IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`CARDWARE INC.,
`Patent Owner
`______________________________
`
`U.S. Patent No. 11,328,286
`Issued: May 10, 2022
`
`Title: MULTI-FUNCTION ELECTRONIC PAYMENT CARD
`AND DEVICE SYSTEM
`______________________________
`
`DECLARATION OF MICHAEL I. SHAMOS, PH.D.
`
`1
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`SAMSUNG 1003
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`

`

`
`
`TABLE OF CONTENTS
`
`
`CONTENTS
`I.
`INTRODUCTION AND QUALIFICATIONS ............................................... 4
`A. Materials Considered ............................................................................. 7
`SUMMARY OF MY OPINIONS ................................................................... 7
`II.
`III. UNDERSTANDING OF THE GOVERNING LAW ..................................... 8
`A.
`Ineligible Subject Matter ....................................................................... 8
`B.
`Indefiniteness ....................................................................................... 11
`C.
`Enablement .......................................................................................... 11
`D. Written Description ............................................................................. 11
`IV. RELATED LITIGATION ............................................................................. 12
`V. OVERVIEW OF THE ’286 PATENT .......................................................... 12
`VI. THE ’286 PROSECUTION HISTORY ........................................................ 15
`VII. LEVEL OF ORDINARY SKILL IN THE ART IN THE RELEVANT
`TIMEFRAME ................................................................................................ 23
`VIII. TECHNOLOGY BACKGROUND ............................................................... 25
`A.
`Cryptographic Processing ................................................................... 27
`B.
`Near-Field Communication (NFC) Interfaces .................................... 27
`C.
`Touch Screen Displays ........................................................................ 29
`D.
`Static and Limited-Use Numbers ........................................................ 31
`E.
`Sequence Counts ................................................................................. 33
`IX. CLAIM CONSTRUCTION .......................................................................... 35
`X.
`THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................... 35
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`
`
`XI.
`
`
`B.
`
`A. GROUND 1: Claims 1-27 Merely Recite Well-Known, Routine
`and Conventional Elements Used for Their Ordinary Purpose .......... 35
`GROUND 2: Claims 1-19 Are Indefinite .......................................... 54
`1.
`Claim 1 ...................................................................................... 54
`2.
`Claim 4 ...................................................................................... 56
`3.
`Claim 5 ...................................................................................... 57
`4.
`Claim 6 ...................................................................................... 58
`5.
`Claims 7-9 ................................................................................. 60
`6.
`Claim 12 .................................................................................... 61
`7.
`Claim 13 .................................................................................... 62
`8.
`Claim 15 .................................................................................... 62
`9.
`Claim 17 .................................................................................... 63
`10. Claim 19 .................................................................................... 64
`GROUND 3: Claims 12-13 and 17 Are Not Enabled ........................ 64
`C.
`D. GROUND 4: Claims 20-27 Lack Written Description ...................... 65
`1.
`Claim 20 .................................................................................... 65
`JURAT ........................................................................................................... 66
`
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`I.
`
`I, Dr. Michael I Shamos, hereby declare as follows:
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained by Fish & Richardson P.C. on behalf of Samsung
`
`Electronics Co., Ltd. (“Samsung”) to provide my opinion concerning the validity
`
`of claims 1-27 (“Challenged Claims”) of U.S. Patent No. 11,328,286 (“’286 Patent”
`
`or the “Patent”) in relation to Samsung’s Petition for Post-Grant Review (“PGR”)
`
`of United States Patent No. 11,328,286 pursuant to 35 U.S.C. §§ 321–329 (the
`
`“Petition”).
`
`2.
`
`I am being compensated at a rate of $600 per hour for my work in this
`
`proceeding and my compensation is in no way contingent on the nature of my
`
`findings, the presentation of my finding in testimony, or the outcome of this or any
`
`other proceeding. I have no other interest in this proceeding or in Patent Owner. It is
`
`conceivable that I may own investments in mutual funds which themselves own
`
`shares in Patent Owner. I have no knowledge of any such holder, which, in any
`
`event, would not constitute a material portion of my net worth.
`
`3.
