DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-5, 7-11, 13, 23-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “receiving from the remote system an encrypted communication encrypted using the authentication information as a secret input to a cryptographic function; and decrypting the encrypted communication from the remote system using the authentication information as the secret input to the cryptographic function” must be shown or the feature(s) canceled from the claim(s). Emphasis added by way of underline. No new matter should be entered. The closest mention of providing authentication information is Fig. 4-6, but it does not mention encryption using an cryptographic function and also the decrypting feature of the claims.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: the specifications needs to be updated with reference to figures and elements to the reflect the drawings that needs to be updated.
Appropriate correction is required.
Double Patenting
The nonstatutory 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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1, 3-5, 7-11, 13, 23-25 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 8489836(based on same assignee). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are an broader version of claims of ‘836 patent, i.e. the instant claims are anticipated by ‘836 patent claims. The instant claims recites an integrity check for writing into memory and decrypting the content based on authentication. Similarly, the claims of patent ‘836 recites the memory having integrity check and decrypting content(Claim 1 + claim 6 + claim 10) yields the similar invention of instant claims.
US App # 17298992
US Patent # 8849836
Comments
11. A device comprising: a secure element; and a memory usable by and external to the secure element, wherein the device performs the steps of: modifying the memory to create a modified state of a content of the memory; generating device state data by combining data indicative of a history of past modifications of the content of the memory with current data from the modified state of the content of the memory; transmitting the device state data to a remote system for updating an authentication key of the device stored in a data storage of the remote system and for use by the remote system in an authentication procedure; providing authentication information based on the authentication key of the device from the secure element to the remote system in the authentication procedure between the device and the remote system to verify a validity of the modified state of the content of the memory; receiving from the remote system an encrypted communication encrypted using the authentication information as a secret input to a cryptographic function; and decrypting the encrypted communication from the remote system using the authentication information as the secret input to the cryptographic function.
1. A data processing system comprising: at least one processor configured to request at least one selected from the group consisting of at least one first digital information and at least one second digital information; at least one memory module configured for storing the at least one first digital information; at least one memory access controller connected between the at least one processor and the at least one memory module; at least one storage device comprising: at least one segment comprising the at least one second digital information; at least one access condition associated with the at least one segment; at least one first authentication data associated with the at least one segment, the at least one first authentication data allowing for the at least one segment to be authenticated; and at least one second authentication data associated with the at least one access condition, the at least one second authentication data allowing for the at least one access condition to be authenticated; and at least one secure memory management module connected to the at least one processor, the at least one memory module, the at least one storage device and the at least one memory access controller; wherein the at least one secure memory management module is configured to monitor the request, and when the request corresponds to the second digital information, to: authenticate the at least one segment using the first authentication data; authenticate the at least one access condition using the second authentication data; send the at least one access condition to the memory access controller; and load the at least one segment from the at least one storage device to the at least one memory module; and wherein the memory access controller is configured to: detect a processor status of the at least one processor; compare the at least one access condition with the processor status; and provide access to the at least one memory module by the at least one processor when the processor status satisfies the at least one access condition.
6. The method according to claim 5 further comprising: extracting an integrity figure pertaining to said at least one segment of digital information, calculating an integrity figure for said at least one segment of digital information, verifying the integrity of the at least one segment of digital information by comparing the extracted integrity figure with the calculated integrity figure.
10. The method according to claim 5 wherein the at least one segment of digital information in the at least one storage device is in an encrypted format, the method further comprising: extracting a segment key pertaining to said at least one segment of digital information, decrypting said at least one segment of digital information using the extracted segment key.
The patent (US 8489836) anticipates claims (1, 3-5, 7-11, 13, 23-25 ) of instant application, because the patent claims (1-14, genus) teaches all the elements/features of the examined claim (a-b, sub-genus, e.g. has less of the same limitations than the patent). Claims of instant application are effectively a subset of the claims in the patent. Thus, the entire scope of the patent reference claim falls within the scope of the examined claim. Therefore, a patent to the instant applicant would improperly extend the right to exclude granted by a patent to the sub-genus should it issue after the genus (conflicting patent).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3-5, 7-11, 13, 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Pub 2019/0156429 to Beckmann in view of IVEC: Off-Chip Memory Integrity Protection for Both Security and Reliability to Huang1 and further in view of US Patent Pub 2008/0289038 to Kim.
Regarding Claim 1, 11, 13, Beckmann discloses A computer-implemented method for anti-replay protection of a memory of a device, wherein the memory is used by and external to a secure element of the device, characterized in that the method comprises the following steps, wherein the steps are performed in the device after a content of the memory is modified comprising:
modifying the memory to create a modified state of a content of the memory(Abstract & Fig. 2 item 210-220, the series of transaction over time is received into transactions data store);
generating device state data by combining data indicative of a history of past modifications state-of the content of the memory with current data from the modified state of the content of the memory(Fig. 2 item 230-250, the hash of transaction represents the history for verification):
transmitting the device state data to a remote system for updating an authentication key of the device stored in a data storage of the remote system and for use by the remote system in an authentication procedure(Par. 0061-0062, the audit identifiers and historic stat information is part of signature process & Par. 051, keys are used for signatures & Fig. 8 item 890, the keys values & Par. 0061); and providing encrypted authentication information based on the device state data authentication key of the device from the secure element to the remote system in the authentication procedure between the device and the remote system to verify a validity of the modified state of the content of the memory (Fig. 3 item 350, 360 & Par. 0043-0045, the verification of transaction via comparing signatures & Par. 0061-0062 & par. 0051, the relevant key value used to verify the insurer & Par. 0041-0045 & Par. 0048 & par. 0041-0045 & Par. 0048 & Par. 0061, the encrypted transactions based on key for the insurer).
