Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 1 of 11
`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 1 of 11
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`EXHIBIT 1
`EXHIBIT 1
`
`

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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 2 of 11
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Liang Seng Koh et al
`Applicant(s):
`Title:
`Method and apparatus for providing electronic purse
`Serial No.:
`11/534,653
`Confirmation No.: 6327
`Filing Date:
`09/24/2006
`Examiner:
`Chris Stanford
`2887
`Group Art Unit:
`Docket No:
`RFID-081
`
`Mail Stop: AF/RCE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`December 31, 2010
`
`Response to Final OA
`
`Preliminary amendments in RCE filed concurrently
`
`Dear Sir:
`
`In response to Office Action dated 10/01/2010, the Applicant respectfully
`requests the Examiner to enter the following minor amendments before reconsidering
`the above-referenced application:
`
`AMENDMENTS TO THE CLAIMS are reflected in the listing of claims which
`begins on page 2 of this Response.
`
`REMARKS/ARGUMENTS begin on page 7 of this Response.
`
`Page 1 of 10
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 3 of 11
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`AMENDMENTS TO THE CLAIMS
`
`Please amend Claims 1 and 11 as follows:
`
`1. (Currently amended) A method for providing an e-purse, the method comprising:
`providing a portable device including or communicating with a smart card module
`pre-loaded with an emulator, the portable device including a memory space
`loaded with a midlet that is configured to facilitate communication between an e-
`purse applet therein and a payment server over a wireless network, wherein the
`portable device further includes a contactless interface that facilitates
`communication between the e-purse applet therein and the payment server over
`a wired network;
`personalizing the e-purse applet by reading off data from the smart card to generate
`one or more operation keys that are subsequently used to establish a secured
`
`channel between the e-purse applet and an e-purse security authentication
`module (SAM) external to the smart card, wherein said personalizing the e-purse
`applet comprises:
`establishing an initial security channel between the smart card and the e-
`purse SAM module to install and personalize the e-purse applet in the
`smart card, and
`creating the a security channel on top of the initial security channel to protect
`subsequent operations of the smart card with the e-purse SAM, wherein
`any subsequent operation of the emulator is conducted over the security
`channel er-via the e-purse applet.
`
`2. (Original) The method as recited in claim 1, wherein the operation keys include one
`or more of a load key and a purchase key, default personal identification numbers
`(PINs), administration keys, and passwords.
`
`3. (Previously amended) The method as recited in claim 2, wherein at least some of
`the operation keys are used to establish a first secured channel so that various data
`
`is exchanged between the e-purse applet and the payment server, and at least
`another some of the operation keys are used to establish a second secured channel
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 4 of 11
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`so that various data is exchanged between the e-purse applet and the e-purse SAM
`originally used to issue the e-purse as well as between the emulator and the existing
`SAM.
`
`4. (Original) The method as recited in claim 2, wherein said personalizing the e-purse
`applet is done over a wireless network or a wired network.
`
`5. (Original) The method as recited in claim 4, wherein, when said personalizing the e-
`purse applet is done over a wireless network, the midlet in the portable device is
`configured to facilitate communications between the e-purse and the payment
`server.
`
`6. (Original) The method as recited in claim 5, wherein both of the e-purse applet and
`the emulator are personalized as a result of said personalizing the e-purse applet.
`
`7. (Previously amended) The method as recited in claim 1, further comprising:
`initiating a request from the e-purse after valid personal identification numbers
`are entered and accepted on the portable device;
`sending a request by the midlet to the e-purse applet that is configured to
`compose a response to be sent to the midlet;
`transporting the response to the payment server that is configured to verify that
`the response is from an authenticated e-purse, wherein the payment server
`further communicates with a financial institution to authorize a transaction
`therewith; and
`sending a server response from the payment server to the midlet that is
`configured to process the server response before releasing the server
`
`response to the e-purse applet.
