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 1-13 have been examined.
Priority
Acknowledgment is made of applicant's claim for priority based on PCT/JP2021/010209 filed on Mar. 12, 2021.
Information Disclosure Statement
The examiner reviewed IDS document(s) received on 8/8/23, 4/30/24, 6/13/24 and 7/8/24, carefully considering the art cited within the document(s).
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 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.
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 1-4, 6-7, 10 and 12-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
Specifically, given the fact that “authentication function” is not cited in any of the claims other than 2 and 6-7, the terms in these claims are lacking the antecedent basis and, as a result, it is not clear whether claim 1 is missing the term, e.g., “… when receiving a waiting notification from a first device providing an authentication function...” or whether any of these terms relate to the term cited in the previous claim(s).
Claim 1-4 and 12-13, recite “transmitting the response to the waiting notification” but they are dependent on claim 1, which clearly precludes transmitting such response: “waiting is performed without transmitting a response to the waiting notification to the first device”. Moreover, some of these limitations are repeated, e.g. “transmitting the response to the waiting notification” in claim 1 and claims 2-3, raising the question whether if the response is not sent in case where the attribute does not match, which would contradict claim 1, on which claims 2-3 depend. It appears that the claims are unnecessarily complicated, which makes it difficult to ascertain the metes and bounds of the claims. Claim 10 is rejected based on its dependency.
For the purpose of the initial prosecution, the claims are treated as best understood.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-8 and 11-13 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by ITU ("Implementation of Secure Authentication Technologies for Digital Financial Services", ITU-T DRAFT; STUDY PERIOD 2017-2020; STUDY GROUP 17, INTERNATIONAL TELECOMMUNICATION UNION, GENEVA; CH; found in applicant’s IDS).
As per claim 1, ITU teaches a relay control method in which a computer executes processing comprising a relay control method for a computer to execute a process comprising: when receiving a waiting notification from a first device (Fig. 4, p. 14, showing the authenticator registration to the FIDO Server, step 5); transitioning to a state where waiting is performed without transmitting a response to the waiting notification to the first device (P. 15, steps 5 and 6, I. 10: "Validate response and attestation. The device model number (AAGUID) can be used to look up metadata about the device" ... "The service stores user's public key for future authentication requests.". There is no response transmitted); receiving an authentication request from a second device (Fig. 5, p. 15, showing the browser authentication initiation to the FIDO Server, step 1); and in a case of a state where the authentication request is received and waiting is performed without transmitting the response to the waiting notification (The FIDO Authentication is the step performed after the authenticator registration), transmitting the response to the received waiting notification, that includes the received authentication request, to the first device (p. 15, Step 2, I. 18: FIDO Server sends authentication challenge and preferences for the authenticators or credentials to be used).
Furthermore, ITU teaches the limitation of claims 2-4, 6-8 and 11 in P. 15, fig. 5 and p. 16, step 4, I. 1: (The authenticator uses the service's origin to look up the private key for authentication and uses the private key to sign the challenge from the server), P. 1, I. 17 (The authenticator is selected based on operator policy, device capability and the Level of Assurance required), the same registration constitutes also a state change (P. 15, Steps 5 and 6, I. 10) and P. 13, I. 7 (defining NFC, Bluetooth Low Energy (BLE), and USB communications protocols for registering and authenticating with security keys).
The limitation of claims 12-13 are substantially similar to the discussed above limitations, and (also) a skilled in the art would readily appreciate that computing functionalities are performed by using processors to execute program instructions stored in media.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim(s) 1-4, 6-8 and 11-13 is/are rejected under 35 U.S.C. 103 unpatentable over by ITU ("Implementation of Secure Authentication Technologies for Digital Financial Services", ITU-T DRAFT; STUDY PERIOD 2017-2020; STUDY GROUP 17, INTERNATIONAL TELECOMMUNICATION UNION, GENEVA; CH; found in applicant’s IDS).
Claims 1-4 and 6-13 using one (the broadest reasonable) interpretation of “virtual environment” has been addressed above.
However, even if an alternative (more specific) interpretation of “virtual environment” was required, the examiner notes that such environment does not affect the functionality of the invention: the method would be performed the same with or without device having virtual environment. Thus, as cited in the claim, the term merely amount to descriptive material does not distinguish the claimed invention from the prior art in the terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,404 (Fed.Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Because of this, as well as the fact that systems having “virtual environment” [Official Notice is taken] were old and well known in the art at the time the application was filed, it would have been obvious to one of ordinary skill in the art to use any type of environment because such environment does not alter how the cited method is performed and because the subjective interpretation of the data does not patentably distinguish the claimed invention, while using virtual environment would offer the benefit of customization.
(Similarly, even if ITU did not contemplated VPN communication between devices (as interpreted by the examiner), [Official Notice is taken] that such (expressly labeled) communication would have been an old and well known in the art at the time the application was filed, offering the benefit of privacy and security.)
Claim(s) 1-4, 6-8 and 12-13 is/are rejected under 35 U.S.C. 103 unpatentable over by Yagi (JP2014211678, found in applicant submitted IDS).
