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 Office action is in reply to filing by applicant on 06/23/2026.
Claims 1, 10, and 19 were amended by Applicant.
Claims 2 – 9, 11 – 18, and 20 remain as original.
Claims 1 – 20 are currently pending and have been examined.
The prior 35 USC 103 claim rejections set forth in the Non-Final rejection of 03/27/2026 as to claims 1 – 20 are maintained in view of Applicant's arguments and amendments.
THIS ACTION IS MADE FINAL.
Response to Arguments
There are no new grounds of rejection herein as to any of the claims.
Applicant argues per 35 USC 103 that the citations provided by examiner do not adequately serve to reject certain (see below) claims herein. Remarks 7 - 8. Examiner respectfully disagrees, and points Applicant to the detailed 35 USC 103 analysis below.
Specifically, Applicant argues that
Rahamat does not teach or suggest a computer chip configured to be reinserted into a chip card after removal from a SIM card slot. Rahamat describes a chip package that is "encapsulated with thermal epoxy for protection" and "attached to card body's cavity by adhesive in the form of paste or film." Rahamat, [0007]. This describes permanent assembly of a SIM card during manufacturing- not a chip designed for removal from a card, use in a user device, and reinsertion back into the card. Rahamat's chip package, once encapsulated and adhered into the card body's cavity, is not intended to be removed and reinserted.
Remarks 7.
Examiner respectfully disagrees.
Applicant essentially argues that Rahamat's chip package is simply not intended to be removed. This is flat wrong, as even its abstract says:
The support carrier is sufficiently flexible to bend when the SIM card is being inserted into or removed from a SIM card holder.(Abstract published 12/29/2011).
Generally as to obviousness, examiner submits that it is determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685,686 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,147 (CCPA 1976). Using this standard, examiner submits that the burden of presenting a prima facie case of obviousness was successfully established in the prior Office Action of 03/27/2026, and also respecting the pending amended claim set of 06/23/2026, as seen below.
Examiner recognizes that references cannot be arbitrarily altered or modified, and that there must be some reason why a person having ordinary skill in the relevant art would be motivated to make the proposed modifications. Although the motivation or suggestion to make modifications must be articulated, it is respectfully submitted that there is no requirement that the motivation to make modifications must be expressly articulated within the references themselves. References are evaluated by what they suggest to one versed in the art, rather than by their specific disclosures, In re Bozek, 163 USPQ 545 (CCPA 1969).
Examiner also notes that the motivation to combine the applied references is, where appropriate in the below detailed analysis pursuant to 35 USC 103, additionally accompanied by select passages from the respective references which specifically support that particular motivation. It is also respectfully submitted that motivation based on the logic and scientific reasoning of one ordinarily skilled in the art at the time of the invention, which evidence can also support a finding of obviousness, is otherwise provided in the detailed 35 USC 103 analysis of the claim set below. In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning).
Examiner recognizes that obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to a person of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347.
Claim Rejections – 35 USC 103
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 is incorrect, any correction of the statutory basis 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 USC 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 USC 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.
Claims 1 – 5, 10 – 14, and 19 are rejected pursuant to 35 USC 103 as being unpatentable over Rahamat (US20110315779A1) in view of Kamal (US8406810B1).
