DETAILED ACTION
Status of Claims
This is a first office action in response to the application filed on 17 January 2025.
Claims 1-20 have been cancelled and claims 21-20 were added via preliminary amendment received 11 April 2025.
Claims 21-29 were withdrawn in the response to election received 19 June 2026.
Claims 30-40 are currently pending and have been considered by the examiner.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 30-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-18 of U.S. Patent No. 12229749. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite (emphasized):
US Pat. No. 12229749
Present Application (19028967)
Claim 9
Claim 30
A method for a smartcard owner user of a smartcard to authorize use of a smartcard for a financial transaction, the method comprising:
providing circuitry on the smartcard to enable storage of a generated algorithm corresponding to a first actuation sequence for confirming an identity of a user of the smartcard, wherein the first actuation sequence includes biometric information corresponding to the user and specific information known to the user, wherein the circuitry does not store the first actuation sequence, and wherein the first actuation sequence is not derivable from the generated algorithm;generating the algorithm corresponding to the first actuation sequence on the smartcard;
storing the generated algorithm corresponding to the first actuation sequence on the circuitry while the smartcard is connected to an authorizing computer to indicate authorization at a financial institution; and
performing a second actuation sequence with the smartcard to authorize the use of the smartcard for the financial transaction at a point of sale (POS) terminal; upon determining that the second actuation sequence is identical to the first actuation sequence according to a comparison of the second actuation sequence via the generated algorithm, upon determining that the second actuation sequence is identical to the first actuation sequence according to a comparison of the second actuation sequence via the generated algorithm
,the smartcard performs performing the financial transaction with the point of sale terminal; andharvesting, at an active or passive power unit of the smartcard, energy from the point of sale terminal, through insertion of the smartcard at the point of sale terminal, or through proximity to the point of sale terminal, wherein the power unit is charged or activated by power from a powering coil, and wherein the power unit provides power to the smartcard.
A method for a smartcard owner user of a smartcard to authorize use of a smartcard for a financial transaction, the method comprising:
providing circuitry to enable storage of a generated algorithm corresponding to a first actuation sequence for confirming an identity of a user of the smartcard, wherein the first actuation sequence includes biometric information corresponding to the user and specific information known to the user;
storing the generated algorithm corresponding to the first actuation sequence on the smartcard while the smartcard is connected to an authorizing computer to indicate authorization at a financial institution; and
performing a second actuation sequence with the smartcard to authorize the use of the smartcard for the financial transaction at a point of sale (POS) terminal; wherein, when the generated algorithm determines that the second actuation sequence is identical to the first actuation sequence, the smartcard performs the financial transaction with the point of sale terminal.
As highlighted in the above comparison, claim 9 of U.S. Patent No. 12229749 fully anticipates claim 30 of the present application. Therefore, it can be concluded that the invention of the present application is patentably indistinct from the invention claimed in U.S. Patent No. 12229749.
Accordingly, claim 30 of the present application be rejected under the nonstatutory double patenting doctrine.
Additionally, claims 31-38 and 40 of the present application recite similar limitations and are anticipated by limitations recited in claims 9-16 and 18 of U.S. Patent No. 12229749 and thus claims 31-39 and 40 are rejected under the nonstatutory double patenting doctrine
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 30-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 30-38 are directed towards a method and claims 39-40 are directed to a system/apparatus. Therefore, these claims fall within the four statutory categories of invention.
Claim 30 recites the following:
A method for a smartcard owner user of a smartcard to authorize use of a smartcard for a financial transaction, the method comprising:
providing circuitry to enable storage of a generated algorithm corresponding to a first actuation sequence for confirming an identity of a user of the smartcard, wherein the first actuation sequence includes biometric information corresponding to the user and specific information known to the user;
storing the generated algorithm corresponding to the first actuation sequence on the smartcard while the smartcard is connected to an authorizing computer to indicate authorization at a financial institution; and
performing a second actuation sequence with the smartcard to authorize the use of the smartcard for the financial transaction at a point of sale (POS) terminal;
wherein, when the generated algorithm determines that the second actuation sequence is identical to the first actuation sequence, the smartcard performs the financial transaction with the point of sale terminal.
