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
Applicant's arguments filed 08/04/2025 have been fully considered but they are not persuasive. Applicant amended claims 1, 3, 4, 7-10, 15 and 15 to avoid 112(f) interpretation, however, the claims still recite a non-structural term (acceptor, verifier, notifier, transferer, confirmer) followed by “configured to” language. The amendments do not change the interpretation of the claims as they have not provided a clear structural term for the limitations. Since Applicant’s amendments and arguments do not overcome the 112(f) interpretation nor has Applicant provided citations in the specification where support may be found for the means for language, the 35 USC 112(b) rejections also stand as they have not been overcome by the amendments.
Applicant argues that Lambert fails to disclose, teach, or suggest “a connection destination notifier configured to notify information on a connection destination server to the device”, “a transferer configured to transfer information about the device to the connection destination server”, or “a confirmer configured to ask the user whether to approve the transfer of the information about the device to the connection destination server”. The examiner respectfully disagrees. Since the claim language uses an ‘or’ statement, the reference needs to only disclose one of the newly added limitations as each of the above limitations can be interpreted on an individual basis and not as a collective whole. Lambert discloses “a connection destination notifier configured to notify information on a connection destination server to the device” in paragraph 40. Lambert also discloses “a transferer configured to transfer information about the device to the connection destination server” in paragraph 40. Lambert additionally discloses “a confirmer configured to ask the user whether to approve the transfer of the information about the device to the connection destination server” in paragraph 37. Without more defining characteristics or features, the Lambert reference discloses the newly added limitations.
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: a first token issuer configured to, a first token acceptor configured to, an owner verifier configured to, a connection destination notifier configured to, a transferer configured to, a confirmer configured to in claim 1; a device registration acceptor configured to in claim 3; a connection destination notifier configured to in claim 4; a user key pair generator configured to, an ownership voucher header issuer configured to, an ownership voucher transferer configured to in claim 7; a second token issuer configured to in claim 8; a user account creation request acceptor configured to, a device registration acceptor configured to, a second token acceptor configured to, an information discloser configured to, a second token verifier configured to in claim 9; an owner manager configured to in claim 10; a user key pair generator configured to, an ownership voucher issuer configured to, an ownership voucher transferer configured to in claim 14; a second token issuer configured to, a device registration acceptor configured to, an information discloser configured to, a user account creation request acceptor configured to, a second token acceptor configured to, a second token verifier configured to in claim 15; a first token issuer configured to, a first token acceptor configured to, an owner verifier configured to, a second token issuer configured to, a device registration acceptor configured to, an information discloser configured to, an owner manager configured to, a user key pair generator configured to, an ownership voucher header issuer configured to, an ownership voucher issuer configured to, an ownership voucher transferer configured to, a user account creation request acceptor configured to, a second token acceptor configured to, and a second token verifier configured to in claim 20.
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.
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 § 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 1-15, 17-20 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.
Claim limitations “a first token issuer configured to”, “a first token acceptor configured to”, “an owner verifier configured to” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed functions. The use of the term “owner verifier, “first token issuer”, and “first token acceptor” does not describe a particular structure for performing the claimed functions. As would be recognized by those of ordinary skill in the art, the function of “issue”, “accept”, and “perform” can be performed in any number of ways in hardware, software or a combination of the two. Furthermore, applicant discloses in Fig. 2-30 of the Drawing that the “owner verifier, “first token issuer”, and “first token acceptor” as merely boxes which do not provide sufficient details such that one of ordinary skill in the art would understand which structure or structures are used to implement the listed units. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The same rationales apply to claims 3, 4, 7, 8, 9, 10 ,14, 15. Claims 2-15 fail to cure the deficiencies of the independent claim and therefore are treated as indefinite.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-14, 16, 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lambert et al. (US 2017/0104589) hereafter Lambert.
