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 .
Priority
This application is a Continuation of U.S. patent application Ser. No. 17/585,132filed Jan. 26, 2022, the entire contents of which are incorporated by reference herein in their entirety.
DETAILED ACTION
This Office Action is in response to a Non-Provisional Patent Application received on 10/21/2024. In the application, claims 1-20 have been received for consideration and have been examined.
Specification
Applicant’s submitted specification has been reviewed and found to be in compliance.
Drawings
Applicant’s submitted drawings have been reviewed and found to be in compliance.
Claim Rejections - 35 USC § 101
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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more analyzed according to MPEP 2106.
Step 1: The independent claims 1, 8, and 15 do fall into one of the four statutory categories of “a computer-implemented method, One or more non-transitory computer storage media, and a computer system” claims.
Step 2A: Prong 1: The limitations of the independent claims 1, 8, and 15 recite the abstract idea which falls into the categories of Mathematical Concepts performing mathematical formulas and calculations and Mental Processes comprising concepts performed in the human mind (including an observation, evaluation, judgment, opinion). The limitations recite Abstract Idea as follows:
receiving a certificate signing request for an identity (Mathematical Concepts: An algorithm receive a certificate signing request for an identity [of an entity];
Mental Process: a human receive certificate signing request to prove an identity for another human);
generating a leaf certificate for the identity in response to the certificate signing request (Mathematical Concepts: the algorithm generate a secondary/leaf certificate in response to a certificate signing request;
Mental Process: the human generates a secondary/lead certificate in response to a certificate signing request);
embedding an intermediate certificate in the leaf certificate, wherein embedding the intermediate certificate in the leaf certificate enables extracting the intermediate certificate from the leaf certificate and eliminates retrieving the intermediate certificate from intermediate certificate store (Mathematical Concepts: the algorithm inserts one certificate into another one in order to retrieve the inserted certificate for later use;
Mental Process: the human inserts one certificate into another one in order to retrieve the inserted certificate for later use);
based on the intermediate certificate being embedded in the leaf certificate, signing the leaf certificate using the intermediate certificate; and (Mathematical Concepts: the algorithm signs the inserted certificate using the previous certificate;
Mental Process: the human sign the inserted certificate using the previous certificate); and
distributing the leaf certificate with the embedded intermediate certificate to cause verification of the leaf certificate when a calculated signature for the leaf certificate matches the signature include in the leaf certificate (Mathematical Concepts: the algorithm distributes and verify the end certificate signature against the intermediate certificate signature;
Mental Process: the human distributes and verify the end certificate signature against the intermediate certificate signature).
The claim generically recites the steps or computations that can be actually be performed mentally or with a pen and paper. The above limitations recite steps which clearly fall into the bucket of Mathematical Concepts performing mathematical formulas and calculations and Mental Processes comprising concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Step 2A: Prong 2: The judicial exception (i.e., receiving a certificate signing request for an identity; generating a leaf certificate for the identity in response to the certificate signing request; embedding an intermediate certificate in the leaf certificate, wherein embedding the intermediate certificate in the leaf certificate enables extracting the intermediate certificate from the leaf certificate and eliminates retrieving the intermediate certificate from intermediate certificate store; based on the intermediate certificate being embedded in the leaf certificate, signing the leaf certificate using the intermediate certificate; and distributing the leaf certificate with the embedded intermediate certificate to cause verification of the leaf certificate when a calculated signature for the leaf certificate matches the signature include in the leaf certificate) is not integrated into a practical application. In particular, the claims do not recite any additional element to perform beyond routine steps. To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.5(a) II).
In this particular case, the additional elements of the claims are:
“a computer-implemented method” (claim 1), “One or more non-transitory computer storage media having computer executable instructions stored thereon which, when executed by one or more processors, cause the processors to execute a method” (claim 8) and “A computer system that verifies a leaf certificate in a PM chain of trust, the system” (claim 15).
Recitation of these additional elements do not improve the functioning of the computer or to any other technology or technical field instead recite elements which are considered an improvement to the Abstract Idea itself.
