DETAILED ACTION
Applicant's response with amendments filed on 09/16/2025 has been received and entered. Applicant has amended claims 1, 6, 7, 10, 13, 18 and 19, canceled claim 12 and added claim 21. Claims 1-11 and 13-21 have been examined on the merits.
Response to Amendment/Arguments
The information disclosure statements (IDSs) submitted on 09/22/2025 are being considered by the examiner.
Rejections under 35 USC § 112(b) for claims 1-20 have been withdrawn.
Applicant’s arguments with respect to rejections 35 USC § 102 and 35 USC § 103 for claims 1-20 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.
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.
Claims 1-5, 7-11, 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Capurso et al. (US 10853795 B1), hereinafter Capurso, in view of Castinado et al. (US 20170061422 A1), hereinafter Castinado.
Regarding claim 1, Capurso discloses a secure access system (“system 100”, see Figs. 1A-B) between a wearable device (“mobile device 110”, including wearable devices – see col. 3, lines 60-67) and a contactless card (“contactless card 101”), the system comprising:
the wearable device comprising a memory (“memory 111” of mobile device 110; “memory 102” of contactless card 101; “memory 122” of authentication server 120 – See Figs. 1A-B, 8) and
a processor (“processor 430” of contactless card; “processor 804” of computing system 802, representative of the contactless card 101, mobile devices 110, and authentication server 120 of the system 100 – see Figs, 1A-B, 8), wherein the wearable device is configured to:
open a communication field (to enable NFC data transfer between the contactless card 101 and the mobile device 110, the account application 113 may communicate with the contactless card 101 when the contactless card 101 is sufficiently close to the card reader 118 of the mobile device 110; the card reader 118 reads/communicates with the communications interface 133 of the contactless card 101 (e.g., via NFC, Bluetooth, RFID, etc.) - see col. 5, lines 13-30; see also Fig. 1A, col. 3, lines 52-57);
transmit, upon opening the communication field, an authentication request to the contactless card (in order to authorize a user-requested operation, the system authenticates/verifies the user by using the contactless card 101 – see col. 4, line 56 to col. 5, line 13; using key diversification encryption, the contactless card 101 provides identification data associated with the user in encrypted form – see col. 5, line 31 to col. 6, line 25);
receive, upon transmitting the authentication request, an authentication credential (“encrypted customer ID 132” or “encrypted data”) from the contactless card (the contactless card 101 transmits the encrypted data to the account application 113 of the mobile device 110 (e.g., via an NFC connection, Bluetooth connection, etc.); the account application 113 of the mobile device 110 may then transmit the encrypted customer ID 132 to the server 120 via the network 130 for authentication – see col. 6, lines 26-37);
validate the authentication credential (once the encrypted data is received, the authentication application 123 may authenticate the encrypted customer ID 132 – see col. 6, lines 38-56);
transmit, upon validating the authentication credential, a request for card emulation data (after successful authentication, account application 113 in mobile device 110 receives the verification – see col. 7, lines 9-26; the card reader 118 of the mobile device 110, acting in NFC card-emulation mode, may cause the applet 103 of the contactless card 101 to transmit payment information (e.g., a card number, expiration date, and/or card verification value (CVV)) [i.e., card emulation data] to the account application 113 of the mobile device 110 – see col. 11, lines 11-16);
receive, from the contactless card, card emulation data (applet 103 of the contactless card 101 transmits payment information [payment information includes the encrypted customer ID 132, which is transmitted by the account application 113 to the server 120 for verification - the process has been discussed above, see col. 11, lines 11-16 and previous citations] - see col. 11, lines 16-22);
store the card emulation data on the memory (once verified, the account application 113 of the mobile device 110 transmits the received payment information to the merchant device 301 [that is, the account application 113 in mobile device 110, having received the payment information [i.e., card emulation data], verifies it with the server and uses the information in memory to complete the purchase transaction in NFC card emulation mode] - see col. 11, lines 16-22);
emulate the card (the communications interface 118 (card reader 118) of the mobile device 110 operates in NFC card-emulation mode to emulate the contactless card 101 and pay for a transaction via the merchant device 301 – see col. 10, lines 32-35; once verified, the account application 113 of the mobile device 110 transmits the received payment information to the merchant device 301 as payment data 311 [i.e., emulates the card (while acting in NFC card-emulation mode)]; then the merchant device 301 may then process the transaction using the received payment data 311 - see col. 11, lines 16-22);
Furthermore, Capurso discloses using counter values 104 that are synchronized between the contactless card 101 and the server 120 that change each time there is data exchange between the contactless card 101 and server 120 or mobile device 110; these counter values are used in conjunction with master keys 105 to enhance security using key diversification, which is used to encrypt the data used for authentication/validation (i.e., authentication credential); the authentication application 123 in server 120 uses master key 105 and counter value 104 as inputs to produce a diversified key 106 to decrypt the encrypted data from contactless card 101 and validate the information; if authentication application 123 is unable to decrypt the information, authentication fails, and authentication application 123 sends a message to account application 113, which in turn, rejects the performance of requested operations – see col. 5, line 59 – col. 6, line 49.
