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 .
This office action is responsive to the reply filed 02/23/2026.
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on 02/23/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 05/23/2024 and 08/26/2024 have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
On page 1, substitute “ENROLMENT” – with – ENROLLMENT; and “AUTHORISABLE” with – AUTHORIZABLE – (see Title).
Throughout the specification, the terms “enrolment” should be changed to enrollment; and “authorisable” should be change to authorizable in order to comply with the standard spelling in American English.
Appropriate correction is required.
Claim Objections
Claims 1-13 are objected to because of the following informalities:
Re claim 1, substitute “enrolment” with – enrollment – (see lines 5 and 7, respectively); and “authorisable” with – authorizable – (see line 6).
Re claim 1, substitute “the antenna” with – the near field communication antenna – (see line 14).
Re claim 5, insert “mechanical” before “structure” (see line 1).
Re claim 6, insert “mechanical” before “structure” (see line 2).
Re claim 7, insert “mechanical” before “structure” (see line 2).
Re claim 8, insert “mechanical” before “structure” (see line 2).
Re claim 9, insert “mechanical” before “structure” (see line 2).
Re claim 10, insert “mechanical” before “structure” (see line 1).
Re claim 11, insert “mechanical” before “structure” (see line 2).
Claims 2-4 and 12-13 are objected to since they are dependent upon an objected claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohn et al. (US 12,452,237) (hereinafter Kohn).
Re claims 1-6, Kohn discloses an assembly comprising a smartcard (1) and a signal booster (11),
wherein the smartcard (1) comprises:
an antenna (5) for contactless power harvesting (col. 4, line 65 to col. 5, line 3); and
a biometric capture device (3), wherein the smartcard is configured to perform biometric enrollment using the biometric capture device and to perform biometric authorization using the biometric capture device after biometric enrollment has been completed (col. 4, lines 53-64), and
wherein the signal booster comprises:
a first antenna (21) configured to inductively couple with the smartcard antenna (col. 5, lines 56-64), and
a second antenna (19) configured to inductively couple with a near field communication antenna of a smartphone (12) (col. 5, lines 49-56), and
wherein the first and second antennas (19, 21) are in electrical communication such that power received via the second antenna from the antenna of the smartphone is transmitted via the first antenna to the antenna of the smartcard (col. 5, line 42 to col. 6, line 4);
wherein a shape of the first antenna matches a shape of the smartcard antenna (see figs. 1B and 3B);
an inductor, wherein the first and second antennas are in electrical communication via the inductor (see fig. 3B; col. 5, line 65 to col. 6, line 24); and
a mechanical structure (13) carrying the signal booster, wherein the structure comprises a guide for aligning the assembly in a predetermined position with respect to the smartphone, and wherein the guide comprises an edge of the structure, an edge of the signal booster, and/or one or more alignment marks, wherein the guide is configured for aligning the assembly with edge(s) of the smartphone (figs. 2-3B; col. 6, lines 5-55).
Kohn fails to specifically teach wherein the second antenna is smaller than the first antenna.
However, it would have been an obvious matter of design choice to form the second antenna smaller than the first antenna, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 7, Kohn discloses wherein the structure is provided in a form of sheet (col. 3, lines 1-5).which inherently can be folded.
Re claim 8, Kohn disclose wherein the structure comprises a cut-out configured to hold the smartcard (col. 5, lines 25-28 describes that the smartcard may be inserted in a sleeve in the device 11).
Re claim 9, Kohn discloses wherein the structure is formed from a paper-based material (col. 3, lines 1-5).
Re claim 10, Kohn fails to specifically teach wherein the structure is in the form of a foil or film.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide a structure in the form of a foil or film, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Re claim 11, Kohn discloses wherein the signal booster and/or structure is removably attached to a surface of the smartcard (col. 5, lines 25-29).
Re claims 12-13, Kohn wherein the biometric capture device is a fingerprint sensor (col. 4, lines 53-55); and wherein the signal booster comprises an aperture configured such that, when the antenna of the smartcard is aligned with the first antenna of the signal booster, the fingerprint sensor of the smartcard is accessible through the aperture (fig. 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to the attached PTO-892 form.
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/APRIL A TAYLOR/Examiner, Art Unit 2876
/THIEN M LE/Primary Examiner, Art Unit 2876
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