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 .
Status of Claims
This action is in reply to the communication(s) filed on 03 November 2025.
Claim(s) 1-40 is/are cancelled.
Claim(s) 41, 51 and 58 is/are amended.
Claim(s) 41-60 is/are currently pending and have been examined.
Response to Arguments
Double Patenting
The double patenting rejections are still applicable to the instant claim set.
Rejection of Claims Under 35 U.S.C. §101
Applicant’s arguments, see remarks at pages 7-8, filed 03 November 2025, with respect to the independent claims have been fully considered and are persuasive. The rejection of 27 August 2025 has been withdrawn.
Rejection of Claims Under 35 U.S.C. §103
Applicant’s arguments, see remarks at page 9, filed 03 November 2025, with respect to the independent claims have been fully considered and are persuasive. The rejection of 27 August 2025 has been withdrawn.
New Grounds of Rejection
Examiner notes there are new grounds of rejection presented in the instant Office Action under 35 U.S.C. §112 with suggestions to overcome. Examiner is also open to holding an interview should it expedite allowance. Contact information to initiate an interview is present in the conclusion of the instant Office Action.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 41-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12,026,709 and Claims 1-20 of U.S. Patent No. 11,361,315. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious combination of these same elements present in the reference patent(s), are broader than, use non-identical but functionally similar wording, or omit elements with a corresponding loss of function. The omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPA 375.
Claim Objections
Claim 51 is objected to because of the following informalities:
In Claim 51, “removing electrically connecting the first pin and the second pin and allow the chip to communicate with the processor and perform a transaction; and” should be “
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 51-60 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.
Claims 51 and 58 recite the limitations “a match notification” and “a mismatch notification” in the “in response to receiving…” limitations. It is unclear if these notifications are the same as the previously recited notifications in the “receiving a match notification or a mismatch notification from the server” limitation or are new notifications. Examiner will interpret them to recite “the match notification” and “the mismatch notification” for purposes of examination.
Claim 60 recites the limitation "the obstruction". There is insufficient antecedent basis for this limitation in the claim. Examiner will interpret the claim to recite “…wherein the procedures further comprise, upon completion of the transaction, electrically disconnecting the first pin and the second pin.” For purposes of Examination.
Any remaining claims not expounded upon are rejected based on their dependency to a rejected claim.
Allowable Subject Matter
Claims 51-60 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and terminal disclaimers are submitted to overcome the double patenting rejection.
Claims 41-50 would be allowable if terminal disclaimers are submitted to overcome the double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
ONG (US 2009/0272796 A1) discloses a smart card with keypad for entry of a PIN.
Gupta (US 2021/0342815 A1) discloses pin entry onto a keypad of a smart card.
Pitroda (EP 0766852 B1) discloses a universal transaction card including type function on an LCD to enter a security code or pin code. See at least Fig 11.
Murdoch et al. (“Chip and PIN is Broken”) discloses fault analysis with current transaction cards.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J HILMANTEL whose telephone number is (571)272-8984. The examiner can normally be reached M-F 8:30AM-5:00PM.
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, Abhishek Vyas can be reached at (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM HILMANTEL/Examiner, Art Unit 3691
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