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 .
Status of Claims
The reply filed 05/20/2026 is acknowledged. Claims 1-3, 6, and 14 have been amended. Claims 16-17 are new. Claims 1-17 are pending and presented for examination.
Response to Arguments
Applicant’s amendments, filed 05/20/2026, to claims 3, 6, and 14 have overcome the claim objections set forth in the Non-Final Rejection 02/23/2026. Therefore, the claim objections to claims 3, 6, and 14 have been withdrawn.
In light of the amendments, filed 05/20/2026, claims 1-2, 8, and 11-14 are no longer interpreted under 35 U.S.C. 112(f). The secure element is now limited to a portable data carrier or embedded secure element, which is interpreted to be a hardware element, and the units of the secure element are therefore interpreted to be code, or software, and not generic placeholders for structure. [0047] of the instant specification supports such interpretation. As such, the 35 U.S.C. 112(a) and 112(b) rejections of claims 1-15 have been withdrawn.
Applicant's arguments, filed 05/20/2026, regarding the 35 U.S.C. 101 rejection of claims 1-15 have been fully considered, but they are not persuasive.
In response to the Applicant’s remarks that the various requirements of claim 1 provide a particular technological solution on pgs. 11-12, it is not apparent how requiring storage of two records of previous transactions provides a “high level of security in the secure element” or use of “longer certificate chains and/or a more complex certification scheme…without…increasing the average transaction time and/or without proportionally requiring more…resources on the secure element.” One of ordinary skill in the art would not reasonably reach such conclusion when the limitations merely provide context as to what data is being stored. Such data is not being meaningfully manipulated in any way that would provide such purported advantages. Furthermore, it is not apparent how storing more data improves the operation of the secure element as suggested. Reference to the precedential case Ex parte Desjardins is not persuasive because the technical improvements recognized in such a case are not present in the instant claimed invention. The current claimed invention does not reduce storage requirements, when in fact, it requires more storage since it must store at least two records of previous transactions, and it is not apparent how it reduces system complexity or improves computational performance when the limitations are merely directed to what is being stored. Furthermore, the recitation of the secure element being a portable data carrier or an embedded secure element has been recited at a high-level of generality such that the secure element amounts to no more than a generic computer. Please see below for an updated patent eligibility analysis in light of the amendments.
In response to the Applicant’s remarks that the claimed limitations address a problem in a technical field and improves the functionality of secure elements on pg. 13, the remarks have failed to provide any further corresponding rationale or reasoning as to why one of ordinary skill in the art would reach such conclusion. Merely restating the claim language does not constitute sufficient evidence to support the Applicant’s position. Therefore, the remarks cannot be persuasive.
Applicant’s amendments, filed 05/20/2026, to claim 1 have overcome the prior art rejections. Therefore, the previous prior art rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the English translation of Klaus et al. WO 2023/011759 and Zhu U.S. 2024/0129143. A version of the English translation of WO 2023/011759 was provided by the Applicant, which is the version that is used below to make the reference mappings.
In response to the Applicant’s remarks that amended claim 1 now requires the verification data be given patentable weight, the amendments do not meaningfully limit how the content of the verification data is used to verify the at least one received certificate. In other words, the records of the dynamic verification data are not being meaningfully manipulated by the secure element such that the content of the data itself gives meaning and purpose to the structure of the secure element. Furthermore, merely reciting that the unit is configured to use verification data to verify the received certificate does not mean that the dynamic verification data is the data being used. Since the verification data comprises dynamic verification data, it could also include other data sets not claimed.
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 1-17 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.
Amended claim 1 now includes “wherein the certificate reference is a derived reference, such as a hash value or a checksum, of the at least one certificate.” The intended scope of the claim is indefinite because it is not clear whether the claimed examples, i.e. hash value or a checksum, are limitations. See MPEP 2173.05(d).
