DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
Receipt is acknowledged of the amendment filed 11/06/2025. Claims are not amended and claims 10-19 are currently pending.
Claim Interpretation
For the purpose of expediting prosecution, the broadest reasonable interpretation of the claim language is discussed herein.
The term “fixed” may be understood to be a relative term describing something that is fixed for a period of time or fixed during a set of process steps, and then made to change at a later time. In other words, “fixed” does not require permanence through the lifetime of a card for example. In the prior art reference “Brainard”, there are values distinguished by the degree to which they change in time with some values constantly changing in time and some values being fixed for periods of time. The claim does not specify the degree to which a contained credit card is fixed.
The terms “encoded” and “encoding” are understood according to the plain meaning of the terms, consistently with the use in the Specifications. Merriam Webster dictionary defines encoding to be “to convert (something, such as a body of information) from one system of communication into another”.
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 10-19 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241.
As claimed, the “device operable to communicate information stored in said memory” corresponds to the disclosed embodiments of a processor. Applicant discloses performing the specific computer-implemented function via prose and pictorially. The algorithm transforming the general purpose processor into the special purpose computer lacks sufficient detail does not adequately disclose the entire claimed function(s).
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 10-19 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.
To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is also appropriate if the specification discloses an algorithm but the algorithm is not sufficient to perform the entire claimed function.
In several Federal Circuit cases, the patentees argued that the requirement for the disclosure of an algorithm can be avoided if one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function. See, e.g., Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1493; Biomedino, 490 F.3d at 952, 83 USPQ2d at 1123; Atmel Corp., 198 F.3d at 1380, 53 USPQ2d at 1229. Such argument was found to be unpersuasive because the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms. Blackboard, 574 F.3d at 1385, 91 USPQ2d at 1493
As claimed, the “device operable to communicate information stored in said memory” corresponds to the disclosed embodiments of a processor. Applicant discloses performing the specific computer-implemented function via prose and pictorially. The algorithm transforming the general-purpose processor into the special purpose computer lacks sufficient detail does not adequately disclose the entire claimed function(s).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 negatived by the manner in which the invention was made.
Claims 10-16 and 18-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Keresman et al. (US PG Pub. 2002/0120583; hereinafter Keresman; previously cited) in view of Brainard et al. (US PG Pub. 2003/0105964; hereinafter Brainard; previously cited) and US PG Pub. 2002/0141621 to Lane (hereinafter Lane).
Regarding claim 10, Keresman discloses a payment device (Fig. 1; abstract) comprising: a processor (processor steps 54, 56, 60 of Fig. 3; [0036]-[0037]) containing a fixed credit card number (“at step 54, the software in memory 30 selects the first available random number from the internal memory 32”; [0007],[0027]-0028],[0036]), said processor operating to encode said fixed credit card number into an encoded credit card number (“If a polynomial is scheduled, step 56 causes processing to continue at step 60 where software in memory 30 applies the scheduled polynomial transformation to the number. At step 62, the transformed number is displayed with the aforementioned indicator digit”; [0037]) based on a signal (“The user requests a number to be dispensed by pressing one of the buttons 16 on the token at step 52. Subsequently, at step 54, the software in memory 30 selects the first available random number from the internal memory 32”; [0036]-[0037]); a battery (“power source 12 is implemented in the form of a battery”; para [0053]); a memory (memory 30 & 32, Fig. 2; para [0058]); a device (display 14 of Fig. 1 and transducer 26 of Fig. 2; [0057],[0058]) operable to communicate information stored in said memory ([0036]-[0037]), said communicated information comprises said encoded credit card number ([0027],[0028],[0036]-[0037],[0057]-[0058]).
The term “fixed” may be understood to be a relative term describing something that is fixed for a period of time or fixed during a set of process steps, and then made to change at a later time. In other words, “fixed” does not require permanence through the lifetime of a card for example.
Keresman discloses the claimed invention as cited above though does not explicitly disclose: a receiver operable to receive wireless communications that includes information associated with an atomic clock signal or global positioning system signal (GPS), said processor encoding said fixed credit card number into said encoded credit card number based at least in part on said information associated with an atomic clock signal or a global positioning system signal (GPS).
