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). The certified copy has been filed in parent Application No. JP2021-113226, filed on July 8, 2021.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 20, 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
In paragraph [0004], a hyperlink is included to non-patent literature (NPL) Japan OPC Consortium Technical Committee, "Inquiry on OPC UA Security Functions and Evaluation Results by the German Federal Ministry of Technology Security Department,", which was included in the IDS disclosed on March 20, 2024, has a hyperlink to the aforementioned NPL, which begins with the prefix “https”.
The use of the term “OPC UA” throughout the Specification and claims, also known as “Open Platform Communications Unified Architecture” in paragraph [0003], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 limitations are: “a monitoring system for monitoring communication between a first communication device and a second communication device”, “a router unit capable of communication with the first communication device and the second communication device”, “a monitoring unit recording information regarding content of communication between the first communication device and the second communication device”, “acquisition unit obtaining a packet encrypted with a first encryption key by the first communication device”, “decryption unit decrypting the packet obtained by the acquisition unit with a first decryption key corresponding to the first encryption key”, “recording unit recording information based on the decrypted packet”, and “transfer unit transmitting the encrypted packet to the second communication device” in claim 1.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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(b)
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 1-10 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 monitoring system for monitoring communication between a first communication device and a second communication device”, “a router unit capable of communication with the first communication device and the second communication device”, “a monitoring unit recording information regarding content of communication between the first communication device and the second communication device”, “acquisition unit obtaining a packet encrypted with a first encryption key by the first communication device”, “decryption unit decrypting the packet obtained by the acquisition unit with a first decryption key corresponding to the first encryption key”, “recording unit recording information based on the decrypted packet”, and “transfer unit transmitting the encrypted packet to the second communication device” in claim 1 invokes 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 function. In the event of a “monitoring system”, the claimed monitoring system is described in paragraphs [0025] to contains a body equipped with a monitoring unit and a router unit to monitor communications between a first and second device, but does not provide sufficient structure, either in the form of hardware or software, with paragraph [0046] describing Fig. 2B, where the monitoring system acts as a relaying device between the client and the server, and maintains a set of keys corresponding to both devices. In particular, the Specification states that the claimed function of communicating with the first and second communication devices with the router unit, as described in paragraph [0046], and the recording device in the monitoring unit transmitting recorded communication between the communication devices, in paragraph [0133], but there is no structure as to how the router unit and monitoring unit perform said functions. The communication and the recording of the communications does not recite particular structure for either the hardware nor the software utilized for either of the functions. As would be recognized by those of ordinary skill in the art, the term “router unit” is a router device that creates a network for one or more devices to connect to said network, and “monitoring unit” performs monitoring of communications of devices in the network, as shown in Fig. 2A. Finally, “acquisition unit” is described as being performed by the router unit, executing steps 450 and 455 of Fig. 5 in paragraph [0122], as well as “transfer unit” performing steps 405 and 410 of Fig. 3A. Next, “decryption unit” being performed by the router unit performing steps 340 of Fig. 5, “recording unit” also being performed by monitoring unit in step 345 of Fig. 5. All of these units are described without sufficient structure, with no hardware or software provided for each and every one of the 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.
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.
Claims 2-10 are claims that depend upon independent claim 1, and as a result of claim 1 being rejected for failing to particularly point out and distinctly claim the subject matter above, claims 2-10 inherit the rejections of independent claim 1 above.
Claim 7 is 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 7 recites that “a common key” is shared between the first communication device and the monitoring unit, and that “a common key” is shared between the second communication device and the monitoring unit. It is unclear if “a common key” is the same across the three components, or if there are two different common keys for each of the combination of components above.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure to perform the claimed function of routing and monitoring communications between two devices in a network. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Claims 2-10 are claims that depend upon independent claim 1, and as a result of claim 1 being rejected for failing to comply with the written description requirement above, claims 2-10 inherit the rejections of independent claim 1 above.
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.
Claims 1-10 is rejected under 35 U.S.C. 103 as being unpatentable over Goyal et al. (US 20180288062 A1), hereinafter “Goyal”, in view of Nagata (US 20200225632 A1).
