Prosecution Insights
Last updated: October 02, 2026
Application No. 19/071,544

TERMINAL DEVICE THAT WRITES LICENSE KEY IN ELECTRONIC TAG, WHEN INFORMATION RETRIEVED FROM ELECTRONIC TAG ACCORDS WITH SERIAL NUMBER, ELECTRONIC DEVICE, AND AUTHENTICATION SYSTEM

Non-Final OA §102§103
Filed
Mar 05, 2025
Priority
Mar 11, 2024 — JP 2024-037362
Examiner
TABOR, AMARE F
Art Unit
Tech Center
Assignee
Kyocera Document Solutions Inc.
OA Round
1 (Non-Final)
83%
Grant Probability
Favorable
1-2
OA Rounds
1y 5m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 83% — above average
83%
Career Allowance Rate
694 granted / 837 resolved
+22.9% vs TC avg
Strong +23% interview lift
Without
With
+23.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 12m
Avg Prosecution
12 currently pending
Career history
846
Total Applications
across all art units

Statute-Specific Performance

§101
10.7%
-29.3% vs TC avg
§103
61.0%
+21.0% vs TC avg
§102
11.3%
-28.7% vs TC avg
§112
6.2%
-33.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 837 resolved cases

Office Action

§102 §103
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 . Priority Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2024-037362, filed on 03/11/2024. Claims 1-6, filed on 03/05/2025, are presented for examination. Claim Rejections - 35 USC § 102 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim(s) 4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being Anticipated by Semmer et al. (US 2007/0244825 A1). Semmer discloses Claim 4. An electronic device comprising: an electronic tag containing information [Semmer discloses, “a license media that includes license key information... One type of license media used is an RFID tag” (Abstract); “In the embodiment as shown, the accessory kit 50 includes a scalpel 60 and a radio frequency identification (RFID) tag 62. The data stored within the RFID tag 62 includes a license key, as well as other useful information including data identifying the particular RFID tag 62 and data specific to the medical resource” (par.0028 with FIG.1)]; a processing device that executes a predetermined operation [Semmer discloses, “An accessory kit for use with a software based medical resource to perform a particular medical procedure” (Abstract); see accessory kit 50 (FIG.1)]; and a control device including a processor, and configured to act, when the processor executes a computer program, as a controller that: restricts the processing device from being used, in an initial state [Semmer discloses, “The user after opening the accessory kit 50 will use the RFID tag 62 to activate a particular program within the computer 72 so that computer 72 can be fully used to assist in performing the desired procedure” (par.0030 with FIG.2)]; and cancels the use restriction on the processing device, when a license key is written in the electronic tag [Semmer discloses, “writing data back to the license media to disable the license key so that the license key can not be reused” (Abstract); “Also, it should be possible to write protect the RFID tag 62 so that when the data that indicates that the license key has been used is written to the RFID tag 62, that data cannot be removed to enable the RFID tag 62 could be used again to activate another medical resource” (par.0028 with FIG.1]. 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) 1-3 & 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Semmer et al. (US 2007/0244825 A1) in view of “Bacastow” (US 8086688 B1). Semmer discloses Claim 1. A terminal device comprising: a storage device containing in advance a serial number unique to an electronic device [Semmer discloses, “For any of the above described kit configurations and for variations thereof, the digital storage media can also contain other information than the activation key and the associated medical application. This could include but is not limited to information related to the contents of the kit, such as items and characteristics, like model and serial numbers” (par.0036)]; a reader-writer that performs {“short-range wireless”} communication, with an electronic tag provided in the electronic device [Semmer discloses, “The computer 72 will include an RFID tag read write device 82 that can both read the information stored within the RFID tag 62 and write data back to the RFID tag 62” (par.0032) with reader 82, FIG.2]; Semmer does not; but, Bacastow, analogues art, discloses short-rage communication [Bacastow discloses (Figures 1-2) “software application and database is connected to PC (2.1) using a wireless communication method such as Bluetooth or other near field communication (NFC) method “ (col.8, lines 51-67)] and a communication device that communicates with a management device that manages a license key corresponding to the serial number [Bacastow discloses, “The authentication request (2.1.1) contains a unique mobile device serial number and a unique software license key that are passed from the mobile device (2.2) to the PC (2.1) using message (2.2.1)” (col.8, lines 51 to col.9, line 8 with Figure 2)]; Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the system of Semmer by incorporating the teaching of Bacastow for securely storing, retrieving and sharing data using PCs and mobile devices and for controlling and tracking the movement of data to and from a variety of computing and storage devices. Semmer in view of Bacastow further discloses, and a control device including a processor, and configured to act, when the processor executes a computer program, as a controller that: retrieves information from the electronic tag via the reader-writer [Semmer discloses, “In particular, the computer 72 will read data from the RFID tag 62 into memory of