DETAILED ACTION
This Final Office Action is in response to the application filed on 01/03/2025 and the Amendment & Remark filed on 04/24/2026.
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
Claims 11 and 12 are added.
Claims 1 and 5 are amended.
Claims 1-12 are pending.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
As an initial matter, the claims as a whole are to an apparatus, which falls within one or more statutory categories. (Step 1: YES) The recitation of the claimed invention is then further analyzed as follow, in which the abstract elements are boldfaced.
Claim 1 recites:
A card renewal machine comprising:
a card reader configured to receive and extract one or more card details pertaining to a card inserted within the machine; and
a processing device in communication with a central server associated with one or more card issuers, the processing device is operatively coupled to the card reader, wherein the processing device is configured to:
receive, from the card reader, the extracted card details pertaining to the inserted card;
retrieve, from the central server, one or more user details of a registered user associated with the inserted card based on the extracted card details;
authenticate, using one or more authentication modes, the inserted card and the registered user based on the extracted card details and/or the retrieved user details; and
extract an expiration date of the received card from the extracted card details and correspondingly mark the received card as an expired card upon completion of the expiration date;
wherein the machine is configured to destroy or deactivate the inserted card and generate a new card upon expiration of the inserted card or upon receiving a card renewal request from the authenticated user,
wherein the machine comprises a holder configured to receive the inserted card and to secure the received card in a predetermined position and orientation when the machine destroys or deactivates the card.
Based on the limitations above, the claims describe a process that covers card renewal. Card renewal manages the contractual relationship of a card holder and is considered to be a commercial interaction, which falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. As such, the claim(s) recite(s) a Judicial Exception. (Step 2A prong one: Yes)
This analysis then evaluates whether the claims as a whole integrates the recited Judicial Exception into a practical application of the exception. In particular, the claims recite the additional element(s) of “processing device” and “machine” as a mere tool to perform the steps of the Judicial Exception, which encompasses no more than Mere Instruction to Apply.
For example, the limitation “a card reader configured to receive and extract one or more card details pertaining to a card inserted within the machine” encompasses no more than generically invoking a card reader to apply the Judicial Exception step of receiving and extracting one or more card details;
the limitation “receive, from the card reader, the extracted card details pertaining to the inserted card” encompasses no more than generically invoking a processing device to apply the Judicial Exception step of receiving the extracted card details;
the limitation “retrieve, from the central server, one or more user details of a registered user associated with the inserted card based on the extracted card details” encompasses no more than generically invoking a processing device to apply the Judicial Exception step of retrieving the one or more user details of a registered user associated with the card based on the extracted card details;
the limitation “authenticate, using one or more authentication modes, the inserted card and the registered user based on the extracted card details and/or the retrieved user details” encompasses no more than generically invoking a processing device to apply the Judicial Exception step of authenticating the inserted card and the registered user;
the limitation “extract an expiration date of the received card from the extracted card details and correspondingly mark the received card as an expired card upon completion of the expiration date” encompasses no more than generically invoking a processing device to apply the Judicial Exception step of extracting the expiration date of the card and marking the card as an expired card;
the limitation “wherein the machine is configured to destroy or deactivate the inserted card and generate a new card upon expiration of the inserted card or upon receiving a card renewal request from the authenticated user” encompasses no more than generically invoking a machine to apply the Judicial Exception step of destroying or deactivating the card and generating a new card upon condition;
the limitation “wherein the machine comprises a holder configured to receive the inserted card and to secure the received card in a predetermined position and orientation when the machine destroys or deactivates the card” encompasses no more than generically invoking a processing device to apply the Judicial Exception step of receiving the card and securing the received card in a predetermined position and orientation when destroying or deactivating the card.
Other than being generally linked to the steps of the Judicial Exception, the additional elements in the above step(s) is/are recited at a high-level of generality, without technological detail of how the particular steps are performed technologically.
The additional element(s) of “in communication with a central server”, “the processing device is operatively coupled to the card reader” and “from the central server” are generically recited to perform communication steps such as receiving and retrieving.
The additional element(s) of “card reader” are generically recited to perform data extraction steps described only by a result-oriented solution with insufficient detail for how the card reader accomplish it.
The additional element(s) of “holder” are generically recited to perform receiving and securing steps described only by a result-oriented solution with insufficient detail for how the holder accomplish it.
The additional element(s) of “machine” are generically recited to perform card destroying, card deactivating and new card generating steps described only by a result-oriented solution with insufficient detail for how the machine accomplish it.