Regarding Step 2A Prong One, the claims recite the abstract idea of risk mitigation. Specifically, the claims recite the limitations underlined above which recite mitigating risk associated with an economic transaction which is grouped within the Certain Methods of Organizing Human Activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP § 2106.04) because the claims involve the process of risk mitigation. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP § 2106.04(d)), the additional element(s) of the claim(s) such as a “circuitry”, “smartcard”, “authorizing computer”, “terminal” and the other nonunderlined elements of the claims merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “circuitry”, “smartcard”, “authorizing computer”, “terminal” and the other nonunderlined elements of the claims perform(s) the steps or functions underlined above. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of a “circuitry”, “smartcard”, “authorizing computer”, “terminal” and the other nonunderlined elements of the claims amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “circuitry”, “smartcard”, “authorizing computer”, “terminal” and the other nonunderlined elements of the claims perform(s) the steps or functions underlined above. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the abstract idea. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 31-38 and 40 further describe the recited abstract idea. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Specifically:
Claims 31-33 and 40 merely further describe the data elements used and collected to perform the recited abstract idea.
Claim 34 recites the additional element of a generic biometric sensor which does not place the recited abstract idea into practical application nor amount to significantly more.
Claims 35 and 37-38 merely further describe steps used to perform the recited abstract idea.
Claim 36 further describes the structure of the smart card without placing the recited abstract idea into practical application nor amounting to significantly more.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, the dependent claims are also not patent eligible.
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) 30-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nwosu et al. (US 20060224504 A1) in view of Davenport (US 20170200163 A1).
Regarding Claims 30 and 39, Nwosu discloses:
A method for a smartcard owner user of a smartcard to authorize use of a smartcard for a financial transaction (See Nwosu: Abstract – “A method and system to enable mobile merchants process transaction payments. The system uses a BID card, smart device, merchant device, smart card reader scanner writer, and RFID reader.”), the method comprising:
providing circuitry to enable storage of a generated algorithm (See Nwosu: Para. [0012] – “The smart device 101 stores the following information of the owner: owner's biometric profile such as fingerprint templates; bank accounts information, for example, checking account, savings account, pre-paid account, etc.; credit card accounts information for example Visa, Master Card, American Express, etc.; and, any other necessary personal information.”) corresponding to a first actuation sequence for confirming an identity of a user of the smartcard, wherein the first actuation sequence includes biometric information corresponding to the user and specific information known to the user (See Nwosu: Para. [0015] – “The smart card 102 hereinafter referred to as the biometric identification (BID) card is used to store the following personal information for an individual: a set of fingerprint templates; photo image; bank accounts, for example, checking account, savings account, pre-paid account, etc.; and, credit card accounts, for example, Visa, Master Card, American Express, etc.”);
storing the generated algorithm (See Nwosu: Para. [0012] – “The smart device 101 stores the following information of the owner: owner's biometric profile such as fingerprint templates; bank accounts information, for example, checking account, savings account, pre-paid account, etc.; credit card accounts information for example Visa, Master Card, American Express, etc.; and, any other necessary personal information.”) corresponding to the first actuation sequence on the smartcard while the smartcard is connected to an authorizing computer to indicate authorization at a financial institution (See Nwosu: Para. [0020] – “FIG. 1B, FIG. 3A and FIG. 3B illustrate how a customer pays a merchant for a transaction. In a typical business transaction, after a merchant and customer finalize the transaction and the customer 104 needs to pay for the transaction 109, the merchant 105 starts the host application 300 by clicking on a process button and enters the transaction information 110 into the host application running on the merchant device 106. The merchant then inserts his or her BID card 102 or plugs in his or her smart device 101 into the merchant device 111. The host application checks if the merchant has inserted his or her BID card 301 in the merchant device 111”); and
authorize the use of the smartcard for the financial transaction at a point of sale (POS) terminal (See Nwosu: Para. [0022] – “After the customer indicates the account that he/she wants the funds to be transfered from, the bank personnel selects the account or collects cash from the customer 209. The amount of transfer or cash collected is then entered 210 by the authorized bank personnel 200 into the form presented by the host application. Upon the request of the authorized bank personnel 200, the account and amount information are formatted and encrypted by the host application and sent to the remote back-end host server 108 for processing 211. The host application communicates with the remote back-end host server 108 via wired communication channel or wireless communication channel. If the request to the remote back-end host server 108 was successful, the host application updates the customer's BID card 102 or smart device 101 with formatted and encrypted information 212. The authorized bank personnel 200 then removes the customer's BID card 102 from reader/scanner/writer 201 and returns 213 the BID card to the customer.”);
However, Nwosu fails to explicitly disclose but Davenport discloses:
performing a second actuation sequence with the smartcard and wherein, when the generated algorithm determines that the second actuation sequence is identical to the first actuation sequence, the smartcard performs the financial transaction with the point of sale terminal (See Davenport: Para. [0028] – “The credit card has a darkened thumbprint pad location for placing the thumb of the user. The enhanced security credit card has a memory chip and processing chip that are actuated when the user places his thumb on the thumbprint pad. Upon being actuated, the system acquires the thumbprint of the user and compares the acquired thumbprint with that contained within the memory chip to determine the existence of a match.”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the smart card of Nwosu to additionally perform the actuation sequence and verification method of Davenport yielding the predictable result of an increase in the security strength of the invention.
