DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-5, 7-11, 13-18, 20 and 24-26 are pending.
Claims 6, 12, 19 and 21-23 are canceled.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 5, 7-11, 13-16, 18, 20 and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. US10218412B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations in the above indicated claims of the instant application are anticipated by the respective claimed limitations in the above indicated claims of U.S. Patent No. US10218412B1. See the claim anticipation mapping below.
Instant application
Claims
Patent US10218412B1
Claims
1/8/15
1, 5
2/16
1, 7
3
4/17
5/11/18
1
7
1, 2, 10
9
7, 8
10
8, 16
13
8, 11
14
7, 8
20
7, 8
24/25/26
1, 7
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-5, 7-11, 13-18, 20 and 24-26 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim(s) 1, 8 and 15 recite “wherein when the remaining power level is less than the second amount of power, the NFC device is configured in an unpowered mode and cannot perform the contactless transaction”. There is no support for the claimed limitation found in the specification.
This added limitation directly contradicts the entire premise of the "unpowered mode" as described in the provided specification (S0). The specification repeatedly and explicitly states that the unpowered mode is designed specifically so the device can perform the transaction by relying entirely on an externally-generated field:
"The contactless transaction may be performed using only power from an external NFC field when the contactless transaction is performed in the unpowered mode.", [0003]
"The wireless transaction may be performed without using power from the power source internal to the NFC device
"By performing a transaction using power from an externally-generated NFC field when the internal power source does not have sufficient power to perform the transaction, the NFC device may ensure that the transaction can be performed regardless of the power level of the internal power source.", [0021]
Because the specification dictates that the unpowered mode is a deliberate fallback mechanism intended to ensure the transaction can be performed, amending the claims to state that the device "cannot perform" the transaction introduces a negative limitation that is entirely unsupported by, and contradictory to, the original disclosure.
Claim(s) 2-5, 7, 9-11, 13-14, 16-18, 20 and 24-26 is/are rejected under 112(a) for the same reason as given in their respective base claim(s).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim(s) 1-5, 7-11, 13-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hall et al (US20130084803) in view of Royston et al (US20150237584A1).
Regarding claims 1, 8 and 15, Hall teaches a near field communication (NFC) device, comprising:
an internal power source;
an NFC antenna integrated with a secure element; and
(Hall, Fig. 2, a mobile communication device containing an NFC device; battery 208, secure element 212, NFC antenna 206, and NFC controller/radio 204; secure element 212 and NFC antenna may be collocated/integrated together as an expected design choice of modular designs)
one or more components, at least partially implemented in hardware, configured to:
determine one or more factors associated with powering a contactless transaction; and
(Hall, determine that secure element 212 requires very little power to maintain active (because “secure data is only retained in secure element 212, which requires power at all times to retain data”, [0036]), and be able to provide its stored data for NFC contactless transaction using NFC field power, “Secure element 212 draws very little power from battery 208 (on the order of several μamps). Even when battery power is so low that mobile device 200 is effectively turned off and the NFC device must operate in field power mode, there will likely be sufficient battery power available to maintain power to secure element 212 for several days and keep the information stored in secure element 212 alive until the user can recharge the battery”, [0029]; determining the battery level, which is a factor for powering the contactless transaction which requires the information stored in the secure element)
selectively configure, based on a remaining power level of the internal power source and determining the one or more factors, one or more applications in association with the secure element,
wherein the one or more applications are associated with performing the contactless transaction, and
(Hall, Fig. 3, very low power mode 306; “As battery power further decreases, NFC controller 204 will instruct host CPU 202 to transition mobile device 200 to a very low power mode 306. In this mode, battery 208 provides enough power to maintain secure element (“keep alive memory”) 212 active. The data in keep alive memory 212, called “personality data,” is stored in secure element 212 and may include secure information and the types of credit cards for which mobile device 202 acts as a card emulation device. All other power to the NFC device is harvested from the field (i.e., supplied by a reader). The NFC device may act as a tag, and communicate with a reader to transmit (e.g., credit card) information to the reader. In this mode, battery 208 provides power to memory 212 to keep the memory “alive.” All other functionality is provided by power harvested from the field”, [0034]; configuring the device to be used as an NFC tag (an application) based on battery level)
