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
Claims 13-14, 16-23 and 25 are pending. Claims 1-12, 15 and 24 are canceled. Claims 13-14, 16-18, 21 and 23 are currently amended.
Applicant’s amendments to the claims & specification will overcome each and every specification objection, claim objection, 112(b) and 101 rejection previously set forth in the Non-Final Office Action mailed 01/26/2026.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot in view of new ground of rejection.
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) 13-14, 16-19, 21-23 and 25 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) and in further view of Smith et al. (US Pub No. 2024/0256248).
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 the 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), the method comprising writing one or more data sets provided individually for the secure element 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), defining a sequence in which the data sets are personalized 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 writing one or more data sets provided individually for the secure element to a special memory area of the secure element; wherein the configuration command is configured to set one or more interruption points, and personalizing the data sets up to at least one of the one or more interruption points at which time the personalization is stopped and, at a later time, continuing the personalization of the data sets.
ZIECIK teaches writing one or more data sets provided individually for the secure element 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).
Alfarano in view of ZIECIK does not explicitly teach the method wherein the configuration command is configured to set one or more interruption points, and personalizing the data sets up to at least one of the one or more interruption points at which time the personalization is stopped and, at a later time, continuing the personalization of the data sets.
Smith teaches wherein the configuration command is configured to set one or more interruption points, and personalizing the data sets up to at least one of the one or more interruption points at which time the personalization is stopped and, at a later time, continuing the personalization of the data sets (Smith, page 7, paragraph 0087; if personalization is interrupted, the personalization resumes from the point of the interruption; personalization command).
It would have been obvious to 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 Smith to resume personalization from the point of interruption to provide the advantage of improving data provisioning and faster personalization (Smith, page 1, paragraphs 0002-0004 & 0009).
Regarding claim 14, Alfarano in view of ZIECIK and in further view of Smith teaches the method wherein 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 16, Alfarano in view of ZIECIK and in further view of Smith teaches each and every claim limitation of claim 13, however, ZIECIK teaches the method wherein continuing the personalization at a later time is configured by 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 in view of ZIECIK and in further view of Smith 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 and in further view of Smith teaches each and every claim limitation of claim 16, however, ZIECIK teaches the method wherein a predefined event, on an 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 in view of ZIECIK and in further view of Smith 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 and in further view of Smith teaches each and every claim limitation of claim 17, however, ZIECIK teaches the method wherein the event is a reset or a 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 in view of ZIECIK and in further view of Smith 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 and in further view of Smith 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 in view of ZIECIK and in further view of Smith 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 and in further view of Smith 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 a 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 in view of ZIECIK and in further view of Smith 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 and in further view of Smith 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 in view of ZIECIK and in further view of Smith 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 secure element comprising one or more non-transitory storage media onto which an image is loaded, wherein an operating system of the secure element is integrated into the 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 the secure element is configured to: write one or more data sets provided individually for the secure element 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), define a sequence in which the data sets are personalized 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 write one or more data sets provided individually for the secure element to a special memory area of the secure element; wherein the configuration command is configured to set one or more interruption points, and personalizing the data sets up to at least one of the one or more interruption points at which time the personalization is stopped and, at a later time, continuing the personalization of the data sets.
ZIECIK teaches write one or more data sets provided individually for the secure element 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).
Alfarano in view of ZIECIK does not explicitly teach the method wherein the configuration command is configured to set one or more interruption points, and personalizing the data sets up to at least one of the one or more interruption points at which time the personalization is stopped and, at a later time, continuing the personalization of the data sets.
Smith teaches wherein the configuration command is configured to set one or more interruption points, and personalizing the data sets up to at least one of the one or more interruption points at which time the personalization is stopped and, at a later time, continuing the personalization of the data sets (Smith, page 7, paragraph 0087; if personalization is interrupted, the personalization resumes from the point of the interruption; personalization command).
It would have been obvious to 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 Smith to resume personalization from the point of interruption to provide the advantage of improving data provisioning and faster personalization (Smith, page 1, paragraphs 0002-0004 & 0009).
Regarding independent claim 25, Alfarano in view of ZIECIK and in further view of Smith teaches a non-transitory computer readable storage medium that is configured to implement the method according to claim 13 (see above claim 13 rejection).
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) and in further view of Smith et al. (US Pub No. 2024/0256248) as applied to claims 13-14, 16-19, 21-23 and 25 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 and in further view of Smith teaches each and every claim limitation of claim 13.
Alfarano in view of ZIECIK and in further view of Smith 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 and in further view of Smith 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. KAMIJIMA (US Pub No. 2013/0232527)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at 571-270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAQUEAL D WADE-WRIGHT/ Primary Examiner, Art Unit 2407
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