Prosecution Insights
Last updated: July 17, 2026
Application No. 19/060,055

COMMUNICATION SYSTEM, TERMINAL DEVICE, COMMUNICATION DEVICE, AND METHOD

Non-Final OA §102§103
Filed
Feb 21, 2025
Priority
Mar 11, 2024 — JP 2024-036632
Examiner
REYNOLDS, DEBORAH J
Art Unit
Tech Center
Assignee
Kabushiki Kaisha Toshiba
OA Round
1 (Non-Final)
66%
Grant Probability
Favorable
1-2
OA Rounds
1y 3m
Est. Remaining
80%
With Interview

Examiner Intelligence

Grants 66% — above average
66%
Career Allowance Rate
109 granted / 164 resolved
+6.5% vs TC avg
Moderate +14% lift
Without
With
+13.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
18 currently pending
Career history
187
Total Applications
across all art units

Statute-Specific Performance

§101
5.6%
-34.4% vs TC avg
§103
72.5%
+32.5% vs TC avg
§102
10.6%
-29.4% vs TC avg
§112
7.1%
-32.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 164 resolved cases

Office Action

§102 §103
CTNF 19/060,055 CTNF 96877 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-3, 5-16 and 18-20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Bowen et al (US Patent No. 11323274 B1) . Regarding claims 1,12-14, and 19-20 , Bowen teaches a communication system, a terminal device, a communication device, a method executed by a communication system and methods, the communication system comprising: communication circuitry (Fig. 5 – client computer system); a terminal (Fig. 5 – certificate management server); and a certificate authority (Fig. 5 – private certificate authority), wherein: the communication circuitry is configured to transmit, to the terminal, a certificate signing request for requesting issuance of a certificate used for the communication circuitry to communicate with a first server ([Col 13, Line 35]: “at block 502, the client computer system ( communication circuitry ) requests a new private certificate ( transmit a certificate signing request for requesting issuance of a certificate ) from the certificate management server ( terminal ) by calling an API made available by the certificate management server.”; [Col 3, Line 2]: “ a CA ( certificate authority ) issues a certificate to identify a host ( the certificate allows the authorized requestor to identify a communication circuitry ) by signing a certificate request provided by an authorized requester ( the owner of the communication circuitry ); In an embodiment, once issued, the host may present the certificate to other hosts as proof of its identity ( the communication circuitry may present the certificate to other servers, including a first server, as proof of its identity and communicate with that server ).”), the terminal includes circuitry configured to transmit the certificate signing request transmitted from the communication circuitry to the certificate authority ([Col 13, Line 43]: “at block 504, the certificate management server ( terminal ) receives the request from the client computer system and validates the API request; at block 506, the certificate management server submits the request to the private certificate authority ( the terminal includes circuitry configured to transmit the certificate signing request transmitted from the communication circuitry to the certificate authority ).”), the certificate authority includes circuitry configured to issue the certificate in response to the certificate signing request transmitted from the terminal, the certificate authority includes circuitry configured to transmit the certificate issued by the certificate authority to the communication circuitry via the terminal ([Col 13, Line 57]: “at block 508, the private certificate authority ( certificate authority ) receives the request for a new certificate from the certificate management server ( terminal ); at block 510, the private certificate authority authorizes the request based at least in part on credentials provided by the client computer system with the request; at block 512, the private certificate authority confirms that the request complies with security policies and templates of the private certificate authority; at block 514, if the request is proper, the private certificate authority generates and signs the new private certificate with a private key of the private certificate authority ( the certificate authority includes circuitry configured to issue the certificate in response to the certificate signing request transmitted from the terminal ); at block 516, the private certificate authority returns the new private certificate to the certificate management server ( the certificate authority includes circuitry configured to transmit the certificate issued by the certificate authority to the terminal ).”; [Col 14, Line 7]: “at block 518, the certificate management server receives the new private certificate; at block 520 , the certificate management server returns the new private certificate via the API to the client computer system ( the terminal receives the certificate issued by the certificate authority, and returns it to the communication circuitry ).”), and the communication circuitry is further configured to register the certificate issued by the certificate authority ([Col 14, Line 11]: “At block 522, the client computer system ( communication circuitry ) receives the new private certificate via the API and stores the private certificate .”; [Col 5, Line 36]: “ the CM allows the customer to manage approval workflows for the issuing certificate (Registration Authority (“RA”) integration) ( the communication circuitry is further configured to register the certificate issued by the certificate authority ).”). Regarding claim 2 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the certificate includes a certificate for a public key of the communication circuitry in a public key encryption scheme ([Col 2, Line 