`
`8. (Original) The method as recited in claim 7, wherein messages exchanged between
`the midlet and the payment server are in a type of commands encapsulated in
`network messages.
`
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 5 of 11
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`9. (Original) The method as recited in claim 8, wherein the commands are applicable
`for APDU which stands for Application Protocol Data Unit.
`
`10. (Original) The method as recited in claim 1, wherein the e-purse is funded through a
`financial institution that maintains an account for a user being associated with the
`portable device, and the e-purse supports transactions in either e-commerce or m-
`commerce.
`
`11. (Currently amended) A system for providing an e-purse, the system comprising:
`a portable device including or communicating with a smart card pre-loaded with an
`emulator, the portable device including a memory space loaded with a midlet that
`is configured to facilitate wireless communication between an e-purse applet in
`the smart card and a payment server over a wireless network, the portable
`device further including a contactless interface that facilitates communication
`between the e-purse applet in the smart card and the payment server over a
`wired network, wherein said personalizing the e-purse applet comprises:
`establishing an initial security channel between the smart card and the e-
`purse security authentication module (SAM1 module to install and
`personalize the e-purse applet in the smart card, and
`creating the a security channel on top of the initial security channel to protect
`subsequent operations of the smart card with the e-purse SAM, wherein
`any subsequent operation of the emulator is conducted over the security
`channel er-via the e-purse applet;
`the payment server associated with an issuer authorizing the e-purse applet; and
`the e-purse SAM configured to enable the e-purse applet, wherein an SAM is behind
`the payment server and in communication with the e-purse applet when the e-
`purse applet is caused to communicate with the payment server via the midlet.
`
`12. (Original) The system as recited in claim 11, wherein both of the e-purse applet and
`emulator are personalized by reading off data from the smart card, the data is then
`used to generate operation keys for the e-purse applet.
`
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 6 of 11
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`13. (Original) The system as recited in claim 12, wherein the operation keys include
`one or more of a load key and a purchase key, default personal identification
`numbers (PINs), administration keys, and passwords.
`
`14. (Previously amended) The system as recited in claim 13, wherein at least some of
`the operation keys are used to establish a first secured channel so that various data
`
`is exchanged between the e-purse applet and the payment server, and at least
`another some of the operation keys are used to establish a second secured channel
`so that various data is exchanged between the e-purse applet and an existing
`security authentication module (SAM) originally used to issue the e-purse as well as
`between the emulator and the existing SAM.
`
`15. (Previously amended) The system as recited in claim 11, wherein, when the portable
`device is used to have a transaction, there are operations of:
`initiating a request from the e-purse after valid personal identification numbers
`are entered and accepted on the portable device;
`sending a request by the midlet to the e-purse applet that is configured to
`compose a response to be sent to the midlet;
`transporting the response to the payment server that is configured to verify that
`the response is from an authenticated e-purse, wherein the payment server
`further communicates with a financial institution to authorize a transaction
`therewith; and
`sending a server response from the payment server to the midlet that is
`configured to process the server response before releasing the server
`response to the e-purse applet.
`
`16. (Original) The system as recited in claim 15, wherein messages exchanged between
`the midlet and the payment server are in a type of commands encapsulated in
`network messages.
`
`17. (Original) The system as recited in claim 16, wherein the commands are applicable
`for APDU which stands for Application Protocol Data Unit.
`
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 7 of 11
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`18. (Original) The system as recited in claim 11, wherein the e-purse is funded through a
`financial institution that maintains an account for a user being associated with the
`portable device.
`
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 8 of 11
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`Remarks
`
`Claims 1-18 were submitted for examination. In the Office Action dated
`
`10/01/2010, Claims 1-18 are rejected under 35 USC 103(a) as being unpatentable over
`Shmueli et al (US Publication No.: 20020145632, hereinafter "Shmueli") in view of
`Atsmon et al (US Pat. No.: 6,607,136, hereinafter "Atsmon").
