DETAILED ACTION
This is in response to the application filed on October 15, 2024 where Claims 1 – 23, of which Claims 1 and 13 are in independent form, are presented for examination.
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 .
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on October 15, 2024 (x3) was filed before the mailing date of the current action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
101 Analysis
Claims 1 and 13 are directed encrypting messages received through a messaging application through a keyboard/encryption software within the sending device and sending the encrypted message to a second device. The claims do not recite an abstract idea, law of nature, or natural phenomenon. Therefore, the claims satisfy Step 2A, Prong One of the 2019 Revised 101 Patent Eligibility Guidelines as patent eligible subject matter.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 11,356,252.
1. Regarding Claims 1, 2, 13, and 23, the claimed use of an input application to perform the encryption processes instead of an encryption helper agent described in the patent are equivalent limitation since they are both software programs that perform the same functions within the claims. Therefore, the claims are anticipated by Claims 1 and 11 of the patent.
Patent
Application
Claim 1: A method comprising:
installing an encryption helper agent for use with a first Web e-mail application at a first device;
invoking the first Web e-mail application via a browser on the first device;
within the first Web e-mail application,
invoking the encryption helper agent;
receiving a message input by the user in an input screen generated by the encryption helper agent within the first Web e-mail application, without exiting the first Web e-mail application;
from the encryption helper agent, requesting a quantum random number from a quantum random number generator server;
using the quantum random number received, within the first Web e-mail application, generating an encryption key;
using the encryption helper agent within the first Web e-mail application,
sending a copy of the encryption key to an encryption key server and receiving a transaction receipt identifier from the encryption key server;
using the encryption helper agent within the first Web e-mail application, encrypting the message using the encryption key and inserting the encrypted message in a body section of a new message screen of the first Web e-mail application in a form of a uniform resource locator (URL) link; and
using the encryption helper agent within the first Web e-mail application, adding the transaction receipt identifier in unencrypted form to the body section of a new message screen of the first Web e-mail application, wherein the encrypted message and the transaction receipt identifier in the body section of the new message screen will be transmitted by the first Web e-mail application.
A method comprising:
installing an input application on a first device;
invoking a first messaging application on the first device;
within the first messaging application, invoking the input application to input keyboard information;
upon receiving an encryption request, via the input application,
requesting a random number from a random number generator server;
using the random number received, within the first messaging application, generating an encryption key;
using an encryption helper application within the first messaging application,
sending a copy of the encryption key to and receiving a transaction receipt identifier from an encryption key server;
receiving a message input by a user in the input application within the first messaging application,
without exiting the first messaging application;
using the input application within the first messaging application, encrypting the message using the encryption key; and
using the input application, inputting the encrypted message along the transaction receipt identifier to the first messaging application for transmission by the first messaging application.
2. The method of claim 1 wherein the random number generator server is a quantum random number generator server.
2. Claims 13 and 23 are anticipated by Claim 11 of the patent.
3. Regarding Claims 3 – 12 and 14 – 22, the claims recite similar limitations as Claims 2 – 10, and 12 – 20 of the patent and are also anticipated.
Claims 1 – 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 11,563,725.
4. Regarding Claims 1, 2, 13, and 23, the claimed use of an input application to perform the encryption processes instead of an encryption helper agent described in the patent are equivalent limitation since they are both software programs that perform the same functions within the claims. Therefore, the claims are anticipated by Claims 1 and 8 of the patent.
5. Regarding Claims 3 – 12 and 14 – 22, the claims recite similar limitations as Claims 1 – 7, 18 – 22 of the patent.
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, 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.
Claims 1, 3, 8, 10 – 16, and 21 – 22 are rejected under 35 U.S.C. 103 as being obvious over U.S. PGPub. 2016/0360402 (hereinafter “Park”), in view of PGPub. 2008/0086646 (hereinafter “Pizano”).
6. Regarding Claim 1, Park discloses of a method [Fig. 1, 2] comprising:
installing an input application on a first mobile device [Para. 0033 ,0036, 0039; inherent that installing of keyboard SW occurred at previous point in time to be within mobile terminal];
invoking a first messaging application on the first device [Fig. 2, item 210a; Para. 0038];
within the first messaging application, invoking the input application to input keyboard information [Fig. 2; items 214, 216; Para. 0038-39, 0041];
using
receiving a message input by the user in the input application within the first messaging application, without exiting the first messaging application [Fig. 2, item 218, Fig. 3B; Para. 0041-43];
using the input application within the first messaging application, encrypting the message using the encryption key [Fig. 2, items 230, 232, 240a, 240b; Fig. 3C; Para. 0044; keyboard software expresses encrypted text as a URL]; and
using the input application, inputting the encrypted message [Fig. 2, items 230, 232, 240a, 240b; Fig. 3C; Para. 0044; keyboard software expresses encrypted text as a URL]
Park, however, does not specifically disclose of 1) via the input application, requesting a random number for a random number generator server, 2) using the encryption helper application within the first application, sending a copy of the encryption key and receiving a transaction receipt identifier from the encryption key server, and 3) using the keyboard application within the first application, adding the transaction receipt identifier to the first messaging application.