Brainard discloses a processor encoding a fixed credit card number (“the secret (K), the dynamic value (T) and the generation value (N) are provided to the combination function 130 for combination as authentication code A (K, T, N) 91” and secret (K) and generation value (N) are fixed relative to time-varying dynamic value (T); [0042]-[0044]) into said encoded credit card number (“The authentication device 520 includes a dynamic value function 532. The current time is supplied to the dynamic value function 532 by a clock 505 in the terminal 540. The dynamic value function 532 changes the dynamic value 522 once each time interval.” Fig. 4; para [0074-0084]) based on communications (“The current time is supplied to the dynamic value function 532 by a clock 505 in the terminal 540.”, Fig. 4; para [0003,0006,0039 ,0074-0084]).
Alternatively, Brainard discloses at least a portion of authentication information (Fig 2A; para [0050,0056]) changes based on communications (determine the time step 202, Fig. 2A; para [0003,0006,0039,0050,0056]) elsewhere in the reference. Specifically the time determining step is described thusly “In one embodiment, the dynamic value (T) is provided as the output of a time clock function. The time clock function provides the current time to the dynamic value function. The dynamic value function determines the appropriate dynamic value (T) in response to the data provided by the clock function. In one such embodiment, implemented in a device having a clock and a processor, the dynamic value (T) is generated by a clock that is a counter that is set to an initial value and is incremented every second. This clock counts the number of seconds since the initially configured time. Every sixty seconds the clock signals the dynamic value function, which reads the clock, increments the dynamic value (T), and stores the incremented dynamic value as the dynamic value (T) for that time interval” [0042]), said processor generates said credit card number based at least in part on said information associated with time (para [0003,0006,0039,0042,0050,0056]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to base an authentication information in communications as taught by Brainard with the system as disclosed by Keresman. The motivation would have been to improve security of authentication routines (para [0003-0005,0080]).
Keresman in view of Brainard discloses the claimed invention as cited above though does not explicitly disclose: a receiver for receiving wireless communications, wherein said wireless communication includes information associated with an atomic clock signal or a global positioning system signal (GPS).
Lane discloses a receiver for receiving a wireless timing signal to synchronize a transaction system, wherein said wireless communication includes information associated with an atomic clock signal or a global positioning system signal (GPS) (para [0024]), and a processor generates unique transaction identifier based at least in part on said information associated with an atomic clock signal or a global positioning system signal (GPS) (para [0024]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide wireless synchronization and communications to a payment device as taught by Lane with the system as disclosed by Keresman in view of Brainard. The motivation would have been to provide additional security by reduce transaction errors and fraud of duplicate transaction identifiers (para [0023-0024]).
Regarding claim 11, Keresman discloses a display (display 14, Fig. 1).
Regarding claim 12, Keresman discloses said payment device is a payment card (abstract).
Regarding claim 13, Keresman discloses a first display (display 14, Fig. 1) and a second display (logo 11, Fig. 1).
Regarding claim 14, Keresman discloses a security code (“the token may need to be activated by using a secret PIN (personal identification number) that was assigned to, or chosen by, the user at the time of registration”; para [0007]), wherein said security code and said credit card number are operable to be utilized to complete a purchase transaction(para [0026-0027,0057-0058]).
Regarding claim 15, Keresman discloses a random number generator (“random numbers are dispensed by the token to a user by pressing a button on the token or otherwise signaling the token”; para [0007]).
Regarding claim 16, Keresman discloses the claimed invention as cited above though does not explicitly disclose a clock.
Brainard discloses a clock (determine the time step 202, Fig. 2A; para [0003,0006,0050,0056]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide a clock as taught by Brainard with the system as disclosed by Keresman. The motivation would have been to improve security of authentication routines (para [0003-0005]).
Regarding claim 18, Keresman discloses a display, wherein said at least a portion of said credit card number is provided on said display (para [0027-0028]).
Regarding claim 19, Keresman discloses said device is operable to communicate with a magnetic stripe reader (para [0054-0056]).
