Prosecution Insights
Last updated: September 19, 2026
Application No. 18/875,701

SMARTPHONE-COMPATIBLE CONTACTLESS IC CARD WITH FINGERPRINT AUTHENTICATION FUNCTION

Non-Final OA §103
Filed
Dec 16, 2024
Priority
Jun 17, 2022 — JP 2022-098398 +1 more
Examiner
GREGG, MARY M
Art Unit
3695
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Muter Co. Ltd.
OA Round
1 (Non-Final)
14%
Grant Probability
At Risk
1-2
OA Rounds
2y 9m
Est. Remaining
28%
With Interview

Examiner Intelligence

Grants only 14% of cases
14%
Career Allowance Rate
90 granted / 640 resolved
-37.9% vs TC avg
Moderate +14% lift
Without
With
+14.3%
Interview Lift
resolved cases with interview
Typical timeline
4y 6m
Avg Prosecution
40 currently pending
Career history
699
Total Applications
across all art units

Statute-Specific Performance

§101
32.0%
-8.0% vs TC avg
§103
42.8%
+2.8% vs TC avg
§102
8.9%
-31.1% vs TC avg
§112
15.5%
-24.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 640 resolved cases

Office Action

§103
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 communications received December 16, 2024. No Claim(s) have been canceled. No Claim(s) have been amended. No new claims have been added. Therefore, claims 1-10 are pending and addressed below. Priority Application No. 18/875,701 filing date: 12/16/2024 (12/21/2023) Applicant Name/Assignee: Muter Co. LTD Inventor(s): Okita, Masaya Statutory subject matter under 35 USC § 101 STEP 1. Per Step 1 of the two-step analysis, the claims are determined to include a IC card, as in independent Claim 1 and the dependent claims. Such IC cards fall under the statutory category of "machine." Therefore, the claims are directed to a statutory eligibility category. Step 2A prong 1. The claimed limitation which considered as a whole is directed toward the abstract sub-category of commercial activity and risk mitigation of the abstract category of Methods of Organizing Activity. STEP 2A Prong 2. The claimed invention is directed to significantly more than the abstract idea of authentication to prevent unauthorized use. The specification para 0015 discloses the technical problem of continuous power supply for performing authentication by contactless IC cards. . Claim Interpretation The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: fingerprint authentication means including a first NFC chip having a function of performing NFC communication with the contactless IC card reader, wherein the fingerprint authentication means has: a fingerprint-data reading function which starts reading of fingerprint data by using the fingerprint sensor in claim 1 and claim 1. Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof. If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function. 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. 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) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6738042 B2 by 山田 真生 (山田) as annotated by the examiner and further in view of US Pub. No. 2024/0106283 A1 by Sorenti et al (Sorenti) In reference to Claims 1: 山田 teaches: A contactless IC card with a smartphone-compatible fingerprint authentication function, which can recognize successful fingerprint authentication by a smartphone incorporating a contactless IC card reader ((山田) in at least FIG. 1; para 002-004), comprising: a fingerprint sensor; a fingerprint authentication portion ((山田) in at least para 004, para 007-008, para 020) a memory for storing verification fingerprint data ((山田) in at least para 020 wherein the prior art teaches data storage stores collection data used for authentication including biometric data previously acquired); a first coil for receiving power from the contactless IC card reader ((山田) in at least para 011); and … fingerprint authentication means including a first …[wireless] chip having a function of performing …[wireless] communication with the contactless IC card ((山田) in at least para 0028) a fingerprint-data verification function which matches the read fingerprint data against the verification fingerprint data stored in the memory by the fingerprint authentication portion ((山田) in at least para 020, para 026, para 033-034); and a fingerprint-authentication notification function of notifying to the contactless IC card reader that the fingerprints are authenticated to match each other since the first … chip can perform the … communication only when the fingerprints are authenticated to match by the fingerprint authentication portion ((山田) in at least para 026-027 wherein the prior art teaches user authentication unit determines via matching data of biometric information that user authentication successful and a flag indicating successful authentication is set to on and/or information indicating authentication successful by transmitting information indicating permission to external device); the fingerprint sensor, the fingerprint authentication portion, the memory, the first NFC chip operate only by the power received by the first coil ((山田) in at least para 011); 山田 does not explicitly teach: … means including a first NFC chip having a function of performing NFC communication with the contactless IC card the smartphone is a model in which continuous power-supply cannot be performed from the contactless IC card reader to the first coil only by the application software installed therein, including: a second NFC chip, which is different from the first NFC chip; and when the power is received by the first coil from the contactless IC card reader, in an initial response of the NFC communication, by causing the second