`
`A detailed description of my professional qualifications, including a
`
`listing of my specialties/expertise and professional activities, is contained in my
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`curriculum vitae, a copy of which is provided as Appendix A to this Declaration.
`
`Below is a short summary of my professional qualifications.
`
`4.
`
`I have a A.B. degree from Princeton University in Physics (1968), a
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`
`
`M.A. degree from Vassar College in Physics (1970), a M.S. degree from American
`
`University in Technology of Management (1972), a M.S. degree from Yale
`
`University in Computer Science (1973), a M. Phil. from Yale University in
`
`Computer Science (1974), a Ph.D. from Yale University in Computer Science
`
`(1978), and a J.D. degree from Duquesne University (1981).
`
`5.
`
`I currently hold the title of Distinguished Career Professor in the
`
`School of Computer Science at Carnegie Mellon University in Pittsburgh,
`
`Pennsylvania. I am a member of two departments in that School, the Software and
`
`Societal Systems Department and the Language Technologies Institute. I was a
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`founder and Co-Director of the Institute for eCommerce at Carnegie Mellon from
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`1998-2004 and from 2004-2018 was Director of the eBusiness Technology graduate
`
`program in the Carnegie Mellon University School of Computer Science. Since
`
`2018, I have been Director of the M.S. in Artificial Intelligence and Innovation
`
`degree program at Carnegie Mellon.
`
`6.
`
`I have taught graduate courses at Carnegie Mellon in Electronic
`
`Commerce from 1999-present, including eCommerce Technology, Electronic
`
`Payment Systems, Electronic Voting, Internet of Things, Ubiquitous Computing,
`
`Electronic Payment Systems and eCommerce Law and Regulation, as well as
`
`Analysis of Algorithms. Since 2007, I have taught an annual course in Law of
`
`Computer Technology. I currently also teach Artificial Intelligence and Future
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`5
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`
`
`Markets.
`
`7.
`
`From 2001-2021, I was a Visiting Professor at the University of Hong
`
`Kong, where I taught an annual course in Electronic Payment Systems. This was
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`one of only a handful of graduate courses taught on this subject in the world.
`
`8.
`
`I was the Director of Carnegie Mellon’s graduate degree program in
`
`eBusiness Technology from 1999-2018 and am now a faculty member in the Privacy
`
`Engineering degree program at Carnegie Mellon. My course on Law of Computer
`
`Technology is required for all students in that program and in the Societal
`
`Computing Ph.D. program. My principal role currently is as Director of the graduate
`
`program in Artificial Intelligence and Innovation.
`
`9.
`
`From 1979-1987 I was the founder and president of two computer
`
`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and
`
`Lexeme Corporation.
`
`10.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have been
`
`asked to render opinions in this Declaration as a technical expert. I have not been
`
`asked to offer any opinions on patent law in this proceeding.
`
`11.
`
`I am a named co-inventor on the following six issued patents relating
`
`to electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278, 7,747,465,
`
`8,195,197, 8,280,773, and 9,456,299.
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`12.
`
`I have previously served as an expert in over 340 cases concerning
`
`computer technology. In particular, I have been involved in more than 35 cases
`
`involving electronic payment systems.
`
`13.
`
`The statements made and opinions provided in this Declaration are
`
`based on my own personal knowledge and, if called as a witness, I could and would
`
`testify in a manner consistent with this Declaration.
`
`A. Materials Considered
`14.
`In forming my opinions, I have reviewed and am familiar with the ’286
`
`Patent and its prosecution history, the materials cited herein, and exhibits to the
`
`Petition.
`
`II.
`
`SUMMARY OF MY OPINIONS
`15. After a review of the ’286 Patent and the prior art cited herein, it is my
`
`opinion that the Challenged Claims are invalid based on the grounds set forth in the
`
`following table. My opinions, and the bases therefor, are detailed throughout this
`
`Declaration.
`
`35 U.S.C. § 101/112Challenge
`Ground Claims
`1
`§101: Ineligible Subject Matter
`1-27
`2
`§112: Indefinite
`1-19
`3
`12-13, 17 §112: Lack of Enablement
`4
`20-27
`§112: Lack of Written Description
`
`
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`
`III. UNDERSTANDING OF THE GOVERNING LAW
`A.