The examiner noted the generic computer elements are mere instructions to implement the Judicial Exception on a computer environment. Indeed, the instant claims (1) attempted to cover a solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result; (2) used of a computer or other machinery in its ordinary capacity for economic or other tasks or simply added a general purpose computer or computer components after the fact to the Judicial Exception and (3) generally applied the Judicial Exception to a generic computing environment without limitation indicative of practical application (See MPEP 2106.04(d)I). Thus, the claims are no more than Mere Instruction to Apply the Judicial Exception (See MPEP 2106.05(f)) or adding insignificant extra-solution activity to the judicial exception (See MPEP 2106.05(g)), which do not integrate the cited Judicial Exception into practical application (Step 2A prong two: No) The claims are directed to a Judicial Exception.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor or machine to facilitate card renewal amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The examiner also noted that using a generically recited card reader to extract information from card is considered to a well‐understood, routine, and conventional computer functions. (MPEP 2106.05(d) v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) ) No additional element currently recited in the claims amount the claims to be significantly more than the cited abstract idea. (Step 2B: No)
Therefore, claim 1 is rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claims 2, 3, 11 and 12, however, each recites physical transformation of matters such as “to actuate the hole-punching device to receive the card from the card reader and further punch one or more holes in a chip-set area or magnetic strip area of the card upon expiration of the card and/or upon receiving the card renewal request to destroy the card, wherein the machine is configured to transfer the card having the punched hole to an expired card collection tray enclosed within the machine”, “to actuate the card printing and embossing device to receive the new card from a card container storing one or more new cards and print and/or emboss one or more new card details and/or at least one of the user details of the registered user”, “an electromagnetic and/or microwave element configured to internally burn or destroy a chip-set area and/or a magnetic strip of the inserted card using electromagnetic waves and/or microwaves” and “a heating element configured to burn and/or destroy a chip-set area and/or a magnetic strip of the inserted card”. Since claims 2, 3, 11 and 12 recite additional elements effecting a transformation or reduction of a particular article to a different state or thing, the claims integrate the Judicial Exception into practical application. (Step 2A prong two: YES)
As such, claims 2, 3, 11 and 12 are directed to eligible subject matters.
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.
Claim(s) 1 and 3-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billman (US 8157164) in view of TODMIA et al. (US 2022/0335407).
As per claim 1, Billman teaches an apparatus comprising:
a card reader configured to receive and extract one or more card details pertaining to a card inserted within the machine; (See Billman Col. 10 Line 26-46)
a processing device in communication with a central server associated with one or more card issuers, (See Billman Col. 10 Line 26-46) the processing device is operatively coupled to the card reader, wherein the processing device is configured to:
receive, from the card reader, the extracted card details pertaining to the inserted card; (See Billman Col. 10 Line 26-46)
retrieve, from the central server, one or more user details of a registered user associated with the inserted card based on the extracted card details; (See Billman Col. 10 Line 26-46)
authenticate, using one or more authentication modes, the inserted card and the registered user based on the extracted card details and/or the retrieved user details; (See Billman Col. 10 Line 26-46)
extract an expiration date of the received card from the extracted card details and correspondingly mark the received card as an expired card upon completion of the expiration date; (See Billman Col. 10 Line 26-46)
wherein the machine is configured to destroy or deactivate the inserted card and generate a new card upon expiration of the inserted card or upon receiving a card renewal request from the authenticated user. (See Billman Col. 5 Line 34-46 and Col. 10 Line 56- Col. Line 3)
a card destroyer device configured to receive the inserted card to destroy and deactivate the inserted card. (See Billman Col. 5 Line 34-46 and Col. 10 Line 56- Col. Line 3)
Billman does not explicitly teach a holder configured to secure the received card in a predetermined position and orientation when the machine destroys or deactivates the card.
TODMIA teaches a card transport assembly to secure a card in a predetermined position and orientation when operates on the card. (See TODMIA Paragraph 0030 and 0068)
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman with teaching from TODMIA to secure the card to be destroyed in a predetermined position and orientation when destroying. One of ordinary skill in the art would have been motivated as it would reduce failure of card destruction caused by wrong card positioning and orientation.
