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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Response to Amendment
Applicant’s amendment, filed 11/17/2025, has been entered and fully considered.
In light of Applicant’s amendment, claims 1-9 are not being interpreted under 35 U.S.C. 112(f).
In light of Applicant’s amendment, the rejection of claims 1-9 under 35 U.S.C. 112(b) has been withdrawn.
Response to Arguments
Applicant’s arguments, see pages 7-11, with respect to the rejection of claim(s) 1-11 under 35 U.S.C. 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 is dependent on claim 1. Claim 1 recites “setting information which is authentication information for connecting to an external server”. Claim 9 recites “the setting information is authentication information for connecting to an external server”. Claim 9 does not specify a further limitation of the subject matter claimed in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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)(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) 1-2, 6, 9-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yoshiwara (USP App Pub 2024/0205220).
Regarding claim 1, An information processing apparatus to which an external storage medium is connectable, the information processing apparatus (Yoshiwara: paragraph [0011], “the digital authentication system of the present invention is equipped with a digital ID app that is installed on an IoT device (Master) with a SIM card inserted”) comprising:
one or more processors (Yoshiwara: paragraph [0011], “an IoT device (Master)”); and
at least one memory storing executable instructions, which when executed by the one or more processors, cause the information processing apparatus (Yoshiwara: paragraph [0011], “an IoT device (Master)”; paragraph [0058], “The processing involving registration device 10, biometric authentication device 13, and IoT device (master) 1 is explained with respect to FIG. 2”) to:
store setting information which is authentication information (Yoshiwara: paragraph [0060], “official ID information such as My Number, driver's license, or insurance card is registered (S01) on digital ID app 2A and recorded (S02) in digital ID app 2A through registration unit 11 of the registration device 10”; FIG. 2, step S02 Registration of an official ID on IoT device (master)) for connecting to an external server (Yoshiwara: paragraph [0023], “the digital ID app is equipped with a hash value generation module that generates a hash value from the unique identifier of the official ID (personal identity number or driver's license number, etc.)”; paragraph [0080], “website 24 acquires (S23) the hash value from IoT device (master) 1”; paragraph [0081], “website 24 compares the hash value provided by the hash value provision module 6 with the hash value stored on website 24 or management server 18 and performs user authentication (S24). Authentication is successful (S25) if the hash value matches”; FIG. 3, hash value is transmitted from IoT device (master) to web server to be authenticated successfully in step S25; FIG. 1, website 24 is external to IoT Device (master) i.e., the official ID is used to generate the hash value which is used as authentication information to authenticate to a web server external to IoT device (master));
detect attachment to (Yoshiwara: paragraph [0062], “usage management module 3 will deny (S04) the use of digital ID app 2A in IoT device (master) 1 that does not have a SIM card inserted or IoT device (master) 1 wherein the SIM card has been replaced (S03: Yes)”; FIG. 2, step S03 Has the SIM card been replaced…? i.e., replacing a SIM card requires removing a first SIM card and detecting attachment/insertion of a second SIM card) and detachment from the information processing apparatus (Yoshiwara: FIG. 2, step S03 Has the SIM card been… removed?; paragraph [0062], “usage management module 3 will deny (S04) the use of digital ID app 2A in IoT device (master) 1 that does not have a SIM card inserted”) of the external storage medium (Yoshiwara: paragraph [0062], “SIM card”);
provide notification (Yoshiwara: FIG. 2, step S04 Digital ID App usage is denied executes in response to the SIM card being removed in step S03) of the detachment of the external storage medium from the information processing apparatus (Yoshiwara: paragraph [0062], “usage management module 3 will deny (S04) the use of digital ID app 2A in IoT device (master) 1 that does not have a SIM card inserted” i.e., when the SIM card has been removed from IoT device (master)); and
invalidate the setting information (Yoshiwara: FIG. 2, step S07, Deletion of information registered on digital ID app; FIG. 2, step S02, Registration of an official ID on IoT device (master); i.e., deletion of the official ID on the IoT device (master)) in a case where the notification of the detachment of the external storage medium from the information processing apparatus is provided (Yoshiwara: FIG. 2, step S04 Digital ID app usage is denied) and the external storage medium is not connected to the information processing apparatus (Yoshiwara: FIG. 2, the No branch from step S06 goes into the input of decision block S03 which determines if the SIM card has been removed or replaced i.e., if the SIM card was removed and not reconnected for a predetermined period, then step S06 will branch Yes to step S07) within a predetermined period of time (Yoshiwara: paragraph [0064], “deletion module 4 deletes (S07) the information registered in digital ID app 2A when a predetermined period has elapsed (S06: Yes) after the SIM card is removed from the IoT device (master) 1”).
