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 .
Response to Arguments
In response to 35 USC 103 on pages 7-12, filed 12/03/2025, for independent claims 7, 15 and 16 along with their respective dependent claims, applicant argues that Chai-Cheng-Brodie fails to disclose “a two-dimensional code that represents both the public key corresponding to the secret key and the signature”.
The Examiner does not concede. Chai teaches “receiving, by a computer, a digital document formed by placing a two-dimensional code that represents a signature in an area, within data to be signed obtained by digitalizing the document”. Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014][0054-0055]. The bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]. Two-dimensional code is read by the bill use terminal [0078] Fig. 2”. Chai shows a two-dimensional code that represent a signature. This also can be seen in figure 4.
Applicant further argues that Chai does not digitize a document. The examiner does not concede. The claim recites “within data to be signed obtained by digitalizing the document”. The claim is not positive recited, the claim language “to be” is an intended result. The data does not appear to be signed obtained by digitalizing the document. Furthermore, applicant discloses in page 9 that chai generates a temporary electronic bill picture with a designated area for a QR code. Unclear how this would not be “digitizing a document”.
Brodie teaches “the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data”. Brodie discloses “the bottom view of the gadget shows a QR-code symbol 605 representing the gadget public key [0037]. A gadget generates and stores a plurality of transaction private keys each with an associated transaction public key [0031][Table 1][0041]”. From Fig. 6, QR code represents public key. The public key corresponds to the private key, the keys are used for signing data. One of ordinary skill would understand using a technique such as RSA to sign data.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). A mere statement or argument that the Office has not established a prima facie case of obviousness or that the Office’s reliance on common knowledge is unsupported by documentary evidence will not be considered substantively adequate to rebut the rejection or an effective traverse of the rejection under 37 CFR 1.111(b). Office personnel addressing this situation may repeat the rejection made in the prior Office action and make the next Office action final. See MPEP § 706.07(a). In this case, Brodie modifies the QR of Chai to represent a public key corresponding to the secret key for signing data. One of ordinary skill in the art would have been motivated for the purpose of signature verification, encryption and enabling the use of digital signature without risking the exposure of the private key (Brodie [0004][0014]).
Thus, by the combination of Chai and Brodie, they teach “a two-dimensional code that represents both the public key corresponding to the secret key and the signature”.
Claim Objections
Applicant is advised that should claims 7, 15 and 16 be found allowable, claims 22, 23 and 24 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 7-9, 15, 16 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Chai et al. (US 20160055552, hereinafter Chai) in view of Cheng (TW 201510764A) and in further view of Brodie (US 20170063550).
Re. claim 7, Chai discloses a method for confirming a digital signature to a document, comprising: receiving, by a computer, a digital document formed by placing a two-dimensional code that represents a signature in an area, within data to be signed obtained by digitalizing the document (Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014][0054-0055]. The bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]. Two-dimensional code is read by the bill use terminal [0078] Fig. 2), which is filled with a predetermined color (Chai discloses the bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]), wherein the signature is a signature with respect to the data to be signed using a secret key (Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014] [0054]), verifying, by the computer the signature using the public key (Chai discloses two-dimensional code to obtain encrypted digest data, and decrypting the encrypted digest data by using the public key provided by the bill certificating mechanism to obtain original digest data [0033]. Verifying the electronic bill by decrypting the encrypted digest data [0077-0081]).
Chai discloses verifying the signature using a public key, Chai does not explicitly teach but Cheng teaches when the verification succeeds, displaying a visual element for confirming success of the verification (Cheng teaches using the public key to perform verification on the downloaded digital signature information [Page 8]. After the verification is passed, a mark representing the success of the verification is additionally displayed on the digital image received by the authenticator, and the flag indicating that the verification is successful can be preferably overwritten on the signed image. Digital image received by the authenticator, preferably overlaid on the signed image [Page 3]. The client side, the signing party and the verifier connected to the server [Page 6]. When the verification is passed, a human visual mark representing the successful verification is generated on the digital image 206 (for example, the text of the verification is successful, the circle is circled, or any may indicate success). Or a valid mark) [Page 8] Figs. 3 and 4).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by Chai to include when the verification succeeds, displaying a visual element overlaid to the area, wherein the visual element is for confirming success of the verification as disclosed by Cheng. One of ordinary skill in the art would have been motivated for the purpose of increasing the credibility of the verification (Cheng [Page 8]).
