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 Arguments
Applicant’s arguments with respect to claim(s) 1-12 and 22-29 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.
Response to Amendment
Applicant’s Amendment filed on 03/16/2026 regarding claims 1-29 is fully considered. Of the above claims, claims 13-21 have been canceled; claims 1-2, 4-5, 8 and 11 have been amended; claims 22-29 have been newly added.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 11 and 22-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams et al. (US 5,979,771).
Regarding claim 1, Adams et al. teach a testing system (SIM contact position tester board 100; Figs 1A-1B), comprising:
a tester card configured to be inserted into a slot of a card reader configured to read a chip of a chip card (the SIM contact position tester 100 as inserted into the radio telephone housing 104 via the slot 103; column 2, lines 26-34), wherein a length of the tester card is divided into a first portion and a second portion (portion with sets of traces A-D and portion with light emitting diodes 106; FIG. 2);
wherein the first portion of the tester card includes an indicator configured to indicate a result of testing (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56) and the second portion of the tester card includes an electrical contact (eight SIM card interface contacts c1-c8 are configured to match up with the traces of trace sets A-D mounted on the PWB 102; FIG. 3; column 2, lines 57-64); and
wherein, responsive to the second portion of the tester card being inserted as fully as possible into the slot of the card reader, the indicator is configured to be activated if the electrical contact is operatively engaged with a chip reader of the card reader and remains inactive if the electrical contact is not operatively engaged with the chip reader of the card reader (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56; this causes the corresponding LEDs of the LED bank 106 to light up; column 3, lines 8-13; column3, lines 41-50; LEDs 106 do not lit up if the traces A-D do not slide over the internal contacts).
Regarding claim 2, Adams et al. teach wherein the tester card includes an electrical path between the indicator and the electrical contact (circuitry including a plurality of buffers embodied within integrated circuits 108a-108d couples the SIM card traces A-D and hence contacts c1-c8 with a plurality of light emitting diodes 106; column 2, lines 45-56); in a default state the electrical path is incomplete such that the indicator is not activated (when traces A-D are not in contact with contacts c1-c8; Figs 3-4); and with the second portion of the tester card inserted as fully as possible into the slot, the electrical path is configured to be complete between the indicator and the electrical contact (when traces A-D are in contact with contacts c1-c8; FIGs. 3-4).
Regarding claim 3, Adams et al. teach wherein the indicator includes a light, the indicator being activated includes the light being illuminated, and the indicator not being activated includes the light not being illuminated (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56).
Regarding claim 4, Adams et al. teach wherein, with the second portion of the tester card inserted as fully as possible into the slot, the indicator not being activated is indicative of foreign matter being present in the slot (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56; the LEDs 106 not being lit up could indicate foreign matter preventing the traces A-D from making contact with the contacts c1-c8).
Regarding claim 5, Adams et al. teach wherein, with the second portion of the tester card inserted as fully as possible into the slot, the first portion of the tester card is located outside of the slot (when the SIM contact position tester board 100 is fully inserted, the portion of the SIM contact position tester board 100 with the LEDs 106 is located outside; FIG. 1B).
Regarding claim 6, Adams et al. teach the card reader including the chip reader (the SIM card might record the subscriber telephone number, a personal identification number, as well as call charge information or a telephone number index; column 1, lines 12-20; the SIM being a chip).
Regarding claim 7, Adams et al. teach wherein the chip reader includes a chip pin configured to operatively engage the electrical contact (contacts c1-c8; Figs 3-4).
Regarding claim 8, Adams et al. teach wherein the tester card includes an electrical path between the indicator and the electrical contact (circuitry including a plurality of buffers embodied within integrated circuits 108a-108d couples the SIM card traces A-D and hence contacts c1-c8 with a plurality of light emitting diodes 106; column 2, lines 45-56);
in a default state the electrical path is incomplete such that the indicator is not activated (when traces A-D are not in contact with contacts c1-c8; Figs 3-4); and
with the second portion of the tester card inserted as fully as possible into the slot, the chip pin is configured to operatively engage the electrical contact so as to complete the electrical path between the indicator and the electrical contact (when traces A-D are in contact with contacts c1-c8; Figs 3-4).
Regarding claim 11, Adams et al. teach a testing method, comprising: inserting the second portion of the tester card as fully as possible into the slot such that the indicator is either activated or not activated (when the SIM contact position tester board 100 is fully inserted, the portion of the SIM contact position tester board 100 with the LEDs 106 is located outside; FIG. 1B).
Regarding claim 22, Adams et al. teach a testing device (SIM contact position tester board 100; Figs 1A-1B), comprising:
a tester card having a first portion and a second portion (the SIM contact position tester 100 as inserted into the radio telephone housing 104 via the slot 103; column 2, lines 26-34; portion with sets of traces A-D and portion with light emitting diodes 106; FIG. 2);
wherein the first portion includes an indicator configured to indicate a result of testing (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56) and the second portion includes an electrical contact (eight SIM card interface contacts c1-c8 are configured to match up with the traces of trace sets A-D mounted on the PWB 102; FIG. 3; column 2, lines 57-64); and
wherein the second portion is configured to be inserted into a slot of a card reader configured to read a chip of a chip card (the SIM card might record the subscriber telephone number, a personal identification number, as well as call charge information or a telephone number index; column 1, lines 12-20; the SIM being a chip), and
wherein, responsive to the second portion being inserted into the slot, the indicator is configured to be activated if the electrical contact is operatively engaged with a chip reader of the card reader and remains inactive if the electrical contact is not operatively engaged with the chip reader of the card reader (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56; this causes the corresponding LEDs of the LED bank 106 to light up; column 3, lines 8-13; column3, lines 41-50; LEDs 106 do not lit up if the traces A-D do not slide over the internal contacts).
