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 is the initial office action that has been issued in response to patent application, 18/827,013, filed on 09/06/2024. Claims 1-11 are currently pending and have been considered below. Claim 1 is an independent claim.
Priority
The application is a CON of PCT/EP2023/055948 filed 03/08/2023 and claims foreign priority of France 2202025, filed on 03/08/2022.
Drawings
The drawings (Figures 1-5) are objected to as failing to comply with 37 CFR 1.84(p)(4) because the figures do not show sufficient detail to clearly depict the structure and operation of the invention as claimed in the specification. It becomes difficult for the Examiner to understand what the reference characters represent without having to view the specification.
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “means for encrypted communication”, “means for processing data” in claim 1, “said encrypted communication means…” in claim 2, “means for analysing at least one image of a face…”, “means for analysing at least one image of an official document…”, “means for analysing at least one biometric fingerprint…”, “means for analysing identification data…” in claim 6, “means for secure connection” in claim 7, “means for confirmation” in claim 8, “means for creating a secure audio/video communication” in claim 9 as well as “means for supplying authentication certificate” in claim 10
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 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.
Claim limitations “means for encrypted communication”, “means for processing data” in claim 1, “said encrypted communication means…” in claim 2, “means for analysing at least one image of a face…”, “means for analysing at least one image of an official document…”, “means for analysing at least one biometric fingerprint…”, “means for analysing identification data…” in claim 6, “means for secure connection” in claim 7, “means for confirmation” in claim 8, “means for creating a secure audio/video communication” in claim 9 as well as “means for supplying authentication certificate” in claim 10. 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. Therefore, claims 1, and 6-10, and their respective dependent 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.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. As described above, the disclosure does not provide adequate structure, detail, or algorithmic support to perform the claimed functions. The specification presents only high-level conceptual descriptions of biometric processing, encrypted communication, VPN creation, authentication certificate generation, and secure communication protocols, but does not disclose sufficient corresponding structure or algorithmic detail required for the breadth of the claimed subject matter. (FP 7.31.01)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites “method for securing data transfers” while claim 1, from which it depends, recites an apparatus (“portable autonomous device for securing data transfer”). Because claim 11 is directed to a method and claim 1 is directed to an apparatus, claim 11 improperly changes the statutory class of the invention. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The claimed invention is not directed to patent
eligible subject matter. Based upon consideration of all of
the relevant factors with respect to the claim as a whole,
claims 1-11 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to non-statutory subject
matter.
Claims 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 1-11 recites functional operations as “processing authentication data”, “analyzing biometric information”, “analyzing images of a face, iris, document, or fingerprint”, “establishing encrypted communication”, “creating a VPN”, “confirming authentication” and “supplying authentication certificates” but do not recite any specific hardware structure (e.g., memory, circuitry, processor, CPU, hardware logic, or storage medium) that would limit the claims to a statutory machine or manufacture.
Although the claims mention a “terminal,” “device,” “camera,” and “sensors,” the specification describes these components as generic computing equipment performing only routine display or input functions. The specification repeatedly states that the terminal is merely a standard smartphone, tablet, or computer used solely as a display or man-machine interface. The claims do not recite any structural hardware limitations that meaningfully restrict the invention beyond software-implemented data processing.
Accordingly, because the claims can be fully implemented using software alone, without requiring any particular hardware structure, the claims are directed to software per se, which is non-statutory under 35 U.S.C. §101.
In order to overcome the above rejection in an expedited manner, the examiner suggests that Applicant amend the claims to explicitly recite at lest one concrete hardware such as: (e.g., a processor, memory, non-transitory machine-readable storage medium, etc.) to ensure that the claims fall within the “machine” category of statutory subject matter rather than software per se.
Claim Rejections - 35 USC § 102
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 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 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rodriguez (US Publication No. 20140244514 A1).