Pizano discloses a system and method for transmitting secure messages [Abstract]. Pizano further discloses that the sending device transmits the generated encryption key to the server, where the server returns a secure package identifier (sending a copy of the encryption key to an encryption key server and receiving a transaction receipt identifier from the encryption key server) [Fig. 3 and 5; Para. 0058, 0061]. Pizano further discloses that the secure package identifier is combined with the encrypted content to for a secure data package that is transmitted to the recipient device (adding the transaction receipt identifier in unencrypted for the first messaging application) [Figs 3 and 5; Para. 0063]. It would have been obvious to one skilled in the art before the effective filing date of the current invention to incorporate the teachings of Pizano with Park since both systems are encrypt messages to be sent between devices. The combination would utilize the key server to store the encryption keys used between devices via the keyboard software while utilizing the messaging application service to send the encrypted messages. The motivation to do so is to allow scalability with a variety of existing messaging application/server systems and to reduce the storage requirements of the key server for improved performance and application [Pizano; Para. 0006-7; also obvious to one skilled in the art].
7. Regarding Claim 3, Park, in view of Pizano, discloses the limitations of Claim 1. Park further discloses of:
installing the input application on a second device [Fig. 4A; Para. 0051-53; inherent that installing of keyboard SW occurred at previous point in time to be within terminal];
receiving the encrypted message at a second messaging application on the second device [Fig. 4A, items 240b; Para. 0051];
using the encryption helper application within the second messaging application, decrypting the encrypted message using the encryption key [Fig. 4A, item 420; Para. 0054].
Park does not specifically disclose of upon receiving a decryption request, at the keyboard application, sending the transaction receipt identifier to the encryption key server and receiving the corresponding encryption key used to the encrypt the encrypted message.
Pizano discloses that the recipient device requests the encryption key from the server by sending the secure package identifier (sending the transaction receipt identifier to the encryption key server and receiving the corresponding encryption key used to the encrypt the encrypted message) [Fig. 4 and 5; Para. 0081, 0086]. The use of a key server to store and distribute the key to a recipient has the same motivation as above in Claim 1.
8. Regarding Claim 8, Park, in view of Pizano, discloses the limitations of Claim 1. Pizano further discloses that the first messaging application comprises an e- mail application [Para. 0039; email application].
9. Regarding Claim 10, Park, in view of Pizano, discloses the limitations of Claim 1. Pizano further discloses that the encrypted message is not stored at a server maintained by a service provider of the encryption helper application [Fig. 5].
10. Regarding Claim 11, Park, in view of Pizano, discloses the limitations of Claim 1. Pizano further discloses that the message, in unencrypted form, is not stored at a server maintained by a service provider of the first messaging application [Fig. 5; no message is stored on the server].
11. Regarding Claim 12, Park, in view of Pizano, discloses the limitations of Claim 11. Park further discloses that a first service provider of the encryption helper application is different from a second service provider of the first messaging application [Fig. 10; Para. 0082; communication company server vs message server].
12. Regarding Claim 13, Park discloses of a method [Figs. 1 and 2] comprising:
installing an input application on a first device [Para. 0036, 0039; inherent that installing of keyboard SW occurred at previous point in time to be within terminal];
invoking a first application on the first device [Fig. 2, item 210a; Para. 0038];
within the first messaging application, invoking the mobile application [Fig. 2; items 214, 216, 3B; Para. 0038-39, 0041-43];
receiving a message input by the user in an input screen of the keyboard application within the first application, without exiting the first application [Fig. 2, item 218, Fig. 3B; Para. 0041-43];
using
using the input application within the first application, encrypting the message using the encryption key and inserting the encrypted message in an input section of the first application in a form of a uniform resource locator (URL) link [Fig. 2, items 230, 232, 240a, 240b; Fig. 3C; Para. 0044; keyboard software expresses encrypted text as a URL]; and
wherein the encrypted message
Park, however, does not specifically disclose of 1) from the keyboard application, requesting a random number for a random number generator server, 2) using the keyboard application within the first application, sending a copy of the encryption key to an encryption key server and receiving a transaction receipt identifier from the encryption key server, and 3) using the keyboard application within the first application, adding the transaction receipt identifier in unencrypted form to the body section of a new message screen of the first application.
