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 .
Claim Rejections - 35 USC § 101
1. 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.
2. Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically independent claim 10 is directed to “A computer program product comprising program code for performing, when executed by a processor device” connoted on a readable by computer and the broadest reasonable interpretation of the claim drawn to a computer readable medium (also called machine readable medium, computer program product and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable medium or media, particularly when the specification is silent.
The USPTO recognizes that applicants may have claims directed to computer program product that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium or computer program product or computer readable media that cover both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim. Cf. Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.
Thus, such a medium cannot be patentable subject matter. “A non-transitory computer program product comprising program code for performing, when executed by a processor device” is recommended as an appropriate computer readable storage medium.
Claim Rejections - 35 USC § 102
3. 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.
4. Claims 1 – 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jasper et al. (US 2019/0319943).
Regarding claim 1, Jasper teaches that a method of transferring a certificate to a field device, the method comprising, by a mobile device (Fig. 3 and page 1, paragraphs 9 – pages 2, paragraphs 12) comprising first processing circuitry (102 in Fig. 4) and first NFC-circuitry (Fig. 3, 4 and pages 4, paragraphs 31 – 33, where teaches the short-range communication interface is a near-field communication (NFC) interface and requires that the secure device be positioned within about four (4) centimeters of another NFC device to establish a connection), acquiring a certificate and storing the certificate on the mobile device (Fig. 3, 6 and pages 4, paragraphs 33 – pages 5, paragraphs 39, where teaches after receiving the signed certificate back from the signing server, the secure device transmits the certificate to the module, and at least temporarily the certificate needs to be stored prior to transmission or to perform reception processing), establishing NFC communication between the mobile device and a field device (Fig. 2, 3, 4 and pages 3, paragraphs 25 – 28, where teaches an exemplary module from the industrial control network, and the module includes terminals configured to be connected to external devices to receive input signals, transmit output signals, or a combination thereof, and an additional logic circuit may be included between the processor and the terminals to convert the input and output signals between the proper signals for communication with external devices and the proper signals for communication with the processor) comprising second processing circuitry (62 in Fig. 2) and second NFC-circuitry (Fig. 3, 6, pages 4, paragraphs 33 – pages 5, paragraphs 39, and pages 3, paragraphs 25 - 27, where teaches the secure device establishes connections between the module and the network, and the secure device is positioned proximate the module and within the range of the short-range communication interface. If, for example, the short-range communication interface is NFC, the secure device may be positioned within about 4 centimeters of the module, and each of the Input modules is configured to receive Input signals from controlled devices), transferring the certificate to the field device (Fig. 3, 6 and pages 4, paragraphs 33 – pages 5, paragraphs 39, where teaches the secure device transmits the certificate to the module, the secure device first checks that the module is still present, and moving the secure device away from the module or electromagnetic interference around the module may cause the first wireless connection to be lost. If the connection is lost, the secure device will re-establish the connection to transmit the certificate, and when the secure device verifies that the module is still present, it transmits the certificate to the module and connection is the NFC connection), storing the certificate on the field device (page 1, paragraphs 9 – pages 2, paragraphs 12, Fig. 3, 6, claim 9, pages 3, paragraphs 28, and pages 5, paragraphs 37 - 40, where teaches upon receiving the signed certificate, the module continues the provisioning, and at power-up, a module executes a routine to detect the presence of a signed security certificate on the module, and the exemplary module includes a processor and a memory device), and closing the NFC communication between the mobile device and the field device (Fig. 3, 6 and pages 4, paragraphs 33 – pages 5, paragraphs 39, where teaches moving the secure device away from the module or electromagnetic interference around the module may cause the first wireless connection to be lost, and implicitly the NFC connection closes when the mobile device moves away).
Regarding claim 2, Jasper teaches that storing the certificate on the field device comprises storing the certificate on a non-volatile memory of the field device (Fig. 5 and claims 7, 9).
Regarding claim 3, Jasper teaches that acquiring the certificate comprises receiving the certificate from a remote server (Fig. 5, abstract, and page 1, paragraphs 9 – pages 2, paragraphs 12).
Regarding claim 4, Jasper teaches that acquiring the certificate comprises generating the certificate by the mobile device using an intermediate certificate received from a remote server (Fig. 5, claim 8, and page 1, paragraphs 9 – pages 2, paragraphs 12).
Regarding claim 5, Jasper teaches that removing the certificate from the mobile device after transferring the certificate (Fig. 3, 5 and pages 4, paragraphs 30 – 35).
Regarding claim 6, Jasper teaches that the certificate is an X.509 certificate (Fig. 5, abstract, and page 1, paragraphs 9 – pages 2, paragraphs 12).
Regarding claim 7, Jasper teaches that providing power to the second NFC-circuitry from first the first NFC-circuitry (Fig. 3, 5 and pages 4, paragraphs 31 – 35).
Regarding claim 8, Jasper teaches that by the mobile device, providing a password to the field device enabling transfer of a certificate using NFC-communication between the mobile device and the field device (Fig. 3, 5, pages 4, paragraphs 31 – pages 5, paragraphs 39, and pages 3, paragraphs 25 – 27).
Regarding claim 9, Jasper teaches that the password is a password specific to and uniquely identifying the field device (Fig. 3, 5 and pages 4, paragraphs 31 – pages 5, paragraphs 39).
Regarding claim 10, Jasper teaches that a computer program product comprising program code for performing, when executed by a processor device (Fig. 1 and page 1, paragraphs 2 – 7).
Regarding claim 11, Jasper teaches that a non-transitory computer-readable storage medium comprising instructions, which when executed by a processor device, cause the processor device to perform (Fig. 1 and page 1, paragraphs 2 – 7).
Regarding claim 12, Jasper teaches all the limitation as discussed in claim 1.
Regarding claim 13, Jasper teaches all the limitation as discussed in claim 1. Furthermore, Jasper further teaches that the mobile device is further configured to close NFC communication between the mobile device and the field device upon completion of transfer of the certificate (Fig. 3, 5 and pages 4, paragraphs 31 – pages 5, paragraphs 39).
Regarding claim 14, Jasper teaches all the limitation as discussed in claims 1 and 2.
Regarding claim 15, Jasper teaches all the limitation as discussed in claims 1 and 4. Furthermore, Jasper further teaches that the mobile device is configured to acquire an intermediate certificate from a remote server and to generate the certificate using the intermediate certificate (Fig. 5, claim 8, and page 1, paragraphs 9 – pages 2, paragraphs 12).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kuo et al. (US 2011/0087882) discloses Apparatus and Methods for Protecting Network Resources.
Mataic et al. (US 2022/0377550) discloses Secure and Trusted Peer-to-Peer Offline Communication Systema and Methods.
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J.L
June 12, 2026
John J Lee
/JOHN J LEE/
Primary Examiner, Art Unit 2649
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