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 and 20-23 are pending.
Claims 6, 12 and 19 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, 5, 8, 11, 15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. US11824598 in view of Assad et al (US20120317432). 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. US11824598. See the claim anticipation mapping below.
Instant application
Claims
Patent US11824598
Claims
1, 8, 15
1, 8, 15 in view of Assad et al (US20120317432), see the 103 rejection below.
5
1
11
1
18
1
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 Buchsbaum et al (US20150333397) and further in view of Assad et al (US20120317432).
Regarding claims 1, 8 and 15, Hall teaches a near field communication (NFC) device, comprising:
an internal power source;
an NFC antenna
(Hall, Fig. 2, a mobile communication device containing an NFC device; battery 208, secure element 212, NFC antenna 206, and NFC controller/radio 204)
Hall does not expressly disclose but Buchsbaum teaches:
... integrated with a secure element;
(Buchsbaum, Fig. 1; “the components of the NFC system, for example the antenna, the matching circuit, the front-end (generally modulation circuit) and the secure element, are fully integrated”, [0031])
Therefore, 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 Buchsbaum into the system or method of Hall in order to integrate NFC circuitry/antenna with the secure element for small er circuit size, stable performance, and less parasitic power loss. The combination of Hall and Buchsbaum also teaches other enhanced capabilities.
The combination of Hall and Buchsbaum further teaches:
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 of the NFC device,
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)
The combination of Hall and Buchsbaum does not explicitly disclose but Assad teaches: wherein the one or more applications are further configured based on a time period associated with the remaining power level and a time threshold,
(Assad, Fig. 2; “The identified, expected execution is adjusted based on the determined execution context and an estimated remaining battery life for the computing device”, [0003]; remaining battery life means remaining operational time of the battery; “If the computing device 102 identifies at 204 an expected execution of at least one of the operations 118 during a later time period (e.g., a recurrence of one of the recurring time periods), the computing device 102 considers at 206 whether to adjust execution of the operation 118 based on the execution context 116 and the estimated remaining battery life of the computing device 102. For example, the computing device 102 may suppress or reschedule execution of the operation 118 to conserve the estimated remaining battery life”, [0032]; computing remaining time and adjusting operations when time remaining is less than a target time window (i.e., time threshold); configuring behavior of device operations/apps based on time-remaining vs time-threshold; obviously, whether or not to change operations of the application (e.g., in Hall, whether or not to use the NFC device as an NFC tag which uses the harvested NFC power to power the tag application) depends on whether or not the estimated remaining battery life (time) is less than or greater than the time period (recurrent time) for the application mode that would require power from the battery)
Therefore, 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 Assad into the modified system or method of Hall and Buchsbaum in order to determine the operation modes of an NFC device based on the remaining battery life of the device so that the NFC device can provide more adaptive functionalities. The combination of Hall, Buchsbaum and Assad also teaches other enhanced capabilities.
The combination of Hall, Buchsbaum and Assad further teaches:
wherein when the time period is greater or equal to the time threshold, then the NFC is configured in a powered mode to perform the contactless transaction, and
(Assad, “The computing device 102 may analyze the battery records 112 to infer power statistics. For example, the computing device 102 may identify operations 118 or applications 110 that consume significant battery power, may predict battery drain for the computing device 102 over a particular time period, and/or may identify time periods during which power consumption is low. The computing device 102 may predict the battery drain, or estimate the likelihood of continuing to be powered on, by estimating, based on the battery records 112, the remaining battery life for the computing device 102”, [0034]; predicting future battery usage and estimating remaining battery life, and identifiing time periods of low power consumption (=> “time period”); e.g., the power level in the identified low power period may correspond to the operation mode of 306 of Hall in Fig. 3 for powering the NFC tag (a contactless transaction mode which requires information in the battery powered secure element); (Hall, “... 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. That is, the NFC device draws its power from the field generated by a reader”, [0034]); obviously, successful contactless transaction in the NFC tag mode (Hall, Fig. 3, mode 306) will be possible if the identified low power consumption period (=> “time period”) is greater than the time required for the contactless transaction (=> “time threshold”) because there is sufficient battery power for powering the secure element such that the information from the secure element is available for the contactless tag transaction)
wherein when the time period is less than the time threshold, the NFC is configured in an unpowered mode and cannot perform the contactless transaction.
(Assad, Hall, otherwise, successful contactless transaction in the NFC tag mode (Hall, Fig. 3, mode 306) will not be possible if the identified low power consumption period (=> “time period”) is less than the time required for the contactless transaction (=> “time threshold”) because there is no battery power for powering the secure element such that the information from the secure element is unavailable for the contactless tag transaction)
Regarding claims 2, 14 and 16, the combination of Hall, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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, Buchsbaum and Assad 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.
Response to Arguments
Applicant's arguments filed on 12/8/2025 with respect to one or more of the pending claims have been fully considered but they are not persuasive.
Regarding claim(s) 1, 8 and 15, Applicant, in the remarks, argues that the combination of the cited reference(s) fails to teach the newly amended limitations in the claims.
The Examiner respectfully disagreed. The office action has been updated to address applicant’s argument. See the updated review comments for details.
Conclusion
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.
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, Amandeep Saini can be reached on (571)272-3382. 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.
/JIANXUN YANG/
Primary Examiner, Art Unit 2662 2/7/2026