Regarding claim 2, Yoshiwara teaches the information processing apparatus according to claim 1, wherein the instructions, when executed by the one or more processors, cause the information processing apparatus
to delete the setting information (Yoshiwara: paragraph [0064], “deletion module 4 deletes (S07) the information registered in digital ID app 2A”).
Regarding claim 6, Yoshiwara teaches the information processing apparatus according to claim 1, wherein the instructions, when executed by the one or more processors, cause the information processing apparatus to,
in a case where the external storage medium is connected to the information processing apparatus within the predetermined period of time (Yoshiwara: FIG. 2, within the predetermined period after S06 branched to No, when the same SIM card is reinserted, step S03 executes and branches to No because the SIM card was not replaced or removed during execution of the decision block. Then step S05 is executed i.e., the decision loop from step S06 to step S03 repeatedly checks if the SIM card has been replaced or removed and if not, then will branch No to step S05) after the detachment of the external storage medium from the information processing apparatus is detected (Yoshiwara: FIG. 2, Yes branch is executed after step S03 when SIM card been removed. Then, before the predetermined period is complete, step S06 executes and No branch must be taken because the predetermined period has not elapsed), not invalidate the setting information (Yoshiwara: paragraph [0062], “Access (S05) is granted for using the digital ID app 2A in IoT device (master) 1 with a SIM card inserted”; FIG. 2, step S05 never leads to step S07 deletion of information registered on digital ID app i.e., in general, the execution path through the process is as follows: S02 -> S03 (Yes) -> S04 -> S06 (No) -> S03 (No) -> S05, assuming the SIM card is reinserted after S06 (No) and the predetermined time has not elapsed).
Regarding claim 9, Yoshiwara teaches the information processing apparatus according to claim 1, wherein
the setting information (Yoshiwara: paragraph [0023], “official ID”) is authentication information for connecting to an external server (Yoshiwara: paragraph [0023], “the digital ID app is equipped with a hash value generation module that generates a hash value from the unique identifier of the official ID (personal identity number or driver's license number, etc.)”; paragraph [0080], “website 24 acquires (S23) the hash value from IoT device (master) 1”; paragraph [0081], “website 24 compares the hash value provided by the hash value provision module 6 with the hash value stored on website 24 or management server 18 and performs user authentication (S24). Authentication is successful (S25) if the hash value matches”; FIG. 3, hash value is transmitted from IoT device (master) to web server to be authenticated successfully in step S25; FIG. 1, website 24 is external to IoT Device (master) i.e., the official ID is used to generate the hash value which is used as authentication information to authenticate to a web server external to IoT device (master)).
Re. claims 10-11, they recite analogous limitations as claim 1, and therefore are rejected for the same reasons.
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, 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 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) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara in view of Corella et al. (USP App Pub 2014/0006806; hereinafter Corella).
Regarding claim 3, Yoshiwara teaches the information processing apparatus according to claim 1, wherein the instructions, when executed by the one or more processors, cause the information processing apparatus…
Yoshiwara does not teach …to encrypt the setting information.
However, in the same field of endeavor, Corella does teach …to encrypt the setting information (Corella: paragraph [0064], “An encrypted copy 140 of the confidential data is stored in the storage subsystem”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the unencrypted registration of the official ID of Yoshiwara to incorporate the teachings of Corella to encrypt stored confidential data. The motivation for doing so is to “[protect] confidential data stored in a storage subsystem 105 of a computing device 110 against an adversary who captures the device” (Corella: paragraph [0062]).
Regarding claim 4, Yoshiwara and Corella teach the information processing apparatus according to claim 3, wherein the instructions, when executed by the one or more processors, cause the information processing apparatus
to decrypt the encrypted setting information (Corella: paragraph [0064], “An encrypted copy 140 of the confidential data is stored in the storage subsystem. A decryption algorithm is used to decrypt all or part of the data when the data is needed.”).
