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 .
Response to Amendment
Applicant’s amendment, filed 04/17/2026, has been entered and fully considered.
In light of Applicant’s amendment, the restriction requirement, filed 02/17/2026, has been withdrawn and all claims are being examined.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/18/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Because Applicant amended claims to traverse the restriction requirement, the restriction requirement, filed 02/17/2026, has been withdrawn. Claims 1-15 are being examined.
Drawings
The drawings are objected to under 37 CFR 1.83 because, for Fig. 3-4, mere numerical and abbreviated references on abstract boxes do not sufficiently aid in the understanding of the invention; descriptive labels are required. The objected labels or reference numerals include: 801, 802, 200, 901, etc.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 224 and 332 of FIG. 4.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8, line 12 should recite “…with the service certificate; and” to make clear that the claim recites “a device comprising: … a processor configured to: …; and an internal registry entity configured to: …” to ensure that claims are in one sentence form.
Appropriate correction is required.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
With respect to claim 12, it recites the “the service certificate is an initial device identifier, generated in accordance with IEEE 802.1AR” limitation. In this instance, there is no disclosure for the service certificate being an initial device identifier. Paragraph [0043] of the specification discloses “generates a service certificate, 190 and a matching device certificate, such as an IEEE 802.1AR Initial Device Identifier iDevID, 110, or 1DevID (locally significant Device Identifier) for the application entity”. Therefore, the specification discloses that the device certificate may be an IEEE 802.1AR Initial Device Identifier, not that the service certificate may be an IEEE 802.1AR Initial Device Identifier. Thus, the specification does not provide proper antecedent basis for the claimed subject matter.
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 recites “an internal registry entity” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
Claim 8 recites “an internal registry entity configured to: identify … transfer…”
A) Generic placeholder/Non-structural term: “entity”
B) Functional language: “identify”, “transfer” and Linking phrase: “configured to”
C) Modified by sufficient structure: “registry”. Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a registry is a data structure comprising records of information.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-15 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 1 recites the limitation "the provision" in line 18.
Claim 8 recites the limitation “the service certificate” in line 12.
Claim 8 recites the limitation “the provision” in lines 8 and 18.
Claim 8 recites the limitation “the application” in line 17.
Claim 11 recites the limitation “the provision entity” in line 2.
Claim 12 recites the limitation “the service certificate” in line 1.
There is insufficient antecedent basis for these limitation in the claims.
Claims 2-7, 9-10, 13-15 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim Rejections - 35 USC § 101
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.
Claims 8-12, 14-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. With respect to claim 8, the claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the BRI of a processor and an internal registry entity can encompass non-statutory transitory forms of products that do not have a physical or tangible form, such as a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations. See MPEP 2106.03(I). Dependent claims inherit the deficiencies of their parent claims. The Examiner suggest reciting hardware processor, or memory coupled to a processor, etc.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite processing an executable instance on a device, comprising: “has a uniquely identifiable executable instance of the service…”, “executable at the workflow control environment…”, “simultaneously receive a device certificate…”, “identify itself to the instance of the service…”, “transfer an application instance certificate into the application…”, which are directed to the abstract idea of mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that claims 1-7, 13 are directed to one of the four statutory categories.
The Examiner finds that claims 8-12, 14-15 are not directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of processing an executable instance on a device, comprising: “has a uniquely identifiable executable instance of the service…”, “executable at the workflow control environment…”, “simultaneously receive a device certificate…”, “identify itself to the instance of the service…”, “transfer an application instance certificate into the application…”, which are directed to the abstract idea of mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that claim features of: “has a uniquely identifiable executable instance of the service…”, “executable at the workflow control environment…”, “simultaneously receive a device certificate…”, “identify itself to the instance of the service…”, “transfer an application instance certificate into the application…” does not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead, the claim features of processing an executable instance on a device merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g., processor, server component) that serves to perform generic computer functions (e.g., receiving, identifying, transferring) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed executable instance, service certificate, device certificate, application instance certificate, protected information, license information are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
Rather, the claims are merely directed towards the abstract idea of processing an executable instance on a device, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality.