Claims 2-17 depend from claim 1. They do not cure the deficiencies presented above. Therefore, they are also rejected under 35 U.S.C. 112(b) for at least based on their dependency from a rejected base claim.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-17 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A secure element of a transaction system comprising multiple transaction partners, the secure element comprising:
a communication unit configured for receiving at least one certificate from a current transaction partner;
a certificate verification unit configured to use verification data stored in a non-volatile memory of the secure element to verify the at least one received certificate and to provide a verified data element, wherein the secure element is a portable data carrier or an embedded secure element;
a transaction unit using the verified data element provided by the certificate verification unit in a current transaction of the transaction system;
wherein the verification data stored in the non-volatile memory comprise dynamic verification data;
wherein the dynamic verification data comprise at least two records of previous transactions of the secure element in the transaction system; and
wherein the records in the dynamic verification data stored in the non-volatile memory respectively comprise a certificate reference of at least one previous certificate received and verified in a previous transaction, wherein the certificate reference is a derived reference, such as a hash value or a checksum, of the at least one certificate.
Under the broadest reasonable interpretation, the bolded limitations of B-D are reasonably categorized under mental processes – concepts performed in the human mind or by a human using a pen and paper. Verifying a received certificate using verification data and providing the verified result is analogous to observation, evaluation, judgment, and/or opinion. These tasks can be reasonably performed by the human mind or by a human using a pen and paper.
Claim 1 recites at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
The additional elements of “secure element of a transaction system comprising multiple transaction partners,” “transaction system,” “transaction partners,” “communication unit,” “certificate transaction unit,” “transaction unit,” “non-volatile memory,” and “the secure element is a portable data carrier or an embedded secure element” have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Limitations E-G have all been recited at a high-level of generality such that they are no more than generically linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h), such as general usage of a database/data records. Furthermore, merely providing context to the data being stored, i.e. “wherein the certificate reference is a derived reference…” does not meaningfully limit the recited abstract idea to more than the idea itself. Therefore, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claim 1 is not patent eligible.
Dependent Claims
Dependent claims 2-7 and 9-15 elaborate on the abstract idea without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claim from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claim 8 recites the additional element of “store at least the certificate reference of the certificate of the verified data element in the dynamic verification data, into an empty record or into a most unused record.” This additional element is considered insignificant extra-solution activity because it does not impose any meaningful limits on how the certificate is received, verified, and/or used. Furthermore, storing information is considered by the courts to be well-understood, routine, and conventional activity (see MPEP 2106.05(d)(II), “storing and retrieving information in memory,” Versata). Therefore, when the limitation is considered individually and as a whole in combination with the independent claim from which it depends, the claim does not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 16-17 denote additional types of hardware that can constitute the secure element. They are considered additional elements. However, the additional elements have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea MPEP 2106.05(f). These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-17 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 1-7, 9-10, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Chung U.S. 2016/0267479 in view of Mee U.S. 2023/0119035, in view of the English translation of Klaus et al. WO 2023/011759 (herein as “Klaus), and further in view of Zhu U.S. 2024/0129143.
Re Claim 1, Chung discloses a secure element of a transaction system comprising multiple transaction partners, the secure element comprising:
a communication unit configured for receiving at least one certificate from a current transaction partner ([0044] – “The certificate template management module 124 can receive the certificate templates”);
a certificate verification unit configured to use verification data […] to verify the at least one received certificate and to provide a verified data element ([0044] – “the certificate rule and data verification module 125 can receive the certificate information (including the correctness verification rules for the data in the issued certificate)…thereby confirming the data correctness of the transaction certificate to be issued,” confirmed data is analogous to “a verified data element,” [0044] – module 125 uses verification rules and data of the transaction certificate to be issued to confirm the data correctness) […];
a transaction unit using the verified data element provided by the certificate verification unit in a current transaction of the transaction system ([0045] – “The certificate issuing module 126 can receive the…data of the to-be-issued certificate having confirmed correctness (from module 125), so, after the above-said data being verified to be error-free, it is possible to perform transaction certificate issuance…,” issuing a transaction certificate is part of a transaction, see at least [0004]);
Examiner notes that the contents of the verification data, dynamic verification data, and records are nonfunctional descriptive material see MPEP 2111.05. The contents of the verification data, dynamic verification data, and records do not meaningfully limit the structure of the secure element and how the certificate/data/records are received, verified, and/or used. Therefore, the contents of the verification data, dynamic verification data, and records cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided below.
wherein the verification data […] comprise dynamic verification data ([0040], [0054] – customized rules).