the computer 72” “The computer 72 will include an RFID tag read write device 82 that can both read the information stored within the RFID tag 62 and write data back to the RFID tag 62” (par.0030, 0032 with FIG.2)]: acquires, when the retrieved information accords with the serial number stored in the storage device, the license key corresponding to the according serial number from the management device via the communication device [Bacastow discloses, “The authentication request (2.1.1) contains a unique mobile device serial number and a unique software license key that are passed from the mobile device (2.2) to the PC (2.1) using message (2.2.1)” (col.8, lines 51 to col.9, line 8 with Figure 2)]; writes the license key in the electronic tag via the reader-writer [Semmer discloses, “In one embodiment of the present invention, the RFID tag 62 will include encrypted data relating to the license key and this data will also be tied to the identity of the particular RFID tag 62 upon which that license key data had been originally written” (par.0031)]; and keeps from acquiring and writing the license key [Semmer discloses, “If the user confirms the procedure that has been entered, control will pass to a block 168 that will write information back to the media that includes the license key” (par.0038 with FIG.8)], when the retrieved information discords with the serial number stored in the storage device [Semmer discloses, “writing data back to the license media to disable the license key so that the license key can not be reused” (Abstract); “Also, it should be possible to write protect the RFID tag 62 so that when the data that indicates that the license key has been used is written to the RFID tag 62, that data cannot be removed to enable the RFID tag 62 could be used again to activate another medical resource” (par.0028 with FIG.1]. Semmer in view of Bacastow discloses Claim 6. An authentication system comprising: an electronic device; and a terminal device [see FIGS.1-2 of Semmer], wherein the electronic device includes: an electronic tag containing information [Semmer discloses, “a license media that includes license key information... One type of license media used is an RFID tag” (Abstract); “In the embodiment as shown, the accessory kit 50 includes a scalpel 60 and a radio frequency identification (RFID) tag 62. The data stored within the RFID tag 62 includes a license key, as well as other useful information including data identifying the particular RFID tag 62 and data specific to the medical resource” (par.0028 with FIG.1)]; a processing device that executes a predetermined operation [Semmer discloses, “An accessory kit for use with a software based medical resource to perform a particular medical procedure” (Abstract); see accessory kit 50 (FIG.1)]; and a first control device including a processor, and configured to act, when the processor executes a computer program, as a first controller that restricts the processing device from being used, in an initial state [Semmer discloses, “An accessory kit for use with a software based medical resource to perform a particular medical procedure” (Abstract); see accessory kit 50 (FIG.1)], the terminal device includes: a storage device containing in advance a serial number unique to an electronic device [Semmer discloses, “For any of the above described kit configurations and for variations thereof, the digital storage media can also contain other information than the activation key and the associated medical application. This could include but is not limited to information related to the contents of the kit, such as items and characteristics, like model and serial numbers” (par.0036)]; a reader-writer that performs short-range wireless communication, with the electronic tag [Bacastow discloses (Figures 1-2) “software application and database is connected to PC (2.1) using a wireless communication method such as Bluetooth or other near field communication (NFC) method “ (col.8, lines 51-67)]; a communication device that communicates with a management device that manages a license key corresponding to the serial number [Bacastow discloses, “The authentication request (2.1.1) contains a unique mobile device serial number and a unique software license key that are passed from the mobile device (2.2) to the PC (2.1) using message (2.2.1)” (col.8, lines 51 to col.9, line 8 with Figure 2)]; and a second control device including a processor, and configured to act, when the processor executes a computer program, as a second controller that: retrieves information from the electronic tag via the reader-writer [Semmer discloses, “In one embodiment of the present invention, the RFID tag 62 will include encrypted data relating to the license key and this data will also be tied to the identity of the particular RFID tag 62 upon which that license key data had been originally written” (par.0031)]: acquires, when the retrieved information accords with the serial number stored in the storage device, the license key corresponding to the according serial number from the management device via the communication device [Bacastow discloses, “The authentication request (2.1.1) contains a unique mobile device serial number and a unique software license key that are passed from the mobile device (2.2) to the PC (2.1) using message (2.2.1)” (col.8, lines 51 to col.9, line 8 with Figure 2)]; writes the license key in the electronic tag via the reader-writer [Semmer discloses, “In one embodiment of the present invention, the RFID tag 62 will include encrypted data relating to the license key and this data will also be tied to the identity of the particular RFID tag 62 upon which that license key data had been originally