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 .
Response to Amendment
Applicant’s amendment filed 28 August 2026 amends claims 1 and 2. Applicant’s amendment has been fully considered and entered.
Election/Restrictions
Applicant's election with traverse of Species I in the reply filed on 28 August 2026 is acknowledged. The traversal is on the grounds that no reasons and/or examples are provided to support conclusory statement for the alleged different fields of search as required by MPEP 803. This is not found persuasive because the restriction dated 15 July 2026 (“Restriction”) makes it clear that the different field of search requirement can be based on the requirement to employ different search queries and the description of species 2 on paragraph 3 of the restriction highlights the independent/distinct features of species 2 that differentiate from species 1 and would constitute the subject matter for which different search queries would be employed.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 28 August 2026.
Claim Interpretation
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: electronic control unit in claim 19.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 19-20 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 which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 requires tracking the owner digital key. However, Applicant’s specification does not define what constitutes “tracking” or how such tracking is performed. Therefore, the claims, in light of the specification, fail to define the metes and bounds of the claim limitation.
Claim 20 is rejected in view of the dependence upon claim 19.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lambert, U.S. Patent No. 10,437,977, in view of Brown, WO 2021/074750.
Referring to claim 19, Lambert discloses a vehicle that includes a transceiver (Figure 2, element 52) and a processor (Figure 2, element 54), which meets the limitation of a vehicle comprising a transceiver and an electronic control unit. The vehicle receives a digitally signed registration code and a certificate from the electronic device 10 (Col. 5, lines 24-28 & Col. 8, lines 24-26: cryptographically verifiable involves the digital signing of the information using the device private key), which meets the limitation of a transceiver operational to receive a transfer import request, wherein the transfer import request includes a transfer certificate [signed] by an owner digital key that is linked to an old smart device. The result of the transmission is the storage of the certificate and the deletion of previous certificates (Col. 5, lines 29-33), which meets the limitation of the transfer import request is to transfer the owner digital key from the old smart device to a new smart device. The vehicle verifies the digital signature (Col. 5, lines 29-31), which meets the limitation of an electronic control unit operational to verify the owner digital key that signed [the transfer certificate]. If the signature is verified, the received certificate is stored by the vehicle (Col. 5, lines 21-24, 31-32; certificate includes the public key of electronic device 10), which meets the limitation of store a new public key of the new smart device. The vehicle removes any previously stored certificates (Col. 5, lines 32-33), which meets the limitation of delete an old public key of the old smart device from the vehicle.
Lambert does not specify that the certificate is also digitally signed. Lambert discloses the digital signing of the registration code prior to transmission to the vehicle (Col. 5, lines 24-28 & Col. 8, lines 24-26), which meets the limitation of signed by an owner digital key that is linked to an old smart device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the certificate of Lambert to have been digitally signed by electronic device 10 prior to transmission to the vehicle in order to allow for the vehicle to verify the received certificate in the same manner that the vehicle verifies the received registration code (Lambert: Col. 5, lines 29-31).
Lambert does not specify “tracking” the private key. Brown discloses the storage of public/private keys in a manner that can be utilized for tracking (Page 2, lines 20-23), which meets the limitation of track the owner digital key. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the vehicle of Lambert to have utilized the stored keys for “tracking” in order to allow for ownership to be tracked as suggested by Brown (Page 2, lines 20-23).
Referring to claim 20, Lambert discloses that the vehicle receives a digitally signed registration code and a certificate from the electronic device 10 (Col. 5, lines 24-28 & Col. 8, lines 24-26) over a Bluetooth connection (Col. 4, lines 58-59), which meets the limitation of the transceiver receives the transfer import request from a wireless device in proximity to the vehicle.
Allowable Subject Matter
Claims 1-9 are allowed.
The following is an examiner’s statement of reasons for allowance:
The prior art does not disclose or make obvious the claimed digital key transfer procedure that requires old smart device to receive a key transfer request from a vehicle server such that the old smart device sends an approval of the key transfer request to an old smart device server. The old smart device server sends the key transfer request to a new smart device such that the new smart device sends a key signing request to the old smart device. The old smart device then sends a signed certificate and a transfer import request to the new smart device. The new smart device sends the transfer import request to the vehicle that verifies that the digital key is linked to the new smart device.
The closest prior art, Lambert, U.S. Patent No. 10,437,977, discloses a digital key transfer procedure wherein an owner device sends a key transfer invitation, for a new device, to a server (Figure 5, step 162) such that the server provides the new device certificate to the current owner device (Figure 5, step 166). The current owner device digitally signs the certificate information (Figure 5, step 172) and transmits the digitally signed information to the server (Figure 5, step 174) where the digitally signed information is forwarded to the new device (Figure 5, step 178). The new device provides the digitally signed information to the vehicle (Figure 6, step 204) where the information is verified (Figure 6, steps 206-208).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen, EP 4734443, discloses a digital key sharing procedure.
Lerch, U.S. Publication No. 2024/0291809, discloses sharing access credentials amongst multiple devices.
Chen, DE 102021130243, discloses authorized key sharing for vehicles.
Sham, U.S. Publication No. 2020/0195633, discloses a contactless car sharing security protocol.
Ujkashevic, U.S. Publication No. 2019/0152435, a mobile valet system for digital key transfer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN E LANIER whose telephone number is (571)272-3805. The examiner can normally be reached M-Th: 5:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached at 5712705143. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN E LANIER/Primary Examiner, Art Unit 2437
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