`
`The Applicants appreciate the Examiner for providing detailed comments in the
`Office Action. In the foregoing amendments, Claims 1, and 11 have been amended to
`correct some informalities. These amendments will not require the Examiner to perform
`another search. Reconsideration of pending claims is respectfully requested.
`
`Rejections of Claims 1-18 under 35 USC 103(a)
`
`On page 2, the Examiner rejects Claim 1 under 112, second paragraph, as being
`indefinite for failing to particularly point out and distinctly claim the subject matter which
`applicant regards the invention.
`
`The Applicant respectfully disagrees with the Examiner as it is believed that the
`Examiner seemed to have been confused with the security mechanisms recited in Claim
`1. The Response dated 07/29/2010 explicitly states that "there are two security
`channels". As demonstrated on pages 2 and 3 of the Office Action, the Examiner
`assumed that the security channel between the e-purse applet and an e-purse SAM is
`the same as the initial security channel, such misunderstanding may have led the
`Examiner a misleading search result, and thus the erroneous rejections.
`
`As amended, Claim 1 explicitly recites:
`
`personalizing the e-purse applet by reading off data from the smart card to generate
`one or more operation keys that are subsequently used to establish a secured
`channel between the e-purse applet and an e-purse security authentication
`module (SAM) external to the smart card, wherein said personalizing the e-purse
`applet comprises:
`establishing an initial security channel between the smart card and the e-
`purse SAM module to install and personalize the e-purse applet in the
`smart card, and
`creating a security channel on top of the initial security channel to protect
`subsequent operations of the smart card with the e-purse SAM, wherein
`any subsequent operation of the emulator is conducted over the security
`channel via the e-purse applet.
`
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 9 of 11
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`(emphasis added)
`As described in paragraphs [0024]-[0027], [0037] and shown in FIG. 1A and FIG.
`3C, personalizing the e-purse applet requires a type of data communication with an e-
`purse SAM that is not part of the smart card. The data communication includes installing
`and personalizing the e-purse applet in the smart card and creating security means to
`protect subsequent operations of the smart cards with the e-purse SAM. To do so
`without a prior security channel, an initial security channel between the smart card and
`the e-purse SAM module shall be established. For example, such an initial security
`channel is established by using a general security framework of a preload operating
`system in a smart card. Once an initial security channel is established, a (second)
`security channel on top of the initial security channel is established to protect
`subsequent operations of the smart card with the e-purse SAM. In addition, any
`subsequent operation of the emulator is conducted over the security channel via the e-
`purse applet. In other words, as explicitly shown in FIG. 2, the emulator 208
`communicates externally on top of the security channel via e-purse applet 206 to
`conduct either e-commerce or m-commerce.
`
`In contrast, Shmueli is silent about such an external e-purse SAM that is needed
`to establish a security channel on top of an initial security channel (e.g., an industrially
`recognized framework) to facilitate subsequent operations of the smart cards with the
`external e-purse SAM. FIG. 1 of Shmueli shows that there are three entities, a key 10, a
`host 12 and a server 14. Shmueli does not teach nor suggests that the key 10 needs to
`be personalized by an external e-purse SAM to create (two-level) security means to
`protect the subsequent operations of the smart cards with an external SAM. Further
`Shmueli is silent about having an emulator in the smart card conduct subsequent
`operations thereof over the security channel established by the e-purse applet to
`conduct either e-commerce or m-commerce.
`
`On page 5 of the Office Action, the Examiner also admits that Shmueli does not
`explicitly disclose establishing a security channel to install the e-purse applet in the
`smart card, and thus cites Atsmon to show the teaching.
`
`The Applicant respectfully contests the combination of Shmueli and Atsmon as it
`is believed that there is no motivation to combine these two references in the manner
`proposed by the Examiner. In order to establish a prima facie case of obviousness
`
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 10 of 11
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`under 35 USC 103, Graham v. John Deer Co. of Kansas City, 383 US 1 (1966) requires
`determining, respectively, the scope and content of the prior art, the difference between
`the prior art and the claims at issue, and the level of ordinary skilled in the art.
