DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-8, 10-14, 16-19, 21-25 are pending.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 10-14, 16, 19, 21-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grant et al. [US 20160222699].
As to claim 1. Grant discloses A merchandise security system comprising:
a merchandise security key, [figs. 1, 7, 0022, 0039] electronic key 10, 20, comprising wireless communication circuitry, [fig. 7, 0041] wireless communication system 34; and
a smartphone or a mobile phone, [fig. 1, 0023] smart device 12 is a smart phone, comprising wireless communication circuitry, [fig. 3, 0028] communication system 58, [0029] electronic key 10 communicate with the smart device 12 wirelessly, the merchandise security key initially not authorized by the smartphone or the mobile device to operate a merchandise security device, [0027] smart device 10 activates the electronic key after the user enters a password into the smart device 12;
wherein the smartphone or the mobile phone is configured to communicate with the merchandise security key to exchange data, [0030] security disarm code SDC programmed to the key 10 using the smart device 12; [0040] wherein the key 20 receives the SDC, via respective wireless communication circuitry, [0029, 0041], to authorize the merchandise security key to operate the merchandise security device at least partially based on the data, [0027] wherein the smart device 12 controls the electronic key 10 and enable the use of the electronic key after a password is entered; [0037] wherein the smart device deactivates the key based on a predetermined condition set by the transferred data, and
wherein the merchandise security key that has been authorized is configured to operate the merchandise security device, independent of the smartphone or mobile device, [0024] the key 10 may include battery and be an active device, for communicating with the merchandise security device 16, [0024] as opposed to being passive and not operating unless coupled to the smart device 12.
As to claim 2. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key comprises a housing, [fig. 2A, 4], and a source of electrical power disposed within the housing, [0024, 0040].
As to claim 3. Grant discloses The merchandise security system of Claim 2, wherein the merchandise security key is operable for transferring electrical power to the merchandise security device from the source of electrical power, [0022, 0024], if the merchandise security key is authorized by the smartphone or the mobile phone to operate the merchandise security device, [0024, 0027].
As to claim 4. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key comprises an Infrared (IR) transceiver for transmitting an IR transmission to the merchandise security device and for receiving an IR transmission from the merchandise security device, [0041, 0044].
As to claim 5. Grant discloses The merchandise security system of Claim 4, wherein the IR transmission of the merchandise security key comprises a security code, [0041, 0044] communicate data and power using IR; [0030] wherein the data includes a security disarm code SDC.
As to claim 6. Grant discloses The merchandise security system of Claim 1, wherein the wireless communication circuitry of each of the merchandise security key and the smartphone or the mobile phone comprises NFC communication circuitry, [0023, 0029].
As to claim 7. Grant discloses The merchandise security system of Claim 6, wherein each of the merchandise security key and the smartphone or the mobile phone comprises a NFC tag for communicating via NFC, [0029].
As to claim 8. Grant discloses The merchandise security system of Claim 7, wherein the NFC tag of the smartphone or the mobile phone is configured to read information from the NFC tag of the merchandise security key, [0029].
As to claim 10. Grant discloses The merchandise security system of Claim 1, further comprising a programming station configured to generate a security code, [0030], each of the merchandise security key and the merchandise security device configured to store the security code, [0030] key programmed with SDC, and [0034] device 16 includes SDC, and wherein the merchandise security key is configured to operate the merchandise security device only if the security codes match one another, [0035].
As to claim 11. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key is configured to be inactivated after a predetermined period of time, [0037], and wherein the smartphone or the mobile phone is configured to communicate with the merchandise security key to reactivate the merchandise security key, [0037] refreshed using the key.
As to claim 12. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key is not programmed or authorized using a programming or authorization station, [0030] self-programming key.
As to claim 13. Grant discloses The merchandise security system of Claim 1, wherein the smartphone or the mobile phone is not a programming station or an authorization station, [0030] programming station, that is not the smart device, further included in the system.
As to claim 14. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key is configured to be inactivated based on a proximity of the merchandise security key relative to the smartphone or the mobile phone, [0044] key only transfers power to the security device when the key is sufficiently proximate to the device.
As to claim 16. Grant discloses The merchandise security system of Claim 1, wherein the smartphone or the mobile phone is configured to operate the merchandise security device, [0022, 0028].
As to claim 19. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key is configured to automatically communicate with the smartphone or the mobile phone when within a predetermined distance of one another, [0029] the key 10 and the smart device 12 communicate using an NFC tag, NFC tags only communicate when the tags are within a predetermined distance of one another.
As to claim 21. Grant discloses A system comprising:
a programmable key, [figs. 1, 7, 0022, 0039] electronic key 10, 20, comprising wireless communication circuitry, [0029] electronic key 10 communicate with a security device 16 wirelessly, the programmable key configured to communicate with and operate a wireless device, [0022] electronic key 10 operates the security device 16; and
a smartphone or a mobile phone, [fig. 1, 0022] smart device 12 that is a smart phone, comprising wireless communication circuitry, [fig. 3, 0028] communication system 58, [0029] electronic key 10 communicate with the smart device 12 wirelessly;
wherein the smartphone or the mobile phone is configured to communicate with the programmable key via respective wireless communication circuitry, [0029, 0030, 0040], to determine whether to authorize the programmable key to operate the wireless device, [0027] wherein the smart device 12 controls the electronic key 10 and enable the use of the electronic key after a password is entered; [0037] wherein the smart device deactivates the key based on a predetermined condition,
wherein the programmable key is configured to be inactivated after a predetermined period of time such that the programmable key is incapable of operating the wireless device, [0037] wherein the smart device 12 would require a password or the … electronic key 10 would need to be refreshed or programmed , and wherein the smartphone or the mobile phone is configured to communicate with the programmable key to reactivate the programmable key to allow the programmable key to operate the wireless device, [0037] the key needs to be refreshed by a programming station to be used to control the device 16; [0030] wherein the smart device 12 can be used as the programming station, and
wherein the programmable key that has been reactivated is configured to operate the wireless device, independent of the smartphone or mobile device, [0024] the key 10 may include battery and be an active device, for communicating with the merchandise security device 16, [0024] as opposed to being passive and not operating unless coupled to the smart device 12.
