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 .
Status of Claims
2. This Office Action is issued in response to the claims filed on 03/12/2024.
Claims 1-20 are pending in this Office Action.
Claim Rejections - 35 USC § 101
3. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
4. Claim 4 is rejected under 35 U.S.C. 101 because the claims do not fall within at least one of the four categories of patent eligible subject matter.
The claim recites: “The sender device of claim 1, wherein the biometric module, registration module, encryption module, and communication module are implemented as software executed on a processor of the sender device” which directed to software per se that makes the claim not falling within at least one of the four statutory categories of patent eligible subject matter (the term sender device is recited in a general form with no hardware). Therefore, claim 4 is rejected under 35 U.S.C. 101.
35 U.S.C. § 112(f)
5. 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.
6. 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.
7. 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. “a biometric module configured to…” (claim 1)
b. “a registration module configured to…” (claims 1 and 2)
c. “an encryption module configured to…” (claim 1)
d. “a communication module configured to…” (claims 1 and 3)
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
8. 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.
9. Claims 1-5 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 claims contain subject matters which were 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. The specification is devoid of any structure that performs the functions in the claims that are interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Therefore, claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph. Claims 2-5 depend on claim 1; therefore, they are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
10. 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.
11. Claim limitations “a biometric module configured to…” (claim 1), “a registration module configured to…” (claims 1 and 2), “an encryption module configured to…” (claim 1), and “a communication module configured to…” (claims 1 and 3) invoke 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 disclosure is devoid of any structure that performs the functions in the claims. Therefore, the claims are indefinite and are 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.
12. Claim 1-12 and 14-20 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.
a. Regarding claim 1, line 1 recites: “…sender device” and lines 5-6 recites “…store the private key on the device”. It is unclear if the sender device and the device are the same or different devices. Therefore, claim 1 and its dependent claims are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. For purpose of examination, the Examiner assumes they are the same device.
b. Claim 1 is directed to a device, but claims 5-12 recite “the system” which lack proper antecedent basis and make the claims ambiguous. Furthermore, elements “ the recipient server (claims 6 and 12), “the decrypted verification status” (claim 6) “the sending server” (claims 8 and 10), “the received identifier” and “the registered sender device” (claim 8), “the encrypted verification status”, “the message header” and “the sender address” (claim 11) lack proper antecedent bases and make the claims ambiguous. For purpose of examination, “the recipient server” “the sending server” and their claimed subject matter are out of the scope of the sender device; therefore, they do not have patentable weight.
c. Regarding claims 3 and claim 15, they recite “receive input of an/the electronic message addressed from the registered email account”. The emphasized part makes the claim ambiguous. For purpose of examination, the Examiner assume the limitation as “receive an address of an/the electronic message from the registered email account.”
d. Claims 14-20 recite: “The method of claim 1…” which seem to have typos because claim 1 is not a method claim. Therefore, claims 14-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. The Examiner assumes claims 14-20 depend on claim 13.
e. Regarding claim 19, limitation “the stored public key” lacks proper antecedent basis and make the claim ambiguous. Therefore, claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. For purpose of examination the Examiner assumes the limitation as “a stored public key.”
Allowable Subject Matter
13. Claims 1-20 are allowable over prior art and would be allowable if rewritten to overcome the rejection under 35 USC § 101, 35 USC § 112(a) and 35 USC § 112(b) set forth in this Office action.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claims 1 and 13:
a. Gadotti et al. (US 20150149775 A1) discloses a process of sending and receiving emails using uniquely associated mobile communication devices involving a sender and a recipient, both registered users in a secure email communication system. The use of uniquely associated mobile communication devices with additional user authentication in the email sending and receiving ensures the authenticity of the sender and the recipient. Furthermore, the process of sending and receiving emails through the secure email communication system includes multiple levels of encryption and decryption of emails. Using a secure email mobile application running in his/her mobile communication device, a new user signs in to his/her user account using his/her email, mobile phone number, and password that are registered in a prior user registration. The user authentication information is sent to a first central processing server for authentication along with the mobile communication device's identification data. The first central processing server authenticates the new consumer user. Upon a positive authentication, the first central process server generates a pair of public and private keys in accordance to the Public Key Infrastructure (PKI) encryption scheme. The private key is sent to the mobile communication device and stored for future use. The public key is stored in the first central processing server along under the user account record, completing the device pairing process (Figs 2 and 3A-3B with associated text and paragraphs [0036]-[0041]).
b. Prasad (US 20230066754 A1) discloses method for authenticating a user performed by an identity server computer. During a prior registration process between a user's mobile device and the identity server computer, the user may have downloaded an application such as an authenticator application from the identity server computer to the mobile device. The authenticator application may have generated a public-private key pair, and then stored the private key in a secure memory (e.g., a secure element) on the mobile device. The authenticator application associated with the identity server computer could then transmit the public key of the public-private key pair to the identity server computer for storage in association with the digital identity account. The user may have also provided information such as the user's home address, the mobile device identifier of the mobile device, etc., to the identity server computer during the registration process. The user may have also provided authentication data such as a secret or a reference biometric template to the authentication application so that it could be stored on the mobile device (paragraphs [0046]-0050]). After receiving a challenge from the identity server computer, the authentication application may request the user to provide a biometric. The authentication application compares the received biometric with previously stored biometric information. In response to successful authentication the user based on received and stored biometric information, the mobile device and the authentication application may then sign the challenge using the stored private key to generate a signed challenge. The signed challenge may then be transmitted to the identity server computer (paragraphs [0046], [0048], and [0066]).
The prior arts of record fail to either disclose or sufficiently suggest the combination features as claimed and arranged by applicant. Although the above references teach similar aspects of the independent claims 1 and 13, none of these references individually or in reasonable combination discloses all the limitations as claimed in the independent claims and each of these independent claims as a whole is not obvious over these prior arts. Therefore, independent claims 1 and 13 are allowable over the prior arts of record and dependent claims are allowable by virtue of their dependence on the independent claims.
Prior Art of Record
14. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: see attached PTO-892 Notice of References Cited.
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANH T. LE whose telephone number is (571)270-0279. The examiner can normally be reached on Monday-Friday 8:00 am - 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on 571-272-3739. 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). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THANH T LE/Primary Examiner, Art Unit 2495