`16.
`
`Ineligible Subject Matter
`I understand that whether a claim is patent-eligible under 35 U.S.C. §
`
`101 is a matter of law. However, an ineligibility determination may depend on
`
`whether certain claim elements were well-known, routine and conventional at the
`
`time of filing, a subject on which expert testimony is appropriate.
`
`17.
`
`I understand that the Supreme Court articulated a two-part subject-
`
`matter eligibility test, known as the Alice/Mayo test, which asks whether a claim is
`
`directed to a judicial exception to patentability, to-wit, laws of nature, physical
`
`phenomena, and abstract ideas. If the claims are so directed, the analysis moves to
`
`the second prong: determining whether the claims contain “an ‘inventive concept’
`
`sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.”
`
`18.
`
`I understand that the PTO has issued Guidance regarding subject matter
`
`eligibility and the Alice/Mayo test. Step 1 of the Guidance examines whether the
`
`claimed subject matter falls within one of the four statutory categories of invention.
`
`The Challenged Claims on their face recite an apparatus, and I understand that
`
`Petitioner does not dispute that they fall into one of the statutory categories (i.e.,
`
`machine).
`
`19.
`
`If the claim is so directed, the analysis moves to Step 2A, Prong 1 to
`
`determine if the claim recites an abstract idea that falls within the subject matter
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`
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`groups of abstract ideas: (a) mathematical concepts; (b) certain methods of
`
`organizing human activity such as a fundamental economic practice; and (c) mental
`
`processes. If the claim recites such an abstract idea, the analysis moves to Step 2A,
`
`Prong 2 (which I understand corresponds to first part of the Alice/Mayo test), which
`
`asks whether the recited abstract idea is integrated into a practical application.
`
`Finally, Step 2B of the Guidance (which I understand corresponds to second part of
`
`the Alice/Mayo test) requires evaluating whether the claim recites additional
`
`elements that provide an “inventive concept” that amounts to significantly more than
`
`the abstract idea itself.
`
`20.
`
`I understand that the analysis at step one considers “whether the claims
`
`focus on a specific means or method that improves the relevant technology or are
`
`directed to a result or effect that itself is the abstract idea and merely invoke generic
`
`processes and machinery.” In cases involving software inventions, I understand that
`
`the inquiry may turns on whether the claims focus on ‘the specific asserted
`
`improvement in computer capabilities … or, instead, on a process that qualifies as
`
`an ‘abstract idea’ for which computers are invoked merely as a tool.” Further, claim
`
`steps that can be performed by a human, mentally or with pen and paper, are non-
`
`statutory.
`
`21.
`
`I understand that a claim can pass Alice Step 1 if the abstract idea is
`
`integrated into a practical application. However, where, a claim that is nothing more
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`
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`than “a drafting effort designed to monopolize the judicial exception,” fails Alice
`
`Step 1.
`
`22.
`
`I understand that Alice Step two requires looking at what the claim
`
`elements add, in order to determine whether they identify an inventive concept,
`
`which is an element or combination of elements sufficient to ensure that the patent
`
`in practice amounts to significantly more than a patent upon the ineligible concept
`
`itself.
`
`23.
`
`I understand that claims lack an inventive concept if they recite no more
`
`than well-understood, routine and conventional activities previously known in the
`
`industry,” and merely require generic computer implementation (e.g., “perform this
`
`known process on a computer”) fails to transform am abstract idea into a patent-
`
`eligible invention.”
`
`24.
`
`I further understand that a claim’s underlying idea does not become
`
`non-abstract by limiting the invention to a particular field of use or technological
`
`environment, such as the Internet.
`
`25.
`
`I understand that claims that are directed to an abstract idea that
`
`embodies both (1) a fundamental economic practice that amounts to no more than
`
`organizing human activity, and (2) mental steps that can be, and long have been,
`
`performed without computers fails the tests of Alice and Guidance Step 2A, Prong
`
`1.
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`
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`26.
`
`I understand that generation, transmission, and analyzing of limited use
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`payment information such as a time-varying code in a financial transaction are
`
`directed to an abstract idea.
