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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/09/2025 has been entered.
Status of Claims
The Amendment filed on October 09, 2025 has been entered. Claims 5, 6, 8 and 10 were amended. Claims 1-4, and 11-18 were canceled. As a result, claims 1-5 are pending.
Response to Amendment
Applicant’s amendment regarding claims 5, 6, 8 and 10 obviates the claim rejection, therefore the claim rejection under 35 U.S.C § 101 is withdrawn.
Response to Arguments
In view of the remarks, submitted on October 09, 2025, applicant’s arguments have been carefully and respectfully considered and are persuasive.
In response to Applicant’s arguments/remarks on pages 8-20, the amendment specifying that the intermediate parameters are checked “as stored in the processor or memory of the client device” obviates the 101 rejection because it ties the claimed checking operation to a particular machine implementation; however, the amended limitation is not supported by the originally filled disclosure and rejected under 112(a), because while the specification generally describes a client device having a processor and memory and describes intermediate parameters U1 and U2 as values generated during execution of the verification algorithm, it does not describe or suggest that these parameters are stored in processor or memory as distinct operational state. Such that the newly added language introduces subject matter not originally possessed by the Applicant.
Therefore, the claims 5-10 remain rejected.
The dependent claims remain rejected based on their dependency from the rejected 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 1-5 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.
Claim 1 is 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. Claim 1 recites “checking that the first intermediate parameter U1 as stored in the processor or memory of the client device and/or the second intermediate parameter U2 as stored in the processor or memory of the client device is different from zero modulo n. computing k times the first intermediate parameter U1as stored in the processor or memory of the client device and/or the second intermediate parameter U2 as stored in the processor or memory of the client device and checking that the results of these computations are identical, with k an integer >1i performing at least one check of a mathematical relationship among :checking that a mathematical relationship between {U1, e, s, n} as stored in the processor or memory of the client device is satisfied; checking that a mathematical relationship between {U2, r, s, n} as stored in the processor or memory of the client device is satisfied; checking that a mathematical relationship between {U1, U2, e, r, n} as stored in the processor or memory of the client device is satisfied;,”. The non-provisional specification fails to provide written description support for the claim limitation of “U1as stored in the processor or memory of the client device,” (i.e., The client device 100 may include a processor 101 connected via a bus 102 to a random-access memory (RAM) 103, a read-only memory (ROM) 104, and/or a non-volatile memory (NVM) 105. The client device 100 further includes a connector 106 connected to the processor and by which the client device 101 may be connected to an antenna. Such an antenna may be used to connect the client device 101 to various forms of wireless networks, e.g., wide-area networks, WiFi networks, or mobile telephony networks. Alternatively, the client device 101 may connect to networks via wired network connections such as Ethernet. The client device may also include input/output means 107 providing interfaces to the user of the client device, such as one or more screens, loudspeakers, a mouse, tactile surfaces, a keyboard etc., see paragraph [0095]). The specification describes intermediate parameters being generated and used, but does not describe them being stored as claimed, nor performing checks because they are stored. Therefore, there is no demonstration of written-description support for the newly added limitation “as stored in the processor or memory of the client”.
Dependent claim 7 is similarly rejected based on its dependency to independent claim 5.
Further, claim 6 is 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. Claim 6 recites “checking that the first intermediate parameter U1 and/or the second intermediate parameter U2 as stored in the processor or memory of the client device is different from zero modulo n:
computing k times the first intermediate parameter U1as stored in the processor or memory of the client device and/or the second intermediate parameter U2 as stored in the processor or memory of the client device and checking that the results of these computations are identical, with k an integer >
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performing at least one check of a mathematical relationship among: checking that a mathematical relationship between {U1,e,s, n} as stored in the processor or memory of the client device is satisfied; checking that a mathematical relationship between {U2, r, s, n} as stored in the processor or memory of the client device is satisfied; checking that a mathematical relationship between {U1, U2, e, r, n} as stored in the processor or memory of the client device is satisfied; triggering a fault attack countermeasure,”. The non-provisional specification fails to provide written description support for the claim limitation of “U1as stored in the processor or memory of the client device,” (i.e., The client device 100 may include a processor 101 connected via a bus 102 to a random-access memory (RAM) 103, a read-only memory (ROM) 104, and/or a non-volatile memory (NVM) 105. The client device 100 further includes a connector 106 connected to the processor and by which the client device 101 may be connected to an antenna. Such an antenna may be used to connect the client device 101 to various forms of wireless networks, e.g., wide-area networks, WiFi networks, or mobile telephony networks. Alternatively, the client device 101 may connect to networks via wired network connections such as Ethernet. The client device may also include input/output means 107 providing interfaces to the user of the client device, such as one or more screens, loudspeakers, a mouse, tactile surfaces, a keyboard etc., see paragraph [0095]). The specification describes intermediate parameters being generated and used, but does not describe them being stored as claimed, nor performing checks because they are stored. Therefore, there is no demonstration of written-description support for the newly added limitation “as stored in the processor or memory of the client”.
