dimensioned/ manufactured? How is the magnitude and frequency adjusted? While the Applicants specification mentions adjusting the magnitude and direction/ frequency, such teachings do not enable a particular circuit, coil, or structure absent specific details in the specification that do not seem to be provided and are not within the ordinary skill in the art without undue experimentation. A traditional magnetic stripe emulator is a coil wrapped core to outputs a magnetic field to emulate a swipe to a reader. The Applicant fails to provide evidence or explanation of how such an emulator can function to communicate data to an RFID reader by adjusting magnitude and frequency such as to provide evidence of possession/ that one of ordinary skill in the art could make/ use the invention without undue experimentation. While the Applicant in their arguments essentially recites the claim language as evidence, they do not address the issues brought up by the Examiners’ enablement rejection so as to clarify how the device is enabled.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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/DANIEL I WALSH/ Primary Examiner, Art Unit 2876