The additional elements are recited at a high-level of generality (i.e., as generic terms performing generic computer functions (instant spec. [0081-0082], [0083] & [0108]) such that it amounts no more than mere instructions to apply the exception using generic computer components.
Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claims do not reflect improvement in the technology. Further, mere automated instructions to apply an exception using a generic computer component cannot provide an inventive concept. Thus, the claims are not patent eligible.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (i.e., “a computer-implemented method” (claim 1), “One or more non-transitory computer storage media having computer executable instructions stored thereon which, when executed by one or more processors, cause the processors to execute a method” (claim 8) and “A computer system that verifies a leaf certificate in a PM chain of trust, the system” (claim 15)) amount to no more than mere instructions to apply the exception using general purpose computer.
The additional elements are recited at a high-level of generality (i.e., as generic terms performing generic computer functions (instant spec. [0081-0082], [0083] & [0108]) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
To support this factual conclusion, the examiner takes Official Notice that one of the ordinary skills in the art, before the effective filing date of the claimed invention, would have found processors and/or software well-known and routine in technology that involves computers (instant spec. [0081-0082], [0083] & [0108]) such that it amounts no more than mere instructions to apply the exception using generic computer components. Also see attached NPL titled “Certificate Management for Embedded Systems” discloses that digital certificates are implemented through the use of algorithms which is considered an abstract idea as per the cited guidelines.
Therefore, the use of these additional elements (i.e., “a computer-implemented method” (claim 1), “One or more non-transitory computer storage media having computer executable instructions stored thereon which, when executed by one or more processors, cause the processors to execute a method” (claim 8) and “A computer system that verifies a leaf certificate in a PM chain of trust, the system” (claim 15)) individually or in combination, does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claim 2 is a method claim and hence falls into one of the statutory categories and therefore passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claim fails to recite any limitations that create a difference in the 101 analysis as indicated for claim 1, because claim 2 merely recite “receiving the leaf certificate signed by the intermediate certificate, the intermediate certificate being embedded in the leaf certificate; extracting the intermediate certificate from the received leaf certificate; calculating a signature for the received leaf certificate using a public key from the extracted intermediate certificate; comparing the calculated signature for the received leaf certificate to the signature included in the received leaf certificate; and verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate” which are steps that could be performed deploying using a mathematical algorithm or through a human mind using pen and paper. Thus claim 2 is ineligible.
Dependent claim 3 is a method claim and hence falls into one of the statutory categories and therefore passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claim fails to recite any limitations that create a difference in the 101 analysis as indicated for claim 1, because claim 2 merely recite “when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate: calculating a signature for each remaining certificate in a chain of trust for the received leaf certificate; comparing the calculated signature for each remaining certificate in the chain of trust for the received leaf certificate to a signature included in each remaining certificate in the chain of trust; and the step of verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate comprises verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate and when the calculated signature for each remaining certificate in the chain of trust for the received leaf certificate matches the signature included in each remaining certificate in the chain of trust” which are steps that could be performed deploying using a mathematical algorithm or through a human mind using pen and paper. Thus claim 3 is ineligible.
Dependent claim 4 is a method claim and hence falls into one of the statutory categories and therefore passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claim fails to recite any limitations that create a difference in the 101 analyses as indicated for claim 1, because claim 2 merely recite “the intermediate certificate is included in the leaf certificate as an X.509 property of the leaf certificate” which only describes the type of the certificate which is can defined in the mathematical algorithm or can be designated by a human using pen and paper.
Thus claim 4 is ineligible.
Dependent claim 5 is a method claim and hence falls into one of the statutory categories and therefore passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claim fails to recite any limitations that create a difference in the 101 analyses as indicated for claim 1, because claim 2 merely recite “calculating a first hash value for the leaf certificate before distributing the leaf certificate; including the first hash value in the leaf certificate to be distributed; the step of signing the leaf certificate using an intermediate certificate comprises signing the leaf certificate with the first hash value using an intermediate certificate; calculating a second hash value for the received leaf certificate; comparing the second hash value to the first hash value included in the received leaf certificate; and verifying the received leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate and the first hash value matches the second hash value” which are the steps that could be performed deploying using a mathematical algorithm or through a human mind using pen and paper. Thus claim 5 is ineligible.
