The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Rejections - 35 USC § 103
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 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(s) 1-3, 5-9, 11, 13, 15-17, and 20-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akihiro et al, JP2006209254, in view of Hoyer et al, US Pub. 20160205549.
Regarding claims 1 and 15, Akihiro et al disclose an information management device, an ID tag, and a method comprising: paragraphs [0049] - [0070] and Figs. 1-6, an ID card to which an RFID tag is attached (see, in particular, paragraph [0053] of the same document), wherein the RFID tag is composed of an antenna unit that transmits and receives information to and from a reader / writer by wireless communication and an IC chip unit (see, in particular, paragraph [0056], the IC chip unit is further composed of a control unit, an authentication information storage unit, a request variable management unit, and a hash calculation unit (see, in particular, paragraph [0057], the request variable management unit adds 1 to the request variable ia and stores it every time an ID transmission request is received from the reader / writer (see, in particular, paragraphs [0058], [0067], etc.), the authentication information storage unit stores Aa0 and Na0 calculated by the authentication server at the time of initial registration and written by the reader / writer (see, in particular, paragraphs [0065] - [0067]), and the RFID tag receives a transmission request for authentication information from the reader / writer. 1 is added to ian-1 calculated in the previous authentication process to obtain ian, while Aan, which is a hash value of Aa0, Na0, and ian, is calculated and transmitted to the reader / writer (see, in particular, paragraphs [0069] - [0070] and [0022]). See Fig. 6. The invention according to Claim 1 of the present application is compared with the invention described in the reference. The "request variable" and the "reader / writer" of the invention described in the reference correspond to the "counter value" and the "user device" of the invention according to Claim 1 of the present application, respectively. In addition, it can be said that "Aa0" and "Na0" of the invention described in the reference are information shared between the authentication server and the RFID tag, and correspond to the "private key" of the invention according to Claim 1 of the present application, and it can be said that the combination of the "request variable management unit" and the "authentication information storage unit" of the invention described in Cited Document 1 corresponds to the "memory device for storing the counter value and the private key" of the invention according to Claims 1 and 15 of the present application. Then, since the "antenna unit" of the invention described in the reference performs wireless communication with a reader / writer based on RFID, it is the same as the "short-range wireless communication antenna configured to communicate with a user device" of the invention according to Claim 1 of the present application. Furthermore, since it can be said that the RFID tag of the invention described in the reference increases the request variable (counter value) by 1 after receiving the ID transmission request from the reader / writer under the control of the control unit, generates the increased request variable, "Aan" which is a value including the hash of "Aa0" and "Na0" (private key), and provides it to the antenna unit for transmission to the reader / writer, it can be said that the "Aan" and the "control unit" of the invention described in the reference are the same as the "encrypted value" and the "microprocessor" of the invention according to Claim 1 of the present application, respectively. In addition, regarding the "transaction card" of the invention according to Claims 1 and 15 of the present application, paragraph [0014] of the description of the present application describes that "the term' transaction card' may include an identification card such as a passport card, a driver's license, an entry point access card, etc. The identification card (ID card) is also applicable in view of the description of ".". Thus, the invention according to Claims 1 and 15 of the present application and the invention described in the reference are identical in that they are transaction cards (ID cards) comprising a memory device (request variable management unit and authentication information storage unit) for storing a counter value (request variable) and a secret key (Aa0 and Na0), a microprocessor (control unit) capable of using the counter value and the secret key, and a short-range wireless communication antenna (antenna unit) configured to communicate with a user device (reader / writer), wherein the microprocessor is configured to increase the counter value, generate an encrypted value (Aan) based on the increased counter value and the secret key, and provide the encrypted value to the short-range wireless communication antenna for transmission to the user device, and there is no difference between them.
Akihiro et al fails to disclose that the NFC tag storing the permanent card identifier and/or incrementing the temporary identifier by a preconfigured amount unique to the transaction card each time the transaction card is read by a user device.
Hoyer et al disclose an NFC smart tag, including a card type form factor (par. 0057-0060), with specific TAGID 312 (par. 0077-0079) and a changing authentication value generated for a mobile device read request, updating the tag counter by a predetermined amount after interaction ( para. 0080, 0106).
It would have been obvious to one ordinary skill in the art before the effective filing data of the claimed invention to use Hoyer et al MFC tag and stored TAGID in Akihiro et al card to permit a mobile reader to identify the card and validate an individual read while retaining Akihiro et al changing authentication information. With respect to assigning a preconfigured increment amount unique to the transaction card, it would have been obvious to an artisan to assign a distinct increment to each card during provisioning so that cards follow a distinct update sequence, with reasonable expectation that the existing counter-update mechanism would operate in the same way. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claims 2, 5-6, since the request variable of the invention described in the reference increases by 1, which can be said to be a preset amount, after receiving the ID transmission request, which is nothing, but a signal received through the antenna unit, the inventions according to Claims 2 and 5-6 of the present application can also be said to be the invention described in the reference. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 13, the clock generator produces a periodic signal that establishes a timing reference for the system which indicates that it generates the digital signal when the clock generator cycles on through signal synchronization. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 9, in addition to the rejection of 1 above, the request variable of the invention described in the reference increases by 1, which can be said to be a preset amount, after receiving the ID transmission request, which is nothing, but a signal received through the antenna unit, the inventions according to Claim 9 of the present application can also be said to be the invention described in the reference. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 7, Akihiro et al also describe that the request variable ia0 is generated and stored in the RFID tag when Aa0 and Na0 are written from the reader / writer (paragraph [0067] and drawings). 5) It can be said that a person skilled in the art who has come into contact with the above recitation could have appropriately configured the request variable to be reset to the initial value or an appropriate value in response to the signal received from the reader / writer (user device). Therefore, it can be said that the invention according to Claim 7 of the present application could have been easily conceived by a person skilled in the art from the invention described in Akihiro et al in view of Hoyer et al.
