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 .
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). [AltContent: rect]
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 25-47 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 12261852. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 25 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 of U.S. Patent No. 12261852. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of the U.S. Patent No. 12261852 teaches all of the limitations of claim 25 of the instant application.
Claim 36 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 12 of U.S. Patent No. 12261852. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 12 of the U.S. Patent No. 12261852 teaches all of the limitations of claim 36 of the instant application.
Claim 47 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 22 of U.S. Patent No. 12261852. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 22 of the U.S. Patent No. 12261852 teaches all of the limitations of claim 47 of the instant application.
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 (i.e., changing from AIA to pre-AIA ) 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 25-28, 36-38 and 47 is rejected under 35 U.S.C. 103 as being unpatentable over ASANO; Tomoyuki US 20080209545 (hereinafter Asano) in view of SATO; Akane et al. US 20110004763 (hereinafter Sato).
As per claim 25, Asano teaches: A computer-implemented method, comprising acts of: receiving at least one attestation for at least one attribute of a first entity, wherein the at least one attestation comprises a cryptographic proof for the at least one attribute of the first entity (the sensor 103 receives a certificate containing hash value of device id and attributes in the received certificate (attestation) Asano: para. 104);
determining whether the cryptographic proof in the at least one attestation is a valid proof of a purported value of the at least one attribute of the first entity (the sensor validates the information in the certificate by comparing the hash values (Asano: para. 104);
Asano does not explicitly teach; however, Sato; Akane discloses:
determining whether the at least one attestation is electronically signed by a second entity (Sato: para. 5 and 53); and
determining whether the at least one attestation has been revoked by the second entity (“In responding to receipt of this validation request, the signature/certificate validation unit 22 validates the signed electronic document being saved in the validation target holding unit 26, by using the certificate which was received together with the signed electronic document. Then, the signature/certificate validation unit 22 saves the certificate that was used for the signature validation of the signed electronic document in the key holding unit 25 as a validation target certificate and performs validation using the CA certificate of the user's trusted CA. In this validation target certificate validating processing, the signature/certificate validation unit 22 performs several operations including validation of the signature of this validation target certificate, verification of non-expiration of its valid period, validation of other constraints, and verification of whether the validation target certificate is revoked or not.” Sato: Para. 53).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Asano with the teachings of Sato to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied in a predictable manner to ensure the authenticity of a digital certificate.
As per claim 26, the rejection of claim 25 is incorporated herein. Asano teaches:
the act of determining whether the cryptographic proof in the at least one attestation is a valid proof comprises determining whether the cryptographic proof is generated from the purported value of the at least one attribute of the first entity using one or more selected cryptographic functions (“The sensor 103 computes a hash value of information including the device ID "1234", the public key KPd, and the attribute, which are included in the certificate information received in step S51, using a preset algorithm and compares the hash value with the CA's decrypted signature. If the hash value matches the CA's signature, the validity of the certificate transmitted from the mobile device 104 is verified. If the hash value does not match the CA's signature, the validity of the certificate transmitted from the mobile device 104 is not verified.” Asano: para. 104).
As per claim 27, the rejection of claim 25 is incorporated herein. Asano teaches: the method further comprises an act of receiving, via a secure channel, the purported value of the at least one attribute of the first entity (Asano: para. 90).
As per claim 28, the rejection of claim 27 is incorporated herein. Asano teaches: the purported value of the at least one attribute of the first entity is received along with a randomly selected value (receiving certificate including device ID, attribute (Asano: para.107 and fig. 7); and
the act of determining whether the cryptographic proof in the at least one attestation is a valid proof comprises determining whether the cryptographic proof is generated from the purported value of the at least one attribute of the first entity and the randomly selected value (a random number is also transmitted as a challenge (Asano: para 109-111 and fig. 7).
As per claim 36, this claim defines a system that corresponds to method of claim 25 and does not define beyond limitations of claim 25. Therefore, claim 36 is rejected with the same rational as in the rejection of claim 25.
As per claim 37, this claim defines a system that corresponds to method of claim 26 and does not define beyond limitations of claim 26. Therefore, claim 37 is rejected with the same rational as in the rejection of claim 26.
As per claim 38, this claim defines a system that corresponds to method of claim 27 and does not define beyond limitations of claim 27. Therefore, claim 38 is rejected with the same rational as in the rejection of claim 27.
As per claim 39, this claim defines a system that corresponds to method of claim 28 and does not define beyond limitations of claim 28. Therefore, claim 39 is rejected with the same rational as in the rejection of claim 28.
As per claim 47, this claim defines a one non-transitory computer-readable medium having encoded thereon that corresponds to method of claim 25 and does not define beyond limitations of claim 25. Therefore, claim 47 is rejected with the same rational as in the rejection of claim 25.
Claims 29 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over ASANO in view of Sato and further in view of Wilson; Stephen US 8347101 (hereinafter Wilson).
