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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 5, 7, 8, 11, 12, 14, 15 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 20180131699 A1) in view of Manuel-Devadoss (US 20230029053 A1), and in further view of Vimadalal (US 2020026834 A1).
Consider claim 1, Park discloses a method (read as the method and apparatus for providing profile, figure 3, par [0071]-[-0073]) comprising, by one or more computing systems:
receiving, from a user device, a request from a first user to register an electronic SIM card (read as with the user’s consent, the terminal 320 transmits a first profile download request and a profile download request message to the profile provider server, and the embedded UICC/eSIM allows a profile to be downloaded and installed for operation, figure 3, par [0071]-[0072], [0098] and [0036]);
authenticating biometric information associated with the first user, wherein the biometric information is accessed from the user device (read as biometric authentication such as fingerprint recognition performed at the terminal with the user during profile download procedure, figures 3 and 4, par [0095] and [0127]; and
a private key for determining eligible for registration (read as using a private key (PPC/PMC) associated with the eUICC/eSIM for authentication and signature generation during the profile download procedure and profile provisioning, par [0049]-[0050], [0073] and [0075]); and
based on determining whether the first user is eligible for registration: if the first user is eligible for registration: registering the first user with the electronic SIM card; else if the first user is not eligible for registration: declining the request from the first user for registration (read as determining whether to transmit and install an encrypted profiled based on verification of the confirmation information, and transmitting the encrypted profile when verification succeeds or stopping delivery when verification fails, figures 3 and 4, par [0135]-[0137]).
However, Park discloses the claimed invention above including cryptographic private-key-based authentication and biometric authentication during eUICC/eSIM profile provisioning (par [0073], [0075], [0095] and [0127]) but does not specifically disclose generating, based on the biometric information, a private key to be stored on the user device; determining, based on the private key, whether a block associated with the first user exists on the blockchain network; and based on determining the block associated with the first user exists on the blockchain network: determining, based on one or more variables stored on the block, whether the first user is eligible for registration; and granting or denying access/registration based on a blockchain validation record.
Nonetheless, Manuel-Devadoss discloses generating a biometric private key from biometric coordinates captured at a mobile device (par [0009]-[0011] and [0062]-[0063]), submitting that key for validation against a blockchain associated with the user and the mobile device (par [0039]), retrieving and using blocks including a genesis block (par [0014], [0022] and [0043]), adding validation results records to the blockchain (par [0042]-[0044]), and granting or denying access based on the blockchain record (par [0047]-[048] and [0075]), which corresponds to blockchain-based determination of eligibility and registration decision.
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate Manuel-Devadoss’s biometric-derived private key generation and blockchain validation architecture into Park’s eUICC/eSIM profile provisioning process in order to perform eligibility determination using a tamper-evident blockchain record before completing electronic SIM (eSIM) registration, which would improve identify assurance and provide an immutable validation history (see par [0013] of Manuel-Devadoss).
However, Park, as modified by Manuel-Devadoss, discloses the claimed invention above including generating the biometric private key and recording validation results in a blockchain but does not specifically disclose storing a public key on a blockchain network.
Nonetheless, Vimadalal discloses generating a private/public key pair and securely storing the public key on a blockchain ledger, par [0029]-[0030].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate Vimadalal’s public/private key pair generation and blockchain public-key storage into the combined Park- Manuel-Devadoss system in order to use asymmetric cryptograph with blockchain-stored public keys for reliable verification of biometric-derived private keys during electronic SIM registration, which would enhance cryptographic integrity and verifiability of the registration decisions (see par [0029]-[0030] of Vimadalal).
Consider claim 4, as applied to claim 1 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses wherein the biometric information comprises one or more of a faceprint, a fingerprint, a voiceprint, or an iris pattern (read as the fingerprint for biometric authentication, par [0095]).
Consider claim 5, as applied to claim 1 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses the claimed invention above including private-key-based authentication in eUICC/eSIM provisioning but does not specifically disclose where the private key comprises the biometric information.