Regarding Claims 1, 10, and 19: (claim 19’s addition limitation is included below, noting that claim 19 reads on both independent claims 1 and 10);
Rahamat discloses:
A device comprising: (“FIG. 1 shows a mobile device with an embodiment of a SIM card;”, [010]);
a chip card configured to releasably receive a computer chip into a card chip substrate; (“In another embodiment, a method of forming a multi-functional SIM card is disclosed. Required ICs and components for the SIM card's desired functionality are mounted onto a package substrate, such as a PCB, and encapsulated with thermal epoxy for protection. The molded substrate is singulated to form individual multi-functional chip packages. These packages are then encased within a support carrier, such as a flexible plastic casing, that forms the rest of the SIM card body. The flexible plastic SIM card body may be formed by injection molding, with a cavity for the multi-functional chip package, which is later inserted into the card body and attached to card body's cavity by adhesive in the form of paste or film.”, [007]) and (“Preferably, the adhesive comprises an insulating adhesive. Various types of adhesives, for example, epoxy, paste or tape, can be used. Other techniques for mounting the chip to the substrate, such as adhesive tape, are also useful.”, [026]), the easily removable chip can be attached with tape to the carrier and the chip card can otherwise reasonably receive the SIM chip;
and the computer chip configured to:
(1) be removably attached to the chip card (“Preferably, the adhesive comprises an insulating adhesive. Various types of adhesives, for example, epoxy, paste or tape, can be used. Other techniques for mounting the chip to the substrate, such as adhesive tape, are also useful.”, [026]);
(2) be insertable into a subscriber identity module (SIM) card slot of a user device, and (“Embodiments relate generally to multi-functional SIM cards. The SIM card can be used in portable electronic devices or handheld devices such as mobile phones. … The SIM card includes a support carrier having a first and second major surface. The support carrier includes a cavity which extends partially into the carrier from the first major surface. The SIM card further includes a multi-functional chip package disposed within the cavity. The support carrier is sufficiently flexible to bend when the SIM card is being inserted into or removed from a SIM card holder.”, [005]) ;
(3) communicate with the user device through the SIM card slot. (For example, the chip may include a communication device or SIM device, such as a memory or microprocessor chip. Additionally, the chip can further include other IC devices such as RF, decoder and/or security devices, as well as other types of devices or components to form a multi-functional SIM card. The SIM card can be incorporated into various mobile, portable, handheld or telecommunication products, such as mobile phones, computers, personal digital assistants or other types of suitable products.”, [015]) and (“The SIM card holder includes a plurality of electrical contacts (not shown) which electrically connects the contacts of the SIM card with the circuit board of the mobile device.”, [017]) and (“A subscriber identity module (SIM) card is generally used to store information of a user, such as a subscriber of a telecommunication line. For example, a SIM card may securely store subscriber information using the International Mobile Subscriber Identity (IMSI) format. The SIM card can be inserted into a telecommunication device,”, [002]);
and (4) be reinserted into the chip card after removal from the SIM card slot of the user device. (“From the foregoing discussion, it is desirable to provide an improved SIM card which can be easily removed from or inserted into a device.”, [004]).
Rahamat does not expressly disclose, but Kamal teaches: (note that this is the additional limitation from independent claim 19)
authenticating, with the user device, a financial account for an owner of the user device based on the computer chip inserted into the user device. (“In such an example, authentication element 200 installed in user device 300 is a secure element used to authenticate the user of the device and issue a payment authorization for transmission to an antenna of the payment terminal. In order to issue payment authorizations, authentication element 200 may store authentication data including bank, credit card, or other financial account information for the user of the authentication element 200 and user payment device 300.”, [col. 12: 55 – 64]) and (“For example, a UIC such as a SIM card authenticates a user mobile device on a mobile network; a secure element authenticates a user device in a wireless payment transaction. The authentication semiconductor element has a small form factor”, [col. 4: 55 – 60]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to have modified Rahamat to incorporate the teachings of Kamal because Rahamat would be more efficient and versatile if it could exchange financial info, thus allowing the device to make payments, as was done in Kamal . (“In order to issue payment authorizations, authentication element 200 may store authentication data including bank, credit card, or other financial account information for the user of the authentication element 200 and user payment device 300.”, [col. 12: 58 – 64]).
Regarding claims 2 and 11:
The combination of Rahamat and Kamal disclose the limitations of claims 1 and 10, respectively:
Kamal further teaches:
wherein the computer chip is further configured to transmit to the user device, identification data stored by the card chip as an auxiliary multifactor authentication input. (“CPU 606 may take the form of one or more processors, gate arrays, and/or circuit elements for executing program instructions and providing functionalities of an authentication semiconductor element. One or more storage devices such as memory storage device 602, read-only memory 608, and/or random-access memory 610, store pro gram instructions for execution by CPU 606, as well as authentication data, user data, and the like. For a mobile device application, for example, authentication data stored in authentication element 600 may include a mobile directory number (MDN), mobile identification number (MIN), international mobile subscriber identity (IMSI) number, or other identifier for uniquely identifying the authentication element and the user device it is installed in when the user device connects to a communication network.”, [col: 12: 25 – 39]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to have modified Rahamat to incorporate the teachings of Kamal because Rahamat would be more efficient if the installed chip could also identify the user using the network, as was done in Kamal . (“FIG. 7 is a high-level functional block diagram of an exemplary user device as may utilize the authentication semiconductor element to perform authentication and identification through a communication network.”, [col. 4: 28 – 32]).