Regarding claim 23, Adams et al. teach wherein the tester card includes an electrical path between the indicator and the electrical contact (circuitry including a plurality of buffers embodied within integrated circuits 108a-108d couples the SIM card traces A-D and hence contacts c1-c8 with a plurality of light emitting diodes 106; column 2, lines 45-56),
wherein the electrical path is configured to be incomplete in a default state such that the indicator is not activated (when traces A-D are not in contact with contacts c1-c8; Figs 3-4); and
wherein the electrical path is configured to be complete when the second portion is inserted into the slot (when traces A-D are in contact with contacts c1-c8; Figs 3-4).
Regarding claim 24, Adams et al. teach wherein the indicator includes a light configured to illuminated when activated (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56).
Regarding claim 25, Adams et al. teach wherein the indicator is configured to remain inactive if there is debris present in the slot (the LEDs 106 are configured to be lit up as the traces of each set A-D slide over the respective contacts internal to the radio telephone upon insertion of the PWB 102; column 2, lines 45-56; the LEDs 106 not being lit up could indicate debris preventing the traces A-D from making contact with the contacts c1-c8).
Regarding claim 26, Adams et al. teach wherein the first portion is located outside of the slot when the second portion is inserted into the slot (when the SIM contact position tester board 100 is fully inserted, the portion of the SIM contact position tester board 100 with the LEDs 106 is located outside; FIG. 1B).
Regarding claim 27, Adams et al. teach wherein the chip reader includes a chip pin configured to operatively engage the electrical contact (contacts c1-c8; Figs 3-4).
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.
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.
Claim(s) 9-10, 12 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 5,979,771) in view of Denton et al. (US 2024/0280719 A1).
Regarding claim 9, Adams et al. do not teach wherein a payment terminal includes the card reader, and the payment terminal is a fuel dispenser.
Further regarding claim 9, Denton et al. teach a payment terminal includes a card reader, and the payment terminal is a fuel dispenser (the card reader may include ATMs, fuel pumps, POS devices, or other devices that include a chip reader and present a possible device where a shimming device may be deployed; [0064]) for the purpose of using the testing system for a gas pump.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to incorporate wherein a payment terminal includes the card reader, and the payment terminal is a fuel dispenser, as taught by Denton et al., into Adams et al. for the purpose of using the testing system for a gas pump.
Regarding claim 10, Adams et al. do not teach wherein a payment terminal includes the card reader, and the payment terminal is one of a fuel dispenser, an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine.
Further regarding claim 10, Denton et al. teach a payment terminal includes a card reader, and the payment terminal is one of a fuel dispenser, an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine (the card reader may include ATMs, fuel pumps, POS devices, or other devices that include a chip reader and present a possible device where a shimming device may be deployed; [0064]) for the purpose of using the testing system for a gas pump.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to incorporate wherein a payment terminal includes the card reader, and the payment terminal is one of a fuel dispenser, an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine, as taught by Denton et al., into Adams et al. for the purpose of using the testing system for a gas pump.
Regarding claim 12, Adams et al. do not teach wherein a payment terminal includes the card reader, and the payment terminal is one of a fuel dispenser, an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine.
Further regarding claim 12, Denton et al. teach a payment terminal includes a card reader, and the payment terminal is one of a fuel dispenser, an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine (the card reader may include ATMs, fuel pumps, POS devices, or other devices that include a chip reader and present a possible device where a shimming device may be deployed; [0064]) for the purpose of using the testing system for a gas pump.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to incorporate wherein a payment terminal includes the card reader, and the payment terminal is one of a fuel dispenser, an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine, as taught by Denton et al., into Adams et al. for the purpose of using the testing system for a gas pump.
Regarding claim 28, Adams et al. do not teach wherein the card reader is of a payment terminal of a fuel dispenser.
Further regarding claim 28, Denton et al. teach a card reader is of a payment terminal of a fuel dispenser (the card reader may include ATMs, fuel pumps, POS devices, or other devices that include a chip reader and present a possible device where a shimming device may be deployed; [0064]) for the purpose of using the testing system for a gas pump.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to incorporate wherein the card reader is of a payment terminal of a fuel dispenser, as taught by Denton et al., into Adams et al. for the purpose of using the testing system for a gas pump.
Regarding claim 29, Adams et al. do not teach wherein the card reader is of a payment terminal of one of an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine.
Further regarding claim 29, Denton et al. teach a card reader is of a payment terminal of one of an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine (the card reader may include ATMs, fuel pumps, POS devices, or other devices that include a chip reader and present a possible device where a shimming device may be deployed; [0064]) for the purpose of using the testing system for an ATM.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to incorporate wherein the card reader is of a payment terminal of one of an automatic teller machine, an electrical charging kiosk, an air machine, and a vending machine, as taught by Denton et al., into Adams et al. for the purpose of using the testing system for an ATM.
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 KENDRICK X LIU whose telephone number is (571)270-3798. The examiner can normally be reached MWFSa 10am-8pm.
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, Douglas X Rodriguez can be reached at (571) 431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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5 April 2026
/KENDRICK X LIU/Examiner, Art Unit 2853
/DOUGLAS X RODRIGUEZ/Supervisory Patent Examiner, Art Unit 2853
Prosecution Insights