Claim 17 is rejected under 35 U.S.C. 103(a) as being unpatentable over Keresman in view of Brainard and Lane as applied to claims 10, and further in view of Rahman (US Pat. No. 5,478,994; hereinafter Rahman).
Keresman in view of Brainard and Hed discloses the claimed invention as cited above though does not explicitly disclose a second portion of said credit card number is permanently provided on said payment device.
Rahman discloses a second portion of said credit card number is permanently provided on said payment device (Fig. 1).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide a portion of a credit card number permanently as taught by Rahman with the system as disclosed by Keresman in view of Brainard and Hed. The motivation would have been to reduce the computational requirements for providing a longer dynamic credit card number.
Claims 10-16 and 18-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Pat. No. 7,044,394 to Brown (cited by Applicant) in view of Brainard and Lane.
Regarding claim 10, Brown teaches a payment device (payment card 100, Fig. 1; abstract) comprising: a processor (data generator 104, Fig. 1) containing a fixed credit card number (“A data generator 104, e.g., implemented with a microprocessor, receives its initial programming and personalization data from a data receptor 105” and “such dynamic number may be a unique algorithm composed of 2 or more factors that may include the user's billing address numbers and social security number or card numbers that provide unpredictable results not in a sequential manner. The Assignee refers to such commercial analysis methods and devices with its trademark, Dynamic Numerical Analysis”; col. 2, ln. 62-col. 5, ln. 2), said processor operating to encode said fixed credit card number into an encoded credit card number based on a signal (“a unique number generator internal to the card is used to supply a value in the discretionary field of Track-2, or the card validation code (CVC) field. Such unique number is generated by an algorithm that uses as its factors the user's social security number, the user's billing address, etc.”; col. 2, ln. 62-col. 5, ln. 2); a power supply (“These cells will then magnetize the low coercivity medium that is permanently affixed to the writer, and the magnetization of the media will persist after the current is turned off from the power supply”; col. 9, ll. 20-29); a memory (col. 2, ln. 62-col. 4, ln. 42); a device (data generator 104, write heads 110, and magnetic stripe 102 as a sub-system, Fig. 1) operable to communicate information stored in said memory (col. 2, ln. 62-col. 5, ln. 2), said communicated information comprises said encoded credit card number (col. 2, ln. 62-col. 5, ln. 2), a receiver for receiving wireless communications (data receptor 105; “the data receptor 105 can be a radio frequency antenna and receiver, typical to ISO/IEC Specifications 14443 and 15693”; col. 2, ln. 62-col. 3, ln. 8), a processor generates said credit card number based at least in part on said information associated with a clock signal (col. 2, ln. 62-col. 5, ln. 2).
Brown does neither discloses a type of power source nor a location of a power source specifically, though Brown does disclose a power source in connection with on-card operations. Brown discloses the claimed invention as cited above though does not explicitly disclose a battery.
Brainard discloses a processor encoding a fixed credit card number (“the secret (K), the dynamic value (T) and the generation value (N) are provided to the combination function 130 for combination as authentication code A (K, T, N) 91” and secret (K) and generation value (N) are fixed relative to time-varying dynamic value (T); [0042]-[0044]) into said encoded credit card number (“The authentication device 520 includes a dynamic value function 532. The current time is supplied to the dynamic value function 532 by a clock 505 in the terminal 540. The dynamic value function 532 changes the dynamic value 522 once each time interval.” Fig. 4; para [0074-0084]) based on communications (“The current time is supplied to the dynamic value function 532 by a clock 505 in the terminal 540.”, Fig. 4; para [0003,0006,0039 ,0074-0084]).
