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 .
Remarks
Claim 3 at line 4 refers to "the security module" while parent claim 1 refers to a "hardware security module." . Applicant should consider amending the claim to be consistent.
Claim 3 at line 4 includes the parenthetical expression “to this end.” This phrase appears to be unnecessary. Applicant should consider deleting this phrase.
Drawings
Figure 4 is objected to under 37 CFR 1.84(o) because it lacks suitable descriptive legends. Figure 4 only contains reference numerals and + and - symbols. These numbers and symbols do not allow a reader to understand the drawing without resort to the specification. A method, as in Figure 4, admits of illustration with an appropriately labeled block diagram. Therefore, a corrected version of Figure 4 is necessary for the understanding of the subject matter to be patented.
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.
Claim Interpretation
This Office action incorporates by reference the claim interpretation set forth in the Officce action mailed September 17, 2025.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-11 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.
Claim 1 recites a “microprocessor” in the preamble. The microprocessor is considered a statement of intended use and does not positively add limitations to the claimed device, or further modify the limitations recited in the body of the claim, and thus does not limit the claim. However, limitation b) requires the microprocessor to perform operation 2 without specifying what structure in the body of the claim performs this function. It is noted that operations 1 and 3-4 were amended in response to the last Office action to fix the same problem in those limitations. Operation 2 was not amended. Applicant should review Specification [0037] to determine whether the control module performs the operation of Operation 2 and whether it would be appropriate amend the claims accordingly. This approach might require amending the claim body to include the necessary structure.
Claims 2-11 are rejected because they depend on claim 1.
Claims 3, 4, 6, 7, and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 3, 4, 6, 7, and 8 merely restate the functional description of the computation circuits (Fig. 1 blocks 120-160 and the circuitry shows in Figs. 5 and 11-14) interpreted under the means-plus-function limitation to be part of the hardware security module of claim 1. Because the hardware security module is a means plus function limitation, this subject matter, including the functionality, is already part of claim 1. The dependent claims therefore fail to add any further limitation beyond what is already claimed by the hardware security module of claim 1, The Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Regarding the objection to Figure 4 under 37 CFR 1.84(o), Applicant's arguments filed December 17, 2025 have been fully considered but they are not persuasive. Applicant argues that suitable descriptive legends are not needed when the Figure is directed to steps in a process. This argument is not persuasive because the rule at issue only refers to the understanding of the drawing. 37 CFR 1.84(o) (emphasis added). The rule does not distinguish between drawings directed to an apparatus versus drawings directed to a method/flowchart nor does the rule create some different standard for processes. Since Applicant’s argument is not consistent with the language of the rule, it is not persuasive.
Applicant’s arguments regarding the double patenting rejection have been fully considered and are persuasive. The double patenting rejection has been withdrawn.
Regarding the rejection of claims 3, 4, 6, 7, and 8 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, Applicant's arguments filed December 17, 2025 have been fully considered but are not persuasive. Applicant’s arguments do not point out specific errors in the claim construction set forth in the last Office action, which requires all of Fig. 1 blocks 120-160 and the circuitry shows in Figs. 5 and 11-14 to be part of the disclosed structure. Applicant merely describes general principles of claim construction and states that each of the dependent claims indicates a new structure. Applicant has not set forth any explanation as to what structure or algorithm supports claim 1 and what different structure or algorithm supports the various rejected dependent claims. In other words, Applicant has provided no argument in the remarks or evidence from the specification that delineates the difference in scope of the independent claim and the dependent claims. If the functional limitations of a dependent claims are the additional algorithm steps for the independent claim, a dependent claim cannot recite those algorithm steps and be a proper dependent claim.
Conclusion
THIS ACTION IS MADE FINAL. 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 Andrew Caldwell whose telephone number is (571) 272-3702. The examiner can normally be reached M-F 9:00-17:30.
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, TC Director John Cottingham can be reached at (571) 272-1400. 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.
/ANDREW CALDWELL/Supervisory Patent Examiner, Art Unit 2182