Chai teaches two-dimensional code placed within the data, Chai-Cheng do not explicitly teach but Brodie teaches the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data (Brodie teaches the bottom view of the gadget shows a QR-code symbol 605 representing the gadget public key [0037]. A gadget generates and stores a plurality of transaction private keys each with an associated transaction public key [0031][Table 1][0041] Fig. 6, QR code represents public key, the public key corresponds to the private key, the keys are used for signing data. One of ordinary skill would understand using a technique such as RSA to sign data).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by the combination of Chai-Cheng to include the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data as disclosed by Brodie. One of ordinary skill in the art would have been motivated for the purpose of signature verification, encryption and enabling the use of digital signature without risking the exposure of the private key (Brodie [0004][0014]).
Re. claim 8, the combination of Chai-Cheng-Brodie teach the method according to claim 7, Cheng further teaches wherein the visual element is associated with an owner of the public key (Cheng teaches using the public key to perform verification on the downloaded digital signature information [Page 8]. after the verification is passed, a mark representing the success of the verification is additionally displayed on the digital image received by the authenticator, and the flag indicating that the verification is successful can be preferably overwritten on the signed image [Page 3]. The client side, the signing party and the verifier connected to the server [Page 6]. When the verification is passed, a human visual mark representing the successful verification is generated on the digital image 206 (for example, the text of the verification is successful, the circle is circled, or any may indicate success). Or a valid mark) [Page 8] Figs. 3 and 4).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by Chai to include wherein the visual element is associated with an owner of the public key as disclosed by Cheng. One of ordinary skill in the art would have been motivated for the purpose of increasing the credibility of the verification (Cheng [Page 8]).
Re. claim 9, the combination of Chai-Cheng-Brodie teach the method according to claim 8, Cheng further teaches wherein the visual element is a seal associated with an owner of the public key (Cheng teaches using the public key to perform verification on the downloaded digital signature information [Page 8]. after the verification is passed, a mark representing the success of the verification is additionally displayed on the digital image received by the authenticator, and the flag indicating that the verification is successful can be preferably overwritten on the signed image [Page 3]. The client side, the signing party and the verifier connected to the server [Page 6]. When the verification is passed, a human visual mark representing the successful verification is generated on the digital image 206 (for example, the text of the verification is successful, the circle is circled, or any may indicate success). Or a valid mark) [Page 8] Figs. 3 and 4).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by Chai to include wherein the visual element is a seal associated with an owner of the public key as disclosed by Cheng. One of ordinary skill in the art would have been motivated for the purpose of increasing the credibility of the verification (Cheng [Page 8]).
Re. claim 15, Chai discloses a computer program product embodied in a non-transitory computer readable medium comprising computer instructions for causing a computer to perform a method for confirming a digital signature that has been added to a document, the method comprising: receiving, by the computer, a digital document formed by placing a two-dimensional code that represents a signature in an area, within data to be signed obtained by digitalizing the document (Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014][0054-0055]. The bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]. Two-dimensional code is read by the bill use terminal [0078]), which is filled with a predetermined color (Chai discloses the bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]), wherein the signature is a signature with respect to the data to be signed using a secret key (Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014] [0054]), verifying, by the computer, the signature using the public key (Chai discloses two-dimensional code to obtain encrypted digest data, and decrypting the encrypted digest data by using the public key provided by the bill certificating mechanism to obtain original digest data [0033]. Verifying the electronic bill by decrypting the encrypted digest data [0077-0081]).
Chai discloses when the verification succeeds, displaying a visual element for confirming success of the verification (Cheng teaches using the public key to perform verification on the downloaded digital signature information [Page 8]. after the verification is passed, a mark representing the success of the verification is additionally displayed on the digital image received by the authenticator, and the flag indicating that the verification is successful can be preferably overwritten on the signed image. Digital image received by the authenticator, preferably overlaid on the signed image [Page 3]. The client side, the signing party and the verifier connected to the server [Page 6]. When the verification is passed, a human visual mark representing the successful verification is generated on the digital image 206 (for example, the text of the verification is successful, the circle is circled, or any may indicate success). Or a valid mark) [Page 8] Figs. 3 and 4).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by Chai to include when the verification succeeds, displaying a visual element overlaid to the area, wherein the visual element is for confirming success of the verification as disclosed by Cheng. One of ordinary skill in the art would have been motivated for the purpose of increasing the credibility of the verification (Cheng [Page 8]).