As per claim 3, Billman in view of TODMIA teaches:
wherein the machine comprises a card printing and embossing device operatively coupled to the processing device, wherein the processing device is configured to actuate the card printing and embossing device to receive the new card from a card container storing one or more new cards and print and/or emboss one or more new card details and/or at least one of the user details of the registered user on the new card upon receiving the card renewal request from the authenticated user. (See Billman Col. 5 Line 12-21 and 34-46)
As per claim 4, Billman in view of TODMIA teaches:
wherein the machine comprises an ejector configured with the card printing and embossing device and operatively coupled to the processing device, wherein the processing device is configured to actuate the ejector to eject the printed and/or embossed card out of the machine to the registered user. (See Billman Col. 5 Line 34-41)
As per claim 5, Billman in view of TODMIA teaches:
wherein the processing device is configured to map the one or more new card details with the user details of the registered user and correspondingly transmit the mapped data to the central server, wherein the central server or the one or more card issuers update the card details of the old card with the mapped data or the one or more new card details. (See Billman Col. 8 Line 66 – Col. 9 Line 22)
As per claim 6, Billman in view of TODMIA teaches:
wherein the machine comprises a human-machine interface (HMI) comprising an input unit and a display unit, operatively coupled to the processing device, wherein the HMI is configured to allow the registered user to send the card renewal request to the processing device and facilitate in completing the authentication during the one or more authentication modes. (See Billman Col. 8 Line 66 – Col. 9 Line 22)
As per claim 7, Billman does not explicitly teach a housing accommodating one or more components of the machine, wherein the housing comprises: a card insert slot that allows the user to insert the card to be renewed within the machine, wherein the card reader is positioned within the housing behind or adjacent to the card insert slot to receive the inserted card; and a card ejection slot that allows the ejection of the new card out of the machine into a tray, wherein the card printing and embossing device and the ejector are positioned within the housing behind or adjacent to the card ejection slot.
However, TODMIA teaches a card dispenser comprises a card insert slot that allows the user to insert the card to an automated teller machine, wherein the card reader is positioned within the housing behind or adjacent to the card insert slot to receive the inserted card; and a card ejection slot that allows the ejection of the new card out of the machine into a tray, wherein the card printing and embossing device and the ejector are positioned within the housing behind or adjacent to the card ejection slot. (See TODMIA Paragraph 0027-0030)
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman with teaching from TODMIA to house card reader behind or adjacent to receive the inserted card, a card ejection slot allows the ejection of the new card into a tray and ejector positioned behind or adjacent to card ejection slot. One of ordinary skill in the art would have been motivated as arranging feeder slot behind or adjacent to the feeder and ejector slot behind or adjacent to the ejection allows direct access to the component, yielding predictable result.
As per claim 8, Billman in view of TODMIA teaches:
wherein the processing device is configured to: generate and display, on the HMI, a request to the user for entering a unique PIN associated with the card upon inserting the card within the machine, wherein the HMI allows the user to enter the PIN; and compare the entered PIN with a pre-stored registered PIN associated with the corresponding card and correspondingly authenticate the card and the user upon a positive matching of the entered PIN with the pre-stored registered PIN. (See Billman Col. 10 Line 26-46. PIN authentication inherently includes comparing an entered PIN to a stored PIN)
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billman (US 8157164) in view of TODMIA et al. (US 2022/0335407), further in view of Muir et al. (US 2007/0032295)
As per claim 2, Billman in view of TODMIA teaches wherein the machine comprises a card destroyer device operatively coupled to the processing device, wherein the processing device is configured to actuate the card destroyer device to receive the card from the card reader and further destroy the card upon expiration of the card and/or upon receiving the card renewal request to destroy the card, wherein the machine is configured to transfer the card having the destroyed card to an expired card collection tray enclosed within the machine. (See Billman Col. 5 Line 34-46 and Col. 10 Line 56- Col. Line 3)
Billman in view of TODMIA does not but Muir teaches the punching hole to punch one or more holes in a chip-set area or magnetic strip area of the card to destroy a card.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman in view of TODMIA with teaching from Muir to destroy expired card by punching one or more holes to the magnetic strip of the card. One of ordinary skill in the art would have been motivated as punching hole to the magnetic strip is simple substitution of the cutting and shredding card destruction method taught in Billman, yielding predictable result.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billman (US 8157164) in view of TODMIA et al. (US 2022/0335407) in view of Official Notice.
As per claim 9, Billman teaches print the new card and allow the user to collect the printed new card from the machine upon a positive authentication of the user, (See Billman Col. 10 Line 26-46) but does not teach generate and transmit, on a registered mobile device associated with the registered user.
Official Notice is taken that sending One-Time Password authentication to a registered mobile device of a user is a common additional authentication step in the financial industry.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman in view of TODMIA with common industry practice of authenticating the user using OTP. One of ordinary skill in the art would have been motivated as using common industry practice predictably improves transaction security.
