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 § 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) 1-9, 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fidalgo (US 20130148309) in view of NPL (International Standards ISO/IEC 7816-2) Lalo (US 20190205718) and Davis (US 20150220714)
Fidalgo discloses
1. A smart card module 1, comprising:
a contact region (c21) configured as an ISO 7816 contact region with at least one electrical smart card module contact
(par. 23: component c21 is contact or contactless; par. 30: component c20 corresponding to the surface of a module complying with ISO 7816 standard,
Fidalgo is silent to the contact region is ISO7816 compliant;
however, it is well known for ISO 7816 standard to include contact specifications, see NPL; it would have been obvious to one of ordinary skill in the art before the effective date the invention was made to apply the standard for compatibility with card readers of the standard); and
a verification code display unit (c10, par. 23) configured to display a verification code, the verification code display unit being arranged in the smart card module (Fig. 1-2),
Fidalgo is silent to wherein the verification code display unit is configured for inductive or capacitive control.
Lalo discloses modules 160-180, 200 each includes contact pad 142, display 138, and micro-antenna that is in inductive control with card antenna 110 (Fig. 2-5, par. 46, 50). In modules 200-208, the display 138 is arranged adjacent to the contact pad 142 in a combined module or separate modules (Fig. 7-15). Each sub-assembly 208-n can include an antenna (par. 79) and can be placed anywhere, including above or below, with respect to one another (par. 72, 76, 80).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date the invention was made to incorporate the teachings of Lalo to reduce the possibility that data from the module having the display cannot be communicated due to broken wiring in the card.
Fidalgo is silent to wherein the verification code display unit is operable as a dynamic permanent display unit, the display of the code continues to be displayed after deenergization of the verification code display unit
Davis discloses a card that includes an e-ink display or cholesteric LCD display (par. 20, 27-28, 50) that is overlapped by a fingerprint sensor (par. 108). [0028] As an example, the display 170 of the device 100 may be an electrophoretic display that may be bi-stable, for example, without a need for power to maintain a rendered graphic or graphics. Davis further discloses card and secure information can be displayed (Fig. 2, par. 31)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date the invention was made to incorporate the teachings of Davis so that the secure code can be desirably stayed on the display as a design choice
2.1, wherein the contact region is exposed at a first side of the smart card module, and wherein a display of the verification code display unit is exposed at the first side or is covered by transparent material (Fidalgo, Fig. 1).
3.2, wherein the verification code display unit (c10) is arranged adjacent to the contact region (Fidalgo, Fig. 1).
4.1, wherein the contact region is exposed at a first side of the smart card module, and wherein a display of the verification code display unit is exposed at a second side, situated opposite the first side, or is covered by transparent material (Fidalgo, Fig. 2).
5.1, further comprising: a biometry sensor module having a sensor surface, which is exposed on a same side of the smart card module as the contact region (Fidalgo, par. 23: Fidalgo is silent to whether fingerprint sensor c20 and contact component c21 can be on a same side of the module; however, this is an obvious extension of Fidalgo’s teachings since Fidalgo mentions at least two different components may be placed on substrate 2, par. 21).
6.5, wherein the verification code display unit is arranged between the biometry sensor module and the contact region (this feature, directed to rearrangement of parts, has been recognized as an obvious matter of design choice; MPEP 2144.04; and is an obvious extension of Fidalgo’s teachings).
7.5, further comprising: a biometry sensor module, wherein the verification code display unit is arranged on a rear side of the biometry sensor module (this feature, directed to rearrangement of parts, has been recognized as an obvious matter of design choice; MPEP 2144.04; and is an obvious extension of Fidalgo’s teachings as Fidalgo also mentions components can be glued on the back surface, par. 30)
8.5, further comprising: a biometry sensor module, wherein the verification code display unit is fitted directly to the biometry sensor module (Fidalgo, Fig. 2: components can be stacked onto each other; Davis, par. 108: sensor can overlay a display, display may include touch circuitry, which may be, for example, capacitive touch circuitry).
