DETAILED ACTION
This Office Action is in response to the amendment filed on 12/16/2025 in which claims 61, 62, 71, and 80 are amended. Claims 61-67, 69-81 are presented for examination on the merits.
Notice of Pre-AIA or AIA Status
The present application is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/18/2025 has been considered. The submission is in compliance with the provisions of 37 CFR 1.97. Form PTO-1449 is signed and attached hereto.
Response to Arguments
1. Applicant's arguments in pages 8-13 of the REMARKS filed on 12/16/2025 with respect to the rejection under 35 USC § 103(a) have been considered but are moot in view of the new grounds of rejection. After careful review and in light of Applicant’s amendments, remarks, and Examiner’s newly performed search and consideration, claims 61-67, 69-81 are now newly rejected under 35 U.S.C. 103(a) for the reasons specified below.
With regards to the rejection under Double Patenting, Applicants remarks have been considered. However, after careful review, the double patenting rejection to claims 61-67, 69-81 is maintained because the examined application claims are either anticipated by, or would have been obvious over, the reference claim(s). Examiner notes, however, that as prosecution proceeds, the double patenting rejection can be cured by terminal disclaimer and/or by the change of the relationship/similarity of the respective claim sets.
Double Patenting
2. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
3. Claim 61-67, 69-81 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of Patent No. US 11,556,668 B2, claims 1-19 of Patent No. US 10,769,299 B2, and claims 1-20 of Patent No. US 11,797,710 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because both applications recite similar steps of secure data access using a smart card including a microprocessor, a memory containing an applet, a counter, and a unique identifier. The smart card dynamically generates a unique uniform resource location (URL) and transmit the URL to via a contactless communication interface to securely facilitate data access from other devices.
Claim Comparison Table
Instant Application: 18/242,405
Patent US 11,556,668 B2
61. A method performed by a smart card comprising a communication interface, a microprocessor, and a memory storing a card counter, the method comprising: transmitting the card counter for synchronization via the communication interface in response to the communication interface entering data communication range of a communication device; generating a unique one-time uniform resource locator (URL); and transmitting the unique one-time URL via the communication interface to the communication device..
1. An information access system, comprising: a server storing a server counter; and a smart card comprising a microprocessor, a communication interface, and a memory storing an applet, a card counter, and a customer identifier, wherein the microprocessor is configured to: increment the card counter, transmit the incremented card counter via the communication interface for synchronization with the server, generate a unique one-time uniform resource locator (URL) by cryptographically hashing the incremented value of the card counter and the customer identifier, and transmit the unique one-time URL via the communication interface; and wherein, upon receipt of the incremented card counter, the server is configured to synchronize the incremented card counter and the server counter..
Claim Comparison Table
Instant Application: 18/242,405
Patent No. US 10,769,299 B2
Claim 61
Claim 1
Claim Comparison Table
Instant Application: 18/242,405
Patent No. US 11,797,710 B2
Claim 61
Claim 1
Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. 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.
7. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
8. Claims 61-67, 69-78, and 80-81 are rejected under 35 U.S.C. 103 as being unpatentable over Yi et al. (US 20150215058 A1, hereinafter, Yi) in view of Cimino et al. (Pub. No. US 20170116447 A1, hereinafter, Cimino) and further in view of Robinton et al. (US 20170017947 A1, hereinafter, Robinton), and further in view of NXP (Technical Document: “NFC Forum Type 2 Tag compliant IC with 144/888 bytes user memory and field detection”, hereinafter, NXP).
