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 .
2. The set of claims 1-20, filed on 12/24/2024, is acknowledged and considered.
Claims 1-4, 6, 8-13, and 15-20 are pending. Claim 1 is the only independent claim.
Claims 5, 7, and 14 are cancelled by Applicant.
Priority
3. PCT/TR2021/051641, filing date 12/30/2021
Response to Arguments
4. Applicant's arguments filed 12/24/2024 have been fully considered but they are not persuasive.
In response to the argument (pg.8) of claim 7, regarding storage of an electronic signature containing the electronic key management infrastructure:
Claim 7 recites “the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates”. Claim 7 (or claim 1 which now incorporates the limitations of claim 7), fails to limit or recite storage of an electronic signature containing the electronic key management infrastructure.
As for Devoret, discloses signature creation device located in the user's local environment and be accessible only by the latter, typically in the form of a cryptographic device (smart card, cryptographic USB token) or software certificate accessible locally from the user's workstation or from his mobile terminal (smartphone, tablet) [Devoret: para 0043]. Further, the user have several signature services, where the user sign with a local signature creation device, from his workstation using a hardware component (smart card) or software (certificate), or to sign from his smartphone while on the move, with a remote signature creation device in the form of a certificate generated on-the-fly. Thus, the certificate accessible locally from the user's workstation or from his mobile terminal suggest a client device (i.e. second client device) stores the signature containing the certificate [Devoret: para 0048]. Thus, Devoret suggest the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates.
In response to the argument (pg.9-10) of claims 5 and 7 incorporated into claim 1:
With regard to claim 7, the response above applies for this argument.
Regarding the argument (pg.10) of the Devoret discussion or cited paragraph ‘does not merely express a general preference for central storage’. The limitations of claims 5 or 7, does not explicitly require a general preference for a central storage.
Furthermore, Follis does not teach away for a person of ordinary skill in the art to comprehend and assess the teachings of the cited prior art. Follis is brought forth to teach the limitation of “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document”. According to the rejection, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Follis with Devoret to teach “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document” for the reason to enable a service to verify that actions surrounding the signing of a document are recorded and associated with the signed document [Follis: para 0025].
As for claim 5, Devoret discloses operations on the user's workstation and also be remote or run in client-server mode in a web browser, or on a smartphone or tablet [Devoret: para 0003]. Devoret further discloses the document or documents to be signed may be located in the local environment of the business application generally on a device of the user and the documents to be signed may also be located in the network environment of the business application (remote DTBS signify the remote data to be signed)] and wherein the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates. [Devoret: para 0041]. As such, the client or user workstation can be in a client-server mode suggest that any client device may also be in the form of a server to provide various service system and data transmission, i.e. document. Whether the certificate is a local, remote, or on the fly type, one of ordinary skilled in the art for storage of the certificate is implicitly implied, as the certificate is not continuously transferred to no end target nor the possibility of being transferred to a device to be deleted without storing. Devoret suggest the limitation “the second client device is a system server device providing the service system and sends the electronic document”.
In response to the argument (pg.11) regarding the Devoret and Follis combination:
The arguments regarding the limitations from claims 5 and 7, are addressed above.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the combination of Devoret and Follis complies with the 103 rejection where motivation provides the solution and end result for what Devoret fails to clearly teach. The limitation of concern is not part of the argument that is with regard to the storage of the signature containing the certificate. Follis is brought forth to teach the limitation of “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document”. According to the rejection, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Follis with Devoret to teach “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document” for the reason to enable a service to verify that actions surrounding the signing of a document are recorded and associated with the signed document [Follis: para 0025].
In response to the argument (pg.12-13) regarding the Devoret and Follis combination suggest “a system memory unit…containing the electronic certificates”:
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Follis is brought forth to teach the limitation of “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document”. As for Devoret, discloses the document or documents to be signed may be located in the local environment of the business application generally on a device of the user and the documents to be signed may also be located in the network environment of the business application (remote DTBS signify the remote data to be signed)] and wherein the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates. [Devoret: para 0041]. As such, the client or user workstation can be in a client-server mode suggest that any client device may also be in the form of a server to provide various service system and data transmission, i.e. document. Whether the certificate is a local, remote, or on the fly type, one of ordinary skilled in the art for storage of the certificate is implicitly implied, as the certificate is not continuously transferred to no end target nor the possibility of being transferred to a device to be deleted without storing.; signature creation device located in the user's local environment and be accessible only by the latter, typically in the form of a cryptographic device (smart card, cryptographic USB token) or software certificate accessible locally from the user's workstation or from his mobile terminal (smartphone, tablet) [Devoret: para 0043]. A user have several signature services, where the user sign with a local signature creation device, from his workstation using a hardware component (smart card) or software (certificate), or to sign from his smartphone while on the move, with a remote signature creation device in the form of a certificate generated on-the-fly [Devoret: para 0048]. Thus, the certificate accessible locally from the user's workstation or from his mobile terminal suggest a client device (i.e. second client device) stores the signature containing the certificate. As such, Devoret suggest the limitation of “a system memory unit configured to store the electronic signature containing the electronic certificates”.
