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 .
The following is a final office action in response to the amendments filed 05/12/2026. Amendments received on 05/12/2026 have been entered. Claims 2-21 are pending.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,062,258. Although the claims at issue are not identical, they are not patentably distinct from each other because
Present Application (18/800,749) Claim 2:
A contactless card, comprising:
processing circuitry; and memory to store:
a unique identifier to identify a user, wherien the unique identifier is asscoated with a payment account of the user;
a key code to unlock a lock, wherien the key code is received from a computing device and stored in the memory; and a first set of instructions that when executed by the processing circuitry cause the processing circuitry to:
retrieve the key code from the memory, and in response to a request, provide the key code to a lock; and a second set of instructions that, when executed by the processing circuitry cause the processing circuitry to: receive a request to perform a payment transaction and send encrypted data comprising the unique identifier to perform an authentication operation to perform payment transaction.
Conflicting Patent (12,062,258) Claim 13:
A contactless card, comprising: communication hardware; a memory configured to store:
a counter value configured to count based on each read operation performed by the contactless card; identity information regarding a user;
computer program instructions configured to perform wireless payments and authentication operations;
computer program instructions configured to perform locking and unlocking functions;
a processor configured to execute the computer program instructions configured to perform the wireless payments and the authentication operations that cause the processor to:
detect a communication exchange with a computing device, the communication exchange comprising a request to perform an authentication operation;
generate encrypted data comprising the identity information to perform the authentication operation; send the encrypted data to the computing device to perform the authentication operation;
the processor further configured to execute the computing program instructions configured to perform locking and unlocking functions that cause the processor to: receive a key code for unlocking a lock in response to the authentication operation being successful;
store the key code in the memory; and communicate, via the communication hardware, with a lock the key code to perform the locking and unlocking functions.
Comments
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”
Present Application 18/800,749
Conflicting Patent (12,062,258)
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Claim Objections
Claim 5 is objected to because of the following informalities:
As of claim 1, line 4, term “wherein the unique identifier associated…” should be – wherein the unique identifier is associated--.
As of claim 5, line 2, term “a computing device” should be –the computing device—since term “a computing device” is already introduced in the independent claim 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As of claim 16, limitation “wherein the encrypted secure package is generated by a server and comprises an encrypted hash of the key code” is not disclosed in the original filed specification. Specification (paragraph [0049]) discloses that the contact less card generates a secure package that comprises an encrypted hash of a onetime password, account identifier and a counter value or name of the initiating party and send it to authentication service through a mobile device. Specification does not disclose that the authentication service 432/server generates a secure package wherien the encrypted secure package is generated by the server and comprise an encrypted hash of the key code.
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 2-8, 11-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wishne (US Pub 2017/0161978) in view of Molino (US Pub 2018/0039987).
As of claims 2 and 12, Wishne discloses a contactless card (via active/passive smart device; see figs. 2 and 3), comprising:
processing circuitry (via processor 202; see fig. 2); and memory (via storage 202) to store:
a key code to unlock a lock, wherein the key code is received from a computing device and stored in the memory (via storing encrypted key; see paragraph [0047]); and
a first set of instructions that when executed by the processing circuitry cause the processing circuitry to:
retrieve the key code from the memory and in response to a request, provide the key code to a lock (via in response to an interrogation request, transmitting the encrypted key to lock 400; see fig. 4; also see paragraph [0047]) and
With regards to limitation of storing a unique identifier to identify a user, wherein the unique identifier associated with a payment account of the user, and a second set of instructions that, when executed by the processing circuitry cause the processing circuitry to: receive a request to perform a payment transaction send encrypted data comprising the unique identifier to perform an authentication operation to perform the payment transaction, Wishne discloses that the smart device 300 includes an EMV chip 314 for conducting credit, debit or other financial card transactions (see paragraph [0044]), but does not explicitly state that the contactless card receives a request to perform a payment transaction and send encrypted data comprising the unique identifier to perform an authentication operation to perform the payment transaction
Molino discloses that a contactless card comprising an EMV (Europay, Mastercard, and Visa) chip stores essential card holder data in an encrypted format, such as Primary account number, cardholder name, Expiration data, card verification value and encrypts the data before transmitting to a server or terminal for user authentication operation to perform the payment transaction (see US 2018/0039987, paragraph [0010]-[0011]).