Regarding claims 3 and 12:
The combination of Rahamat and Kamal disclose the limitations of claims 1 and 10, respectively:
Rahamat further teaches:
wherein the computer chip is configured to be removed from the chip card by one or more fingers. (“Preferably, the adhesive comprises an insulating adhesive. Various types of adhesives, for example, epoxy, paste or tape, can be used. Other techniques for mounting the chip to the substrate, such as adhesive tape, are also useful.”, [026]),
Regarding claims 4 and 13:
The combination of Rahamat and Kamal disclose the limitations of claims 1 and 10, respectively:
Rahamat further teaches:
wherein the computer chip is configured to be removed from the chip card by one or more tools. (“Preferably, the adhesive comprises an insulating adhesive. Various types of adhesives, for example, epoxy, paste or tape, can be used. Other techniques for mounting the chip to the substrate, such as adhesive tape, are also useful.”, [026]),
Regarding claims 5 and 14:
The combination of Rahamat and Kamal disclose the limitations of claims 1 and 10, respectively:
Rahamat further teaches:
wherein the computer chip is configured to be removed from the chip card by application of a twisting force to the chip card. Examiner interprets this limitation broadly such that the undefined “twisting force” may certainly include a human hand removing the taped on chip. (“Preferably, the adhesive comprises an insulating adhesive. Various types of adhesives, for example, epoxy, paste or tape, can be used. Other techniques for mounting the chip to the substrate, such as adhesive tape, are also useful.”, [026]) and (“Preferably, the adhesive comprises an insulating adhesive. Various types of adhesives, for example, epoxy, paste or tape, can be used. Other techniques for mounting the chip to the substrate, such as adhesive tape, are also useful.”, [026]), a person removes tape by pulling and twisting as necessary.
Claims 6, 15, and 20 are rejected pursuant to 35 USC 103 as being unpatentable over Rahamat (US20110315779A1) in view of Kamal (US8406810B1) and in further view of Saunders (US20060074813A1).
Regarding claims 6, 15, and 20:
The combination of Rahamat and Kamal disclose the limitations of claims 1, 10, and 19, respectively:
That combination does not disclose, but Saunders teaches:
further comprising a latched slide configured to releasably hold the computer chip, wherein the computer chip is configured to be removed from the chip card by moving the latched slide from a locked position to an unlocked position. (“For example, in the embodiment shown, carrier 400 is of similar shape as the module 20 depicted in FIG. 12 (e.g., square), although the carrier 400 may take any shape. In one embodiment, the carrier 400 may be dimensionally larger than the module 20 to ensure that the module may be enclosed therein although any carrier 400 shape or size may be used. The carrier 400 may include a recess 402 in which the module 20 may be snuggly fitted. The carrier 400 may include a first 404 and second 406 carrier door. First 404 and second 406 carrier door may include the recess 402 included in one panel of each door. The recess 402 forms a cavity when the doors 404, 406 are positioned one on the other. The module 20 may be secured in the cavity. The doors 404 and 406 may be in communication along one side by hinges 408, which permit the doors 404, 406 to be closed one on top of the other with the module 20 interposed in between. The doors 404, 406 may be secured one to the other by the hinges 408 and a suitable latch 410 configured to ensure that the doors 404, 406 remain fastened one to the other and the module 20 remains inside the carrier 400 during transaction completion.”, [0112]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to have modified Rahamat to incorporate the teachings of Saunders because Rahamat would be more secure if a latch were used to secure the card as was done in Saunders. (“The doors 404, 406 may be secured one to the other by the hinges 408 and a suitable latch 410 configured to ensure that the doors 404, 406 remain fastened one to the other and the module 20 remains inside the carrier 400 during transaction completion.”, [0112]).
Claims 7, 8, 9, 16, 17, and 18 are rejected pursuant to 35 USC 103 as being unpatentable over Rahamat (US20110315779A1) in view of Kamal (US8406810B1) and in further view of Chen (US20050279655A1).
Regarding claims 7 and 16:
The combination of Rahamat and Kamal disclose the limitations of claims 1 and 10, respectively:
That combination does not disclose, but Chen teaches:
wherein the computer chip is configured to be removed from the chip card by activation of a push button thereby resulting in ejection of the computer chip from the chip card. (“One side of the card body can have a fastener attached to the second side of the card body for attaching the card body to another item intended to carry the holder and cellular phone chip. The fastener can be an adhesive, a tape, a button, a snap, or VELCRO. The holder can have a writable surface for a user to organize and keep track of their various chips used during travel. The writeable surface can be positioned on the card body or the sheet.”, [009])
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to have modified Rahamat to incorporate the teachings of Chen because Rahamat would be more versatile if common items such as an adhesive, a tape, a button, a snap, or VELCRO were used to secure the card as was done in Chen . (“The fastener can be an adhesive, a tape, a button, a snap, or VELCRO. The holder can have a writable surface for a user to organize and keep track of their various chips used during travel. The writeable surface can be positioned on the card body or the sheet.”, [009]).
