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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/17/2025 has been entered.
Response to Amendment
This Office action is in response to amendment/reconsideration filed on 12/17/2025, the amendments have been considered. Claims 16, 21, and 29 have been amended. Claims 1-15 and 22 have been previously canceled. Claims 31-34 are newly added. Claims 16-21 and 23-34 are pending for examination, the rejection cited as stated below.
Response to Arguments
Applicant’s arguments, filed 12/17/2025, with respect to the Claim Objection of Claims 16 and 29 have been fully considered and are persuasive. The Claim Objection of Claims 16 and 29 has been withdrawn.
Applicant’s arguments with respect to claims 16 and 29 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 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 limitation(s) is/are:
“the user verification element is configured to transmit…”
“the security element is configured to compare…”
in claim 29,
“the device is configured to carry out…”
in claim 30,
“the broker application is configured to permit…”
in claim 31,
“the verification controller is configured to receive…”
in claim 31,
“the verification controller is configured to transmit…”
in claim 31.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof (Specification of instant application, Fig 1, Paragraphs 039-040, 067-071).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 16-21, and 23-34 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sishan Wang (EP 3941014 A1), hereinafter “Wang”.
Regarding Claim 16, Wang discloses a method for authorizing an application installed on a security element, comprising the following steps:
transmitting authorization information from a user verification element to the security element (Wang, Paragraph 0103, user identity authentication information is stored in the secure element by having the user identity authentication information written to a broker applet in the secure element);
comparing the authorization information with at least one requirement from a list on the security element (Wang, Paragraphs 0121-0123, verifying whether the user authentication identification information is valid by using different checks),
wherein when comparing a check is carried out in order to determine whether the authorization information concerns a security-related status, including a positive user verification status (Wang, Paragraph 0121, since the service response message includes the user identity authentication information, the terminals will determine the verification data);
and selecting the application on the security element and/or performing a transaction by means of the application, provided that the authorization information meets the requirements from the list (Wang, Paragraph 0134, performing service instructions (i.e., performing a transaction) with a digital key application, like sending a communication from the mobile phone to a vehicle in order to unlock a vehicle door),
wherein the security element is a chip card, smart card, eSE, and/or an eUICC card (Wang, Paragraph 0089, existing secure element can be used, for example, an embedded secure element (eSE), as an inSE secure module integrated into a main chip of a mobile, and a universal integrated circuit card secure element).
Regarding Claim 17, Wang discloses the method according to claim 16 above, comprising the step of providing a device which comprises the security element and the user verification element (Wang, Paragraph 0134, second terminal is a mobile phone).
Regarding Claim 18, Wang discloses the method according to claim 16 above, comprising the step of transmitting authorization information from at least one further user verification element to the security element, wherein the at least one further user verification element is provided separately from a device which comprises the security element (Wang, Paragraph 0091, second key pre-agreed with the first terminal is used to generate second verification data).
Regarding Claim 19, Wang discloses the method according to claim 16 above, wherein the list is provided as a blacklist or protection trigger list (Wang, Paragraphs 0121-0124, security policy is used to determine if the service instruction can be authorized. Paragraph 0165, user identity authentication result needs to conform also to sub-rules in the rules).
Regarding Claim 20, Wang discloses the method according to claim 16 above, wherein a check is carried out in connection with the step of comparing in order to determine whether the application is recorded in an application identifier list (Wang, Paragraph 0104, broker is used by the applets in order to provide the necessary information to perform functions).
Regarding Claim 21, Wang discloses the method according to claim 16 above, wherein the broker application installed on the security element stores the authorization information and carries out the steps of comparing and selecting and/or performing (Wang, Paragraph 0104, broker centrally provides the user identity authentication information for all applets in the secure element, so that the user identity authentication information can be used by every applet on the terminal).
Regarding Claim 23, Wang discloses the method according to claim 16 above, wherein the user verification status is generated by means of a biometric sensor (Wang, Paragraph 0224, authentication system also performs identity authentication on a user by collecting a password, a bio-metric feature, or the like of the user).