For example, having an executable instance of the service, identify itself to the instance of the service, transfer an application instance certificate, license information determines functionality of the service, transporting an application instance, being part of a directory service, generating a service certificate, including address information, using TLS, creating a further device certificate, transferring the further device certificate, having a common provision entity which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Similarly, storing device certificates, supplying necessary certificates, appending license information is merely storing, updating and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Further note that the abstract idea of processing an executable instance on a device to which the claimed invention is directed has a prior art basis outside of a computing/technological environment, e.g., performing a task that requires credential verification for a person performing the task and credential verification for tools used to perform the task.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it affect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 7-8, 10-11, 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanders (USP App Pub 2013/0254125).
Regarding claim 8, A device for secure execution of a service provided by a central provision entity for execution on request by a service user (Sanders: abstract, “A computer system enables a computing device to execute a registered software application even though the registered software application is not registered to the computing device”), wherein the device has a uniquely identifiable executable instance of the service (Sanders: paragraph [0063], “the computing device 120a may contain or otherwise have access to: (1) a copy 104a' of application instance 104a (or data derived therefrom, such as an installed version of application instance 104a resulting from running an installation executable program for application instance 104a)”), wherein the uniquely identifiable executable instance of the service is assigned at least one server component (Sanders: FIG. 3, application instance record 314a) in each case that is formed by a workflow control component (Sanders: paragraph [0092], “assuming that the request 326 specifies the application instance 104a' and corresponding unique application instance ID 324a, the streaming server 310 may create application instance record 314a”) that is loadable into a workflow control environment and executed at the workflow control environment (Sanders: paragraph [0092], “the application instance record 314a contains data sufficient to enable the streaming server 310 to execute and stream the application instance copy 316a”), and an instance of the service is supplied with and inseparably linked to a unique service certificate assigned to the instance of the service during the provision (Sanders: paragraph [0086], “if the application instance A is application instance 104a', then the streaming client 302a may obtain a unique ID 324a of the application instance 104a'”; FIG. 3, unique instance ID 324A is linked to application instance 104a’), so that the uniquely identifiable service instance is created (Sanders: paragraph [0096], “the user may use the streaming server 310 to execute one or more application instances associated with the user's account on the streaming server, and to stream such executing application instances to one or more of the user's computing devices”), the device comprising:
a processor configured to:
simultaneously receive a device certificate that is also unique and associated with the service certificate (Sanders: paragraph [0088], “The streaming client 302a may send, to the streaming server 310 over the network 110… The request 326 may include, for example, one or more of the following:”; paragraph [0090], “the unique application instance ID detected in operation 406 (e.g., unique application instance ID 324a)”; paragraph [0091], “the unique computing device ID detected in operation 402 (e.g., unique computing device ID 322)”);
an internal registry entity (Sanders: paragraph [0073], “the computing device 120a transmits an execution authorization request 164 to the registration server 150 over the network 110”) configured to:
identify itself to the instance of the service (Sanders: paragraph [0074], “In response to receiving the request 164, the registration server 150 determines whether the application instance 104a' is authorized to execute on the computing device 120a (e.g., whether the application instance 104a' is registered to the computing device 120a) (FIG. 2B, operation 268)”; paragraph [0075], “the registration server 150 may locate the registration record 152a that is associated with the application instance 104a' by searching the application instance data 154a-c for a unique application instance ID that matches the unique application instance ID 166a in the authorization request 164”) with the associated device certificate (Sanders: paragraph [0073], “the execution authorization request 164 may include one or both of: (1) unique ID data 166a, such as a copy of the unique ID data 144b' stored at the computing device 120a in association with the application instance 104a'; and (2) a computing device ID 166”); and
