Prosecution Insights
Last updated: October 02, 2026
Application No. 17/452,802

HARDWARE PROTECTION MODULE

Final Rejection §102§103
Filed
Oct 29, 2021
Examiner
CUNNINGHAM, XANTHIA C
Art Unit
2800
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
International Business Machines Corporation
OA Round
2 (Final)
84%
Grant Probability
Favorable
3-4
OA Rounds
0m
Est. Remaining
93%
With Interview

Examiner Intelligence

Grants 84% — above average
84%
Career Allowance Rate
642 granted / 762 resolved
+16.3% vs TC avg
Moderate +9% lift
Without
With
+8.7%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 1m
Avg Prosecution
8 currently pending
Career history
770
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
51.3%
+11.3% vs TC avg
§102
30.3%
-9.7% vs TC avg
§112
12.5%
-27.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 762 resolved cases

Office Action

§102 §103
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 . Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 14 and 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Busby (US20180098424). Regarding claim 14, Busby discloses a casted security cover (paragraph 0022: “encapsulant 130 may be provided in the form of a molding”) comprising: a flex cable including at least one sensor configured to detect tampering (paragraph 0022: “Tamper-respondent sensor 120 may include various detection layers, which are monitored through, for instance, a ribbon cable”) disposed within at least one portion of the security cover (paragraph 0024: “The encapsulant may, in one or more embodiments, completely surround the tamper-respondent sensor 120 and enclosure 110, and thus form a complete environmental seal”). Regarding claim 37, Busby discloses the metal security cover of claim 14, wherein the flex cable is of a material that is resistant to heat required for casting the metal security cover. Busby does not expressly disclose wherein the flex cable is of a material that is resistant to heat required for casting the metal security cover. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claim(s) 1, 20-24 and 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klum et al. (hereinafter Klum) (US 9066447) in view of Dragone et al. (hereinafter Dragone) (US20190384942) further in view of Huang (US7645951). Regarding claim 1, Klum (US9066447) discloses a hardware security module comprising; a card (102) configured to be plugged into a computer system (Paragraph 001 – electronic assembly); at least one cryptographic chip (108) disposed on the card (102); a security cover (104), the security cover (104) having a first half (104-1) and a second half (104-2), the first half (101-1) of the security cover (104) disposed on a first side of the card (Figure 1B), and the second half (Figure 1B) of the security cover disposed on a second side of the card (Figure 1B), wherein the security cover (104) encloses the at least one cryptographic chip. Klum does not expressly disclose a flex cable including at least one sensor configured to detect tampering with the hardware security module, the flex cable disposed within the security cover. Dragone discloses a flex cable (30)(31) including at least one sensor (50) (Paragraph 0059 – The sensing circuitry 50 is electrically connected to the first set of embedded detection lines 30 and the second set of embedded detection lines 31 via connection lines 34) configured to detect tampering with the hardware security module (Paragraph 0059 – The sensing circuitry 50 is configured to sense as sensing signal S the conductance of the first set 30 and the second set 31 of embedded detection lines or more particularly of the integral mesh 33 to detect tampering events), the flex cable (30)(31) disposed within the security cover (Paragraph 0057 – The cover part 22 of the enclosure 20 is arranged on the printed circuit board 21 and comprises a second set of embedded detection lines 31). It would’ve been obvious to one of ordinary skill in the art, before the effective filing date of the invention to incorporate the flex cable of Dragone into the hardware security module of Klum. One having ordinary skill on the art would have been motivated to do this as such a modification would allow for monitoring against penetration of or damage to the enclosure. Klum does not expressly disclose metal. Huang discloses metal (Column 4 Lines 65-67). It would’ve been obvious to one of ordinary skill in the art, before the effective filing date of the invention to incorporate the metal of Huang into the security cover. One having ordinary skill on the art would have been motivated to do this aid in heat dissipation. PNG media_image1.png 291 308 media_image1.png Greyscale Regarding claim 20, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 1, wherein the flex cable is disposed at a variable depth within the metal security cover (Figure 1). Regarding claim 21, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 20, wherein the variable depth within the metal security cover is a random depth. Regarding claim 22, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 