9.1, wherein the verification code display unit is configured as an electronic ink display having a plurality of display elements, wherein each of the display elements is settable to one of two bistable states having different colors by means of electrophoresis (Davis, par. 20, 27-29).
11.1, further comprising: a security element configured to control the contact region and the verification code display unit (Lalo, par. 38, 78: IC chip 144 interpreted as security element which performs control functionalities, including communication using antennas, with the modules 120, 140, 160, 170, 180, 190, 200, 202, 204, 206)
12.11, further comprising: a biometry sensor module, wherein the security element is part of the biometry sensor module and is further configured to control the biometry sensor module (Lalo, 38, 48: a module can include fingerprint sensor and IC chip 144)
13.1, further comprising: an antenna configured for contactless communication (Fidalgo, par. 23: an antenna component can be incorporated).
Re claims 14-15, see discussion regarding claims above.
Claim(s) 16, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fidalgo (US 20130148309) Davis (US 20150220714)/NPL / and in view of Setlack (US 20160216813)
Re claim 16, see discussion regarding claims above regarding the teachings of Fidalgo, Davis, and NPL.
Fidalgo /Davis/ NPL combination is silent to the display is inductively or capacitively coupled to the sensor module
Setlack discloses [0029] Referring additionally to FIG. 4, the finger biometric sensor 30 includes a finger biometric sensing layer 33. The finger biometric sensing layer 33 includes an array of transparent conductive finger biometric sensing pixels 34 capacitively coupled to the transparent conductive layer 42 of the touch display 23. The array of transparent conductive finger biometric sensing pixels 34 may be electric field biometric sensing pixels. The array of transparent conductive finger biometric sensing pixels 34 may also comprise ITO. Of course, the array of transparent conductive finger biometric sensing pixels 34 may be another material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date the invention was made to incorporate the teachings of Setlack the biometric sensor and display be coupled in the manner such that display is inductively or capacitively coupled to the sensor module
18.16, wherein the sensor module and the verification code display unit are arranged separately from one another and are electrically conductively connected or inductively or capacitively coupled (Fidalgo, Figs. 1-2).
Re claims 19-20, see discussion regarding claims above.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fidalgo (US 20130148309) Davis (US 20150220714)/NPL / Setlack (US 20160216813) and in view of Yeap (US 20210133529)
Re claim 17, Fidalgo is silent to further comprising: a security element configured to control the contact region and the verification code display unit
Yeap discloses a controller 18 as the security element that is part of a second module 4 comprising a biometric sensor 5 (Fig. 3, par. 37). Yeap further discloses that the second module 4 can comprise additional functions or combined with other modules as double-sided circuit (par. 42-43), which includes a display (par. 46).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date the invention was made to incorporate the teachings of Yeap by combining the display and biometric modules together controlled by a biometric sensor chip/controller 18 for ease in assembly or design choice.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references Fidalgo, Davis, and Setlack, 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). In this case, Davis discloses a device 100, 500 including display 570 and fingerprint sensor 140, 540, which can be in the form of a card or other devices including a computer system such as shown in Fig. 12 wherein “a display may be a sensor display (e.g., configured for receipt of input using a stylus, a finger, etc.). As described herein, a sensor display may rely on resistive sensing, optical sensing, or other type of sensing” (par. 117).
Setlack demonstrates another type of device, i.e. mobile phone, that is known to include a display and fingerprint sensor, which also include capacitive means to enable the display and fingerprint sensor to communicate with each other. KSR has held that
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.
For these reasons, the previous rejection(s) is/are respectfully maintained.
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 THIEN MAI whose telephone number is (571)272-8283. The examiner can normally be reached M-F 8-5pm.
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, Steven Paik can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THIEN T MAI/ Primary Examiner, Art Unit 2876
Prosecution Insights