`
`Rejections on obviousness grounds cannot be sustained by mere conclusory
`statements; instead, there must be some articulated reasoning with some rational
`underpinning, to support the legal conclusion of obviousness. KSR v. Teleflex, No. 04-
`1350 (US Apr. 30, 2007) (citing In re Kahn, 441 F. 3d 977, 988 (Canada Fed. 2006)).
`The suggestion to make the claim combination must be found in the prior art, not in the
`Applicant's disclosure. In re Vaek, 20 USPQ2d 1438 (Fed. Cir. 1991). Moreover, in
`accordance with MPEP 2142.02, each prior art reference must be considered in its
`entirety, i.e., as a whole, including portions that would lead away from the claimed
`invention. W.L.Gore & Associates Inc. v. Garlock, Inc. 220 USPQ 303 (Fed. Cir. 1993).
`A third essential requirement for establishing a prima facie case, set forth in MPEP
`2143.01, is that the proposed modification cannot render the prior art unsatisfactory for
`its intended purpose.
`
`Atsmon teaches an interactive authentication system to allow a consumer to
`interact with a base station to receive coupons, special sales and other information with
`an electronic card. After a careful review, the Applicant concludes that Atsmon does not
`teach how to use a security channel to install and personalize an e-purse applet in a
`smart card. Atsmon only says that special client remote access software is downloaded,
`see Col. 32, lines-56-63, where that special client remote access software is for access
`to the website (e.g., a base station), no encryption, or any mechanism for a security
`channel are mentioned or described.
`
`Accordingly, the Applicant submits Shmueli could not be modified with Atsmon or
`such modification would render Shmueli inoperable. The Applicant wishes to further
`point out that Atsmon describes entirely about e-wallet. It is commonly known in the art
`that e-wallet is not the same as e-purse. An e-wallet system has a user credit-card and
`personal info at the backend, an e-card in the e-wallet system is used as an identity
`card for logging in into the system. When shopping, the e-card can be used to identify
`the user to retrieve the info and submit the info to the merchant site. Evidently, an e-
`purse in the instant application describes about electronic money in a local portable
`device. Accordingly, the combination of Shmueli and Atsmon neither teaches nor
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`Case 6:21-cv-00916-ADA Document 43-1 Filed 04/19/22 Page 11 of 11
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`suggests Claim 1, and Claim shall be allowable over Shmueli and Atsmon.
`Reconsideration of Claims 1-10 is kindly requested.
`
`Claim 11 has been amended to include similar limitations recited in Claim 1. The
`Applicant wishes to rely on the above arguments to support once-amended Claim 11,
`and respectfully submits Claim 11, as amended, is neither taught nor suggested by
`Shmueli and Atsmon, viewed alone or in combination, and shall be allowable over
`Shmueli and Atsmon. Reconsideration of Claims 11 - 18 is kindly requested.
`
`In view of the above amendments and remarks, the Applicant believes that
`Claims 1 - 18 shall be in condition for allowance over the cited references. Early and
`favorable action is being respectfully solicited.
`
`If there are any issues remaining which the Examiner believes could be resolved
`through either a Supplementary Response or an Examiner's Amendment, the Examiner
`
`is respectfully requested to contact the undersigned at (408)777-8873.
`
`I hereby certify that this correspondence is
`being deposited with the United States Postal
`Service as first class mail in an envelope
`addressed to " Box: Non-Fee Amendment
`Commissioner of Patents and Trademarks
`P. O. Box 1450, Alexandria, VA 22313-1450",
`on Dec. 31, 2010.
`
`Name: Joe Zheng
`
`Signature: / Joe Zheng /
`
`Respectfully submitted,
`
`/ joe zheng /
`Joe Zheng
`Reg. No.: 39,450
`
`Page 10 of 10
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