Regarding claims 8 and 17:
The combination of Rahamat and Kamal disclose the limitations of claims 1 and 10, respectively:
That combination does not disclose, but Chen teaches:
wherein the computer chip is releasably attached to the chip card by a snap. (“One side of the card body can have a fastener attached to the second side of the card body for attaching the card body to another item intended to carry the holder and cellular phone chip. The fastener can be an adhesive, a tape, a button, a snap, or VELCRO. The holder can have a writable surface for a user to organize and keep track of their various chips used during travel. The writeable surface can be positioned on the card body or the sheet.”, [009]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to have modified Rahamat to incorporate the teachings of Chen because Rahamat would be more versatile if common items such as an adhesive, a tape, a button, a snap, or VELCRO were used to secure the card as was done in Chen . (“The fastener can be an adhesive, a tape, a button, a snap, or VELCRO. The holder can have a writable surface for a user to organize and keep track of their various chips used during travel. The writeable surface can be positioned on the card body or the sheet.”, [009]).
Regarding claims 9 and 18:
The combination of Rahamat, Kamal and Chen disclose the limitations of claims 8 and 17, respectively:
Kamal further teaches:
further comprising a tray embedded in the chip card substrate wherein the computer ship is configured to snap into the tray. (“Socket 309, however, may be formed in various locations on the user device. For example, FIG. 5 a shows a user device 300′ having a tray 321 which slides into an opening 322 formed in a side of the user device, and which has a socket 309 formed on a surface of the tray for accepting an authentication element 200.
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to have modified Rahamat to incorporate the teachings of Kamal because Rahamat would be more efficient and versatile if it could exchange financial info, thus allowing the device to make payments, as was done in Kamal . (“In order to issue payment authorizations, authentication element 200 may store authentication data including bank, credit card, or other financial account information for the user of the authentication element 200 and user payment device 300.”, [col. 12: 58 – 64]).
CONCLUSION
THIS ACTION IS MADE FINAL. 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.
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached form 892.
Strand (US5790659A) - A SIM card holder for a cellular telephone having enclosing front and rear covers and a printed circuit board, includes a base mounted in the cover, the base having a slot for receiving a SIM card on a shelf bordered by side and end walls. The slot opens into the battery compartment of the telephone. A plurality of electrical conductors are mounted in the base, each conductor having a card contact disposed on the shelf and a terminal extending from the base for connection with the printed circuit board in the telephone. An ejector is disposed for sliding movement on the base, which includes a body having an abutment wall for cooperation with an edge of the SIM card, and a button for manipulation of the ejector, the button extending from a slot in the cover.
Tang (US20150093938A1) - A smart card connection circuit of an electronic device which includes a card holder, a travel switch, and a switching unit; a contact of the travel switch is located in the card holder, and an output end of the travel switch is connected to a control end of the switching unit; and when a smart card at a preset position in the card holder leaves the preset position, the smart card leaves the contact of the travel switch, the travel switch controls the switching unit to switch to a second output end, and each signal cable pin on the card holder is grounded by using the switching unit before a power cable pin on the card holder is grounded by using the switching unit. The present invention is applied to electronic devices such as a mobile phone and a tablet computer.
Ryon (US20080194294A1) - The telecommunication device (6) comprises: a housing (12), a Subscriber Identity Module (SIM) card holder (28) within the housing, and a printed circuit board (14) having a baseband processor and a first radio transceiver (16) to receive and transmit a plurality of telephone calls, a second radio transceiver (30) adapted to communicate with a SIM card inserted into the SIM card holder using wireless communication.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW COBB whose telephone number is (571) 272-3850. The examiner can normally be reached 9 - 5, M - F.
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 call examiner Cobb as above, or 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, Peter Nolan, can be reached at (571) 270-7016. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/MATTHEW COBB/Examiner, Art Unit 3661
/PETER D NOLAN/Supervisory Patent Examiner, Art Unit 3661
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