64]: “In an embodiment, a certificate authority (“CA”) issues a certificate by validating that a public key belongs to a named resource such as a server, creating a certificate containing both the name and the public key , and digitally signing the certificate to assert that the public key belongs to the resource ( a certificate for a public key of the communication circuitry in a public key encryption scheme ).”). Regarding claim 3 and 16 , Bowen teaches all of the features with respect to claim 1 and 14, as outlined above. Bowen further teaches wherein: the terminal further includes circuitry configured to instruct the communication circuitry to generate the certificate signing request when the communication circuitry and the terminal are communicably connected, and the communication circuitry is further configured to generate the certificate signing request in response to an instruction from the terminal ([Col 4, Line 28]: “In an embodiment, the executable instructions cause information to be exchanged between the computer system ( the communication circuitry and the terminal are communicably connected ) operated by the computing resource service provider ( terminal ) and the client computer system ( communication circuitry ). In an embodiment, the information includes instructions and parameters that cause the computer system to generate and manage digital certificates ( including generate the certificate signing request in response to an instruction from the terminal ) and interact with both public and private certificate authorities.”). Regarding claim 5 and 18 , Bowen teaches all of the features with respect to claim 1 and 14, as outlined above. Bowen further teaches wherein: the certificate signing request includes device information about the communication circuitry; and the certificate authority further includes circuitry configured to verify the certificate signing request based on device information included in the certificate signing request, and issue the certificate when the verification of the certificate signing request is successful ([Col 7, Line 40]: “In an embodiment, a certificate authority is an entity that provides digital certificates which may be used to cryptographically verify the identity of the entity to which the digital certificate is issued ( CA verifies the certificate signing request based on device information – identity of the entity, and issue the certificate when the verification of the certificate signing request is successful ). In an embodiment, the certificate authority controls a public-private key pair. In an embodiment, when the certificate authority receives a request for a digital certificate from a requester, the certificate authority confirms the information provided by the requester and generates a digital certificate in accordance with the rights of the requester to generate digital certificates ( verify the certificate signing request based on device information included in the certificate signing request, and issue the certificate when the verification of the certificate signing request is successful ).”). Regarding claim 6 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the certificate signing request includes an electronic signature generated by the communication circuitry, and the terminal or the certificate authority includes circuitry configured to verify the certificate signing request by using an electronic signature attached to the certificate signing request ([Col 13, Line 43]: “at block 504, the certificate management server receives the request from the client computer system ( the terminal receives the certificate signing request from the communication circuitry ) and validates the API request. In an embodiment, the API request is validated using a credential provided by the client computer system with the request; the API request is validated using a digital signature of the request ( the certificate signing request includes an electronic signature ) and a cryptographic key associated with the client computer system; the cryptographic key is a public-private key pair, and the digital signature is generated by the client computer system ( the electronic signature is generated by the communication circuitry ) using the private key and verified by the certificate management server ( the signature is verified by the terminal ) using the public key; at block 506, the certificate management server submits the request to the private certificate authority.”). Regarding claim 7 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the certificate includes an electronic signature generated by the certificate authority, and the terminal or the communication circuitry includes circuitry configured to verify the certificate by using an electronic signature attached to the certificate ([Col 13, Line 65]: “at block 514, if the request is proper, the private certificate authority generates and signs the new private certificate with a private key of the private certificate authority ( the certificate includes an electronic signature generated by the certificate authority ).”; [Col 7, Line 49]: “In an embodiment, the certificate authority signs the digital certificate with the private key of the certificate authority ( the certificate includes an electronic signature generated by the certificate authority ). By confirming the digital signature on the digital certificate with the public key of the certificate authority, and by confirming a digital signature of a purported entity with a public key in the digital certificate, the identity of the purported entity can be confirmed to be that which is represented in the digital certificate (to the extent that the certificate authority is trusted) ( the terminal or the communication circuitry includes circuitry configured to verify