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
This action is in response to an application filed April 23, 2025. Claims 1-9 are pending in this application.
Information Disclosure Statement
The information disclosure statement filed April 23, 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Double Patenting
The nonstatutory obviousness 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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-9 are rejected on the ground of nonstatutory obviousness double patenting as being unpatentable over claims 1-9 of patent document no. US 12,316,627 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter of generating a virtual code for authentication. A side-by-side analysis of the first independent claim(s) of the instant application and the copending application(s) has been included below. The bolded portions are portions which are almost identical to one another. The non-bolded portions are related to subject matter which are obvious, and do not further define over the subject matter of one another. Therefore, the subject matter of both claim sets are not distinct from one another and yields an obviousness-type double patenting rejection. This is NOT a provisional double patenting rejection since patent document (US 12,316,627 B2) has been issued while the instant application is pending.
Here is the following side-by-side analysis of the first independent claim in each application:
Instant Application ‘198
1. A method performed by a device for generating a virtual code for authentication, comprising:
transmitting, time data to a card upon tagging of the card in which an IC chip has been embedded;
receiving, from the card, a first virtual code generated based on the time data;
generating, a second virtual code for authentication by using the first virtual code;
transmitting, the second virtual code to a server; and
requesting, the server to perform verification on the second virtual code,
wherein the first virtual code is generated by using the time data, a first OTP and a first UID, which is identification information of the card, and
wherein the second virtual code is generated by using data including the first virtual code and a second UID, which is identification information of the device.
Patent No. ‘627
1. A method performed by a device for generating a virtual code for authentication, comprising:
transmitting time data to a card upon tagging of the card in which an IC chip has been embedded;
receiving, from the card, a virtual code for primary authentication generated based on the time data;
generating a virtual code for secondary authentication by using the virtual code for primary authentication;
transmitting at least one of the virtual code for primary authentication and the virtual code for secondary authentication to a server; and
requesting the server to perform verification on the at least one of the virtual code for primary authentication and the virtual code for secondary authentication,
wherein: the virtual code for primary authentication comprises a plurality of codes;
a first code of the plurality of codes is generated based on the time data and a first OTP (one-time password); and
a second code of the plurality of codes is generated by excluding, from the first code, first user identification (UID) which is identification information of the card, and
wherein the generating the virtual code for secondary authentication comprises:
generating a third code by excluding, from the first code, second user identification UID, that is, identification information of the device for generating a virtual code for authentication; and
generating the virtual code for secondary authentication by combining the first code, the second code, and the third code.
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.
Claim limitation 9 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Claim 9 recites “unit configured to” limitations without positively reciting each units structural relationship. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 1-9 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.
The term “OTP” and “UID” appearing in the claims is a relative term which renders the claim indefinite. The terms “OTP” and “UID” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant(s) are encouraged to further define these terms in the claims.
Claim Rejections - 35 USC § 102
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 –
(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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeong (WO 2016/085062 A1).
With respect to claim 1, Jeong discloses a method performed by a device for generating a virtual code for authentication(Abstract), comprising:
transmitting, time data to a card upon tagging of the card in which an IC chip has been embedded (pg. 4, paragraph 9, “A NFC antenna 44 connected…”, standard time information and transaction information are transmitted to NFC authentication card);
receiving, from the card, a first virtual code generated based on the time data(pg. 4, paragraph 9, “A NFC antenna 44 connected…”, OTP is transmitted from the NFC authentication card 50);
generating, a second virtual code for authentication by using the first virtual code;
transmitting, the second virtual code to a server (pg. 8, paragraph 5, “The banking server 20 reconstructs the complete…”, reconstructing a complete interlocking OTP number using front digits of transaction interworking OTP (generated OTP) and back digits of OTP transmitted from authentication app 42); and
requesting, the server to perform verification on the second virtual code, wherein the first virtual code is generated by using the time data, a first OTP and a first UID, which is identification information of the card (pg. 4, paragraph 7, “Provide a guide screen for…”, second authentication using transaction interworking OTP number), and
wherein the second virtual code is generated by using data including the first virtual code and a second UID, which is identification information of the device (pg. 4, paragraph 7, “Provide a guide screen for…”, second authentication using transaction interworking OTP number).
