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 .
Claims Status
Claims 13-15 are canceled, therefore claims 1-12 and 16-21 are pending for examination in this Office action.
Examiner’s Note
Even though the claims 16-21 are listed as original, the claims are newly added and interpreted as such.
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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 10-12, 16, 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenburg (Rosenberg; US 2004/0235450) in view of Burger et al. (Burger; US 2003/0220876), Von Mueller (hereinafter Von; US 2006/0049256) and further in view of Cox et al. (Cox; US 2007/0131759 with provisionally filed application numbers 60/750,270, 60/785,329 and 60/804,615).
As per claim 1, Rosenbergy teaches a device configured to transmit a secure signal to a system for performing a secure transaction, the device comprising:
a biometric sensor (a PIN input module to establish a user’s authentication, see e.g. para. [0129], wherein the mobile phone can comprise a biometric interface, see e.g. para. [0170], for authentication);
a display (see e.g. para. [0086);
a selector through which a user input is received (choosing which financial account to be used for payment, see e.g. para. [0080], which means the disclosed system inherently comprises a selector to choose);
at least one proximity module (a smart link module, see e.g. para. [0042], which is indirectly coupled to the software or hardware switch);
a controller which has access to a device serial number which is unique to hardware of the device (one or more processors and an electronic serial number, see e.g. para. [0051], [0052], and [0061], wherein the serial number is unique to the device which is sent during a transaction, which means the controller has access to the serial number) which is operated to:
receive, via the biometric sensor, input of a biometric signal (a user inputs his/her PIN number, see e.g. para. [0087], via the PIN pad or other means, wherein a biometric signal would be inputted in case of a biometric authentication module as discussed earlier);
perform a matching process, thereby to match received biometric data extracted from the received biometric signal with stored biometric data from a biometric signature contained in memory of the device (the PIN number is compared with stored PIN numbers, see e.g. para. [0066], wherein a biometric signal would be compared with a stored biometric signal in case of a biometric authentication module as discussed earlier), wherein a database of biometric signatures is maintained in the memory of the device (wherein it would have been obvious to a skilled person that the biometric signal can be maintained in the phone memory or stored remotely on a server and authentication can be done when a user inputs his/her biometric data);
cause the at least one proximity module to transmit a secure signal conveying information to the system when the proximity module is placed within range of a radio frequency field emitted by the system (upon a match, providing a control signal to enable contactless communication to transmit information to a POS terminal when placed near the POS terminal; see e.g. para. [0066-68] and [0021]);
wherein the system is configured to, in response to receipt of the secure signal, communicate with a back-end host server thereby to perform a secure transaction (upon successful authentication of the user and POS receiving a signal, communicating with a back-end server, 450 for example, to perform a secure transaction; see e.g. [0097]).
Rosenberg fails to teach the biometric sensor of the device was used to enroll the biometric signature contained in memory of the device, wherein the transmission of the data including the first data component and second data component; wherein the secure transaction is performed based on verification of transaction data including verification based on processing of the first data component and the second data component by the back-end host server, wherein the second data component is unique for each transaction and wherein the unique dynamic code is unique for the transaction. Furthermore, Rosenburg fails to teach the claimed, present data representative of a plurality of payment options on the display; receive, via the selector, user input indicative of a selected payment option selected from the plurality of payment options presented; present, via the display, feedback indicating the selected payment option; generate data including a first data component that is unique to the device and a second data component that provides a unique dynamic code for a transaction, wherein the unique dynamic code is unique for the transaction.
Burger, however, teaches present data representative of a plurality of payment options on the display; receive, via the selector, user input indicative of a selected payment option selected from the plurality of payment options presented; present, via the display, feedback indicating the selected payment option (the disclosed system is capable of carrying out numerous task, i.e. carrying out a financial transaction as well as unlocking key for a hotel room, see e.g. para. [0127], wherein the disclosed system further teaches showing a user’s selection between a first media and second media and showing on the display which of the media is selected and transferring at least a portion of the transaction information from the device to POS wherein the media is associated with a financial media and a non-financial media, see e.g. para. [0021-25], further wherein holder's preferred credit card as the selected menu item, see e.g. para. [0242]); generate data including a first data component that is unique to the device (serial number of the device; see e.g. para. [0161]) and a second data component that provides a unique dynamic code for a transaction (Burger further teaches that the data is encoded or signed using one way cryptographic key, see e.g. para. [0161], wherein the key or code can be dynamic or static as known in the art of cryptography),
Rosenberg and Burger are in same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the purpose of improving data security by using a cryptographic key when transmitting data.
Rosenberg and Burger do not explicitly teach the biometric sensor of the device was used to enroll the biometric signature contained in memory of the device, wherein the transmission of the data including the first data component and second data component; wherein the secure transaction is performed based on verification of transaction data including verification based on processing of the first data component and the second data component by the back-end host server, wherein the second data component is unique for each transaction and wherein the unique dynamic code is unique for the transaction.
