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 .
DETAILED ACTION
This office action is in response to the communication filed on 6/7/2024.
Claims 1-20 have been examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/7/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
The abstract of the disclosure is objected to because it contains phrases which can be implied (e.g. described is). Correction is required. See MPEP § 608.01(b).
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 13-20 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.
Claim limitations in claim 13: “a host configured to transmit…”, “a secure element…configured to receive”, “a secure element…configured to process”, “a secure element…configured to perform the first set of operations”, “a secure element…configured to perform a deferred execution”, in claim 14: “a first host configured to host…”, “a second host configured to host…”, in claim 18: “a secure element…configured to received”, “a secure element…configured to process”, “a secure element…configured to perform the first set of operations”, “a secure element…configured to perform a deferred execution”, and in claim 19: “a first host configured to host…”, “a second host configured to host…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. While the specification provides examples of some structures, the specification does not appear to clearly link the structure with each function. Therefore, the claims are 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.
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 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 of this title, 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.
Claims 1 and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shin (US Patent Application Publication Number 2020/0128401), and further in view of Karen (“Why IDEMIA are using Java Card technology for their Digital Car Key solution”), and further in view of Duigou (“For Faster Java Collections, Make Them Lazy”).
Regarding claim 1, Shin disclosed a method for performing an execution of an application in a secure element, the method comprising:
receiving, by the secure element from a host, an application protocol data unit (APDU) command comprising the application to be executed (Shin Fig. 9 and Paragraphs 0125-0133 for example);
processing, by the secure element, the APDU command for execution by the application to perform a plurality of operations of the application in accordance with the APDU command, the plurality of operations including a first set of operations to be executed by the application after receiving the APDU command and a second set of operations to be processed (Shin Fig. 9 and Paragraphs 0125-0133 for example);
performing, by the secure element, the first set of operations to be executed by the application after receiving the APDU command (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Shin did not explicitly teach performing a deferred execution of the second set of operations after communication from the secure element to the host a completion of the execution of the first set of operations.
Shin did teach the system including a phone used to unlock a vehicle using secure elements (e.g. UICC) (Shin Paragraph 0065 and Figs 11, 12A and 12B and Paragraphs 0142-0152).
Karen taught regarding smartphones being used to unlock vehicles that running applications on UICCs implementing Java Card technology provides interoperability to easily load applets into UICCs from different manufacturers thereby avoiding the need for developing device specific applets.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Karen in vehicle unlocking system of Shin by utilizing Java Card technology on the Secure Elements/UICCs to perform the operations of the smart device and the vehicle. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide the interoperability to easily load applets into the UICCs from different manufacturers thereby avoiding the need for developing device specific applets.
Duigou taught a method for improving efficiency of Java devices involving dividing operations into suboperations and executing first suboperations while deferring execution of second suboperations until absolutely necessary.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Duigou in the Java Card based system of Shin and Karen by employing the deferred execution method for executing the operations. This would have been obvious because the person having ordinary skill would have been motivated to improve the efficiency of the UICC execution.
Regarding claim 10, Shin, Karen, and Duigou taught that the secure element is hosted in the host (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Regarding claim 11, Shin, Karen, and Duigou taught that the host is a first host, and wherein the secure element is hosted in a second host (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Regarding claim 12, Shin, Karen, and Duigou taught determining, by the application, the plurality of operations according to a criterion based on an execution time of the operations or a priority of execution of the operations (Shin Fig. 9 and Paragraphs 0108 and 0125-0133 for example).
Regarding claim 13, Shin disclosed a system, comprising:
a host configured to transmit an application protocol data unit (APDU) command comprising an application to be executed (Shin Fig. 9 and Paragraphs 0125-0133 for example); and
a secure element in communication with the host (Shin Fig. 9 and Paragraphs 0125-0133 for example), the secure element configured to:
receive the APDU (Shin Fig. 9 and Paragraphs 0125-0133 for example),
process the APDU command for execution by the application to perform a plurality of operations of the application in accordance with the APDU command, the plurality of operations including a first set of operations to be executed by the application after receiving the APDU command and a second set of operations to be processed (Shin Fig. 9 and Paragraphs 0125-0133 for example),
perform the first set of operations to be executed by the application after receiving the APDU command (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Shin did not explicitly teach performing a deferred execution of the second set of operations after communication from the secure element to the host a completion of the execution of the first set of operations.
Shin did teach the system including a phone used to unlock a vehicle using secure elements (e.g. UICC) (Shin Paragraph 0065 and Figs 11, 12A and 12B and Paragraphs 0142-0152).
