Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment filed on 08/04/2026 is acknowledged. Claims 13-32, as originally filed, are currently pending and have been considered below. Claim 13, 17, 23 and 24 are independent claim. Claim 13, 17 and 23 have been amended. No claim is added new.
Priority
The application claims the foreign priority of application EP22182540.9 filed on 07/01/2022.
Drawing
The drawings filed on 11/18/2024 are accepted by the examiner.
Response to Arguments
Applicant's arguments added in the amendment filed on 08/04/2026 have been fully considered but moot in view of new ground of rejection. The reasons set forth below.
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 13 and 23 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 13 recites “a system ….configured to communicate with a secure element, the mobile communication device including a secure element for improving an authorization process”. It is not clear if same “secure element” is being referred.
Claim 23 recites the limitation “if so, generating an authorization key by the secure element”. Claim language is vague and indefinite. Claim 23 recites couple of steps, for example, transmitting a request, receiving an identification signal, checking about the secure element matches the information etc. Examiner doesn’t understand what steps are included by limitation “if so”. Examiner can interpret that the limitation “if so” indicates all the steps should be executed before generating an authorization key by the secure element. Examiner can also interpret that only the previous step (i.e. checking whether the information about the secure element matches the identification) should be executed before generating an authorization key by the secure element. Thus the claim is incomprehensible.
All dependent claims that depend on 13 and 23 inherit the deficiency. Thus dependent claims are also rejected.
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.
Claim 13-32 are rejected under 35 U.S.C. 103 as being unpatentable over Sibert (US Patent Application Publication No. 2018/0225662 A1) in view of Cui (US Patent Application Publication No 2021/0096821 A1).
Regarding Claim 13, Sibert discloses a system including a mobile communication device configured to communicate with a secure element, the mobile communication device including a secure element for improving an authorization process, comprising;
interface circuitry of the mobile device configured to communicate with a trusted authority (Sibert, ¶[0021], mobile device is configured to store identification information from document and present that to verification system in order to authenticate a user of mobile device which is a holder of document 110. ¶[0023], prior to interacting with verification system 120, mobile device 130 may perform an enrollment process in order for SE to be permitted to store information and interact with verification system. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate); and
processing circuitry of the mobile communication device configured to control the interface circuitry and to receive a signal from the trusted authority (Sibert, ¶[0029], SE 134 is configured to associate identification 114 with biometric data captured by biosensor 138 when enrollment is performed in order to ensure that a person later attempting to authenticate with mobile device is the same person during enrollment. SE 134 may also cryptographically bind this value to information 114 by encrypting them together. ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair).
Sibert does not explicitly discuss the following limitation that Cui teaches:
wherein the signal comprises information indicative of a user binding to the secure element (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302)
Sibert in view of Cui are analogous art because they are from the “same field of endeavor” and are from the same “problem solving area”. Namely, they pertain to the field of “secure wireless communication”. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the invention of Sibert in view of Cui to include the idea of binding a user device to an IoT using public/private key pair that is generated based on an identifier corresponding to the user device (Cui, ¶[0012]).
Regarding Claim 14, Sibert in view of Cui discloses the system according to claim 13, wherein the processing circuitry is further configured to:
receive, from a device, an invitation signal comprising information indicative of an invitation to generate an authorization key (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system); and
generate an authorization key based on the received invitation signal, wherein the authorization key is a digital key (Sibert, ¶[0047], the digital signature is generated using a trusted key (certified private key). ¶[0060], after successful verification, SE 134 determines what is to be provided to the reader based on the information specified in the received certificate and issues the corresponding information which may be signed by the private key).
