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 .
Acknowledgements
This is a first office action on the merits in response to the application filed March 5, 2026.
Claims 1-20 are pending in the application.
Claims 1-20 are examined below.
Based on a comparison of the PGPub US 2026/0195745 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Priority
This application is a divisional application. See MPEP § 201.06. In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the examiner has reviewed and considered the prior art cited in the prior-filed application(s). Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the prior-filed application(s) are now considered cited or ‘of record’ in this application. Additionally, applicant is reminded that a listing of the information cited or ‘of record’ in the prior-filed application(s) need not be resubmitted in this application unless applicant desires the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, applicant is reminded that the prosecution history of the prior-filed application(s) is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 10-13 are objected to because of the following informalities: where applicant recites “wherein the one or more processors further configured to,” it appears that applicant intends to recite “wherein the one or more processors are further configured to” or similar.
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 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 statute.
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 of this title, 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 following is a quotation of 35 U.S.C. 103(a) (pre-AIA ) which forms the basis for all obviousness rejections set forth in this office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobs (US 2017/0237554 A1) in view of RFC 5652: STD 70: Cryptographic Message Syntax (CMS) (reference U on the attached PTO-892), Housley, September 2009 (hereafter, "Housley") in further view of Bisbee (US 2018/0276270 A1).
Jacobs discloses as follows:
Claim
Limitation
Jacobs
1,9,17
receiving, by a beneficiary computing system from an intermediate computing system, a digitally signed cross-border message
"At step S520, the digital asset may be generated, minted (e.g., signed), recorded, and ready to send. Accordingly, in some embodiments, the issuer node computer 565 may provide the digital asset to the recipient node computer 545." [0173]
1,9,17
retrieving, by the beneficiary computing system, a public key of the intermediate computing system or an originating computing system
"the recipient node computer 545 may lookup appropriate public keys based on the enterprise IDs. The recipient node computer 545 may then use the public keys included to verify the one or more digital signatures." [0175]
1,9,17
verifying at least one of the digitally signed cross-border message or the intermediate computing system comprising determining, by the beneficiary computing system, at least one of:
"the recipient node computer 145 may verify one or more digital signatures associated with a digital asset. The digital signatures may be verified with public keys associated with the signing entities (e.g., the sending institution computer 160, the issuer node computer 165, and/or the administrative node computer 150)." [0124]. See also [0175] - [0176].
1,9,17
whether a digital signature [and a hash] of the digitally signed cross-border message is verified [recursively]
1,9,17
whether a digital signature and a detached content of the digitally signed cross-border message is verified recursively
1,9,17
or whether unsigncryption and path validation of the intermediate computing system is successful
1,9,17
approving, by the beneficiary computing system, a cross-border payment based at least in part on verifying the at least one of the digitally signed cross-border message or the intermediate computing system
"the recipient institution computer 540 may immediately credit the resource provider's account with a value indicated in the digital asset" [0181]
3,11,19
in response to determining that signing the hash fails, failing, by the beneficiary computing system, to verify the digitally signed cross-border message and disapproving the cross-border payment
The validation preceding commitment of funds necessarily implies that the transaction would be disapproved had the validation not succeeded.
5,13
wherein in response to determining that signing the hash fails, verifying, by the beneficiary computing system, a second digitally signed cross-border message sent by the originating computing system to the intermediate computing system
This amounts to a mere repetition of parts, and, therefore, fails to distinguish from the prior art
7,15
wherein the second digitally signed cross-border message is sent by the originating computing system to the intermediate computing system prior to the beneficiary computing system receiving the digitally signed cross-border message from the intermediate computing system
This amounts to a mere repetition of parts, and, therefore, fails to distinguish from the prior art
Jacobs fails to explicitly disclose but Housley teaches:
Claim
Limitation
Housley
1,9,17
wherein the digitally signed cross-border message is signed using at least one of a signedData cryptographic message syntax, detached signedData cryptographic message syntax, or signcryptedData cryptographic message syntax
See "signed-data type" pages 8-17
1,9,17
whether a digital signature and a hash of the digitally signed cross-border message is verified [recursively]
"recipient independently computes the message digest. This message digest and the signer’s public key are used to verify the signature value" page 8
2,10,18
generating, by the beneficiary computing system, the hash of a content in the digitally signed cross-border message
"recipient independently computes the message digest. This message digest and the signer’s public key are used to verify the signature value" page 8
2,10,18
signing, by the beneficiary computing system, the hash using the public key of the intermediate computing system
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Jacobs to include the CMS message syntax and hash verification of Housley in order to achieve the predictable result of increased security.
The combination Jacobs/Housley fails to explicitly disclose but Bisbee teaches:
Claim
Limitation
Bisbee
1,9,17
whether a digital signature [and a hash] of the digitally signed cross-border message is verified recursively
"TRS applies a recursive wrapping digital signature to such aggregated audit entries. The audit trail represents a verifiable and authenticated record" [0054]
4,12,20
in response to determining that signing the hash fails, determining, by the beneficiary computing system, which of the intermediate computing system and the originating computing system altered content of the digitally signed cross-border message
"the TRS applies a recursive wrapping digital signature to such aggregated audit entries. The audit trail represents a verifiable and authenticated record of information objects or data associated with a given document profile or transaction profile and the creation of, and important interactions with, such information objects or data, such as upload, transfer, destruction, or export of such information objects or data" [0054]
6,14
wherein: the digitally signed cross-border message comprises first content; the second digitally signed cross-border message comprises second content; and determining that signing the hash fails is at least based on the first content and the second content not being the same
"Each time additional audit entries are added to the audit trail, the TRS combines the new entries with the existing digitally signed entries and applies a recursive wrapper over the package to provide signature and protection layering" [0031]
8,16
wherein the digitally signed cross-border message encapsulates the second digitally signed cross-border message and a digital signature of the intermediate computing system
"Each time additional audit entries are added to the audit trail, the TRS combines the new entries with the existing digitally signed entries and applies a recursive wrapper over the package to provide signature and protection layering" [0031]
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Jacobs/Housley to include the recursive signature and auditability of Bisbee in order to achieve the predictable result of increased security.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Herman (US 6,341,353 B1) discloses a limited-edition digital object that is successively signed to create an auditable record of ownership ("The Seller constructs the transaction record and fills in all fields, then signs it. The transaction record is then sent to the Buyer, who decrypts it, verifies the Seller's signature, then signs it, encrypts it again, and sends it to the Bookkeeper service").
Yacov (US 5,872,844 A) discloses a micropayment scheme including recursive validation of signatures that can be used to determine which entity in a series of transactions altered transaction data ("fraud detection system samples the assets submitted for audit to detect 'bad' assets which have been used in a fraudulent manner. Upon detection, the fraud detection system identifies the electronic wallet that used the bad asset and marks it as a ‘bad wallet’. ")
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
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