Furthermore, claim 8 is 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. Claim 8 recites “checking that the first intermediate parameter U1as stored in the processor or memory of the client device and/or the second intermediate parameter U2 as stored in the processor or memory of the client device is different from zero modulo n, computing k times the first intermediate parameter U1as stored in the processor or memory of the client device and/or the second intermediate parameter U2 as stored in the processor or memory of the client device and checking that the results of these computations are identical, with k an integer >1, performing at least one check of a mathematical relationship among: checking that a mathematical relationship between {U1, e, s, n} as stored in the processor or memory of the client device is satisfied ;checking that a mathematical relationship between {U2, r, e, n} as stored in the processor or memory of the client device is satisfied; checking that a mathematical relationship between {U1, U2, r, s, n} as stored in the processor or memory of the client device is satisfied ;triggering a fault attack countermeasure comprising at least one selected from a group consisting of among interrupting the verification algorithm execution,”. The non-provisional specification fails to provide written description support for the claim limitation of “U1as stored in the processor or memory of the client device,” (i.e., The client device 100 may include a processor 101 connected via a bus 102 to a random-access memory (RAM) 103, a read-only memory (ROM) 104, and/or a non-volatile memory (NVM) 105. The client device 100 further includes a connector 106 connected to the processor and by which the client device 101 may be connected to an antenna. Such an antenna may be used to connect the client device 101 to various forms of wireless networks, e.g., wide-area networks, WiFi networks, or mobile telephony networks. Alternatively, the client device 101 may connect to networks via wired network connections such as Ethernet. The client device may also include input/output means 107 providing interfaces to the user of the client device, such as one or more screens, loudspeakers, a mouse, tactile surfaces, a keyboard etc., see paragraph [0095]). The specification describes intermediate parameters being generated and used, but does not describe them being stored as claimed, nor performing checks because they are stored. Therefore, there is no demonstration of written-description support for the newly added limitation “as stored in the processor or memory of the client”.
Dependent claim 9 is similarly rejected based on its dependency to the independent claim 8.
Lastly, claim 10 is 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. Claim 10 recites “method comprising determining a possible fault attack against the client device by said client device before said signature comparison final step performing: checking that the fourth intermediate parameter x and/or R-e as stored in the processor or memory of the client device is different from zero modulo n; computing k times the fourth intermediate parameter x as stored in the processor or memory of the client device and/or the fifth intermediate parameter R as stored in the processor or memory of the client device and checking that the results of these computations are identical, with k an integer >1;checking that at least one mathematical relationship between the third, fourth, fifth intermediate parameters X, x, R and said message e as stored in the processor or memory of the client device, is verified comprising: checking that R-x mod n = e; checking that the resulting point X with x-coordinate x lies on the elliptic curve; triggering a fault attack countermeasure,” (i.e., The client device 100 may include a processor 101 connected via a bus 102 to a random-access memory (RAM) 103, a read-only memory (ROM) 104, and/or a non-volatile memory (NVM) 105. The client device 100 further includes a connector 106 connected to the processor and by which the client device 101 may be connected to an antenna. Such an antenna may be used to connect the client device 101 to various forms of wireless networks, e.g., wide-area networks, WiFi networks, or mobile telephony networks. Alternatively, the client device 101 may connect to networks via wired network connections such as Ethernet. The client device may also include input/output means 107 providing interfaces to the user of the client device, such as one or more screens, loudspeakers, a mouse, tactile surfaces, a keyboard etc., see paragraph [0095]). The specification describes intermediate parameters being generated and used, but does not describe them being stored as claimed, nor performing checks because they are stored. Therefore, there is no demonstration of written-description support for the newly added limitation “as stored in the processor or memory of the client”.
Note though that a claim will not be found inadequate on section 112(a) ground simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. That is because the patent specification is written for a person of ordinary skill in the art, and such a person comes to the patent disclosure with the knowledge of what has come before. While a claim will not usually be limited to a particular species described in the specification, it is clear from the non-provisional specification in this application that the disclosed.
The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172; Capon v. Eshhar, 418 F.3d 1349, 1357-58, 76 USPQ2d 1078, 1083-84 (Fed. Cir. 2005). Computer-implemented inventions are often disclosed and claimed in terms of their functionality. For computer-implemented inventions, the determination of the sufficiency of disclosure will require an inquiry into the sufficiency of both the disclosed hardware and the disclosed software due to the interrelationship and interdependence of computer hardware and software. The critical inquiry is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682. 114 USPQ2d 1349, 1356 (citing Ariad Pharm., Inc. V. Eli Lilly & Co, 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) in the context of determining possession of a claimed means of accessing disparate databases).
Independent claims are similarly rejected. Claims 2-3, 6-8, 10-11, 14-16-18, and 21-25 which are dependent to claims 1, 9, and 17 are similarly rejected.
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.
Claims 5-10 are 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.
Claims 5, 6, 8, and 10 recite the limitation “checks or verifying has failed” renders the claim indefinite because the claim does not clearly define whether “verifying is a distinct action separate from “checking”. The claim first recites “performing at least one check”; however, no prior limitation introduces “verifying” as a separate, action. The earlier limitations recite checking operations, but do not establish an antecedent verifying step distinct from those checks. The examiner suggests clarifying the term “checks or verifying has failed” to rectify the issue.
Claims 7 and 9 which are dependent to claims 5, and 8 are similarly rejected.
Claims 5, 6, 8, and 10 recite the limitation “determining a possible fault attack” renders the claim indefinite because the language is a relative terminology. In addition, the language does not define a certainty and the metes and bounds of the claim are unascertainable. The term “possible fault attack” lacks an objective standard. The examiner suggests clarifying the term “possible fault attack” to rectify the issue.
Claims 7 and 9 which are dependent to claims 5, and 8 are similarly rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GITA FARAMARZI whose telephone number is (571)272-0248. The examiner can normally be reached Monday- Friday 9:00 am- 6:00 pm.
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/GITA FARAMARZI/Examiner, Art Unit 2496
/JORGE L ORTIZ CRIADO/Supervisory Patent Examiner, Art Unit 2496