Regarding Claim 1:
Rodriguez discloses:
Portable autonomous device for securing data transfer, characterised in that it comprises(Vujic, [0008], fully integrated portable handheld device with ruggedized construction, compact size, ergonomic features, suitable to be carried in the hand and used in the field…):
- means for encrypted communication with at least one terminal such as a telephone, a tablet, a portable computer or a dedicated terminal(Rodriguez, [0063], This enables the phone to encrypt information it wishes to securely communicate to the POS system using the phone's (or user's) private key. );
- a plurality of sensors including at least one camera, a sensor delivering at least one item of biometric information and a chip-card reader(Rodriguez, [0036],The user shows the artwork on the phone display to a sensor (e.g., a camera) of a cooperating system, such as a point of sale (POS) terminal, or a clerk's portable device, which captures one or more frames of imagery depicting the display. [0148], Digital watermarks are decoded from the imagery corresponding to the display, and human fingerprint recognition is used to determine if the fingerprints correspond to an owner or authorized user of the virtual wallet. Authorization of a transaction can be conditioned on a successful biometric match. [0187], As is evident from the foregoing, embodiments of the present technology can employ the standards established for chip card systems and gain those associated benefits,);
- means for processing data delivered by said sensors, able to deliver pre-processed authentication data to said terminal, not requiring, in said terminal, a driver dedicated to each sensor(Rodriguez, [0067], While “chip card” arrangements (sometimes termed “smart cards”) offer a variety of digital security techniques, they require specialized interface technology to exchange data with the chip—interface technology that has no other use. The just-described implementations, in contrast, make use of camera sensors that are commonplace in smartphones and tablets, and that are being increasingly deployed by retailers to read barcodes during checkout. [0187], while providing additional advantages such as cost savings (no specialized reader infrastructure required) and added security (the smartphone can provide many layers of security in addition to a PIN to address theft or loss of the phone).).
Regarding Claim 2:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 1, characterised in that said encrypted communication means take into account at least one identifier of said terminal, previously stored in a secure memory(Rodriguez, [0063], Upon receipt of the identifier, the POS system consults a registry (e.g., a certificate authority) to obtain a public key (of a public-private cryptographic key pair) associated with that identifier. This enables the phone to encrypt information it wishes to securely communicate to the POS system using the phone's (or user's) private key. (This key may be stored in the phone's memory.)).
Regarding Claim 3:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 1, characterised in that it comprises, in a memory, a computer program for controlling said sensors and implementing dedicated applications, transmitting to the terminal only data intended to be displayed on a screen(Rodriguez, [0219], changing a digital watermark embedding process based on information obtained by said sensor; embedding a digital watermark in the image using the changed digital watermark embedding process; controlling display of the embedded image on the touch screen display.).
Regarding Claim 4:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to either claim 1, characterised in that said encrypted communication means create a VPN with the said terminal, using a unique temporary code(Rodriguez, [0064], The context based authentication data can also be encrypted with the private key, and decoded with the corresponding public key obtained from the certificate authority. In this case, since context-based authentication data is encrypted with a key that is tied to the device (e.g., via an IMEI identifier through a certificate authority), then this authentication data is logically bound to both the context and the user device.).
Regarding Claim 5:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 4, characterised in that said unique code is displayed on the screen of said terminal and read with the camera of said portable autonomous device for securing the transfer of data(Rodriguez, [0011], FIG. 4A shows artwork for a selected card, steganographically encoded with card and authentication information, displayed on a smartphone screen for optical sensing by a cooperating system [0036], The user shows the artwork on the phone display to a sensor (e.g., a camera) of a cooperating system, such as a point of sale (POS) terminal, or a clerk's portable device, which captures one or more frames of imagery depicting the display).
Regarding Claim 6:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 1, characterised in that said processing means comprise:
- means for analysing at least one image of a face and/or of an iris, delivered by said camera(Rodriguez, [0152], Alternatives to signatures can include finger or facial biometrics, such a thumbprint on the user's screen or capture of face using camera functions, or voiceprint, etc);
- means for analysing at least one image of an official document, such as a passport or identity card, delivered by said camera(Rodriguez, [0134], A virtual wallet may include a virtual representation of an identification document (ID). In some cases the virtual representation includes age information that may be validated by the POS—or a service cooperating with the POS—to determine whether the shopper is of a certain age);
- means for analysing at least one biometric fingerprint delivered by said biometric sensor(Rodriguez, [0043], As sensors have proliferated in smartphones, a great variety of other authentication data can be employed. For example, some smartphones now include barometric pressure sensors. The barometric pressure currently sensed by the smartphone sensor can be among the data provided from the smartphone display to the cooperating system.);
- means for analysing identification data read on a chip card by said chip-card reader(Rodriguez, [0196], Desirable, in such embodiments, is for the artwork representing the wallet cards to be generic, without any personalized identification (e.g., no name or account number). ).