As to claim 22. Grant discloses A method comprising:
wirelessly communicating between a merchandise security key, [fig. 1, 4, 0022, 0039] electronic key 10, and a smartphone or the mobile phone, [fig. 1, 0022] smart device 12, via respective wireless communication circuitry, [0029, 0030, 0040] electronic key 10 communicate with the smart device 12 wirelessly, the merchandise security key initially not authorized by the smartphone or the mobile phone to operate a merchandise security device, [0024] the electronic key 10 may not be operatable unless coupled to a smart device 12;
receiving an input of user credentials at the smartphone or the mobile phone or the merchandise security key, [0027] receive user credentials;
exchanging data between the smartphone or the mobile phone and the merchandise security key via the respective wireless communication circuitry, [0029, 0030, 0040] the smart device 12 and the key 10 communicate with each other;
determining with the smartphone or the mobile phone whether to authorize the merchandise security key to operate the merchandise security device based on the user credentials and the data, [0027, 0028] authorized users can operate the device 16 using the key 10; and
operating the merchandise security device with the merchandise security key, independent of the smartphone or the mobile phone, [0024] the key 10 may include battery and be an active device, for communicating with the merchandise security device 16, [0024] as opposed to being passive and not operating unless coupled to the smart device 12, after the merchandise security key is authorized, [0027] user credential required before the device 16 can be operated.
As to claim 23. Grant discloses The merchandise security system of Claim 1, wherein the data comprises a user ID, [0027, 0030].
As to claim 24. Grant discloses The merchandise security system of Claim 1, wherein the data comprises a security code or identifier, [0030].
As to claim 25. Grant discloses The merchandise security system of Claim 1, wherein the merchandise security key is not coupled to the smartphone or mobile device via a wired connection, [0029] key 10 communicates with smart device 12 wirelessly.
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, 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) 17, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grant in view of Fuerstner [US 20190349201].
As to claim 17. Grant fails to disclose The merchandise security system of Claim 1, wherein the merchandise security key is a card having a memory, and processor and an antenna.
Fuerstner teaches a protection device 2, a dongle 6 and a smart phone 10; wherein the protection device is operated when the dongle is authorized using the smart phone, [0054]; wherein the dongle 6 is implemented as a smart card, [0057], comprising a controller, a wireless communicator, [fig. 3, 0055], with an antenna, [0053], and an internal memory, [0054].
It would have been obvious for one of ordinary skill in the art at the time of the filing of the claimed invention to combine the teachings of Grant with that of Fuerstner so that the key of Grant can be implemented to be carried inside a card wallet of the user for easy storage.
As to claim 18. Grant discloses The merchandise security system of Claim 17, wherein the card is configured to transfer power to the merchandise security device for operating the merchandise security device, [0022, 0024].
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive.
Argument 1: The cited paragraph 30 of Grant does not teach the SDC being provided by the smart device.
Response 1: [0030] specifically teaches that “The system may further comprise an optional programming station that is operable for programming the electronic key 10 with a security code, which is also referred to herein as a Security Disarm Code (SDC). … It is understood that in other embodiments, the electronic key 10 may be programmed without use of a programming station. For example, the key 10 may be … programmed by the smart device 12.”
Argument 2: Paragraphs 29 and 41 of Grant do not disclose that the smart device exchanges data with a merchandise security key to authorize the key to operate a merchandise security device.
Response 2: The above paragraphs are cited to teach the limitation that the exchange between the security key and the smartphone is via the respective wireless communication circuitry.
Argument 3: Applicant submits that Grant does not disclose at least the step of determining with the smartphone or the mobile phone whether to authorize the merchandise security key to operate the merchandise security device based on the user credentials and the data, as recited by Claim 22.
Response 3: [0027] recites “the smart device 12 is configured to control the electronic key 10”, and “In addition, further security could be implemented with the smart device 12, such as requiring a user to input a password into the smart device before the electronic key 10 can be operated.”; wherein further in [0037] “an authorized sales associate typically must program or refresh the key assigned to him at the beginning of each work shift. Furthermore, the smart device 12 may be configured to deactivate the logic control circuit of the key 10 after a predetermined period of time. Similarly, the smart device 12 may be deactivated after a predetermined period of time such that the smart device would require a password or the smart device and/or electronic key 10 would need to be refreshed or programmed.” Which reads on the claimed limitation of the smartphone authorizing the security key to operate the merchandise security device.
Argument 4: With respect to Claim 21, Applicant respectfully disagrees that Grant discloses at least that the smartphone or the mobile phone is configured to communicate with the programmable key to reactivate the programmable key to allow the programmable key to operate the wireless device. In the Office Action, the Examiner relies on paragraph 37 of Grant in support of the rejection, but this paragraph discloses that the key or the smart device may be refreshed or reprogrammed by a programming station, not that the smart device reactivates the key.
Response 4: Grant in [0037] recites that “the smart device 12 may be deactivated after a predetermined period of time such that the smart device would require a password or the … electronic key 10 would need to be refreshed or programmed.”
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENYAM HAILE whose telephone number is (571)272-2080. The examiner can normally be reached 7:00 AM - 5:30 PM Mon. - Thur..
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/Benyam Haile/Primary Examiner, Art Unit 2688
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