Alternatively, Brainard discloses at least a portion of authentication information (Fig 2A; para [0050,0056]) changes based on communications (determine the time step 202, Fig. 2A; para [0003,0006,0039,0050,0056]) elsewhere in the reference. Specifically the time determining step is described thusly “In one embodiment, the dynamic value (T) is provided as the output of a time clock function. The time clock function provides the current time to the dynamic value function. The dynamic value function determines the appropriate dynamic value (T) in response to the data provided by the clock function. In one such embodiment, implemented in a device having a clock and a processor, the dynamic value (T) is generated by a clock that is a counter that is set to an initial value and is incremented every second. This clock counts the number of seconds since the initially configured time. Every sixty seconds the clock signals the dynamic value function, which reads the clock, increments the dynamic value (T), and stores the incremented dynamic value as the dynamic value (T) for that time interval” [0042]), said processor generates said credit card number based at least in part on said information associated with time (para [0003,0006,0039,0042,0050,0056]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to base an authentication information in communications as taught by Brainard with the system as disclosed by Brown. The motivation would have been to improve security of authentication routines (para [0003-0005,0080]).
Brown in view of Brainard discloses the claimed invention as cited above though does not explicitly disclose: a receiver for receiving wireless communications, wherein said wireless communication includes information associated with an atomic clock signal or a global positioning system signal (GPS).
Lane discloses a receiver for receiving a wireless timing signal to synchronize a transaction system, wherein said wireless communication includes information associated with an atomic clock signal or a global positioning system signal (GPS) (para [0024]), and a processor generates unique transaction identifier based at least in part on said information associated with an atomic clock signal or a global positioning system signal (GPS) (para [0024]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide wireless synchronization and communications to a payment device as taught by Lane with the system as disclosed by Brown in view of Brainard. The motivation would have been to provide additional security by reduce transaction errors and fraud of duplicate transaction identifiers (para [0023-0024]).
Regarding claim 11, Brown discloses the claimed invention as cited above though does not explicitly disclose a display.
Brainard discloses a display (para [0016,0024]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide a display as taught by Brainard with the system as disclosed by Brown. The motivation would have been to provide a redundant, back-up system for providing authentication numbers to remote systems (para [0024]).
Regarding claim 12, Brown discloses said payment device is a payment card (abstract).
Regarding claim 13, Brown discloses the claimed invention as cited above though does not explicitly disclose a first display and a second display.
Brainard discloses a first display and a second display (para [0016,0024]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide displays as taught by Brainard with the system as disclosed by Brown. The motivation would have been to provide a redundant, back-up system for providing authentication numbers to remote systems and information to users (para [0024]).
Regarding claim 14, Brown discloses a security code, wherein said security code (“a PIN pad integrated on the payment card 202 can require a user PIN number to be entered before card magnetic data 204 will present itself for swiping in the card reader 206”) and said credit card number are operable to be utilized to complete a purchase transaction (col. 2, ln. 62-col. 5, ln. 2).
Regarding claim 15, Brown discloses a random number generator (“generates a unique number that is not sequential and cannot be guessed”; abstract & col. 2, ln. 62-col. 5, ln. 2).
Brainard further discloses a random number generator (para [0053]).
Regarding claim 16, Brown discloses a clock (“Once scanned by the POS terminal or other reader, the payment card can also disable any reading of the user account data for a short fixed period of time”; col. 1, ln. 49-col. 2, ln. 2).
Brainard further discloses a clock (para [0012]).
Regarding claim 18, Brown discloses the claimed invention as cited above though does not explicitly disclose a display.
Brainard discloses a display, wherein at least a portion of said credit card number is provided on said display (para [0016,0024]).
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to provide a display as taught by Brainard with the system as disclosed by Brown. The motivation would have been to provide a redundant, back-up system for providing authentication numbers to remote systems (para [0024]).
Regarding claim 19, Brown discloses the device is operable to communicate with a magnetic stripe reader (col. 2, ln. 62-col. 5, ln. 2).