`
`27.
`
`I understand that limitations that are directed to the presence or absence
`
`of printed matter are not entitled to patentable weight.
`
`B.
`28.
`
`Indefiniteness
`I understand that a claim is indefinite under § 112 if a POSITA, viewing
`
`the claim in light of the specification and prosecution history, cannot determine the
`
`full scope of the invention with reasonable certainty. I understand that, if a claim
`
`term is amenable to two or more plausible constructions, any claim containing that
`
`term is indefinite.
`
`29.
`
`I understand that a claim that depends from an indefinite claim is itself
`
`indefinite unless additional limitations resolve any indefiniteness.
`
`C. Enablement
`30.
`I understand that the specification of a patent must enable a POSITA to
`
`make and use the claimed invention without undue experimentation.
`
`31.
`
`I understand that a claim that is inoperable or impossible to implement
`
`lacks enablement.
`
`D. Written Description
`32.
`I understand that the four corners of a patent application must
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`
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`reasonably convey to a POSITA that the inventor had possession of and actually
`
`invented the claimed subject matter at the time the application was filed.
`
`IV. RELATED LITIGATION
`33.
`I am aware that the parties are engaged in contemporaneous litigation
`
`styled Cardware Inc. v. Samsung Electronics Co., Ltd., 2:22-cv-00141 (E.D. Texas)
`
`(the “Litigation”). In the Litigation, Patent Owner has accused Petitioner’s mobile
`
`phones as infringing the Challenged Claims, despite the fact that the Patent does not
`
`disclose any mobile phone invention, but instead is drawn to a payment card that can
`
`be read by a magnetic stripe reader.
`
`V. OVERVIEW OF THE ’286 PATENT
`34. The ’286 Patent (SAMSUNG-1001) was filed on April 21, 2020 and
`
`issued on May 10, 2022. Through a series of continuation applications and a
`
`provisional application, it claims priority to March 15, 2013. The ’286 Patent
`
`discloses “a multi-function electronic device capable of generating a programmed
`
`magnetic field of alternating polarity based on a speed of a card swipe, and methods
`
`for constructing the device for the purpose of emulating a standard credit card.”
`
`(SAMSUNG-1001, Abstract.) However, the Challenged Claims are not drawn to
`
`any such device, and do not claim “generating a programmed magnetic field” or
`
`any “emulating” of a “standard credit card.”
`
`35.
`
`The ’286 Patent discloses generating a “limited-duration number” for
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`
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`use in a payment transaction. SAMSUNG-1001, 2:33-39, 2:57-3:5, 10:63-12:55,
`
`FIG. 7. The claims recite, at times, a “limited-use number,” which can take the form
`
`of a “limited-duration number” by being limited by time or number of transactions
`
`in which it may be used or may be limited in use in other manners, such as limited
`
`in use to specific transactions or use by a specific device. FIG. 7 of the Patent is a
`
`flowchart illustrating an example process for generating a limited-use number:
`
`
`
`SAMSUNG-1001, FIG. 7. As shown in FIG. 7, the ’286 patent describes the well-
`
`known, routine computing functions of receiving, generating, and transmitting
`
`information. The independent claims (claims 1, 15, and 20) largely recite the high-
`
`level computing functions diagrammed in Fig. 7 without providing any additional
`
`details on how the generating of “limited-use card payment information” is to be
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`13
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`

`
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`performed. Id.