Regarding claim 15, Sibert in view of Cui discloses the system of claim 14, the trusted authority comprising:
interface circuitry configured to communicate with the secure element (Sibert, ¶[0023], SE is configured to store a token that is usable to retrieve some or all of the information. NFC interface presents SE with a request for information from reader. Upon receiving a request, SE may verify that the user has been authenticated by mobile device. ¶[0024], mobile device begins enrollment by reading at least a portion of information stored in identification document. Mobile device reads this information from RFID tag via NFC interface); and
processing circuitry configured to control the interface circuitry and to (Sibert, ¶[0029], SE 134 is configured to associate identification 114 with biometric data captured by biosensor 138 when enrollment is performed in order to ensure that a person later attempting to authenticate with mobile device is the same person during enrollment. SE 134 may also cryptographically bind this value to information 114 by encrypting them together):
receive an identifier signal from the secure element, wherein the identifier signal comprises information indicative of an identifier of the secure element (Sibert, ¶[0024], mobile device begins enrollment by reading identification number and name of the person that holds document. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate); and
perform a user binding of the secure element (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 16, Sibert in view of Cui discloses the system of claim 15, wherein the processing circuitry is further configured to store information about the user binding in an instance certificate authority certificate (Sibert, ¶[0020], backend implements a certificate authority capable of issuing certificates for received certificate signing requests. ¶[0054], authorization system is configured to make backend an intermediate certificate authority which has the ability to issue certificate to readers for public key pairs generated by the readers. Also Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 17, Sibert discloses a system for improving an authorization process, the system including a device comprising:
interface circuitry of the device configured to communicate with a database (Sibert, ¶[0020], backend maintains a database which may include the information stored in document, an indication of whether document is still valid. ¶[0021], mobile device is configured to store identification information from document and present that to verification system in order to authenticate a user of mobile device which is a holder of document 110. ¶[0023], prior to interacting with verification system 120, mobile device 130 may perform an enrollment process in order for SE to be permitted to store information and interact with verification system. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate); and
processing circuitry of the device configured to control the interface circuitry and to (Sibert, ¶[0029], SE 134 is configured to associate identification 114 with biometric data captured by biosensor 138 when enrollment is performed in order to ensure that a person later attempting to authenticate with mobile device is the same person during enrollment. SE 134 may also cryptographically bind this value to information 114 by encrypting them together. ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair):
transmit a request for identification information of a secure element to the database (Sibert, ¶[0024], mobile device begins enrollment by reading identification number and name of the person that holds document. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate); and
receive an identification signal comprising information indicative of the identification information from the database (Sibert, ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair).
Sibert does not explicitly discuss the following limitation that Cui teaches:
wherein the identification information comprises at least one of an identifier of the secure element or a user binding information (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302)
Sibert in view of Cui are analogous art because they are from the “same field of endeavor” and are from the same “problem solving area”. Namely, they pertain to the field of “secure wireless communication”. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the invention of Sibert in view of Cui to include the idea of binding a user device to an IoT using public/private key pair that is generated based on an identifier corresponding to the user device (Cui, ¶[0012]).
Regarding Claim 18, Sibert in view of Cui discloses the system according to claim 17, wherein the interface circuitry is further configured to:
communicate with a secure element and (Sibert, ¶[0023], SE is configured to store a token that is usable to retrieve some or all of the information. NFC interface presents SE with a request for information from reader. Upon receiving a request, SE may verify that the user has been authenticated by mobile device. ¶[0024], mobile device begins enrollment by reading at least a portion of information stored in identification document. Mobile device reads this information from RFID tag via NFC interface);
wherein the processing circuitry is further configured to:
transmit to the secure element an invitation signal comprising information indicative of an invitation to generate an authorization key (Sibert, ¶[0047], the digital signature is generated using a trusted key (certified private key). ¶[0060], after successful verification, SE 134 determines what is to be provided to the reader based on the information specified in the received certificate and issues the corresponding information which may be signed by the private key);
receive, from the secure element, a key signing request comprising information about a secure element used to generate an authorization key (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system); and
check whether the information about the secure element matches the identification information and whether the information matches indicate the authorization key as valid (Sibert, ¶[0026], once the authentication system has successfully validated the request, authorization system is configured to provide an authorization indication to SE in order to indicate that SE has been authorized to store identification information).
