DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/24/2026 has been entered.
Response to Arguments
Applicant's arguments filed 04/24/2026 with respect to the prior art rejection have been fully considered but they are not persuasive.
Regarding claim 1, the Applicant argues that there is no articulated rationale for combining the references Shigematsu (US 20030048173) and Hauck (US Patent No. 8,059,835). The Applicant submits that the teaching of Hauck would not preserve the specific host-to-token exchanges that Shigematsu uses for registration of user information. The Examiner respectfully disagrees. At the outset, since the claims does NOT recite any limitation concerning user registration, the user registration portion of Shigematsu is not cited in the rejection thus is highly irrelevant when discussing the combination of references. Further, neither Hauck nor Shigematsu explicitly prohibits user registration and/or exchange of token when initialized as HID device. Contrary to the Applicant’s submission, Hauck explicitly allows information exchange with host device (see col 4 ln 32-35, The microprocessor 15 and the memory 27 may connect to the USB controller 16, which may implement the necessary logic to communicate with a USB host such as the personal computer 8). Therefore, a person having ordinary skill in the art would have been able to implement any additional communication functions such as host token exchange when initializing the device as a HID keyboard. Further, 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). In this case, it is well known that one device may present itself as another device to provide different functionalities (e.g. a multifunction printer may present itself as a scanner or a copying machine). Therefore, it would have been obvious to modify the peripheral device of Shigematsu and incorporate the device presenting itself solely as the HID keyboard. The motivation for doing so is to increase feasibility and/or functionality for the computer terminal communication to/from the apparatus as HID keyboard.
Applicant further argues that there is no articulated rationale for combining the references Shigematsu (US 20030048173) and Daniele (US Patent No. 5,576,734). The Examiner respectfully disagrees. 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).Daniele explicitly provides rationale for sending keycode in a timed sequence as to allow simulated key entries corresponding in time with events as taught by Daniele (see col 12 ln 38-57, These features are of particular importance, where simulated key entries must correspond in time with events, real or simulated). The motivation is particularly relevant when applying in Shigematsu as the sending of key entries must correspond to event of the host device e.g. login event that required the password.
Based on the reasoning above, the rejection should be maintained. Please see below for the detailed rejection.
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 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 negated by the manner in which the invention was made.
Claims 1-12 and 15-22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Shigematsu et al US 20030048173, in view of Hauck US Patent No. 8,059,835 and in view of Daniele et al US patent No. 5,576,734.
Regarding claim 1, Shigematsu teaches a portable computer-peripheral apparatus (see figure 7, authentication token 10) including a Universal Serial Bus (USB) connector (see para 0028, The communication circuit 33 in the use device 30 includes a general-purpose connector for connecting the keyboard and the like, such as a USB, serial, radio, or infrared connector, and a communication circuit) and a button (switch 18), the apparatus being operable to communicate with a computer terminal (use device 30, communication circuits 16, 33) such that, following connection to the computer terminal, wherein the apparatus is configured to send to the computer terminal an automated series of HID keycodes representing a password string in response to receiving a press of the button by a user (see para 0060-0061, When the user presses the switch 18, a signal is output to the password generation unit 20. The password generation unit 20 generates a new password N and transmits it to the keyboard emulator 14… The keyboard emulator 14 converts the received new password N into a touch signal J and transmits it to a use device 30 through a communication circuit 16).
But, Shigematsu fails to teach the apparatus initializes or presents itself solely as a human interface device (HID) keyboard.
However, Hauck teaches a portable computer-peripheral apparatus, following connection to a computer terminal, the apparatus initialized or presents itself solely as an HID keyboard (see col 5 ln 59-67, Considering now the software in the device 1 in more detail and while referencing Appendices A and B, Appendix A contains a C language listing containing enumeration data which identifies the device 1 as a USB Human Interface Device (HID). Once the host computer 8 identifies the device 1 as belonging to the HID class, the computer 8 requests a report descriptor from the device 1, which describes the device as a keyboard, and specifies the format of the data supplied by the device).