Claim Rejections - 35 USC § 103
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.
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.
5. Claim(s) 1-4, 6, 8-13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Devoret, et al. [US 20190097811] further in view of Follis [US 20160048696].
As per claim 1: Devoret, et al. teaches a mobile electronic signature system, comprising
a first client device with a mobile application installed, wherein the mobile application provides an access to at least one service system via an internet-accessible network server; [Devoret: para 0012-0014; the remote signature creation device is located in the network environment of the signature manager and contains a certificate generated on-the-fly and in that the private key associated with on-the-certificate is generated and securely stored by the signature servers. Para 0039; FIG. 1 comprises a business application that can be developed and executed in various environments such from a mobile phone or tablet. See also more examples of signature service on para 0043, 0047]
a signature server, wherein the signature server provides an electronic signature containing at least one electronic certificate transmitted to the mobile application when the first client device accesses the service system; and [Devoret: para 0043; the private key associated with said certificate on-the-fly of the user is generated and securely stored by the signature servers. Each signature can generate a “certificate on-the-fly”]
a second client device, wherein the second client device receives an electronic document transmitted from the signature server to the first client device; [Devoret: para 0047-0048; A signature service is a universal personal application allows the user to control the execution of the signature process, namely the activation of the private key corresponding to one of the certificates of the user meeting the selection criteria sent to the signature manager by the business application. Also has the ability to sign from his smartphone while on the move, with a remote signature creation device in the form of a certificate generated on-the-fly. Only if the security level of the certificate on-the-fly complies with the requirements formulated in the signature request sent by the business application to the signature manager]
wherein the signature server is configured to send a signed electronic document and a time stamp [Devoret: para 0003, 0049] containing the electronic certificate when the electronic signature is added to the electronic document in the first client device, wherein [Devoret: para 0039; The business application is at the origin of the signature process, thus, any request for signature, whether made at the initiative of the signatory user himself, or whether it is done by a third party (other user) to have a document signed, must necessarily go through this business application]
the signature server is configured to verify a signature file from the first client device to provide an appropriate identity verification on according to the electronic certificate, and the signature server queries an electronic signature authority in the signature file by accessing at least one signature circuit containing electronic signature permissions [Devoret: para 0038-0040; The distinction between a signature made at the initiative of the user or solicited by a third party (other user) is essential. It necessarily implies a preparation related to the choice of the document, its drafting, the selection of the digital identity and its implementation, to the possible signature policy to apply, etc. The signature manager process a signature request of the business application and coordinate its execution by verification of the identity and the authorization of the business application, taking into account the request, identification of the signing user, recovery of the document to sign indicated by the business application, preparation of the signature request with the fingerprint calculation of the data to be signed, via a signature server, and provide the results of operations to the business application] suitable for signature certificates recorded in a server memory unit [Devoret: para 0042-0043; After the recovery of the document(s) to be signed by the signature manager, it prepares the request(s) signature(s) with fingerprint calculations of the data to sign, namely the contents of the document (s) as well as the properties. These fingerprint calculations of the data are performed either by a signature server or by an inverse signature server. The private key associated with certificate on-the-fly of the user is securely stored by the signature servers], **and the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document; [**rejected under a secondary reference, discussion below] the second client device comprises a mobile service and is configured to send the signature file through the signature server upon determining a success at the verification process [Devoret: para 0049; The signature manager is able to recover the signature(s) once they have been performed and make available to the business application the result of the operations performed or errors possibly encountered. All the steps of the signature operations managed by the signature manager are written in logs that are time stamped and archived to form a complete and secure proof file for each signature transaction]; the second client device is a system server device providing the service system and sends the electronic document; [Devoret: para 0003; the environment of these operations is sometimes on the user's workstation, but can also be remote or run in client-server mode in a web browser, or on a smartphone or tablet. According to prior art, the client or user workstation may be in a client-server mode, thus, suggest that any client device may be in the form of a server to provide various service system and data transmission, i.e. document. Para 0041; The document or documents to be signed may be located in the local environment of the business application generally on a device of the user and the documents to be signed may also be located in the network environment of the business application (remote DTBS signify the remote data to be signed)] and wherein the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates. [Devoret: para 0043; signature creation device located in the user's local environment and be accessible only by the latter, typically in the form of a cryptographic device (smart card, cryptographic USB token) or software certificate accessible locally from the user's workstation or from his mobile terminal (smartphone, tablet). Para 0048; A user have several signature services, where the user sign with a local signature creation device, from his workstation using a hardware component (smart card) or software (certificate), or to sign from his smartphone while on the move, with a remote signature creation device in the form of a certificate generated on-the-fly. Thus, the certificate accessible locally from the user's workstation or from his mobile terminal suggest a client device (i.e. second client device) stores the signature containing the certificate]
Devoret discusses verification process involve the signature manager process a signature request of the business application and coordinate its execution by verification of the identity and the authorization of the business application, taking into account the request, identification of the signing user, recovery of the document to sign indicated by the business application, preparation of the signature request with the fingerprint calculation of the data to be signed, via a signature server, and provide the results of operations to the business application [Devoret: para 0038-0040]. However, Devoret did not clearly teach “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document”.
