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 .
Response to Amendment
Receipt is acknowledged of an amendment to the claims of application #18453055 received on 1/23/2026. Claims 1 and 10 are amended. Claims 2-9 and 11-16 are left in original form. Claims 1-16 are pending. All pending claims are considered and examined.
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 (i.e., changing from AIA to pre-AIA ) 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) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Finn et al. (US 20150136858 A1; previously cited) in view of Vargas et al. (US 20220051250 A1; previously cited).
Regarding claim 1, Finn discloses (Fig. 1) a transponder chip module with coupling frame on a common substrate for secure and non-secure smartcards and tags comprising:
a chip module (¶147 – AM/TCM), comprising:
a chip (¶147 – RFID chip);
a contact-based interface in accordance with ISO 7816 which is electrically conductively connected to the chip (¶27); and
an antenna structure, which is electrically conductively connected to the chip and provides a contactless interface (¶147 – module antenna); and
a carrier (¶147 – card body), comprising:
a chip module receptacle (¶147 - The card body (CB) 120 comprises a substrate (inlay substrate) which may have a recess (R) 122 extending into one side thereof for receiving the antenna module (AM)); and
a booster antenna structure which, when the chip module is arranged in the chip module receptacle of the carrier, inductively couples to the antenna structure of the chip module (¶30; ¶147 – booster antenna),
wherein the chip module is arranged releasably in the chip module receptacle (¶50 - a coupling frame (CF) may be incorporated into an antenna module (AM) or transponder chip module (TCM); ¶199 - The coupling frame (CF) may be disposed in a cavity in the card body (CB); n.b. at the time of disposing, the chip module is releasable).
Finn does not explicitly disclose wherein the chip module receptacle is such that the chip module can be removed from the chip module receptacle and reinserted into the chip module receptacle repeatedly.
Vargas teaches (Fig. 4B) a systems and methods for chip-based identity verification and transaction authentication comprising: In some examples, the card chip can be removed manually, e.g., by the user using one or more fingers. In other examples, one or more tools may be used, including without limitation, pliers tweezers, wire cutters, scissors, clippers, picks, pliers, pins, threads, needles, blades, knives, or any other structure, or any combination thereof, configured to remove the card chip from the card. The application of heat, torque, or other forces, alone or in combination with manual removal or removal tools, can also be used. Additional example embodiments of the removal of card chip from the card and insertion of the card chip into the user device are illustrated in FIGS. 4A through 4D (¶45). [T]he card chip can be removed from the user device and reinserted into the card (¶53).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the antenna module of Finn with the removal of the card chip and reinsertion into the card as taught by Vargas in order to insert the card chip into a user device (Vargas: ¶45-¶46) and reinsert for use in the card (Vargas: ¶53).
Regarding claim 2, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the chip module also comprises a chip module carrier (Finn: ¶50 - a coupling frame (CF) may be incorporated into an antenna module (AM) or transponder chip module (TCM)).
Regarding claim 3, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the carrier comprises a carrier body in which the chip module receptacle is formed as an opening and on or in which the booster antenna structure is formed (Finn: ¶147 - The booster antenna (BA) 130 may comprise turns (or traces) of wire (or other conductor) embedded in (or disposed on) the card body (CB)).
Regarding claim 4, Finn modified by Vargas teaches the apparatus of claim 3 above and further teaches wherein the carrier body and the chip module carrier comprise the same material or the same materials (Finn: ¶199).
Regarding claim 5, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the chip module carrier is formed by being separated off from the carrier body (Vargas: ¶45).
Regarding claim 6, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the carrier has a smart card ID1 format (Finn: ¶152 – ID-1).
Regarding claim 7, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the chip module receptacle is a through-opening (Finn: ¶354 – window opening).
Regarding claim 8, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the chip module receptacle is a cavity (Finn: ¶147 - recess).
Regarding claim 9, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches wherein the chip module is connected in a form-fitting manner to the chip module receptacle (Finn: ¶147 - The recess (R) may be stepped--such as wider at the surface of the card body (CB)--to accommodate the profile of the antenna module (AM)).
Regarding claim 10, Finn discloses:
forming a chip module that comprises a contact-based interface in accordance with ISO 7816 and which is electrically conductively connected to the chip, and an antenna structure that is electrically conductively connected to the chip (¶147);
forming a chip module receptacle in a carrier, wherein the carrier comprises a booster antenna structure which is designed to inductively couple to the antenna structure of the chip module when the chip module is arranged in the chip module receptacle (¶30; ¶147); and
releasably arranging the chip module in the chip module receptacle (¶50; ¶67; ¶199).
Finn does not explicitly disclose wherein the chip module receptacle is such that the chip module can be removed from the chip module receptacle and reinserted into the chip module receptacle repeatedly.
Vargas teaches (Fig. 4B) a systems and methods for chip-based identity verification and transaction authentication comprising: In some examples, the card chip can be removed manually, e.g., by the user using one or more fingers. In other examples, one or more tools may be used, including without limitation, pliers tweezers, wire cutters, scissors, clippers, picks, pliers, pins, threads, needles, blades, knives, or any other structure, or any combination thereof, configured to remove the card chip from the card. The application of heat, torque, or other forces, alone or in combination with manual removal or removal tools, can also be used. Additional example embodiments of the removal of card chip from the card and insertion of the card chip into the user device are illustrated in FIGS. 4A through 4D (¶45). [T]he card chip can be removed from the user device and reinserted into the card (¶53).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the antenna module of Finn with the removal of the card chip and reinsertion into the card as taught by Vargas in order to insert the card chip into a user device (Vargas: ¶45-¶46) and reinsert for use in the card (Vargas: ¶53).
Regarding claim 11, Finn modified by Vargas teaches the method of claim 10 above and further teaches wherein a release of the chip module from a larger assembly as final process for forming the chip module and the forming of the chip module receptacle in the carrier take place simultaneously (Finn: ¶67).
Regarding claim 12, Finn modified by Vargas teaches the method of claim 10 above and further teaches wherein the forming the chip module receptacle in the carrier comprises a punching process (Finn: ¶67).
Regarding claim 13, Finn modified by Vargas teaches the method of claim 12 above and further teaches wherein a punching tool used for the punching process is used after the punching process for the releasable arrangement of the chip module in the chip module receptacle (Finn: ¶67).
Regarding claim 14, Finn modified by Vargas teaches the method of claim 10 above and further teaches wherein the forming the chip module receptacle comprises forming a through-opening or a formation of a cavity (Finn: ¶67).
Regarding claim 15, Finn modified by Vargas teaches the apparatus of claim 1 above and further teaches the method of removing the chip module from the chip module receptacle; and reinserting the chip module into the chip module receptacle for contact-based and/or contactless use of the chip arrangement (Vargas: ¶45; ¶53 - reinserted).
Regarding claim 16, Finn modified by Vargas teaches the method of claim 15 above and further teaches renewed removing the chip module from the chip module receptacle (Vargas: ¶45); and inserting the chip module into a wearable for contactless use of the wearable (Vargas: ¶28).
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive. In response to Applicant’s argument that Finn does not disclose or teach “such that the chip module can be removed from the chip module receptacle repeatedly” and Vargas does not cure this deficiency, the Examiner respectfully disagrees. Vargas teaches “the card chip can be removed from the user device and reinserted into the card” (¶53). While the teaching of methods of removal are characterized by the Applicant as destructive, reinsertion of the chip into the card clearly cures the deficiency of Finn. Therefore, the limitations of the claim are met.
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.
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/TOAN C LY/Primary Examiner, Art Unit 2876