DETAILED ACTION
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 .
Acknowledgements
This is a first office action on the merits in response to the application filed February 7, 2025.
Claims 22-38 are pending in the application.
Claims 22-38 are examined below.
Based on a comparison of the PGPub US 2025/0182143 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Priority
This application is a continuation or continuation-in-part or divisional application. See MPEP § 201.06 (divisional), MPEP § 201.07 (continuation), or MPEP § 201.08 (continuation-in-part). In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the examiner has reviewed and considered the prior art cited in the prior-filed application(s). Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the prior-filed application(s) are now considered cited or ‘of record’ in this application. Additionally, applicant is reminded that a listing of the information cited or ‘of record’ in the prior-filed application(s) need not be resubmitted in this application unless applicant desires the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, applicant is reminded that the prosecution history of the prior-filed application(s) is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 21 and 32 are objected to because of the following informalities: where applicant recites “encrypting the public key and transfer the certificate to the user terminal,” it appears that applicant intends to recite “encrypting the public key and transferring the certificate to the user terminal” or similar.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 22-38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The claims are replete with errors. Examples of errors in the claims follow.
Regarding claim 22, applicant’s recitation “when it is identified that the certificate is not stored in the secure element, requesting the user terminal to generate the certificate, and generating, by the user terminal, a private key and a public key in accordance with the requesting, wherein the certificate includes the private key and the public key, which are set to be matched with each other, the private key stored in the secure element using an application programming interface (API) provided by an operating system (OS), and the public key transmitted from the user terminal to the banking business management server and stored in the banking business management server, wherein the banking business management server is configured to generate the certificate by encrypting the public key and transfer the certificate to the user terminal” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether there is one certificate or two certificates. One appears to be generated by the user terminal, one by the banking business management server, however, they are both referred to as “the certificate.” Additionally, it is unclear as to the meaning of “which are set to be matched with each other.” For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “which are set to be matched with each other” to be “the private key and the public key corresponding to each other.” Regarding the number of certificates, the examiner is interpreting there to be a single certificate, which is generated at the banking business server, while the user terminal only generates the keys that correspond to that certificate.
Claim 31 contains language similar to the recitation in claim 22 discussed in the immediately preceding paragraph, and claim 31 is rejected for reasons similar to those discussed above.
Regarding claim 22, applicant’s recitations “when it is identified that the certificate is stored in the secure element, searching …,” “when it is identified that the certificate is not stored in the secure element, requesting …,” “when identifying that the token key is stored in the secure element, displaying …,” “when identifying that the token key is not stored in the secure element and identifying that the user has not subscribed membership, displaying …,” and “when identifying that the token key is not stored in the secure element and identifying that the user has subscribed membership, determining …” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear whether these steps (“searching …,” etc) are optional, or not. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting the elements as required (ie, non-optional). For example, the examiner is interpreting “when it is identified that the certificate is stored in the secure element, searching …” as “in response to identifying that the certificate is stored in the secure element, searching ….” This interpretation maintains parallel claim scope with the other independent claim.
Regarding claim 22, applicant’s recitation “wherein the specified type of page is automatically determined depending on whether the token key is stored in the secure element and whether the user has subscribed membership, wherein displaying the specified type of page comprises” would have been unclear to a person having ordinary skill in the art at the time of the invention. There is no antecedent basis for “the specified type of page.” There is also no antecedent basis for a step of determining that page. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “wherein the specified type of page is automatically determined depending on whether the token key is stored in the secure element and whether the user has subscribed membership, wherein displaying the specified type of page comprises” to be “automatically determining a specified type of page depending on whether the token key is stored in the secure element and whether the user has subscribed membership, and displaying the specified type of page, wherein displaying the specified type of page comprises.”
Claim 31 contains language similar to the recitation in claim 22 discussed in the immediately preceding paragraph, and claim 31 is rejected for reasons similar to those discussed above.