Regarding Claims 31 and 40, the combination discloses:
wherein the generated algorithm does not include the actuation sequence and the actuation sequence is not derived from the generated algorithm, and wherein the actuation sequence is not stored on the smartcard (See Nwosu: Para. [0012] – “The smart device 101 stores the following information of the owner: owner's biometric profile such as fingerprint templates; bank accounts information, for example, checking account, savings account, pre-paid account, etc.; credit card accounts information for example Visa, Master Card, American Express, etc.; and, any other necessary personal information.”; See Davenport: Para. [0028] – “The credit card has a darkened thumbprint pad location for placing the thumb of the user. The enhanced security credit card has a memory chip and processing chip that are actuated when the user places his thumb on the thumbprint pad. Upon being actuated, the system acquires the thumbprint of the user and compares the acquired thumbprint with that contained within the memory chip to determine the existence of a match.”).
Regarding Claim 32, the combination discloses:
wherein the second actuation sequence is a series of finger taps made against one or more touch-sensitive pads located on the smartcard (See Davenport: Para. [0007] – “The credit card has a fingerprint sensor over which the user places a finger during swiping of a card.”).
Regarding Claim 33, the combination discloses:
wherein the second actuation sequence occurs by tracing out a pattern on a touch enabled part of the smartcard (See Davenport: Para. [0007] – “The credit card has a fingerprint sensor over which the user places a finger during swiping of a card.”).
Regarding Claim 34, the combination discloses:
wherein the biometric information is collected by a biometric sensor (See Davenport: Para. [0007] – “The credit card has a fingerprint sensor over which the user places a finger during swiping of a card. The video of this ‘Zwipe device’ is present at the finger print sensor which harvests power from the reading device, as shown in the Internet publication figure. The ‘Zwipe Internet publication does not disclose a battery powered device since it harvests energy from the reader to operate. The Internet publication does not indicate how the detected fingerprint by the finger print sensor is compared with a person's reference fingerprint. All the data is remotely transmitted with no physical contact between the charge card and the charge processing machinery. The credit card with finger print detection does not display the image of the authorized user in the credit card processing monitor so that the agent can verify that the person charging a purchase is indeed the authorized user.”).
Regarding Claim 35, the combination discloses:
wherein the second actuation sequence occurs when one or more actuation sequences are combined to activate the smartcard (See Davenport: Para. [0015-0018] – “visual validation means actuated when the multi-pin connector is inserted in the slot of the credit card charge processing terminal so that, within a short time of approximately 30 seconds, the photographic image of the authorized user is displayed on the screen as well as the credit limit, whereby the store clerk processing the credit card transaction can visually validate the user and pass the transaction through the charging system;”).
Regarding Claim 36, the combination discloses:
wherein the smartcard includes an enable button and wherein only when the enable button is depressed can the second actuation sequence be performed (See Davenport: Para. [0007] – “The credit card has a fingerprint sensor over which the user places a finger during swiping of a card. The video of this ‘Zwipe device’ is present at the finger print sensor which harvests power from the reading device, as shown in the Internet publication figure. The ‘Zwipe Internet publication does not disclose a battery powered device since it harvests energy from the reader to operate. The Internet publication does not indicate how the detected fingerprint by the finger print sensor is compared with a person's reference fingerprint. All the data is remotely transmitted with no physical contact between the charge card and the charge processing machinery. The credit card with finger print detection does not display the image of the authorized user in the credit card processing monitor so that the agent can verify that the person charging a purchase is indeed the authorized user.”).
Regarding Claim 37, the combination discloses:
wherein the point of sale terminal queries the financial institution as to the sufficiency of funds in one or more accounts of the user (See Nwosu: Abstract – “The smart card reader scanner writer is used in a banking institution when merchant or non-merchant needs to load money into his or her pre-paid account; and the RFID reader is used for communication between a smart device and host application on a personal computer”).
Regarding Claim 38, the combination discloses:
wherein a result of the matching of the second actuation sequence is indicated through at least one of an LED lamp, a sound alert, a color change, a message on a display, and a message on the POS terminal (See Davenport: Para. [0013] – “a slim blank battery powered credit card with a blank LCD display window, a thumb print location, multi-pin connector and USB connector;”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm EST.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
