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 112(b), the amendments overcome the prior rejection concerning who performs the “causing” step of claims 1, 8, and 15. However, the amendments fail to address the rejection of claims 8 and 15 reciting limitations directed to a second secure element. Therefore, the rejection is maintained.
Applicant’s arguments with respect to rejection of the claims under 35 USC 103 over Holtmanns in view of Vasu have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 8-11, 13-18, 20, and 22-23 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 8 and 15 include limitations directed to a second secure element (“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 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 secure element is not a part of the first computing device, the scope of claims 8 and 15 is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).
Claims 9-11, 13-14, and 16-18, 20, and 22-23 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") in view of Max Eddy (“How to Sync Passwords with iCloud Keychain in Mavericks,” “Eddy”).
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,...and 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, by the first computing device, 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, by the first computing device and in response to receiving the request, 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: ...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, Eddy discloses: receiving, at a first computing device, a request to provide at least a portion of a provisioned credential on the first computing device (Pg. 10 “If you happen to be at a computer running Mavericks and authorized to use iCloud keychain, you’ll see a little notification appear when you activate the service on your iOS device.”), wherein the request is issued in response to the second computing device being associated with a user account (Pg. 8 “...toggle iCloud Keychain on. You’ll then be prompted for your iCloud password...”) with which the first computing device is also associated (Pg. 6 Second: Mobile-Pg. 10)...;
cause, by the first computing device and in response to receiving the request, the at least a portion of the provisioned credential to be provided from the external storage device to a second computing device (Pg. 9-10 Last: Authorizing)...
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 1, 8, and 15 disclosed by Holtmanns by including issuing the request in response to the second device logging into an associated user account (e.g. “iCloud”) as disclosed by Eddy. 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)).
Holtmanns in view of Eddy 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 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 in view of Eddy 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 in view of Eddy 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).
Regarding claims 21-23, Holtmanns in view of Eddy discloses all limitations of claims 1, 8, and 15. Holtmanns further discloses: wherein receiving the request to provide at least the portion of the provisioned credential comprises receiving, at the first computing device, a user selection (“user trigger”) identifying the provisioned credential for reprovisioning via a credential provisioning application (Figs. 1b-2, 0050, 0066, 0092).
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 Eddy as applied to claims 1, 8, and 15 above, and further in view of Vasu et al. (US 2017/0270517 "Vasu").
Regarding claims 4, 11, and 18, Holtmanns in view of Eddy discloses all limitations of claims 3, 10, and 17.
Holtmanns in view of Eddy 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 in view of Eddy 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 in view of Eddy discloses all limitations of claims 1, 8, and 15.
Holtmanns in view of Eddy 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 in view of Eddy 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 in view of Eddy discloses all limitations of claims 1, 8, and 15.
Holtmanns in view of Eddy 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 in view of Eddy 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)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Stromberg et al. (USP 8666437) generally discloses a process for requesting, by a second computing device, transferal of payment credentials from a first computing device wherein the credentials are stored on an external smart card (see e.g. Fig. 13, Col 33 line 3-28).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571)-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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