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 .
DETAILED ACTION
1. This action is responsive to communication filed on: 25 October 2024 with acknowledgement that this application is a continuation of application 17/495,439 now patent 12,132,841 which is continuation of application 16/193,329 now patent 11,146,402 which claims the benefit of a provisional application filed on 17 October 2017.
2. Claims 1-20 are pending. Claims 1 and 11 are independent claims. Claims 1 and 11 have been amended.
Double Patenting
3. 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 statutory obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
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4. Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of application 16/193,329 now patent 11,146,402 and claims 1-16 of application 17/495,439 now patent 12,132,841. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the elements/features of claimed system/method that generates public/private keys for signing data as well as generating secret and transmitting and storing the key, and validate the combined secret to verify communications exist in the patented application in similar or different names, essentially performing the same tasks. The difference is that the pending claims contain less details in the independent claims. Below is a table showing the pending claims against the patented claims. The limitation not in the pending claims are underlined below.
PENDING APPLICATION
PATENT 12,132,841
A system for digital authentication comprising: a server; a device comprising: a first processor comprising a central processing unit (CPU) configured to provide general processing for the device; and a second processor separate and distinct from the first processor, the second processor programmed to: in response to an instruction from the CPU, generate a public key and a private key;
generate a first digital signature by:
generating a device signature comprising device identification information; generating to-be-signed signature data based on the device signature; and signing, by the private key, the to-be-signed signature data to generate the first digital signature;
wherein the device is programmed to transmit the public key and the first digital signature to the server; wherein the server is programmed to store the public key; wherein, after the device transmits the public key and the first digital signature to the server and the server stores the public key, as part of subsequent communication, the device is programmed to generate a second digital signature by repeating the steps for generating the first digital signature;
wherein the device is programmed to transmit the public key and the second digital signature to the server; and wherein the server is programmed to retrieve the public key and, using the public key, validate the second digital signature to verify that the second digital signature is from the device or a user of the device, thereby verifying that the subsequent communication is from the device or the user of the device.
A system for digital authentication comprising: a server; a device comprising: a first processor comprising a central processing unit (CPU) configured to provide general processing for the device; and a second processor separate and distinct from the first processor, the second processor programmed to: in response to an instruction from the CPU, generate a public key and a private key;
generate at least a first digital signature by: generating a secret, or receiving a secret from the server; combining the generated secret and the with other metadata from the device; generating a device signature comprising device identification information; combining the combined secret and the device signature to form to-be-signed signature data; and signing, by the private key, the to-be-signed signature data to generate the first digital signature;
wherein the device is programmed to transmit the public key and the first digital signature to the server; wherein, after the device transmits the public key and the first digital signature to the server as part of subsequent communication, the device is programmed to generate a second digital signature by repeating the steps for generating the first digital signature;
wherein the device is programmed to transmit the public key and the second digital signature to the server; and wherein the server is programmed to retrieve using the public key, validate the second digital signature to verify that the second digital signature is from the device or a user of the device, thereby verifying that the subsequent communication is from the device or the user of the device.
Allowable Subject Matter
5. Claims 3-6 and 13-16 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, 3-4 and 13-14. The prior art of record does not teach “wherein generation of the first digital signature further comprises: generating a secret, or receiving a secret from the server; and combining the secret and device signature to form the to-be-signed signature data, wherein the secret is a combined secret formed by combining the generated secret with other metadata from the device”.
Claim Rejections – 35 USC § 103
6. 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 of this title, 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.
7. Claims 1-2, 7-12, and 17-20, are rejected under 35 U.S.C. 103 as being unpatentable over Dent et al. U.S. Patent No. 7,000,111 (hereinafter ‘111) in view of Nix U.S. Patent Application Publication No. 2018/0144147 (hereinafter ‘147) in further view of Choi U.S. Patent Application Publication No. 2015/0312041 (hereinafter ‘041) in further view of Yoneda et al. U.S. Patent Application Publication No. 2012/0036364 (hereinafter ‘364).
