Detailed Action
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 .
Acknowledgments
This submission filed on 04 December 2025 is acknowledged.
Status of Claims
Claims 1-6 are pending.
In the Amendment filed on 12/04/25, claim 4 was amended, and no claims were cancelled or added.
Claims 1-6 are rejected.
Response to Arguments
Regarding the claim interpretation
The claim interpretation (means plus function) is withdrawn in view of the claim amendments deleting the subject matter in question.
Regarding the rejections under 35 U.S.C. 112
The rejections are withdrawn in view of the claim amendments deleting the subject matter in question (means-plus-function limitations of claim 4).
Regarding the rejections under 35 U.S.C. 103
Applicant’s arguments have been fully considered but are not persuasive.
The Examiner responds to Applicant's arguments below.
The Examiner's response is organized according to the headings used in Applicant's remarks, which are reproduced below.
A. Teaching Away (Response, p. 6)
The Examiner disagrees with Applicant's argument. Sato does not teach away from the claimed subject matter that it is cited as teaching. That is, Sato does not teach away from deactivating a cryptographic method (algorithm) or deleting/revoking a certificate associated with the cryptographic method. Rather, Sato acknowledges that deactivating a cryptographic method (algorithm) and deleting/revoking a certificate associated with the cryptographic method is warranted/required when the method is compromised, and Sato identifies a problem in the particular manner in which certain prior art procedures accomplish such deactivating of a cryptographic method and deleting/revoking of a certificate associated with the cryptographic method. Specifically, Sato indicates that certain prior art procedures are too slow, and do not accomplish the deactivation and deleting/revoking fast enough, so that the compromised method remains in place too long -- is not deactivated soon enough -- and consequently the validation processing is potentially compromised -- is no longer reliable. Thus, far from teaching away from deactivating a cryptographic method (algorithm) and deleting/ revoking a certificate associated with the cryptographic method, Sato fully teaches towards deactivating a cryptographic method (algorithm) and deleting/revoking a certificate associated with the cryptographic method, and attests to the imperative of doing so "promptly" (Sato, 0016, cited by Applicant in Applicant's argument, Response pp. 5-6).
B. Sato does not deactivate the cryptographic method (Response, pp. 6-8)
The Examiner disagrees with Applicant's argument.
Initially, Applicant asserts that Sato does not teach or render obvious "at least one step of deactivating at least one cryptographic method of the plurality of distinct cryptographic methods included in the firmware, the deactivation step comprising a step of deleting or revoking a certificate associated with the at least one cryptographic method, present in the payment terminal." Response, pp. 6, 8. The Examiner notes that Sato was not cited as teaching the entirety of this claim language. Rather Sato was cited as teaching "comprising a step of deleting or revoking a certificate associated with the at least one cryptographic method," and the other applied references, Ali and Fieres, were cited as teaching the remainder of this claim language. Therefore, in response to this argument against one of the references individually, namely Sato, the Examiner notes one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Second, Applicant argues that Sato does not teach the claim language in question, by invoking various portions of Sato that were not cited in the rejection, including Fig. 10, 0075, 0005, 0047 and 0022. Response, pp. 7, 8. Indeed, the bulk of Applicant's argument here (part B.) is based on these portions of Sato that appear nowhere in the Office Action. Response, pp. 7, 8. In response, the Examiner notes that these portions of Sato do not contradict the teachings of Sato 0015, which is the sole portion of Sato that was cited as teaching the claim language in question (Sato 0008 was cited in the motivation statement of the rejection, pertaining to an advantage obtained from combining Sato's teachings of 0015 with Ali and Fieres). Thus, the presence of subject matter in the prior art reference, namely, Sato, that is other than the subject matter cited in the rejection, and that does not contradict the subject matter cited in the rejection, does not demonstrate that the subject matter cited in the rejection does not teach what it is cited as teaching.