Regarding Claim 19, Sibert in view of Cui discloses the system according to claim 18, wherein the device further comprises a storage device and wherein the database from which the identification information is to be requested is stored in the storage device (Sibert, ¶[0020], backend maintains a database which may include the information stored in document, an indication of whether document is still valid).
Regarding Claim 20, Sibert in view of Cui discloses the system according to claim 19, wherein the interface circuitry is further configured to communicate with a key management server; and
wherein the processing circuitry is further configured to:
transmit, to the key management server, a request to create an invitation signal, wherein the request comprises information indicative of the identification information (Sibert, ¶[0047], the digital signature is generated using a trusted key (certified private key). ¶[0060], after successful verification, SE 134 determines what is to be provided to the reader based on the information specified in the received certificate and issues the corresponding information which may be signed by the private key);
and receive, from the key management server, a request response signal comprising information indicative for the invitation signal (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system).
Regarding Claim 21, Sibert in view of Cui discloses the system of claim 20 further comprising a key management server including:
interface circuitry configured to communicate with the secure element and the device (Sibert, ¶[0023], SE is configured to store a token that is usable to retrieve some or all of the information. NFC interface presents SE with a request for information from reader. Upon receiving a request, SE may verify that the user has been authenticated by mobile device. ¶[0024], mobile device begins enrollment by reading at least a portion of information stored in identification document. Mobile device reads this information from RFID tag via NFC interface); and
processing circuitry configured to control the interface circuitry and to (Sibert, ¶[0029], SE 134 is configured to associate identification 114 with biometric data captured by biosensor 138 when enrollment is performed in order to ensure that a person later attempting to authenticate with mobile device is the same person during enrollment. SE 134 may also cryptographically bind this value to information 114 by encrypting them together):
receive, from the device, a request to create an invitation signal, wherein the request comprises information indicative of identification information (Sibert, ¶[0024], mobile device begins enrollment by reading identification number and name of the person that holds document. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate);
transmit a request response request comprising information indicative for the invitation signal (Sibert, ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair);
receive, from the secure element, a key signing request comprising information about a secure element used to generate an authorization key (Sibert, ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair); and
compare the secure element information with the identification information (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system).
Regarding Claim 22, Sibert in view of Cui discloses the system of claim 20 further comprising a backend for improving a security of a digital key generation, the backend comprising:
interface circuitry configured to communicate with the secure element and the device (Sibert, ¶[0023], SE is configured to store a token that is usable to retrieve some or all of the information. NFC interface presents SE with a request for information from reader. Upon receiving a request, SE may verify that the user has been authenticated by mobile device. ¶[0024], mobile device begins enrollment by reading at least a portion of information stored in identification document. Mobile device reads this information from RFID tag via NFC interface); and
processing circuitry configured to control the interface circuitry and to (Sibert, ¶[0029], SE 134 is configured to associate identification 114 with biometric data captured by biosensor 138 when enrollment is performed in order to ensure that a person later attempting to authenticate with mobile device is the same person during enrollment. SE 134 may also cryptographically bind this value to information 114 by encrypting them together):
receive an identification signal, from the device, comprising information indicative of the identification information (Sibert, ¶[0024], mobile device begins enrollment by reading identification number and name of the person that holds document. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate);
receive, from the secure element, a key signing request comprising information about a secure element used to generate an authorization key (Sibert, ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair); and
compare the secure element information with the identification information (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system).