`
`36. Various other portions of the Specification give further details of the
`
`generation of a limited-use number. For example, “[t]he multi-function electronic
`
`device comprises a real-time clock that is able to produce a cryptographically
`
`protected timestamp for each interaction.” SAMSUNG-1001, 10:66-11:2. “The
`
`power source is able to activate the processor unit such that a unique number may
`
`be generated by the credit card device and verified by the credit authority according
`
`to the timestamp and the transmitted user information.” Id., 11:3-6. “The limited
`
`duration credit card number is able to be produced at the time the credit card device
`
`is performing a transaction.” Id., 11:6-11. The ’286 Patent discloses that such a
`
`limited-duration card number “is able to be generated according to the user’s private
`
`information, a bank information, information regarding the facility performing the
`
`transaction, and the time of day,” but does not provide any details or equations on
`
`how to use such factors in generating a limited duration credit card number,
`
`indicating that such number generation would have been readily known and
`
`understood by a POSITA. The ’286 Patent further discloses that the “limited-
`
`duration credit card number is able to be limited to only one transaction, a finite
`
`number of transactions, or may be limited to a specified period of time—e.g., 2
`
`minutes, 10 minutes, 3 hours—after which time that particular limited-duration
`
`number would become invalid.” Id., 11:11-16. However, as discussed below, such
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`14
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`
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`functions are not recited in the the independent claims of the ’286 Patent, and, in any
`
`event, such functions were routine computing functions well-known in the field of
`
`computer-implemented financial transactions
`
`37. While the Specification describes some technical functions of “a multi-
`
`function electronic device,” such as “generating a programmed magnetic field of
`
`alternating polarity based on a speed of a card swipe,” these features appear nowhere
`
`in the claims. SAMSUNG-1001, 2:22-26. Rather the claims are directed toward the
`
`well-known, routine, high-level computer operations of storing, analyzing, and
`
`transmitting data, as described in greater detail below.
`
`VI. THE ’286 PROSECUTION HISTORY
`38.
`I have reviewed the prosecution history of the ’286 Patent
`
`(SAMSUNG-1002) and those of its ancestors, all of which allegedly have the same
`
`specification. I understand that the ’286 Patent claims priority to U.S. Provisional
`
`Patent Application 61/794,891 (“’891 Provisional”, SAMSUNG-1012), filed on
`
`March 15, 2013. I have been asked, for purposes of this proceeding only, to treat
`
`March 15, 2013 as the Critical Date in my analysis, and I have done so. However,
`
`my opinions as to the obviousness of claims 1-27 of the ’286 Patent would remain
`
`substantially unchanged even if a later date were deemed to be the Critical Date.
`
`39. Counsel for Samsung asked me to review the ’891 Provisional and to
`
`consider whether any claim(s) of the ’286 Patent include limitations that the ’891
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`
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`provisional does not disclose or of which the ’891 Provisional otherwise does not
`
`reasonably convey possession by the named inventor. Based on this review, it is my
`
`opinion that the ’891 Provisional does not disclose or otherwise reasonably convey
`
`numerous limitations recited in claims of the ’286 Patent, including the claim
`
`limitations listed below this paragraph. This is a non-exhaustive list, and the
`
`omission of certain limitations from this list does not imply that I hold an opinion
`
`that such limitations are adequately supported or enabled by the ’891 Provisional.
`
` Claim 3 [Element 3.0]: The system of claim 1, wherein the touch-
`screen user interface is operable to control an access of the card device
`for payment transactions at an NFC Card Reader facility, and is
`operable to enable and disable NFC payment transactions by the card
`device.
`
` Claim 5 [Element 5.0]: The system of claim 1, wherein the payment
`card device is absent a payment number information necessary for
`completing an online transaction, and wherein the information
`presented on an interface of said card device, are limited to an in-store
`merchant card reader facility use only.
`
` Claim 6 [Element 6.0]: A system of claim 1, wherein: the card issuer
`authority is operable to receive said transacted payment information,
`and wherein a card issuer authority is operable to compute a limited-
`use payment information from a transaction information, a merchant, a
`facility information, a sequence counter, a payment card account
`information, secrets and an information limited to said card device and
`to said computing device, and wherein a card issuer authority is
`operable to compare said computed payment information to said device
`transacted information, and wherein a card issuer authority is operable
`to reject as invalid a device transaction used outside of a valid range of
`device limitations, and wherein a card issuer authority is operable to
`authenticate as valid, a device transaction use within valid range of
`device limitations.