1. Lambert discloses an information processing apparatus, comprising:
a first token issuer configured to issue a first token character string in response to a token issuance demand from a user (para 38, owner uses the certificate and a registration code provided by the vehicle manufacturer to register with the vehicle 12 as the valid owner [certificate and registration code are information on user and first token character string]);
a first storage configured to store information on the user and the first token character string (para 38, electronic device 10 stores the key pair and the certificate);
a second storage configured to store ownership registration information of a device owned by the user (para 40, vehicle 12 receives the verifiable representation of the registration code at step 116, and verifies that the registration code sent is valid at step 116. If so, the vehicle 12 stores the owner's certificate for future validation);
a first token acceptor configured to accept the first token character string provided from the device (para 39, device 10 receives the identity certificate at step 112, and then sends a cryptographically verifiable representation of the registration code and the owner's identity certificate to the vehicle);
an owner verifier configured to perform owner verification including verifying whether information on the device sending the first token character string is stored in the second storage and whether the first token character string received by the first token character string acceptor matches with the first token character string in the first storage, and determine the user corresponding to the first token character string for which the owner verification succeeds to be an owner of the device (para 40, vehicle 12 receives the verifiable representation of the registration code at step 116, and verifies that the registration code sent is valid at step 116. If so, the vehicle 12 stores the owner's certificate for future validation, removing any previously stored certificates. The vehicle 12 then issues a signed confirmation of ownership message containing the new owner's certificate, and the vehicle's certificate, signed by the vehicle's private key to the owner's device); and
a third storage configured to store verified data including information on the device for which the owner is determined (para 40, vehicle 12 stores the owner's certificate for future validation, removing any previously stored certificates),
wherein the information processing apparatus further comprises:
a connection destination notifier configured to notify information on a connection destination server to the device (para 40),
a transferer configured to transfer information about the device to the connection destination server (para 40), or
a confirmer configured to ask the user whether to approve the transfer of the information about the device to the connection destination server (para 37).
2. Lambert discloses the information processing apparatus according to claim 1, wherein: the first token character string has an expiration date; and the owner verification includes verification based on the expiration date of the first token character string (para 38, it is implicit that digital certificates have an expiration date to ensure that they have not been tampered with, checking whether the certificate is valid is also implicit).
3. Lambert discloses the information processing apparatus according to claim 1, further comprising: a device registration acceptor configured to accept a device certificate including a first decryption key of the device from the user (para 40, a signed confirmation of ownership message containing the new owner's certificate, and the vehicle's certificate, signed by the vehicle's private key to the owner's device 10 at step 118. The owner's device 10 receives this confirmation at step 120, and may then forward this message to the key sharing server 18 at step 122, to track the car-owner relationship. The confirmation is received by the key sharing server 18 at step 124 and may be processed to determine new owner information); and a fourth storage configured to store data including the device certificate received by the device registration acceptor (para 40, key sharing server stores information), wherein the first token acceptor receives the first token character string sent by the device on a basis of verification of whether the device has a first encryption key corresponding to the first decryption key included in the device certificate stored in the fourth storage (para 38. See above).
4. Lambert discloses the information processing apparatus according to claim 1, further comprising a connection destination notifier configured to notify information on a connection destination server to the device, wherein the second storage stores the information on the connection destination server in association with the information on the device for which the owner is determined (para 40, confirmation is received by the key sharing server 18 at step 124 and may be processed to determine new owner information).
5. Lambert discloses the information processing apparatus according to claim 1, further comprising an extinguishment processor configured to delete information relating to the verified data in the third storage by a demand from the user for which owner verification has succeeded (para 58, owner registration request would replace the information thereby deleting the information).
6. Lambert discloses the information processing apparatus according to claim 1, further comprising an authority transfer processor configured to update the verified data in the third storage to information relating to a new user by performing processing of changing the owner of the device to the new user on a basis of a demand from the user for which owner verification has succeeded and a demand from the new user (para 58, the vehicle 12 stores the hash of the registration code for verifying future owner registration requests at step 300).
7. Lambert discloses the information processing apparatus according to claim 1, further comprising: a user key pair generator configured to generate a second decryption key and a second encryption key that form a pair for each user (para 61, the new owner's cryptographic public key); an ownership voucher issuer configured to accept a device authentication code from the device and generate a first ownership voucher on a basis of the ownership voucher header and the device authentication code (para 39, see above); and an ownership voucher transferer configured to generate a second ownership voucher including the first ownership voucher and data encrypted by the second encryption key to a server that is a connection destination of the device for which the owner is determined, wherein the ownership voucher transferer is the transferer (para 59-62; see fig. 9).