Dependent claim 6 is a method claim and hence falls into one of the statutory categories and therefore passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claim fails to recite any limitations that create a difference in the 101 analyses as indicated for claim 1, because claim 2 merely recite “the intermediate certificate corresponds to an intermediate certificate authority” which only describes the relationships between the certificates which is can defined in the mathematical algorithm or can be designated by a human using pen and paper. Thus claim 6 is ineligible.
Dependent claim 7 is a method claim and hence falls into one of the statutory categories and therefore passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claim fails to recite any limitations that create a difference in the 101 analyses as indicated for claim 1, because claim 2 merely recite “receiving and verifying the leaf certificate according to a [TLS] protocol” which is an action that can be performed by a human using pen and paper. Thus claim 7 is ineligible.
Independent claims 8, and 15 and dependent claims 9-14 and 16-20 passes step 1 analysis. However, under step 2, 2A & 2B analysis, the claims recite similar subject matter as it has been highlighted and addressed above for claims 1-7 and therefore fails to recite limitations that create a difference in the 101 analyses. Thus claims 8-20 are considered ineligible.
Overall analysis of the claims 1-20 demonstrates that limitations are directed to a category of Mathematical Concepts performing mathematical formulas and calculations and Mental Processes comprising concepts performed in the human mind (including an observation, evaluation, judgment, opinion) performable by a human being in their head using a pen and paper in a methodical and orderly manner. Therefore, the claims recite an abstract idea.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US12143509B2. Although the claims at issue are not identical, they are not patentably distinct from each other because instant independent claims do not recite following limitations from the identified patented application:
“receiving a certificate signing request for an identity;
generating a leaf certificate for the identity in response to the certificate signing request;
embedding an intermediate certificate in the leaf certificate,
based on the intermediate certificate being embedded in the leaf certificate, signing the leaf certificate using the intermediate certificate; and
distributing the leaf certificate with the embedded intermediate certificate to cause verification of the leaf certificate when a calculated signature for the leaf certificate matches the signature include in the leaf certificate”.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending applicant claims are broader than the patented claims.
Claims 1-20 recite similar limitations as claims of US Patent # US12143509B2 as follows:
Instant Application # 18/921,936
US Patent No. US12143509B2
1. A computer-implemented method, the method comprising:
receiving a certificate signing request for an identity;
generating a leaf certificate for the identity in response to the certificate signing request;
embedding an intermediate certificate in the leaf certificate, wherein embedding the intermediate certificate in the leaf certificate enables extracting the intermediate certificate from the leaf certificate and eliminates retrieving the intermediate certificate from intermediate certificate store;
based on the intermediate certificate being embedded in the leaf certificate, signing the leaf certificate using the intermediate certificate; and
distributing the leaf certificate with the embedded intermediate certificate to cause verification of the leaf certificate when a calculated signature for the leaf certificate matches the signature include in the leaf certificate.
3. The method of claim 1, the method including:
receiving a certificate signing request for an identity;
generating the leaf certificate for the identity in response to the certificate signing request;
embedding an intermediate certificate in the leaf certificate;
signing the leaf certificate using the intermediate certificate; and
distributing the leaf certificate with the embedded intermediate certificate.
2. The computer-implemented method of claim 1, the method including:
receiving the leaf certificate signed by the intermediate certificate, the intermediate certificate being embedded in the leaf certificate;
extracting the intermediate certificate from the received leaf certificate;
calculating a signature for the received leaf certificate using a public key from the extracted intermediate certificate;
comparing the calculated signature for the received leaf certificate to the signature included in the received leaf certificate; and
verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate.
1. A computer-implemented method for verifying a leaf certificate in a PKI chain of trust, the method comprising:
receiving a leaf certificate signed by an intermediate certificate, the intermediate certificate being embedded in the leaf certificate, wherein embedding the intermediate certificate in the leaf certificate enables extracting the intermediate certificate from the leaf certificate and eliminates retrieving the intermediate certificate from intermediate certificate store;
based on the intermediate certificate being embedded in the leaf certificate, extracting the intermediate certificate from the leaf certificate;
calculating a signature for the leaf certificate using a public key from the extracted intermediate certificate;
comparing the calculated signature for the leaf certificate to a signature included in the leaf certificate; and
verifying the leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate, wherein verifying the leaf certificate based on the intermediate certificate embedded in the receive leaf certificate eliminates verification failures associated with unsynchronized intermediate certificates.