As per claim 10, Billman does not teach wherein the processing device is configured to generate an alert and eject the inserted card out of the machine upon a negative matching of the entered PIN with the pre-stored registered PIN.
Official Notice is taken that generating an alert and ejecting an inserted card upon negative PIN authentication is a common additional authentication step in the financial industry.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman in view of TODMIA with common industry practice of generating an alert and ejecting an inserted card upon negative PIN authentication. One of ordinary skill in the art would have been motivated as using common industry practice predictably improves transaction security.
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billman (US 8157164) in view of TODMIA et al. (US 2022/0335407), further in view of Fettis (US 2002/0186131)
As per claims 11 and 12, Billman in view of TODMIA teaches wherein the machine comprises a card destroyer device operatively coupled to the processing device, wherein the processing device is configured to actuate the card destroyer device to receive the card from the card reader and further destroy the card upon expiration of the card and/or upon receiving the card renewal request to destroy the card, wherein the machine is configured to transfer the card having the destroyed card to an expired card collection tray enclosed within the machine. (See Billman Col. 5 Line 34-46 and Col. 10 Line 56- Col. Line 3)
Billman in view of TODMIA does not but Fettis teaches an electromagnetic and/or microwave element configured to internally burn or destroy a chip-set area and/or a magnetic strip of the inserted card using electromagnetic waves and/or microwaves and a heating element configured to burn and/or destroy a chip-set area and/or a magnetic strip of the inserted card. (See Fettis Paragraph 0077 and 0083)
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman in view of TODMIA with teaching from Muir to destroy expired card by burning or destroying magnetic strip of the card with heat and/or electromagnetic wave. One of ordinary skill in the art would have been motivated as burning the magnetic strip is simple substitution of the cutting and shredding card destruction method taught in Billman, yielding predictable result of card information destruction.
Response to Arguments
Applicant's arguments filed on 04/24/2026 have been fully considered but they are not persuasive.
Regarding the applicant’s argument that claims do not recite a Judicial Exception, the examiner respectfully disagrees. The applicant argued that “managing a financial relationship of a cardholder” is not one or the enumerated sub-groupings. MPEP 2106.04(a)(a) however indicates “Commercial interactions” or “legal interactions” include agreements in the form of contracts. The renewal of a transaction card is a renewal of contractual relationship between the card holder and the card issuer. As such, the argument is not persuasive.
Regarding the applicant’s argument that claims integrates the Judicial Exception into practical application, the examiner respectfully disagrees. The holder emphasized by the applicant is described in a result-only and highly generalized manner of “a holder configured to receive the inserted card and to secure the received card in a predetermined position and orientation when the machine destroys or deactivates the card”. The generically recited holder, similar to the scanner in Content Extraction v. Wells Fargo, is no more than a tool merely invoked to apply the receiving and securing step of the card renewal process. Mere Instruction to Apply does not integrate Judicial Exception into practical application. As such, the argument is not persuasive.
Regarding the applicant’s argument that claims amounts to significantly more, the examiner respectfully disagrees. The applicant asserted the claimed “holder which secures the received card in a predetermined position and orientation” to be “more than well-understood, routine or conventional functionality of card renewal machine”. However, such assertion is unsubstantiated. Moreover, as discussed above, the recited holder is no more than a tool merely invoked to apply the receiving and securing step of the card renewal process. No technological improvement was asserted or substantiated by the Specification regarding the holder. As such, the argument is not persuasive.
Regarding the applicant’s argument that TODMIA does not teach “a holder configured to secure the received card in a predetermined position and orientation when the machine destroys or deactivates the card”, the examiner respectfully disagrees. As indicated in the rejection, TODMIA teaches a card transport assembly to secure a card in a predetermined position and orientation when operates on the card. (See TODMIA Paragraph 0030 and 0068) It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to modify the card renewal system taught by Billman with teaching from TODMIA to secure the card to be destroyed in a predetermined position and orientation when destroying. One of ordinary skill in the art would have been motivated as it would reduce failure of card destruction caused by wrong card positioning and orientation. As such, the argument is not persuasive.
The applicant’s response did not adequately traverse the Official Notice. The Official Notice of “sending One-Time Password authentication to a registered mobile device of a user is a common additional authentication step in the financial industry” and “generating an alert and ejecting an inserted card upon negative PIN authentication is a common additional authentication step in the financial industry” are taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate. See Ahlert, 424 F.2d at 1091, 165 USPQ at 420.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHO KWONG whose telephone number is (571)270-7955. The examiner can normally be reached 9am - 5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL W ANDERSON can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHO YIU KWONG/Primary Examiner, Art Unit 3693
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