Regarding claim 61, Yi discloses a method performed by a smart card comprising a communication interface, a microprocessor, and a memory storing a card counter (Para 0044, Abstract: an interface card, or other well-known interface device for facilitating dynamic counter synchronization), the method comprising: transmitting the card counter for synchronization via the communication interface (Para 0031, 0040-0041: counters are synchronized with indicators wherein the counters in the receiver are synchronized to the values sent by the transmitter);
[in response the communication interface entering data communication range of a communication device];
[generating, upon synchronizing the card counter, a unique one-time uniform resource locator (URL)]; and
[transmitting the unique one-time URL via the communication interface to the communication device]
Yi does not explicitly state but Cimino from the same or similar fields of endeavor teaches transmitting the unique one-time URL via the communication interface to the communication device (Cimino, Para 0079: generate the complete URL comprising the domain name FQDN, possibly the field “itemname”, the code Ca and the dynamic code DC, and transmit the URL via the communication interface ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention wherein generating a unique one-time uniform resource locator (URL); and transmitting the unique one-time URL via the communication interface to the communication device as taught by Cimino in the teachings of Yi for the advantage of providing a different dynamic code based on the varied count value (Cimino, Para 0015).
The combination of Yi and Cimino does not explicitly state but Robinton from the same or similar fields of endeavor teaches in response the communication interface entering data communication range of a communication device (Robinton, Para 0108: simply bringing the NFC mobile device within communication range of the smart tag, or tapping the NFC mobile device on the smart tag, or bringing the NFC mobile device within communication range of the smart tag and entering a command via a user interface of the NFC mobile device that causes the NFC mobile device to communicate with the smart tag. Presenting the NFC mobile device to the smart tag may trigger communications between the smart tag and the mobile device).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention wherein in response the communication interface entering data communication range of a communication device as taught by Robinton in the teachings of Yi and Cimino for the advantage of employing a trusted tag service, which enables a customer to safely load ticketing credit onto their mobile device and provide a proof of purchase via the mobile device (Robinton, Abstract).
The combination of Yi, Cimino, and Robinton does not explicitly state but NXP (NTAG213F/216F) from the same or similar fields of endeavor teaches generating, upon synchronizing the card counter, a unique one-time uniform resource locator (URL)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention wherein generating, upon synchronizing the card counter, a unique one-time uniform resource locator (URL)
Regarding claim 62, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 61, wherein the unique one-time URL is generated after transmitting the card counter for synchronization (Cimino, Paras 0070-0073, 0053: initial count value is a random or pseudorandom number wherein dynamic part of the authentication URL, i.e., the dynamic code DC, is computed by the tag 402a at each reading… transmit a random code RC to the tag).
Regarding claim 63, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 61, wherein the unique one-time URL includes at least one selected from the group of a pseudo-random element and a quasi-random element (Cimino, Paras 0070-0073, 0053: initial count value is a random or pseudorandom number wherein dynamic part of the authentication URL, i.e., the dynamic code DC, is computed by the tag 402a at each reading… transmit a random code RC to the tag).
Regarding claim 64, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 63, wherein the at least one selected from the group of the pseudo-random element and the quasi-random element is based on the card counter (Cimino, Paras 0070-0073, 0053: initial count value is a random or pseudorandom number wherein dynamic part of the authentication URL, i.e., the dynamic code DC, is computed by the tag 402a at each reading… transmit a random code RC to the tag).
Regarding claim 65, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 61, wherein: prior to transmitting the card counter, incrementing the card counter, wherein transmitting the card counter for synchronization via the communication interface comprises transmitting the incremented card counter for synchronization via the communication interface (Yi, Para 0031: counters 0 246A, 1 246B and 2 246C are synchronized with indicators 244A, 244B and 244C, respectively. For example, upon authentication, indicator 244A resets the counter to 0 246A and subsequently, the counter values increases as per predefined criteria).
Regarding claim 66, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 65, wherein the unique one-time URL is generated (Cimino, Para 0079: generate the complete URL comprising the domain name and transmit the URL via the communication interface )
using the incremented card counter (Yi, Para 0031: counters 0 246A, 1 246B and 2 246C are synchronized with indicators 244A, 244B and 244C, respectively. For example, upon authentication, indicator 244A resets the counter to 0 246A and subsequently, the counter values increases as per predefined criteria)
Regarding claim 67, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 61, wherein generating the unique one-time URL comprises cryptographically hashing the card counter (Cimino, Para 0014: dynamic code is generated using a hashing function).
