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, see page 15, filed 12/22/2025, with respect to the objection to the specification have been fully considered. The objection to the specification has been withdrawn.
Applicant's arguments, see pages 15-16, filed 12/22/2025, with respect to the rejection of claims 1, 3, 5-7, and 9-20 under 35 U.S.C. § 112(a) have been fully considered but they are not persuasive.
Applicant argues that paragraphs [0042], [0052], and [0055] support the claim limitation “boot the security processor using boot code comprising firmware specified by the value of the programmable counter” and that the limitation does not constitute new matter.
The Examiner respectfully disagrees.
First, paragraph [0042] of the originally filed disclosure expressly discloses that the security processor may load the boot code firmware from memory, not that it is specified by any counter. Second, paragraph [0052] expressly discloses that the “counters specify boot code and encryption keys that will be used by processor” (emphasis added), which does not support the claim limitation claiming firmware specified by the value of the programmable counter. Third, paragraph [0055] expressly discloses that the memory my be used to store sets of code, and is silent with respect to the claimed firmware specified by the value of the programmable counter. In fact, Fig. 13 and paragraph [0118] appears to contain evidence that the counters specify the encryption keys and not the firmware as Figure 13 expressly states “WHICH PUBLIC KEYS DOES SECURE BOOT USE?” in row 1, column 3 of the displayed table; and paragraph [0118] of the originally filed disclosure states that the owner’s keys are still inaccessible because the previous renter did not self-evict, and therefore the owner must run that renter’s firmware to self-evict by incrementing the second counter.
Instant Figure 13 (arrow indicating counters specify public keys):
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The originally filed disclosure remains silent with respect to the claimed firmware specified by the value of the programmable counter.
Applicant’s arguments, see page 16, filed 12/22/2025, with respect to the rejection of claims 1, 3, 5-7, and 9-20 under 35 U.S.C. § 112(b) have been fully considered. The rejection of claims 1, 3, 5-7, and 9-19 under 35 U.S.C. § 112(b) has been withdrawn. There is an outstanding rejection to dependent claim 20 and there are no remarks pertaining to this rejection and will therefore be maintained below.
Applicant’s arguments, see pages 17-19, filed 12/22/2025, with respect to the rejection of claims 1, 3, 5-7, and 9-20 under 35 U.S.C. § 103 have been fully considered. The rejection of claims 1, 3, 5-7, and 9-19 under 35 U.S.C. § 103 has been withdrawn in light of the amended independent claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 5-7, and 9-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1, 15, and 18:
Independent claims 1, 15, and 18 recite “boot the security processor using boot code comprising firmware specified by the value of the programmable counter”, and “such that the value of the first counter and the second counter jointly indicate a type of secure boot and specify”. The originally filed disclosure is silent with regard to any recitation of a counter value specifying a particular firmware to be booted by the security processor, and the originally filed disclosure is silent with regard to any recitation of joint indication. These amended claim limitations constitute new matter and will be rejected on the ground that they recite elements without support in the original disclosure. See Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991)(A written-description question often arises when an applicant, after filing a patent application, subsequently adds "new matter" not present in the original application.); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Regarding Claims 3, 5-7, 9-14, 16-17, and 19-20:
Dependent claims 3, 5-7, 9-14, 16-17, and 19-20 do not disclose any details which cure the deficiencies found in the claims they depend upon and are therefore rejected as well.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is 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.
Dependent claim 20 recites “encrypting and decrypting data usable to authenticate a user with the second symmetric key”. The recited function does not follow from the structure recited in the claim, so it is unclear whether the function requires some other structure or is simply a result of operating the “device” in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
Conclusion
The prior art made of record in the submitted PTO-892 Notice of References Cited and not relied upon is considered the closest available prior art as of the current record.
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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/M.A.L./ Examiner, Art Unit 2496 /JORGE L ORTIZ CRIADO/Supervisory Patent Examiner, Art Unit 2496