Third, in the portion of Applicant's argument that invokes various portions of Sato that were not cited in the rejection, Applicant writes:
Claims 1 and 4 recite a feature to deactivate a cryptographic method by revoking the corresponding certificate. In other words, the certificates are used not as a trust proof but as triggers for activation/deactivation. See for instance paragraph [0022] of the specification: "the electronic certificate associated with a method can therefore be qualified, to a certain extent, as an activation certificate for this method". Claims 1 and 4 recite this feature as well. (Response, p. 8; underlining and italics in original; bold added)
Here, Applicant appears to argue distinction over the prior art based on subject matter that is not claimed. For example, Applicant's language "[i]n other words" is understood as asserting that 'the certificates being triggers for activation/deactivation' is equivalent to the "feature to deactivate a cryptographic method by revoking the corresponding certificate." However, the claims do not include 'the certificates being triggers for activation/deactivation' or the like. For another example, Applicant cites the specification 0022 and then asserts that "[c]laims 1 and 4 recite this feature as well." The antecedent of "this feature" can only be the cited content of specification 0022 or 'the certificates being triggers for activation/deactivation'. Thus, Applicant is asserting that claims 1 and 4 recite this content, but in point of fact they do not. Therefore, in response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the content of specification 0022 cited by Applicant or 'the certificates being triggers for activation/deactivation') are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Fourth, Applicant writes:
The Examiner states on page 14 of the OA that "[deactivation is carried out by revoking certificate associated with the current, unsafe cryptographic algorithm]", but this is never actually stated anywhere in Sato. (Response, p. 7; italics in original)
The Examiner concedes that Sato does not use the word "deactivate." However, this point is not dispositive as to whether Sato teaches the claim language in question. The question of whether the prior art teaches a claim limitation is not an ipsissimis verbis test, i.e., identity of terminology is not required.
As per the rejection, Sato's teaching of migrating a (e.g., compromised) cryptographic algorithm (method) to a safer one and revoking the certificate associated with the compromised cryptographic algorithm teaches, amounts to, and constitutes deactivating the compromised cryptographic algorithm. This point is apparent on its face, e.g., a revoked cryptographic algorithm cannot be used, hence is deactivated. This point is also borne out by reference to the meaning of the terms at issue as indicated by Applicant and by the prior art:
For example, instant claim 4 recites:
- a processor programmed to deactivate at least one cryptographic method of the plurality of distinct cryptographic methods included in the firmware, by deleting or revoking a certificate associated with the at least one cryptographic method, present in the payment terminal.
As per claim 4, deactivation of a cryptographic method is effected / accomplished by deleting or revoking a certificate associated with the at least one cryptographic method. Therefore, a mere teaching of revoking teaches the claimed deactivation as well.
For another example, the context of Sato 0015 is Sato 00141. Specifically, 0015 elaborates or fleshes out a problem that is introduced in the more general discussion of 0014. As per 0014:
However, if cryptographic algorithm compromise occurs in the cryptography migrating phase and a notice to stop using a corresponding cryptographic algorithm is issued from the government organization or the like, then in the certification path validation, the following problem will occur.
As per 0014, the compromise of a cryptographic algorithm dictates that it be stopped from being used, i.e., deactivated; this deactivation is what the migration from the compromised algorithm to the safer one and the revocation of the certificate associated with the compromised algorithm, as elaborated in 0015, is achieving.
Claim Rejections - 35 USC § 103
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.
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 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.
Claims 1, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ali et al. (U.S. Patent Application Publication No. 2011/0131420 A1), hereafter Ali, in view of Fieres et al. (U.S. Patent No. 5,740,248), hereafter Fieres, and further in view of Sato et al. (U.S. Patent Application Publication No. 2011/0231662 A1), hereafter Sato.
