DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
1. An Amendment after Final was filed October 22, 2025 (hereinafter “Amendment”). The Amendment was filed in response to the Final Rejection dated August 22, 2025. An Advisory Action was issued on October 29, 2025 in which the Amendment was not entered. However, an RCE was filed on November 24, 2025 resulting in the entry of the Amendment.
Accordingly, the Amendment has been entered and carefully considered. However, despite the Amendment and Applicant’s remarks, the rejections under §§101 and 103 are maintained, as explained below; although, the Rejection under 103 is based on NEW GROUNDS necessitated by the Amendment.
Claims 1 – 23 are pending in the application. Dependent Claims 21 – 22 are dependent on Claim 1. Claim 23 is NEW.
NOTE: Interviews are encouraged. Although a previous encouragement for an interview was issued, no interview has been scheduled or held.
Please use the AIR form, the link for which is found at the end of this Action, for scheduling an interview if such is desired.
Status of the Claims:
Claims 1, 8, 19, and 20 are independent. There amended in substantially identical/similar fashion, making it unnecessary to address each Claim. Some of the dependent Claims were only amended to add the mere word circuitry. Others were not amended at all.
Therefore, the following explanation of the maintained rejections with regard to Claim 1 is considered explanatory of the Rejection as a whole.
Claim 1 was amended as follows:
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Summary of the Amendment and Broadest Reasonable Interpretation:
Claim terminology is to be given its plain and ordinary meaning to a person of ordinary skill in the art, consistent with the specification. This is true, unless the terms are given a special meaning. See MPEP §2111.01
Here, no special meaning is detected. As noted in the Amendment, the
changes to Claim 1 relate generally to:
Reciting “circuitry” rather than the previous “sections”
Reciting that the plurality of “services” – which is understood to mean financial services or payment for different services – a “simulated” IC card
First, it does not appear that Applicant has attempted in clarify in the Amendment – or in any previous amendment or Remarks – the meaning of the claim terminology comprising a “region” and an “area” of a “block data.”
Presumably, this limitation refers to a “block of data.” Without the preposition “of” the phrase is confusing and lacks clarity for purposes of §112(b). Furthermore, the limitation of a “physical” region is confusing. The specification only uses the term “physical” once and that is in the context of “physically deleting” card information, which is, in itself, confusing terminology.
That said, it is not clear from the specification how the “blocks of data” relating to the same type of service are separately – or individually – or physically separated – in the storage area of the secure element of the mobile computing device or “terminal” (e.g. mobile phone with e-wallet app). The high-level schematic of Fig. 1 illustrates the “areas” as being separate. However, this is only a schematic. The more accurate illustration of the non-volatile memory of the secure element of the mobile phone is shown in Fig. 20 as follows:
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This figure illustrates only a single chip. It does not illustrate how there may be individual – separate – or physically separate regions or areas for recording the service information for the same service – beyond the typical physical separation inherent in the segments or sectors of the flash memory (e.g. non-volatile memory). Thus, the Amendment lacks clarity.
In the current Amendment, “section” is replaced by “circuitry.” This recitation is somewhat helpful; however, it is recited at a high level of generality. It is not clear exactly “how” the “circuitry” relates to “service information” or a “service.” Nor is it clear “how” the “circuitry” relates to an “area of block data” or a “physical region..”
Clarifying these limitations – that is, adding greater specificity to the Claim – would greatly advance prosecution from a 101 and 103 standpoint.
With regard to the new limitation relating to “simulated integrated circuit (IC) cards,” again – greater clarity is required. Clearly the specification describes a “smartphone” – i.e. a mobile phone – which has applications for rendering the phone an e-wallet or digital wallet. (See at least [0002].) However, the Claims are devoid of this limitation. Respectfully, a person of ordinary skill in the art would readily understand that a mobile phone with e-wallet capabilities can be used in the same manner as an IC card and is therefore a “simulated” IC card.
