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 .
Disposition of Claims
Claims 1-14 are pending in the instant application. Claims 2, 6-7, and 13-14 have been cancelled. No claims have been added. Claims 1, 3-5 and 12 are amended. The rejection of the pending claims is hereby made final.
Response to Remarks
Applicant’s arguments and amendments regarding the rejection of pending claims 1, 3-5 and 8-12 under 35 USC 103 in view of the applied prior art of record is found to be moot in view of the new grounds of rejection presented below.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 1, 3-5 and 8-12 are rejected under 35 U.S.C. 103) as being unpatentable over Day et al (US 2020/0294042) in view of Locke et al (US 2020/0019962) in view of Wurmfeld et al(2019/0114623).
Regarding claims 1 and 12, the prior art discloses a method and system for performing a banking transaction between a terminal(2) (see at least paragraph [0071] to Day et al, transaction terminal 110) and a chip device (see at least paragraph [0072] to Day et al, audio device 130),
being configured to communicate to a user of the electronic card (3), during said transaction, said intercepted transaction information via an adapter(4) (see at least paragraph [0095] to Day et al), said adapter being configured to receive, wirelessly, said transaction amount spied on in said encrypted communication and to translate it into voice or another form, said intercepted transaction information being obtained or collected in said electronic card (3) (see at least paragraph [0095] to Day et al)(see at least paragraphs [0039] and [0040] to Day et al).
Day et al does not appear to explicitly disclose an electronic card (3) containing a Europay Mastercard Visa chip (13), said method comprising steps for: by way of a contact interface (M3) in said electronic card (3). establishing communication with the terminal (2): by way of the EMV chip (13), connected to the contact interface (M3). that includes a security element, providing encrypted communication with a secure module on the terminal (2) over the contact interface (M3):an additional microcontroller unit (34) in said electronic card (3) to exclusively on said encrypted communication exchanges related to said transaction, wherein said microcontroller unit is connected in parallel to communication pads of the EMV banking chip (13) and also connected in parallel to the contact interface (M3) in order to spy.
owHH However, Locke et al discloses a multifunction transaction card and associated method, further comprising an electronic card (3) containing a Europay Mastercard Visa chip (13)(see at least paragraph [0015] to Locke et al) said method comprising steps for: by way of a contact interface (M3) in said electronic card (3). establishing communication with the terminal (2):by way of the EMV chip (13), connected to the contact interface (M3) (see at least paragraph [0019] to Locke et al) that includes a security element, providing encrypted communication with a secure module on the terminal (2) over the contact interface (M3):an additional microcontroller unit (34) in said electronic card (3) to exclusively spy on said encrypted communication exchanges related to said transaction (see at least paragraph [0021] and Figure 1A to Locke et al), wherein said microcontroller unit is connected in parallel to communication pads of the EMV banking chip (13) and also connected in parallel to the contact interface (M3) in order to spy (see at least paragraph [0028] to Locke et al).
Day et al and Locke et al, in combination, do not appear to teach or suggest said banking transaction being conducted by both the terminal acting as a banking terminal and the electronic card acting as a bank card, a card reader of
for conveying transaction information of the banking transaction
intercept said transaction information by spying;
From the card reader to the EMV chip;
Between the card reader and the EMV chip,
Wherein the microcontroller unit is different from the EMV chip; and
the microcontroller unit is configured to extract a transaction amount from the intercepted transaction information and to send, through a wireless communication interface of the electronic card, said transaction amount spied on in said encrypted communication and to translate it into voice or another form, said intercepted transaction information being obtained or collected in or via said electronic card.
However, Wurmfeld discloses a system, method, and apparatus for a dynamic transaction card, further comprising said banking transaction being conducted by both the terminal acting as a banking terminal and the electronic card acting as a bank card, a card reader of for conveying transaction information of the banking transaction intercept said transaction information by spying (see at least paragraph [0122] to Wurmfeld et al);
From the card reader to the EMV chip (see at least paragraph [0013] to Wurmfeld et al);
Between the card reader and the EMV chip (see at least paragraph [0013] to Wurmfeld et al),
Wherein the microcontroller unit is different from the EMV chip (see at least Figure 12 to Wurmfeld et al); and
the microcontroller unit is configured to extract a transaction amount from the intercepted transaction information and to send, through a wireless communication interface of the electronic card, said transaction amount spied on in said encrypted communication and to translate it into voice or another form, said intercepted transaction information being obtained or collected in or via said electronic card (see at least paragraph [0201] and Figure 19 to Wurmfeld et al).
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the secure wireless audio and speech system and method at a transaction terminal, as disclosed by Day et al and the multifunction transaction card system and method as taught by Locke et al, further in view of the dynamic transaction card system and method as taught by Wurmfeld et al, in order to enable the system to provide a secure wireless connection in order to provide audio availability during a financial transaction (see at least paragraphs [0002] and [0003] to Day et al) could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Regarding claim 3, the prior art discloses the method according to claim 1, wherein said contact interface of the device complies with ISO standard 7816(see at least paragraphs [0094]-[0095] to Day et al).
Regarding claim 4, the prior art discloses the method according to claim 1, wherein said wireless communication interface is selected from Bluetooth, Wi-Fi, UHF, NFC, Li-Fi (see at least paragraph [0088] to Day et al “ the wireless beacon is a Bluetooth® beacon, an IoT device, a Wi-Fi router, or a Li-Fi router. In an embodiment, the wireless beacon is wireless beacon 150”).
Regarding claim 5, the prior art discloses the method according to claim 4, wherein it comprises the step of inserting the electronic card alone into the card reader of said terminal in order to perform the transaction and spy (see at least paragraph [0020] to Locke et al, wherein the controller may initialize the secure element. In some implementations, the secure element may execute one or more applications configured to obtain card data from a transaction card, such as the contactless transaction card) the examiner interpreted the limitation “spy” in view of paragraph [0049] of Applicant’s specification, wherein the MCU is configured to spy on and extract all or part of the information exchanged between the terminal and the application chip (13)).
Regarding claim 8, the prior art discloses the method according to claim 1, wherein said adapter is one among a cell phone, a wireless earpiece provided with a communication interface adapted to that of the communication interface of the electronic card (see at least paragraph [0132] to Day et al).
Regarding claim 9, the prior art discloses the method according to claim 1, wherein said adapter is one among a user device such as a cell phone, a tablet, a personal assistant, a wearable electronic accessory, a smart or NFC watch) (see at least paragraph [0072] to Day et al).
Regarding claim 10, the prior art discloses the method according to claim 1, wherein the terminal includes a reader that is one among a POS terminal or ATM banking terminal (see at least paragraph [0076] to Day et al “In an embodiment, the transaction terminal 110 is one of: an SST, a POS terminal, an ATM, and/or a kiosk”).
Regarding claim 11, the prior art discloses the method according to claim 1, wherein said adapter comprises a software application configured to translate or transpose digital or analog information into voice (see at least paragraph [0075] to Day et al, “ The software module(s) that implements the method 200 is referred to as a “wireless connection manager.” The wireless connection manager is implemented as executable instructions programmed and residing within memory and/or a non-transitory computer-readable (processor-readable) storage medium and executed by one or more processors of a device. The processor(s) of the device that executes the g wireless connection manager are specifically configured and programmed to process the wireless connection manager. The wireless connection manager may have access to one or more network connections during its processing. The network connections can be wired, wireless, or a combination of wired and wireless”).
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 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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALIA F CRAWLEY/Primary Examiner, Art Unit 3627