As to independent claim 11, “A method of providing digital authentication comprising: a) providing a device comprising: i) a first processor comprising a central processing unit (CPU) configured to provide general processing for the device; and ii) a second processor separate and distinct from the first processor” is taught in ‘111 Abstract, Figures 1, 2, col. 3, lines 51-61, and col. 4, lines 4-52 note the first processor is [item 20] on Figure 1, processor 20 is the first processor, the SIM card contains the second processor (i.e. processor 24 on Figure 2) and is a tamper proof device (i.e. separate and distinct from the first processor) for performing cryptographic calculations;the following is not explicitly taught in ‘111:
“b) in response to an instruction from the CPU, the second processor to generating a public key and a private key” however ‘147 teaches a CU configuration unit could perform configuration steps such as …instructing CU 113 to generate PKI keys pairs in Figure 3a[item 305], paragraphs 67 and 207;
“c) the second processor generating a first digital signature by” however ‘147 teaches the private key is used perform digital signature operations in paragraphs 22 and 58;
“d) the device transmitting the public key and the first digital signature to a server” however ‘147 teaches the public key and signature are sent to an authentication server in paragraphs 86, 90, and 92;
“f) after steps d) and e) are completed, as part of a subsequent communication repeating step c) to generate a second digital signature; g) the device transmitting the public key and the second digital signature to the server” however ‘147 using the private/public keys for subsequent communication is paragraphs 22, 58, 86, 90, 92, 241-242, and 271-274;
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of a method for masking secret multiplicands taught in ‘111 to include a means to instruct a second processor to generate a public and private key and perform PKI functions. One of ordinary skill in the art would have been motivated to perform such a modification because the combination of machine-to-machine (M2M) communications and low-cost sensors is a promising and growing field that creates a need for security and trust between devices by utilizing cryptographic units supporting PKI operations these needs can be met see ‘147 (paragraphs 3-16). the following is not explicitly taught in ‘111 and ‘147:
“e) storing, at the server, the public key” however ‘041 teaches additional authentication factors (such as a public key) are used to uniquely identify the user to an authentication service in subsequent communications (i.e. second user authentication) in the Abstract, paragraphs 9-11, 44, 49 and 92;
“h) the server retrieving the public key; and using the public key, the server validating the second digital signature to verify that the second digital signature is from the device or a user of the device, thereby verify that the subsequent communication is from the device or the user of the device” however ‘041 teaches verifying digital signatures in subsequent communication in paragraphs 9-11, 44, and 49.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of for masking secret multiplicands with a cryptographic unit for public key infrastructure (PKI) operations taught in ‘111 and ‘147 to include a means to store by the server the public key to uniquely identify the user of the device in subsequent communications between the server and the device to prevent a hacker from illegally accessing a network. One of ordinary skill in the art would have been motivated to perform such a modification to protect networks using multifactor authentication see ‘041 (paragraphs 5-8).the following is not explicitly taught in ‘111, ‘147, ‘041:
“i) generating one or more device signatures comprising device identification information; ii) generating one or more to-be-signed signature data based on the one or more device signatures; and iii) signing, by the private key, the one-or more to-be-signed signature data to generate the first digital signature” however ‘364 teaches generating a self signature which is a signature of the predetermined data (i.e. device ID authentication information) in paragraphs 16, 19, and 24.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of a method for masking secret multiplicands taught in ‘111, ‘147, and ‘041 to include a means to generate one or more device signatures. One of ordinary skill in the art would have been motivated to perform such a modification because network communications leads to threat such as identity fraud see ‘364 paragraphs 2-9.
As to dependent claim 12, “The method of claim 1 wherein the second processor is dedicated solely to security functionality” is taught in ‘111 col. 3, lines 51-61 and col. 4, lines 48-62, note the SIM card contains the second processor (i.e. processor 24) and is a tamper proof device (i.e. separate and distinct from the first processor) for performing cryptographic calculations.
As to dependent claim 17, “The method of claim 11 wherein the device is a smartphone, and the server authenticates the user of the smartphone” is taught in ‘041 paragraphs 57-58, 168-169, and 181;
“or the device is a non-internet-enabled device forming part of an internet of things, and the server authenticates the non-internet-enabled device” is shown in ‘041 paragraph 2, note “off-line” (i.e. non-internet enabled device) authentication.
As to dependent claim 18, “The method of claim 11 wherein the server validates the public key” is disclosed in ‘041 paragraphs 44 and 49.
As to dependent claim 19, “The method of claim 11 wherein and the server validates the first digital signature with the public key” is taught in ‘041 paragraphs 15 and 48.
As to dependent claim 20, “The method of claim 11 wherein the second processor is programmed to generate certificates for public keys” is shown in ‘147 paragraph 59.
As to independent claim 1, this claim is directed to a system executing the method of claim 11; therefore, it is rejected along the same rationale.
As to dependent claims 2 and 7-10 these claims contain substantially similar subject matter to claims 12 and 17-20; therefore, they are rejected along similar rationale.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN C TRAN whose telephone number is (571) 272-3842. The examiner can normally be reached from M-F 9 AM to 6PM.
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/ELLEN TRAN/Primary Examiner, Art Unit 2433 24 January 2026