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 .
DETAILED ACTION
Claims Status
Claims 1, 2 and 15-19 filed 11/21/2025 have been amended. Claims 1-19 are pending and have been rejected.
Claim Objections
Claim 1 objected to because of the following informalities: missing coma (,) before “verified”. Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 11/1/2025 have been fully considered but they are not persuasive. Applicant’s representative asserts that Vuillaume does not anticipate the imaging device of Claim 1 because Vuillaume does not teach, disclose or suggest at least the claim limitations of "wherein the first supply item is designated as a prover supply item, and the second supply item is designated as a verifier supply item," "sending a challenge response from the prover supply item to the verifier supply item," "determining, by the verifier supply item, a status of the challenge response" and "wherein the first supply item is a consumable supply item and the second supply item is a consumable supply item." However, the Examiner respectfully disagrees as Vuillaume et al. (U.S. Publication 2009/0187766) in paragraphs 0090 and 0096, shows a printer is equipped with the verifier chip, whereas ink cartridges are equipped with the prover chip. The printer can authenticate legit cartridges (consumable supply items). Paragraph 0038, shows the prover and the verifier can engage in an authentication protocol, where the verifier sends a random challenge to the prover, and the prover responds with a digital signature of the challenge. Paragraph fig. 4, 0066 and 0069, shows that after the prover has finished computing the signature of the random challenge, it sends back the signature to the verifier, verifier verifies the signature in order for output to be accepted or rejected. Paragraph 0088, shows the message is generated and signed by the prover, and verified by the verifier.
As it is Applicant's right to claim as broadly as possible their invention, it is also the Examiner's right to interpret the claim language as broadly as possible. It is the Examiner's position that the detailed functionality that allows for Applicant's invention to overcome the prior art used in the rejection, fails to differentiate in detail how these features are unique. It is clear that Applicant must be able to submit claim language to distinguish over the prior arts used in the above rejection sections that discloses distinctive features of Applicant's claimed invention. It is suggested that Applicant compare the original specification and claim language with the cited prior art used in the rejection section above or the remark section below to draw an amended claim set to further the prosecution.
Failure for Applicant to narrow the definition/scope of the claims and supply arguments commensurate in scope with the claims implies the Applicant's intent to broaden claimed invention.
Based on the rationale explained above, the Examiner disagrees with the prior arts being silent to the claimed embodiment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“the imaging device is configured to…” in claims 1, 2, 10, 11, 13, 14.
“the controller is configured to…” in claims 4, 8. “supply item is configured to…” in claims 4, 15-19. Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (Specification of instant application, Paragraph 0059).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-19 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable by Vuillaume et al. (U.S. Publication 2009/0187766), hereinafter ‘Vuillaume’.
As to claim 1, Vuillaume disclose an imaging device comprising a controller, a first supply item and a second supply item, wherein the first supply item is designated as a prover supply item, and the second supply item is designated as a verifier supply item (Vuillaume, see [0090], a printer is equipped with the verifier chip, whereas ink cartridges are equipped with the prover chip), and the imaging device is configured to authenticate the prover supply item by (Vuillaume, see [0096], the printer can authenticate legit cartridges): sending a challenge response from the prover supply item to the verifier supply item (Vuillaume, see [0038], the prover and the verifier can engage in an authentication protocol, where the verifier sends a random challenge to the prover, and the prover responds with a digital signature of the challenge), and determining, by the verifier supply item, a status of the challenge response, the status being verified or unverified, wherein when the verifier supply item determines that the received challenge response is a correct output of an algorithm when challenge data is input to the algorithm, the status is determined as verified (Vuillaume, see fig. 4, [0066] [0069], after the prover has finished computing the signature of the random challenge, it sends back the signature to the verifier, verifier verifies the signature in order for output to be accepted or rejected. See [0088], the message is generated and signed by the prover, and verified by the verifier). wherein the first supply item is a consumable supply item and the second supply item is a consumable supply item (Vuillaume, see [0096], legit cartridges (consumable supply items) can be authenticated).
As to claim 2, Vuillaume discloses everything disclosed in claim 1, wherein the imaging device is further configured to: process, by the prover supply item, check data, said check data being from a controller of the imaging device (Vuillaume, see [0093], the cartridge and the printer are in direct contact and can exchange data through a direct connection, wherein the exchanged data is related to traditional printing functionalities, such as checking ink levels, authentication data, including a challenge and signature), receive, by the controller, the processed check data (Vuillaume, see [0052], the verifier writes a log of the protocol, including the result of the authentication, the prover's public key and the index used by the prover. See [0093], information exchanged between the cartridge and the printer is verified) and determine, by the controller whether the processed check data is verified, wherein when the check data is verified and the status of the challenge response is verified, the prover supply item is determined to be authentic and trusted for the algorithm and when the check data is unverified and/or the challenge response is unverified, the controller designates the prover supply item as non-authentic and prevents the prover supply item from operating in the imaging device (Vuillaume, see [0092-0093], the cartridge and the printer exchanged data related to traditional printing functionalities, such as checking ink levels, authentication data, including a challenge and signature. Signatures are verified in order to determine that cartridges are legit/authentic. See [0096], Legit cartridges can be authenticated and used by printer. Rogue cartridges fail authentication, wherein the printer refuses printing requests).
