DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 11/4/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 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.
Status of Claims
Claims 1-17 are currently pending.
Claims 1-17 are rejected as set forth below.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Claim Rejections - 35 U.S.C. § 112(a)
Applicant’s arguments with respect to claim(s) 1, 8 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant has failed to acknowledge that if the Specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made. As set forth previously, since a cryptogram can be generated from two parameters in an almost infinite number of ways, the Specification needs to disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Instead, the Specification provides no details whatsoever regarding how the cryptogram is generated from the administrator credential and from a private cryptographic key.
Claim Rejections - 35 U.S.C. § 112(b)
Applicant’s arguments with respect to claim(s) 1, 8, 15 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claim(s) 1, 8, 15 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant contends Ginter fails to teach or suggest “the certificate server confirming that the at least one terminal credential was uniquely associated with the communications terminal prior to the certificate server receiving the activation request”. The Examiner respectfully disagrees. Ginter teaches the manufacturer of the PPE 650, i.e. the communications terminal, generating a site ID 2821 during the creation of the PPE 650, the creation of the PPE 650 occurring before the certificate server receives the activation request ([1598]-[1599]). The certifying authority VDE administrator, i.e. certificate server, confirms the site ID is unique associated with the PPE since it uses the unique site ID 821 to verify the PPE 650’s identity ([1553]; [1599]-[1601], “Certificates can also play an important role in decommissioning rogue users and/or sites. By including a site and/or user ID in a certificate, a PPE can evaluate this information as an aspect of authentication. For example, if a VDE administrator or clearinghouse encounters a certificate bearing an ID (or other information) that meets certain criteria (e.g., is present on a list of decommissioned and/or otherwise suspicious users and/or sites), they may choose to take actions based on those criteria such as refusing to communicate, communicating disabling information, notifying the user of the condition, etc.”).
Applicant contends Ginter fails to teach or suggest “the certificate server confirming that the at least one terminal credential was uniquely associated with the communications terminal in a credential database”. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Specifically, O’Donoghue is relied upon to teach the aforementioned limitation.
Applicant contends Wheeler fails to teach or suggest “confirm that the cryptogram was generated from the administrator credential and from a private cryptographic key, wherein the public cryptographic key and the private cryptographic key are an asymmetric cryptographic key pair”. The Examiner respectfully disagrees. The digital signature, i.e. the cryptogram, is verified to be generated from the private key/public key pair, the identifier/credential being the public key, since the public key is used to verify the digital signature and the digital signature is generated by the private key/public key pair ([0010], “The origination of a digital signature essentially comprises the encryption of a message ("M") sent in an EC. In addition, the message may include a hash value of the message that is conveyed in the EC, wherein the hash algorithm used to generate the hash is, for example, SHA-1, or other similar algorithm known in the art. The message, which may or may not include a hash value, is encrypted by an electronic device using a private key ("PrK") of a key pair used in public-private key cryptography (also known as asymmetric cryptography).”; [0085], [0225]).
Applicant contends the combination of Ginter and O’Donoghue is improper because the Office action “fails to explain why the person of ordinary skill would have modified the solution taught by Ginter to require the certifying authority to confirm that the site ID included in the site identity certificate received from a PPE was uniquely associated with that PPE”. The Examiner respectfully disagrees. The Office action is not modifying Ginter to require the certifying authority to confirm that the site ID included in the site identity certificate received from a PPE was uniquely associated with that PPE – said limitation is already taught by Ginter ([1553]; [1599]-[1601]). Instead, Ginter is being modified by O’Donoghue so the terminal credential is uniquely associated with the communications terminal in a credential database, wherein the credential database is remote from the communications terminal.
Applicant contends the combination of Ginter and Wheeler is improper because the combination does not result in the communications terminal being properly verified. The Examiner respectfully disagrees. Verifying a cryptogram that is sent by the communications terminal is equivalent to verifying the communications terminal.
Claim Rejections - 35 USC § 112, First Paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 1, 8, the limitation “wherein the computer server is configured to: confirm that the cryptogram was generated from the administrator credential and from a private cryptographic key” fails to comply with the written description requirement. Specifically, the Specification does not sufficiently disclose the computer/algorithm required to perform the claimed function of generating a cryptogram from the administrator credential and from a private cryptographic key. The Specification merely repeats the limitation in verbatim ([0115]). Furthermore, a cryptogram can be generated from two parameters in multitude of mathematical ways. See MPEP 2161.01(I): (“When examining computer implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.… If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made.”).
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 5-9, 12-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No.20020112171 to Ginter in view of United States Patent Application Publication No. 20130054417 to O’Donoghue and United States Patent Application Publication No. 20030177361 to Wheeler.