It is well within the understanding of a person of ordinary skill in the art that a smartphone can act as a simulated (or virtual) IC card through technologies like NFC and digital wallets (Apple Pay, Google Wallet), allowing it to mimic physical transport/payment cards which are commonly referred to as “IC cards.” That is, smartphone technology essentially embeds the IC card's functions and data digitally for convenience. Thus, smartphones have Near Field Communication (NFC) chips, the same technology used by physical IC cards, enabling them to communicate wirelessly with card readers. Ubiquitous apps such as Apple Wallet (“Apple Pay”) and Google Wallet (“Google pay”) store digital versions of your IC cards such that, instead of carrying a physical card, you add it to your phone's wallet, and the app manages the card's balance and transactions, often without needing to unlock the phone for simple taps.
Respectfully, the Amendment does not advance prosecution substantially.
Accordingly, an interview has been encouraged but no interview requested or scheduled.
With regard to §101:
As noted above, the Amendment does serve to integrate the abstract idea of IC functionality into a practical application. The limitations are recited at such a high level that they are in the nature of “apply it.”
The changes to the Claim are made at an extremely high level of generality. There is nothing concrete or substantive about these recitations. These are broad and abstract concepts. The Claim provides no specificity in terms of “how” or “where” the “circuitry” is found or how it functions in terms of a smartphone.
No improvement to the IC device nor the smartphone is reflected in the Claim. . The Claim does not reflect any advantage nor any solution to a technical problem - only the mere outcome or result that a plurality of services is provided by a “simulated IC card.”
Taking the claim elements separately, the functions performed by the “circuitry” and “how” or “where” they are performed are unclear and not recited with specificity.
Without greater specificity as to “how” certain functions solve a technical problem, the currently recited limitations can be achieved by any general purpose mobile device without special programming or devices or circuitry. In short, each step does no more than require a generic mobile phone to perform generic mobile phone functions. Considered as an ordered combination, the computer components of the Claim add nothing that is not already present when the steps are considered separately.
Accordingly, the Rejection is maintained.
With regard to §103:
It is respectfully submitted that the combination of the previously cited references teaches the features added in the Amendment and the Claim as a whole. For example, Spodak clearly teaches that a mobile phone can be used as an e-wallet to simulate the function of an IC card or any type of card with an IC circuit. See at least Fig. 15A as follows:
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Furthermore, it is clear from Spodak that the magnetic cards shown above can also be IC cards. (See at least Fig. 10A:
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Furthermore, Schmid teaches that a mobile phone can act or function like an IC card or a “mobile terminal:”
“Advantageous physical implementations of the first secure element may be the SIM card of the mobile terminal, a uSD card inserted in the mobile terminal or an integrated circuit that is part of the mobile terminal. These implementations of the secure element can regulate access to the services unlocked on the secure element via a secret, for example a PIN, and thus offer particular security.” (Emphasis Added)
However, out of abundance of caution, a NEW GROUNDS of Rejection is asserted:
Claims 1 – 22 are rejected under 35 U.S.C. §103 as being unpatentable over Spodak, as explained below, and further in view of European Patent Publication No. EP 2819077 to Schmid (hereinafter “Schmid”) and further in view of Japanese Patent Publication No. 2005/20173 Nobuyuki (hereinafter “Nobuyuki”).
Nobuyuki clearly teaches that a mobile phone or smart phone with e-wallet functionality comprises a “simulated” IC card:
“[Means for Solving the Problems]According to the first aspect of the present invention, in the mobile phone provided with the reading circuit for reading the RF tag or the non-contact type IC card, the function as the RF tag or the non-contact type IC card is simulated by the reading circuit. Therefore, it is possible to prevent the mobile phone body from increasing in size while adding a function for reading an RF tag or a non-contact type IC card and a function as an RF tag or a non-contact type IC card to the mobile phone.” (Emphasis Added)
Therefore, despite the Amendments to Claim 1, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combined e-wallet teachings of Spodak in view of Schmid to add the simulated IC card teachings of Nobuyuki. The motivation to make this modification comes from Spodak. It teaches, as noted above, that an IC card or similar smartphone can have various sections for managing and controlling the function of the payment card accounts recorded on the secure element of the smartphone. It would greatly enhance the efficiency and convenience of the IC card of Spodak to add the simulation features of Nobuyuki.
Claim 23 is new. It reads as follows:
23. (New) The information processing apparatus according to claim 21, wherein multiple of the plurality of simulated IC cards are associated with at least one respective service.