Beckman does not disclose receiving from the remote system an encrypted communication encrypted using the authentication information as a secret input to a cryptographic function; and decrypting the encrypted communication from the remote system.
In the same field of endeavor as the claimed invention, Huang discloses receiving from the remote system an encrypted communication encrypted using the authentication information as a secret input to a cryptographic function(3.1 Cryptographic Primitives, MAC generated only for parties with secret keys, i.e. authentication information being used for cryptographic function); and decrypting the encrypted communication from the remote system(3.2 Hash/MAC trees, the verification based on decrypting and comparing MAC & Fig. 1 item Encryption and Integrity Verification & 3.4 Security).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to modify Beckman invention to incorporate receiving from the remote system an encrypted communication encrypted using the authentication information as a secret input to a cryptographic function; and decrypting the encrypted communication from the remote system for the advantage of authenticated parties to verify the integrity of block of data as taught in Huang see 2.1 Security Model.
Beckman nor Huang discloses and decrypting the encrypted communication from the remote system using the authentication information as the secret input to the cryptographic function.
In the same field of endeavor as the claimed invention, Kim discloses decrypting the encrypted communication from the remote system using the authentication information as the secret input to the cryptographic function(Fig. 2 item 208, 212, 214 & Par. 007-0011 & Par. 0060-0063, the bus key used for signing, i.e. encrypting and decrypting).
It would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to modify Beckman invention to incorporate decrypting the encrypted communication from the remote system using the authentication information as the secret input to the cryptographic function for the advantage of providing decryption after the integrity is verified as taught in Kim see Abstract & Fig. 2.
Regarding Claim 3. Beckmann discloses The method according to claim 1, wherein the validity of the modified state of the content of the memory relates to at least one of:
an authenticity of the modified state of the content of the memory (Par. 0060-0062, the audit state are update and verified);
an integrity of the modified state of the content of the memory( Par. 0060-0062, the audit state are update and verified); and
version information of the modified state of the content of the memory Par. 0060-0062, the audit state are update and verified).
Regarding Claim 4. Beckmann discloses method according to claim 1, wherein the secure element is one of: a protected software application running on the device(par. 0056-0058); a trusted execution environment in a chipset of the device(par. 0056-0058); and an integrated secure element of the device(par. 0056-0058).
Regarding Claim 5. Beckmann discloses The method according to claim 1, wherein the modified state of the content of the memory device state data comprises at least one of:
a counter value(par. 0060).; a data value indicative of a software version(par. 0060 & Fig. 8).; and a value representing an integrity of the memory(par. 0060 & Fig.8).
Regarding Claim 7. Beckmann discloses The method according to claim 1, wherein the authentication key comprises at least one of:
at least part of the device state data( Par. 0060-0062, the audit state are update and verified);a function of at least pa-li-part of the device state data( Par. 0060-0062, the audit state are update and verified); and an updated version of a pre-shared authentication key computed from at least part of the device state data(Par. 0066-0067, the signatures are compared)
Regarding Claim 8. Beckmann discloses The method according to claim 1, wherein the modified state of the content of the memory device state data comprises a monotonic counter value obtained from a monotonic counter in the device, and wherein the authentication information includes the monotonic counter value(Fig. 19).
Regarding Claim 9. Beckmann discloses method according to claim 1, wherein the authentication procedure is performed as a separate step before allowing the device to perform an operation with the remote system( Par. 0060-0062, the audit state are update and verified).
Regarding Claim 10. Beckmann discloses method according to claim 1, wherein the authentication procedure is performed implicitly when performing an operation with the remote system as a part of a communication protocol between the device and the remote system(Par. 0065, protocols are used).
Regarding Claim 23. Beckmann discloses The method according to claim 1, wherein the secret input is an encryption key(par. 0048 & Par. 0051, the keys are used).
Regarding Claim 24. Beckmann discloses The method according to claim 1, wherein the secret input is a seed to the cryptographic function(par. 0048 & Par. 0051, the keys are used).
Regarding Claim 25. Beckmann discloses The method according to claim 1, wherein generating device state data by combining the data indicative of the history of past modifications of the content of the memory with the current data from the modified state of the content of the memory comprises hashing together the data indicative of the history of past modifications of the content of the memory and the current data from the modified state of the content of the memory to generate the device state
data( Par. 0060-0062, the audit state are update and verified & Par. 0067-0068).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Venkat Perungavoor whose telephone number is (571)272-7213. The examiner can normally be reached 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal Dharia can be reached on 571-272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VENKAT PERUNGAVOOR/Primary Examiner, Art Unit 2492 Email: venkatanarayan.perungavoor@uspto.gov
1 The NPL is already in file as of 1/5/2026 and Kim reference cited in PTO-893 of 4/28/2023.