However, Chung does not expressly disclose the following:
verification data stored in a non-volatile memory of the secure element;
wherein the dynamic verification data comprise at least two records of previous transactions of the secure element in the transaction system; and
wherein the records in the dynamic verification data stored in the non-volatile memory respectively comprise a certificate reference of at least one previous certificate received and verified in a previous transaction.
Mee discloses
verification data stored in a non-volatile memory of the secure element ([0348] – “The persistent storage 2610 can provide persistent (non-volatile) storage for program and data…data can include…data associated with transactions and blocks as described”);
wherein the dynamic verification data comprise at least two records of previous transactions of the secure element in the transaction system ([0108] – “The verification may be based on data relating to the transaction obtained from sources associated with the platform or from multiple independent sources,” [0285] – “Verification can be performed against a local database of Bitcoin block headers. This database may be populated from the Bitcoin network,”, [0145] – “There may be a plurality of blockchain transactions or multiple output scripts for one or more of the blockchain transactions generated”); and
wherein the records in the dynamic verification data stored in the non-volatile memory respectively comprise […] at least one previous certificate received and verified in a previous transaction ([0269], [0271], [0353]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung’s operation and management system for transaction certificates with the teachings of storing verification data in non-volatile memory and the contents of dynamic verification data and records in Mee. Storing data in non-volatile memory is combining prior art elements according to known methods and would yield predictable results, i.e. preserving important data and ensuring data persistence without a power source. Furthermore, modifying Chung’s verification data with the contents of dynamic verification data and records in Mee would ensure that the data used for verification is true and unbiased, without relying on any one or a few entities for verification data Mee, [0108].
However, Chung in view of Mee do not explicitly teach
wherein the secure element is a portable data carrier or an embedded secure element.
Klaus discloses a coin managing unit. Specifically, Klaus discloses
wherein the secure element is a portable data carrier or an embedded secure element [0050] – “coin management unit can, for example, be in the form of a security module, such as a chip card, SIM card, RFID token, NFC module, built-in security module or integrated security module, [0118] – “Each of the coin management units…will include…certificates.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung in view of Mee’s operation and management system for transaction certificates with the teachings of the secure element being a portable data carrier or embedded secure element in Klaus. The combination is a simple substitution of one known element, i.e. portable data carrier or embedded secure element of Klaus, for another, i.e. relay setting device of Chung, to obtain predictable results.
However, Chung in view of Mee and Klaus do not explicitly teach
records comprise a certificate reference, wherein the certificate reference is a derived reference, such as a hash value or a checksum, of the at least one certificate.
Zhu discloses a multi-blockchain processing system. Specifically, Zhu discloses
records comprise a certificate reference, wherein the certificate reference is a derived reference, such as a hash value or a checksum, of the at least one certificate [0104] – “certificate data information of the public key certificate (for example, version information of the certificate, a hash value of the certificate, or a root certificate hash value associated with the hash value of the certificate) stored in the chain entry 42a.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung in view of Mee and Klaus’ operation and management system for transaction certificates with the teachings of the certificate reference being a derived reference, such as a hash value or a checksum, of the at least one certificate in Zhu. One would be motivated to make the combination to enable data to be accessed quickly and efficiently, which is a well-known benefit of using hash values.
Re Claim 2, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein the certificate verification unit is configured to check if the certificate reference of a certificate from a current transaction corresponds to a certificate reference from a previous transaction stored in the dynamic verification data (Chung, [0271] – “a certificate, which is a data bundle including a transaction, a block header, and an inclusion proof linking the transaction to the block header,” i.e. block header is analogous to the certificate reference, [0285] – “Verification can be performed against a local database of Bitcoin block headers,” therefore verifying, i.e. checking, is performed against a previous block header, i.e. a certificate reference from a previous transaction).