NFC chip to be recognized, the continuous power-supply is performed from the contactless IC card reader to the first coil. Sorenti teaches: a first coil for receiving power from the contactless IC card reader ((Sorenti) in at least para 0067 wherein the prior art teaches circuitry for wireless power/data transmission where the first circuitry may include a first circuit to receive wireless power, para 0068 wherein the prior art teaches the first circuit power antenna with induction coil and NFC power receive coil, where the first circuit and power receiver where the integrated circuit such as NFC receive IC chip that converts power received) … authentication means including a first NFC chip having a function of performing NFC communication with the contactless IC card ((Sorenti) in at least para 0077 wherein the prior art teaches authenticate user by providing useful information to a device based on capacitive touch sensing) the smartphone is a model in which continuous power-supply cannot be performed from the contactless IC card reader to the first coil only by the application software installed therein ((Sorenti) in at least para 0006 wherein the prior art teaches an amount of power below predetermined threshold, para 0050 wherein the prior art teaches incorporating other infrastructure to cooperate with a module where the infrastructure of the device facilitates data/power transfer between installed modules; para 0065 wherein the prior art teaches measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission, para 0073 wherein the prior art teaches control circuitry configured to connect disconnect optionally the non-availability of power which the control circuitry using the switch in response to certain conditions such as power not being received through the power antenna): including a second NFC chip, which is different from the first NFC chip ((Sorenti) in at least para 0067 wherein the prior art teaches circuitry may include a first and second circuit for data transmission where the second circuit may be along the same place or stacked helpful for conserving space; para 0068-0069 wherein the prior art teaches first circuit may include NFC Power receive coil and NFC receive IC chip and teaches second circuit may include inductor coil in circuit diagram label NFC reader coil, para 0071, para 0077, para 0079); and when the power is received by the first coil from the contactless IC card reader, in an initial response of the NFC communication, by causing the second NFC chip to be recognized, the continuous power-supply is performed from the contactless IC card reader to the first coil ((Sorenti) in at least para 0067-0071, para 0077, para 0079-0080). Both 山田 and Sorenti are directed toward wireless communication with IC cards and corresponding circuitry. Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices used to communicate with other devices of 山田 to include wireless IC card devices that incorporate NFC wireless technology as taught by Sorenti since Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. In reference to Claim 2: 山田 teaches: A contactless IC card with a smartphone-compatible fingerprint authentication function, which can recognize successful fingerprint authentication by a smartphone incorporating a contactless IC card reader ((山田) in at least FIG. 1; para 002-004), comprising: a fingerprint sensor ((山田) in at least para 004, para 007-008, para 020); a fingerprint authentication portion ((山田) in at least para 004, para 007-008, para 020); a memory for storing verification fingerprint data ((山田) in at least para 020 wherein the prior art teaches data storage stores collection data used for authentication including biometric data previously acquired); a first coil for receiving power from the contactless IC card reader ((山田) in at least para 011); and fingerprint authentication means including a first …[wireless] chip having a function of performing …[wireless] communication with the contactless IC card reader ((山田) in at least para 0028), wherein the fingerprint authentication means has: a fingerprint-data reading function which starts reading of fingerprint data by using the fingerprint sensor, when the first coil receives power from the contactless IC card reader ((山田) in at least para 0011, para 0015, para 0026); a fingerprint-data verification function which matches the read fingerprint data against the verification fingerprint data stored in the memory by the fingerprint authentication portion ((山田) in at least para 020, para 026, para 033-034); and a fingerprint-authentication notification function of notifying to the contactless IC card reader that the fingerprints match each other since the first … chip can perform the …communication only when the fingerprints are authenticated to match by the fingerprint authentication portion ((山田) in at least para 026-027 wherein the prior art teaches user authentication unit determines via matching data of biometric information that user authentication successful and a flag indicating successful authentication is set to on and/or information indicating authentication successful by transmitting information indicating permission to external device); the fingerprint sensor, the fingerprint authentication portion, the memory, the first NFC chip operate only by the power received by the first coil ((山田) in at least para 011); 山田 does not explicitly teach: … means including a first NFC chip having a function of performing NFC communication with the contactless IC card reader the smartphone is a model in which continuous