As per claims 1, 8, Ginter teaches:
A terminal configuration network comprising: a communications terminal configured to generate an activation request, wherein the activation request includes at least one terminal credential; ([0471], “An electronic appliance 600 provided by the preferred embodiment may, for example, be any electronic apparatus that contains one or more microprocessors and/or microcontrollers and/or other devices which perform logical and/or mathematical calculations. This may include computers.”; [1557]-[1558], “In the preferred embodiment, PPE 650 may generate its own certificate, or the certificate may be obtained externally, such as from a certifying authority VDE administrator. For example, PPE 650 may communicate its public key and other information to a certifying authority. Generally, a certifying authority will require a valid site certificate to be presented prior to creating a certificate for a given user. Users may each require their own public key/private key pair in order to obtain certificates.”)
a certificate server, wherein the certificate server is configured to: receive the activation request from the communications terminal, validate the activation request by confirming that the at least one terminal credential was uniquely associated with the communications terminal prior to the certificate server receiving the activation request, generate an activation response in response to the activation request, the activation response including a digital certificate, and transmit the activation response to the communications terminal; ([1553], “Certificates can also play an important role in decommissioning rogue users and/or sites. By including a site and/or user ID in a certificate, a PPE can evaluate this information as an aspect of authentication. For example, if a VDE administrator or clearinghouse encounters a certificate bearing an ID (or other information) that meets certain criteria (e.g., is present on a list of decommissioned and/or otherwise suspicious users and/or sites), they may choose to take actions based on those criteria such as refusing to communicate, communicating disabling information, notifying the user of the condition, etc.”; [1598]-[1599], “FIG. 64 shows the flow of universe-wide, or "master," keys during creating of a PPE 650. The manufacturer possesses (i.e., knows, and protects from disclosure or modification) one or more public key 281/private key 2812 key pairs used for signing and validating site identification certificates 2821. For each site, the manufacturer generates a site ID 2821 and list of site characteristics 2822.”; [1599]-[1601], “As part of the initialization process, the PPE 650 may generate internally or the manufacturer may generate and supply, one or more pairs of site-specific public keys 2815 and private keys 2816. These are used by the PPE 650 to prove its identity. Similarly, site-specific database key(s) 281, for the site are generated, and if needed (i.e., if a Random Number Generator 542 is not available), a random initialization seed 2818 is generated. The initialization may begin by generating site ID 2821 and characteristics 2822 and the site public key 2815/private key 2816 pair(s). These values are combined and may be used to generate one or more site identity certificates 2823. The site identity certificates 2823 may be generated by the public key generation process 2804, and may be stored both in the PPE's protected key storage 2802 and in the manufacturer's VDE site certificate database 2803.”)
wherein the communications terminal is configured to: establish an encrypted channel with a computer server using the digital certificate, the computer server being distinct from the certificate server; and download a payload to the communications terminal via the encrypted channel. ([1618], “Once certification has occurred, external communications between PPEs 650 may be established using the certificates of communicating PPEs.”; [0112], [0119], “Secure communications means employing authentication, digital signaturing, and encrypted transmissions. The secure subsystems at said user nodes utilize a protocol that establishes and authenticates each node's and/or participant's identity, and establishes one or more secure host-to-host encryption keys for communications between the secure subsystems.”)
wherein the communications terminal is configured to: transmit a card authentication request to the computer server; ([1359], “In general, the "use" mode of BUDGET method 2250 is invoked in response to an event relating to the use of an object or its content. The "administrative request" mode of BUDGET method 2250 is invoked by or on behalf of the user in response to some user action that requires contact with a VDE financial provider, and basically its task is to send an administrative request to the VDE financial provider.”; [1946], “Financial providers: Provider of third party sources of electronic funds to end-users and distributors. Examples of this class of users are VISA, American Express, or a government End Users Consumers of information.”)
Ginter does not explicitly teach, but O’Donoghue teaches:
uniquely associating a terminal credential with a communications terminal in a credential database, wherein the credential database is remote from the communications terminal; ([0069], “In block 410, the server may access database records for the selected subscriber or purchaser in order to obtain contact information (e.g., an e-mail address, telephone number, URL, etc.), purchaser-specific authentication and confirmation data (e.g., a purchaser identifier, unique credential data, and/or encryption/decryption keys), and other information required to contact the purchaser computing device, authenticate the purchaser computing device, and authenticate itself to the computing device.”)
One of ordinary skill in the art would have recognized that applying the known technique of O’Donoghue to the known invention of Ginter would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such terminal credentials features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to uniquely associate a terminal credential with a communications terminal in a credential database, wherein the credential database is remote from the communications terminal, results in an improved invention because applying said technique ensures that the terminal credential association with the communications terminal is securely stored in a remote database away from possible tampering by the communications terminal, thus improving the overall security of the invention.
