DETAILED ACTION
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Trexler et al. (US 2019/0351694) in view of Rivlin et al. (US 2016/0140570).
In respect to claims 1 and 2, Trexler et al. disclose a cryptographic note comprising: a first transparent substrate 14; a first base layer 16 deposited on the first transparent substrate; a second base layer 16 deposited [indirectly] on the first base layer 16; and a second transparent substrate 14 formed on the second base layer 16 (0035; Fig. 1); the first and second base layers 16 are opaque (metal), and a code is provided therebetween, such as a private key (0039); the cryptographic note is configured to be delaminated to be irreversibly separated to expose the private key, and to cause irreversible damage e.g. separation into distinct layers via release material patterning (0034, 0041).
Trexler et al. do not disclose a public key, viewable through a window in the first base layer, however, Rivlin et al. teach a very similar cryptographic note wherein a private key is hidden by base layers, and the cryptographic note is irreversibly delaminated and destroyed upon opening to view the private key (Abstract). Furthermore, Rivlin et al. teach providing the matching public key on the same surface as the private key, and providing a window in the first base layer (upper opaque layer) (0019; Fig. 1A). It would have been obvious to provide the cryptographic note taught in Trexler et al. with a matching public key viewable through a window in the base layer in view of Rivlin et al. to simplify printing of the private and public keys (0019).
In respect to the amended subject matter, Trexler et al. further disclose that to access the private encryption key, delamination is required. This delamination includes destruction of materials not claimed above, including “breaking of print layers, breaking of security threads such as color-shift threads…changed color of adhesive, and demetalization of holograms” (0015). Any one of these elements can be construed as a “tamper-evident material”. Trexler et al. suggests that the delamination is across the entire surface of the cryptographic note, which provides for “about a periphery of the private encryption key”.
Furthermore, providing the tamper-evident material around periphery of the private key (and only around the periphery, although not claimed) would have been obvious to one of ordinary skill in the art at the effective filing date of the present application. The claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary common sense. Because the private key is intended to be clearly read, avoiding lamination e.g. adhesive directly above or below the private key would be common sense.
In respect to claims 3 and 4, Trexler et al. disclose holograms (which may be demetallized with opening) (0015).
In respect to claims 5-7, Trexler et al. disclose that the first and second base layer may comprise a metal on both sides of the private key, thus forming “RF blocking layers” (0019).
In respect to claim 8, Trexler et al. in view of Rivlin et al. do not explicitly teach the type of metal layer, e.g. a “precious metal”, however, it would have been obvious to one having ordinary skill in the art at the time the invention was made to *, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Precious metals, e.g. silver/gold are well known vacuum deposited metals.
In respect to claims 9 and 10, Trexler et al. disclose a hologram as stated above, which may be construed as a marking having a “spectral-shifting coating or treatment”.
In respect to claim 11-12 and 14-20, Trexler et al. disclose the claimed invention for the reasons stated above, including printing and providing the public and private key at the same time. Although measures such as “any data not being saved to a network” and “verifying that the public encryption key and private encryption key have been printed” is obvious. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, utilizing basic and routine security measures in providing public/private encryption keys.
In respect to claim 13, Rivlin et al. further teach a hologram, and that the hologram may be on the lower layer (second base layer) (0016). Although Rivlin does not disclose a particular size of the opening, only that it is at least large enough to reveal the public key, it would have been obvious to provide the opening to extend beyond the public key. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, providing viewing of the hologram on the lower layer (second base layer) in order to reveal the hologram previous to opening of the cryptographic note.
Response to Arguments
Applicant's arguments filed 07/22/26 have been fully considered but they are not persuasive.
The applicant contends that “Trexler does not disclose or teach a tamper-evident material positioned about a periphery of the private key, not that access to the private key requires breaking periphery-positioned tamper-evident material” however the Examiner respectfully disagrees for the reasons stated above. Providing a tamper-evident feature (delamination) over the entire surface of the cryptographic note includes a region that would be the periphery of the private key. The applicant contends that in Trexler a “general disclosure of destruction de-lamination, [which] is not sufficient to teach or suggest a specific, localized tamper-evident arrangement…” however “specific, localized” is not in the claim language, only “about a periphery” which is a sub-section of the entire cryptographic note, which the tamper-evident material is included i.e. the tamper-evident material is across the whole surface, thus, it is both about the periphery and any area internal to the periphery constituting the entire surface. It is further noted, although not required by the claims, that exclusion of the area of the private key would be obvious to one of ordinary skill in the art, as to not destroy the legibility of the private key upon delamination.
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 KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