Regarding Claims 1 and 4
Ali teaches:
- a step of loading, within a secure memory of the payment terminal, a …ware comprising a plurality of distinct cryptographic methods, each cryptographic method of the plurality being intended to allow the subsequent implementation, by a third party having cryptographic material suitable for the considered method, of operations for verifying the authenticity and the integrity of at least one application installed on the payment terminal; (0087, 0094-0099, with reference to Figs. 7 (notably element 76) and 8 (multiple modes 810 with respective multiple, different cryptographic algorithms 816, 818); regarding loading: 0003 load algorithms into trusted component, 0083, 0087, 0094, 0096 algorithms shipped with device or defined by user and received by the device/installed after shipment teach that they are loaded onto the device; regarding …ware: 0036-0037, 0070 the trusted entity is instantiated in hardware or software; regarding allow the subsequent implementation, by a third party having cryptographic material suitable for the considered method, of operations for verifying the authenticity and the integrity of at least one application installed on the payment terminal: see also 0003, 0025-0027, 0069, 0076-0078 measuring/recording/reporting integrity metrics for applications, 0041-0045 chain of trust for application code, 0055, 0085 e.g., verification performed in later sessions, by user (third party), using key (cryptographic material suitable for the considered method), 0023 user can be local or remote entity; regarding payment terminal: see 0022 e.g., mobile phone, 0027 performs secure transaction with the platform, under broadest reasonable interpretation mobile phone performing secure transaction with platform teaches payment terminal)
- at least one step of deactivating at least one cryptographic method of the plurality of distinct cryptographic methods included in the …ware, the deactivation step …, present in the payment terminal. (0096 "In practice, a mechanism would typically also be provided whereby the TCG (or other trusted party) can revoke a mode [and hence the mode's algorithms, see 0097, Fig. 8, showing that each mode 810 includes algorithms 816, 818], for example because the associated algorithm(s) have been discredited." regarding present in the payment terminal: 0022, 0027, as explained at previous step immediately above)
(claim 4) at least one secure memory in which (Fig. 7, 3a, 76, see 0087, 0096)
Ali does not explicitly disclose that the cryptographic algorithms are included in firmware as opposed to software or hardware, but Fieres teaches:
… a firmware comprising a plurality of distinct cryptographic methods …; (2:52-54 "Within the framework, a cryptographic unit contains several cryptographic methods (e.g. DES, RSA, MD5)"; 8:29-36 "A CU also includes firmware elements 27 (see FIG. 2) which implement the CU runtime, cryptographic service modules, and potential user level service module that implements security protocols or other user level functions. The requirements that apply to application certification also apply to the firmware. Thus, firmware modules which are loaded into the CU are accompanied by a firmware certificate 25 (FIG. 2)."; see Figs. 2, 6, 7, 11, 12, element 27)
… the plurality of distinct cryptographic methods included in the firmware …. (2:52-54 "Within the framework, a cryptographic unit contains several cryptographic methods (e.g. DES, RSA, MD5)"; 8:29-36 "A CU also includes firmware elements 27 (see FIG. 2) which implement the CU runtime, cryptographic service modules, and potential user level service module that implements security protocols or other user level functions. The requirements that apply to application certification also apply to the firmware. Thus, firmware modules which are loaded into the CU are accompanied by a firmware certificate 25 (FIG. 2)."; see Figs. 2, 6, 7, 11, 12, element 27)
It would have been obvious to one of ordinary skill in the art not later than the effective filing date of the claimed invention to have modified Ali's apparatus and corresponding method comprising a plurality of cryptographic algorithms and providing for the selective use of different ones of the cryptographic algorithms to perform cryptographic operations, by incorporating therein these teachings of Fieres to the effect that cryptographic algorithms may be included in firmware, because using firmware instead of software would increase security, and because the combinations are merely a matter of combining prior art elements according to known methods to yield predictable results, and/or simple substitution of one known element (firmware) for another (software) to obtain predictable results. See Ali, 0002-0003, Fieres, Abstract, MPEP 2143.I.A.,B.,G.
