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/Amendments
Regarding rejection of the claims under 35 USC 101, the amendments overcome the prior rejection by integrating the abstract idea into a practical application for reprovisioning credentials to a new device using external storage means. The rejection is hereby withdrawn.
Regarding rejection of the claims under 35 USC 112(a) and 112(b), the amendments overcome the prior rejections. However, the amendments introduce new issues under 35 USC 112(b). Please see the new rejections below.
Regarding rejection of the claims under 35 USC 102 over Holtmanns, Applicant submits that the prior art does not disclose: “storing the at least a portion of the provisioned credential that includes at least the unique credential value in an external storage device.” The Examiner respectfully disagrees. Fig. 2 and paragraphs 0024 and 0071 of Holtmanns disclose the old device sending the credentials for reprovisioning to the server 205 which then stores said credentials until a provisioning request is received from the new device. Therefore, Holtmanns discloses: “storing the at least a portion of the provisioned credential that includes at least the unique credential value in an external storage device.” The rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8, and 15 recite, “cause the at least a portion of the provisioned credential to be provided from the external storage device to a second computing device.” It is unclear who is “causing” the provisioned credential to be provided from the external storage device to the second computing device. The preambles of claims 8 and 15 appear to indicate that the first computing device is the entity performing the “causing” step, however, the scope of the claim is broad enough to allow any device to feasibly perform the “causing” step (e.g. the external storage device itself or the second computing device). Therefore, the scope of the claims is unclear.
Claims 2-7, 9-14, and 16-20 are also rejected due to their dependence on at least claim 1, 8, or 15.
Claims 8 and 15 further recite, “wherein generating the reprovisioned credential comprises the second secure element executing a personalization script and encrypting the reprovisioned credential to provision the reprovisioned credential such that the the second computing device is enabled to perform a transaction using the reprovisioned credential.” However, claims 8 and 15 are both clearly directed to a first computing device and its associated operations. Therefore, as the second computing device is not a part of the first computing device, it is unclear whether the second computing device and its associated operations are included within the scope of the claims.
Claims 9-14 and 16-20 are also rejected due to their dependence on at least claim 8 or 15.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 8-10, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Holtmanns et al. (2012/0239936 "Holtmanns").
Regarding claims 1, 8, and 15, Holtmanns discloses: A method, non-transitory computer readable storage medium, and a first computing device, for provisioning credentials on computing devices, comprising:
receiving, at a first computing device, a request to provide at least a portion of a provisioned credential on the first computing device, wherein the provisioned credential is based at least in part on a first value that is unique to: a first secure element of the first computing device, and a unique credential value (Fig. 1b, Fig. 2, 0036, 0046-0047, 0050, 0066);
storing the at least a portion of the provisioned credential that includes at least the unique credential value in an external storage device (Fig. 2, 0024, 0071);
cause the at least a portion of the provisioned credential to be provided from the external storage device to a second computing device to cause the second computing device to generate a reprovisioned credential based on: the at least a portion of the provisioned credential, and a second value that is unique to a second secure element of the second computing device (Fig. 1b, Fig. 2, 0024, 0046-0047, 0060-0061, 0071, 0078-0083).
Holtmanns does not disclose: and wherein generating the reprovisioned credential comprises the second secure element executing a personalization script and encrypting the reprovisioned credential to provision the reprovisioned credential such that the the second computing device is enabled to perform a transaction using the reprovisioned credential.
However, the above limitations merely recite the intended result(s) of causing the at least a portion of the provisioned credential to be provided from the external device to the second computing device. As such, the above limitations will not differentiate the claims from the prior art. Applicant(s) are reminded that intended result language does not have patentable weight. See Texas Instruments Inc. v. International Trade Commission, 26 USPQ2d 1010 (Fed. Cir. 1993); Amazon.com Inc. v. Barnesandnoble.com Inc., 57 USPQ2d 1747 (CAFC 2001). ("A (whereby/wherein) clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim"); Griffin v. Bertina, 62 USPQ2d 1431 (Fed. Cir. 2002).
Regarding claims 2, 9, and 16, Holtmanns discloses all limitations of claims 1, 8, and 15. Holtmanns further discloses: wherein the external storage device is a Card on File (CoF) storage device (Fig. 2, 0024, 0071-0083).
Regarding claims 3, 10, and 17, Holtmanns discloses all limitations of claims 1, 8, and 15. Holtmanns further discloses: wherein the reprovisioned credential is further generated based on an identifier associated with the unique credential value (Fig. 1b, Fig. 2, 0060-0061, 0081-0082).
Claims 4, 6-7, 11, 13-14, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holtmanns in view of Vasu et al. (US 2017/0270517 "Vasu").
Regarding claims 4, 11, and 18, Holtmanns discloses all limitations of claims 3, 10, and 17.
Holtmanns does not disclose: wherein the identifier is a card verification value (CVV) that is received as an input at the second computing device prior to generating the reprovisioned credential.
However, in the same field of endeavor, Vasu discloses: wherein the identifier is a card verification value (CVV) that is received as an input at the second computing device prior to generating the reprovisioned credential (Fig. 3, 0092-0094).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 4, 11, and 18 disclosed by Holtmanns by including a CVV received as an input at the provisioning device prior to provisioning/reprovisioning as disclosed by Vasu. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claims 6, 13, and 20, Holtmanns discloses all limitations of claims 1, 8, and 15.
Holtmanns does not disclose: wherein the unique credential value comprises a credit card number.
However, in the same field of endeavor, Vasu discloses: wherein the unique credential value comprises a credit card number (0035-0040).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 6, 13, and 20 disclosed by Holtmanns by including a credit card number as disclosed by Vasu. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claims 7 and 14, Holtmanns discloses all limitations of claims 1, 8, and 15.
Holtmanns does not disclose: wherein the provisioned credential and the reprovisioned credential enable the first and second computing devices, respectively, to perform financial transactions.
However, in the same field of endeavor, Vasu discloses: wherein the provisioned credential and the reprovisioned credential enable the first and second computing devices, respectively, to perform financial transactions.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 7 and 14 disclosed by Holtmanns by including provisioned credentials enabling financial transactions as disclosed by Vasu. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Claims 5, 12, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Holtmanns in view of Sheets et al. (US 2015/0195133 "Sheets").
Regarding claims 5, 12, and 19, Holtmanns discloses all limitations of claims 1, 8, and 15.
Holtmanns does not disclose: wherein the request is issued in response to the second computing device being associated with a user account with which the first computing device is also associated.
However in the same field of endeavor, Sheets discloses: wherein the request is issued in response to the second computing device being associated with a user account with which the first computing device is also associated (Fig. 4, 0066-0074).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 5, 12, and 19 disclosed by Holtmanns by including issuing the request for providing credentials in response to account verification as disclosed by Sheets. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mcalear (US 20130110729) generally discloses a method for securely retrieving stored credentials from a removable external storage device (e.g. USB or SD card).
Le Saint et al. (US 20160218875) generally discloses methods for securely provisioning credential data from an external storage provider.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697