Chai teaches two-dimensional code placed within the data, Chai-Cheng do not explicitly teach but Brodie teaches the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data (Brodie teaches the bottom view of the gadget shows a QR-code symbol 605 representing the gadget public key [0037]. A gadget generates and stores a plurality of transaction private keys each with an associated transaction public key [0031][Table 1][0041] Fig. 6, QR code represents public key, the public key corresponds to the private key, the keys are used for signing data. One of ordinary skill would understand using a technique such as RSA to sign data).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by the combination of Chai-Cheng to include the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data as disclosed by Brodie. One of ordinary skill in the art would have been motivated for the purpose of signature verification, encryption and enabling the use of digital signature without risking the exposure of the private key (Brodie [0004][0014]).
Re. claim 16, Chai discloses a computer configured having a processor and memory for confirming a digital signature added to a document, configured to: receive a digital document formed by placing a signature represented by a two-dimensional code in an area, within data to be signed obtained by digitalizing the document (Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014][0054-0055]. The bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]. Two-dimensional code is read by the bill use terminal [0078] Fig. 2), which is filled with a predetermined color (Chai discloses the bill generating terminal 100 positions a region for embedding two-dimensional code by using a specified two-dimensional code positioning technology and sets the pixel value for said region to a specified value [0051]), wherein the signature is a signature with respect to the data to be signed using a secret key (Chai discloses generating a data signature on the generated digest data by using a private key, generate the 2D code from the encrypted digest data [0013-0014] [0054]) verify, by the computer, the signature using the public key (Chai discloses two-dimensional code to obtain encrypted digest data, and decrypting the encrypted digest data by using the public key provided by the bill certificating mechanism to obtain original digest data [0033]. Verifying the electronic bill by decrypting the encrypted digest data [0077-0081]).
Chai discloses verifying the signature using a public key, Chai does not explicitly teach but Cheng teaches when the verification succeeds, display a visual element for confirming success of the verification (Cheng teaches using the public key to perform verification on the downloaded digital signature information [Page 8]. after the verification is passed, a mark representing the success of the verification is additionally displayed on the digital image received by the authenticator, and the flag indicating that the verification is successful can be preferably overwritten on the signed image. Digital image received by the authenticator, preferably overlaid on the signed image [Page 3]. The client side, the signing party and the verifier connected to the server [Page 6]. When the verification is passed, a human visual mark representing the successful verification is generated on the digital image 206 (for example, the text of the verification is successful, the circle is circled, or any may indicate success). Or a valid mark) [Page 8] Figs. 3 and 4).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by Chai to include when the verification succeeds, displaying a visual element overlaid to the area, wherein the visual element is for confirming success of the verification as disclosed by Cheng. One of ordinary skill in the art would have been motivated for the purpose of increasing the credibility of the verification (Cheng [Page 8]).
Chai teaches two-dimensional code placed with the data, Chai-Cheng do not explicitly teach but Brodie teaches the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data (Brodie teaches the bottom view of the gadget shows a QR-code symbol 605 representing the gadget public key [0037]. A gadget generates and stores a plurality of transaction private keys each with an associated transaction public key [0031][Table 1][0041] Fig. 6, QR code represents public key, the public key corresponds to the private key, the keys are used for signing data. One of ordinary skill would understand using a technique such as RSA to sign data).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by the combination of Chai-Cheng to include the two-dimensional code placed within the data further represents a public key corresponding to the secret key for signing the data as disclosed by Brodie. One of ordinary skill in the art would have been motivated for the purpose of signature verification, encryption and enabling the use of digital signature without risking the exposure of the private key (Brodie [0004][0014]).
Re. claim 21, the combination of Chai-Cheng-Brodie teach the method according to claim 7, wherein the verifying includes determining whether the signature represented by the two-dimensional code is a signature with respect to a digital document formed by filling the area of the received digital document with the predetermined color (Chai discloses two-dimensional code to obtain encrypted digest data and decrypting the encrypted digest data by using the public key provided by the bill certificating mechanism to obtain original digest data [0033]. Verifying the electronic bill by decrypting the encrypted digest data [0077-0081]. The two-dimensional code region of the electronic bill data read in Step S201 is positioned, and the pixel value of the two-dimensional code region is set to a specified value [0082]).