Regarding Claim 24, Wang discloses the method according to claim 23 above, wherein the biometric sensor is provided as a component of the user verification element (Wang, Paragraph 0224, bio-metric feature is used on the terminal device).
Regarding Claim 25, Wang discloses the method according to claim 23 above, wherein, following the selection of the application and/or the performance of the transaction, the user verification status is reset so that a further selection and/or performance of a transaction requires a user verification (Wang, Paragraph 0168, 0182, performing identity authentication again based on terminal reentering non-preset operating state).
Regarding Claim 26, Wang discloses the method according to claim 16 above, wherein the authorization information is transmitted in encrypted form (Wang, Paragraph 0114, encryption mechanisms are used for verification data).
Regarding Claim 27, Wang discloses the method according to claim 16 above, wherein the transaction is performed in a contactless manner by means of the security element (Wang, Paragraphs 0109,0169, exchanging information via NFC module).
Regarding Claim 28, Wang discloses the method according to claim 16 above, wherein the transaction that is performed is an authentication transaction, a payment transaction and/or an access control transaction (Wang, Paragraph 0073, using the mobile phone in order to make a payment. Paragraph 0169, using the NFC of the phone in order to communicate with the handlebar of the vehicle so that the user can unlock the door that is locked).
Claim 29 carries similar limitations as discussed with regards to Claim 16 above and therefore is rejected for the same reason.
Regarding Claim 30, Wang discloses the device according to claim 29 above, wherein the device is configured to carry out a method for authorizing an application installed on a security element (Wang, Paragraph 0073, using the mobile phone in order to make a payment. Paragraph 0169, using the NFC of the phone in order to communicate with the handlebar of the vehicle so that the user can unlock the door that is locked), comprising the following steps:
transmitting authorization information from a user verification element to the security element (Wang, Paragraph 0103, user identity authentication information is stored in the secure element by having the user identity authentication information written to a broker applet in the secure element);
comparing the authorization information with at least one requirement from a list on the security element (Wang, Paragraphs 0121-0123, verifying whether the user authentication identification information is valid by using different checks);
and selecting the application on the security element and/or performing a transaction by means of the application, provided that the authorization information meets the requirements from the list (Wang, Paragraph 0134, performing service instructions (i.e., performing a transaction) with a digital key application, like sending a communication from the mobile phone to a vehicle in order to unlock a vehicle door).
Regarding Claim 31, Wang discloses the method according to claim 16 above, wherein the broker application is configured to permit or prevent access to one or more JavaCard applets and/or Quick Visa Smart Debit/Credit (qVSDC) applications installed on the security element (Wang, Paragraph 0098, digital key applet can be authorized or failed authorization based on user identity authentication result).
Regarding Claim 32, Wang discloses the method according to claim 16 above, wherein transmitting authorization information comprises transmitting authorization information from a verification controller to the broker application, wherein the verification controller is configured to receive a user verification status from the user verification element and to transmit the user verification status as the authorization information to the broker application (Wang, Paragraph 0104, using broker in order to provide the user identity authentication information for all applets in the secure element. Paragraph 0218, verifying the user identity authentication information).
Regarding Claim 33, Wang discloses the method according to claim 32 above, wherein the verification controller is connected to the broker application via a cryptographically secured link (Wang, Paragraphs 0113-0114, encryption mechanism is being used for the key that is used for authentication purposes).
Regarding Claim 34, Wang discloses the method according to claim 32 above, wherein the broker application is pre-personalized by personalization data which comprises a cryptographic key set for securing the transmitting of the authorization information (Wang, Paragraph 0083, using identity authentication means, like personal identification number, fingerprint, iris, bone conduction, and behavior-based authentication. Paragraph 0104, broker provides the user identity authentication information for all applets in the secure elements. Paragraph 0105, fingerprint image is pre-stored).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All the references listed on 892 are related to the subject matter of authorizing application transactions.
Some of the prior art include:
US 20220012718 A1, US 20130065564 A1, and US 20110002461 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER O GUZMAN whose telephone number is (571)270-0588. The examiner can normally be reached Monday - Friday 8 am to 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian J Gillis can be reached at 571-272-7952. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAVIER O GUZMAN/ Primary Examiner, Art Unit 2446