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
Applicant’s “Response to Amendment and Reconsideration” filed on 11/24/2025 has been considered.
Claims 1-20 are pending in this application and an action on the merits follows.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being obvious over Teuwen et al. (U.S. Patent Publication No. 2014/0291392), in view of Fisher et al. (U.S. Patent Publication No 2012/0150601).
Regarding claims 1, 12 and 20, Teuwen teaches a method of using a mobile wallet application executing at a mobile device and a smart card having a programmable chip, the method comprising:
establishing, by the programmable chip, a first wireless communication path between the mobile wallet application and the smart card, (the communication link between the smart phone and the smartcard is typically compliant with existing smart phone wireless low power short range connectivity solutions such as BLUETOOTH Low Energy (BLE) or NFC (Near Field Communication, [8]),
receiving, by the programmable chip, mobile wallet identification data from the mobile wallet application via the first wireless communication path, (Smartcard 120 functions as a relay between POS 130 or 135 and smart phone 125 with adequate protocol encapsulation and transformation, [12]);
determining, by the programmable chip, that the mobile wallet application and the smart card are companions, the determining being based at least in part on the mobile wallet identification data and a unique device identifier for the mobile wallet application stored at the smart card; (all communication links between the smart phone and the smartcard must be authenticated and secured. Hence, an initial pairing between the digital wallet and the smartcard is typically required, [9]),
establishing, by the programmable chip, communication between the smart card and a Point of Sale (POS) device over a second and /or ISO 14443 (contactless/NFC card). The smartcard is powered by the POS typically via the ISO 7816 contacts and/or ISO 14443 (contactless/NFC), [8]),
the establishing being while the smart card and the mobile wallet application communicate over the first wireless communication path; (A smartcard communicating simultaneously with a smart phone and a point of sale, thereby allowing the smartcard to act as a bridge between the point of sale and the smart phone, see abstract).
Teuwen substantially discloses the claimed invention, however, does not explicitly disclose receiving, by the programmable chip, supplemental data from the mobile wallet application and sending, by the programmable chip, the supplemental data and transaction request data to the POS device. Teuwen teaches transmitting payment transaction data and smartcard 12- functions as a relay between POS 130 or 135 and smartphone 125, [12].
However, Fisher discloses the mobile application 200 running on the mobile communication device 102 is configured to receive artifacts (e.g., advertisements, receipts, tickets, coupons, media, content, [27], If the consumer has coupons in their mobile wallet the consumer can either elect to manually apply the coupon, save the coupon for a future use (against a larger purchase for example), or have the coupon automatically applied during the transaction and the transaction amount is updated, [29]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention, to modify the method of Teuwen, to include the above limitations, as taught by Fisher, in order to enhance payment transactions by enabling additional wallet functionality, (Fisher, [27]).
Regarding claims 2-3, 13-14, Teuwen teaches sending identification data from the mobile wallet to the smart card over the first wireless communication path; and determining that the identification data matches a unique device identification for the mobile wallet stored at the smart card; the smart card comprising a memory having a non- resident data portion that is accessible to the mobile wallet and a resident data portion that is inaccessible to the mobile wallet, the method further comprising storing the supplemental data at the non-resident data portion of the memory; (authenticate through pairing, [9], secure, non-secure, [8]).
Regarding claims 4-11, 15-19, Teuwen does not explicitly teach, however, Fisher teaches the supplemental data comprising location data indicating a location of the mobile device; (The correlation engine 300 can correlate user profile information (e.g., location, gender, age, interest, affiliations, etc.) stored in the user profile database 302 with other data (historical payment transactions, real-time payment transactions, etc.) stored in the artifacts database 304, and/or location of a user to provide more relevant targeting parameters for which to target, identify and distribute relevant artifacts to a user, [84]);
the transaction request data comprising unique account information describing a mobile wallet element, (storage of banking information (payment account numbers, security codes, [24]);
the supplemental data comprising time data for the mobile wallet and sending the supplemental data to the POS device includes sending the time data for the mobile wallet to the POS device, (The mobile wallet can retrieve transaction data, account balance from the management server 408, [29]);
receiving a request for time and location data from a processing network, the sending of the time and location data to the POS device occurring in response to the request, (The transaction server 170 that receives the one transaction request signal from the point-of-sale terminal 150 verifies the transaction, [42]),
the supplemental data comprising coupon data from the mobile wallet and sending the supplemental data to the POS device includes sending the coupon data for the mobile wallet to the POS device; (data may need to be stored on a mobile communication device in the following circumstances. Payment credentials, coupons, tickets, and so on may have to be stored on the secure element of an NFC phone, [90]);
enabling or disabling the smart card using the mobile wallet; sending a time period of usage from the mobile wallet to the smart card and disabling the smart card upon expiration of the time period; sending authentication data from the mobile wallet to the smart card while the smart card is in communication with the POS device, see claim 13, conventional features.
Response to Arguments
Applicant’s arguments with respect to 35 U.S.C. 101 rejection has been considered. The claims integrate the abstract idea into a practical application. The claims elements describe a specific communication architecture including programmable smart card, two distinct wireless communication paths, communication bridging between wallet and POS.
Applicant’s arguments with respect to prior art rejection 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.
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 MILENA RACIC whose telephone number is (571)270-5933. The examiner can normally be reached M-F 7:30am-4pm EST.
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/MILENA RACIC/Patent Examiner, Art Unit 3627
/FLORIAN M ZEENDER/Supervisory Patent Examiner, Art Unit 3627