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.
Claims 1-27 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.
As a matter of introduction, the Examiner notes the claims are broad as the recited “magnetic emulator” and "type of card reader" are not specifically defined structurally. Secondly, the method of operating the card is defined by the devices that communicate with it (readers) without specifying the characteristics of the communication (defining it 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. Finally, claim 14 recites a second emulator and it is not enabled how a second emulator would function when the first emulator is what is driven to communicate to the different types of readers.
To clarify, with respect to 112 enablement, the claim includes BRI type language such as “type” of card reader. This breadth of the claim is broad because it includes the type of readers in the specification, which lead to a non-enabled card/claim, wherein a magnetic emulator is driven based on a first processor recognized type of card reader, the card being operable to communicate with a magnetic stripe reader, wherein the first type of card reader is an RFID reader and the driving of the magnetic emulator to communicate with the RFID reader. This explanation is provided by the Examiner for (A) breadth of claims from the Wands Factors. Simply put, the claim is written so broadly with respect to the disclosure that one of ordinary skill in the art could not make or use the invention without undue experimentation as what the types of readers are provided by the specification do not enable the instant claims because the difference between traditional magnetic stripe/ RFID readers and the instant claims are not within the ordinary skill in the art/ obvious, because the method is of such nature that the art is unaware of driving the magnetic emulator to communicate with an RFID reader in response to the recognizing by a processor of the card and that the magnetic emulator is also operable to communicate with a magnetic stripe reader. Accordingly, the specification is not providing enough detail as to how to make and use the invention, especially as it relates to the driving as it relates to different types of readers.
The nature of the invention is a method of card operation wherein a magnetic emulator of the card operable to communicate with a magnetic stripe reader is driven to communicate with an RFID reader as recognized by a card processor. 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. US 20040133787) 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 contends that such nature of the invention requires special programming or a structure of the card/ circuitry/ antenna/ driving of the card that is not disclosed/ how a processor configured to do so (namely how a magnetic emulator operates so as to communicate with RFID and magnetic stripe readers), such an explanation referring to (B) Nature of the Invention from the Wands Factors, and thus lacks enablement.
For (C) State of the Art from the Wands Factors, one of ordinary skill in the art would have experience with antenna design and emulator design (typically a core inside a coil) and 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 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. To further clarify the Examiner maintains that the specification does not provide enablement for a magnetic emulator that can operate to communicate with a magnetic stripe reader and communicate with an RFID reader.
For (D) Level of Ordinary Skill and (E) Level of Predictability from the Wands Factors, 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 emulator to communicate data with the first and second types of readers (magnetic and RFID), within the scope of the claims is not predictable. Antenna theory and design and signal processing would lead one of ordinary skill in the art to understand that different encoding schemes are in fact the type of things that take time to develop and particular solutions, and thus one of ordinary skill would not come up with the claimed limitations without undue experimentation. 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, aside from “driving it”, such as a different magnitude and frequency. However, the details of the dimensions, physical properties, shape/ design, required to enable such duality of driving to communicate with RFID and magnetic stripe readers are not disclosed. Details of the “driving” and the type of structure are not disclosed. Additionally, it is unclear from the disclosure how driving the emulator at different frequency and amplitude to couple with RFID readers and magnetic stripe readers with a level of predictability, without special consideration and experimentation to reach such limitations. Therefore, the Examiner maintains that frequency changing does not show that the invention is enabled.
To further clarify (F) Amount of Direction of the Wands Factors, the Examiner notes that while the specification teachings merely driving an emulator at a different amplitude and frequency for magnetic stripe emulator coupling to an RFID reader and magnetic stripe reader, the Examiner notes that encoding of data in a signal and transmission is not merely about carrier frequency and amplitude, but phase, frequency modulation, data packet formatting, antenna design, signal processing, security constraints, etc. and that the amount of direction provided in the specification is insufficient for enablement.
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).
To clarify (H) Quantity of Experimentation of the Wands Factors, 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. Additionally, the Examiner notes that encoding schemes are the subject of many separate disclosures and thus is not an insignificant post solution activity (using a magnetic emulator to communicate with RFID and magnetic stripe readers and the encoding and signal processing and antenna design involved) as developing encoding schemes to be able to communicate via both RFID and magnetic stripe readers would take considerable experimentation, as there are different standards, such as ISO for magnetic and RFID reader communications, and having a single emulator communicate both would require undue experimentation with only changing amplitude and frequency.
Appropriate correction is requested.