Regarding claim 69, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 61, wherein: the memory further stores a customer identifier, and generating the unique one-time URL comprises cryptographically hashing the card counter and the customer identifier (Cimino, Para 0014, Para 0024-0025, 0045: dynamic code is generated using a hashing function wherein dynamic code comprises: transmitting an Uniform Resource Locator (URL), a hashing function wherein the URL corresponds to identifier or to the serial number or the associated entity/object).
Regarding claim 70, the combination of Yi, Cimino, Robinton, and NXP discloses the method of claim 69, wherein the customer identifier is a unique alphanumeric identifier assigned to the user of the smart card (Cimino Para 0069, 0045: authentication URL comprises e.g., the tag serial number or any other number uniquely associated with the specific tag…. wherein the URL corresponds to identifier or to the serial number or the associated entity/object, 0068: an alphanumeric sequence comprising a URL, wherein the URL contains a static part and a dynamic part).
Regarding claim 71; Claim 71 is similar in scope to claim 61, and is therefore rejected under similar rationale.
Regarding claim 72, the combination of Yi, Cimino, Robinton, and NXP discloses the system of claim 71, further comprising: the communication device, wherein the communication device comprises at least one selected from the group of a fixed communication device and a portable communication device (Yi, Para 0019: a media communication device 100 employing a dynamic interface support mechanism 110 according to one embodiment. Media communication device ("media device") 100 may include any number and type of media devices, such as a computing device (e.g., smartphones, tablet computers, laptop computers, etc.), a communication or telecommunication device (e.g., broadband headends, televisions, etc.), a network device, a source device (e.g., a transmitter), a sink device (e.g., a receiver), an intermediate device (e.g., an independent clock generator), etc.).
Regarding claim 73, the combination of Yi, Cimino, Robinton, and NXP discloses the system of claim 72, wherein the portable communication device comprises at least one selected from the group of a smartphone, a laptop computer, a tablet computer, a personal digital assistant, and a palmtop computer (Yi, Para 0019: a media communication device 100 employing a dynamic interface support mechanism 110 according to one embodiment. Media communication device ("media device") 100 may include any number and type of media devices, such as a computing device (e.g., smartphones, tablet computers, laptop computers, etc.), a communication or telecommunication device (e.g., broadband headends, televisions, etc.), a network device, a source device (e.g., a transmitter), a sink device (e.g., a receiver), an intermediate device (e.g., an independent clock generator), etc.).
Regarding claim 74, the combination of Yi, Cimino, Robinton, and NXP discloses the system of claim 72, wherein the fixed communication device comprises a computer device having an assigned location (Yi, Para 0020, 0035, 0046, : Examples of a source device includes consumer electronics devices, such as a personal computer ("PC"), a mobile computing device (e.g., a tablet computer, a smartphone, etc.), an MP3 player, an audio equipment, a television, a radio, a Global Positioning System ("GPS") or navigation device, a digital camera… the area of active VS 260, receiver 200B re-synchronizes for in case there is an out-of-synch error, eliminating the need for receiver 200B to inform transmitter 200A that it has encountered the out-of-sync situation).
Regarding claim 75, the combination of Yi, Cimino, Robinton, and NXP discloses the system of claim 74, wherein the fixed communication device comprises at least one selected from the group of a desktop computer, a cash register, a kiosk, a checkout machine, an automated teller machine (ATM), an information station, a booth, an ordering station, a map or general information display, and a countertop computer display (Yi, Para 0020, 0035, 0046, : Examples of a source device includes consumer electronics devices, such as a personal computer ("PC"), a mobile computing device (e.g., a tablet computer, a smartphone, etc.), an MP3 player, an audio equipment, a television, a radio, a Global Positioning System ("GPS") or navigation device, a digital camera… the area of active VS 260, receiver 200B re-synchronizes for in case there is an out-of-synch error, eliminating the need for receiver 200B to inform transmitter 200A that it has encountered the out-of-sync situation).