Regarding claims 8 and 16, it is a well-known technical matter that a chip mounted on a card is an EMV chip. Then, it can be said that it could have been easily conceived by a person skilled in the art to realize the IC chip mounted on the ID card in the invention described in Akiho et al by the EMV chip in consideration of the well-known technical matter. Therefore, storing the temporary identifier after transmission could have been easily conceived by a person skilled in the art from the invention described in Akihiro et al. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claims 10-12 and 14, these components, such as the type of power source, the timestamp display, these components are common in the art. They would have been an obvious extension as taught by the prior art. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claims 17-20, in addition to the rejection of 1 above, the request variable of the invention described in the reference increases by 1, which can be said to be a preset amount, after receiving the ID transmission request, which is nothing, but a signal received through the antenna unit, the inventions according to Claims 17-20 of the present application can also be said to be the invention described in the reference. The additional elements, such as battery, processor, these elements are commons parts of a smart card and are disclosed in the reference. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 21, using the private key as the permanent identifier is common in the art for providing identification, which therefore, obvious. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 22, the counter value is increased on every transaction, it is temporary value. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 23, both the permanent identifier (private key) and the temporary identifier (counter values) are stored in the NFC card. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding claim 24, the NFC tag generates the encryption using the permanent identifier and the temporary identifier to transmit to the user device. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Regarding 25, the rejection of claim 1 above meet the limitation wherein the permanent identifier, stored on the NFC tag, uniquely identifies a user of the transaction tag. Therefore, Akihiro et al in view Hoyer et al render the claims obvious.
Double Patenting
7. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
8. Claims 1-2, 5-9, 11, 13, 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of Patent No. 10,878,651 (hereinafter ‘651 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention a broader recitation of the claims in the ‘651 Patent. For instance, in claim 1 of the current application and in the ‘651 Patent, the applicant claims:
Application No. 17/095,584
Patent No. 10,878,651
A transaction card comprising: a radio
frequency transmitter; a clock generator
coupled to the radiofrequency transmitter and
having a dynamic frequency configured to
cycle on while the transmitter is transmitting
and to cycle off while the transmitter is not
transmitting; and a near field communication
tag coupled to the clock generator and storing
a permanent identifier and a temporary
identifier, the temporary identifier comprising
a numerical value and a counter value.
A transaction card, the transaction card comprising: a microprocessor; a radio frequency transmitter coupled to the microprocessor, the radio frequency transmitter configured to, in response to a read signal received by the radio frequency transmitter from an external radio frequency reader device, transmit a notification signal to the microprocessor; and a near field communication tag coupled to the microprocessor and to the radio frequency transmitter, the near field communication tag storing a private key and a counter value; wherein, upon receipt of the notification signal, the microprocessor is configured to: apply an algorithm to increment the counter value; and transmit the incremented counter value to the near field communication tag; and wherein the near field communication tag is configured to: receive, from the microprocessor, the incremented counter value; generate an encrypted value based on the private key and the incremented counter value; and provide the encrypted value to the radio frequency transmitter for transmission to the external radio frequency reader device.
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 1-18 of the ‘651 Patent as a general teaching for a non-transitory computer readable medium, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘651 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘651 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
9. Applicant’s arguments with respect to claim(s) 1-2, 5-9, 11, 13, and 15-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Remarks:
In response to the applicant’s argument regarding claim 1, the examiner respectfully disagrees. The new prior art (Hoyer et al) discloses an NFC smart tag, including a card type form factor (par. 0057-0060), with specific TAGID 312 (par. 0077-0079) and a changing authentication value generated for a mobile device read request, updating the tag counter by a predetermined amount after interaction ( para. 0080, 0106). It would have been obvious to one ordinary skill in the art before the effective filing data of the claimed invention to use Hoyer et al MFC tag and stored TAGID in Akihiro et al card to permit a mobile reader to identify the card and validate an individual read while retaining Akihiro et al changing authentication information. With respect to assigning a preconfigured increment amount unique to the transaction card, it would have been obvious to an artisan to assign a distinct increment to each card during provisioning so that cards follow a distinct update sequence, with reasonable expectation that the existing counter-update mechanism would operate in the same way. Therefore, it would have been an obvious extension as taught by the prior art.
Conclusion
10. 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.
11. 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 on 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, Pham Thomas can be reached on 571-272-3689. 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
DS
/DANIEL ST CYR/
Primary Examiner, Art Unit 2876