Ginter as modified does not explicitly teach, but Wheeler teaches:
wherein the communications terminal is configured to: transmit an authentication request to the computer server via the encrypted channel, the authentication request including an administrator credential and a cryptogram, and wherein the computer server is configured to: locate, using the administrator credential, a public cryptographic key associated with the administrator credential in a token database, and confirm using the located public cryptographic key that the cryptogram was generated from the administrator credential and from a private cryptographic key, wherein the public cryptographic key and the private cryptographic key are an asymmetric cryptographic key pair; and download a payload to the communications terminal via the encrypted channel. ([0010], “The origination of a digital signature essentially comprises the encryption of a message ("M") sent in an EC. In addition, the message may include a hash value of the message that is conveyed in the EC, wherein the hash algorithm used to generate the hash is, for example, SHA-1, or other similar algorithm known in the art. The message, which may or may not include a hash value, is encrypted by an electronic device using a private key ("PrK") of a key pair used in public-private key cryptography (also known as asymmetric cryptography).”; [0085], “When the offeror 102a receives the EC 287b, his computer 428a performs a table lookup function in database 114a at step 7 based on the identifier that is part of the received message in the EC to retrieve the offeree's public key 287b. If the message was encrypted for confidentiality purposes, then it would require decryption by the offeree 102b. When the offeror 102a has retrieved the offeree's 102b public key from database 114a, the offeree's public key can be used to verify the digital signature found in EC 247b. If the verification, is successful, the offeror 102a has authenticated the sender of the message as being the offeree 102b. Thus, a contract is formed between offeror 102a and offeree 102b.”; [0107], “Then, the business 202 authenticates the sender by using the identifier in the EC 347b to retrieve the public key of the supply company 203 that was received at step 1 to decrypt the digital signature of the EC. The identifier is then used to retrieve a deposit account number of the supply company 203 from the account information stored in association with the supply company's identifier in database 214a at step 7. This deposit account number may then be used to make payment for the invoice contained in the EC 347b that was received at step 6.”; [0225], “However, the database may only comprise two fields, wherein the public key doubles as the identifier.”)
One of ordinary skill in the art would have recognized that applying the known technique of Wheeler to the known invention of Ginter as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to transmit an authentication request to the computer server via the encrypted channel, the authentication request including an administrator credential and a cryptogram, the computer server being distinct from the certificate server; and wherein the computer server is configured to: locate, using the administrator credential, a public cryptographic key associated with the administrator credential in a token database, and confirm that the cryptogram was generated from the administrator credential and from a private cryptographic key, wherein the public cryptographic key and the private cryptographic key are an asymmetric cryptographic key pair; and download a payload to the communications terminal via the encrypted channel results in an improved invention because applying said technique ensures that the communications terminal is properly verified before processing a payment action, thus improving the overall security of the invention (Wheeler, [0015]).
As per claims 2, 9, 16, Ginter teaches:
wherein: the communications terminal includes a user input device and a non-volatile memory; the non-volatile memory stores one of the at least one terminal credentials; the communications terminal is configured to receive another of the at least one terminal credentials via the user input device, and incorporate the one terminal credential and the another terminal credential into the activation request; and the certificate server is configured to validate the activation request. ([0458], “Electronic appliance 600 in this example may include a keyboard or keypad 612, a voice recognizer 613, and a display 614. A human user can input commands through keyboard 612 and/or voice recognizer 613, and may view information on display 614.”; [1551], “One or more VDE administrators in the preferred embodiment may constitute a certifying authority. By "signing" both the public key generated by a PPE 650 and information about the PPE and/or the corresponding VDE electronic appliance 600 (e.g., site ID, user ID, expiration date, name, address, etc.), the VDE administrator certifying authority can certify that information about the PPE and/or the VDE electronic appliance is correct and that the public key belongs to that particular VDE mode.”; [1557], “In the preferred embodiment, PPE 650 may generate its own certificate, or the certificate may be obtained externally, such as from a certifying authority VDE administrator. For example, PPE 650 may communicate its public key and other information to a certifying authority.”)
O’Donoghue teaches:
by confirming that the one terminal credential was saved uniquely in association with the another terminal credential in the database prior to the certificate server receiving the activation request; ([0069], “In block 410, the server may access database records for the selected subscriber or purchaser in order to obtain contact information (e.g., an e-mail address, telephone number, URL, etc.), purchaser-specific authentication and confirmation data (e.g., a purchaser identifier, unique credential data, and/or encryption/decryption keys), and other information required to contact the purchaser computing device, authenticate the purchaser computing device, and authenticate itself to the computing device.”)
