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 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Locke et al, US Pub. 2019/0303917, in view of XU CN 211319265.
Locke et al disclose a dynamic transaction card including a secure payment chip comprising: a top output layer and a top protective layer (see paragraphs [0059], [0111], figure 2 ); a card backing (see paragraph [0128], figure 2); a potting including hot lamination of the outer films to the body of the card using thermoactivated adhesive (see paragraph [0112], figure 2); the secure payment chip included in the dynamic transaction card (see paragraph
[0059], figure 2); and a chassis constructed out of a conductive material as a frame or supporting structure (see paragraph [0128], figure 2).
To further clarify the examiner position Locke et al disclose (fig. 2) a transaction card, comprising: a first rigid layer (204, 206, these elements formed the first rigid layer) having a first external surface and a first internal surface, the first rigid layer comprising a pocket (fig. 2, pocket in layer 206) within the first external surface of the first rigid layer; a second rigid layer (232) having a second external surface and a second internal surface; a binding layer ("hot lamination") between the first rigid layer and the second rigid layer, the binding layer comprising a binding medium affixing the first internal surface of the first rigid layer to the second internal surface of the second rigid layer; an integrated circuit chip (216) affixed within the pocket of the first rigid layer.
Locke et al fail to explicitly disclose that a metallic rim extending from a first external surface of first rigid layer around a first edge of a first rigid layer and a second edge of a second rigid layer and onto a second external surface of the second rigid layer.
Xu discloses an intelligent card with metal frame comprising: a metal frame having U-shaped cross-section, wherein an opening position of the U-shaped cross-section is engaged with the circumference of a smart card body and a front top and a back bottom of the metal frame are respectively flush with a front top and a back bottom of the smart card (see paragraph [0034], claim 1, figures 1-12).
In view of the teachings Xu, it would have been obvious to a person skilled in the art to combine Locke et al and Xu to arrive at the claimed subject matter. Such combination would provide a card with greater intensity/strength and enhance the appearance of the card. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claims 2-4, 10-11, 17, further comprising a magnetic stripe attached to the second rigid layer and positioned on the external surface of the second rigid layer. With respect to the position of the magnetic stripe, such limitation is a matter of meeting specific customer requirements in order to effectively read the information on the magnetic stripe, which therefore, obvious.
Regarding claims 5 and 12, further comprising an antenna positioned between the first rigid layer and the second rigid layer, the antenna being inductively coupled to the integrated circuit chip (fig. 2 of Locke et al).
Regarding claims 6 and 13, further comprising an antenna positioned between the first rigid layer and the second rigid layer, the antenna being connected to the integrated circuit chip via a contact pad (fig. 2 of Locke et al).
Regarding claims 7 and 14, wherein the integrated circuit chip (EMV chip par. 0112) further comprises an antenna (fig. 2 of Locke et al).
Regarding claims 8, 15, and 20, Locke et al as modified by Xu fail to disclose wherein the first rigid layer and the second rigid layer comprise a chemically strengthened glass. However, the type of material used for manufacturing the card’s layers is a matter of engineering choice for meeting specific customer requirements, wherein such material (i.e. glass) is well known in the art for producing cars. Therefore, it would have been an obvious extension as taught by Locke et al as modified by Xu.
Regarding claims 18-19, the limitations have been met above.
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 1-20 of U.S. Patent No. 12,217,113 (hereinafter ‘113 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention recites similar limitations as the ‘113 Patent. For instance, in claim 1 of the current application and in the ‘113 Patent, the applicant claims:
Application No. 19/005,273
Patent No. 12,217,113
A transaction card, comprising: a first rigid layer having a first external surface and a first internal surface; a second rigid layer having a second external surface and a second internal surface; a binding layer between the first internal surface of the first rigid layer and the second internal surface of the second rigid layer, the binding layer comprising a binding medium; a pocket within the first external surface of the first rigid layer; an integrated circuit chip affixed within the pocket of the first rigid layer; and a metallic rim extending around an edge of the transaction card, the metallic rim comprising a first lip adjacent to the first external surface of the first rigid layer and a second lip adjacent to the second external surface of the second rigid layer.
A transaction card manufactured by a process comprising: placing a first rigid layer of a transaction card within a first recess of a first metallic sheet, the first recess comprising a lip and an opening; placing a binding layer on top of the first rigid layer of the transaction card, the binding layer comprising a binding medium; placing a second rigid layer on top of the binding layer; placing a second metallic sheet on top of the first metallic sheet, the second metallic sheet having a second recess with a lip and an opening; fusing the lip of the first metallic sheet together with the lip of the second metallic sheet to form a fused metal band; cutting the fused metal band along a border of the opening of the first recess; and removing the first metallic sheet and the second metallic sheet
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 1-20 of the ‘113 Patent as a general teaching for a transaction card, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘113 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘113 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 03/12/26 have been fully considered but they are not persuasive. See examiner remarks.
Remarks:
In response to the applicant’s argument regarding claim 1, the examiner respectfully disagrees. All the limitations of the claim were considered in making the rejection. The examiner position is that Locke et al disclose (fig. 2) a transaction card, comprising: a first rigid layer (204, 206, these elements formed the first rigid layer) having a first external surface and a first internal surface, the first rigid layer comprising a pocket (fig. 2, pocket in layer 206) within the first external surface of the first rigid layer; a second rigid layer (232) having a second external surface and a second internal surface; a binding layer ("hot lamination") between the first rigid layer and the second rigid layer, the binding layer comprising a binding medium affixing the first internal surface of the first rigid layer to the second internal surface of the second rigid layer; an integrated circuit chip (216) affixed within the pocket of the first rigid layer. Locke et al do not explicitly disclosed a metallic band extending from the first external surface of first rigid layer around a first edge of the first rigid layer and a second edge of the second rigid layer and onto the second external surface of the second rigid layer which relates to problem of providing a more rigid card. Xu teaches U-shaped metal frame for a smart card for improving the strength of the card. Therefore, to modify the teachings of Locke et al with a metal rim would have been an obvious extension as taught by the prior art in order to improve the card strength. The applicant seems to misread and comprehend the prior art teaching of Locke et al in fig. 2. As shown in fig. 2, elements 204 and 206 form the first rigid layer having a pocket for receiving the integrated circuit 216 (see the argument response). A pocket is merely a position where the IC is inserted, it is shown in fig. 2, the portion 206 of the first rigid layer has a pocket for inserting the IC 216. With respect to the argument that the reference XU fails to disclose a solid metal frame, the examiner respectfully disagrees. Metals turn into solid rigid material when the are used to manufacture cards, while the metals can be provided in liquid form when melting, but they are in solid rigid form when the cards are manufactured. The applicant’s argument is not persuasive. Refer to the rejection above.
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.
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