Pizano discloses a system and method for transmitting secure messages [Abstract]. Pizano further discloses that the sending device transmits the generated encryption key to the server, where the server returns a secure package identifier (sending a copy of the encryption key to an encryption key server and receiving a transaction receipt identifier from the encryption key server) [Fig. 3 and 5; Para. 0058, 0061]. Pizano further discloses that the secure package identifier is combined with the encrypted content to for a secure data package that is transmitted to the recipient device (adding the transaction receipt identifier in unencrypted form) [Figs 3 and 5; Para. 0063]. It would have been obvious to one skilled in the art before the effective filing date of the current invention to incorporate the teachings of Pizano with Park since both systems are encrypt messages to be sent between devices. The combination would utilize the key server to store the encryption keys used between devices via the keyboard software while utilizing the messaging application service to send the encrypted messages. The motivation to do so is to allow scalability with a variety of existing messaging application/server systems and to reduce the storage requirements of the key server for improved performance and application [Pizano; Para. 0006-7; also obvious to one skilled in the art].
13. Regarding Claim 14, Park, in view of Pizano, discloses the limitations of Claim 13. Park further discloses of:
installing the input application on a second device [Fig. 4A; Para. 0051-53; inherent that installing of keyboard SW occurred at previous point in time to be within terminal];
invoking a second application on the second device [Fig. 4A, item 410; Para. 0051-53];
receiving the encrypted message at the second application on the second device [Fig. 4A, items 240b; Para. 0051];
invoking the input application within the second application [Fig. 4A, item 416; Para. 0053];
using the input application within the second application, decrypting the encrypted message using the encryption key [Fig. 4A, item 420; Para. 0054].
Park does not specifically disclose of upon receiving a decryption request, at the input application, sending the transaction receipt identifier to the encryption key server and receiving the corresponding encryption key used to the encrypt the encrypted message.
Pizano discloses that the recipient device requests the encryption key from the server by sending the secure package identifier (sending the transaction receipt identifier to the encryption key server and receiving the corresponding encryption key used to the encrypt the encrypted message) [Fig. 4 and 5; Para. 0081, 0086]. The use of a key server to store and distribute the key to a recipient has the same motivation as above in Claim 1.
14. Regarding Claim 15, Park, in view of Pizano, discloses the limitations of Claim 13. Park further discloses that after installing the input application, the user selects to replace the default keyboard of the first device with the installed input application [Figs. 2, 3A-3C; Para. 0038; user input to use keyboard software that supports the security function].
15. Regarding Claim 16, Park, in view of Pizano, discloses the limitations of Claim 13. Park further discloses that after installing the input application, the user selects to use the installed input application instead of a previously installed keyboard [Figs. 2, 3A-3C; Para. 0038; user input to use keyboard software that supports the security function].
16. Regarding Claim 21, Park, in view of Pizano, discloses the limitations of Claim 13. Pizano further discloses that the keyboard application allows the user to encrypt the message before encryption using random number received using a password [Pizano, Para. 0068; authentication with server with user password].
17. Regarding Claim 22, Park, in view of Pizano, discloses the limitations of Claim 13. Pizano further discloses that the encrypted message is not stored at a server maintained by a service provider of the input application [Fig. 5].
Claims 2 and 23 are rejected under 35 U.S.C. 103 as being obvious over Park, in view of Pizano, in further view of PGPub. 2019/0394031 (hereinafter “Deng”).
18. Regarding Claims 2 and 23, Park, in view of Pizano, discloses the limitations of Claims 1 and 13. Park and Pizano, however, do no specifically disclose that the random number generator server is a quantum random number generator server.
Deng discloses a system and method for encrypting communications between devices [Abstract]. Deng further discloses that a quantum random number generator generates random numbers to be stored on the client device to be used to generate an encryption key (requesting a quantum random number for a quantum random number generator server) [Para. 0048]. It would have been obvious to one skilled in the art before the effective filing date to incorporate the teachings of Deng with Park since both systems are within the field of generating encryption keys to provide secure communication between devices. The combination would enable the Park terminal devices to use quantum random numbers generated by a server in the random generation of the encryption key. The motivation to do so is to increase the robustness of the encryption key used in encrypting the communication (obvious to one skilled in the art).
