DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/11/25 has been entered.
Claims 1-16 were previously cancelled. Claims 17-27 are pending.
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 17-27 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 claims contain 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 an initial matter, all discussion from the 112 rejection in the Final Office Action dated 4/11/25 are incorporated by reference herein.1 The following is added for emphasis. Independent claims 17 and 22 respectively state “wirelessly receiving, on said payment device, information via a light-based communications signal” and “wirelessly receiving, on a payment device, information via an infrared communications signal.” Both the “light-based communications signal” and the “infrared-based communications signal” are not enabled. The specification contains no detail as to what type of light or infrared communications signal is contemplated. The term “infrared” appears only once in the specification in paragraph 0120, and that merely says that the communication signal is infrared. It does not provide any additional detail. “Light-based communication” is similarly not discussed in the specification.2 “Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.” MPEP § 2164.01. The test for enablement is whether one of ordinary skill in the art can make and use the invention without undue experimentation. Minerals Separation Ltd. v. Hyde, 242 U.S. 261, 270 (1916). The Wands factors are used to assess whether experimentation is undue. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors include the breadth of the claims, the nature of the invention, the state of the prior art, the level of ordinary skill, the level predictability in the art, the amount of direction provided by the inventor, the existence of working examples, and the quantity of experimentation needs to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). These factors show that the instant disclosure is not enabled because it requires undue experimentation. The breadth of the claims factor shows that the required experimentation is undue. “Light-based communication” or “infrared-based communication” are broad terms that encompass many different types of communication standards. As discussed in the Final Office Action dated 4/11/25, pages 2-3, “light-based communication” may be communication standards such as Li-Fi, visible light communication, or fiber optics. Even something like semaphore, which uses light to communicate flag signals, may be seen as “light-based communication.” As a result, the breadth of the claims requires experimentation in many different and disparate forms of light or infrared communication, which is undue. The nature of the invention factor is related to the breadth of the claims factor in this case. By its nature, this invention may use many different types of light-based communication. Incorporating any of these types into the claimed invention requires different processes, different mechanical incorporation, and different software incorporation. This experimentation is undue. The prior art stands in contrast to the instant disclosure. Park, et al. (US 2002/0194137, herein Park)3 provides many more details of infrared and light-based communication used in a transaction card. Details of each communication, including encoders, emitters, and receivers and how the information is transmitted through the different forms, are given in detail throughout the specification. See e.g. paragraphs 0149-0150, 0159-0160, 0163-0165, 0179-0180, and 0198. Compare this to what is given in the instant specification. Any discussion of infrared or light-based communication is limited to one paragraph, paragraph 0120, and that merely lists the type of communication as an example with no further detail. Both the state of the prior art and amount of direction provided by the inventor point to undue experimentation. One of ordinary skill has the different types of communication available to him. As shown previously, these disparate types require experimentation to properly incorporate those communication types into the claimed invention. Thus, the level of one of ordinary skill points to undue experimentation. This large number of different types of communication lowers the predictability of the art. Incorporating the disparate forms of communication reduces the predictability and possibility of working examples, because what works for one form may not work for another, increasing the undue experimentation. Taken together and in view of all the evidence discussed above, the Wands factors demonstrate that the specification would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993). The claims are not enabled.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 17-27 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Park.4 Regarding claim 17, Park teaches a method comprising: wirelessly communicating, from a payment device, a credit card number (paragraph 0196: step 273); utilizing said credit card number to complete a purchase transaction (paragraph 0196: step 274); wherein at least a portion of a static credit card number is printed on said payment device (paragraph 0004), and pressing from a front surface of said payment device into an interior of said payment device with static textual information (paragraph 0196: step 276). Regarding claim 18, Park teaches said payment device includes a battery (paragraph 0155) and a processor (paragraph 0190). Regarding claim 19, Park teaches updating software on said payment device based on said received information (paragraph 0234). Regarding claims 20 and 23, Park teaches storing said credit card number on a memory of said payment device (paragraph 0185). Regarding claim 21, Park teaches utilizing a security code to complete said purchase transaction (paragraph 0203). Regarding claim 22, Park teaches a method comprising: wirelessly receiving, on a payment device, information via an infrared communications signal (paragraph 0149), wherein software on said payment device is updated based on said received information, at least a portion of a payment number is printed on said payment device (paragraph 0234), and pressing from a front surface of said payment device into an interior of said payment device textual information (paragraph 0196: step 276). Regarding claims 24 and 26, Park teaches said textual information comprises a card holder name (paragraph 0004). Regarding claims 25 and 27, Park teaches said textual information comprises a credit card number (paragraph 0004).
Response to Arguments
Applicant’s Remarks dated 9/11/25 have been fully considered, and they are unpersuasive in part and moot in part. To the extent that the remarks argue that the claims are enabled, they are unpersuasive for the reasons set forth in the 112 rejection above. The claims require undue experimentation; they are not enabling. To the extent that the claims argue that the previously cited art fails to teach the limitations of the claims, they are moot in view of the new grounds of rejection. New reference Park teaches the limitations of the claims. See 102 rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW MIKELS whose telephone number is (571)270-5470. The examiner can normally be reached Monday to Thursday 7:00 AM ET - 4:30 PM ET, Friday 7:00 AM ET - 11:00 AM ET, the Examiner is on central time.5
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/MATTHEW MIKELS/Primary Examiner, Art Unit 2876
1 See Final Office Action dated 4/11/25, pages 2-3.
2 See also Id. at 2-3.
3 See also the 102 rejection below.
4 In addition to the cited paragraphs, please see also the associated figures.
5 The Examiner can also be reached at matthew.mikels@uspto.gov.