Nonetheless, Manuel-Devadoss discloses generating the private key from biometric coordinates, including using the biometric coordinates as a seed for key generation, par [0009], [0011] and [0062]-[0063].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to further incorporate Manuel-Devadoss’s biometric-derived private key generation into the eUICC/eSIM authentication procedure of Park, which modified by Manuel-Devadoss and Vimadalal, in order to bind the private key directly to user biometric information, which would strengthen identify assurance in electronic SIM registration (see par [0009] and [0063] of Manuel-Devadoss).
Consider claim 7, as applied to claim 1 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses the claimed invention above including generating the biometric private key and recording validation results in a blockchain but does not specifically disclose wherein the one or more variables comprise one or more of an offense count, an indicator of suspected offender, a phone number, a user identifier, a public key, or a time when the block was last updated.
Nonetheless, Vimadalal discloses storing the public key on the blockchain ledger, par [0029]-[0030].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to further incorporate Vimadalal’s teaching of storing the public key on the blockchain into the blockchain validation system of Park, which modified by Manuel-Devadoss and Vimadalal, in order to provide cryptographically bound identify information within the blockchain record used for eligibility determination, which would enhance cryptographic integrity and verifiability of the registration decisions (see par [0029]-[0030] of Vimadalal).
Consider claim 8, Park discloses an electronic device (read as the method and apparatus for providing profile, figure 3, par [0071]-[-0073]) comprising: one or more non-transitory computer-readable storage media including instructions; and one or more processors coupled to the storage media, the one or more processors configured to execute the instructions to (read as the processor (par [0130]) and the inherently existing memory element within the terminal, figure 1, par [0059]): receiving, from a user device, a request from a first user to register an electronic SIM card (read as with the user’s consent, the terminal 320 transmits a first profile download request and a profile download request message to the profile provider server, and the embedded UICC/eSIM allows a profile to be downloaded and installed for operation, figure 3, par [0071]-[0072], [0098] and [0036]);
authenticating biometric information associated with the first user, wherein the biometric information is accessed from the user device (read as biometric authentication such as fingerprint recognition performed at the terminal with the user during profile download procedure, figures 3 and 4, par [0095] and [0127]; and
a private key for determining eligible for registration (read as using a private key (PPC/PMC) associated with the eUICC/eSIM for authentication and signature generation during the profile download procedure and profile provisioning, par [0049]-[0050], [0073] and [0075]); and
based on determining whether the first user is eligible for registration: if the first user is eligible for registration: registering the first user with the electronic SIM card; else if the first user is not eligible for registration: declining the request from the first user for registration (read as determining whether to transmit and install an encrypted profiled based on verification of the confirmation information, and transmitting the encrypted profile when verification succeeds or stopping delivery when verification fails, figures 3 and 4, par [0135]-[0137]).
However, Park discloses the claimed invention above including cryptographic private-key-based authentication and biometric authentication during eUICC/eSIM profile provisioning (par [0073], [0075], [0095] and [0127]) but does not specifically disclose generating, based on the biometric information, a private key to be stored on the user device; determining, based on the private key, whether a block associated with the first user exists on the blockchain network; and based on determining the block associated with the first user exists on the blockchain network: determining, based on one or more variables stored on the block, whether the first user is eligible for registration; and granting or denying access/registration based on a blockchain validation record.
Nonetheless, Manuel-Devadoss discloses generating a biometric private key from biometric coordinates captured at a mobile device (par [0009]-[0011] and [0062]-[0063]), submitting that key for validation against a blockchain associated with the user and the mobile device (par [0039]), retrieving and using blocks including a genesis block (par [0014], [0022] and [0043]), adding validation results records to the blockchain (par [0042]-[0044]), and granting or denying access based on the blockchain record (par [0047]-[048] and [0075]), which corresponds to blockchain-based determination of eligibility and registration decision.
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate Manuel-Devadoss’s biometric-derived private key generation and blockchain validation architecture into Park’s eUICC/eSIM profile provisioning process in order to perform eligibility determination using a tamper-evident blockchain record before completing electronic SIM (eSIM) registration, which would improve identify assurance and provide an immutable validation history (see par [0013] of Manuel-Devadoss).