Re Claim 3, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein
a current certificate reference is received from a current transaction partner, prior to or instead of receiving the at least one certificate (Chung, [0044] – “receive the certificate information,” [0014] – “the certificate information…received by…includes the transaction behavior definition, the transaction certificate template, the certificate version management and the certificate effectiveness rule management,” the certificate information is received separately from the templates [0044], therefore, it is received “instead of…”. Under the broadest, most reasonable interpretation, “a current certificate reference” is interpreted to be any data related to a certificate. Furthermore, claim scope is not limited by claim language that does not limit a claim to a particular structure see MPEP 2111.04. The “wherein” clause of claim 3 does not give meaning and purpose to the secure element. In other words, a current certificate reference having been received prior to or instead of receiving the at least one current certificate does not alter the structure of the secure element since the secure element is still capable of receiving data. Therefore, claim 3 cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above).
Under the broadest, most reasonable interpretation, use of “and/or” does not require all of the elements noted using the phrase “and/or” since the phrase could be reasonably interpreted to only include “or.” When using such language, only one of the denoted elements is required. This interpretation shall apply to all claims that use “and/or.”
Re Claim 4, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, wherein
a record size of the records in the dynamic verification data is smaller than 60%, of a certificate size of the previous certificate; and/or
a reference size of the certificate reference is smaller than 50%, of a data element size of the verified data element.
Examiner notes that the size comparison of the records or certificate reference is nonfunctional descriptive material see MPEP 2111.05. The size comparison of the records or certificate reference does not meaningfully limit the structure of the secure element and how the certificate/data/records are received, verified, and/or used. Furthermore, claim scope is not limited by claim language that does not limit a claim to a particular structure see MPEP 2111.04. The “wherein” clause does not give meaning and purpose to the structure of the secure element. Therefore, the size comparison cannot be given patentable weight.
Re Claim 5, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein
the at least one received certificate includes a transaction partner certificate of the transaction partner for the verified data element and one or more intermediate certificates (Chung, [0044] – “receive the certificate templates,” [0051-58] – various certificate templates based on different companies, platforms, administrators, government units, etc., i.e. transaction partner); and/or
the at least one previous certificate is a previous transaction partner certificate or a previous intermediate certificate, including a previous first level intermediate certificate or a previous second level intermediate certificate.
Examiner notes that the content of the at least one received certificate is nonfunctional descriptive material see MPEP 2111.05. The content of the at least one received certificate does not meaningfully limit the structure of the secure element and how certificate/data/records are received, verified, and/or used. Therefore, the content of the at least one received certificate cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 6, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein the record in the dynamic verification data comprises the verified data element of the previous transaction, in addition to the certificate reference or as the certificate reference (Mee, [0105] – “longest chain of valid blocks,” blocks on a blockchain contain validated transactions, i.e. verified data element, and hash of the previous block [0004], i.e. previous transaction, [0108] – verification data can be based on data from sources associated with the platform or from multiple independent sources, and data can include certificates, i.e. either further to the certificate reference).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung’s operation and management system for transaction certificates with the teachings of the record in the dynamic verification data comprises the verified data element of the previous transaction in Mee. One would be motivated to make this combination to provide a lasting, tamper-proof, and auditable record of events Mee, [0012].
Examiner notes that the content of the record is nonfunctional descriptive material see MPEP 2111.05. The content of the record does not meaningfully limit the structure of the secure element and how the how the certificate/data/records are received, verified, and/or used. Therefore, the content of the record cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 7, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu teach further teach wherein the records in the dynamic verification data respectively comprise
a record usage counter; and/or
a record expiration date (The instant specification discloses in [0032] – “The expiration date of the record typically corresponds to an expiration date of the (transaction partner/intermediate level) certificate.” (Chung, [0040] – “before the certificate template is going to reaching the expired date”).
