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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted by applicant dated 09/26/2024, 08/25/2025 and 01/14/2026 have been considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7, 9 and 16-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5, 9, 11-13, 15, 17 and 19-20 of USPN 12,141,248 (Appl. No: 17/907919). Although the claims at issue are not identical, they are not patentably distinct from each other. (see Claim-Comparison Table below for independent claim 1 of the instant application against Claim 19 of 12,141,248).
Claim
Application#18/897983
Claim
USPN # 12,141,248
1
obtaining, by the back-end server computer, a message comprising content to provide to an application installed on a user device;
encrypting, by the back-end server computer, the message with a master secret key or a key derived from the master secret key to obtain an encrypted message; and
providing, by the back-end server computer, the encrypted message to the user device, wherein the user device, using a secure element, signs the encrypted message with a secure element private key to obtain a signed encrypted message, cryptographically recovers, using a whitebox in the application, a secure element public key from a certified key using a back-end server computer public key, cryptographically recovers, using the whitebox, the encrypted message from the signed encrypted message using the secure element public key, and decrypts, using the whitebox, the encrypted message using the master secret key or the key derived from the master secret key to obtain the message.
19
obtaining, by a back-end server computer, a message comprising content to provide to an application installed on a user device;
encrypting, by the back-end server computer, the message with a master secret key or a key derived from the master secret key to obtain an encrypted message; and
providing, by the back-end server computer, the encrypted message to the user device, wherein the user device, using a secure element, signs the encrypted message with a secure element private key to obtain a signed encrypted message, cryptographically recovers, using a whitebox in the application, a secure element public key from a certified key using a back-end server computer public key, cryptographically recovers, using the whitebox, the encrypted message from the signed encrypted message using the secure element public key, and decrypts, using the whitebox, the encrypted message using the master secret key or the key derived from the master secret key to obtain the message.
Claims 2-7, 9 and 16-19 of the instant application is equivalent in scope with Claims 1-5, 9, 11-13, 15, 17 and 19-20 of USPN 12,141,248.
Claim Objections
Claim 8 is objected to because of the following informalities: the claim recites “The method of claim 5”. It is suggested to amend to “The back-end server computer of claim 5”.
Appropriate correction is required.
Allowable Subject Matter
Claims 1-7, 9 and 16-19 would be allowable if a terminal disclaimer is timely filed to overcome the double patenting rejection, set forth in this Office action.
Claims 8, 10-15 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art made of record are:
Bodis et al. US2014/0006803 teaches a system and method for securely binding an arbitrary program to an authorized instance of a generic execution platform. Once the binding process occurs, the protected software application will not exhibit correct behavior unless run on the execution platform to which it is bound. The system and method withstands repeated attacks which tamper with the software application and the execution platform. Bind a program, P, to any un-trusted execution platform, E, which contains a Trusted Signing Authority (TSA).
Prakash et al. US2017/0063975 teaches a system and method for binding a software application to a communication device may include sending a set of device identifiers associated with the computing device to a server, receiving a server-generated dynamic device identifier that is generated based on the set of device identifiers; and storing the server-generated dynamic device identifier during initialization of the application. During runtime execution of the application, the application may receive a request to execute an application specific task. In response to receiving the request, the application may generate a runtime dynamic device identifier, determine whether the runtime dynamic device identifier matches the server-generated dynamic device identifier, execute the application specific task when the runtime dynamic device identifier matches the server-generated dynamic device identifier; and prevent the application specific task from being executed when the runtime dynamic device identifier does not match the server-generated dynamic device identifier.
Michiels et al. US2019/0312718 teaches systems and methods for performing a secure function in a data processing system. Generating and encoding an encryption key. The encoded encryption key may be encrypted in a key store in a trusted execution environment (TEE) of the data processing system. The encrypted encryption key may encrypted, stored, and decrypted in the key store in the TEE, but used in a white-box implementation to perform a secure function. The secure function may include encrypting a value in the white-box implementation for securing a monetary value on, for example, a smart card.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY TSANG whose telephone number is (571)270-7959. The examiner can normally be reached M-F 9am - 5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached at (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HENRY TSANG/Primary Examiner, Art Unit 2495