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 .
Claim Status
Claims 1, 3-7, and 21-22 are pending.
Claim 1 is independent and is currently amended.
Claims 21-22 are new.
Claims 3-7 are original.
Response to Arguments
Applicant's arguments filed 12/26/2025 have been fully considered but they are not persuasive.
35 U.S.C. 101
Applicant’s arguments regarding the prior rejection of claims 1 and 3-7 under 35 U.S.C. 101 as being directed to an abstract idea without significantly more have been considered but are not persuasive.
Applicant argues that the claims are directed to a particular machine or manufacture because they are directed to a transaction card and improvements thereof.
The argument is not persuasive. With regards to representative claim 1, the claim is deemed to set forth or describe an abstract idea because of the limitations drawn to facilitating transactions and providing authentication credentials related to a financial institution. Thus, the claims recite an abstract idea under Step 2A Prong 1.
Proceeding to Step 2A Prong 2, the additional elements, including (1) first surface with first machine-readable component; and (2) second surface with second machine-readable component, are both claimed and described in the specification at a high level of generality such that they do not convey a technical improvement to one of ordinary skill in the art. These additional elements are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As such, the claim rejections are maintained herein.
35 U.S.C. 103
Applicant’s arguments regarding the prior rejection of claims 1 and 3-7 under 35 U.S.C. 103 have been considered but are moot in view of the new grounds of rejection necessitated by amendment presented herein.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 22, the claim recites “The transaction card of claim 2…”. However, claim 2 is canceled. Here, the claim is indefinite because the metes and bounds of the claim cannot be determined.
For purposes of further examination, the claim is interpreted as being dependent on claim 1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-7, and 21-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1, 3-7, and 21-22 are directed to a product, and thus fall within the statutory categories of invention. (Step 1: YES).
Step 2A - Prong 1
The Examiner has identified independent product claim 1 as the claim that represents the claimed invention for analysis. Claim 1 recites the limitations of:
1. A transaction card, comprising:
a substrate having an irregular polygonal shape defining a stepped configuration, wherein the substrate is asymmetric along at least one axis and that includes:
a first surface having a first machine-readable component displayed thereon to facilitate contactless financial transactions, and
a second surface, opposite the first surface, having a second machine-readable component displayed thereon and which contains client authentication credentials and a link to facilitate an automatic launch of a financial institution mobile application or a financial institution web application.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The claim limitations delineated in bold above recite a fundamental economic practice, as they pertain to facilitating transactions and providing authentication credentials related to a financial institution. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The transaction card in claim 1 is just applying generic computer components (machine-readable components) to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: YES. The claim recites an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. In particular, independent claim 1 recites the additional elements of:
Claim 1: transaction card (preamble); substrate including (1) first surface with first machine-readable component; and (2) second surface with second machine-readable component
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim 1 is directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware/software amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claim 1 is not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 3-7 and 21-22 further define the abstract idea that is present in independent claim 1 and thus corresponds to “Certain Methods of Organizing Human Activity” and hence are abstract for the reasons presented above.
The dependent claims recite the following additional elements.
Claim 3: smart chip
Claim 4: two-dimensional, machine-readable barcode
Claim 5: automatic launch of application
Claim 6: automatic population of authentication fields
Claim 7: automatic transmission of a command to accept credentials
The dependent claims, when considered both individually and as an ordered combination, do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception. The additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide a practical application or an inventive concept.
Therefore, the dependent claims are directed to an abstract idea without significantly more.
Thus, claims 1, 3-7, and 21-22 are not patent-eligible.
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, 3-7, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Stern (US 2018/0144229 A1) in view of Malhotra (US 2022/0261774 A1), further in view of Mastercard Touch Card (“A new Mastercard design is meant to make life easier for visually impaired users”, attached).
Regarding claim 1, Stern discloses a transaction card, comprising:
a substrate that includes:
a first surface having a first machine-readable component displayed thereon to facilitate contactless financial transactions (see Fig. 3A, EMV component 230), and
a second surface, opposite the first surface, having a second machine- readable component displayed thereon and which contains client authentication credentials (see Fig. 3B, para. 0048).
Stern does not explicitly disclose, but Malhotra teaches a link to facilitate an automatic launch of a financial institution mobile application or a financial institution web application (see para. 0038).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the card of Stern to include the feature of Malhotra.
One of ordinary skill in the art would have been motivated to make the modification to facilitate funds transfers (see Malhotra, para. 0036-0038).
Stern does not explicitly disclose, but Mastercard Touch Card teaches an irregular polygonal shape defining a stepped configuration, wherein the substrate is asymmetric along at least one axis (see pg. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the card of Stern to include the feature of Mastercard Touch Card.
One of ordinary skill in the art would have been motivated to make the modification to help locate the right card by touch alone (see Mastercard Touch Card, pg. 2).
Regarding claim 3, Stern discloses wherein the first machine-readable component comprises a smart chip (see Fig. 3A, EMV component 230).
Regarding claim 4, Stern discloses wherein the second machine-readable component comprises a two-dimensional, machine-readable barcode (see para. 0048).
Regarding claim 5, Malhotra teaches wherein the second machine-readable component facilitates, in response to a capture of the client authentication credentials by a computing device, an automatic launching of a financial institution mobile application or a financial institution web application on the computing device (see para. 0036-0038).
Regarding claim 6, Malhotra teaches wherein the second machine-readable component facilitates, in response to a capture of the client authentication credentials by a computing device, an automatic population of client device authentication fields with the captured client authentication credentials on a user interface of the computing device (see para. 0042, 0061-0065).
Regarding claim 7, Malhotra teaches wherein the second machine-readable component facilitates, in response to a capture of the client authentication credentials by a computing device, automatic transmission of a command to a second computing device to accept the authentication credentials (see para. 0042, 0061-0065).
Regarding claim 21, Mastercard Touch Card further teaches wherein the stepped configuration of the irregular polygonal shape includes at least two adjacent edges defining an interior angle that is greater than 180 degrees (see pg. 1).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Stern (US 2018/0144229 A1) in view of Malhotra (US 2022/0261774 A1), further in view of Mastercard Touch Card (“A new Mastercard design is meant to make life easier for visually impaired users”, attached), further in view of Williams (US 2009/0039154 A1).
Regarding claim 22, Stern does not explicitly disclose, but Williams teaches wherein the substrate further includes an aperture that extends from the first surface to the second surface to facilitate connection of the transaction card to a keychain (see Fig. 1A, aperture 26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the card of Stern to include the feature of Williams.
One of ordinary skill in the art would have been motivated to make the modification because a need exists for a card that may be clipped or otherwise attached to a keychain (see Williams, para. 0007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pentz (US 2003/0222153 A1) discloses a data card reduced in size from the conventional standard size credit card. Accessibility of the card is enhanced because the card may be stored in a separate location from conventionally sized cards, such as on a key-chain or similar device. The card of the present invention has a means for storing information, such as a magnetic stripe or computer chip.
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 ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693