Re Claim 9, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein
the dynamic verification data comprises two or more verification data record areas each being assigned to a given certificate level (Chung, [0038] – “behavior definition settings,” i.e. level(s)), or the record in the dynamic verification data further comprises a certificate level indicator;
wherein the certificate level is a level of the certificate in a certificate chain (Chung, [0038] – “the behaviors can be classified into TRANSACTIONS, FEES, PAYMENTS and REDEMPTIONS”) and/or indicates one of the following: transaction partner certificate, second level intermediate certificate or first level intermediate certificate.
Examiner notes that the content of the dynamic verification data and certificate level is nonfunctional descriptive material see MPEP 2111.05. The content of the dynamic verification data and certificate level does not meaningfully limit the structure of the secure element and how certificate/data/records are received, verified, and/or used. Therefore, the content of the dynamic verification data and certificate level cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 10, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein the verification data comprises static verification data, including a first root certificate and/or a first root public key (Mee, [0055] – “the step of verifying the identity of a given client may be based on a digital signature…including a private key and a public key”);
wherein the static verification data comprises
current generation static verification data (Mee, [0055] – cryptographic key pair), and
future generation static verification data (Mee, [0055] – digital signature, which is generated based on the private key, i.e. future).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung’s operation and management system for transaction certificates with the teachings of the static verification data in Mee. One would be motivated to make this combination to verify that a request made for a service did indeed originate from the given client Mee, [0055], thereby reducing fraudulent and/or malicious transactions.
Examiner notes that the contents of the verification data and the static verification data are nonfunctional descriptive material see MPEP 2111.05. The contents of the verification data and the static verification data do not meaningfully limit the structure of the secure element and how certificate/data/records are received, verified, and/or used. Therefore, the contents of the verification data and the static verification data cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 12, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein
the verified data element is a cryptographic key and/or a unique identifier (Mee, [0055] – “the step of verifying the identity of a given client may be based on a digital signature…including a private key and a public key,” i.e. verified digital signature is analogous to a unique identifier); and/or
the certificate comprises a certification signature and /or a certificate verification key and/or the verified data element; and/or
the transaction is a payment transaction, the secure element storing one or more monetary value tokens,
the communication unit is a terminal communication unit.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung’s operation and management system for transaction certificates with the teachings of the verified data element is a unique identifier in Mee. One would be motivated to make this combination to verify that a request made for a service did indeed originate from the given client Mee, [0055], thereby reducing fraudulent and/or malicious transactions.
Examiner notes that the content of the verified data element is nonfunctional descriptive material see MPEP 2111.05. The content of the verified data element does not meaningfully limit the structure of the secure element and how the certificate/data/records are received, verified, and/or used. Therefore, the content of the verified data element cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 13, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein the secure element is configured to generate a command for the transaction partner, the command for the transaction partner arranged to be sent to a terminal in a command response of the secure element for a command received by the terminal (Chung, [0045-46], [0072] – certificate issued for the company/platform is analogous to a command for the transaction partner).
Re Claim 14, Chung in view of Mee teach a transaction system comprising a plurality of the secure element according to claim 1, and Chung in view of Mee, Klaus, and Zhu further teach further comprising
two or more participant certificate issuing units issuing participant certificates (Chung, Fig. 2, [0025] – architecture of a relay device, includes certificate issuing module 126, Fig. 5, [0046-47] – first relay setting device 221 and a second relay setting device 222, therefore, there contains at least two certificate issuing modules); and/or
two or more, including a first and/or second level, intermediate certificate issuing units issuing.
Re Claim 15, Chung in view of Mee, Klaus, and Zhu teach the transaction system according to claim 14, and Chung in view of Mee, Klaus, and Zhu further teach the transaction system being a payment transaction system, further comprising a monetary value token register and/or a monetary value token issuer unit (Chung, Fig. 5, [0046]).