after verification by the service certificate, transfer an application instance certificate into the application (Sanders: paragraph [0076], “The computing device 120a receives the authorization response 168 (FIG. 2, operation 274) and determines whether the response 168 indicates that the application instance 104a' is authorized to execute on the computing device 120a”), which contains protected information (Sanders: paragraph [0081], “each of the user accounts 312a-c contains: (1) data indicating which application instances each of the users 130a-c of the system 300 is authorized to execute; and (2) data enabling the server 310 to execute each such application instance on behalf of the corresponding user”) required to continue to carry out the provision of the service (Sanders: paragraph [0077], “the computing device 120a allows the application instance 104a' to execute on the computing device 120a (FIG. 2B, operation 280), such as by performing any one or more of the following: executing the application instance 104a', providing the user 130a with access to some or all features of the application instance 104a'”),
wherein the unique service certificate, the device certificate, or the unique service certificate and the device certificate (Sanders: paragraph [0054], “the application instance data 154a may include one or both of the application ID 144a and the unique ID 144b”) are supplemented by license information (Sanders: paragraph [0087], “the application instance data 154a-c contain license keys, then the unique IDs 324a-b obtained by the streaming client 302a may also be license keys of application instances 104a' and 106a'”), wherein the license information determines functionality of the service instance (Sanders: paragraph [0040], “the user 130a provides input 140c representing what the user purports to be the unique identifier (e.g., license key)”; paragraph [0043], “to allow the user 140c to install or otherwise execute the application instance 104a on the computing device 120a only if the unique ID input 140c represents the unique ID associated with the application instance 104a”) and is stored on the device in a dedicated license information store (Sanders: paragraph [0087], “The unique IDs 324a-b may be of the same type as the unique IDs that are stored in the application instance data 154a-c in the registration records 152a-c on the registration server 150”).
Re. claim 1, it recites analogous limitations as claim 8 and therefore is rejected for the same reasons.
Regarding claim 5, Sanders teaches the method of claim 1, wherein
the license information is appended to the device certificate (Sanders: paragraph [0087], “the application instance data 154a-c contain license keys, then the unique IDs 324a-b obtained by the streaming client 302a may also be license keys of application instances 104a' and 106a'”; FIG. 1B, application instance data 154 is appended to device ID 156) as a user extension (Sanders: paragraph [0040], “the user 130a provides input 140c representing what the user purports to be the unique identifier (e.g., license key)”).
Regarding claim 7, Sanders teaches the method of claim 1, wherein
when verifying the license information (Sanders: paragraph [0043], “to allow the user 140c to install or otherwise execute the application instance 104a on the computing device 120a only if the unique ID input 140c represents the unique ID associated with the application instance 104a”), the device certificate (Sanders: paragraph [0085], “The streaming client 302a detects a unique ID 322 (e.g., IP address and/or MAC address) of the computing device 120a on which the streaming client 302a is executing (FIG. 4, operation 402)”) and the unique service certificate (Sanders: paragraph [0086], “The streaming client 302a may obtain a unique ID (e.g., license key) of the application instance A (FIG. 4, operation 406)”) have a common certificate-issuing provision entity (Sanders: FIG. 3-4, both device ID 322 and application instance ID are obtained/issued from computing device 120a) and a same biunique address (Sanders: paragraph [0044], “uniquely identifies the computing device 120a, such as an Internet Protocol (IP) address of the computing device 120a” i.e., the computing device 120a has a unique IP address, and both device ID 322 and application instance ID are obtained/issued from computing device 120a).
Regarding claim 10, Sanders teaches the device of claim 8, wherein the internal registry entity (Sanders: paragraph [0073], “the computing device 120a”) is part of a directory service (Sanders: paragraph [0053], “the registration server 150 may create and store a registration record 152a”; paragraph [0065], “registration record 152a includes … computing device ID data 156a representing a computing device (e.g., computing device 120a) to which the first application instance is registered” i.e., a directory service is a system that stores and manages information about connected devices).
