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 Rejections - 35 USC § 103
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 factual inquiries 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Locke et al, US Patent No. 10,417,626, in view of Spodak et al, US Patent No. 8,788,418.
Locke et al disclose a secure contactless payment method and device with active electronic circuitry comprising: a device 100 having a magnetic stripe 104 and/or a Europay, Mastercard and Visa (EMV) chip 122; the device 100 may additionally include wireless circuitry such a wireless module 118, a cryptographic coprocessor 116, and an actuator 106; the device 100 may include a power source 110 which may be coupled to a power management circuit 108, a microcontroller unit (MCU) 120, and an accelerometer 112; the device 100 may include a low-pass filter 113 and a control button 114; the indicator 102 may be connected to MCU 120 and/or power source 110; the indicator 102 may be configured to be activated when actuator 106 is in a closed (i.e., connected) state to activate wireless module 118 circuitry; the actuator input may be directly coupled to power source 110 and may change the status of the actuator based on a charge level of power source 110, independent of the MCU 120 operation; the power management circuit 108 may monitor the charge status of power source 110 and provide information to MCU 120, which may in turn send signals to indicator 102 to display the status of charging power source 110 or operate actuator 106; the wireless module 118 may additionally include a loop antenna or NFC coil with an electronic switch (or capacitive sensor) in series, and may also include other types of wireless communication; the wireless module 118 may include modules for other RFID standards specifying proprietary data formats in a closed-loop system; the wireless module 118 may include a module to perform RFID Radio frequency identification (RAIN); the wireless module 118 may include modules for BLE—Bluetooth Low-Energy, or Beacons; the wireless module 118 may use standard wireless protocols used in many portable devices to allow greater range than NFC. In yet other embodiments, wireless module 118 may include WiFi, ZigBee, Z-Wave and/or LiFi, Ultrasonic, or Chirpcast modules; the process may include an actuator state determination based on power source charge; a depleted power source 110 may prevent a user from utilizing a contactless payment device with the security features described in this disclosure; if a contactless payment device is activated with an accelerometer gesture but the battery powering the accelerometer is depleted, then a user would not be able to use the device to complete the transaction; the system via the MCU 120 may determine the charge remaining in power source 110; if the charge level of power source 110 is below a threshold; the MCU 120 may determine if the charge level is below a critical charge level for proper operation of accelerometer 112 operation; If MCU 120 determines the charge level is below a threshold, then MCU 120 may continue to set actuator 106 in the closed or connected state; the system can control display to when the power is depleted, below a certain threshold. ( See Figs. 1-3, 6; col. 4, line 48+ and col. 12, line 8+).
Locke et al disclose an indicator 102 to display the status of charging power, but fail to specifically disclose that the detection logic receives power and causes the LED to light in response to a power level to perform the short range wireless communication and the LED remains unlit below a certain threshold of the power level.
Spodak et al disclose a portable e-wallet and a universal card comprising: a universal card 1300 with a power indicator 1310; the power indicator 1310 indicates to the user that the universal card 1300 is ready to be used in a transaction; the power indicator 1310 can indicate that the universal card 1300 can be used with either or both of a magnetic stripe reader and a contactless payment terminal; the power indicator 1310 can be any visual indicator, such as an LED light, a color indicator, and the like. In the embodiment of an LED light, the LED light can be illuminated when the card is active (i.e., ready to emulate a traditional card as either or both of a magnetic swipe card or a contactless payment card) and the LED light can be off when the card is inactive. A power indicator 1310 on universal card 1300 can replace the need for the universal card 1310 to have a display, thereby reducing the overall cost to make and sell the universal card 1310. As depicted in FIG. 13, the power indicator 1310 can be located on a front 1320 of universal card 1300. Optionally, the front 1320 of universal card 1300 can also include the card holder's name 1321 and a brand area 1322.
In view of the teachings of Spodak et al, it would have been obvious for a person of ordinary skill in the art at the time the invention was made to modify or to combine with the teachings of Locke et al to include a power indicator on the portable card so that a card holder would know that the card is active and ready to be used when attempting to use the card. Having a power indicator on the universal card to indicate that the card is ready to be used would allow the user to easily determine whether the universal card is active and ready for use. The additional features, such as the specific operational frequency or the type of wireless communication, such limitations are matters of choice for meeting specific customer requirements. Therefore, it would have been an obvious extension as taught by the prior art.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,073,273 (hereinafter ‘273 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite similar limitations as the ‘273 Patent. For instance, in claim 1 of the current application and in the ‘273 Patent, the applicant claims:
Application No. 18/777,713
Patent No. 12,073,273
A contactless card, comprising: a substrate; a first antenna embedded in the substrate; a light-emitting diode (LED) embedded in the substrate; a processor coupled with the first antenna and the substrate; and logic circuitry embedded in the substrate, the logic circuitry to couple with the first antenna and with the LED, the logic circuitry is configured to: receive power generated by a magnetic field interacting with the first antenna from an external device; and cause the LED to light a first color after a power level of power received via the first antenna, wherein the power level is below a first threshold power level, the first threshold power level sufficient to power the processor.
A contactless card, comprising: a substrate; a first antenna embedded in the substrate; a light-emitting diode (LED) embedded on the substrate; a processor coupled with the first antenna; and detection logic embedded in the substrate, the detection logic to couple the first antenna with the LED, the detection logic is configured to: receive power generated by a magnetic field interacting with the first antenna, the magnetic field generated by an external device to perform a short-range wireless communication with the contactless card; cause the LED to light a first color in response to detection of power via the first antenna by the detection logic; and cause the LED to light a second color in response to a power level of the power received to perform the short-range wireless communication being above a threshold level required to perform the short-range wireless communication with the external device.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-19 of the ‘273 Patent as a general teaching for a contactless card, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘273 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘273 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Response to Arguments
Applicant's arguments filed 9/20/25 have been fully considered but they are not persuasive. See examiner remarks.
Remarks.
In response to the applicant’s argument that Locke in view of Spark fails to disclose or render obvious that a logic circuit embedded in the substrate coupled to the antenna with LED to light the LED to indicate the power level is below a threshold, the examiner respectfully disagrees. Locke et al teaches Locke et al teach logic circuit 120 embedded in a substrate couple to tan antenna 118 and LED 102, the logic circuit sends signals to the LED to display the status of charging power source 110. Furthermore, it is common practice to use color coded display to indicate devices power status. Therefore, it would have been an obvious extension as taught by Locke in view of Spark to display a color to indicate that the card is not active, not operational, or not able to perform certain functions. It appears that the applicant’s argument is more comprehensive than the claim’s language. With respect to the logic circuit being distinct from the MCU, such limitation is not clearly stated in the claims. The applicant’s argument is not persuasive. Refer to the rejection above.
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 DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached M to F 8:00-8:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876