As per claims 5, 12, Ginter teaches:
wherein the digital certificate includes an expiry date, and the communications terminal is configured to determine from the expiry date that the digital certificate has expired, renew the digital certificate, and establish the encrypted channel using the renewed digital certificate. ([1553], “Certificates also typically include an expiration date to ensure that certificates must be replaced periodically, for example, to ensure that sites and/or users must stay in contact with a VDE administrator and/or to allow certification keys to be changed periodically.”)
As per claims 6, 13, Ginter teaches:
wherein the digital certificate includes a network address, and the communications terminal is configured to renew the digital certificate by generating a renewal request, and transmitting the renewal request to the network address, wherein the renewal request includes the at least one terminal credential. ([1553], “Certificates also typically include an expiration date to ensure that certificates must be replaced periodically, for example, to ensure that sites and/or users must stay in contact with a VDE administrator and/or to allow certification keys to be changed periodically.”)
As per claims 7, 14, Ginter teaches:
wherein the computer server is configured to download the payload by: receiving from the communications terminal an authentication request including the administrator credential, confirming that the computer server had associated the administrator credential with the communications terminal prior to the computer server receiving the authentication request, and transmitting the payload to the communications terminal after the computer server confirming the authentication request; ([1681]-[1688], “From time to time, two parties (e.g., PPEs A and B), will need to establish a communication channel that is known by both parties to be secure from eavesdropping, secure from tampering, and to be in use solely by the two parties whose identifies are correctly known to each other. The following describes an example process for establishing such a channel and identifies how the requirements for security and authentication may be established and validated by the parties. The following may be the first two steps in the example process: A. (precursor step): Establish means of creating validatable claims by A. B. (precursor step): Establish means of creating validatable claims by B. These two steps ensure that each party has a means of making claims that can be validated by the other party, for instance, by using a public key signature scheme in which both parties maintain a private key and make available a public key that itself is authenticated by the digital signature of a certification authority.”)
Claims 3-4, 10-11, 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No.20020112171 to Ginter in view of United States Patent Application Publication No. 20130054417 to O’Donoghue and United States Patent Application Publication No. 20030177361 to Wheeler, and further in view of United States Patent Application Publication No. 20080162357 to Gerardi.
As per claims 3, 10, Ginter as modified does not explicitly teach, but Gerardi teaches:
wherein the communications terminal is configured to sign the activation request with a private cryptographic key, and the certificate server is configured to validate the activation request by confirming that the activation request was signed with the private cryptographic key. ([0056], “Generally speaking, each entity uses its private key to send a signed request, along with its public key, to the CA 411, requesting certified credentials it can subsequently use to identify itself to others. The CA 411 verifies that the signed request is authentic, i.e., truly generated by the entity that purportedly made the request, by using the public key of that entity.”)
One of ordinary skill in the art would have recognized that applying the known technique of Gerardi to the known invention of Ginter as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention so the communications terminal is configured to sign the activation request with a private cryptographic key, and the certificate server is configured to validate the activation request by confirming that the activation request was signed with the private cryptographic key, results in an improved invention because applying said technique ensures that the signed request is authentic, thus improving the overall security of the invention (Gerardi, [0056]).
As per claims 4, 11, 17, Gerardi teaches:
wherein the communications terminal is configured to receive the private cryptographic key via the user input device, generate a public cryptographic key from the private cryptographic key, and incorporate the public cryptographic key into the activation request, and the certificate server is configured to use the public cryptographic key to confirm that the activation request was signed with the private cryptographic key, wherein the public cryptographic key and the private cryptographic key are an asymmetric cryptographic key pair. ([0056], “Generally speaking, each entity uses its private key to send a signed request, along with its public key, to the CA 411, requesting certified credentials it can subsequently use to identify itself to others. The CA 411 verifies that the signed request is authentic, i.e., truly generated by the entity that purportedly made the request, by using the public key of that entity.”; [0059], “The key pair of the control computer 403, consisting of a private key (PR.sub.C) 601 and a public key (PU.sub.C) 603, may be encrypted and stored in a secure memory 605 in a manner requiring a user to enter a suitably strong password in order to make use of the key.”)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent No. 9754253 to Brandwine discloses identity certificates such as SSL certificates that can be issued in such a way that their use can be disabled upon short notice. In one embodiment, private signing information associated with a certificate is used by an infrastructure service on behalf of an entity, without making the private signing information accessible to the entity. In another embodiment, short-term certificates are dynamically issued to an application based on a previous certificate authorization.
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 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.
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/JAY HUANG/Primary Examiner, Art Unit 3619
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