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
On page 5 of the Remarks, Applicant argues “the written description rejection of claim 10 misapplies §112(a) because it treats the limitation ‘a device operable to communication information stored in said memory” as though the only possible structure in the application is a bare, unprogrammed processor. Firstly, the rejection above does not assert that a “bare, unprogrammed” processor corresponds to the claimed structure but rather a programmed processor of unknown programming. Applicant further points to the disclosure as providing description of card-level hardware and “that is exactly what claim 10 calls ‘a device operable to communication information stored in said memory’”. Examiner notes that the wording of this argument is not clearly tied to the statutory language of 35 U.S.C. 112 first paragraph and 35 U.S.C. 112 sixth paragraph, as relied upon in the rejections. For example, it is unclear what Applicant means by “that is exactly the thing that claim 10 calls “a device operable to communication information stored in said memory”. Examiner’s best guess is that the argument is asserting that the corresponding structure imported by invoking 35 U.S.C. 112 6th paragraph is that which is listed on page 5 of the Remarks. Examiner holds that Claim 10 does not explicitly limit the structure of the “device operable to communicate information stored in said memory” and only limits the structure via 35 U.S.C. 112 6th paragraph. Further, the claim language limits communication by the content (i.e. “information stored in memory” and “said encoded credit card number”), the origin (i.e. “information stored in memory”), but not the destination. The claimed communication is not, for example, to a user nor to a card reader nor to a non-contact terminal nor to any particular destination. The breadth of the claim includes communication from a memory and thus the corresponding structure is commensurate in scope with that claimed function. To communicate the information stored in memory to various destinations disclosed by Applicant, there are disclosed steps of storing, transforming, outputting that are described with a high degree of generality and therefore lacking that which is required for algorithmic solutions – as stated in the rejections.
On page 5 of the Remarks, Applicant states “see, e.g., the description of processor/memory/timing on the card, followed by the description of encoder/writer/display as output structures)”. Examiner notes that the claim does not recite “output” as the functional language at issue, but rather “communicate”. Further, Applicant’s disclosure describes and necessitates that communication of stored information utilize the processor (see Fig. 2), at least in part. If Applicant intends to only import the structure corresponding to outputting information from the card to external destinations, then the claim language should be amended to recite the limitation of that function to only outputting.
On page 6 of the Remarks, Applicant argues “[the claim] recites known card components in their ordinary structural roles”. Examiner is unclear if Applicant is arguing that the “device operable to communicate information” is considered a “known card components in their ordinary structural roles” or if the disclosed structures fit that description.
On page 6 of the Remarks, Applicant argues that the Federal Circuit has said [the very sort of step-wise disclosure] is enough when the function is as straightforward as ‘communicate’ or ‘display’”. The basis of this statement is unclear without citation. In Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015), the Federal circuit stated “The written description requirement is not met if the specification merely describes a ‘desired result.’” The prosecution history establishes that the manner by which the card is capable of effectuating the result of communicating information that is related to receiving wireless communication is described with insufficient specificity.
On page 6 of the Remarks, Applicant argues “the claim does not invoke §112(a)”. It is unclear if Applicant intends to state that the claim does not invoke 35 U.S.C. 112 – sixth paragraph. If so, there are no specific arguments rebutting the presumption that 35 U.S.C. 112 – sixth paragraph is invoked despite the absence of “means” in the claims.
On pages 7-8 of the Remarks, Applicant argues against the combination of Brainard, Keresman and Lane. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejections above proposed modifications that do not align with the modifications presented in the arguments. There are no arguments pointing out flaws in the proposed modifications and rationales. Further in this portion of the Remarks, Applicant argues that prior art does not teach features and/or structures of the invention when those features and/or structures are not required in the claim. For example, Applicant mentions “keep the real card number on the card but make all uses of it time bound and therefore “copy proof” while still allowing legacy mag-stripe infrastructure to see a card-like number” and “a card-side feature: the card listens to the broadcast time and uses it in its encoding” without specific correspondence to claim language recited.
On page 8, Applicant argues that claim 10 ties the timing signal to the particular thing being encoded and argues that the art “does not take the user’s real credit-card number and run that through an encoding that is keyed off the broadcast time”. The claim is not so limited and therefore the rejection does not rely on such a teaching. Applicant’s argument suggest a particular encoding scheme (i.e. transforming the user’s real credit-card number and running that through a keyed encoding) and the claim is given its broadest reasonable interpretation thus extending the scope to other encoding schemes. The rejections above rely on the collective teachings and proposed modifications to render that recited in the claims obvious.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872