Claim 1, Goyal discloses a “monitoring system for monitoring communication between a first communication device and a second communication device in a control network, comprising: a router unit capable of communication with the first communication device and the second communication device” ([0048] Fig. 6, tunnel 610 in the host 402 inspects the packets, and alters the packets, such as changing the IP packet source and destination addresses to one of the listening ports based on the tunneling protocol and stage of listening to the packet. Tunnel is between the host/client 402 and the server 404.);
“and a monitoring unit recording information regarding content of communication between the first communication device and the second communication device” ([0045] For every SSL request initiated by the client app 620, the tunnel connection object parses the SSL handshake headers to keep a record of the messages exchanged between the SSL client 402 and the SSL server 404.);
“wherein: the router unit includes an acquisition unit obtaining a packet encrypted with a first encryption key by the first communication device and sent from the first communication device” ([0039] Fig. 5, interception proxy works as a man-in-the-middle, and modifies the encrypted channel between the client 402 and server 404. [0002] SSL protocol uses public key cryptography, where key pairs are present for each device, with a public key and a private key in each key pair, and in paragraph [0037], step 410-4, the client public key is sent from the client to the server, and Fig. 5's proxy can intercept the message.);
“the monitoring unit includes a decryption unit decrypting the packet obtained by the acquisition unit with a first decryption key corresponding to the first encryption key and a recording unit recording information based on the decrypted packet” ([0037] Fig. 5, proxy intercepts application data, which is viewable in plain text before re-encrypting with the secret key, while modifying through the encrypted channel in otherwise encrypted information, and SSL client 402 sends the random byte string that enables both the SSL client 402 and the SSL server 404 to compute the secret key to be used for encrypting subsequent message data.);
“the router unit includes a transfer unit transmitting the encrypted packet to the second communication device” ([0039] Fig. 5, interception proxy 510 will intercept connection and open two different channels of communication, one with the SSL client 402 and the other with the SSL server 404 that the SSL client 402 intended to talk to in the first place, enabling further communication to the server.);
“the router unit and the monitoring unit function as OPC UA application integrated within encrypted communications, are equipped with OPC UA server/client functionalities, capable of OPC UA encryption/decryption, and make an inquiry to an OPC UA server that is the second communication device as a proxy for an OPC UA client that is the first communication device” ([0039] Interception proxy 510 can be in between the client/server endpoints, as shown in Fig. 5, and as a result, can behave as a server to the client, and as a client to the server, acting as a bridge between both endpoints by "open[ing] two different channels of communication".);
Goyal does not suggest, but Nagata teaches “OPC UA” ([0089] Fig. 6, OPC-UA client 200D and OPC-UA server 138 are present, where the client is performed by the external apparatus 200, and the server is performed by controller 100.).
Therefore, one of ordinary skill in the art would have been capable of applying this known method of "OPC UA" in a monitoring system for monitoring communication between a first communication device and a second communication device in a control network and the results would have been predictable to one of ordinary skill in the art. The one of ordinary skill in the art would have been motivated to implement data exchange independently of the type of a vendor or an operating system (OS) (Nagata [0088]).
Claim 2, Goyal in view of Nagata teaches the limitations of claim 1 above. Goyal also discloses “wherein the first communication device, the second communication device, and the monitoring unit are all capable of communication through the router unit, wherein the acquisition unit within the router unit alters a destination address of the packet and sends them from the transfer unit” ([0048] Fig. 6, tunnel 610 in the host 402 inspects the packets, and alters the packets, such as changing the IP packet source and destination addresses to one of the listening ports based on the tunneling protocol and stage of listening to the packet.);
“the packet originating from the first communication device has a source address being an address of the first communication device and the destination address being an address of the router unit and reaches the router unit” (Fig. 6 shows that the destination is from the client app 620, and can be redirected to the tunnel 610/proxy 510. [0043] "The traffic is forwarded from the SSL clients 402 to the cloud system 102 using the context aware tunnel 610.");
“at the initiation of communication, the acquisition unit acquires a common key shared between the client and the server” ([0038] Fig. 5, client, server, and the proxy share a shared secret key to exchange messages, also shown in Fig. 4, step 410-9.);
Goyal does not suggest, but Nagata teaches “OPC UA” ([0089] Fig. 6, OPC-UA client 200D and OPC-UA server 138 are present, where the client is performed by the external apparatus 200, and the server is performed by controller 100.).
Therefore, one of ordinary skill in the art would have been capable of applying this known method of "OPC UA" in a monitoring system for monitoring communication between a first communication device and a second communication device in a control network and the results would have been predictable to one of ordinary skill in the art. The one of ordinary skill in the art would have been motivated to implement data exchange independently of the type of a vendor or an operating system (OS) (Nagata [0088]).
