The specification names U.S. Patent No. 5,696,908 to Muehlberger
(“Muehlberger patent”) as its “closest reference,” and distinguishes it:
[Muehlberger] does not disclose the use of point-of-sale terminals (POS)
to provide an injection on stacked “virgin” debit cards of any selected
prepaid amount of funds (line of credit), security information (PINs,
passwords, mother’s maiden name, etc.). And to include [sic] conditions
for the validation and availability of those funds or line of credit.
’182 patent at col. 1, ll. 27-32.
C.
The Prosecution History
The ’182 patent issued from Application No. 09/524,496 (“the ’496 application”),
a continuation-in-part of Application No. 09/128,088 (“the ’088 application”), which
issued as U.S. Patent No. 6,105,009 (“the ’009 patent”). The ’009 patent relates to a
system for dispensing prepaid debit cards through automatic teller machines or ATMs.
The original ’496 application, drafted and filed by Cuervo
pro se, included claims
1-7 from the then-pending ’088 application. After claims 8-14 were rejected for double
patenting, applicant filed a Preliminary Amendment canceling claims 1-7. Applicant,
now represented by an attorney, explained:
[t]he preamble has been changed to clearly indicate that the system
claimed is an apparatus. . . . The original figure 1 has been broken down
in two figures to separate the hardware from the steps involved in using it.
The specifications were amended to bring them more in line with the
claimed subject matter which basically extends those claims of the
allowed parent application to include the use of a point-of-sale assembly
(POS) instead of an automatic teller machine (ATM).
Applicant also filed a terminal disclaimer, and distinguished the invention of the pending
application from the ATM machine of the now-issued ’009 patent:
An automated teller machine dispenses money through its mechanism in
response to a validated transaction. A point-of-sale assembly does not
include such a mechanism. Applicant encloses print outs of commercially
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