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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mosteller et al, US Pub. 2019/0385035.
Mosteller et al disclose an edge to edge metal card and a production method comprising: a second core layer interconnected to the second side of the metallic element and extending from edge-to-edge. Visible indicia indicate the account associated with card. An inlay is provided so that the inner metallic loop is located in an overlapping relation to the antenna, thus facilitating inductive coupling for signal transmissions to and from a contactless reader. The integrated circuit chip module is arranged within a pocket. For instance, the smartcard ( Fig. 1) includes a first metal layer (10) having a top surface, a bottom surface, and a module opening (pocket 42) extending between the top and bottom surfaces for receiving a transponder chip module (IC chip 46 with contact pads 44, see paragraph [0193]); and a first layer of thermosetting resin (thermosetting resin layers 50, 52, 54, see paragraphs [0179], [0192]) encapsulating the bottom surface of the first metal layer and filling the module opening of the first metal layer; providing a metal inlay (MI) comprising a layer of metal (Fig. 5); defining a plurality of metal card body (MCB) sites on the layer of metal, each card body site corresponding with a single smartcard (Figs. 4-5); performing a cutting operation to form corner struts (CS) extending from corners of the metal card body sites to the metal inlay, leaving void sections (VS) extending around sides of the card body sites except for where the card body site is attached by the corner struts to the metal inlay (Figs. 4-5, each individual card 101, must be cut); and filling the void sections with thermosetting resin (thermosetting resin layers 50, 52, 54, see paragraphs [0179], [0192]).
Regarding claim 2, wherein each of the card body sites, forming an opening (MO) for accepting insertion of an electronic chip module (see Fig. 8).
Regarding claim 3, wherein the cutting operation comprises laser cutting, water cutting or chemical etching (the individual card can be cut with any one of these method, par. 0200).
Regarding claim 4, wherein singulating the card body sites from the metal inlay by removing the struts (when an individual card is cut the corner of the card is removed from the inlay, Figs. 14A-B).
Regarding claim 5, wherein singulating comprises punching or cutting (see Par, 0200).
Regarding claim 6, wherein during singulating, edges of the card body sites are dulled, removing sharp edges (see Fig. 8).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 7-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mosteller et al. The teaching of Mosteller et al have discussed above.
Mosteller et al fail to disclose all the specific material for making the smartcards, including the manner of which card is protected (i.e. including additional layers for protecting the cards), such limitations fall within the engineering for meeting customer requirements, failing to provide any unexpected advantage within the art. For instance, using thermosetting resin, film, and/or sacrificial layer for protecting or covering the metal opening, is just a matter choice for securing and protecting the card, wherein each of the material are available and known in the card. Therefore, it would have been an obvious extension as taught by the prior art.
It is noted that US Pub. 2021/0049431 anticipates the claims and/or renders the claims obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/882,568 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention discloses similar limitations as the reference application. For instance in claim 1 of the current application and in the reference application, the applicant claims:
Application No. 17/882,569
Application No. 17/882,568
A method of making smartcards (SC), comprising: providing a metal inlay (MI) comprising a layer of metal, each card body site corresponding with a single smartcard; performing a cutting operation to form corner struts (CS)extending from corners of the metal card body sites to the metal inlay, with void sections (VS), extending around sides of the card body sites except for where the card body site is attached by the corner struts to the metal inlay; and filling the void sections with thermosetting.
A method of manufacturing a smartcard (SC), having a front face metal layer (FML) with a module opening (MO) to accept the implanting of a chip module (TCM, ICM) and additional layers of thermosetting adhesive film, plastic or synthetic material, comprising: applying an adhesion promoter comprising a primer layer (PL) to a rear surface of the front face metal layer; and allowing the primer layer to dry; wherein the adhesion promoter further comprises an adhesive top-coat (TC); further comprising: applying the adhesive top-coat onto the dried primer layer; and coating the top-coat with thermosetting resin, wherein: at least some of the layers have openings, voids, or cavities; and the thermosetting resin seeps into the openings, voids, or cavities.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-20 of the reference application as a general teaching for a method of making smartcards, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the reference application and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of the reference application [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim(s) 9/28/24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Remarks:
In response to the applicant that the metal sheet contains a plurality of cards, the examiner respectfully disagrees. The new prior art, US Pub. 2019/0385035, discloses a sheet having a plurality of cards (see Fig. 14). With respect to how the card is cut, that is cutting or perforating the sides and only supporting the cards through the corner struts, such detail is a matter of choice for meeting specific customer requirements. For instance, each card must be cut off from the sheet of metal in order to distribute the card, the method the card is cut is for meeting specific customer needs. With respect to removing sharp edges or dulled the edges, such limitation is shown in the figures and it is a matter of protecting the manufacturer during the manufacturing process. Such step would be obvious in order to a safe working environment for the manufacturer. And the manner of which card is protected (i.e. including additional layers for protecting the cards), the specific type of material used, such limitation are customer choices, failing to provide any unexpected advantage within the art. Additionally, the prior art uses thermosetting resin for filling the void and for covering the metal layer. With respect to attaching a sacrificial layer to the first side of the metal layer, covering the openings of the metal layer and coating polyurethane resin on the second side of the metal layer, such limitations are common for preventing exposure to moisture and contaminants that can cause corrosion, for enhancing durability, for providing electrical insulation, which therefore, obvious. Therefore, it would have been an obvious extension as taught by the prior art. The applicant’s general is not persuasive. Refer to the rejection above.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached M to F 8:00-8:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876