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 1-27 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 pre-AIA the applicant regards as the invention.
Re claims 7-8 and 21-25 it is unclear how a magnetic emulator is driven to communicate with a magnetic stripe reader and also a second type of card reader (RFID), based on the specification, which recites varying the magnitude and amplitude, it is unclear to the Examiner what specific magnitude would be required in order to communicate with magnetic stripe readers as opposed to second type/ RFID and also what type of frequency as well would be required for such a specialized emulator to function in dual modes as claimed. It is unclear how a magnetic emulator, understood to be designed to function with a magnetic reader, communicates with also a RFID reader (different technology).
Re claim 1-6, 9-20 and 26-27 it is unclear how a magnetic stripe emulator is controlled by a processor to emit fields to communicate with different types of readers (stripe and RFID) which use different technologies than just a single type of reader (how is a magnetic emulator emulating RFID for example?).
Further claim 14 is vague/ indefinite because it is unclear how a second emulator functions or is used when the first (other) emulator is taught to be driven for communications.
Appropriate clarification/ correction is requested.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, 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 negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-11, 13-18, 20-23, and 25-27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Doughty et al. (US 20040133787).
Doughty et al. teaches:
A method comprising:
recognizing, via detection signals received by a processor of a card, a first type of card reader from a plurality of types of card readers, wherein the first type of card reader comprises a conventional magnetic stripe reader (FIG. 3, paragraph [0054]+ which teaches that the device is normally in sleep mode (702) until it receives activation parameters such as detecting an external signal from an interface such as 308/320/322/324/326 which is interpreted as the processor 314 receiving detection signals to recognize a magnetic stripe reader);
driving a magnetic emulator of said card, controlled by said processor, based on said recognized first type of card reader, wherein said magnetic emulator is operable to emit an electromagnetic field that enables communication with said magnetic stripe reader (magnetic field generator 308);
recognizing, via detection signals received by said processor, a second type of card reader from said plurality of types of card readers, wherein the second type of card reader comprises an RFID reader (contactless interface 322 communicably coupled to the processor 314 which can include an antenna for wireless communication or other known contact methods, and while silent to specifically reciting RFID, the Examiner notes that as an antenna is taught, the use of RFID would have been an obvious expedient known in the art to produce expected results of wireless communication that is widely accepted, secure, and convenient for users); and
driving said magnetic emulator of said card, controlled by said processor, to emit an electromagnetic field that enables communication with said RFID receiver reader based on said recognized second type of card reader (contactless interface is driven). The magnetic emulator is intpereted as the elements in user device 302 such as at least part of the generator and contactless interface, absent a specific structural recitation.
Re claim 2, paragraph [0051]+ teaches a time based number via time-varying magnetic stripe data, wherein a number is an obvious expedient such as to communicate account information as known in the art.
Re claim 3, the time varying signal is interpreted as use-based as its communicated when used.
Re claim 4, FIG. 8 and FIG. 11 teach a display.
Re claim 5, paragraph [0077]+ teaches a battery. Paragraph [0078]+ teaches buttons.
Re claim 6, as discussed above, Doughty et al. teaches detecting an external signal from an interface to activate a magnetic field generator. Such teachings obviate a read head detector in order to receive external signals such as from a read head.
Re claims 7-8, the limitations have been discussed above, and additionally the Examiner has interpreted that a magnetic stripe emitted field and RFID emitted field from the card are implicitly different frequencies based on their different operation spectrums (magnetic and radio).
Re claim 9, as discussed above, recognizing the type of reader is performed by the processor in order to determine the type of reader. The interface therefore functions as a read head detector as it detects the presence of a read head (magnetic stripe reader).
Re claim 10, a button has been discussed above re claim 5.
Re claim 11, paragraph [0045]+ teaches plural buttons, which the Examiner notes that additional buttons are an obvious expedient for input convenience/ ease of use.
Re claim 13, the antenna is interpreted as an RFID field detector.
Re claim 14, Doughty et al. teaches a second magnetic emulator (multiple coils per FIG. 5A).
Re claim 15, the first type of card reader is a reader with a read head associated with a position of the emulator on the card since the magnetic stripe reader reads from the card from a position on the card, as understood in the art.
Re claim 16, a battery has been discussed above, and though silent to a particular type fo battery, the Examiner notes that when the general conditions are taught, the selection of a known or preferred material for expected results is within the ordinary skill in the art. Accordingly, one would have been motivated to use such a battery for size/ power/ cost/ usability constraints.