Ali in view of Fieres does not explicitly disclose, but Sato teaches:
… comprising a step of deleting or revoking a certificate associated with the at least one cryptographic method …; (0014, 0015 " When a compromise of the current cryptographic algorithm occurred before a CA performs the migration of the cryptography or in the middle of migration of the cryptography, the CA needs to migrate the cryptographic algorithm used for digital signature to a safer one [i.e., the current, unsafe cryptographic algorithm is being deactivated] and then revoke a certificate(s) using the compromised cryptographic algorithm and further issue a certificate revocation list and/or a certificate(s) based on a new cryptographic algorithm. [i.e., deactivation is carried out by revoking certificate associated with the current, unsafe cryptographic algorithm]")
It would have been obvious to one of ordinary skill in the art not later than the effective filing date of the claimed invention to have modified the combination of Ali's apparatus and corresponding method comprising a plurality of cryptographic algorithms and providing for the selective use of different ones of the cryptographic algorithms to perform cryptographic operations, as modified by Fieres' teachings of a firmware implementation, by incorporating therein these teachings of Sato regarding deactivating a cryptographic algorithm by revoking an associated certificate, because the use of certificates as taught by Sato reduces the amount of computer resources required and makes it possible to flexibly cope with changes in system configuration as taught by Sato 0008, and because the combination is merely a matter of combining prior art elements according to known methods to yield predictable results, and/or simple substitution of one known element (Sato's deactivation of a cryptographic method by revocation of certificate, as per 0015) for another (Ali's deactivation of a cryptographic method by revoking the mode that includes the cryptographic method, using a certificate, further details unspecified, as per 0096) to obtain predictable results. MPEP 2143.I.A.,B.,G.
Regarding Claim 5
Ali in view of Fieres and Sato teaches the limitations of base claim 4 as set forth above. Ali further teaches:
wherein at least one of the distinct cryptographic methods is deactivated. (0096 "In practice, a mechanism would typically also be provided whereby the TCG (or other trusted party) can revoke a mode [and hence the mode's algorithms, see 0097, Fig. 8, showing that each mode 810 includes algorithms 816, 818], for example because the associated algorithm(s) have been discredited.")
Claims 2, 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ali et al. (U.S. Patent Application Publication No. 2011/0131420 A1), hereafter Ali, in view of Fieres et al. (U.S. Patent No. 5,740,248), hereafter Fieres, further in view of Sato et al. (U.S. Patent Application Publication No. 2011/0231662 A1), hereafter Sato, and further in view of Chen et al. (U.S. Patent Application Publication No. 2023/0095143 A1), hereafter Chen. (Note: the rejection relies on the foreign priority dates of Chen; the foreign priority documents for Chen are enclosed with this Office Action.)
Regarding Claim 2
Ali in view of Fieres and Sato teaches the limitations of base claim 1 as set forth above. Ali in view of Fieres and Sato does not explicitly disclose but Chen teaches:
wherein it comprises at least one step of activating at least one of the previously deactivated cryptographic methods. (0092 "Suspending the cryptographic algorithm may include two possible meanings: disabling the cryptographic algorithm and revoking the cryptographic algorithm. Disabling the cryptographic algorithm means that the cryptographic algorithm is temporarily set to an unavailable state, so that the cryptographic algorithm is temporarily not used for secure boot. However, the cryptographic algorithm may be re-enabled subsequently based on an actual requirement. Revoking the cryptographic algorithm means that use of the cryptographic algorithm is terminated, the cryptographic algorithm is permanently invalid in the network device, and the cryptographic algorithm cannot be re-enabled subsequently.")
It would have been obvious to one of ordinary skill in the art not later than the effective filing date of the claimed invention to have modified Ali's apparatus and corresponding method comprising a plurality of cryptographic algorithms and providing for the selective use of different ones of the cryptographic algorithms to perform cryptographic operations, as modified by Fieres' teachings of a firmware implementation, and as further modified by Sato's teachings regarding deactivating a cryptographic algorithm by revoking an associated certificate, by incorporating therein these teachings of Chen regarding revalidating a previously invalidated cryptographic algorithm, because (1) it renders the arrangement more flexible, MPEP 2143.I.G., (2) by permitting Chen's revalidation (in the context of using certificates as taught by Sato) it would reduce the number of times certificates have to be issued and accordingly would reduce the (work)load of certificate management and make certificate management more efficient, MPEP 2143.I.G., and (3) the combination is a matter of combining prior art elements according to known methods to yield predictable results, MPEP 2143.I.A.
Regarding Claim 3
Ali in view of Fieres, Sato and Chen teaches the limitations of base claim 1 and intervening claim 2 as set forth above. Ali further teaches:
wherein the step of activating at least one cryptographic method comprises a step of loading, within the payment terminal, a certificate associated with the at least one cryptographic method. (0096 "… there is no technical reason why other TCG approved algorithms and parameter settings could not be installed (loaded) into the variable cryptographic function 76 after shipping. Of course, such subsequently installed (loaded) modes (and associated algorithms and parameters) would need to be accompanied by an appropriate certificate to prove the TCG (or other legitimate) origin.")