However, Park, as modified by Manuel-Devadoss, discloses the claimed invention above including generating the biometric private key and recording validation results in a blockchain but does not specifically disclose storing a public key on a blockchain network.
Nonetheless, Vimadalal discloses generating a private/public key pair and securely storing the public key on a blockchain ledger, par [0029]-[0030].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate Vimadalal’s public/private key pair generation and blockchain public-key storage into the combined Park- Manuel-Devadoss system in order to use asymmetric cryptograph with blockchain-stored public keys for reliable verification of biometric-derived private keys during electronic SIM registration, which would enhance cryptographic integrity and verifiability of the registration decisions (see par [0029]-[0030] of Vimadalal).
Consider claim 11, as applied to claim 8 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses wherein the biometric information comprises one or more of a faceprint, a fingerprint, a voiceprint, or an iris pattern (read as the fingerprint for biometric authentication, par [0095]).
Consider claim 12, as applied to claim 8 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses the claimed invention above including private-key-based authentication in eUICC/eSIM provisioning but does not specifically disclose where the private key comprises the biometric information.
Nonetheless, Manuel-Devadoss discloses generating the private key from biometric coordinates, including using the biometric coordinates as a seed for key generation, par [0009], [0011] and [0062]-[0063].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to further incorporate Manuel-Devadoss’s biometric-derived private key generation into the eUICC/eSIM authentication procedure of Park, which modified by Manuel-Devadoss and Vimadalal, in order to bind the private key directly to user biometric information, which would strengthen identify assurance in electronic SIM registration (see par [0009] and [0063] of Manuel-Devadoss).
Consider claim 14, as applied to claim 8 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses the claimed invention above including generating the biometric private key and recording validation results in a blockchain but does not specifically disclose wherein the one or more variables comprise one or more of an offense count, an indicator of suspected offender, a phone number, a user identifier, a public key, or a time when the block was last updated.
Nonetheless, Vimadalal discloses storing the public key on the blockchain ledger, par [0029]-[0030].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to further incorporate Vimadalal’s teaching of storing the public key on the blockchain into the blockchain validation system of Park, which modified by Manuel-Devadoss and Vimadalal, in order to provide cryptographically bound identify information within the blockchain record used for eligibility determination, which would enhance cryptographic integrity and verifiability of the registration decisions (see par [0029]-[0030] of Vimadalal).
Consider claim 15, Park discloses a computer-readable non-transitory storage media comprising instructions executable by a processor to (read as the processor (par [0130]) and the inherently existing memory element within the terminal, figure 1, par [0059]): receiving, from a user device, a request from a first user to register an electronic SIM card (read as with the user’s consent, the terminal 320 transmits a first profile download request and a profile download request message to the profile provider server, and the embedded UICC/eSIM allows a profile to be downloaded and installed for operation, figure 3, par [0071]-[0072], [0098] and [0036]);
authenticating biometric information associated with the first user, wherein the biometric information is accessed from the user device (read as biometric authentication such as fingerprint recognition performed at the terminal with the user during profile download procedure, figures 3 and 4, par [0095] and [0127]; and
a private key for determining eligible for registration (read as using a private key (PPC/PMC) associated with the eUICC/eSIM for authentication and signature generation during the profile download procedure and profile provisioning, par [0049]-[0050], [0073] and [0075]); and
based on determining whether the first user is eligible for registration: if the first user is eligible for registration: registering the first user with the electronic SIM card; else if the first user is not eligible for registration: declining the request from the first user for registration (read as determining whether to transmit and install an encrypted profiled based on verification of the confirmation information, and transmitting the encrypted profile when verification succeeds or stopping delivery when verification fails, figures 3 and 4, par [0135]-[0137]).