With respect to claim 2, Jeong discloses the method of claim 1, wherein the first OTP is generated by using a secret value stored in the card and the time data (pg. 5, paragraph 9, “In the present invention, the OTP number or the personal identification information may…”, second authentication information uses transaction interworking OTP number).
With respect to claim 3, Jeong discloses the method of claim 1, wherein the first virtual code comprises a first code and a second code, wherein the first code is generated by adding the time data to the first OTP, and wherein the second code is generated by excluding, from the first code, the first UID (pg. 7, paragraphs 2-3, “When the IC chip 51 is…”, time required for generating time synchronous OTP number is transmitted to IC chip through NFC chip).
With respect to claim 4, Jeong discloses the method of claim 1, wherein the second virtual code is generated by further using a second OTP, and
wherein the second OTP is generated by using a secret value stored in the card, the time data and the first virtual code (pg. 5, paragraph 9, “In the present invention, the OTP number or the personal identification information may…”, second authentication information uses transaction interworking OTP number).
With respect to claim 5, Jeong discloses the method of claim 4, wherein the second virtual code comprises a first code and a second code, wherein the first code is generated by adding the time data to the second OTP, and wherein the second code is generated by excluding, from the first code, the second UID (pg. 7, paragraphs 2-3, “When the IC chip 51 is…”, time required for generating time synchronous OTP number is transmitted to IC chip through NFC chip).
With respect to claim 6, Jeong discloses the method of claim 1, wherein the first virtual code is used for user authentication upon offline access control and online login (pg. 9, paragraph 11, “The authentication app 42 receives the personal identification….”, first authentication is complete).
With respect to claim 7, Jeong discloses the method of claim 1, wherein the second virtual code is used for user authentication upon financial settlement (pg. 6, paragraph 10, “When the user accesses the…”, to paragraph 13, “The banking server 20 transmits…”, user is accessing a banking server and authentication of the user is activated).
With respect to claim 8, Jeong discloses the method of claim 1, wherein the time data has a form combined with an application protocol data unit, A PDU, command (pg. 7, paragraphs 2-3, “When the IC chip 51 is…”, time required for generating time synchronous OTP number is transmitted to IC chip through NFC chip).
With respect to claim 9, Jeong discloses a device for generating a virtual code for authentication (Abstract), comprising:
a communication unit configured to transmit time data to a card upon tagging of the card in which an IC chip has been embedded and receive, from the card, a first virtual code generated based on the time data (pg. 4, paragraph 9, “A NFC antenna 44 connected…”, standard time information and transaction information are transmitted to NFC authentication card);
a code generation unit configured to generate a second virtual code for authentication by using the first virtual code (pg. 4, paragraph 9, “A NFC antenna 44 connected…”, OTP is transmitted from the NFC authentication card 50); and
a verification request unit configured to request the server to perform verification on the second virtual code by transmitting the second virtual code to the server through the communication unit (pg. 8, paragraph 5, “The banking server 20 reconstructs the complete…”, reconstructing a complete interlocking OTP number using front digits of transaction interworking OTP (generated OTP) and back digits of OTP transmitted from authentication app 42),
wherein the first virtual code is generated by using the time data, a first OTP and a first UID, which is identification information of the card (pg. 4, paragraph 7, “Provide a guide screen for…”, second authentication using transaction interworking OTP number), and
wherein the second virtual code is generated by using data including the first virtual code and a second UID, which is identification information of the device (pg. 4, paragraph 7, “Provide a guide screen for…”, second authentication using transaction interworking OTP number).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ESTHER B. HENDERSON whose telephone number is (571)270-3807. The examiner can normally be reached Monday-Friday 6a-2p ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Umar Cheema can be reached at 571-270-3037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ESTHER B. HENDERSON/Primary Examiner, Art Unit 2458 August 19, 2026
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