Capurso does not explicitly teach after an occurrence of a desyncing event, desync from card emulation.
However, in the same field of endeavor, Castinado discloses systems, methods, and computer program products for authenticating the use of a wearable device to execute a transaction providing the functional benefit of authenticating the wearable device when the user initially adorns the wearable device and continues to monitor the wearable device to determine whether the user remains in continuous possession of the wearable device since its authentication (see abstract and [0002]) including after an occurrence of a desyncing event, desync from card emulation (completing execution of a transaction is based on at least determining that the transaction is within the one or more limits and that the user continues to remain in possession of the wearable device from the first time; the system may determine that the user has not been in continual possession of the wearable device from the first time; and, in response, the system may request additional authentication credentials from the user to re-authenticate the user – see [0048]; see also [0038], [0047], [0055] and [0060-62]; examiner’s note: the wearable device is first authenticated when the user first adorns it (puts it on) and continuous possession is determined based on sensor readings of biometric traits (e.g., heart rate, blood pressure, gait, etc.); once it is determined that the wearable device is not in possession of the user, the wearable device would have to be re-authenticated in order to perform any transactions).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system in Capurso to include after an occurrence of a desyncing event, desync from card emulation, as taught by Castinado. One would have been motivated to make such a combination because the pre-authentication and possession monitoring of the wearable device provides the merchant with an increased level of confidence and thus reducing the likelihood of misrepresentation, as recognized by Castinado (see [0041]).
Regarding claim 2, Capurso and Castinado disclose all the claimed subject matter recited in claim 1 above. Furthermore, Capurso discloses the system, wherein the mobile devices 110 is a wearable device (the mobile devices 110 are representative of any type of network-enabled computing devices, such as smartphones, tablet computers, wearable devices, laptops, portable gaming devices, etc. – see col. 3, lines 60-64).
Capurso does not explicitly teach the system wherein the wearable device is a smart watch.
However, Castinado teaches the wearable device is a smart watch (examples of potential wearable devices are smart watches, bands, ear-pods, jewelry, eyeglasses, contact lenses, clothing, and the like – see [0038]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system in Capurso to include a smartwatch as a wearable device, as taught by Castinado. One would have been motivated to make such a combination to because smartwatches offer convenience to users and security for both users and merchants, as recognized by Castinado (see [0001] and [0041]).
Regarding claim 3, Capurso and Castinado disclose all the claimed subject matter recited in claim 1 above. Furthermore, Capurso discloses the system, wherein the wearable device can perform a transaction with the card emulation data, the transaction comprising at least one selected from the group of a transaction associated with an automatic telling machine (ATM), bank, or other financial institution (the system performs operations [i.e., transactions] including making purchases, requesting a credit increase, transfer funds between accounts, various account-related operations, including viewing account balances – see col. 2, lines 6-20 and lines 60-64; col. 4, lines 45-48; col. 4, line 66 – col. 5, line 4; the contactless card 101 used in the system is representative of any type of payment cards, such as a credit card, debit card, ATM card, gift card, etc. - see col. 3, lines 50-53)
Regarding claim 4, Capurso and Castinado disclose all the claimed subject matter recited in claim 3 above. Furthermore, Capurso discloses the system, wherein the transaction is one or more security transactions at a place of business, an abode, or other private institution (the system is used to perform both in-person and online transactions, for instance, to complete and pay for purchase with a merchant [def. owner of retail business] - see col. 10, lines 16-18, Figs. 3A, 3B, 3C).