the certificate by using an electronic signature attached to the certificate ).”). Regarding claim 8 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the certificate authority includes circuitry configured to issue the certificate when a user who owns the communication circuitry is authenticated by executing an authentication process for the user between the terminal and the certificate authority ([Col 13, Line 43]: “In an embodiment, at block 504, the certificate management server receives the request from the client computer system and validates the API request ( the terminal receives the certificate signing request and validate the request ). In an embodiment, the API request is validated using a credential provided by the client computer system with the request ( the user who owns the communication circuitry is authenticated by executing an authentication process – terminal validates the user credential provided by the communication circuitry, if the authentication is successful, then the terminal sends the request to the certificate authority for issuing a certificate ).”). Regarding claim 9 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the certificate authority includes circuitry configured to issue the certificate when a user who owns the communication circuitry is authenticated by executing an authentication process for the user between the terminal and a second server ([Col 3, Line 2]: “ a CA ( certificate authority ) issues a certificate to identify a host ( the certificate allows the authorized requestor to identify a communication circuitry ) by signing a certificate request provided by an authorized requester ( the owner of the communication circuitry who is authenticated ); In an embodiment, once issued, the host may present the certificate to other hosts as proof of its identity ( the communication circuitry may present the certificate to other servers, including a second server, as proof of its identity and communicate with that server ).”; [Col 19, Line 64]: “ Customers can also export private certificates and deploy them where they are needed to identify resources, including on-premises servers and Internet of things (“IoT”) devices .”). Regarding claim 10 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the certificate authority includes circuitry configured to determine whether to issue the certificate based on issue history information regarding certificates issued in the past ([Col 14, Line 20]: “ In an embodiment, the certificate management server maintains a list of certificates being managed and determines that a certificate is about to expire when the expiration time of the private certificate is within a threshold amount of time provided by the customer ( issue history information regarding certificates issued in the past, the issue history of the certificate includes the issuance date and time ). In an embodiment, at block 604, the certificate management server generates a request for an updated private certificate and sends the request to the private certificate authority.”; [Col 14, Line 34]: “In an embodiment, at block 606, the private certificate authority receives the request for an updated certificate from the certificate management server. In an embodiment, at block 608, the private certificate authority authorizes the request based at least in part on credentials provided by the client computer system with the request ( the issue history includes the user credentials ). In an embodiment, at block 612, if the request is proper , the private certificate authority generates and signs the updated private certificate ( the certificate authority includes circuitry configured to determine whether to issue the certificate based on issue history information regarding certificates issued in the past ) with a private key of the private certificate authority.”). Regarding claim 11 , Bowen teaches all of the features with respect to claim 1, as outlined above. Bowen further teaches wherein: the communication circuitry performs communication with the first server when the communication circuitry is authenticated by performing an authentication process on the communication circuitry using the registered certificate ([Col 3, Line 2]: “ a CA ( certificate authority ) issues a certificate to identify a host by signing a certificate request provided by an authorized requester ( the owner of the communication circuitry who is authenticated ); In an embodiment, once issued, the host may present the certificate to other hosts as proof of its identity ( the communication circuitry may present the registered certificate to the first server, as proof of its identity and communicate with that server ).”; [Col 19, Line 64]: “ Customers can also export private certificates and deploy them where they are needed to identify resources, including on-premises servers and Internet of things (“IoT”) devices .”). Regarding claim 15 , Bowen teaches all of the features with respect to claim 14, as outlined above. Bowen further teaches wherein: the certificate includes a certificate for a public key of the communication circuitry in a public key encryption scheme ([Col 2, Line 64]: “In an embodiment, a certificate authority (“CA”) issues a certificate by validating that a public key belongs to a named resource ( CA issues a certificate for a public key of the communication circuitry ) such as a server, creating a certificate containing both the name and the public key , and digitally signing the certificate to assert that the public key belongs to the resource.”; [Col 31, Line 19] further teaches the public key encryption scheme: “Using the public key to encrypt the data object may include generating a symmetric key, using the symmetric key to encrypt the data object, and encrypting the symmetric key using the public key, where the encrypted symmetric key is provided to a system with the encrypted data object to enable the system to use the corresponding private key to decrypt the symmetric key and use the decrypted symmetric key to decrypt the data object.”) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen et al (US Patent No. 11323274 B1) in view of Espinosa et al (US PG-PUB No. 20190238520 A1) . Regarding claims 4 and 17, Bowen teaches all of the features with respect to claims 1 and 14, as outlined above. Bowen is not relying on teaching, but Espinosa teaches wherein: the terminal further includes circuitry configured to transmit user information of a user who owns the communication circuitry and server information of the first server to the communication circuitry, and the user information and the server information transmitted from the terminal are set in the communication circuitry (Paragraph [0044]: “Upon registration of a new user, the SaaS platform may generate a user profile for the user ( the terminal generate the user information of a user who owns the communication circuitry ), and may store various user-specific data in association with the user profile . Such user-specific data may associate a particular user with a particular company, factory, entity, and/or the like .”; Paragraph [0007]: “the computing platform ( terminal ) generate a device-specific installation package ( include the device or the server information )”; paragraph [0008]: “In certain embodiments, (the computing platform) providing the device-specific installation package to the device ( the terminal transmits the server information to the communication circuitry ) comprises: generating a device-specific URL accessible by the device via a network; and pointing the device-specific URL to a download script causing the device to download the device-specific installation package upon accessing the device-specific URL.”). Bowen and Espinosa are both considered to be analogous to the claimed invention because they both teach establishing a secure communication pathway between a network-connected device and a computing platform. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified system and methods disclosed by Bowen with adding user and device onboarding process which allows the terminal to generate and transmit user information (for user registration) and server information to the communication circuitry for device registration, disclosed by Espinosa . One of the ordinary skills in the art would have been motivated to make this modification in order to ensure trust without mandating monitoring agents to be pre-installed on IoT devices during IoT device manufacturing, and enables the establishment of trust with an IoT device even after the device has been manufactured, as suggested by Espinosa in paragraph [0081] . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Bowen et al (US 11563590 B1) discloses Certificate Generation Method Brickell et al (US 20210084106 A1) discloses EFFICIENT PROVISIONING OF DEVICES MILTON et al (US 20200351261 A1) discloses ONBOARDING AN UNAUTHENTICATED CLIENT DEVICE WITHIN A SECURE TUNNEL PATIL et al (US 20190268338 A1) discloses EXTENDED TRUST FOR ONBOARDING Ståhl (US 20160373418 A1) discloses Method For Enabling A Secure Provisioning Of A Credential, And Related Wireless Devices And Servers Benoit et al (US 20150229475 A1) discloses ASSISTED DEVICE PROVISIONING IN A NETWORK KANG et al (US 20200404501 A1) discloses METHOD AND APPARATUS FOR PROVIDING COMMUNICATION SERVICE Kakutani (US 20200007348 A1) discloses INFORMATION PROCESSING APPARATUS, CONTROL METHOD FOR INFORMATION PROCESSING APPARATUS, AND STORAGE MEDIUM Di Jasio et al (US 12641131 B2) discloses Connection Management Device And Common API Hudon-Voyer et al (US 20250274268 A1) discloses DATA TRANSFER USING A VIRTUAL TERMINAL Sharma et al (US 20230325535 A1) discloses FAST IDENTITY ONLINE (FIDO) DEVICE ONBOARDING (FDO) PROTOCOL COMPUTING DEVICE HARDWARE ATTESTATION SYSTEM Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASMINE DAY whose telephone number is (571)272-0204. The examiner can normally be reached Monday - Friday 9:00 - 5:00. 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) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Chea can be reached at 571-272-3951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /J.M.D./ Examiner, Art Unit 2499 /PHILIP J CHEA/Supervisory Patent Examiner, Art Unit 2499 Application/Control Number: 19/060,055 Page 2 Art Unit: 2499 Application/Control Number: 19/060,055 Page 3 Art Unit: 2499 Application/Control Number: 19/060,055 Page 4 Art Unit: 2499 Application/Control Number: 19/060,055 Page 5 Art Unit: 2499 Application/Control Number: 19/060,055 Page 6 Art Unit: 2499 Application/Control Number: 19/060,055 Page 7 Art Unit: 2499 Application/Control Number: 19/060,055 Page 8 Art Unit: 2499 Application/Control Number: 19/060,055 Page 9 Art Unit: 2499 Application/Control Number: 19/060,055 Page 10 Art Unit: 2499 Application/Control Number: 19/060,055 Page 11 Art Unit: 2499 Application/Control Number: 19/060,055 Page 12 Art Unit: 2499 Application/Control Number: 19/060,055 Page 13 Art Unit: 2499 Application/Control Number: 19/060,055 Page 14 Art Unit: 2499 Application/Control Number: 19/060,055 Page 15 Art Unit: 2499 Application/Control Number: 19/060,055 Page 16 Art Unit: 2499
Read full office action

Prosecution Timeline

Feb 21, 2025
Application Filed
Jun 04, 2026
Non-Final Rejection mailed — §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
66%
Grant Probability
80%
With Interview (+13.8%)
2y 8m (~1y 3m remaining)
Median Time to Grant
Low
PTA Risk
Based on 164 resolved cases by this examiner. Grant probability derived from career allowance rate.

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