Regarding Claim 23, Sibert discloses a method for improving an authorization process, the method comprising:
transmitting a request for identification information of a secure element to a database (Sibert, ¶[0020], backend maintains a database which may include the information stored in document, an indication of whether document is still valid. ¶[0021], mobile device is configured to store identification information from document and present that to verification system in order to authenticate a user of mobile device which is a holder of document 110. ¶[0023], prior to interacting with verification system 120, mobile device 130 may perform an enrollment process in order for SE to be permitted to store information and interact with verification system. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate);
receiving, from the database, an identification signal comprising information indicative of the identification information (Sibert, ¶[0024], mobile device begins enrollment by reading identification number and name of the person that holds document. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate);
receiving, from the secure element, a key signing request comprising information about a secure element used to generate an authorization key (Sibert, ¶[0048], after generating a public-key pair, SE 134 issues to validation system 120, a CSR that includes the unique index value along with the additional information. Upon successful validation, SE 134 receives a corresponding certificate certifying the public key pair); and
checking whether the information about the secure element matches the identification information (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system).
Sibert does not explicitly discuss the following limitation that Cui teaches:
wherein the identification information comprises an identifier of the secure element and a user binding information (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302); and
if so, generating an authorization key by the secure element (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Sibert in view of Cui are analogous art because they are from the “same field of endeavor” and are from the same “problem solving area”. Namely, they pertain to the field of “secure wireless communication”. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the invention of Sibert in view of Cui to include the idea of binding a user device to an IoT using public/private key pair that is generated based on an identifier corresponding to the user device (Cui, ¶[0012])).
Regarding Claim 24, Sibert in view of Cui discloses a non-transient computer-readable medium for improving an authorization process, wherein the computer-readable medium comprises instructions which, when executed on a computer, a processor, or a programmable hardware component, performs the method of claim 23 (see claim mapping of 23).
Regarding Claim 25, Sibert in view of Cui discloses the method of claim 23 wherein the authorization key is a digital key for a vehicle (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 26, Sibert in view of Cui discloses the method of claim 25 further comprising passing the digital key to a friend device and operating one or more functions of the vehicle with the friend device, the one or more functions of the vehicle including opening, unlocking, starting, and controlling vehicle environment (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 27, Sibert in view of Cui discloses the method of claim 26 wherein the friend device is a mobile phone (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 28, Sibert in view of Cui discloses the method of claim 27 wherein the secure element is provided on a first mobile phone, and the friend device is a second mobile phone (Sibert, ¶[0027], the enrollment process includes SE 134 establishing a private key that can be used to generate digital signatures to authenticate a user. SE 134 is configured to generate a public key pair and to issue a CSR to receive a corresponding certificate. This CSR may be sent as part of request to authorization system. Also Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 29, Sibert in view of Cui discloses the system of claim 15 wherein the trusted authority is a server (Sibert, ¶[0021], mobile device is configured to store identification information from document and present that to verification system in order to authenticate a user of mobile device which is a holder of document 110. ¶[0023], prior to interacting with verification system 120, mobile device 130 may perform an enrollment process in order for SE to be permitted to store information and interact with verification system. ¶[0047], Fig-3A, secure element SE 134 issues an enrollment request that includes the number, a nonce and a digital signature. The digital signature is generated using a trusted key stored in SE and authentication system may include the corresponding certificate).
Regarding Claim 30, Sibert in view of Cui discloses the system of claim 29 wherein the mobile communication device is a mobile phone (Sibert, ¶[0021], mobile device corresponds to any suitable form of device such as mobile phone, tablet).
Regarding Claim 31, Sibert in view of Cui discloses the system of claim 30 wherein the digital key is a digital key for a vehicle (Cui, Fig-3, ¶[0056]- ¶[0064], the binding result is data that indicates the successful storage of the public key. Internet of Things device 304 successfully storing the public key that was sent from user device 302 represents the successful binding of Internet of Things device 304 to user device 302).
Regarding Claim 32, Sibert in view of Cui discloses the system of claim 17 wherein the device is a mobile phone (Sibert, ¶[0021], mobile device corresponds to any suitable form of device such as mobile phone, tablet).
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 extension fee 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 date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WASIKA NIPA whose telephone number is (571)272-8923. The examiner can normally be reached on M-F (7:30 - 5:00).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFRY PWU can be reached on 571-272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WASIKA NIPA/ Primary Examiner, Art Unit 2433
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