written” (par.0031)]; and keeps from acquiring and writing the license key, when the retrieved information discords with the serial number stored in the storage device [Bacastow discloses, “The authentication request (2.1.1) contains a unique mobile device serial number and a unique software license key that are passed from the mobile device (2.2) to the PC (2.1) using message (2.2.1)” (col.8, lines 51 to col.9, line 8 with Figure 2)], and the first controller of the electronic device cancels the use restriction on the processing device, when a license key is written in the electronic tag [Semmer discloses, “writing data back to the license media to disable the license key so that the license key can not be reused” (Abstract); “Also, it should be possible to write protect the RFID tag 62 so that when the data that indicates that the license key has been used is written to the RFID tag 62, that data cannot be removed to enable the RFID tag 62 could be used again to activate another medical resource” (par.0028 with FIG.1]. The motivation to combine is the same as that of claim 1 above. Semmer in view of Bacastow further disclose claim 2. The terminal device according to claim 1, further comprising an operation device that receives an input of information from a user, wherein the controller retrieves the information from the electronic tag, when the information inputted through the operation device accords with the serial number stored in the storage device [Bacastow discloses, “The authentication request (2.1.1) contains a unique mobile device serial number and a unique software license key that are passed from the mobile device (2.2) to the PC (2.1) using message (2.2.1)” (col.8, lines 51 to col.9, line 8 with Figure 2)], but keeps from retrieving the information from the electronic tag, when the information inputted through the operation device discords with the serial number stored in the storage device [Semmer discloses, “writing data back to the license media to disable the license key so that the license key can not be reused” (Abstract); “Also, it should be possible to write protect the RFID tag 62 so that when the data that indicates that the license key has been used is written to the RFID tag 62, that data cannot be removed to enable the RFID tag 62 could be used again to activate another medical resource” (par.0028 with FIG.1]. The motivation to combine is the same as that of claim 1 above. Semmer in view of Bacastow further disclose claim 3. The terminal device according to claim 2, wherein the controller is configured to: acquire, through the communication device, the product list from a server device that manages the product list including all the serial numbers respectively corresponding to the electronic devices, and store the product list in the storage device; retrieve the information from the electronic tag, when the information inputted through the operation device accords with the serial number included in the product list [Bacastow discloses, “If the license key and mobile device serial numbers are determined to be a valid combination, the software application is further validated to determine if it is authorized for use on the connected PC (1.1)” (col.7, lines 54-61 with Figures 1-3)]; and keep from retrieving the information from the electronic tag, when the information inputted through the operation device discords with the serial number included in the product list [Semmer discloses, “writing data back to the license media to disable the license key so that the license key can not be reused” (Abstract); “Also, it should be possible to write protect the RFID tag 62 so that when the data that indicates that the license key has been used is written to the RFID tag 62, that data cannot be removed to enable the RFID tag 62 could be used again to activate another medical resource” (par.0028 with FIG.1]. The motivation to combine is the same as that of claim 1 above. Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Semmer et al. (US 2007/0244825 A1) in view of “Bacastow” (US 8086688 B1), and further in view of “HOU” (Us 2021/0234973 A1). Semmer in view of Bacastow disclose The electronic device according to claim 4. Semmer/Bacastow fail; but, HOU, analogues art discloses claim 5, wherein the processing device includes an image forming device that forms an image on a sheet [see image forming apparatus in Abstract, FIG.1 of HOU]. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the system of Semmer/Bacastow by incorporating the image forming apparatus of HOU for implementing an information processing method that activate a function of the image forming apparatus. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (See PTO—892). For example, US 8356360 B2 is directed to License Management System And Authentication Method For The Same Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMARE F TABOR whose telephone number is (571) 270-3155. The examiner can normally be reached Mon.—Fri.: 8:00 AM to 5:00 PM. 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 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, ALI SHAYANFAR can be reached at (571) 270-1050. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AMARE F TABOR/ Primary Examiner, Art Unit 2434
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Prosecution Timeline

Mar 05, 2025
Application Filed
Aug 11, 2026
Non-Final Rejection mailed — §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
83%
Grant Probability
99%
With Interview (+23.1%)
2y 12m (~1y 5m remaining)
Median Time to Grant
Low
PTA Risk
Based on 837 resolved cases by this examiner. Grant probability derived from career allowance rate.

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