Regarding claim 5, Capurso and Castinado disclose all the claimed subject matter recited in claim 1 above.
Capurso does not explicitly teach the system, wherein the wearable device continues to emulate card information as long as the wearable devices remains worn.
However, Castinado teaches a system and method for maintaining authentication of a user of a wearable device wherein the wearable device continues to emulate card information as long as the wearable devices remains worn (completing execution of a transaction is based on at least determining that the transaction is within the one or more limits and that the user continues to remain in possession of the wearable device from the first time; the system may determine that the user has not been in continual possession of the wearable device from the first time; and, in response, the system may request additional authentication credentials from the user to re-authenticate the user – see [0048]; see also [0038], [0047], [0055] and [0060-62]; examiner’s note: the wearable device is first authenticated when the user first adorns it (puts it on) and continuous possession is determined based on sensor readings of biometric traits (e.g., heart rate, blood pressure, gait, etc.); once it is determined that the wearable device is not in possession of the user, the wearable device would have to be re-authenticated in order to perform any transactions; in other words, as long as the wearable device is “adorned” (in possession” of the user and is authenticated, it may continue performing transactions).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system in Capurso to include wherein the wearable device continues to emulate card information as long as the wearable devices remains worn, as taught by Castinado. One would have been motivated to make such a combination because the pre-authentication and possession monitoring of the wearable device provides the merchant with an increased level of confidence and thus reducing the likelihood of misrepresentation; and, provides a level of convenience for the user, as recognized by Castinado (see [0001] and [0041]).
Regarding claim 7, all limitations correspond to the method for the system of claim 1 above. Therefore, claim 7 is being rejected on the same basis as claim 1.
Regarding claim 8, Capurso and Castinado disclose all the claimed subject matter recited in claim 7 above. Furthermore, Capurso discloses the method, wherein the authentication credential is at least one selected from the group of a unique customer identifier (“customer ID 107”/“customer ID 132”) and a counter value (“counter 104”/“counter value 104”) (the contactless card 101 may then encrypt the data (e.g., the customer ID 107 and/or any other data, such as the passport data 108, driver's license data 109, and/or other user data 131); encrypting the customer ID 107 with the diversified key 106 results in the encrypted customer ID 132; the contactless card 101 transmits the encrypted data [i.e., authentication credential] to the account application 113 of the mobile device 110 (e.g., via an NFC connection, Bluetooth connection, etc.); the contactless card 101 transmits the counter value 104 with the encrypted data – see col. 6, lines 18 -37).
Regarding claim 9, Capurso and Castinado disclose all the claimed subject matter recited in claim 7 above. Furthermore, Capurso discloses the method, wherein the card emulation data comprises at least one selected from the group of a primary account number (PAN), a card verification value (CVV), and a security code (the communications interface 118 [card reader 118] of the mobile device 110, acting in NFC card-emulation mode, may cause the applet 103 of the contactless card 101 to transmit payment information (e.g., a card number, expiration date, and/or card verification value (CVV)) [i.e., card emulation data] to the account application 113; the payment information includes an encrypted customer ID 132 as well – see col. 11, lines 11-20)
Regarding claim 10, Capurso and Castinado disclose all the claimed subject matter recited in claim 7 above. Furthermore, Capurso discloses the method, wherein the card emulation is performed via a software application (“account application 113”) associated with the wearable device (account application 113 included in operating system (OS) 112 of mobile device 110 allows users to perform various account-related operations, control access permissions to different functions provided by account application 113 and others, and communicates with contactless card 101 via card reader 118; receives card data (payment information and user/card identification), verifies the data, and transmits it to complete transactions, effectively emulating the card- see col. 4, line 40 – col. 5, line 30; col. 11, lines 6-24).
Regarding claim 11, Capurso and Castinado disclose all the claimed subject matter recited in claim 7 above. Furthermore, Capurso discloses the method, wherein the communication field comprises at least one selected from the group of a near communication field (NFC), Bluetooth, and a radio frequency identification (RFID) field (contactless card 101 and mobile device 110 may support and communicate via different types of short-range protocols in wireless communication, including RFID, NFC, EMV, Bluetooth, and Wi-Fi – see col. 3, lines 46-67; col. 5, lines 24-30).