Therefore, it would have been obvious to modify the peripheral device of Shigematsu and incorporate the device presenting itself solely as the HID keyboard.
The motivation for doing so is to increase feasibility and/or functionality for the computer terminal communication to/from the apparatus as HID keyboard.
The combination of Shigematsu and Hauck fails to teach the keycodes is sent in a timed paced sequence.
However, Daniele teaches a keyboard emulator that send the keycodes in a timed paced sequence (see col 12 ln 38-57, system 10 provides the ability to establish a predetermined sequence of simulated keyboard entries which can be transmitted to any of a plurality of control consoles at predetermined times).
Therefore, it would have been obvious to modify the device of Shigematsu and incorporate sending the keycodes in a timed paced sequence.
The motivation for doing so is to allow simulated key entries corresponding in time with events as taught by Daniele (see col 12 ln 38-57, These features are of particular importance, where simulated key entries must correspond in time with events, real or simulated).
Regarding claim 2, Shigematsu further teaches the received press of the button is a single press of the button (see para 0060, When the user presses the switch 18).
Regarding claim 3, Shigematsu further teaches the HID keycodes include unique data identifying a user and/or the apparatus (see para 0031, When not only a password but also a user ID or the like is transmitted as user information, the convenience can be increased because no keyboard input is necessary in user authentication).
Regarding claim 4, Shigematsu further teaches the HID keycodes include unique data authenticating a user and/or the apparatus (see para 0031, When not only a password but also a user ID or the like is transmitted as user information, the convenience can be increased because no keyboard input is necessary in user authentication).
Regarding claim 5, Hauck further teaches the apparatus is a HID device (see col 5 ln 59-67, Considering now the software in the device 1 in more detail and while referencing Appendices A and B, Appendix A contains a C language listing containing enumeration data which identifies the device 1 as a USB Human Interface Device (HID). Once the host computer 8 identifies the device 1 as belonging to the HID class, the computer 8 requests a report descriptor from the device 1, which describes the device as a keyboard, and specifies the format of the data supplied by the device).
Regarding claim 6, Shigematsu further teaches including in addition means of communicating with the terminal wirelessly (see para 0028, he communication circuit 33 in the use device 30 includes a general-purpose connector for connecting the keyboard and the like, such as a USB, serial, radio, or infrared connector, and a communication circuit).
Regarding claim 7, Hauck further teaches including a USB microcontroller (see col 2 ln 56-60, The device includes a microprocessor 15 (FIG. 3), USB interface hardware such as a USB controller 16 (FIG. 3)).
Regarding claim 8, Hauck further teaches the portable computer-peripheral apparatus is a USB key (see col 3 lines 23-28, The USB connector 18 plugs into an input port such as USB input ports 5 and 6 of a conventional personal computer to allow the device 1 to draw power from the personal computer and also to communicate with the personal computer over USB hardware as is well known in the art of computer communications).
Regarding claim 9, Shigematsu further teaches an additional driver is not required for the computer terminal (see para 0026, On the other hand, the use device 30 is a device such as a PC or cell phone and comprises a communication circuit 33 for receiving the communication data H representing an authentication result from the authentication token 10, a processing unit 31 for providing a service to the user on the basis of the authentication result received by the communication circuit 33, and a storage circuit 32 for storing service software).
Regarding claim 10, Shigematsu further teaches the automated series of HID keycodes do not include a full command for automated login but instead only a part of a login (see para 0031, when not only a password but also a user ID or the like is transmitted as user information, the convenience can be increased because no keyboard input is necessary in user authentication. In addition, since the authentication token 10 automatically transmits the user ID or password, the user need not memorize these pieces of information, so the convenience can further be increased).
Regarding claim 11, Shigematsu further teaches the automated series of HID keycodes automates direct access to content, and/or initiation of a task or other process (see para 0026, On the other hand, the use device 30 is a device such as a PC or cell phone and comprises a communication circuit 33 for receiving the communication data H representing an authentication result from the authentication token 10, a processing unit 31 for providing a service to the user on the basis of the authentication result received by the communication circuit 33, and a storage circuit 32 for storing service software).