Claim 3, Goyal in view of Nagata teaches the limitations of claim 2 above. Goyal also discloses “wherein the router unit and the monitoring unit are capable of communication with each other” (Fig. 1, capture device 127 captures communication between a first device and second device, and is also connected to the client database 301 through secret agent 128 and secure key transport 126.);
“the router unit includes a request packet transfer unit rewriting, at the initiation of communication, a destination address of a specific request packet sent from the first communication device from an address of the router unit to an address of the second communication device and sending the rewritten packet to the second communication device” ([0048] Destination address is changed for the request packet from the client application, and is altered, from the tunnel/proxy 510, shown in Fig. 5, to the second device (server endpoint 404), stated in paragraph [0039].);
“the second communication device includes a response unit sending to the router unit a response packet in response to the request packet sent by the request packet transfer unit, by setting a destination address to an address of the router unit and by setting a source address to the address of the second communication device” ([0048] Destination address is set for the response packet from the server, and is altered, from the server 404, shown in Fig. 5, to the tunnel/proxy 510, shown in Fig. 5 stated in paragraph [0039].);
“and the router unit changes the source address of the response packet sent by the response unit from the address of the second communication device to an address of the router unit and sends the response packet to the first communication device” ([0048] Destination address is changed for the response packet from the server, and is altered, from the tunnel/proxy 510, shown in Fig. 5, to the first device (client endpoint 402), stated in paragraph [0039].);
Claim 4, Goyal in view of Nagata teaches the limitations of claim 3 above. Goyal also discloses “wherein the request packet from the first communication device includes an electronic certificate of the first communication device, and the corresponding response packet contains an electronic certificate of the monitoring unit” ([0057] Fig. 5, client hello handshake corresponds to the certificate of the first device, and the response of the server hello certificate from the proxy corresponds to certificate of the monitoring unit.);
Claim 5, Goyal in view of Nagata teaches the limitations of claim 4 above. Goyal also discloses “wherein the request packet from the first communication device includes a public key corresponding to a private key owned by the first communication device, and the response packet includes a public key corresponding to a private key owned by the monitoring unit” ([0002] SSL protocol uses public key cryptography, where key pairs are present for each device, with a public key and a private key in each key pair. Furthermore, in Fig. 4, paragraph [0037], step 410-4, the client public key is sent from the client to the server, and Fig. 5's proxy can intercept the message.);
Claim 6, Goyal in view of Nagata teaches the limitations of claim 5 above. Goyal also discloses “wherein a request packet from the second communication device includes a public key corresponding to a private key owned by the second communication device, and a corresponding response packet includes a public key corresponding to a private key owned by the monitoring unit” (Public key of the server is sent to the client and proxy, described in paragraph [0037], step 410-5.);
Claim 7, Goyal in view of Nagata teaches the limitations of claim 6 above. Goyal also discloses “wherein the first communication device and the monitoring unit share a common key, and the second communication device and the monitoring unit also share a common key” ([0038] Fig. 5, client, server, and the proxy share a shared secret key to exchange messages, also shown in Fig. 4, step 410-9.);
Claim 8, Goyal in view of Nagata teaches the limitations of claim 1 above. Goyal also discloses “wherein packet routing information between the first communication device, the second communication device, and the router unit is specified using a URL” ([0025] Cloud-based system 100 is configured to perform functions such as uniform resource locator (URL) filtering for packets, along with an IP address stated in the packets.);
Claim 9, Goyal in view of Nagata teaches the limitations of claim 1 above. Goyal also discloses “wherein the first encryption key and the first decryption key are obtained by the first communication device, the second communication device, and the monitoring unit based on information shared among the first communication device, the second communication device, and the monitoring unit through communication using asymmetric key encryption” ([0002] SSL protocol uses public key cryptography, which is asymmetric key encryption, where key pairs are present for each device, and while the decryption keys are maintained, as they are private keys, the public keys are distributed via steps 410-4 and 410-5 by the server and client, where client public key corresponds to first encryption key. [0037] The SSL client 402 sends the random byte string that enables both the SSL client 402 and the SSL server 404 to compute the secret key to be used for encrypting subsequent message data.);
Regarding Claim 10, Goyal in view of Nagata teaches the limitations of claim 1 above. Goyal also discloses “wherein the router unit obtains a packet encrypted with a second encryption key at the second communication device and sent from the second communication device” (Public key of the server is sent to the client and proxy, described in paragraph [0037], step 410-5, where server message is encrypted with server public key.);
“the monitoring unit decrypts, using a second decryption key corresponding to the second encryption key, the packet obtained from the second communication device and encrypted with the second encryption key at the second communication device and records information based on the decrypted packet” ([0037] The SSL client 402 sends the random byte string that enables both the SSL client 402 and the SSL server 404 to compute the secret key to be used for encrypting subsequent message data, and in Fig. 5, proxy intercepts application data, which is viewable in plain text before re-encrypting with the secret key, while modifying through the encrypted channel in otherwise encrypted information.);
“and the router unit sends the packet encrypted with the second encryption key by the second communication unit to the first communication device” ([0037], step 410-5 continues after being in the proxy, as shown in Fig. 5, with "change cipher spec" finished being processed.);
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Elkins et al. (US 20230108261 A1, “MANAGEMENT, DIAGNOSTICS, AND SECURITY FOR NETWORK COMMUNICATIONS”)
Heutger et al. (US 20150018980 A1, “Method For The Fail-Safe Operation Of A Process Control System With Redundant Control Devices”)
Du Toit et al. (US 20240048590 A1, “INTERCEPT FOR ENCRYPTED COMMUNICATIONS”)
Clark et al. (US 10367811 B2, “Methods For Internet Communication Security”)
Astorga et al. (NPL, “Revisiting the Feasibility of Public Key Cryptography in Light of IIoT Communications”, 2022)
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/T.M./ Examiner, Art Unit 2496 /JORGE L ORTIZ CRIADO/Supervisory Patent Examiner, Art Unit 2496
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