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 .
Disposition of Claims
Claims 1-20 are pending in the instant application. No claims have been added. No claims have been cancelled. Claims 1, 8, and 15 have been amended. The rejection of the pending claims is hereby made final.
Disposition of Claims
35 USC 102(a)(1)
Applicant’s arguments and amendments have been considered by the examiner, and are found to be moot in view of the new grounds of rejection as presented below.
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.
Claims 1, 8, and 15 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The examiner submits that the only mention of particle emission by the terminal within Applicant’s disclosure as original filed is in paragraph [0050], where it states “The inert chip remains deactivated until it detects presence of an authorized POS or ATM. The chip is activated by the impulse of particles emitted by the terminal, as indicated by block 204.” Block 204 of Figure 2 merely reiterates that there is an impulse of particles emitted from the terminal that activates the particles. There is no detail regarding the type of particles emitted from the terminal, nor the interaction between the particles as emitted from the terminal and the IC chip of the smart card which causes the chip to go from inactive to active. Based on the limited information provided in the disclosure as originally filed by Applicant, the examiner submits that there is insufficient information to ascertain the metes and bounds of the aforementioned limitation, as recited in at least independent claims 1, 8, and 15. For at least the reasoning above, the newly added limitation fails to adequately enable one of ordinary skill to implement the method or system as recited in the pending claims. Appropriate correction and/or clarification is required.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sharp (US 2016/0012465) in view of Szeto (US 2018/0096326).
Regarding claim 1, the prior art discloses a system for utilizing electrically erasable memory for encrypted data retrieval(see at least paragraph [0900] to Sharp), the system comprising: a processing device; a non-transitory storage device containing instructions when executed by the processing device (see at least paragraph [0899] to Sharp), causes the processing device to perform the steps of: initiating a communication link with a server (see at least paragraph [0734] to Sharp) upon receiving an activation signal from a point-of-sale (POS) terminal or an automated teller machine (ATM) (see at least paragraph [0209] to Sharp); generating a unique cryptographic hash key and transmitting the unique cryptographic hash key to the server (see at least paragraph [0712] to Sharp); receiving an encrypted data packet from the server, wherein the encrypted data packet comprises transaction details(see at least paragraph [0712] to Sharp); temporarily storing the encrypted data packet in an electronically erasable programmable read-only memory (EEPRAM) of a resource instrument (see at least paragraph [0981] to Sharp); decrypting the encrypted data packet stored in the EEPRAM to retrieve the transaction details (see at least paragraph [0230] to Sharp); and erasing the transaction details from the EEPRAM subsequent to the completion of a transaction (see at least paragraph [0978] to Sharp).
Sharp does not appear to explicitly disclose activating an inserted chip via impulse of particle emission on an inactive chip based on detection of an authorized POS terminal or an authorized ATM.
However, Szeto discloses a system and method of processing unit based transactions, further comprising activating an inserted chip via impulse of particle emission on an inactive chip based on detection of an authorized POS terminal or an authorized ATM (see at least paragraph [0029] to Szeto, wherein user 102 may use value-payment card 104 (or cash) to purchase unit-payment card 106 storing redeemable amount of a product. POS terminal 124 may include a physical terminal for reading card information from any payment card (e.g., value-payment card 104 or unit-payment card 106) using magnetic strip technology or secure chip (e.g., EMV) technology. For example, magnetic strip technology may be implemented within the payment card to store data by modifying the magnetism of tiny iron-based magnetic particles on a band of magnetic material on the payment card).
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The examiner submits that the combination of the teaching of the system and method for distributing, receiving, and using funds or credits and an apparatus thereof, as disclosed by Sharp and the system and method of processing unit based transactions, as taught by Szeto, in order to initiate and automate a transaction at a terminal with limited human interaction and increased security of financial data could have been readily and easily implemented, with a reasonable expectation of success. As such, the aforementioned combination is found to be obvious to try, given the state of the art at the time of filing.
Regarding claim 2, the prior art discloses the system of claim 1, wherein the system is further configured to cause the processing device to perform the steps of: transmitting a user interface to the POS terminal or ATM to prompt a user to authenticate the transaction based on the transaction details; and conducting the transaction upon successful authentication by the user (see at least paragraph [0206] to Sharp).
Regarding claim 3, the prior art discloses the system of claim 2, wherein the user interface includes one or more input fields for receiving a personal identification number (PIN) or a biometric input from the user as a means of authentication (see at least paragraph [0679] to Sharp).
Regarding claim 4, the prior art discloses the system of claim 3, wherein the transaction restrictions include at least one of a transaction limit, geographic usage limit, or merchant category restriction (see at least paragraph [0716] to Sharp).
Regarding claim 5, the prior art discloses the system of claim 1, wherein the transaction details further comprise transaction restrictions of the resource instrument (see at least paragraph [0716] to Sharp).
Regarding claim 6, the prior art discloses the system of claim 1, wherein the system is further configured to cause the processing device to perform the step of: generating an alert if the unique cryptographic hash key fails to authenticate the POS terminal or the ATM, preventing the transaction from proceeding (see at least paragraph [1024] to Sharp).
Regarding claim 7, the prior art discloses the system of claim 1, wherein the EEPRAM is configured to overwrite any stored encrypted data packet with random data upon erasure to prevent data recovery via physical memory analysis (see at least paragraph [0900] to Sharp).
Claims 8-20 each contain recitations substantially similar to those addressed above and, therefore, are likewise rejected.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The examiner has considered all references listed on the Notice of References Cited, PTO-892.
The examiner has considered all references cited on the Information Disclosure Statement submitted by Applicant, PTO-1449.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALIA F CRAWLEY whose telephone number is (571)270-5397. The examiner can normally be reached on Monday thru Thursday; 8:30 AM-4:30 PM EST.
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, Fahd A Obeid can be reached on 571-270-3324. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALIA F CRAWLEY/Primary Examiner, Art Unit 3627