Follis teaches allowing users to generate documents according to attestation requirements and other requirements wherein as stipulated by an attestation requirement, an attestation clause can be appended to a document to be signed so that the signatures in the executed document can be verified [Follis: para 0017]. Follis’s invention further enable an organization to instruct an electronic signature service to allow or require real time proceedings of document signing, optionally designate a witness, have those instructions enforced, and be presented with a recording. In this way, the service enables a user to verify that actions surrounding the signing of a document are recorded and associated with the signed document [Follis: para 0025]. Follis includes a service provider to implement an electronic signature service on the server for facilitating the generation of the document to be signed [Follis: para 0045]. There document-related information include document information when the user is a sender and document information when the user is a signer. Follis further discusses the document module may use the signed documents database when auditing a signed document such as, for example, an executed contract. For example, by comparing an executed contract from the signed documents database to a corresponding contract from the received documents database or from the generated documents database, the document module determine changes made to the contract and store these changes in an audit trail in the document audit database. The databases are stored on a storage device internal to the server that hosts the electronic signature service or on a storage device accessible to the electronic signature service over a network [Follis: para 0096]. As such, where one would be motivated to enable an organization to instruct an electronic signature service to allow or require real time proceedings of document signing, where the service enables a user to verify actions surrounding the signing of a document are recorded and associated with the signed document. Thus, Follis a service provider to implement an electronic signature service on the server for facilitating the generation of the document to be signed and verify actions surrounding the signing of a document are recorded and associated with the signed document obviously suggest “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document”.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Follis with Devoret to teach “the signature server conducts a verification process, wherein the verification process provides a query about changes made with an addition of the electronic signature by comparing the electronic document with the signed electronic document” for the reason to enable a service to verify that actions surrounding the signing of a document are recorded and associated with the signed document [Follis: para 0025].
Claim 2: Devoret: para 0039 [The architecture of the system comprises application with execution from a mobile phone/tablet]; discussing the mobile electronic signature system according to claim 1, wherein the first client device is a mobile device having a mobile memory unit and a processing unit connected to provide bidirectional data flow with the mobile memory unit.
Claim 3: Devoret: para 0074 [a signature server with generation certificate]; discussing the mobile electronic signature system according to claim 2, wherein the mobile memory unit is configured to store the electronic certificates received from the signature server in the first client device.
Claim 4: Devoret: para 0014, 0038; discussing the mobile electronic signature system according to claim 2, wherein the processing unit is configured to enable reading and writing of data in the mobile memory unit.
Claim 5: Cancelled
Claim 6: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 1, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 7: Cancelled
Claim 8: Devoret: para 0039-0041; discussing the mobile electronic signature system according to claim 2, wherein the second client device is a system server device providing the service system and sends the electronic document.
Claim 9: Devoret: para 0039-0041; discussing the mobile electronic signature system according to claim 3, wherein the second client device is a system server device providing the service system and sends the electronic document.
Claim 10: Devoret: para 0039-0041; discussing the mobile electronic signature system according to claim 4, wherein the second client device is a system server device providing the service system and sends the electronic document.
Claim 11: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 2, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 12: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 3, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 13: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 4, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 14: Cancelled
Claim 15: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 8, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 16: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 9, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 17: Devoret: para 0058 [writing of all the steps of the signature transaction in timestamped logs or else the timestamp of the electronic signatures generated]; discussing the mobile electronic signature system according to claim 10, wherein the verification process is configured to be recorded in the server memory unit, comprising a timestamp.
Claim 18: Devoret: para 0043, 0057; discussing the mobile electronic signature system according to claim 8, wherein the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates.
Claim 19: Devoret: para 0043, 0057; discussing the mobile electronic signature system according to claim 9, wherein the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates.
Claim 20: Devoret: para 0043, 0057; discussing the mobile electronic signature system according to claim 10, wherein the second client device comprises a system memory unit configured to store the electronic signature containing the electronic certificates.
Conclusion
THIS ACTION IS MADE FINAL. 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 Leynna Truvan whose telephone number is (571)272-3851. The examiner can normally be reached Monday-Friday 9:00AM-5:00PM, EST.
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Leynna Truvan
Examiner
Art Unit 2435
/L.TT/Examiner, Art Unit 2435
/EDWARD ZEE/Primary Examiner, Art Unit 2435
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