Re claim 17, a processor/ controller 314 has been discussed above, and paragraph [0040]+ teaches an ASIC chip, which reads on an IC chip. RFID antennas have been discussed above.
Re claim 18, RFID antenna has been discussed above.
Re claim 20, an IC chip has been discussed above.
Re claim 21, the limitations have been discussed above, re claim 5.
Re claim 22, the limitations have been discussed above, re claim 3.
R eclaim 23, the limitations have been discussed above, re claims 4-5.
Re claim 25, the limitations have been discussed above, re claims 4-5 and 11.
Re claims 26-27, the limitations have been discussed above re claims 8-9.
Claim 2 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Doughty et al., as discussed above, in view of Hathaway et al. (US 20090048971).
Re claim 2, the teachings of Doughty et al. have been discussed above but are silent to time-based data being an actual number and use based.
Hathwawy et al. teaches such limitations (abstract+). Hathaway et al. teaches used based (counter per paragraph [0034]+).
At the time the invention was made, it would have been obvious to one of ordinary skill in the art to combine the teachings such as for security.
Claims 6, 9, and 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Doughty et al., as discussed above, in view of Narendra et al. (US 20060186209).
Re claims 6 and 9, the teachings of Doughty et al. have been discussed above but are silent to explicitly reciting the read head detector.
Narendra et al. (US 20060186209) teaches such limitations (paragraph [0047]+).
At the time the invention was made, it would have been obvious to combine the teachings to control output from the card.
Re claim 9, the read head detector is intpereted as recognizing the card reader as a magnetic stripe reader.
Re claim 27, the limtaitons have been discussed above re claim 9.
Claim 12 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Doughty et al., as discussed above, in view of Blossom (US 20030209608).
Re claim 12, the teachings of Doughty et al. have been discussed above but are silent to serial communication.
Blossom teaches emulating magnetic stripe cards by outputting data serially (paragraph [0040]+).
At the time the invention was made, it would have been obvious to combine the teachings to mimic conventional magnetic card output for ease of use/ acceptance.
Claim 16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Doughty et al., as discussed above, in view of Tanner et al. (US 20020070976).
Re claim 16, the teachings of Doughty et al. have been discussed above but are silent to lithium polymer batteries.
Tanner et al. teaches such limitations (paragraph [0110]+).
At the time the invention was made, it would have been obvious to combine the teachings for expected benefits of a known type of flexible/ rechargeable battery.
Claims 19 and 24 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Doughty et al., as discussed above, in view of Onoda et al. (US 5886874).
Re claim 19, the teachings of Doughty et al. have been discussed above but are silent to multilayer PCBs
Onoda et al. teaches such limitations at col 1, lines 52+.
At the time the invention was made, it would have been obvious to combine the teachings for expected benefits of miniaturization, improved connectivity, to comply with standard semiconductor manufacturer processes, etc. wherein flexibility is an obvious expedient for durability in the card application, and as is conventional with PCBs.
Re claim 24, the limitations have been discussed above, re claim 19.
Claims 1, 7, 8, and 26 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wendt (US 20080148393).
Re claims 1 and 26, Wednt teaches such limitations (FIG. 1+ and paragraph [0041]+ which teaches a processor 120 and a magnetic emulator which is intpereted to include at least part of 190 and 150, wherein signals are received in order to have the processor control the card to operate so as to communicate with an RFID or magnetic stripe reader. Though silent to explicitly reciting an EM field to communicate with the stripe reader and RFID reader, the Examiner notes that it would have been obvious that coil connections driven by current produce an EM field and that RFID logic produces an EM field in order for the different wireless communications to be performed. Re claims 7 and 8, it would have been obvious at the time the invention was made, for the frequencies would be different in order to output the divergent signals for reading in magnetic stripe and RFID domains.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. The Examiner has cited new art to address the new claim amendments. Re the 112 rejections, the Examiner maintains them as discussed above. Re the enablement rejection, the Examiner notes that as discussed above re the Wands factors working examples and state of the art, the Examiner notes that their does not appear to be sufficient support in the specification for how the emulator would work, especially given the lack of working examples, as it appears to the Examiner that the claims appear to try to capture a generic version but without adequate specification support for enablement that would not require undue experimentation to achieve.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Osterweil (US 20060283958) teaches a card with a plurality of buttons (paragraph [0123]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Paik can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL I WALSH/ Primary Examiner, Art Unit 2876
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