DETAILED ACTION
Claims 13-24 are pending. Claims 1-12 are canceled.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/04/2024 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 in length. 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. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract contains legal phraseology. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 13 and 23-24 are objected to because of the following informalities: The examiner suggest amending the claim limitations “said data sets” to “the data sets” to correspond with the other claim limitations. Appropriate correction is required.
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 13-17 and 21 & 23 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.
Independent claims 13 and 23, only include wherein clauses. The claims does not include any transition words (i.e. comprising) to separate the preamble and the elements/steps of the claims. The claims does not provide any steps to positively recite the claimed limitations to understand the scope of the claim.
Claim 13 and 23 recites the limitation "the control" in line 6. There is insufficient antecedent basis for this limitation in the claims. For examiner purposes, limitation is considered to be a control.
Claim 14 recites the limitation "the data" in line. There is insufficient antecedent basis for this limitation in the claim. For examiner purposes, limitation is considered to be the data set.
Claim 15 use the term “is/are”. This term renders the scope of the claim language unclear because it is not clear whether all of the limitations are required or not, in order to fall within the scope of the claim. The use of "is/are" makes the applicants intended scope unclear because one of ordinary skill in the art would be unable to determine whether or not all of the listed limitations are required or not. Therefore, the claims are rejected for failing to specifically point out and distinctly claim the subject matter which the inventors regard as the invention.
Claim 16 recites the limitation "the continuation" in line. There is insufficient antecedent basis for this limitation in the claim. For examiner purposes, limitation is considered to be a continuation.
Claim 17 recites the limitation "the occurrence" in line. There is insufficient antecedent basis for this limitation in the claim. For examiner purposes, limitation is considered to be an occurrence.
Claim 21 recites the limitation "the first step" in line. There is insufficient antecedent basis for this limitation in the claim. For examiner purposes, limitation is considered to be a first step.
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 23-24 are rejected under 35 U.S.C. 101 for being directed to non-statutory subject matter. The claims does not include at least one hardware element within the body of the claim. The claims recite a “memory" and “operating system”. Neither the claims nor specification define the "memory" or any other elements of the claim to include only a hardware. Thus, the claims are directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 13-19 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Alfarano et al. (US Pub No. 2021/0096178) in view of ZIECIK et al. (US Pub No. 2023/0342476).
Regarding independent claim 13, Alfarano teaches a method for computer-aided personalization of a secure element onto which an image is loaded, wherein an operating system of the secure element is integrated into said image (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020 & 0027 and page 4, paragraphs 0061-0066; personalization images with personalization data loaded into memory of integrated circuit), wherein one or more data sets provided individually for the secure element are written to a memory area of the secure element, said data sets containing card-specific data with which the secure element is personalized under the control of the operating system (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020 & 0027 and page 4, paragraphs 0061-0066; personalization images with personalization data loaded into dedicated memory area of integrated circuit), wherein a sequence in which the data sets are personalized is defined with a configuration command in the personalization of the secure element (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020, 0022 & 0027, page 3, paragraph 0031 and page 4, paragraphs 0061-0066; personalization data with APDU sequence of commands).
Alfarano teaches storing the personalized data/images in a dedicated memory section (Alfarano, page 2, paragraph 0020) but does not explicitly wherein one or more data sets provided individually for the secure element are written to a special memory area of the secure element.
ZIECIK teaches wherein one or more data sets provided individually for the secure element are written to a special memory area of the secure element (ZIECIK, page 9, paragraph 0139; dedicated area of memory; an area reserved for holding an update package).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 14, Alfarano in view of ZIECIK teaches the method wherein the data which are intended to be personalized in one or more of the data sets in a first step are defined by the configuration command (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020, 0022 & 0027, page 3, paragraph 0031 and page 4, paragraphs 0061-0066; personalization data with APDU sequence of commands).