Karen taught regarding smartphones being used to unlock vehicles that running applications on UICCs implementing Java Card technology provides interoperability to easily load applets into UICCs from different manufacturers thereby avoiding the need for developing device specific applets.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Karen in vehicle unlocking system of Shin by utilizing Java Card technology on the Secure Elements/UICCs to perform the operations of the smart device and the vehicle. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide the interoperability to easily load applets into the UICCs from different manufacturers thereby avoiding the need for developing device specific applets.
Duigou taught a method for improving efficiency of Java devices involving dividing operations into suboperations and executing first suboperations while deferring execution of second suboperations until absolutely necessary.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Duigou in the Java Card based system of Shin and Karen by employing the deferred execution method for executing the operations. This would have been obvious because the person having ordinary skill would have been motivated to improve the efficiency of the UICC execution.
Regarding claim 14, Shin, Karen, and Duigou taught that the secure element is a first secure element, wherein the host is a first host configured to host a second secure element, wherein the system further comprises a second host configured to host the first secure element (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Regarding claim 15 the first host is a user terminal, wherein the second host is an electronic control unit (ECU) of a vehicle, and wherein the ECU is configured to command actuation of a vehicle door or a starting of an engine of the vehicle (Shin Paragraph 0065, 0108 and Figs 11, 12A and 12B and Paragraphs 0142-0152).
Regarding claim 16, Shin, Karen, and Duigou taught that the host and the secure element communicate through a wired or wireless channel (Shin Paragraph 0070 for example).
Regarding claim 17, Shin, Karen, and Duigou taught that the wireless channel is one or more of a near field communication (NFC), an ultra-wideband (UWB), or a Bluetooth low energy (BLE) channel (Shin Paragraph 0070 for example).
Regarding claim 18, Shin disclosed a secure element in communication with a host, the secure element configured to:
receive an application protocol data unit (APDU) command comprising an application to be executed from the host (Shin Fig. 9 and Paragraphs 0125-0133 for example);
process the APDU command for execution by the application to perform a plurality of operations of the application in accordance with the APDU command, the plurality of operations including a first set of operations to be executed by the application after receiving the APDU command and a second set of operations to be processed (Shin Fig. 9 and Paragraphs 0125-0133 for example);
perform the first set of operations to be executed by the application after receiving the APDU command (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Shin did not explicitly teach performing a deferred execution of the second set of operations after communication from the secure element to the host a completion of the execution of the first set of operations.
Shin did teach the system including a phone used to unlock a vehicle using secure elements (e.g. UICC) (Shin Paragraph 0065 and Figs 11, 12A and 12B and Paragraphs 0142-0152).
Karen taught regarding smartphones being used to unlock vehicles that running applications on UICCs implementing Java Card technology provides interoperability to easily load applets into UICCs from different manufacturers thereby avoiding the need for developing device specific applets.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Karen in vehicle unlocking system of Shin by utilizing Java Card technology on the Secure Elements/UICCs to perform the operations of the smart device and the vehicle. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide the interoperability to easily load applets into the UICCs from different manufacturers thereby avoiding the need for developing device specific applets.
Duigou taught a method for improving efficiency of Java devices involving dividing operations into suboperations and executing first suboperations while deferring execution of second suboperations until absolutely necessary.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Duigou in the Java Card based system of Shin and Karen by employing the deferred execution method for executing the operations. This would have been obvious because the person having ordinary skill would have been motivated to improve the efficiency of the UICC execution.
Regarding claim 19, Shin, Karen, and Duigou taught that the secure element is a first secure element, wherein the host is a first host configured to host a second secure element, wherein a second host is configured to host the first secure element (Shin Fig. 9 and Paragraphs 0125-0133 for example).
Regarding claim 20, Shin, Karen, and Duigou taught that the first host is a user terminal, wherein the second host is an electronic control unit (ECU) of a vehicle, and wherein the ECU is configured to command actuation of a vehicle door or a starting of an engine of the vehicle (Shin Paragraph 0065, 0108 and Figs 11, 12A and 12B and Paragraphs 0142-0152).
Allowable Subject Matter
Claims 2-9 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.
Conclusion
Claims 1 and 10-20 have been rejected. Claims 2-9 are objected to.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0058252 disclosed a system for remote vehicle control including use of embedded UICCs and encrypted APDUs.
US 2022/0078029 disclosed a system for access authorization involving a mobile device secure elements (e.g. UICCs) for unlocking a vehicle.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T HENNING whose telephone number is (571)272-3790. The examiner can normally be reached Monday-Friday 9AM-3PM EST.
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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.
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/MATTHEW T HENNING/Primary Examiner, Art Unit 2491