Yagi teaches a connection request is received (paragraphs [0124], [0126], [0143]) from an authentication terminal 2b (paragraphs [0137], [0138]) provided with an authentication means 212; upon reception of the connection request, a response to the connection request is awaited (paragraphs [0124], [0126], [0143]); an authentication request is received from a viewing terminal 1b (paragraphs [0129], [0143]); when the authentication request is received and a response to the connection request is awaited, a response to the received connection request including the received authentication request is transmitted to the authentication terminal 2b (paragraphs [0129], [0130], [0143]); and a relay server 5 executes processing. The "authentication terminal 2b provided with an authentication means 212", the "connection request", the "response", "await", the "viewing terminal 1b", and the "authentication request" described in document 1 are respectively equivalent to the "first device capable of providing an authentication function", the "wait notification", the "response", "await", the "second device", and the "authentication request" of the invention as in claim 1.
Yagi does not expressly teach the second device having a virtual environment.
However, the examiner notes that such environment does not affect the functionality of the invention: the method would be performed the same with or without device having virtual environment. Thus, as cited in the claim, the term merely amount to descriptive material does not distinguish the claimed invention from the prior art in the terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,404 (Fed.Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Because of this, as well as the fact that systems having “virtual environment” [Official Notice is taken] were old and well known in the art at the time the application was filed, it would have been obvious to one of ordinary skill in the art to use any type of environment because such environment does not alter how the cited method is performed and because the subjective interpretation of the data does not patentably distinguish the claimed invention, while using virtual environment would offer the benefit of customization.
Furthermore, Yagi teaches the limitation of claim 2-3, 7 and 9-10 in Paragraphs [0125]-[0126], [0129]-[0131], [0132], [0136]-[0138]).
Lastly, as per claim 8, Official Notice is taken that VPN communication between devices would have been an old and well known in the art at the time the application offering the benefit of privacy and security and while the limitation of claims 12-13 are substantially similar to previously addressed claims, a skilled in the art would readily appreciate that computing functionalities are performed by using processors to execute program instructions stored in media.
Claim(s) 5 and 9-10 is/are rejected under 35 U.S.C. 103 unpatentable over by ITU (“Implementation of Secure Authentication Technologies for Digital Financial Services”, ITU-T DRAFT; STUDY PERIOD 2017-2020; STUDY GROUP 17, INTERNATIONAL TELECOMMUNICATION UNION, GENEVA; CH; found in applicant’s IDS) in view of Sampath (Sampath et al., "FIDO UAF FIDO Alliance Proposed Standard 02 February 2017", 2/17, XP055859181, found in applicant’s IDS).
The responses as taught by ITU has been discussed above.
Although ITU does not teach the response being transmitted after a certain number of times elapse, Sampath suggests such solution (p. 57, I. 11: The client application optionally processes additional data returned" ... "interpreting an error code to determine if and how it should retry a failed operation).
Furthermore, while ITU teaches message identifiers in the responses (p. 16, step 4, I. 1: The authenticator uses the service's origin to look up the private key), Sampath suggests listing several identifiers to link the messages (P. 46, I. 24: Each authentication key is also bound to the ASM that created it, by means of an ASMToken (a random unique ID for the ASM) that is also included in the KHAccessToken.)
(Additionally, it is noted that assigning an ID or number to the different requests to distinguish them [Official Notice is taken] would have been obvious old and well known in the art (e.g., TCP/IP) at the time the application was filed offering the benefit of reliable communication)).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include Sampath into ITU’s teaching given the benefit of efficient communication.
Claim(s) 4 is/are rejected rejected under 35 U.S.C. 103 unpatentable over by Yagi (JP2014211678, found in applicant submitted IDS) in view of Kaneshige (JP2017107593 fond in applicant submitted IDS).
Yagi teaches receiving communication from the first device as discussed above. Furthermore, the examiner notes that the claim language permits various broadest reasonable interpretations, e.g., even receiving any communication indicates “a state” of one and/or two devices, e.g. the devices are in operational states. Additionally, the term “certain condition” not only is broad, but also it is essentially an inherent feature of any computer’s activity given the fact that they act based on (preconfigured/triggered) conditions.
As such, Kaneshige teaches a terminal device 10 registers its own display state information in an information distribution device 20, and selects, as a push notification destination, the terminal device 10 for which the display state based on the display state information satisfies a prescribed selection condition (Paragraphs [0053] and [0054]), which, in light of Yagi’s teaching, meet the limitation of claim 4.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include Kaneshige’s teaching into Yagi’s invention given the benefit of reliable and effective communication.
Claim(s) 5-6 is/are rejected rejected under 35 U.S.C. 103 unpatentable over by Yagi (JP2014211678, found in applicant submitted IDS) in view of German (USPUB 20130007299).
Yagi teaching has been discussed above.
While Yagi teaches the relay server transmitting a response to the pending connection request to the authentication terminal 2b if the relay server does not receive an authentication request from the viewing terminal 1b within a prescribed time and the authentication terminal 2b receives the response, the authentication terminal 2b connects to the relay server 5 again (Paragraphs [0125] and [0126]), Yagi fails to teach making a request again if a timeout response is received and making a request again after timeout. However, in the related art German suggests such solution (Paragraph [0062]). It would have been obvious to one of ordinary skill in the art at the time the application was filed to extend Yagi’s invention to include teaching of German given the benefit of usability.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Poltorak whose telephone number is (571) 272-3840. The examiner can normally be reached Monday through Thursday from 9:00 a.m. to 5:00 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached on (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/PIOTR POLTORAK/Primary Examiner, Art Unit 2433