Re Claim 16, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein the portable data carrier is any of a smart card, a secure USB token, a secure (SD) storage card, a secure RFID-token, or an NFC token (Klaus, [0050] – “coin management unit can, for example, be in the form of a security module, such as a chip card, SIM card, RFID token, NFC module, built-in security module or integrated security module, [0118] – “Each of the coin management units…will include…certificates”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung in view of Mee’s operation and management system for transaction certificates with the teachings of the secure element being a chip card or RFID token in Klaus. The combination is a simple substitution of one known element, i.e. chip card or RFID token of Klaus, for another, i.e. relay setting device of Chung, to obtain predictable results.
Re Claim 17, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, and Chung in view of Mee, Klaus, and Zhu further teach wherein the embedded secure element is any of an embedded SIM element, an eUICC, an embedded TPM element, an embedded NFC element, an integrated secure element, an iSIM, an iUICC, or an iTPM (Klaus, [0050] – “coin management unit can, for example, be in the form of a security module, such as a chip card, SIM card, RFID token, NFC module, built-in security module or integrated security module, [0118] – “Each of the coin management units…will include…certificates”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung in view of Mee’s operation and management system for transaction certificates with the teachings of the secure element being a SIM card, built-in security module, or integrated security module in Klaus. The combination is a simple substitution of one known element, i.e. SIM card, built-in security module, or integrated security module of Klaus, for another, i.e. relay setting device of Chung, to obtain predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Chung U.S. 2016/0267479 in view of Mee U.S. 2023/0119035, in view of the English translation of Klaus et al. WO 2023/011759 (herein as “Klaus), and further in view of Zhu U.S. 2024/0129143 as applied to claim 1 above, and further in view of Tamilarasan et al. U.S. 2025/0328469 (herein as “Tamilarasan”).
Re Claim 8, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, however, Chung in view of Mee, Klaus, and Zhu do not explicitly teach wherein the certificate verification unit is configured to store at least the certificate reference of the certificate of the verified data element in the dynamic verification data, into an empty record or into a most unused record.
Tamilarasan discloses caching techniques. Specifically, Tamilarasan discloses
wherein the certificate verification unit is configured to store at least the certificate reference of the certificate of the verified data element in the dynamic verification data, into an empty record or into a most unused record [0020] – “an LSS can be characterized by allowing newly written content to be stored at free or unused space on a data storage device.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung in view of Mee, Klaus, and Zhu’s operation and management system for transaction certificates with the teachings of storing data in the into an empty record in Tamilarasan. One would be motivated to make this combination to improve utilization of system resources Tamilarasan, [0021].
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chung U.S. 2016/0267479 in view of Mee U.S. 2023/0119035, in view of the English translation of Klaus et al. WO 2023/011759 (herein as “Klaus), and further in view of Zhu U.S. 2024/0129143 as applied to claim 1 above, and further in view of Lisagor et al. U.S. 2024/0070628 (herein as “Lisagor”).
Re Claim 11, Chung in view of Mee, Klaus, and Zhu teach the secure element of claim 1, however, Chung in view of Mee, Klaus, and Zhu do not explicitly teach wherein the certificate verification unit skips a certificate verification, if a record exists in the dynamic verification data and performs a certificate verification, if no record exists.
Lisagor discloses generating transaction vectors for facilitating network transactions. Specifically, Lisagor discloses
wherein the certificate verification unit skips a certificate verification, if a record exists in the dynamic verification data and performs a certificate verification, if no record exists [0060] – “upon validating a transaction request, the vector configurator system 106 caches or stores the validation…Thus, upon receiving a subsequent transaction request later on that includes matching transaction attributes already validated, the vector configurator system 106 can…bypass the validation process.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Chung in view of Mee, Klaus, and Zhu’s operation and management system for transaction certificates with the teachings of skipping verification if a record exists and performing verification if no record exists in Lisagor. One would be motivated to make this combination to expedite execution of the transaction request Lisagor, [0060], thereby improving processing efficiency Lisagor, [0024-25].
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHRISTINE DANG/Examiner, Art Unit 3698
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