As per claim 29, the rejection of claim 27 is incorporated herein. The combination of Asano and Sato does not teach; however, Wilson discloses: the at least one attribute comprises a first attribute of the first entity (a user’s personal information being a first attribute. Wilson: col. 17, lines 16-46);
the first entity has at least one second attribute (a pointer to the user’s personal information. Wilson: col. 17, lines 16-46);
the purported value of the first attribute is derived from a value of the at least one second attribute (Wilson: col. 17, lines 16-46); and
the value of the at least one second attribute is not received (Wilson: col. 17, lines 16-46).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano and Sato with the teachings of Wilson to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied in a predictable manner to anonymize user information.
As per claim 40, this claim defines a system that corresponds to method of claim 29 and does not define beyond limitations of claim 29. Therefore, claim 40 is rejected with the same rational as in the rejection of claim 29.
Claims 30 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Asano in view of Sato and further in view of SONG JOO HAN et al. KR 101661930 (hereinafter Song).
As per claim 30, the rejection of claim 25 is incorporated herein. The combination of Asano and Sato does not teach; however, Song discloses: the act of determining whether the at least one attestation has been revoked by the second entity comprises checking a distributed ledger for a status of the at least one attestation (Song: page 23, para. 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano and Sato with the teaching of Song to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to implement the method in a distributed ledger system.
As per claim 41, this claim defines a system that corresponds to method of claim 30 and does not define beyond limitations of claim 30. Therefore, claim 41 is rejected with the same rational as in the rejection of claim 30.
Claims 31, 32, 42 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Asano in view of Sato and further in view of GRAJEK; GARRET et al. US 20100257358 (hereinafter Garret).
Aa per claim 31, the rejection of claim 25 is incorporated herein. The combination of Asano and Sato teaches: the method further comprises an act of, in response to determining that (1) the cryptographic proof in the at least one attestation is a valid proof of the purported value of the at least one attribute of the first entity (Asano: para. 104), (2) the at least one attestation is electronically signed by the second entity (Sato: para. 5 and 53), and (3) the at least one attestation has not been revoked by the second entity (Sato: para. 53).
The combination of Asano and Sato does not teach; however, Garret discloses: proceeding with a transaction with the first entity (Garret: para. 13 and 39).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano and Sato with the teaching of Garret to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to conduct a secure transaction.
As per claim 32, the rejection of claim 31 is incorporated herein. The combination of Asano and Sato does not teach; however, Garret discloses: the transaction is selected from a group consisting of: opening an account for the first entity; granting an access request from the first entity; authorizing the first entity to perform a task; and allowing the first entity to make a purchase (Garret: para. 13 and 39).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano and Sato with the teaching of Garret to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to enhance the utility of the method.
As per claim 42, this claim defines a system that corresponds to method of claim 31 and does not define beyond limitations of claim 31. Therefore, claim 42 is rejected with the same rational as in the rejection of claim 31.
As per claim 43, this claim defines a system that corresponds to method of claim 32 and does not define beyond limitations of claim 32. Therefore, claim 43 is rejected with the same rational as in the rejection of claim 32.
Claims 33 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Asano in view of Sato in view of Garret and further in view of Chawla; Deepak et al. US 8898459 (hereinafter Chawla).
As per claim 33, the rejection of claim 32 is incorporated herein. The combination of Asano, Sato and Garret does not teach; however, Chawla discloses: the method further comprises an act of determining whether to trust the second entity for veracity of the purported value of the at least one attribute of the first entity (Chawla: col. 24, lines 19-39); and
the act of proceeding with a transaction with the first entity is performed in response to determining that the second entity is to be trusted (Chawla: col. 24, lines 19-39);.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano, Sato and Garret with the teaching of Chawla to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to ensure the trustworthiness of the digital certificate.
As per claim 44, this claim defines a system that corresponds to method of claim 33 and does not define beyond limitations of claim 33. Therefore, claim 44 is rejected with the same rational as in the rejection of claim 33.
Claims 34-35 and 45-46 are rejected under 35 U.S.C. 103 as being unpatentable over Asano in view of Sato and further in view of Rolfe, Andrew R. US 20040010698 (hereinafter Rolfe).
As per claim 34, the rejection of claim 25 is incorporated herein. The combination of Asano and Sato does not teach; however, Rolfe discloses: the at least one attestation is referenced by a globally unique identity identifier of the first entity (Rolfe: para. 61).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano and Sato with the teaching of Rolfe to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to guarantee that a certificate’s policy, usage, or extension can be recognized consistently worldwide, without collisions.
As per claim 35, the rejection of claim 34 is incorporated herein. The combination of Asano and Sato does not teach; however, Rolfe discloses: the first entity is a user; and the globally unique identity identifier is generated based on one or more biometrics of the user (Rolfe: para. 61- 62).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Asano and Sato with the teaching of Rolfe to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied relate a globally Unique Identifier in a certificate to a person.
As per claim 45, this claim defines a system that corresponds to method of claim 34 and does not define beyond limitations of claim 34. Therefore, claim 45 is rejected with the same rational as in the rejection of claim 34.
As per claim 46, this claim defines a system that corresponds to method of claim 35 and does not define beyond limitations of claim 35. Therefore, claim 46 is rejected with the same rational as in the rejection of claim 35.
Conclusion
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/GHODRAT JAMSHIDI/ Primary Examiner, Art Unit 2493
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