However, Park discloses the claimed invention above including cryptographic private-key-based authentication and biometric authentication during eUICC/eSIM profile provisioning (par [0073], [0075], [0095] and [0127]) but does not specifically disclose generating, based on the biometric information, a private key to be stored on the user device; determining, based on the private key, whether a block associated with the first user exists on the blockchain network; and based on determining the block associated with the first user exists on the blockchain network: determining, based on one or more variables stored on the block, whether the first user is eligible for registration; and granting or denying access/registration based on a blockchain validation record.
Nonetheless, Manuel-Devadoss discloses generating a biometric private key from biometric coordinates captured at a mobile device (par [0009]-[0011] and [0062]-[0063]), submitting that key for validation against a blockchain associated with the user and the mobile device (par [0039]), retrieving and using blocks including a genesis block (par [0014], [0022] and [0043]), adding validation results records to the blockchain (par [0042]-[0044]), and granting or denying access based on the blockchain record (par [0047]-[048] and [0075]), which corresponds to blockchain-based determination of eligibility and registration decision.
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate Manuel-Devadoss’s biometric-derived private key generation and blockchain validation architecture into Park’s eUICC/eSIM profile provisioning process in order to perform eligibility determination using a tamper-evident blockchain record before completing electronic SIM (eSIM) registration, which would improve identify assurance and provide an immutable validation history (see par [0013] of Manuel-Devadoss).
However, Park, as modified by Manuel-Devadoss, discloses the claimed invention above including generating the biometric private key and recording validation results in a blockchain but does not specifically disclose storing a public key on a blockchain network.
Nonetheless, Vimadalal discloses generating a private/public key pair and securely storing the public key on a blockchain ledger, par [0029]-[0030].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to incorporate Vimadalal’s public/private key pair generation and blockchain public-key storage into the combined Park- Manuel-Devadoss system in order to use asymmetric cryptograph with blockchain-stored public keys for reliable verification of biometric-derived private keys during electronic SIM registration, which would enhance cryptographic integrity and verifiability of the registration decisions (see par [0029]-[0030] of Vimadalal).
Consider claim 18, as applied to claim 15 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses wherein the biometric information comprises one or more of a faceprint, a fingerprint, a voiceprint, or an iris pattern (read as the fingerprint for biometric authentication, par [0095]).
Consider claim 19, as applied to claim 15 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses the claimed invention above including private-key-based authentication in eUICC/eSIM provisioning but does not specifically disclose where the private key comprises the biometric information.
Nonetheless, Manuel-Devadoss discloses generating the private key from biometric coordinates, including using the biometric coordinates as a seed for key generation, par [0009], [0011] and [0062]-[0063].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to further incorporate Manuel-Devadoss’s biometric-derived private key generation into the eUICC/eSIM authentication procedure of Park, which modified by Manuel-Devadoss and Vimadalal, in order to bind the private key directly to user biometric information, which would strengthen identify assurance in electronic SIM registration (see par [0009] and [0063] of Manuel-Devadoss).
Consider claim 20, as applied to claim 15 above, Park, as modified by Manuel-Devadoss and Vimadalal, discloses the claimed invention above including generating the biometric private key and recording validation results in a blockchain but does not specifically disclose wherein the one or more variables comprise one or more of an offense count, an indicator of suspected offender, a phone number, a user identifier, a public key, or a time when the block was last updated.
Nonetheless, Vimadalal discloses storing the public key on the blockchain ledger, par [0029]-[0030].
Therefore, it would have been obvious for a person with ordinary skill in the art before the effective filing date of the claimed invention to further incorporate Vimadalal’s teaching of storing the public key on the blockchain into the blockchain validation system of Park, which modified by Manuel-Devadoss and Vimadalal, in order to provide cryptographically bound identify information within the blockchain record used for eligibility determination, which would enhance cryptographic integrity and verifiability of the registration decisions (see par [0029]-[0030] of Vimadalal).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Junpeng Chen whose telephone number is (571) 270-1112. The examiner can normally be reached on Monday - Thursday, 8:00 a.m. - 5:00 p.m., EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony S Addy can be reached on 571-272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Junpeng Chen/
Primary Examiner, Art Unit 2645