`
`16
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`
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` Claim 12 [Element 12.0]: The system of claim 1, wherein the
`computing device is further operable to present at least one challenge,
`of a set of security challenges comprising: a card user personal
`information question, a card issuer authority security question, a user
`touch-screen entry, a user touch-screen swipe, a user gesture of a
`device, a user passcode entry, a biometric sensing of a user touch, a
`biometric sensing of a recognized user proximity, and a biometric
`sensing of a recognized user, and wherein the computing device is
`operable to reject and accept a user authorization to use the device
`based on the security challenge response, and wherein the computing
`device is operable to decline performing a payment transaction in the
`possession of an unauthorized user, and wherein the computing device
`is operable to perform a payment transaction while in the possession of
`a user correctly passing the at least one challenge
`
` Claim 15 [Elements 15.11, 15.12]: wherein a card issuing authority is
`operable to reject as invalid, a payment information used outside of its
`valid limitations of use, and wherein a card issuing authority is operable
`to validate generated limited-use payment information provided by the
`computing device in an authorized transaction completed by the
`computing device.
`
` Claim 20 [Element 20.8]: wherein the computing device is operable to
`receive, store, display and
`transmit
`issuer-provided payment
`information, associated with, but not depicted on, the payment card
`device..
`For example, the ’891 Provisional briefly mentions that “[o]ne type of
`
`40.
`
`credit card in circulation employs radio frequency (“RF”) identification where there
`
`is a near field radio frequency.” SAMSUNG-1012, [0004]. The ’891 Provisional
`
`later discloses that “the card could use RFID or near field technology so that it can
`
`connect to a personal computer and be used to uniquely generate a credit card
`
`number for online purchases.” Id., [0017]. There is no other discussion of near field
`
`communication or “NFC” in the ’891 Provisional. There is therefore no support in
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`17
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`

`
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`the ’891 Provisional for the recitation of claim 3 that “the touch-screen user interface
`
`is operable to control an access of the card device for payment transactions at an
`
`NFC Card Reader facility, and is operable to enable and disable NFC payment
`
`transactions by the card device.” In fact, there is no disclosure in the ’891
`
`Provisional of using touch-screen input to control enabling or disabling of any
`
`payment transaction functionality.
`
`41.
`
`Turning to claim 5, there is no disclosure in the ’891 Provisional
`
`application that “the payment card device is absent a payment number information
`
`necessary for completing an online transaction, and wherein the information
`
`presented on an interface of said card device, are limited to an in-store merchant
`
`card reader facility use only.” The ’891 Provisional does not describe limiting the
`
`field of use of the payment card device to in-store card reader facility use only, to
`
`the exclusion of online transactions. Rather, the language of the ’891 Provisional
`
`is inclusive, describing the card as suitable for both online and in-store transactions,
`
`stating that “the credit card of the present invention could also be used to make
`
`online purchases.” SAMSUNG-1012, [0017].
`
`42.
`
`The ’891 Provisional briefly discloses that “wherein the time,
`
`sequence, user, credit card authority and other information is similarly combined
`
`by credit card processing facility to generate a credit card number for comparison
`
`to the number transmitted by the credit card reader.” SAMSUNG-1012, claim 6.
`
`18
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`
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`However, there is no disclosure of using “a transaction information, a merchant, a
`
`facility information, a sequence counter, a payment card account information,
`
`secrets and an information limited to said card device and to said computing
`
`device” to generate a limited-use payment information at a card issuer authority as
`
`recited by challenged claim 6. Furthermore, while the ’891 Provisional describes a
`
`“credit card processing facility…authenticating said number,” there is no disclosure
`
`of the limitation “wherein a card issuer authority is operable to reject as invalid a
`
`device transaction used outside of a valid range of device limitations, and wherein
`
`a card issuer authority is operable to authenticate as valid, a device transaction use
`
`within valid range of device limitations” as recited by challenged claim 6.
`
`43.
`
`Turning to claim 12, the ’891 Provisional briefly describes that “the
`
`display can be used to ask the user a security question if an improper password is
`
`entered” but does not provide support for all of the possible “security challenges”
`
`recited by claim 12. There is also no disclosure in the ’891 Provisional of the
`
`limitation “wherein the computing device is operable to reject and accept a user
`
`authorization to use the device based on the security challenge response, and
`
`wherein the computing device is operable to decline performing a payment
`
`transaction in the possession of an unauthorized user, and wherein the computing
`
`device is operable to perform a payment transaction while in the possession of a
`
`user correctly passing the at least one challenge.” The ’891 Provisional only
`
`19
`
`

`

`
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`describes a security question being presented “if an improper password is entered”
`
`but does provide details on actions performed in response to a correct or incorrect
`
`answer to the security question.