Von teaches transmission of the data including the first data component and second data component (data comprising one or more data components, see e.g. serial number, time, counter or random number and encryption key and so forth; see e.g. FIGS. 4, 5); wherein the secure transaction is performed based on verification of transaction data including verification based on processing of the first data component and the second data component by the back-end host server (wherein it is evident these data components are expected and validated when a communication is made with a back-end server to carry out a transaction with a bank 218, for example; see e.g. FIG. 23 and para. [0116]), wherein the second data component is unique for each transaction and wherein the unique dynamic code is unique for the transaction (the time, the counter, or the random number, see e.g. FIGS. 4, 5, and 23, is unique for each transaction as known in the art). Von further teaches a serial number unique to device hardware (magnetic strip card reader (MSR) serial number), and include that data in a transaction data (sent to a mobile device and to a server eventually); see e.g. para. [0112-114]. This means that one or more controllers have access to the MSR serial number for the retrieval and the communication.
Rosenberg, Burger and Von are in same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the purpose of improving data security by using a random number or time when transmitting data as suggested by Von (see e.g. para. [0035]).
Even though the prior art references disclosed above teach one or more biometric authentication using a local database, it is submitted for the sake of compact prosecution that Rosenberg, Burger and Von do not explicitly the claimed biometric sensor of the device was used to enroll the biometric signature contained in memory of the device.
Cox, however, teaches a biometric sensor of device was used to enroll biometric signature contained in memory of device (scanning a user’s fingerprint [using a fingerprint reader or scanner] and storing in memory of the device; see e.g. para. [0016] and FIG. 5). Rosenberg, Burger, Von and Cox are in a same or similar field of endeavor, therefore it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the purpose of a faster user authentication in comparison with a remote server conducting the authentication.
As per claim 2, the device according to claim 1 as taught by Rosenberg, Burger, Von and Cox, wherein Rosenberg does not teach that the biometric sensor is configured to receive a biometric signal in one of the following forms: retinal pattern, iris pattern, face pattern, and palm configuration.
Burger, however, teaches a biometric sensor which is configured to receive a biometric signal in one of the following forms: retinal pattern, iris pattern, face pattern, and palm configuration (see e.g. para. [0112]). Rosenberg, Burger, and Von are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art to combine their teachings for the purpose of improved system where a user does not have to memorize his PIN or password or to improve security by requiring a biometric input from a user.
As per claim 10, the device of claim 1 as taught by Rosenberg, Burger, Von and Cox, wherein said back-end host server identifies a number of payment options associated with the user (Rosenberg teaches that upon successful authentication, the smartlink module is enabled to transmit stored information; see e.g. [0066-70], wherein the transmitted information is information can be encrypted, see e.g. para. [0086], and is associated with the user financial account number or user’s credit card number; see e.g. para. [0052]), wherein a plurality of accounts can be associated with the user as suggested by Burger and discussed in analysis of merits of claim 1.
As per claim 11, the device of claim 1 as taught by Rosenberg, Burger, Von and Cox, wherein said dynamic code is an event synchronous token (Rosenberg teaches that upon successful authentication, the smartlink module is enabled to transmit stored information; see e.g. [0066-70], wherein Burger as well as Von teaches encrypting the transmitted data using a key, time, or random number which is event synchronous token).
As per claim 12, it is interpreted and rejected as claim 1.
As per claim 16, it is interpreted and rejected as claim 2.
As per claim 20, it is interpreted and rejected as claim 11.
As per claim 21, the method of claim 12 as taught by Rosenberg, Burger, Von and Cox, wherein said encrypted information identifying the payment option associated with the user comprises a token generated by the device (as discussed in analysis of merits of claim 1, Von teaches encrypted information identifying the payment option [that the credit/bank card has sufficient funds] associated with the user comprises one or more tokens generated by the device; see e.g. FIGS. 4, 5 and 23).
Claims 3, 7, 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Burger, Von and Cox, as applied to claim 1 or 12 above, and further in view of Harrod et al. (Harrod; US 2005/0012593).
As per claim 3, the device of claim 1 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein the proximity circuit is further configured to unlock an automobile.
Harrod, however, teaches unlocking is associated with an automobile to unlock a locking system of the automobile (an RFID in a mobile device to transmit a secure signal conveying information to an automobile to unlock a locking system of the automobile when the proximity circuit is placed within range of a radio frequency field emitted by the automobile; see e.g. para. [0003-5]). Rosenberg, Burger, Von, Cox and Harrod are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the purpose of improved user experience by keyless entry as suggested by Harrod (see e.g. para. [0005]).
As per claim 7, the cellular telephone of claim 1 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein said first proximity circuit is configured to activate an automobile engine.
Harrod teaches a proximity circuit is configured activate an automobile engine (an RFID in a mobile device to transmit a secure signal conveying information to an automobile to unlock a locking system or enable a started circuit of the automobile when the proximity circuit is placed within range of a radio frequency field emitted by the automobile; see e.g. para. [0003-5] and [0049]). Rosenberg, Burger, Von, Cox and Harrod are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the purpose of improved user experience by keyless entry as suggested by Harrod (see e.g. para. [0005).