wherein the one or more applications are further configured based on a time period associated with the remaining power level, a first amount of power and a second amount of power,
(Hall, "determine when to transition to a lower power mode as a function of the amount of time the mobile device has been "on" and drawing power (as the "on" time has a direct relationship to the amount of battery power that has been used)", [0033]; Royston, "4 available power modes (e.g.: 00, indicating no power at all; 01 indicating enough power to run applications on its OTP memory; 10 indicating enough power to run applications on a separate NV memory; and 11 indicating enough power to run all applications).", [0056]; Incorporating Royston into Hall configures the applications based on multiple power amount thresholds (modes 00, 10, 11) and the device's "on" time period associated with remaining battery power)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the teachings of Royston into the system or method of Hall in order to configure the applications based on multiple power amount thresholds (modes 00, 10, 11) and the device's "on" time period associated with remaining battery power. The combination of Hall and Royston also teaches other enhanced capabilities.
The combination of Hall and Royston further teaches:
wherein when the remaining power level is greater than or equal to a first amount of power, the NFC device is configured in a powered mode to load the one or more applications onto the secure element to perform the contactless transaction,
(Royston, "11 indicating enough power to run all applications", [0056]; Hall, "fully battery powered mode", [0030]; Hall and Royston teach operating in a high-power mode where the remaining power level allows loading and running all applications)
wherein when the remaining power level is less than the first amount of power but greater than or equal to the second amount of power, the NFC device is configured in a powered mode to load an application, of the one or more applications, onto the secure element to perform the contactless transaction, and
(Royston, "10 indicating enough power to run applications on a separate NV memory", [0056]; "if the NFC device is executing in power mode 10, it sends only applications 409 and 410 to the reader.", [0057]; a middle power mode loads only a subset (an application) of the one or more applications for contactless transactions)
wherein when the remaining power level is less than the second amount of power, the NFC device is configured in an unpowered mode and cannot perform the contactless transaction.
(Hall, "Since there is no battery power at all available in this mode, secure "personality data" would not be retained if only keep alive memory 212 were available.", [0036]; Royston, "00, indicating no power at all", [0056]; Hall and Royston teach that below a threshold amount of power (e.g., mode 00 / 0 battery), the unpowered device cannot retain secure memory or perform the application transactions)
Regarding claims 2, 14 and 16, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the NFC device of claim 1, wherein the one or more components are further configured to:
determine a type of transaction associated with the contactless transaction,
wherein the type of transaction is one or more of:
a financial transaction,
an access transaction,
a fare card transaction,
a transit transaction,
a ticketing transaction,
an authentication transaction, or
an identity verification transaction.
(Hall, “The NFC device may act as a tag, and communicate with a reader to transmit (e.g., credit card) information to the reader”, [0034])
Regarding claim 3, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the NFC device of claim 1, wherein the one or more components are further configured to:
increase, based on the one or more factors, a range associated with the contactless transaction based on performing the contactless transaction in a powered mode.
(Hall, Fig. 3, when the remaining battery power is in low power mode 304, greater than the very low power mode 306 (lower power mode), the NFC transaction does not need to charge the NFC tag (NFC device) and is for communication only, so in this mode the NFC transaction range is greater than that in the lower battery mode 306 (NFC communication range > NFC battery charging range), “In this low power mode 304, battery 208 continues to provide power to the NFC device such that the NPC device can act as a tag in a card emulation mode. In this low power mode, the field need not be as strong as it must be in lower power modes and the NFC device can operate over a greater range than in the lower power modes”, [0032])
Regarding claims 4 and 17, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the NFC device of claim 1, wherein the one or more factors identify an amount of power needed to power other components of the NFC device.