power-supply cannot be performed from the contactless IC card reader to the first coil only by the application software installed therein, including: a second NFC chip, which is different from the first NFC chip, and a second coil, which is different from the first coil; and when the power is received by the second coil from the contactless IC card reader, in an initial response of the NFC communication, by causing the second NFC chip to be recognized, the continuous power-supply is performed from the contactless IC card reader to the first coil. Sorenti teaches: a first coil for receiving power from the contactless IC card reader ((山田) in at least para 011, para 0067 wherein the prior art teaches circuitry for wireless power/data transmission where the first circuitry may include a first circuit to receive wireless power, para 0068 wherein the prior art teaches the first circuit power antenna with induction coil and NFC power receive coil, where the first circuit and power receiver where the integrated circuit such as NFC receive IC chip that converts power received) … authentication means including a first NFC chip having a function of performing NFC communication with the contactless IC card reader ((Sorenti) in at least para 0077 wherein the prior art teaches authenticate user by providing useful information to a device based on capacitive touch sensing) the smartphone is a model in which continuous power-supply cannot be performed from the contactless IC card reader to the first coil only by the application software installed therein ((Sorenti) in at least para 0006 wherein the prior art teaches an amount of power below predetermined threshold, para 0050 wherein the prior art teaches incorporating other infrastructure to cooperate with a module where the infrastructure of the device facilitates data/power transfer between installed modules; para 0065 wherein the prior art teaches measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission, para 0073 wherein the prior art teaches control circuitry configured to connect disconnect optionally the non-availability of power which the control circuitry using the switch in response to certain conditions such as power not being received through the power antenna), including: a second NFC chip, which is different from the first NFC chip, and a second coil, which is different from the first coil ((Sorenti) in at least para 0067 wherein the prior art teaches circuitry may include a first and second circuit for data transmission where the second circuit may be along the same place or stacked helpful for conserving space; para 0068-0069 wherein the prior art teaches first circuit may include NFC Power receive coil and NFC receive IC chip and teaches second circuit may include inductor coil in circuit diagram label NFC reader coil, para 0071, para 0077, para 0079); and when the power is received by the second coil from the contactless IC card reader, in an initial response of the NFC communication, by causing the second NFC chip to be recognized, the continuous power-supply is performed from the contactless IC card reader to the first coil. ((Sorenti) in at least para 0067-0071, para 0077, para 0079-0080). Both 山田 and Sorenti are directed toward wireless communication with IC cards and corresponding circuitry. Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices used to communicate with other devices of 山田 to include wireless IC card devices that incorporate NFC wireless technology as taught by Sorenti since Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. Both 山田 and Sorenti are directed toward wireless communication with IC cards and corresponding circuitry. Sorenti teaches the motivation of a first and second IC chip and corresponding coils in order to provide power to the IC card and in order for measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices and processes of 山田 to include first and second IC card and coil and the power control process Sorenti since Sorenti teaches the motivation of a first and second IC chip and corresponding coils in order to provide power to the IC card and in order for measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission. In reference to Claim 3: The combination of 山田 and Sorenti discloses the limitations of independent claim 1 or 2. 山田 further discloses the limitations of dependent claim 3 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 1 or 2 (see rejection of independent claims 1 or 2 above), wherein a fingerprint authentication notification which notifies that the fingerprint authentication succeeded, when the fingerprints are authenticated to match each other by the fingerprint authentication portion, transmits data using specific data stored in the first NFC chip to the contactless IC card reader by NFC ((山田) in at least para 026-027 wherein the prior art teaches user authentication unit determines via matching data of biometric information that user authentication successful and a flag indicating successful authentication is set to on and/or information indicating authentication successful by transmitting information indicating permission to external device communication. In reference to Claim 4: The combination of 山田 and Sorenti discloses the limitations of dependent claim 3. 