Regarding claim 22, applicant’s recitation "the banking business management server" would have been unclear to a person having ordinary skill in the art. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether this recitation refers to a previously-introduced element or is intended to introduce a new element in the claim. See MPEP § 2173.05(e). For the purpose of comparison with the prior art, the examiner is interpreting the banking business management server to be a newly-introduced element.
Claim 31 contains language similar to the recitation in claim 22 discussed in the immediately preceding paragraph, and claim 31 is rejected for reasons similar to those discussed above.
Regarding claim 22, applicant’s recitation "the set login information" would have been unclear to a person having ordinary skill in the art. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether this recitation refers to a previously-introduced element or is intended to introduce a new element in the claim. See MPEP § 2173.05(e). For the purpose of comparison with the prior art, the examiner is interpreting the set login information to be a newly-introduced element.
Claim 31 contains language similar to the recitation in claim 22 discussed in the immediately preceding paragraph, and claim 31 is rejected for reasons similar to those discussed above.
Regarding claim 23, applicant’s recitation “The banking business processing method of claim 22, further comprising the step of generating the token key to identify whether the login information has been set, after the step of setting the login information” would have been unclear to a person having ordinary skill in the art at the time of the invention. There is no step of setting the login information. Therefore, it would be unclear whether such a step is required, or not. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting it to be a required step in the method.
Claim 32 contains language similar to the recitation in claim 23 discussed in the immediately preceding paragraph, and claim 32 rejected for reasons similar to those discussed above.
Regarding claim 25, applicant’s recitation “if the banking business processing application is re-executed after being terminated before the account is completely opened, next page of the completely input page is displayed to allow the user to subsequently perform account opening” would have been unclear to a person having ordinary skill in the art at the time of the invention. This recitation does not make sense grammatically.
Claim 33 contains language similar to the recitation in claim 25 discussed in the immediately preceding paragraph, and claim 33 is rejected for reasons similar to those discussed above.
Further regarding claim 32, the recitation “A non-transitory computer-readable storage medium configured to store a banking business processing application to allow a banking business processing method to be performed by a processor of a user terminal, the banking business processing method comprising the steps of: …” would have been unclear to a person having ordinary skill at the time of the invention. It is the examiner’s position that any non-transitory computer-readable medium of sufficient size is configured to store such a banking business processing application. However, it appears to be applicant’s intent that the medium actually contain the application. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “A non-transitory computer-readable storage medium configured to store a banking business processing application to allow a banking business processing method to be performed by a processor of a user terminal, the banking business processing method comprising the steps of: …” to be “A non-transitory computer-readable storage medium comprising a banking business processing application that when executed by a processor of a user terminal performs a banking business processing method comprising the steps of: …”. This interpretation maintains parallel claim scope with the other independent claim and appears to align with applicant’s intent.
Citation of Relevant Prior Art
The examiner finds that the claims are so unclear and have so many §112 rejections that ascertaining what is the claimed subject matter and construing the claims cannot be done at this time. See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) (“Because the claims are indefinite, the claims, by definition, cannot be construed.”). Once the §112 and other rejections are corrected, the claims will then be reevaluated in light of the prior art so as to ascertain their patentability. See MPEP §2173.06.
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Pala (US 2019/0042708 A1) discloses a system for provisioning certificates to secure elements of IOT devices.
Kresina (US 2004/0006701 A1) discloses a system for initializing hardware security modules, including storing a signed certificate in a hardware security module ([0030]).
Shablygin (US 8,826,019 B2) discloses a token ID-based centralized authentication system where the token ID includes a secure element (see Fig. 3).
Kurani (US 11,587,058 B1) discloses a mobile wallet system that includes identifying whether a user has a subscribed membership (customer token) and whether the user has a token key (device token) during the authentication process.
Kelley (US 2014/0207672 A1 discloses enrolling a user in a device identification program, including displaying a membership subscription page (Fig. 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 . The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
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