Regarding claim 76; Claim 76 is similar in scope to claim 69, and is therefore rejected under similar rationale.
Regarding claim 77, the combination of Yi, Cimino, Robinton, and NXP discloses the system of claim 76, further comprising: a server storing a server counter, wherein the server: receives, from the communication device, the card counter, and synchronizes the card counter and the server counter (Yi, Para 0031: counters 0 246A, 1 246B and 2 246C are synchronized with indicators 244A, 244B and 244C, respectively. For example, upon authentication, indicator 244A resets the counter to 0 246A and subsequently, the counter values increases as per predefined criteria).
Regarding claim 78, the combination of Yi, Cimino, Robinton, and NXP discloses the system, of claim 77, wherein the server: receives, from the communication device, the one-time unique URL, recreates the cryptographic hash using the server counter (Yi, Para 0031: counters 0 246A, 1 246B and 2 246C are synchronized with indicators 244A, 244B and 244C, respectively. For example, upon authentication, indicator 244A resets the counter to 0 246A and subsequently, the counter values increases as per predefined criteria), and
compares the recreated cryptographic hash to the received unique one-time URL for authentication (Cimino, Para 0025: generating the first dynamic code comprises a hashing …comparing said first and said second dynamic codes).
Regarding claim 80; Claim 80 is similar in scope to claim 61, and is therefore rejected under similar rationale.
Regarding claim 81, the combination of Yi, Cimino, Robinton, and NXP the non-transitory computer-accessible medium of claim 80, wherein the unique one-time URL is configured to request at least one selected from the group of an account balance, a credit score, and a product availability (Roninton, Para 0096: allow a user to select a desired amount of credit to purchase, provide payment information (e.g. credit card information, debit card information, or bank account information), review the proposed transaction (including the amount of credit to be purchased and the payment information), confirm the proposed transaction).
Allowable Subject Matter
9. Claim 79 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for Allowance
10. The following is an examiner’s statement of reasons for placing claim 79 under allowable subject matters:
The limitation of dependent claim 79 is allowed and the corresponding dependent claims including respective and any intervening claims are not disclosed by the any of the prior art of record. For example, the limitations in claim 79 including the intervening claims recite “receives, from the communication device, the one-time unique URL, recreates the cryptographic hash using the server counter, and compares the recreated cryptographic hash to the received unique one-time URL for authentication...wherein upon a successful comparison, the server transmits financial information to the application...” which are not are not taught or fairly suggested by the prior art of record.
The allowable subject matters in above dependent claims are novel and non-obvious in scope over the prior art of record as the prior-art references fail to teach each and every features of the aforesaid dependent claim(s) including the limitations set forth above.
In view of the foregoing, the scope of claimed subject matters renders the invention patentably distinct as none of the prior art of record, either taken by itself or in any combination, would have anticipated or made obvious the invention of the present application at or before the time it was filed.
Furthermore, the Examiner performed updated search which does not yield other specific references that reasonably, either alone or in combination, would result a proper rejection of all the claimed features presented in each of the dependent claim 79 under 35 U.S.C 102 or 35 U.S.C.103 with proper motivation.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled "Comments on Statement of Reasons for Allowance."
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Trost et al. (US 20070008155 A1) discloses a method for identifying an entity comprising placing an internal tag within the entity and placing an external tag proximate the entity wherein the internal tag and external tag are coupled.
YING et al. (US 20180167807 A1) discloses message protection method performed by user equipment (UE) wherein an authentication and key agreement request message sent by an SGSN is received using a GMM/SM protocol layer of the UE. A first algorithm identifier on the GMM/SM protocol layer of the UE is obtained according to the authentication and key agreement request message, and a first key is generated.
12. 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 extension fee 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 MAHFUZUR RAHMAN whose telephone number is (571)270-7638. The examiner can normally be reached on Monday thru Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yin-Chen Shaw can be reached on 571-272-8878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAHFUZUR RAHMAN/Primary Examiner, Art Unit 2498