`
`44.
`
`The ’891 Provisional also does not provide support for “a card issuing
`
`authority is operable to reject as invalid, a payment information used outside of its
`
`valid limitations of use” as recited by claim 15. The ’891 Provisional briefly
`
`mentions that a “credit card processing facility” can “authenticat[e]” the transaction
`
`but does not describe the “credit card processing facility” as being a card issuing
`
`authority or as performing the precise functionality recited by limitations 15.11 and
`
`15.12.
`
`45.
`
`I address the lack of support for claim 20 in the below written
`
`description support section.
`
`46.
`
`The ’891 Provisional thus does not provide support for at least these
`
`claims of the ’286 Patent. No other application in the priority chain of the ’286
`
`patent was filed prior to March, 16, 2013. Accordingly, the claims in the table above
`
`lack written description and enabling support in a priority application filed before
`
`March 16, 2013. I understand that this means the ’286 Patent is subject to the first-
`
`to-file provisions of the AIA.
`
`47. Application 14/217,261, which became U.S. Patent 9,022,286 (’2286
`
`Patent) on May 5, 2015, was filed on March 17, 2014. No IDS was submitted. The
`
`20
`
`

`

`
`
`Examiner issued a restriction requirement on September 10, 2014. In response,
`
`Applicant on November 14, 2014, withdrew certain claims and added others. The
`
`Examiner on his own located eight pertinent references, which are listed on the face
`
`of the ’2286 Patent. Thereupon, on January 6, 2015, the Examiner issued a Notice
`
`of Allowability without ever having issued a rejection.
`
`48. On April 7, 2015, Applicant filed continuation application 14/680,946,
`
`which became U.S. Patent 9,430,765 on August 30, 2016. No IDS whatsoever was
`
`filed. The Applicant did not even cite the references located by the Examiner in the
`
`prosecution of the ’2286 parent patent. On August 18, 2015, the Examiner issued a
`
`statutory double patenting rejection based on the ’2286 Patent, which the Applicant
`
`overcame by canceling all the claims and submitting new claims. On May 4, 2016,
`
`the Examiner rejected most of the claims as obvious and objected to all the others,
`
`hence, did not allow any claims.
`
`49.
`
`By amendment dated June 6, 2016, the Applicant canceled certain
`
`claims, amended certain claims, added new claims and traversed the rejection of
`
`other claims. On June 20, 2016, the Examiner allowed all pending claims, writing:
`
`None of prior art teaches the an [sic] apparatus comprising a real-
`time clock producing a cryptographically protected time stamp,
`sensor detecting various status of the apparatus, dynamically
`generating a card security code, communicating the card
`information and exchange user and card account details through
`a cryptographic exchange as set forth in the claims.
`
`21
`
`

`

`
`
`50. On August 29, 2016, Applicant filed Application 15/250,698, a
`
`continuation application to the ’946 Application, which issued as U.S. Patent
`
`10,013,693 on July 3, 2018. No IDS was filed. The only art considered by the
`
`Examiner were the Applicant’s prior patents.
`
`51.
`
`The Examiner issued a nonstatutory double patenting rejection that
`
`was overcome by a terminal disclaimer. In a Notice of Allowance dated March 3,
`
`2018, the Examiner allowed all pending claims, writing:
`
`None of prior art teaches an apparatus comprising a thin card
`shaped sized body; a memory configured to store a plurality of
`identification data: a processor coupled to the memory, wherein
`the processor is configured to generate a card information based
`on the plurality of identification data, wherein the generated card
`information is configured to be used in place of card issuer
`information; a wireless interface configured to wirelessly
`communicate the card information, wherein the processor is
`configured to transmit the card information via the wireless
`interface; a display configured to display the card information;
`and a real-time clock configured to produce a timestamp, a
`method of the same as set forth in the claims.
`52. Application 16/025,829, which issued as the ’820 Patent, was filed o