As per claim 17, it is interpreted and rejected as claim 3.
As per claim 18, it is interpreted and rejected as claim 7.
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Burger, Von and Cox, as applied to claim 1 above, and further in view of Geddes (Geddes; US Patent No. 7,207,480).
As per claim 4, the device of claim 1 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein the cellular telephone further comprising at least one light emitting diode (LED).
Geddes, however, teaches a cellular telephone comprising at least one light emitting diode (LED); see e.g. col. 2, lines 10-16. Rosenberg, Burger, Von, Cox and Geddes are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for indicating one or more condition as suggested by Geddes (see e.g. see e.g. col. 2, lines 10-16).
Claims 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Burger, Von and Cox, as applied to claim 1, and further in view of Lowe (Lowe; US 2005/0253683).
As per claim 5, the device of claim 1 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein the device further comprising a second proximity circuit including at least one coil.
Lowe, however, a second proximity circuit including at least one coil (see e.g. para. [0034]). Even though Lowe teaches a single coil, it would have been obvious to one of ordinary skill in the art that a plurality of proximity antenna coils can be configured in a single system because it has been held by courts that “[M]ere duplication of parts has no patentable significance unless a new and unexpected result is produced” as suggested by MPEP 2144.04, section VI, part B.
Rosenberg, Burger, Von, Cox and Lowe are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the inherent purpose of passive RFID tag (see e.g. para. [0034] and [0039]) which in turn can reduce its size.
As per claim 6, the device of claim 5 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein said second proximity circuit further comprises an inductor and a capacitor.
However, it would have been obvious to have a plurality of proximity circuits, as discussed in analysis of merits of claim 5, wherein the proximity circuit may further comprise an inductor and a capacitor (see e.g. Lowe, para. [0034]).
Rosenberg, Burger, Von, Cox and Lowe are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the inherent purpose of passive RFID tag (see e.g. para. [0034] and [0039]) which in turn can reduce its size.
Claims 8 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Burger, Von and Cox, as applied to claim 1 or 12 above, and further in view of Cho (Cho; US 2006/0210126).
As per claim 8, the device of claim 1 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein said biometric sensor is further configured to allow the user to gain access to an application.
Cho, however, teaches biometric sensor is further configured to allow the user to gain access to an application (locked state of a cellular telephone, including one or more transmitter subsystems, is changed to an unlocked state based on biometric information inputted from a biometric sensor, see e.g. para. [0009-0015], wherein access to one or more applications is approved when the phone is unlocked; see e.g. para. [0004-0005]). Rosenberg, Burger, Von, Cox and Cho are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide access to one or more resources of a cellular phone using fingerprint as suggested by Cho (see e.g. para. [0004]) which would provide faster access to the resources than inputting PIN.
As per claim 19, it is interpreted and rejected as claim 8.
Claim 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenberg in view of Burger, Von and Cox, as applied to claim 1 above, and further in view of Cassone (Cassone; US 2010/0049659).
As per claim 9, the cellular telephone of claim 1 as taught by Rosenberg, Burger, Von and Cox, except the claimed subject matter wherein a processor configured to generate passwords for use by the user.
Cassone, however, teaches a processor configured to generate passwords for use by the user (a dynamic PIN code may be generated using the dynamic PIN algorithm, by using one or more processors, in response to a valid fingerprint and be displayed in the display 507. Afterwards, the card holder inputs the PIN code displayed; see e.g. para. [0062], wherein the PIN would be qualified as a password since a password is a secret word, phrase or group of numbers). Rosenberg, Burger, Von, Cox and Cassone are in a same or similar field of endeavor, therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine their teachings for the purpose of improving security since a fingerprint as well as a PIN or password which in turn can improve integrity and/or reliability of the system.
Response to Arguments
Applicant's arguments filed 09/17/2025 have been fully considered but they are not persuasive.
Applicant argues regarding claim 1 that Von teaches the combination of a credit car number and a dynamic code of some sort but fails to teach a serial number unique device hardware, which would be card reader 32 (opposed to the magnetic strip card). Consequently, Von does not include any teaching, suggestion or motivation that would have motivated a person of ordinary skill in the art to modify the device of Rosenburg, as modified by Burger, in any way that would arrive at a device of claim 1.
Examiner, however, respectfully disagrees with Applicant’s argument. While Applicant contends that Von fails to teach a serial number unique to device hardware, Examiner respectfully submits that the transaction data (sent to a mobile device and to a server eventually) consists of [inter alia] magnetic strip card reader (MSR) serial number (see e.g. para. [0112-114]). In addition, Rosenberg teaches an electronic serial number which can be communicated in a transaction (see e.g. para. [0052] and [0054]). Therefore, a person having ordinary skill in the art would arrive at the claimed invention by combining the disclosed communicated MSR serial number data along with the teachings of Rosenberg and Burger.
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 MUHAMMAD ADNAN whose telephone number is (571)270-3705. The examiner can normally be reached Monday-Thursday 10AM-6PM.
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/MUHAMMAD ADNAN/Primary Examiner, Art Unit 2688