Regarding claim 15, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 13, however, ZIECIK teaches the method wherein one or more interruption points up to which the data set(s) is/are personalized are set by the configuration command (ZIECIK, page 8, paragraph 0136).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 16, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 13, however, ZIECIK teaches the method wherein the continuation of the personalization at a later time is configured by means of the configuration command (ZIECIK, page 9, paragraphs 0139-0140; after device reset).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 17, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 16, however, ZIECIK teaches the method wherein a predefined event, on the occurrence of which the personalization is continued, is configured by means of the configuration command (ZIECIK, page 9, paragraphs 0139-0140; after device reset).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 18, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 17, however, ZIECIK teaches the method wherein the event is a reset or the reaching of a predefined number of resets of the secure element (ZIECIK, page 9, paragraphs 0139-0140; after device reset).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 19, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 13, however, ZIECIK teaches the method wherein the configuration command is transmitted to the secure element at least one further time, as a result of which the personalization is continued at a later time (ZIECIK, page 9, paragraphs 0139-0140).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 21, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 13, however, ZIECIK teaches the method wherein a firmware update key is personalized in one of the data sets in the first step (ZIECIK, page 8, paragraph 0134).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 22, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 21, however, ZIECIK teaches the method wherein a firmware update is carried out in a second step (ZIECIK, page 8, paragraphs 0118-0119 & 0134 and page 9, paragraphs 0139-0140).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area for update script/package to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding independent claim 23, Alfarano teaches a system for computer-aided personalization of a secure element onto which an image is loaded, wherein an operating system of the secure element is integrated into said image (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020 & 0027 and page 4, paragraphs 0061-0066; personalization images with personalization data loaded into memory of integrated circuit), wherein one or more data sets provided individually for the secure element are written to a memory area of the secure element, said data sets containing card-specific data with which the secure element is personalized under the control of the operating system (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020 & 0027 and page 4, paragraphs 0061-0066; personalization images with personalization data loaded into dedicated memory area of integrated circuit), wherein a sequence in which the data sets are personalized is defined with a configuration command in the personalization of the secure element (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020, 0022 & 0027, page 3, paragraph 0031 and page 4, paragraphs 0061-0066; personalization data with APDU sequence of commands).
Alfarano teaches storing the personalized data/images in a dedicated memory section (Alfarano, page 2, paragraph 0020) but does not explicitly wherein one or more data sets provided individually for the secure element are written to a special memory area of the secure element.
ZIECIK teaches wherein one or more data sets provided individually for the secure element are written to a special memory area of the secure element (ZIECIK, page 9, paragraph 0139; dedicated area of memory; an area reserved for holding an update package).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Regarding claim 24, Alfarano in view of ZIECIK teaches the system of claim 23 configured to carry out a method for computer-aided personalization of a secure element onto which an image is loaded, wherein an operating system of the secure element is integrated into said image (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020 & 0027 and page 4, paragraphs 0061-0066; personalization images with personalization data loaded into memory of integrated circuit), wherein one or more data sets provided individually for the secure element are written to a special memory area of the secure element, said data sets containing card-specific data with which the secure element is personalized under the control of the operating system (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020 & 0027 and page 4, paragraphs 0061-0066; personalization images with personalization data loaded into dedicated memory area of integrated circuit; ZIECIK, page 9, paragraph 0139; dedicated area of memory; an area reserved for holding an update package), wherein a sequence in which the data sets are personalized is defined with a configuration command in the personalization of the secure element (Alfarano, page 1, paragraphs 0010-0013, page 2, paragraphs 0020, 0022 & 0027, page 3, paragraph 0031 and page 4, paragraphs 0061-0066; personalization data with APDU sequence of commands).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano with the teachings of ZIECIK for the dedicated area of the memory to be a reserved memory area to provide the advantage of improving the process of updating software (ZIECIK, page 1, paragraphs 0003-0006).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Alfarano et al. (US Pub No. 2021/0096178) in view of ZIECIK et al. (US Pub No. 2023/0342476) as applied to claims 13-19 and 21-24 above, and further in view of Alfarano et al. (US Patent No. 11,792,166), hereinafter Alfarano (2).
Regarding claim 20, Alfarano in view of ZIECIK teaches each and every claim limitation of claim 13.
Alfarano in view of ZIECIK does not explicitly teach the method wherein the configuration command is transmitted to the secure element in encrypted or unencrypted form.
Alfarano (2) teaches wherein the configuration command is transmitted to the secure element in encrypted or unencrypted form (Alfarano (2), column 4, lines 35-48).
It would have been obvious to one having one having ordinary skill in the art before the effective filing date of the claimed invention to modify Alfarano in view of ZIECIK with the teachings of Alfarano (2) encrypting personalization packages to provide the advantage of secure transmission and size solution (Alfarano, column 4, lines 35-67).
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Alfarano et al. (US Pub No. 2023/0384969) and Sibert et al. (US Pub No. 2018/0089434).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAQUEAL D WADE whose telephone number is (571)270-0357. The examiner can normally be reached M-F 8:00-5:00.
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/SHAQUEAL D WADE-WRIGHT/ Primary Examiner, Art Unit 2407