From the teaching of Molino, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the system of Wishne to include the function of performing payment transaction as taught by Molino in order to conduct credit, debit or other financial card transactions.
As of claim 3, Wishne discloses that the contactless card is a payment card (via smart device being a payment card; see paragraph [0023]).
As of claims 4 and 19, Wishne discloses that the lock is a hotel room lock (via a hotel room lock; see paragraph [0006]).
As of claim 5, Wishne discloses that the first set of instructions cause the processing circuitry to receive the key code from a computing device via a wireless communication protocol (via receiving the encrypted key from the mobile device 100; see fig. 4; also see paragraph [0047]).
As of claims 6 and 17, Wishne discloses that the computing device is a smartphone (via mobile device 100 being a smartphone; see paragraph [0023]).
As of claims 7 and 13, Wishne discloses that the wireless communication protocol is a Near Field Communication (NFC) protocol (via NFC protocol; see paragraph [0035] and [0043]).
As of claims 8 and 14, Wishne discloses that the memory further stores a third set of instructions that, when executed by the processing circuitry, cause the processing circuitry to perform a wireless payment (via performing payment; see paragraph [0045].
As of claim 11, Wishne discloses that the Near Field Communication (NFC) hardware including an antenna (via antenna 310; see fig. 3; also see paragraph [0043]).
As of claim 15, Wishne discloses that the key code is received in an encrypted secure package (via receiving an encrypted key; see paragraph [0047]).
As of claim 18, Wishne discloses that the external device is a self-service terminal (via computing device 100 being a stationary computing device; see paragraph [0029]).
Claims 9, 10, 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wishne (US Pub 2017/0161978) in view of Molino (US Pub 2018/0039987) and further in view of Rule et al. (US 10,757,574).
As of claims 9-10 and 21, combination of Wishne and Molino discloses all the limitations of the claimed invention as mentioned in claim 2 and 12 above, however it does not explicitly disclose the encrypted data further comprises a counter value and the encrypted data is encrypted using a diversified key that is derived from a master key and the counter value.
Rule discloses a contactless card 500 comprising a memory storing a counter value 545 configured to count based on each read operation performed by the contactless card (see fig. 5B; also see col. 6, lines 45-55 and col. 8, lines 44-55). Rule further discloses that the encrypted data is encrypted using a diversified key that is derived from a master key and the counter value (see col. 8, lines 29-59).
From the teaching of Rule, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the combination of Wishne and Molino to include the function of counter value in a contactless card as taught by Rule in order to enhance security of the contactless card communication with the server.
As of claim 20, Wishne disclose that the server device authenticates and validates the encrypted key request before sending the encrypted key (key code) to the smart device 300. Rule discloses that after an authentication of a user's identity with the unique identifier is achieved server starts communicating with the user mobile device (see col. 5, lines 29-48). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify the combination of Wishne and Molino to include the function of a server authenticating a user’s identity as taught by Rule in order to enhance security of the contactless card communication with the server.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
O’Connell et al. (US Pub 2013/0304648) discloses that a contact less card 301 comprises an authentication identifier element and a payment identifier element. The authentication identifier element may be configured to communicate with general access devices (e.g. contactless readers) and may be capable of authentication transactions. The payment identifier element may be capable of performing payment transactions (see fig. 3; also see paragraph [0059]-[0062]).
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 NABIL H SYED whose telephone number is (571)270-3028. The examiner can normally be reached 8:00-5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davetta W Goins can be reached at (571) 272-2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NABIL H SYED/Primary Examiner, Art Unit 2689
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