Regarding claim 11, Sanders teaches the device of claim 8, wherein
the application instance is transported from the provision entity (Sanders: paragraph [0092], “streaming server 310 to execute and stream the application instance copy 316a”) to the device (Sanders: paragraph [0106], “The streaming server 310 streams the executing application instance 316a to the streaming client 302a”; FIG. 5, computing device 120a includes streaming client 302a) via secure communication (Sanders: paragraph [0156], “secure methods for exchanging software application instances among users”; paragraph [0106], “streaming the application involves exchanging streaming input/output 522 between the streaming server 310 and streaming client 302a”).
Regarding claim 13, Sanders teaches the method of claim 1, wherein
the protected information (Sanders: paragraph [0081], “each of the user accounts 312a-c contains: (1) data indicating which application instances each of the users 130a-c of the system 300 is authorized to execute; and (2) data enabling the server 310 to execute each such application instance on behalf of the corresponding user”) required to continue to carry out the provision of the service (Sanders: paragraph [0077], “the computing device 120a allows the application instance 104a' to execute on the computing device 120a (FIG. 2B, operation 280), such as by performing any one or more of the following: executing the application instance 104a', providing the user 130a with access to some or all features of the application instance 104a'”) includes correct address information (Sanders: paragraph [0103], “To overcome this problem and enable the application instance 316a to execute on the streaming server 310, even though the streaming server 310 is not the computing device 120a to which the application instance 316a is registered, the server 310 may mimic, when executing the application instance 316a, the unique ID (e.g., IP address and/or MAC address) of the computing device to which the application instance 316a is registered”).
Re. claim 14, it recites analogous limitations as claim 13 and therefore is rejected for the same reasons.
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.
Claim(s) 2, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders in view of Stevens, JR. et al. (USP App Pub 2015/0381368; hereinafter Stevens).
Regarding claim 2, Sanders teaches the method of claim 1, wherein
…the device certificates including the device certificate (Sanders: FIG. 3, Device ID 322; paragraph [0085], “The streaming client 302a detects a unique ID 322 (e.g., IP address and/or MAC address) of the computing device 120a on which the streaming client 302a is executing”).
Sanders does not teach … device certificates assigned to the device are stored in a device certificate store on the device,…
However, in the same field of endeavor, Stevens does teach … device certificates assigned to the device are stored in a device certificate store on the device (Stevens: paragraph [0020], “the device ID 126 and the device key 128 may be stored in dedicated firmware of the configuration engine 124”),…
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device ID of Sanders to incorporate the teachings of Stevens to use dedicated storage for the device ID. The motivation for doing so is so that “Both the device ID 126 and the device key 128 may be stored in secure storage that is accessible to the I/O subsystem 120 but not to other components of the target computing device 102 such as the processor 130” (Stevens: paragraph [0020]).
Re. claim 9, it recites analogous limitations as claim 2 and therefore is rejected for the same reasons.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders in view of Gajjala et al. (USP App Pub 2018/0062860; hereinafter Gajjala).
Regarding claim 4, Sanders teaches the method of claim 1, wherein…
Sanders does not teach …additional functions of the service are suppliable with necessary certificates and information.
However, in the same field of endeavor, Gajjala does teach …additional functions (Gajjala: paragraph [0011], “activating developer hardware capabilities to convert the secure device into a development capable hardware device”; paragraph [0038], “Certificate 216 may include key 224, which interacts with security processor 202 to transform and/or convert hardware capabilities 210”) of the service are suppliable with necessary certificates and information (Gajjala: paragraph [0025], “developer mode activation component 116 sends a request to certificate generation component 118 to generate a cryptographically signed certificate, including a key, to activate developer mode capabilities on the associated secure device”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the service activation of Sanders to incorporate the teachings of Gajjala to use additional certificates to activate new capabilities. The motivation for doing so is so that the certificate can define permissions levels for the new capabilities (Gajjala: paragraph [0044], “a certificate defining permissions level for development capabilities”).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders in view of Carbone et al. (USP App Pub 2004/0015962; hereinafter Carbone).