Regarding claim 13, all limitations correspond to the non-transitory computer-readable medium
of the system and method of claims 1 and 7 above. Therefore, claim 13 is being rejected on the same basis as claims 1 and 7.
Furthermore, Capurso discloses a non-transitory computer readable medium containing computer executable instruction that, when executed by a wearable device comprising a processor, configure the computer hardware arrangement to perform procedures of claim 1 and 7 above (see col. 16, line 62 – col. 17, line 29; col. 18, line 64 – col. 19, line 33).
Regarding claim 14, all limitations correspond to the non-transitory computer-readable medium
of the system of claims 2 above. Therefore, claim 14 is being rejected on the same basis as claim 2.
Regarding claim 15, all limitations correspond to the non-transitory computer-readable medium
of the system of claims 3 above. Therefore, claim 15 is being rejected on the same basis as claim 3.
Regarding claim 16, all limitations correspond to the non-transitory computer-readable medium
of the system of claims 4 above. Therefore, claim 16 is being rejected on the same basis as claim 4.
Regarding claim 17, Capurso and Castinado disclose all the claimed subject matter recited in claim 13 above. Furthermore, Capurso discloses the non-transitory computer readable medium, wherein the validation of the authentication credential comprises:
transmitting, by the wearable device to one or more servers, the authentication credential (once the account application 113 in mobile device 110 receives the encrypted data [i.e., authentication credential] from contactless car 101, the authentication application 123 transmits it to server 120 via network 130 for authentication – see col. 6, lines 26-37), and
receiving, by the wearable device from the one or more servers, a validation message indicating that the authentication credential has been validated (once encrypted data is received, the authentication application 123 of server 120 may authenticate the encrypted customer ID 132 – see col. 6, lines 38-56; once the authentication application 123 has decrypted the encrypted customer ID 132, thereby verifying (authenticating) the encrypted data, authentication application 123 transmits a verification 134 [i.e., validation message] to the mobile device 110 indicating that the authentication was successful – see col. 7, lines 9-16).
Regarding claim 18, all limitations correspond to the non-transitory computer-readable medium
of the system of claims 5 above. Therefore, claim 18 is being rejected on the same basis as claim 5.
Claims 6, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Capurso et al. (US 10,853,795 B1) and Castinado et al. (US 20170061422 A1), as applied to claims 1 and 13 above, and further in view of Maheshwari et al. (US 2018/0293584 A1), hereinafter referred to as Maheshwari.
Regarding claim 6, Capurso and Castinado disclose all the claimed subject matter recited in claim 1 above. Furthermore, Capurso discloses the system wherein account application 113 in mobile device 110 receives the card data via card reader 118 and stores it in order to perform user-requested operations (see Figs. 1A-1B, col. 10, lines 32-35, and col. 11, lines 16-22). Castinado teaches using tokens as a replacement for sensitive account information (e.g., financial) and storing them in the wearable device for use during transactions (see [0038-39]).
Capurso and Castinado do not explicitly teach the system wherein the wearable device is further configured to retain the card information after the wearable device has been de-synced from a user.
However, in the same field of endeavor, Maheshwari teaches a system for fraud monitoring wherein the system, wherein the wearable device is further configured to retain the card information after the wearable device has been desynced from a user (an user may present a payment device (e.g., wearable device or mobile device) executing a digital wallet application [which by definition, stores/holds payment card information] with one or more payment cards provisioned in the wallet, to complete a purchase/financial transactions - see [0101], [0146]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system in Capurso and Castinado to include the wearable device is further configured to retain the card information after the wearable device has been de-synced from a user, as taught by Maheshwari. One would have been motivated to make such a combination to because digital wallets storing/holding card information are convenient and enable the user to use different mobile payment application services, as recognized by Maheshwari ([0146]).
Regarding claim 19, all limitations correspond to the non-transitory computer-readable medium
of the system of claims 6 above. Therefore, claim 19 is being rejected on the same basis as claim 6.
Regarding claim 20, Capurso, Castinado and Maheshwari disclose all the claimed subject matter recited in claim 19 above.
