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 .
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 (i.e., changing from AIA to pre-AIA ) 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 action is in response to the correspondence filed 06/11/2024.
Claims 1-20 are presented for examination.
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 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 is: “hardware configured to…” in claim 12.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is 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 this limitation 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 to avoid it 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 recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 12-20 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.
As to claim 12, claim limitation “hardware configured to…” 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. 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.
As to claims 13-20, claims 13-20 do not cure the deficiency of claim 12 and are rejected under 35 USC § 112 for their dependency upon claim 12.
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.
Claims 1, 2, 5, 6, 9, 10, 12, 13, 16, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0089514 to Werner et al. (hereinafter Werner) (Applicant’s IDS) in view of US 2021/0217001 to Harrison.
As to claims 1 and 12, Werner teaches a computer-implemented method of validating at least one data item provided during an asset transfer event (paragraph 53, a system 100B for validating an authenticity of the asset 110 and a system 100C for updating a nonce 112 of the asset 110), the method implemented by a processing resource, the method comprising: receiving request data from a computing device, the request data comprising: a challenge data structure, where the challenge data structure comprises: a first numerical identifier for the at least one data item (paragraph 54, received nonce); and a representation of the at least one data item (paragraph 54, the received unique identifier); determining the validity of the at least one data item by: determining concurrence between the representation of the at least one data item and a stored data item in a permit data structure associated with the entity by either determining a presence of a corresponding credential in the instruction data set or in the permit data structure (paragraph 54, comparing the received nonce with the previously stored nonce and unique identifier); generating a second numerical identifier for the corresponding credential in the respective instruction data set or permit data structure (paragraph 55, created updated nonce); generating response data comprising: an identifier for the corresponding credential (paragraph 55, transmitted response including unique identifier); the second numerical identifier (paragraph 55, transmitted response including updated nonce); a signature associated with the first numerical identifier and the second numerical identifier (paragraph 55, transmitted response including signed nonce which was also used to sign the initial nonce); and sending the response data to the computing device (paragraph 55, response including the signed nonce and unique identifier).
Werner does not explicitly teach an instruction data set comprising an identifier for an entity associated with the asset transfer event.
However, Harrison teaches an instruction data set comprising an identifier for an entity associated with the asset transfer event (paragraphs 106 and 107, wherein the owner’s name or identifier is included in the validation request).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Werner to include an identifier for an entity associated with the asset transfer event as taught by Harrison in order to prevent the transfer of an asset by a user that does not own the asset or have rights to the asset, therefore optimizing the overall security and integrity of the system.
As to claims 2 and 13, Werner teaches wherein the first numerical identifier and the second numerical identifier are nonces generated for the respective data item or response data (paragraph 55, wherein the created updated nonce is for the response).
As to claims 5 and 16, Werner teaches wherein the representation of the data item comprises at least one alphanumeric sequence of characters (paragraph 88, the unique identifier may be a serial number, a product code, or the like, which is unique to the object from among a plurality of objects; wherein serial numbers include alphanumeric sequences of characters).
As to claims 6 and 17, Werner teaches wherein determining concurrence between the representation of the data item and a stored data item in a permit data structure associated with the entity comprises: obtaining the representation of the data item from the challenge data structure (paragraph 54, the received unique identifier); querying the instruction data set for a credential corresponding to the data item (paragraph 54, query for previously stored nonce with the unique identifier); based on the query, retrieving an identifier corresponding to the credential or querying a permit data structure associated with the identifier for the entity for a credential corresponding to the data item; and based on the query of the permit data structure, retrieving an identifier corresponding to the credential corresponding to the data item (paragraph 54, receiving the previously stored nonce along with the unique identifier for comparing).
As to claim 9, Werner teaches wherein the challenge data structure further comprises an identifier for the challenge data structure and the response data comprises an identifier for the response data structure (paragraphs 54 and 55, wherein the challenge and the response include the unique identifier; wherein without additional elements which further define the identifier, the unique identifier meets the limitations of the claim).
As to claim 10, Werner teaches wherein the identifier for the challenge data structure and the identifier for the response data structure are identical (paragraphs 54 and 55, wherein the challenge and the response include the unique identifier).
As to claim 20, Werner teaches wherein the challenge data structure further comprises an identifier for the challenge data structure and the response data comprises an identifier for the response data structure; and wherein the identifier for the challenge data structure and the identifier for the response data structure are identical (paragraphs 54 and 55, wherein the challenge and the response include the unique identifier; wherein without additional elements which further define the identifier, the unique identifier meets the limitations of the claim).
Claims 3, 4, 11, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Werner in view of Harrison in further view of US 2020/0293646 to Rooyakkers.
As to claims 3 and 14, Werner and Harrison do not explicitly teach wherein a combination of the first numerical identifier and the second numerical identifier is a concatenation of the first numerical identifier and the second numerical identifier.
However, Rooyakkers teaches a combination of the first numerical identifier and the second numerical identifier is a concatenation of the first numerical identifier and the second numerical identifier (paragraph 69, concatenate or otherwise combine the first nonce (NonceA) and the second nonce (NonceB)).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Werner and Harrison to include the method of concatenating the first and second numerical identifiers as taught by Rooyakkers in order to reduce or prevent replay attacks and to help to ensure that the confidential identities are from and intended for the other party.
As to claims 4 and 15, Rooyakkers teaches wherein the second numerical identifier is positioned first in the concatenation of the first numerical identifier and the second numerical identifier (paragraph 69, concatenate or otherwise combine the first nonce (NonceA) and the second nonce (NonceB); wherein without elements which further define the concatenation method and show more than merely adding the first and second numerical identifier, Rooyakkers concatenation still meets the limitation of the claim).
As to claim 11, Werner and Harrison teach each of the claim limitations as discussed above with reference to claim 1, except validating the data item by determining from the response data a presence of a signature of a combination of a second numerical identifier combined with the first numerical identifier.
However, Rooyakkers teaches validating the data item by determining from the response data a presence of a signature of a combination of a second numerical identifier combined with the first numerical identifier (paragraph 71, validating the response including verifying the first signature associated with the first and second nonces (sigB[NonceA∥NonceB])).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Werner and Harrison to include the method of concatenating the first and second numerical identifiers as taught by Rooyakkers in order to reduce or prevent replay attacks and to help to ensure that the confidential identities are from and intended for the other party.
Allowable Subject Matter
Claims 7 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 18 and 19 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Dependent claims 7 and 18 are allowable over the prior art of record, including Werner, Harrison, Rooyakkers and the references cited by the Examiner and the Applicant’s IDS, taken individually or in combination, because the prior art of record fails to particularly disclose, fairly suggest or render obvious wherein the query returns a credential corresponding to the data item if the respective instruction data or permit data structure contains a field containing an identical representation of the data item, in view of the other limitations of their respective independent claims 1 and 12, as to claims 7 and 18;
Dependent claims 8 and 19 are allowable over the prior art of record, including Werner, Harrison, Rooyakkers and the references cited by the Examiner and the Applicant’s IDS, taken individually or in combination, because the prior art of record fails to particularly disclose, fairly suggest or render obvious wherein the query provides a rejection response if the respective instruction data or permit data structure does not contain a field containing an identical representation of the data item, in view of the other limitations of their respective independent claims 1 and 12, as to claims 8 and 19.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALCOLM CRIBBS whose telephone number is (571)270-1566. The examiner can normally be reached Monday-Friday 930a-330p; 430p-630p.
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MALCOLM . CRIBBS
Examiner
Art Unit 2497
/MALCOLM CRIBBS/Primary Examiner, Art Unit 2497