Regarding claim 6, Sanders teaches the method of claim 1, further comprising: …
Sanders does not teach …creating, in the central provision entity, a further device certificate with updated license information; and transferring the further device certificate to the device so that the functionality of the service instance of the application running on the device is changeable.
However, in the same field of endeavor, Carbone does teach … creating, in the central provision entity, a further device certificate with updated license information (Carbone: paragraph [0033], “The method then enters block 354 (both from block 348 and from block 351), wherein a new version of the local license certificates for the basic programs is generated from the respective license certificates stored on the server workstation”); and
transferring the further device certificate to the device (Carbone: paragraph [0033], “The new version of the local license certificates is sent from the licensing management application to the full-function agent on the client workstation”) so that the functionality of the service instance of the application running on the device is changeable (Carbone: paragraph [0044], “the local license certificates are continually replaced with the respective new versions (received from the server workstation) after each bootstrap”; paragraph [0020], “The license certificate 225 includes an identifier of the certificate, an identifier of a publisher of the program, conditions of use of the program as authorised by the publisher, and exceptional conditions of use (outside the authorised ones) under which the program can still run”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the license component of Sanders to incorporate the teachings of Carbone to update the license information to modify functionality of the system. The motivation for doing so is to “this ensures that the local license certificates stored on the client workstation are always up to date” (Carbone: paragraph [0044]).
Claim(s) 3, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders in view of Ochmanski et al. (USP App Pub 2017/0099148; hereinafter Ochmanski).
Regarding claim 12, Sanders teaches the device of claim 8, wherein
the service certificate (Sanders: paragraph [0088], “the unique application instance ID detected in operation 406 (e.g., unique application instance ID 324a)”)…
Sanders does not teach …is an initial device identifier, generated in accordance with IEEE 802.1AR.
However, in the same field of endeavor, Ochmanski does teach …is an initial device identifier, generated in accordance with IEEE 802.1AR (Ochmanski: paragraph [0022], “the device identity is derived from the IEEE 802.1AR (also known as IDevID or LDevID) standard”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the ID of Sanders to incorporate the teachings of Ochmanski to use an IEEE 802.1AR device identifier. The motivation for doing so is because “the IEEE 802.1AR standard allows for the creation of a digital signature based on a private key so that the client application will use the services of the identity service in the device to prove that it is the device” (Ochmanski: paragraph [0038]).
Re. claim 3, it recites analogous limitations as claim 12 and therefore is rejected for the same reasons.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanders in view of Gao et al. (USP App Pub 2017/0134474; hereinafter Gao).
Regarding claim 15, Sanders teaches the device of claim 11, wherein…
Sanders does not teach …the secure communication is via transport layer security (TLS).
However, in the same field of endeavor, Gao does teach … the secure communication is via transport layer security (TLS) (Gao: paragraph [0053], “the computing device 1100 communicates with other computing devices 1100′ via any type and/or form of gateway or tunneling protocol e.g. Secure Socket Layer (SSL) or Transport Layer Security (TLS)”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the streaming I/O of Sanders to incorporate the teachings of Gao to use TLS. The motivation for doing so is to have an encrypted protocol for transmitting data (Gao: paragraph [0053], “tunneling protocol e.g. Secure Socket Layer (SSL) or Transport Layer Security (TLS)”) i.e., it is well known and common knowledge in the art that TLS is a secure encryption protocol).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADITYA SRIRAM whose telephone number is (703)756-1715. The examiner can normally be reached Su-Sa: 9:00 AM - 11:59 AM PST and 1:00 PM - 8 PM PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Korzuch can be reached at (571) 272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.S./ Examiner, Art Unit 2491
/WILLIAM R KORZUCH/ Supervisory Patent Examiner, Art Unit 2491
Prosecution Insights