Capurso does not explicitly disclose the non-transitory computer readable medium, wherein the procedures further comprise the steps of re-syncing the wearable device.
However, Castinado teaches a system and method for maintaining authentication of a user of a wearable device (see abstract), wherein the procedures further comprise the steps of re-syncing the wearable device (completing execution of a transaction is based on at least determining that the transaction is within the one or more limits and that the user continues to remain in possession of the wearable device from the first time; the system may determine that the user has not been in continual possession of the wearable device from the first time; and, in response, the system may request additional authentication credentials from the user to re-authenticate the user – see [0048]; see also [0038], [0047], [0055] and [0060-62]; examiner’s note: the wearable device is first authenticated when the user first adorns it (puts it on) and continuous possession is determined based on sensor readings of biometric traits (e.g., heart rate, blood pressure, gait, etc.); once it is determined that the wearable device is not in possession of the user, the wearable device would have to be re-authenticated in order to perform any transactions).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the computer-readable medium in Capurso to include wherein the procedures further comprise the steps of re-syncing the wearable device, as taught by Castinado. One would have been motivated to make such a combination because the pre-authentication and possession monitoring of the wearable device provides the merchant with an increased level of confidence and thus reducing the likelihood of misrepresentation, as recognized by Castinado (see [0041]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Capurso et al. (US 10,853,795 B1) and Castinado et al. (US 20170061422 A1), as applied to claim 7 above, and further in view of Tang et al. (US 20130331029 A1), hereinafter Tang.
Regarding claim 21, Capurso discloses all the claimed subject matter recited in claim 7 above. Capurso does not explicitly teach the method, wherein the desyncing event comprises at least one selected from the group of taking the wearable device off of a user, passing of a predetermined amount of time, the wearable device leaving a certain geographic area, the card emulation reaching a certain number of uses, transactions, or payments, and a manual desyncing of the contactless card.
However, Castinado teaches the method, wherein the desyncing event comprises at least one selected from the group of taking the wearable device off of a user (“user has not been in continual possession of the wearable device”), passing of a predetermined amount of time (“time limit”), the wearable device leaving a certain geographic area (“geographic location”), the card emulation reaching a certain number of uses, transactions, or payments (“spending limit”, “transaction amounts”, “transaction numbers” or “threshold on a number of transactions”) (setting limits associated with execution of one or more transactions using the wearable device, wherein the one or more limits comprise at least a spending limit, a threshold on a number of transactions, a time limit, a merchant category, a product category, and/or a geographic location – see [0010]; the wearable device themselves, or the user accounts, individual users, tokens associated with the wearable device, or the like associated with the user, may have limitations that limit the transactions that the users may enter into using the wearable device including limiting the transactions of the user to a single merchant, a group of multiple merchants, merchant categories, single products, a group a products, product categories, transaction amounts, transaction numbers, geographic locations, or other like limits – see [0042]).
Capurso and Castinado do not explicitly disclose a manual desyncing of the contactless card.
However, in the same field of endeavor, Tang discloses a near field communications (NFC) device that interacts with other NFC devices to exchange information/data; the NFC device can include a plurality of secure elements each configured to store one or more card emulation instances (see abstract) and discloses a manual desyncing of the contactless card (various card emulation instances can be created, modified, and/or deleted by a user via the user interface 650 – see [0073]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method in Capurso to include wherein the desyncing event comprises at least one selected from the group of taking the wearable device off of a user, passing of a predetermined amount of time, the wearable device leaving a certain geographic area, the card emulation reaching a certain number of uses, transactions, or payments, as taught by Castinado; and, to modify the method in Capurso and Castinado to include wherein the procedures further comprise the steps of re-syncing the wearable device, as taught by Tang. One would have been motivated to make such a combination to provide an increased level of confidence and thus reducing the likelihood of misrepresentation, as recognized by Castinado (see [0041]); and to enable users to establish priorities and preferences, as recognized by Tang (see [0048-49]).
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 DORIANNE ALVARADO DAVID whose telephone number is (571)272-4228. The examiner can normally be reached 9:00am-5:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Chea can be reached at (571) 272-3951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIANNE ALVARADO DAVID/Examiner, Art Unit 2499 /PHILIP J CHEA/Supervisory Patent Examiner, Art Unit 2499