As to claim 3, Vuillaume discloses everything disclosed in claim 2, wherein the controller of the imaging device receives the status of the challenge response from the verifier supply item (Vuillaume, see [0066] and fig. 4, after the prover has finished computing the signature of the random challenge, it sends back the signature to the verifier in order to verify the signature. See [0090], a printer is equipped with the verifier chip. Therefore, the printer would always be provided with the information that the verifier obtains from the prover).
As to claim 4, Vuillaume discloses everything disclosed in claim 1, wherein the controller is configured to send an indication of an available set of algorithms to the verifier supply item and the verifier supply item is configured to select the algorithm from the available set of algorithms (Vuillaume, see [0038], the prover and the verifier can engage in an authentication protocol, where the verifier sends a random challenge to the prover, and the prover responds with a digital signature of the challenge. Authentication is successful when the signature is correct. The role of the Certificate Authority is to fill the memory units of the prover with initialization data and issue a certificate of the prover's public key. See [0094], the Certificate Authority can send firmware or software updates to the printer).
As to claim 5, Vuillaume discloses everything disclosed in claim 4, wherein all algorithms in the available set of algorithms are algorithms for which the verifier supply item is trusted by the controller (Vuillaume, see [0003-0004] and [0096] authentication is performed for a prover to show proof of his identity to a verifier in order to allow legit/authentic cartridge usage).
As to claim 6, Vuillaume discloses everything disclosed in claim 4, wherein selecting comprises, when the available set of algorithms includes one or more algorithms for which the prover supply item is untrusted by the controller, selecting the algorithm from the one or more algorithms for which the prover supply item is untrusted by the controller (Vuillaume, see [0031], the Certificate Authority maintains a black list of provers which have been compromised, and regularly broadcasts the black list to all verifiers. See [0046], the black list contains all public keys that are known to be compromised, and can be updated by the Certificate Authority which broadcasts new black lists during software updates).
As to claim 7, Vuillaume discloses everything disclosed in claim 6, wherein selecting further comprises: when the available set of algorithms does not include any algorithms for which the prover supply item is untrusted by the controller: adding, to the available set, any algorithms for which (i) the verifier supply item is trusted by the controller and (ii) are supported by the prover supply item and selecting the algorithm from the available set at random (Vuillaume, see [0096], using the locally stored Certificate Authority's public key, the printer can authenticate legit cartridges, using the authentication mechanism).
As to claim 8, Vuillaume discloses everything disclosed in claim 4, wherein the controller is configured to maintain a list of algorithms designated as required, wherein the list initially contains algorithms that are stored by the controller, and the controller is configured to add or remove algorithms to or from the list in response to associated firmware updates and/or updates provided by supply items (Vuillaume, see [0094], the Certificate Authority can send firmware or software updates to the printer via the personal computer, and send an updated black list).
As to claim 9, Vuillaume discloses everything disclosed in claim 8, wherein all algorithms in the available set of algorithms are algorithms which are designated as required by the controller (Vuillaume, see [0123], the memory controller is simply to realize access control and to implement the signature generation procedure).
As to claim 10, Vuillaume discloses everything disclosed in claim 1, wherein the controller of the imaging device is configured to: select the second supply item from a set of supply items, the set including all supply items installed in the imaging device which are trusted by the controller for at least one algorithm (Vuillaume, see [0096] and fig. 4, the Certificate Authority contains stored public key, wherein the printer can authenticate legit/authentic cartridges than can be used due to valid signature).
As to claim 11, Vuillaume discloses everything disclosed in claim 1, wherein the controller of the imaging device is configured to: when at least one supply item installed in the imaging device is untrusted by the controller for at least one algorithm, select the first supply item from a set of supply items, the set including all supply items which installed in the imaging device which are untrusted by the controller for at least one algorithm, excluding the second supply item (Vuillaume, see [0031], the Certificate Authority maintains a black list of provers which have been compromised, and regularly broadcasts the black list to all verifiers. See [0046], the black list contains all public keys that are known to be compromised, and can be updated by the Certificate Authority which broadcasts new black lists during software updates).