8. Lambert discloses the information processing apparatus according to claim 1, further comprising a second token issuer configured to generate a second token indicating the user that is an owner of the device by receiving a demand from the device (fig. 5 and corresponding text).
9. Lambert discloses the information processing apparatus according to claim 8, further comprising: a user account creation request acceptor configured to create a user account including information on the user in accordance with a demand from the user (para 46-48); a device registration acceptor configured to accept a device certificate including a first decryption key of the device from the user (para 46-48); a second token acceptor configured to accept a demand for verifying the second token and to accept a first device certificate held by the device from the device (para 46-48); an information discloser configured to disclose information including the user relating to the second token and to disclose the device certificate (para 46-48); and a second token verifier configured to verify the second token on a basis of the information including the user and the device certificate disclosed by the information discloser, the first device certificate, and information on the user of the user account (para 46-48, see fig. 5 and fig. 6 and corresponding text).
10. Lambert discloses an information processing system, comprising: the information processing apparatus according to claim 2; and the device, wherein the device includes: a fifth storage configured to store data including the first token character string; and an owner manager configured to transmit the first token character string to the information processing apparatus (para 38-40, see above).
11. Lambert discloses the information processing system according to claim 10, wherein the owner manager causes the fifth storage to store data including the first token character string only when the expiration date of the first token character string stored in the fifth storage is expired or when the first token character string is not stored in the fifth storage (para 38-40, confirmation is received by the key sharing server 18 at step 124 and may be processed to determine new owner information; see above).
12. Lambert discloses the information processing system according to claim 10, wherein: the device includes an initial registration processor configured to perform initial registration processing on a server that is a connection destination; and the information processing apparatus includes the connection destination notifier (para 38-40).
13. Lambert discloses the information processing system according to claim 12, wherein the initial registration processing includes processing of demanding that the server that is the connection destination generate a certificate for server created by an encryption key that the server has (para 38-40).
14. Lambert discloses the information processing system according to claim 10, comprising a voucher issuance apparatus including: a user key pair generator configured to generate a second decryption key and a second encryption key that form a pair for each user; an ownership voucher header issuer configured to generate an ownership voucher header including the second decryption key to the device; an ownership voucher issuer configured to accept a device authentication code from the device and generate a first ownership voucher on a basis of the ownership voucher header and the device authentication code; and an ownership voucher transferer configured to generate a second ownership voucher including the first ownership voucher and data encrypted by the second encryption key to a server that is a connection destination of the device for which the owner is determined (para 59-62; see fig. 9; see above).
Claim 16 is similar in scope to claim 1 and is rejected under similar rationale.
18. Lambert discloses the information processing apparatus according to claim 7, further comprising the confirmer, wherein the ownership voucher transferer generates the second ownership voucher if the user approves the transfer of the information (para 37).
Murtza et al. (US 7,089,325) hereafter Murtza
17. Lambert disclose the information processing apparatus according to claim 4, but does not explicitly disclose wherein the information on the connection destination server includes a Uniform Resource Locator (URL) of the connection destination server. However, in an analogous art, Murtza discloses a method and apparatus for URL forwarding including wherein the information on the connection destination server includes a Uniform Resource Locator (URL) of the connection destination server (col 3, line 61-col 4, line 27). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Lambert with the implementation of Murtza in order to associate an IP address with a domain name and for readily altering the association (col 3, lines 31-60).
19. Lambert discloses the information processing apparatus according to claim 1, wherein the confirmer asks the user whether to approve the transfer of the information (para 37) but does not explicitly disclose when redirected by the connection destination server. However, in an analogous art, Murtza discloses a method and apparatus for URL forwarding including when redirected by the connection destination server (col 5, lines 15-32). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Lambert with the implementation of Murtza in order to associate an IP address with a domain name and for readily altering the association (col 3, lines 31-60).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R TURCHEN whose telephone number is (571)270-1378. The examiner can normally be reached Monday-Friday: 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu Pham can be reached at 571-270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R TURCHEN/Primary Examiner, Art Unit 2439