Regarding claim 5, Yoshiwara and Corella teach the information processing apparatus according to claim 3, wherein the instructions, when executed by the one or more processors, cause the information processing apparatus
to store an encryption key (Corella: paragraph [0065], “A copy 155 of the content-encryption key is retrieved from the key storage service when the user unlocks the device and then is stored in the storage subsystem 105”) for encryption (Corella: paragraph [0064], “A symmetric content-encryption key 145 is used for both encryption and decryption”) that is unique to the information processing apparatus (Corella: paragraph [0086], “The key storage service 600 contains a database 610, which itself contains a table 620 of stored-key records, each used to store a key entrusted to the key storage service by a computing device 110”; paragraph [0088], “a STORED KEY field 650 containing the key stored in the record”).
The motivation to combine references for the claims listed above is the same as the motivation to combine references stated in claim 3.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara in view of Chong et al. (USP App Pub 2022/0330009; hereinafter Chong).
Regarding claim 7, Yoshiwara teaches the information processing apparatus according to claim 1, wherein the information processing apparatus … to the information processing apparatus, and wherein the instructions, when executed by the one or more processors, cause the information processing apparatus to invalidate the setting information based on…detecting (Yoshiwara: paragraph [0064], “deletion module 4 deletes (S07) the information registered in digital ID app 2A when a predetermined period has elapsed (S06: Yes) after the SIM card is removed from the IoT device (master) 1”)…
Yoshiwara does not teach …enables connection of a plurality of external storage media… detecting that all external storage media detected as being attached to the information processing apparatus are detected to be detached from the information processing apparatus.
However, in the same field of endeavor, Chong does teach …enables connection of a plurality of external storage media (Chong: paragraph [0065], “use of SIM cards 251a, 251b and 251c”; paragraph [0062], “SIM card interface selector 284 may select SIM card interface 261a, 261b or 261c for use by RF unit 271b”; FIG. 2B, a plurality of SIM cards 251a-251c are connected to the multi-SIM communication device 101b)… detecting that all external storage media detected as being attached to the information processing apparatus (Chong: paragraph [0106], “processing unit 295 determines the list of SIM cards that can be used as the operational SIM card”) are detected to be detached (Chong: paragraph [0106], “If one of the SIM cards 291a and 291b is removed, the removed SIM card is not in the list of SIM cards”; paragraph [0108], “if there is no SIM card can be selected, the selection process stops at step 607 that no operational SIM card is selected” i.e., system is capable of detecting when no SIM cards are available) from the information processing apparatus (Chong: FIG. 2B, multi-SIM communication device 101b).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the single SIM card system of Yoshiwara to incorporate the teachings of Chong to use a multi-SIM setup. The motivation for doing so is to is to have backup SIM cards that act as failovers (Chong: paragraph [0111], “only one of SIM cards 201a, 201b and 201c is used to establish a wireless connection and other two SIM cards can be used as backups”; paragraph [0130], “This allows resilience to failovers since one the RF units from RF units 901 can always serve as a backup when the other is down”).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiwara in view of Li (USP App Pub 2021/0247901).
Regarding claim 8, Yoshiwara teaches the information processing apparatus according to claim 1, wherein
the external storage medium (Yoshiwara: paragraph [0011], “SIM card”)…
Yoshiwara does not teach …is a secure digital (SD) card or a compact flash (CF) card.
However, in the same field of endeavor, Li does teach …is a secure digital (SD) card (Li: paragraph [0071], “the inserting or ejecting action of the SD card is detected by using the interrupt message during operation, which can accurately reflect whether the SD card is ejected or inserted”) or a compact flash (CF) card.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the SIM card removal of Yoshiwara to incorporate the teachings of Li to use a SD card to detect removals. The motivation for doing so is to detect quick insertions and removals of the SD card (Li: paragraph [0071], “The status of the SD card can be accurately identified even in case of quick inserting or ejecting of the SD card”).
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 ADITYA SRIRAM whose telephone number is (703)756-1715. The examiner can normally be reached Su-Sa: 9:00 AM - 11:59 AM PST and 1:00 PM - 8 PM PST.
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/A.S./ Examiner, Art Unit 2491
/WILLIAM R KORZUCH/ Supervisory Patent Examiner, Art Unit 2491