Regarding Claim 7:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 1, characterised in that it comprises means for secure connection to a remote server, according to said pre-processed authentication data(Rodriguez, [0064], The context based authentication data can also be encrypted with the private key, and decoded with the corresponding public key obtained from the certificate authority. In this case, since context-based authentication data is encrypted with a key that is tied to the device (e.g., via an IMEI identifier through a certificate authority), then this authentication data is logically bound to both the context and the user device.).
Regarding Claim 8:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 7, characterised in that said processing means comprise means for confirmation to said terminal of the authentication of said individual, taking account of the pre-processed authentication data and of data delivered by said remote server(Rodriguez, [0033], The illustrative transaction method further involves generating context-based authentication data using data from one or more smartphone sensors, as discussed more fully below. This authentication data serves to assure the cooperating system that the smartphone is legitimate and is not, e.g., a fraudulent “replay attack” of the system.).
Regarding Claim 9:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 1, characterised in that it comprises means for creating a secure audio and/or video communication between said terminal and at least one other remote terminal(Rodriguez, [0122], A high frequency (HF) audio channel or an audible audio channel can be used to establish bi-directional communication between a virtual wallet and a point of sale location. A financial transaction can proceed once communication is established.).
Regarding Claim 10:
Rodriguez discloses:
Portable autonomous device for securing data transfer according to claim 1, characterised in thatit comprises means for supplying an authentication certificate combining:
- an identity, obtained by reading at least one official document, by means of said camera and/or said chip-card reader(Rodriguez, [0134], The virtual ID can communicate age information through digital watermarking embedded in a displayed image or in a graphical representation of a driver's license or other ID credential);
- a biometric validation of this identity, obtained by means of said camera or a fingerprint reader(Rodriguez, [0152], Alternatives to signatures can include finger or facial biometrics, such a thumbprint on the user's screen or capture of face using camera functions, or voiceprint, etc), and
- a certificate previously recorded in a memory of said security device by a corresponding authority(Rodriguez, [0063],the POS system consults a registry (e.g., a certificate authority) to obtain a public key (of a public-private cryptographic key pair) associated with that identifier. This enables the phone to encrypt information it wishes to securely communicate to the POS system using the phone's (or user's) private key. (This key may be stored in the phone's memory.).
Regarding Claim 11:
Rodriguez discloses:
Method for securing data transfers, using at least one portable autonomous device for securing the transfer of data according to claim 1, characterised in that it comprises, in said device, the following steps:
- establishing an encrypted communication with at least one terminal such as a telephone, a tablet, a portable computer or a dedicated terminal (Rodriguez, [0063], This enables the phone to encrypt information it wishes to securely communicate to the POS system using the phone's (or user's) private key.);
- obtaining signals delivered by at least one of the sensors belonging to the group comprising a camera, a sensor delivering at least one item of biometric information and a chip-card reader (Rodriguez, [0036],The user shows the artwork on the phone display to a sensor (e.g., a camera) of a cooperating system, such as a point of sale (POS) terminal, or a clerk's portable device, which captures one or more frames of imagery depicting the display. [0148], Digital watermarks are decoded from the imagery corresponding to the display, and human fingerprint recognition is used to determine if the fingerprints correspond to an owner or authorized user of the virtual wallet. Authorization of a transaction can be conditioned on a successful biometric match. [0187], As is evident from the foregoing, embodiments of the present technology can employ the standards established for chip card systems and gain those associated benefits,);
- processing data delivered by said sensors, delivering pre-processed authentication data to said terminal, not requiring, in said terminal, a driver dedicated to each sensor (Rodriguez, [0067], While “chip card” arrangements (sometimes termed “smart cards”) offer a variety of digital security techniques, they require specialized interface technology to exchange data with the chip—interface technology that has no other use. The just-described implementations, in contrast, make use of camera sensors that are commonplace in smartphones and tablets, and that are being increasingly deployed by retailers to read barcodes during checkout. [0187], while providing additional advantages such as cost savings (no specialized reader infrastructure required) and added security (the smartphone can provide many layers of security in addition to a PIN to address theft or loss of the phone).).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYASA SHAAWAT whose telephone number is (571)272-3939. The examiner can normally be reached on M-F, 8 AM TO 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, JEFFREY PWU can be reached on (571)272-6789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAYASA A. SHAAWAT/Examiner, Art Unit 2433