Regarding claim 12, Hauck further teaches the apparatus is configured to use inbuilt components of commonly used operating systems, such as such as MacOS or Windows (see col 3 lines 36-39, The personal computer 2 runs a standard operating system such as Microsoft Windows, available from Microsoft Corp., Redmond, Wash, also see col 5 lines 51-55, In operation, in the present example, the Windows & “d” key activation sequence may have a toggling effect in the Windows operating system. The first occurrence may remove the active windows, the second occurrence may restore them, the third occurrence may remove them again, and so forth).
Regarding claims 15-22, please refer to the rejection of claims 1, 2-4 and 14-15 since the claimed subject matter is substantially similar.
Claims 13-14 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the combination of Shigematsu, Hauck and Daniele as applied to claims above, and further in view of Yeap et al US 20060123463.
Regarding claim 13, the combination of Shigematsu, Hauck and Daniele teaches all the features with respect to claim 1 as outlined above.
The combination of Shigematsu, Hauck and Daniele further teaches the apparatus includes both the USB connector and a wireless connection (see para 0028 of Shigematsu, the communication circuit 33 in the use device 30 includes a general-purpose connector for connecting the keyboard and the like, such as a USB, serial, radio, or infrared connector, and a communication circuit); wherein in use the apparatus is first connected physically to the computer terminal by the USB connector, initiating transmission of a sequence of HID keycodes that performs a 'pairing' operation between the apparatus and the computer terminal thus providing clearance for subsequent operation (see para 0067, of Shigematsu, on the other hand, the use device 30 is a device such as a PC or cell phone and comprises a communication circuit 33 for receiving the communication data H representing user information from the authentication token 10, a processing unit 31 for providing a service to the user on the basis of the user information received by the communication circuit 33, and a storage circuit 32 for storing service software).
But, the combination of Shigematsu, Hauck and Daniele fails to teach the subsequent operation including automatic wireless communication between the apparatus and the computer terminal.
However, Yeap teaches the subsequent operation including automatic wireless communication between the apparatus and the computer terminal (see para 0061, In a present embodiment, transmitter 54 is based on infrared technology, but in other embodiments other types of technologies can be used to implement transmitter 54. Other exemplary technologies include wireless technologies such as Blue tooth, 802.11, Code Division Multiple Access (“CDMA”) or wired technologies such as Universal Serial Bus (“USB”). Thus, upon receipt of an activation signal from switch 50, microprocessor 42 is operable to instruct transmitter 54 to transmit authentication information 48, also see para 0065, Laptop 38 also includes a second transceiver 86 that is complementary to transmitter 66, and thus operable when laptop 38 is ‘on’ to periodically query transmitter 66 and receive and decipher transmissions from transmitter 66 in accordance with techniques known in RFID technology).
Therefore, it would have been obvious to modify the apparatus of Shigematsu and further incorporate automatic wireless communication after the transmission of a sequence of HID keycodes for the pairing operation.
The motivation for doing so is to increase the feasibility of the system.
Regarding claim 14, Shigematsu further teaches the automated series of HID keycodes are transmitted wirelessly (see para 0070, The communication circuit 33 in the use device 30 includes a general-purpose connector for connecting the keyboard and the like, such as a USB, serial, radio, or infrared connector, and a communication circuit. The touch signal J from the authentication token 10 connected to the communication circuit 33 is interpreted as if the signal were a touch signal transmitted from a keyboard that should originally be connected, and transmitted to the processing unit 31).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wright et al US Patent No. 6,754,725 discloses a multifunctional USB peripheral capable of presenting itself as different devices including a human interface device (HID) using a custom driver
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG H DANG whose telephone number is (571)272-0470. The examiner can normally be reached Monday-Friday 9:30AM - 6:00PM.
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/PHONG H DANG/Primary Examiner, Art Unit 2184
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