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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 1, 3, 5, 5, 6, 5, 7, 9, 5, 5, 12, and 13 of U.S. Patent No. 11580349. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious expedients. Claim 1 of the instant application recites “A method… establishing… transmitting… retrieving… incorporating… first account… second account… transmitting…”, claim 6 of the instant Application recites “An integrated circuit card… substrate… integrated circuit… input ports… output ports… disabled…”, and claim 16 of the instant application recites “A system… plurality… input ports… output ports… antenna…” wherein claim 1 of the ‘349 Patent recites “A method… establishing… transmitting… retrieving… incorporating… transmitting…”, claim 5 of the ‘349 Patent recites “An integrated circuit card… substrate… integrated circuit… input ports… output ports.. disabled…”, and claim 13 of the ‘349 Patent recites “A system… first... second… moveably coupled… antenna…”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “one of the integrated circuit card” which lacks antecedent basis and is indefinite because it is unclear as a plurality of cards has not been recited. The dependent claims are rejected at least based on their dependency.
Appropriate correction is requested.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ericson et al. (US 2020021984).
Re claim 1, Ericson et al. teaches:
A method comprising:
establishing, by a first integrated circuit card, a wireless communication channel with an access device (paragraph [0016]+ teaches wireless, Bluetooth, NFC, RFID, etc. stating that split transaction payment instruments have both contact and contactless interfaces, and thus it would have been obvious to one of ordinary skill in the art to use such an instruments well known and conventional contactless interface to communicate with an access device given the ubiquitous nature of either dual nature interfaces and/ or contactless access devices, for the known benefits of convenience, security, wear reduction, etc., to provide expected results);
transmitting, by the first integrated circuit card, a current to a second integrated circuit card physically coupled to the first integrated circuit card (FIG. 2A+ teaches a card that couples to another card, wherein though silent to communicating a current, it would have been obvious to do so to couple and provide the power necessary to activate the card for communication);
retrieving, by the first integrated circuit card, data from the second integrated circuit card (paragraph [0033]+ and [0056]+ teaches sending data from cards to each other and then to the terminal);
incorporating, by the first integrated circuit card, the data received from the second integrated circuit card with data stored on the first integrated circuit card into a combined data record, wherein the data stored on the first integrated circuit card includes a first account data identifying a first account issued by a first issuer, wherein the data received from the second integrated circuit card includes a second account data identifying a second account issued by a second issuer; and transmitting, by the first integrated circuit card, the combined data record to the access device via the wireless communication channel (paragraphs [0034]+, [0052]+, [0056]+ teaches the use of a header, wherein a split transaction is performed by combining plural card accounts of different card users to split a transaction).
Re claim 2, paragraph [0056]+ teaches the use of a header to denote split transactions.
Re claim 3, FIG. 2B+ teaches that cards are coupled together to transmit split transaction data to a reader. Accordingly, the output of one card (account data) is interpreted to be received by an input of the other card data.
Re claim 4, though silent to disabling, it is well known to reduce interference, thus providing expected results when multiple interfaces are present.
Re claim 5, paragraph [0040]+ teaches three or more portions coupled together, thus obviating additional data from other cards motivated by having more splits for user convenience and claim 1 teaches 2 or more external payment instruments.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ericson et al., as discussed above, in view of Koninkl (EP0939936).
The teachings of Ericson et al. have been discussed above, wherein Ericson et al. is silent
to disabling wireless communication of the second card when current is sent to the second card.
Ericson et al. generally teaches disabling wireless to avoid interference and Koninkl teaches a well-known solution to a known problem of interference between interfaces (paragraph [0067]+).
Prior to the effective filing date, it would have been obvious to combine the teachings to implement reduction in interference.
Claim(s) 6-8, 10-12, 14-16, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jogand-Coulomb et al. (US 20070145152).
Re claim 6, Jogand-Coulomb et al. teaches:
A substrate (FIG. 1D, MSD 100 has a substrate);
An integrated circuit embedded in the substrate (FIG. 1d shows IC chips);
A plurality of input and output ports exposed on the substrate electrically coupled to the IC (240/250/260), wherein though silent, it would have been obvious that these have inputs and outputs to permit bidirectional communication;
Wherein a contactless communication capability is disabled when a predetermined criteria is met (NFC controller chip controls the contactless capability, which would have been obvious to include disabling and enabling communications as necessary per corresponding transactions, which would include disabling (not using) the antenna when communications are not taking place/ not authorized by a controller/ processor of the MSD 100 or the phone processor, based on security, wherein such transactions are not allowed and hence the wireless communication is not permitted/ is disabled).
Re claim 7, paragraph [0007]+ teaches magnetic loop antennas and 280 is interpreted as an indictive antennas as it is known int eh art for NFC.
Re claim 8, the inductive antenna for NFC communications is taught (FIG. 1D+).
Re claim 10, the NFC receives power through the antenna 280.
Re claim 11, FIG. 1D+ shows the ports that are interpreted as on the substrate.
Re claim 12, paragraph [0053]+ teaches removable daughter cards from the mother card.
Re claim 14, as the cards communicate data to each other, the use of input and output ports is an obvious expedient for contract interfacing.
Re claim 15, as discussed, the second card is embedded in the first card and thus is interpreted to be coupled in a predetermined condition, the predetermined condition being a condition when the cards are connected (embedded) and a transaction that is not authorized, which results in the antenna not communicating, which is interpreted as disabled (in a disabled/ non-functioning state).
Re claim 16, FIG. 5+ teaches mother daughter embodiments that are removably connected together, interpreted as a plurality of IC cards wherein while ports are taught, specifics of the inputs and outputs are not. However, it would have been obvious to have inputs and outputs for communication. There is a single antenna 280 that is active.
Re claim 19, the NFC chip is interpreted as powering when it is within range of a device, as known in the art for NFC communications.
Claim(s) 9, 17-18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jogand-Coulomb et al., as discussed above, in view of Koninkl, as discussed above.
The teachings of Jogand-Coulomb et al. have been discussed above but are silent to the disabling details.
Koninkl teaches such limitations (FIG. 1 elements. 91, 17, 17A, 31, 52, 63, KBEI, SEI, {0039}, [0066], where it is noted that, when signal SEI is set, signal KBE], which sets decoupling means 52, 63 to the decoupling state, is also set).
Prior to the effective filing date, it would have been obvious to combine the teachings to use well known circuitry to reduce interference possibilities.
Re claims 17-18 and 20, the limitations have been discussed above.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jogand-Coulomb et al., as discussed above, in view of Adcock et al. (US 10628724).
The teachings of Jogand-Columb et al. have been discussed above, but are silent to the magnetic connectors.
Adcock et al. teaches such limitations (78+) to connect card substrates.
Prior to the effective filing date, it would have been obvious to combine the teachings to use the well known and conventional means of connections (magnets) for expected results of coupling.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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/DANIEL I WALSH/ Primary Examiner, Art Unit 2876