Regarding Claim 6
Ali in view of Fieres and Sato teaches the limitations of base claim 4 and intervening claim 5 as set forth above. Ali in view of Fieres and Sato does not explicitly disclose but Chen teaches:
wherein at least one of the deactivated cryptographic methods is reversibly deactivated. (0092 "Suspending the cryptographic algorithm may include two possible meanings: disabling the cryptographic algorithm and revoking the cryptographic algorithm. Disabling the cryptographic algorithm means that the cryptographic algorithm is temporarily set to an unavailable state, so that the cryptographic algorithm is temporarily not used for secure boot. However, the cryptographic algorithm may be re-enabled subsequently based on an actual requirement. Revoking the cryptographic algorithm means that use of the cryptographic algorithm is terminated, the cryptographic algorithm is permanently invalid in the network device, and the cryptographic algorithm cannot be re-enabled subsequently.")
It would have been obvious to one of ordinary skill in the art not later than the effective filing date of the claimed invention to have modified Ali's apparatus and corresponding method comprising a plurality of cryptographic algorithms and providing for the selective use of different ones of the cryptographic algorithms to perform cryptographic operations, as modified by Fieres' teachings of a firmware implementation, and as further modified by Sato's teachings regarding deactivating a cryptographic algorithm by revoking an associated certificate, by incorporating therein these teachings of Chen regarding reversibly invalidating (deactivating) a cryptographic algorithm, because (1) it renders the arrangement more flexible, MPEP 2143.I.G., (2) by providing for reversible invalidation (in the context of using certificates as taught by Sato) it would reduce the number of times certificates have to be issued and accordingly would reduce the (work)load of certificate management and make certificate management more efficient, MPEP 2143.I.G., and (3) the combination is a matter of combining prior art elements according to known methods to yield predictable results, MPEP 2143.I.A.
Conclusion
The prior art made of record and not relied upon, as set forth in the accompanying Notice of References Cited (PTO-892), is considered pertinent to applicant's disclosure. Among the cited references:
Cryptomathic ("What Is Crypto-Agility? A Full Overview") and Computing Community Consortium (Catalyst) ("Identifying Research Challenges in Post Quantum Cryptography Migration and Cryptographic Agility") provide background on crypto agility (e.g., the ability to change the encryption method being used / the ability to provide for the use of multiple, different cryptographic algorithms, without having to change the system infrastructure / without having to recode), which is needed because traditional processes are not practical to deal with the threat posed by quantum computing, whose faster computing may break/overcome traditional crypto algorithms.
Miyazaki (2010/0281270), Takeuchi (2016/0034693), Gomez Claros (2019/0080108), Pala (2021/0006417), Peters (7,404,077), Pecen (10,425,401), and Edwards (2022/0271944) teach systems comprising/supporting multiple cryptographic algorithms.
Buros (6,775,782) teaches suspending and resuming certificates (see Figs. 12 and 14); Sarangshar (2014/0089660) teaches reversibly revoking a certificate (see 0036, Fig. 4); Stransky (2005/0015587) teaches deactivating a certificate and reactivating a certificate.
Nix (2022/0405392) and Fu (2019/0377907) teach cryptographic algorithms included in firmware.
Hui (2002/0073027), filed on 12/02/2000, teaches mobile payment systems and methods (mobile/cellular phones capable of performing payment transactions, thus amounting to mobile payment terminals).
Jeng (PUF Security) ("The good, the bad and the ugly of hardware security") teaches that firmware is more secure than software (see, e.g., p. 4).
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 extension fee 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 date of this final action.
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/DWP/
Examiner, Art Unit 3626
/JESSICA LEMIEUX/Supervisory Patent Examiner, Art Unit 3626
1 As here discussed, the citation of Sato 0014 here and in the rejection hereinbelow constitutes "Citing a different portion of a reference to elaborate upon that which has been cited previously" and/or "Considering, in order to respond to applicant’s arguments, other portions of a reference submitted by the applicant." MPEP 1207.03(a) II., 1., 5.
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