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 .
Response to Arguments
Applicant’s arguments filed 7/22/2026 have been fully considered. Applicant argues the prior art fails to teach: “receiving information provided by an electronic component that is part of a package that includes a physical account card; in accordance with a determination, based on one or more electrical properties of the electronic component, that a set of one or more conditions is met, including a first condition that is met when the information indicates that the package has not been tampered with, associating the one or more resources with the physical account card”.
Applicant’s arguments are not persuasive as Levy discloses receiving information provided by an electronic component of a package including a physical account card (see Levy in at least ¶ 48, 57-62, and 98 describing receiving information provided by an electronic component of a packaged transaction card.
Applicant argues that Levy does not disclose that the information indicates that package has not been tampered with. However, applicant’s arguments are not persuasive the information provided by Levy’s electronic component indicates the card has not been tampered and allows activation and use of the transaction card (see at least ¶ 76 of Levy). This contrasts with when the electronic component indicates that the card has been tampered with (¶ 71, information indicating that the card has been tampered with).
Rejections under 35 § USC 101
Applicant has amended the claims to recite:
in accordance with a determination, based on one or more electrical properties of the electronic component, that a set of one or more conditions is met, including a first condition that is met when the information indicates that the package has not been tampered with, associating the one or more resources with the physical account card; and
in accordance with a determination, based on one or more electrical properties of the electronic component, that the set of one or more conditions is not met, forgoing associating the one or more resources with the physical account card…”
Applicant argues that amended claim language specifying that the determination is “based on one or more electrical properties of the electronic component” is sufficient to overcome the rejection under 35 § USC 101 because describing “a determination that is based on one or more electronic properties” is not a mental process since it cannot be performed in the human mind. Applicant’s arguments are not persuasive as one of ordinary skill in the art would understand that a determination could be made mentally, via observation, or on pen and paper. A broad recitation of a determination “based one” these components is insufficient to overcome the requirements of the statue. Moreover, applicant’s specification describes such an example in that a condition of the component is determined based on an observation of an electrical property of the component such as it being not intact or broken (see applicant’s specification ¶ 243).
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 1-6, 8-9, and 14 are rejected under 35 USC 101 because the claimed invention is directed towards non-statutory subject matter.
The claims the following features which are types of mental processes that can be performed in the human mind, or by a human using a pen and paper and which are representative of data gathering and/or making observations: “in accordance with a determination, based on one or more electrical properties of the electronic component, that a set of one or more conditions is met, including a first condition that is met when the information indicates that the package has not been tampered with, associating the one or more resources with the physical account card; and in accordance with a determination, based on one or more electrical properties of the electronic component, that the set of one or more conditions is not met, forgoing associating the one or more resources with the physical account card”.
The claims recite additional elements such as “receiving a request to associate one or more resources with the physical account card”, “a computer system”; “one or more processors”; and “memory storing one or more programs…” where the computer related elements are described generically and are merely used as a tool to perform the generic function of receiving data. The judicial exception is not integrated into a practical application because the additional limitations are no more than mere instructions to apply the exception using generic computing components and/or perform the generic computer function of data gathering - MPEP 2106.05(g).
The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The additional elements do not amount to significantly more than the judicial exception because the additional elements when considered alone and in combination do not add significantly more (i.e. do not at an inventive concept) to the exception. The remaining claims are addressed by similar rationale as above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-6, 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20200034825 to Levy.
Regarding claim 1, Levy teaches a computer system, comprising:
one or more processors; and memory storing one or more programs configured to be executed by the one or more processors, the one or more programs including instructions for:
receiving information provided by an electronic component that is part of a package that includes a physical account card (¶ 48, 62, 98, receiving information from electronic component; see also 57-61; 70, 79, 80, 90-94);
receiving a request to associate one or more resources with the physical account card (¶ 69; see also 70-74);
in accordance with a determination, based on one or more electrical properties of the electronic component, that a set of one or more conditions is met, including a first condition that is met when the information indicates that the package has not been tampered with, associating the one or more resources with the physical account card (¶ 72, conditions met, ¶ 76, associating resources with card; see ¶ 57-62, 90-94); and
in accordance with a determination, based on one or more electrical properties of the electronic component, that the set of one or more conditions is not met, forgoing associating the one or more resources with the physical account card (¶ 71, condition not met, forgoing association).
Regarding claim 3,
Levy teaches:
wherein the physical account card is a gift card (¶ 2, 40, gift card).
Regarding claim 4,
Levy teaches:
wherein the electronic component is part of packaging of the package and the electronic component is not part of the physical account card (¶ 40-42, claim 1).
Regarding claim 5,
Levy teaches:
wherein the information is part of a response of a challenge-response process (¶ 48).
Regarding claim 6,
Levy teaches:
wherein the computer system generates a challenge to be transmitted to the electronic component (¶ 48, generation of challenge prompt).
Regarding claim 8,
Levy teaches:
receiving, via a point-of-sale terminal, a challenge that was transmitted to the electronic component for use in the challenge-response process (¶ 48, receiving challenge prompt at POS terminal).
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Levy in view of US 20130207783 to Cruzado.
Regarding claim 9,
Levy fails to teach but Cruzado teaches:
wherein the electronic component determines whether the package has been tampered with based on a status of physical surroundings of the electronic component, and wherein the electronic component determines that the package has been tampered with when the electronic component detects that the physical account card and/or packaging of the package have been tampered with (¶ 45-46, 33, detection of package tampering).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the teachings of Cruzado. The motivation to do so is that the teachings of Cruzado would have been advantageous in terms of facilitating tamper detection (Cruzado, ¶ 45-46, 13).
Regarding claim 14,
Levy teaches:
in accordance with the determination that the set of one or more conditions is met, transmitting an indication that the package has not been tampered with (¶ 76, 75, transmission to remote database when conditions are met); and
Levy fails to teach but Cruzado teaches:
in accordance with the determination that the set of one or more conditions is not met, transmitting an indication that the package has been tampered with without transmitting the indication that the package has not been tampered with (¶ 45-46, tamper notification according to conditions). Motivation to include Cruzado is the same as presented above.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Levy and Cruzado in view of US 20090065592 to Paul.
Regarding claim 12,
Paul teaches:
wherein the electronic component determines that the package has been tampered with when the electronic component detects that a wire loop of the electronic component is broken (¶ 43, detection of wire circuit tampering in smart card).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the teachings of Paul. The motivation to do so is that the teachings of Paul would have been advantageous in terms of facilitating tamper detection (Paul, ¶ 8-9, 43).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Levy in view of US 20220147974 to Law.
Regarding claim 2,
Levy fails to teach but Law teaches: wherein the physical account card is a building access card (¶ 118).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the teachings of Law. The motivation to do so is that the teachings of Law would have been advantageous in terms of facilitating secure data transactions and authorization (Law,¶ 118).
(With regards to claim interpretation, the claim language: “wherein the physical account card is a building access card” is a non-functionally descriptive recitation providing little or no patentable weight).
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 extension fee 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 RYAN J JAKOVAC whose telephone number is (571)270-5003. The examiner can normally be reached on 8-4 PM EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oscar A. Louie can be reached on 572-270-1684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN J JAKOVAC/Primary Examiner, Art Unit 2445