3. The method of claim 2, where step of verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate comprises:
when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate:
calculating a signature for each remaining certificate in a chain of trust for the received leaf certificate;
comparing the calculated signature for each remaining certificate in the chain of trust for the received leaf certificate to a signature included in each remaining certificate in the chain of trust; and
the step of verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate comprises verifying the received leaf certificate when the calculated signature for the received leaf certificate matches the signature included in the received leaf certificate and when the calculated signature for each remaining certificate in the chain of trust for the received leaf certificate matches the signature included in each remaining certificate in the chain of trust.
2. The computer-implemented method of claim 1, where step of verifying the leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate comprises:
when the calculated signature for the leaf certificate matches the signature included in the leaf certificate:
calculating a signature for each remaining certificate in a chain of trust for the leaf certificate;
comparing the calculated signature for each remaining certificate in the chain of trust for the leaf certificate to a signature included in each remaining certificate in the chain of trust; and
the step of verifying the leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate comprises verifying the leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate and when the calculated signature for each remaining certificate in the chain of trust for the leaf certificate matches the signature included in each remaining certificate in the chain of trust.
4. The method of claim 1, where the intermediate certificate is included in the leaf certificate as an X.509 property of the leaf certificate.
4. The method of claim 3, where the intermediate certificate is included in the leaf certificate as an X.509 property of the leaf certificate.
5. The method of claim 1, where the method includes:
calculating a first hash value for the leaf certificate before distributing the leaf certificate;
including the first hash value in the leaf certificate to be distributed;
the step of signing the leaf certificate using an intermediate certificate comprises signing the leaf certificate with the first hash value using an intermediate certificate;
calculating a second hash value for the received leaf certificate;
comparing the second hash value to the first hash value included in the received leaf certificate; and
verifying the received leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate and the first hash value matches the second hash value.
5. The method of claim 3, where the method includes:
calculating a first hash value for the leaf certificate before distributing the leaf certificate;
including the first hash value in the leaf certificate to be distributed;
the step of signing the leaf certificate using an intermediate certificate comprises signing the leaf certificate with the first hash value using an intermediate certificate;
calculating a second hash value for the leaf certificate;
comparing the second hash value to the first hash value included in the leaf certificate; and
verifying the leaf certificate when the calculated signature for the leaf certificate matches the signature included in the leaf certificate and the first hash value matches the second hash value.
6. The method of claim 1, wherein the intermediate certificate corresponds to an intermediate certificate authority.
6. The method of claim 1, wherein the intermediate certificate corresponds to an intermediate certificate authority.
7. The method of claim 1, where the leaf certificate is received and verified as part of a TLS handshake protocol.
7. The method of claim 1, where the leaf certificate is received and verified as part of a TLS handshake protocol.
Other independent claims 8, and 15 and their dependent claims recite similar subject matter as identified above claims.
Therefore, claims 1-20 are rejected on the ground of nonstatutory double patenting over claims 1-24 of U.S. Patent No. US12143509B2 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.
Furthermore, there is no apparent reason why applicant was prevented from presenting
claims corresponding to those of the instant application during prosecution of the application
which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See
also, MPEP § 804.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kusudo et al., US20060015746A1
Yamashitha., US20100138933A1
Shin., US20220069602A1
Gupta., US20220131691A1
Gray et al., US12388661B2
Certification path validation algorithm - NPL (https://en.wikipedia.org/wiki/Certification_path_validation_algorithm)
Certificate Management for Embedded Systems – NPL
(https://web.archive.org/web/20211221075557/https://realtimelogic.com/articles/Certificate-Management-for-Embedded-Systems)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED M AHSAN whose telephone number is (571)272-5018. The examiner can normally be reached 8:30 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at 571-270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SYED M AHSAN/Primary Examiner, Art Unit 2491