As to claim 12, Vuillaume discloses everything disclosed in claim 11, wherein selecting the first supply item from the set of supply items comprises selecting the supply item with the most algorithms for which the supply item is untrusted by the controller (Vuillaume, see [0096], the printer behaves in case of failed authentication is also determined by the security policy of the printer company. One possibility could be that the printer refuses printing requests for a few minutes).
As to claim 13, Vuillaume discloses everything disclosed in claim 1, wherein the verifier supply item of the imaging device is configured to: when all supply items installed in the imaging device are trusted by the controller for all algorithms, select the first supply item at random from a set of supply items including all supply items installed in the imaging device except the second supply item (Vuillaume, see [0096] and fig. 4, the printer contains the Certificate Authority's public key of all the legit/authentic cartridges that can be used due to valid signature).
As to claim 14, Vuillaume discloses everything disclosed in claim 1, further configured to: redesignate the first supply item as the verifier supply item (Vuillaume, see [0090], verifier chip), redesignate the second supply item as the prover supply item (Vuillaume, see [0090], prover chip), and receive, by the verifier supply item a further challenge response from the prover supply item (Vuillaume, see [0038], the prover and the verifier can engage in an authentication protocol, where the verifier sends a random challenge to the prover, and the prover responds with a digital signature of the challenge), and determine, by the verifier supply item, a status of the further challenge response, the status being verified or unverified, wherein when the verifier supply item determines that the received further challenge response is a correct output of a further algorithm when further challenge data is input to the further algorithm, the status of the further challenge response is determined as verified (Vuillaume, see [0092-0093], the cartridge and the printer exchanged data related to traditional printing functionalities, such as checking ink levels, authentication data, including a challenge and signature. Signatures are verified in order to determine that cartridges are legit/authentic. See [0096], Legit cartridges can be authenticated and used by printer).
As to claim 15, Vuillaume discloses a consumable supply item configured to be operable as a prover supply item when installed in an imaging device, wherein the prover supply item is configured to receive an indication of an algorithm to be performed and receive challenge data, perform the algorithm using the challenge data as input to determine a challenge response, and send the challenge response to a verifier supply item, the verifier supply item being another consumable supply item installed in the imaging device (Vuillaume, see [0038], the prover and the verifier can engage in an authentication protocol, where the verifier sends a random challenge to the prover, and the prover responds with a digital signature of the challenge. See fig. 4, [0066] [0069], after the prover has finished computing the signature of the random challenge, it sends back the signature to the verifier, verifier verifies the signature in order for output to be accepted or rejected. See [0088], the message is generated and signed by the prover, and verified by the verifier. See [0090], a printer is equipped with the verifier chip, whereas ink cartridges are equipped with the prover chip)).
As to claim 16, Vuillaume discloses everything disclosed in claim 15, wherein the consumable supply item is configured to receive the indication of the algorithm from the verifier supply item (Vuillaume, see [0038], the prover and the verifier can engage in an authentication protocol, where the verifier sends a random challenge to the prover, and the prover responds with a digital signature of the challenge. Authentication is successful when the signature is correct. The role of the Certificate Authority is to fill the memory units of the prover with initialization data and issue a certificate of the prover's public key. See [0094], the Certificate Authority can send firmware or software updates to the printer).
As to claim 17, Vuillaume discloses everything disclosed in claim 15, wherein the consumable supply item is configured to receive check data, process the check data and send the processed check data to a controller of the imaging device (Vuillaume, see [0093], the cartridge and the printer are in direct contact and can exchange data through a direct connection, wherein the exchanged data is related to traditional printing functionalities, such as checking ink levels, authentication data, including a challenge and signature).
As to claim 18, Vuillaume discloses everything disclosed in claim 15, the consumable supply item further configured to be operable as a verifier supply item, wherein the consumable supply item is configured to operate as a verifier supply item when the consumable supply item receives verifier trigger information and the consumable supply item is configured to operate as a prover supply item when the consumable supply item receives prover trigger information (Vuillaume, see [0032], any prover can be authenticated by any verifier, using a public-key infrastructure).
As to claim 19, Vuillaume discloses everything disclosed in claim 15, the consumable supply item configured to store a supported list, the supported list indicating all algorithms which the supply item is able to perform (Vuillaume, see [0096] and fig. 4, the printer contains the Certificate Authority's public key of all the legit/authentic cartridges that can be used).
Conclusion
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 TANIA M PENA-SANTANA whose telephone number is (571)270-0627. The examiner can normally be reached Monday - Friday 8am to 4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas R Taylor can be reached at 5712723889. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TANIA M PENA-SANTANA/Examiner, Art Unit 2443
/NICHOLAS R TAYLOR/Supervisory Patent Examiner, Art Unit 2443
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