山田 further discloses the limitations of dependent claim 4 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 3 (see rejection of claim 3 above), wherein when the data using the specific data sent by the …[wireless] communication from the first …[wireless] chip to the contactless IC card reader and the data registered in advance in the smartphone are compared by the smartphone and matched, the smartphone recognizes that the fingerprints are authenticated to match each other by the fingerprint authentication portion ((山田) in at least para 020 wherein the prior art teaches data storage stores collection data used for authentication including biometric data previously acquired, para 026, para 031, para 033-034). 山田 does not explicitly teach: … NFC communication from the first NFC chip to the contactless IC card reader … Sorenti teaches: wherein when the data using the specific data sent by the NFC communication from the first NFC chip to the contactless IC card reader …((Sorenti) in at least para 0067 wherein the prior art teaches circuitry may include a first and second circuit for data transmission where the second circuit may be along the same place or stacked helpful for conserving space; para 0068-0069 wherein the prior art teaches first circuit may include NFC Power receive coil and NFC receive IC chip and teaches second circuit may include inductor coil in circuit diagram label NFC reader coil, para 0071, para 0077, para 0079) Both 山田 and Sorenti are directed toward wireless communication with IC cards and corresponding circuitry. Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices used to communicate with other devices of 山田 to include wireless IC card devices that incorporate NFC wireless technology as taught by Sorenti since Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6738042 B2 by 山田 真生 (山田) in view of US Pub. No. 2024/0106283 A1 by Sorenti et al (Sorenti) as applied to claim(s) 1 or 2 above, and further in view of NPL “PN53x NFC tool by NFC tools (NFC) In reference to Claim 5: The combination of 山田 and Sorenti discloses the limitations of independent claim 1 or 2. 山田 further discloses the limitations of dependent claim 5 山田 does not explicitly teach: wherein the first NFC chip and the second NFC chip are FeliCa chips with different system codes . NFC teaches: wherein the first NFC chip and the second NFC chip are FeliCa chips with different system codes. ((NFC) in at least See article wherein the prior art teaches NFC controllers containing PN53x chipset which includes FeliCA PN531/ISO1443-A chip applied for low battery mode, FeliCA PN532/ISO14443-A/B chip; FeliCA PN533/ISO 14443-A/B where the chips are assembled on the internal board of the NFC reader with each chip has set of registers and firmware where the chip instructions are proprietary); . Both 山田 and NFC are directed toward wireless communication and the use of IC cards with chip controllers. NFC teaches the motivation of IC card with chip controllers including an assemble of NFC chipsets in order to address different needs in wireless communication and the motivation that such dataset chips can be implemented by different manufacturers including FeliCA. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices used to communicate with other devices of 山田 to include wireless IC card devices that incorporate NFC wireless technology as taught NFC since NFC teaches the motivation of IC card with chip controllers including an assemble of NFC chipsets in order to address different needs in wireless communication and the motivation that such dataset chips can be implemented by different manufacturers including FeliCA. In reference to Claim 6: The combination of 山田 and Sorenti discloses the limitations of independent claim 1 or 2. 山田 further discloses the limitations of dependent claim 6 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 1 or 2 (see rejection of claim(s) 1 or 2 above), 山田 does not explicitly teach: wherein the first NFC chip and the second NFC chip are FeliCa chips with the same system codes, and the first NFC chip and the second NFC chip do not perform the NFC communication at the same time. Sorenti teaches: wherein the first NFC chip and the second NFC chip …, and the first NFC chip and the second NFC chip do not perform the NFC communication at the same time. ((Sorenti) in at least para 0006 wherein the prior art teaches an amount of power below predetermined threshold, para 0050 wherein the prior art teaches incorporating other infrastructure to cooperate with a module where the infrastructure of the device facilitates data/power transfer between installed modules; para 0065 wherein the prior art teaches measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission, para 0067 wherein the prior art teaches circuitry may include a first and second circuit for data transmission where the second circuit may be along the same place or stacked helpful for conserving space; para 0068-0069 wherein the prior art teaches first circuit may include NFC Power receive coil and NFC receive IC chip and teaches second circuit may include inductor coil in circuit diagram label NFC reader coil, para 0071, para 0073 wherein the prior art teaches control circuitry configured to connect disconnect optionally the non-availability of power which the control circuitry using the switch in response to certain conditions such as power not being received through the power antenna) Both 山田 and Sorenti are directed toward wireless communication with IC cards and corresponding circuitry. Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices used to communicate with other devices of 山田 to include wireless IC card devices that incorporate NFC wireless technology as taught by Sorenti since Sorenti teaches the motivation for wireless communication that it is known to apply near field wireless power and data transfer systems where devices that communicate with nearby wireless data sources. Both 山田 and Sorenti are directed toward wireless communication with IC cards and corresponding circuitry. Sorenti teaches the motivation of a first and second IC chip and corresponding coils in order to provide power to the IC card and in order for measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices and processes of 山田 to include first and second IC card and coil and the power control process Sorenti since Sorenti teaches the motivation of a first and second IC chip and corresponding coils in order to provide power to the IC card and in order for measuring are taken for data transfer process does not interfere with power transfer in a manner that alters resonant frequency or otherwise destructively interferes with power transfer decreasing efficiency when charging devices where a switch may be included to disable circuitry for data transmission. Sorenti does not explicitly teach: are FeliCa chips with the same system codes NFC teaches: wherein the first NFC chip and the second NFC chip are FeliCa chips with the same system codes ((NFC) in at least See article wherein the prior art teaches NFC controllers containing PN53x chipset which includes FeliCA PN531/ISO1443-A chip applied for low battery mode, FeliCA PN532/ISO14443-A/B chip; FeliCA PN533/ISO 14443-A/B where the chips are assembled on the internal board of the NFC reader with each chip has set of registers and firmware where the chip instructions are proprietary); . Both 山田 and NFC are directed toward wireless communication and the use of IC cards with chip controllers. NFC teaches the motivation of IC card with chip controllers including an assemble of NFC chipsets in order to address different needs in wireless communication and the motivation that such dataset chips can be implemented by different manufacturers including FeliCA. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card devices used to communicate with other devices of 山田 to include wireless IC card devices that incorporate NFC wireless technology as taught NFC since NFC teaches the motivation of IC card with chip controllers including an assemble of NFC chipsets in order to address different needs in wireless communication and the motivation that such dataset chips can be implemented by different manufacturers including FeliCA. Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6738042 B2 by 山田 真生 (山田) in view of US Pub. No. 2024/0106283 A1 by Sorenti et al (Sorenti) in view of NPL “PN53x NFC tool by NFC tools (NFC) as applied to claim(s) 6 above, and further in view of JP 2016/162136 A by Kawaguchi et al. (Kawa) translation herein as annotated by the examiner In reference to Claim 7: The combination of 山田, Sorenti and NFC discloses the limitations of dependent claim 6. 山田 further discloses the limitations of dependent claim 7 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 6 (see rejection of claim 6 above), 山田 does not explicitly teach: wherein the first NFC chip and the second NFC chip are FeliCa Lite-S chips. Kawa teaches: wherein the first NFC chip and the second NFC chip are FeliCa Lite-S chips. ((Kawa) in at least Abstract; para 0007, para 0009, para 0013, para 0024, para 0046) Both 山田 and Kawa are directed toward IC card which include coils and IC chips. Kawa teaches the motivation that such IC card can include Felica Lite IC chips which are connected to the antenna for performing non-contact type of communication. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the wireless IC card of 山田 to include Felica lite IC chips of Kawa since for use in non-contact communication of Kawa teaches the motivation that such IC card can include Felica Lite IC chips which are connected to the antenna for performing non-contact type of communication. Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6738042 B2 by 山田 真生 (山田) in view of US Pub. No. 2024/0106283 A1 by Sorenti et al (Sorenti) as applied to claim(s) 1 or 2 above, and further in view of JP 2020184296 A by YEH I-HAU et al (Yeh) In reference to Claim 8: The combination of 山田 and Sorenti discloses the limitations of independent claim 1 or 2. 山田 further discloses the limitations of dependent claim 8 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 1 or 2 (see rejection of claim 1 above), when power is received from the contactless IC card reader by the first coil. ((山田) in at least para 011) 山田 does not explicitly teach: wherein in a state where the verification fingerprint data is not stored in the memory, the first NFC chip can perform the NFC communication, Yeh teaches: wherein in a state where the verification fingerprint data is not stored in the memory, the first NFC chip can perform the NFC communication, when power is received from the contactless IC card reader by the first coil. ((Yeh) in at least para 0002, para 0004, para 0008-0010, para 0012-0013 ) Both 山田 and Yeh are directed toward fingerprint verification using technology. Yeh teaches the motivation of fingerprint registered, collated and stored for use in fingerprint verification where the fingerprint is collected using NFC and sensor technology where the controller is waked up by the sensor and reads the fingerprint frame data. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the collection of fingerprint of 山田 to include the registration of fingerprint data as taught by Yeh since Yeh teaches the motivation of fingerprint registered, collated and stored for use in fingerprint verification where the fingerprint is collected using NFC and sensor technology where the controller is waked up by the sensor and reads the fingerprint frame data Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6738042 B2 by 山田 真生 (山田) in view of US Pub. No. 2024/0106283 A1 by Sorenti et al (Sorenti) as applied to claim(s) 1 or 2 above, and further in view of WO 2024076371 A1 by Raguin (Raguin) In reference to Claim 9: The combination of 山田 and Sorenti discloses the limitations of independent claim 1 or 2. 山田 further discloses the limitations of dependent claim 9 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 1 or 2 (see the rejection of claims 1 or 2 above), 山田 does not explicitly teach: wherein the first NFC chip and the second NFC chip are formed on the same silicon wafer. Raguin teaches: wherein the first NFC chip and the second NFC chip are formed on the same silicon wafer. ((Raguin) in at least para 0030) Both 山田 and Raguin are directed toward applying NFC technology used to scan fingerprints using sensors. Raguin teaches the motivation that it is typical for sensors to comprise silicon wafers in use of collecting data using sensor technology. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the details of the NFC chip technology of 山田 to include details as to the content of the NFC sensor technology as taught by Raguin since Raguin teaches the motivation that it is typical for sensors to comprise silicon wafers in use of collecting data using sensor technology Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6738042 B2 by 山田 真生 (山田) in view of US Pub. No. 2024/0106283 A1 by Sorenti et al (Sorenti) as applied to claim(s) 1 or 2 above, and further in view of US Pub No. 2017/0170691 A1 by Kim et al. (Kim) In reference to Claim 10: The combination of 山田 and Sorenti discloses the limitations of independent claim 1 or 2. 山田 further discloses the limitations of dependent claim 10 The contactless IC card with a smartphone-compatible fingerprint authentication function according to claim 1 or 2 (see rejection of claim(s) 1 or 2 above), the NFC communication is performed after the first NFC chip is recognized in the initial response after the successful fingerprint authentication ((山田) in at least para 020, para 026, para 033-034) 山田 does not explicitly teach: wherein after the second NFC chip is recognized in an initial response, a period in which the first NFC chip and the second NFC chip are both stopped is provided, and. Kim teaches: wherein after the second NFC chip is recognized in an initial response, a period in which the first NFC chip and the second NFC chip are both stopped is provided, and the NFC communication is performed after the first NFC chip is recognized in the initial response after the successful … authentication ((Kim) in at least Abstract; para 0006 wherein the prior art teaches NFC receive from a reader, para 0008-0010 wherein the prior art teaches receive a clock signal from a reader and a switching operation in light of receiving signal from first and second NFC chip, para 0032 wherein the prior art teaches reader communicates with first coil power generator and a switch for a first NFC chip and second NFC chip, para 0035-0040 wherein the prior art teaches clock switch with a power generator and the first/second NFC chip receive clock signal from reader that controls the switching operation where the reader includes a switch off signal , para 0042 wherein the prior art teaches by default in an idle state the switch may be switched off and may not perform power generation operation, para 0047-0050 wherein the prior art teaches second NFC chip may perform authentication wherein the prior art teaches clock signal may include authentication signal with switching operation signal, para 0058-0059 wherein the prior art teaches second clock signal includes a signal of the switch the NFC chip the switch off by the switching operation, para 0061, para 0072, para 0075-0076, para 0078) Both 山田 and Kim are directed toward applying wireless communication for authentication processes. Kim teaches the motivation of applying NFC communication with a plurality of NFC chips that controlled by switches that turn on/off NFC chips according to control instructions in response to communication status. It would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the details of wireless technology to include NFC control details as taught by Kim since Kim teaches the motivation of applying NFC communication with a plurality of NFC chips that controlled by switches that turn on/off NFC chips according to control instructions in response to communication status. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub. No. 2014/0035521 A1 by Endo; WO 2007108585 A1 by Choi et al; US Pub no. 20190386826 A1 by Kato et al; US Pub No. 2023/0100463 A1 by Hosotani, US Pub No. 2023/0091589 A1 by Nagai et al; US Pub No. 2022/0383004 A1 by Nagai et al; WO 2021245980 A1 by Hosotani; CN 105814588 A by Sakin; CN 107729972 A by Shu; CN 110781994 B by Ruan; JP 2020149534 A by Yamaguchi; CN 101059880 A by Lu Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY M GREGG whose telephone number is (571)270-5050. The examiner can normally be reached M-F 9am-5pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MARY M GREGG/Examiner, Art Unit 3695
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Prosecution Timeline

Dec 16, 2024
Application Filed
Jul 08, 2026
Non-Final Rejection mailed — §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
14%
Grant Probability
28%
With Interview (+14.3%)
4y 6m (~2y 9m remaining)
Median Time to Grant
Low
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