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 .
DETAILED ACTION
Claim Objections
Claims 9 and dependent claims are objected to because of the following informalities:
In claim 9, “A smart card wallet with one or more smart chips”, “wherein each smart chip within the set of smart chips is removably held by the body of the smart card wallet for customization of the smart card wallet by exchange of another smart chip from the set of smart chips” are unclear. Some limitations lack antecedent basis. Further clarification is required. Examiner request Applicant to clarify how many smart chips in the claim.
The Examiner respectfully requests that the Applicant(s) review all claims for any such similar issues.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, all the limitations, discussed in the claim objections must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 9, 10, 11, 18 are rejected under 35 U.S.C. 103 as being unpatentable over CARROLL (US 20230153562) in view of Vu (US 20210232885).
Regarding claim 9, CARROLL disclosed A smart card wallet with a set of smart chips for compact use (abstract, see also fig 1-5) comprising: for each smart card wallet (paragraph [24]-[27]; see also fig 3-5; paragraph [50]-[59]), a body adapted to hold more than one smart chip of a set of smart chips (paragraph [24]-[27 ]; see also fig 3-5; paragraph [50]-[59] ); for each smart chip within the set of smart chips, at least one coil for communicating an account information (at least fig 3-4; paragraph [24]-[28]; paragraph [50]-[59]).
CARROLL lacks teaching: each smart chip within the set of smart chips is removably held by the body of the smart card wallet for customization of the smart card wallet by exchange of another smart chip from the set of smart chips.
Vu teaches a smart chip design comprising: smart chip is removably held by the body of the smart card for customization of the smart card wallet by exchange of another smart chip from the set of smart chips (abstract, see also fig 1-8; see also paragraph [22]-[27]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, or at the time of the invention was made, to include this feature (smart chip is removably held by the body of the smart card as discussed) and modify to previous discussed structure (modified to the primary art’s set of smart chips) so as to have (CARROLL in view of Vu): each smart chip within the set of smart chips (CARROLL) is removably held (Vu) by the body of the smart card wallet (CARROLL) for customization of the smart card wallet by exchange of another smart chip from the set of smart chips (CARROLL in view of Vu).
The motivation to modify the previous discussed structure with the current feature is to provide a better function for the modified structure, and/or making the card easy to use.
With regard claim 10, modified CARROLL further discloses the set of smart card wallets has a minimum of four spaces to hold the set of smart chips (at least fig 3-5; paragraph [48]-[52]).
With regard claim 11, modified CARROLL further discloses a subset of smart chips are included in the smart card wallet such that the spatial orientation of the smart card wallet determines (paragraph [35]-[39]; see also fig 3-5; paragraph [50]-[59]) which smart chip of the subset of smart chips communicates the account information.
With regard claim 18, modified CARROLL further discloses a configuration of the smart card wallet is that of a personal accessory (at least fig 3-4; paragraph [24]-[28]; paragraph [50]-[59]).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
With respect to the Applicants’ remarks that, “This process is not operable by the average card user and requires technical training. The method taught by Vu requires the EMV chips to be bent before being embedded in the new card. Vu, 18-20. However, bending an EMV chip, especially if done repeatedly, is likely to damage the chip and render it unfunctional. Moncada Declaration, 7. While it is possible for "someone with technical training [to] understand how to bend an EMV chip without breaking it, the average card user would most likely damage the EMV chip." Ibid.” (pages 5-6).
Examiner’s Answer: the Examiner respectfully disagrees and notes that:
The argued limitations are not in the claims.
In this case, Vu teaches a smart chip design comprising: smart chip is removably held by the body of the smart card for customization of the smart card wallet by exchange of another smart chip from the set of smart chips (abstract, see also fig 1-8; see also paragraph [22]-[27]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, or at the time of the invention was made, to include this feature (smart chip is removably held by the body of the smart card as discussed) and modify to previous discussed structure (modified to the primary art’s set of smart chips) so as to have (CARROLL in view of Vu): each smart chip within the set of smart chips (CARROLL) is removably held (Vu) by the body of the smart card wallet (CARROLL) for customization of the smart card wallet by exchange of another smart chip from the set of smart chips (CARROLL in view of Vu).
The motivation to modify the previous discussed structure with the current feature is to provide a better function for the modified structure, and/or making the card easy to use .
With respect to the Applicants’ remarks that, “Carroll teaches a card with multiple EMV chips. Vu teaches a method of removing an EMV chip and placing it on a new card. Combining these references, at the relevant time before filing with no hindsight knowledge, would teach one of ordinary skill in the art how to remove EMV chips from several individual cards to be placed onto one singular card. Note that it would teach one of ordinary skill in the art, not the user, how to remove and re-embed the chips, but it would not teach one of ordinary skill in the art about a method, process, system, or apparatus that would allow the user to replace the chips in their smart card. Carroll, in light of Vu, is structurally and functionally different than the claimed invention.” (pages 7 to the end).
Examiner’s Answer: the Examiner respectfully disagrees and notes that:
The argued limitations are not in the claims. Also, all the cited arts teaches the methodologies which are obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, or at the time of the invention was made.
Conclusion: cited arts successfully disclosed all the limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY WU whose telephone number is (571)270-5420. The examiner can normally be reached on PHP: M-Th: 8:30-12:30; 2:30-8:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on 571.270.5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY WU/ Primary Examiner, Art Unit 2841