Re. claim 22, claim 22 is rejected with the same rationale as claim 7.
Re. claim 23, claim 23 is rejected with the same rationale as claim 15.
Re. claim 24, claim 24 is rejected with the same rationale as claim 16.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Chai et al. (US 20160055552, hereinafter Chai) in view of Cheng (TW 201510764A) in view of Brodie (US 20170063550) in view of Takahashi et al. (US 20160292804, Takahashi) and in further view of Brehmer et al. (US 20210065121, hereinafter Brehmer).
Re. claim 12, the combination of Chai-Cheng-Brodie teach the method according to claim 7, the combination of Chai-Cheng-Brodie do not explicitly teach but Takahashi teaches further comprising confirming, by the computer, legitimacy of the received public key based on the public key with reference to a correspondence between public keys and possible signors (Takahashi teaches checking whether or not the first, second, third feature values match one another, it is possible to check whether or not the respective handwritten signatures of the parties A and B, who have agreed to the contract body, have been tampered with after signing by the parties A and B. Also, by checking whether or not the first and second hash values match each other, it is possible to check whether or not the contract body to which the parties A and B agreed and signed matches the shot contract body [0131]).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by the combination of Chai-Cheng-Brodie to include confirming legitimacy of the received public key based on the public key with reference to a correspondence between public keys and possible signors as disclosed by Takahashi. One of ordinary skill in the art would have been motivated for the purpose of improving security by detecting tampering and authenticate the signer (Takahashi [0007][0062]).
Although Takahashi discloses the correspondence, the combination of Chai-Cheng-Brodie-Takahashi do not explicitly teach but Brehmer teaches the correspondence stored in a blockchain accessible by the computer (Brehmer teaches a plurality of nodes can access a common blockchain within the database 120 when performing data object functions described herein. Though the blockchain may be accessible by two or more nodes of an embodiment, one or more data objects stored on the blockchain may be encrypted before being stored on the blockchain as one or more data blocks, ensuring that only those nodes associated with authorized users (e.g., those nodes having appropriate access rights or public keys) can access the encrypted data objects stored within the database 120 on the blockchain [0099][0055]).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by the combination of Chai-Cheng-Brodie-Takahashi to include teaches the correspondence stored in a blockchain accessible by the computer as disclosed by Brehmer. One of ordinary skill in the art would have been motivated for the purpose of facilitate usage of public/private cryptography (Brehmer [0055]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chai et al. (US 20160055552, hereinafter Chai) in view of Cheng (TW 201510764A) in view of Brodie (US 20170063550) and in further view of Takahashi et al. (US 20160292804, Takahashi).
Re. claim 14, the combination of Chai-Cheng-Brodie teach the method according to claim 7, the combination of Chai-Cheng-Brodie do not explicitly teach but Takahashi teaches further comprising transmitting, by the computer, an identity confirmation request of an owner of the public key (Takahashi discloses checking whether or not the first, second, third feature values match one another, it is possible to check whether or not the respective handwritten signatures of the parties A and B, who have agreed to the contract body, have been tampered with after signing by the parties A and B [0131]. Display check result [0132][0125][0143]).
Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify the method and system disclosed by the combination of Chai-Cheng-Brodie to include transmitting an identity confirmation request of an owner of the public key as disclosed by Takahashi. One of ordinary skill in the art would have been motivated for the purpose of improving security by detecting tampering and authenticate the signer (Takahashi [0007][0062]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shi (US 20180211390) discloses a barcode-embedding area in an image is acquired. Pixels in the barcode-embedding area can be changed from a RGB color space to a color space with a luminance component.
Fisher (US 20190372769) discloses a visual code may be used to embed a universal identifier directly into document content. The universal identifier may include a reference to a respective location within a distributed ledger and can be used to retrieve information related to the document including version information, author information, audit information, and signature information.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN A AYALA whose telephone number is (571)270-3912. The examiner can normally be reached Monday-Thursday 8AM-5PM; Friday: Variable EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jorge Ortiz-Criado can be reached at 571-272-7624. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN AYALA/Primary Examiner, Art Unit 2496