(Hall, see comments on claim 1; very little power is needed to power secure element 212 for, e.g., credit card applications, [0029, 0034])
Regarding claims 5, 11 and 18, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the NFC device of claim 1, wherein the one or more factors identify an amount of time to harness power from an NFC field generator to power the contactless transaction.
(Hall, see comments on claim 1; very little power left in battery 208 can maintain power to secure element 212 for several days for, e.g., credit card applications, “Even when battery power is so low that mobile device 200 is effectively turned off and the NFC device must operate in field power mode, there will likely be sufficient battery power available to maintain power to secure element 212 for several days and keep the information stored in secure element 212 alive until the user can recharge the battery”, [0029, 0034])
Regarding claim 7, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the NFC device of claim 1, wherein the one or more components, to selectively configure the one or more applications, are configured to:
selectively prevent the one or more applications from being loaded onto the secure element.
(Hall, see comments on claim 1; the credit card application ([0034]) may be the only application loaded to secure element 212 in the very low power mode 306)
Regarding claim 9, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the non-transitory computer-readable medium of claim 8, wherein the one or more factors identify a type of transaction associated with the contactless transaction.
(Hall, see comments on claims 4-5)
Regarding claim 10, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the non-transitory computer-readable medium of claim 8, wherein the contactless transaction comprises an exchange of information via NFC.
(Hall, see comments on claim 1; credit card transaction, [0034])
Regarding claim 13, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the non-transitory computer-readable medium of claim 8, wherein the one or more instructions, that cause the NFC device to selectively configure the one or more applications, cause the NFC device to:
configure a basic transaction application based on a first amount of power, or
configure a transaction application, associated with increased security compared to the basic transaction application, based on a second amount of power.
(Hall, see comments on claim 1; requires a minimum battery power to maintain secure information in the secure element 212 for credit card transaction applications)
Regarding claim 20, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination further teaches the method of claim 15, wherein the one or more factors comprise:
a preference of a user of the NFC device for performing the contactless transaction,
a preference of a merchant associated with the performing the contactless transaction, or
(Hall, credit card transaction, [0034], may either user’s preference or a merchant’s preference for using NFC transaction)
a preference of a third party associated with performing the contactless transaction.
Claim(s) 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hall et al (US20130084803) in view of Royston et al (US20150237584A1) and further in view of Castell et al (US20140298411A1).
Regarding claims 24-26, the combination of Hall and Royston teaches its/their respective base claim(s).
The combination does not expressly disclose but Castell teaches the NFC device of claim 1, wherein the NFC device is configured to perform a different transaction in the powered mode or the unpowered mode based on a preference of a transacting party.
(Castell, "the customer may select the secure element or the manageability engine based on security concerns, processing capabilities, performance, business concerns, or trust issues", [0010]; configuring how a transaction is processed based on the selection of the customer (a transacting party). It would have been obvious to combine the powered/unpowered mode operations of the primary prior art with the customer-selected processing configuration of Castell to allow the NFC device to perform different transactions based on the preference of a transacting party to meet user-specific security or performance needs.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to incorporate the powered/unpowered mode operations of the primary prior art with the customer-selected processing configuration of Castell into the modified system or method of Hall and Royston in order to allow the NFC device to perform different transactions based on the preference of a transacting party to meet user-specific security or performance needs. The combination of Hall, Royston and Castell also teaches other enhanced capabilities.
Response to Arguments
Applicant's arguments filed on 5/11/2026 with respect to one or more of the pending claims have been fully considered but are moot in view of the new ground(s) of rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 JIANXUN YANG whose telephone number is (571)272-9874. The examiner can normally be reached on MON-FRI: 8AM-5PM Pacific Time.
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/JIANXUN YANG/
Primary Examiner, Art Unit 2662 7/12/2026
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