Claims 4, 9, 17, and 20 are rejected under 35 U.S.C. 103 as being obvious over Park, in view of Pizano, in further view of U.S. Patent 8,520,855 (hereinafter “Kohno”).
19. Regarding Claims 4 and 17, Park, in view of Pizano, discloses the limitations of Claims 1 and 13. Park and Pizano, however, do no specifically disclose that after passage of specific period of time, automatically removing the copy of the encryption key stored at the encryption key server.
Kohno discloses a system and method for encrypting data utilizing keys [Abstract]. Kohno further discloses that after a specific period of time, remotely stored keys can be deleted [Fig. 6; Col. 9, lines 39-48]. It would have been obvious to one skilled in the art before the effective filing date to incorporate the teachings of Kohno with Park since both systems are within the field of providing secure communication between devices. The combination would enable the Park system to delete encryption keys that have become stale or irrelevant. The motivation to do so is to improve system performance by reducing the number of keys stored (obvious to one skilled in the art).
20. Regarding Claim 9, Park, in view of Pizano, discloses the limitations of Claim 1. Park and Pizano, however, do not specifically disclose that the encrypted message is transmitted by the first messaging application via a short message service (SMS) protocol.
Kohno discloses a system and method for encrypting data utilizing keys [Abstract]. Kohno further discloses that that the various protocols used to transmit messages comprises SMTP [Col. 4, lines 64-65]. It would have been obvious to one skilled in the art before the effective filing date to incorporate the teachings of Kohno with Park since both systems are within the field of providing secure communication between devices. The combination would enable Park to utilize standard networking protocols utilized for a messaging application. The motivation to do so is to provide applicability to current industry standards for application to existing messaging systems (obvious to one skilled in the art).
21. Regarding Claim 20, Park, in view of Pizano, discloses the limitations of Claim 13. Pizano further discloses that the first messaging application comprises an e- mail application [Para. 0039; email application]. Park and Pizano, however, do not specifically disclose that the encrypted message is transmitted by the first application via a simple mail transfer protocol (SMTP) protocol.
Kohno discloses a system and method for encrypting data utilizing keys [Abstract]. Kohno further discloses that that the various protocols used to transmit messages comprises SMTP [Col. 4, lines 55-56]. It would have been obvious to one skilled in the art before the effective filing date to incorporate the teachings of Kohno with Park since both systems are within the field of providing secure communication between devices. The combination would enable Park to utilize standard networking protocols utilized for email application. The motivation to do so is to provide applicability to current industry standards for application to existing messaging systems (obvious to one skilled in the art).
Claims 5, 6, 7, 18, and 19 are rejected under 35 U.S.C. 103 as being obvious over Park, in view of Pizano, in further view of U.S. Patent 11,356,252 (hereinafter “Islam”).
22. Regarding Claims 5, 6, 7, 18 and 19, Park, in view of Pizano, discloses the limitations of Claims 1 and 13. Park and Pizano, however, do no specifically disclose that after the encrypted message has been transmitted by the first application, and before the encrypted message has been decrypted at the second device, receiving a request at the encryption key server to revoke/delete the sent encrypted message, and in response to the revoke/delete request, deleting the copy of the encryption key, whereby the encryption helper agent within the second application will be unable to decrypt the encrypted message without the availability of the copy of the encryption key.
Islam discloses a system and method for encrypting communications between devices [Abstract]. Islam further discloses that after the encrypted message has been transmitted by the first application, and before the encrypted message has been decrypted at the second device, receiving a request at the encryption key server to revoke/delete the sent encrypted message, and in response to the revoke/delete request, deleting the copy of the encryption key, whereby the encryption helper agent within the second application will be unable to decrypt the encrypted message without the availability of the copy of the encryption key [Col. 3, lines 31-46]. It would have been obvious to one skilled in the art before the effective filing date to incorporate the teachings of Islam with Park since both systems are within the field of providing secure communication between devices. The combination would enable Park to manage the accessibility of sent messages by deleting the encryption key to reverse unwanted correspondences. The motivation to do so is to provide greater flexibility as to how to handle communications between users to differentiate from other services (obvious to one skilled in the art).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. PGPub. 2011/0296179.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tae K. Kim, whose telephone number is (571) 270-1979. The examiner can normally be reached on Monday - Friday (10:00 AM - 6:30 PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jorge Ortiz-Criado, can be reached on (571) 272-7624. The fax phone number for submitting all Official communications is (703) 872-9306. The fax phone number for submitting informal communications such as drafts, proposed amendments, etc., may be faxed directly to the examiner at (571) 270-2979.
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/TAE K KIM/Primary Examiner, Art Unit 2496