This claim does not alter the 101 analysis set forth above. No computerized components are added. No new functionality is recited. It merely recites – at an extremely high level – the concept that multiple cards for the same service can be used somehow in connection with the smartphone. This additional limitation does not serve to integrate the abstract idea into a practical application.
Furthermore, this feature is taught by the Schmid reference as discussed in detail in the Final Rejection dated August 22, 2025, as shown below:
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Therefore, the Rejections under 101 are 103 are maintained.
Response to Arguments
3. Applicant's arguments set forth in the Remarks section of the Amendment have been fully considered but they are not persuasive.
With regard to section 103 rejection, Applicant argues as follows:
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First, it is noted that, in making the above arguments, Applicant uses language which is less confusing than that recited in the Claim. That is, Applicant uses the term “block of data.” This terminology is not used in the Claim. Such usage would help establish eligibility – at least to a slight degree.
Furthermore, Applicant admits that the block of data “is a structural limitation.” However, as noted, the Claim recites “block data.” One of ordinary skill would not necessarily understand what this terminology means, let alone that it is a structural limitation. Moreover, a person of ordinary skill in the art would not understand “where” the data is located. Applicant admits that this is not specified in the Claim. To meet the standards of eligibility, the Claim must “reflect” the technical improvement. Applicant admits that such is not the case here.
The Office respectfully disagrees that the Claim recites a “distinct element” of the IC card or any other structure.
Thus, Applicant has not provided a “reasoned” argument, but simply repeated limitations that are not reflected in the Claim. Thus, the Rejection must stand.
As to §103:
Applicant’s arguments are moot in view of the new grounds of Rejection.
The Examiner stands ready to discuss these issues with Applicant. An interview is encouraged.
Conclusion
4. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action.
Applicant should carefully consider the following in connection with this Office Action:
A. Search and Prior Art
The search conducted in connection with this Office Action, as well as any previous Actions, encompassed the inventive concepts as defined in the Applicant’s specification. That is, the search(es) included concepts and features which are defined by the pending claims but also pertinent to significant although unclaimed subject matter. Accordingly, such search(es) were directed to the defined invention as well as the general state of the art, including references which are in the same field of endeavor as the present application as well as related fields (e.g. provisioning a secure element of a mobile wallet.). Indeed, there is a plethora of prior art in these fields.
Therefore, in addition to prior art references cited and applied in connection with this and any previous Office Actions, the following prior art is also made of record but not relied upon in the current rejection:
Chinese Patent Publication No.CN 101827155 to Deng. This reference relates to the concept of a simulated IC card.
B. Responding to this Office Action
In view of the foregoing explanation of the scope of searches conducted in connection with the examination of this application, in preparing any response to this Action, Applicant is encouraged to carefully review the entire disclosures of the above-cited, unapplied references, as well as any previously cited references. It is likely that one or more such references disclose or suggest features which Applicant may seek to claim. Moreover, for the same reasons, Applicant is encouraged to review the entire disclosures of the references applied in the foregoing rejections and not just the sections mentioned.
C. Interviews and Compact Prosecution
The Office strongly encourages interviews as an important aspect of compact prosecution. Statistics and studies have shown that prosecution can be greatly advanced by way of interviews. Indeed, in many instances, during the course of one or more interviews, the Examiner and Applicant may reach an agreement on eligible and allowable subject matter that is supported by the specification.
Interviews are especially welcomed by this examiner at any stage of the prosecution process. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool (e.g. TEAMS). To facilitate the scheduling of an interview, the Examiner requests the use of the AIR form as follows:
USPTO Automated Interview Request http://www.uspto.gov/interviewpractice.
Other forms of interview requests filed in this application may result in a delay in scheduling the interview because of the time required to appear on the Examiner's docket. Thus, the use of the AIR form is strongly encouraged.
D. Communicating with the Office
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM BUNKER whose telephone number is (571)272-0017. The examiner can normally be reached on M - F 8:30AM - 5:30PM, Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached at 571-270-1836. Information regarding the status of an application, whether published or unpublished, may be obtained from the “Patent Center” system. For more information about the Patent Center system, see https://patentcenter.uspto.gov/
/William (Bill) Bunker/
U.S. Patent Examiner
AU 3691
(571) 272-0017 - office
william.bunker@uspto.gov
January 10, 2026
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691