1, wherein the flex cable is disposed within the first half of the metal security cover. PNG media_image2.png 201 524 media_image2.png Greyscale Regarding claim 23, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 22, wherein the flex cable ((30)(31) – Dragone) is connected to the first side of the card. (The configuration of the connection of 20 to 40 of Dragone mirrors the applicant claimed limitations of claim 23) (Paragraph 0055 – The printed circuit board 21 comprises a first set of embedded detection lines 30) Regarding claim 24, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 23, wherein another flex cable is disposed within the second half of the metal security cover (Figure 1 – Dragone). PNG media_image3.png 201 524 media_image3.png Greyscale Regarding claim 26, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 1, wherein the first half of the metal security cover is larger than the second half of the metal security cover (Figure 1). PNG media_image4.png 201 524 media_image4.png Greyscale Regarding claim 27, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 1, wherein the flex cable is disposed within a material that forms the metal security cover (Paragraph 0055 – The printed circuit board 21 comprises a first set of embedded detection lines 30). (Paragraph 0057 – The cover part 22 of the enclosure 20 is arranged on the printed circuit board 21 and comprises a second set of embedded detection lines 31.) Regarding claim 28, Klum in view of Dragone further in view of Huang discloses the hardware security module of claim 1. Klum in view of Dragone further in view of Huang does not expressly disclose wherein the flex cable is of a material that is resistant to heat required for casting the metal security cover. The method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Claim(s) 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Busby (US20180098424) in view of Dragone et al. (hereinafter Dragone) (US20190384942). Regarding claim 36, Busby discloses the metal security cover of claim 14. Busby does not expressly disclose wherein the flex cable is disposed wherein the flex cable is disposed within a material that forms the metal security cover. Dragone discloses wherein the flex cable is disposed wherein the flex cable is disposed within a material that forms the metal security cover (Paragraph 0055 – The printed circuit board 21 comprises a first set of embedded detection lines 30). (Paragraph 0057 – The cover part 22 of the enclosure 20 is arranged on the printed circuit board 21 and comprises a second set of embedded detection lines 31.) It would’ve been obvious to one of ordinary skill in the art, before the effective filing date of the invention to incorporate the flex cable of Dragone into the metal security cover of Busby. One having ordinary skill on the art would have been motivated to do this to protect the flex cable. Allowable Subject Matter Claims 25 and 29-35 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 25, the prior art of record, taken alone or in combination, fails to teach or suggest the interconnection and interrelationship wherein the another flex cable is connected to the second side of the card, as claimed with the remaining limitations dependent of claims 22-24 independent claim 1. Regarding claim 29, the prior art of record, taken alone or in combination, fails to teach or suggest the interconnection and interrelationship wherein the at least one portion of the metal security cover is the first half of the metal security cover; and a second half of the metal security cover disposed on a second side of the card of the hardware security module, as claimed with the remaining limitations of independent claim 14. Response to Arguments Applicant’s arguments, see pages 9-11, filed 28 August 2025, with respect to the rejection(s) of claim(s) 1, 14 and 20-37 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Busby (US20180098424), Klum et al. (US 9066447), Dragone et al. (hereinafter Dragone) (US20190384942), and Huang (US7645951), respectfully. 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 Xanthia C Cunningham whose telephone number is (571)270-1963. The examiner can normally be reached Tuesday -Friday 9 am - 5 pm. 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) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani Hayman can be reached on 571-270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /XANTHIA C RELFORD/Primary Examiner, Art Unit 2841 17 August 2026
Read full office action

Prosecution Timeline

Oct 29, 2021
Application Filed
Oct 13, 2023
Response after Non-Final Action
May 30, 2025
Non-Final Rejection mailed — §102, §103
Aug 28, 2025
Response Filed
Aug 20, 2026
Final Rejection mailed — §102, §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
84%
Grant Probability
93%
With Interview (+8.7%)
2y 1m (~0m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 762 resolved cases by this examiner. Grant probability derived from career allowance rate.

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