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 .
The following is a Non-Final Office Action in response to communications received on April 28, 2022 and January 21, 2025. Applicant has elected Group I corresponding to claims 1-21. Claims 1-21 are pending and addressed below.
Specification
For the record, Examiner acknowledges that the Specification submitted on April 28, 2022 has been accepted.
Drawings
For the record, Examiner acknowledges that the Drawings submitted on April 28, 2022 have been accepted.
Answer to Arguments with Traverse
Applicant’s election on January 21, 2025 with traverse is acknowledged.
Applicant has elected Group I with traverse. Applicant argues that Examiner fails to cite specific MPEP sections supporting restriction and makes only a conclusory statement that the groups are “subcombinations discloses as usable together” without providing the required detailed reasoning. Applicant further argues that Examiner failed to establish required aspects of MPEP, namely, (A) reasons why each invention is independent or distinct and (B) reasons there would be a serious burden. Applicant continues to argue that no search burden exists because both groups would require the same classification areas to be searched. Applicant states that claim 22 is not directed towards H04L63/04 since it does not recite transmission methods but should be searched in G06F21/123 since the claim is directed towards dedicated cryptographic hardware. Applicant lastly argues that the groups are not independent or distinct since claim 22 requires each of the computers to have a computer expansion card from Group I.
Examiner respectfully disagrees.
Regarding Applicant’s first argument that Examiner fails to cite a specific MPEP section and makes only a conclusory statement, this is not true. Even though not required for a restriction, a cursory glance shows that Examiner cited several relevant sections of the MPEP. Moreover, Examiner also clearly provided detailed reasoning for the restriction. Applicant’s argument is not persuasive.
Regarding Applicant’s argument that Examiner failed to establish required aspects of MPEP, namely, (A) reasons why each invention is independent or distinct and (B) reasons there would be a serious burden, Examiner respectfully disagrees. Examiner clearly laid out how the inventions are distinct in paragraph 2 and how searching both inventions would be a search burden in paragraph 4 of the restriction requirement. Applicant appears to direct most of the argument to an accusation that the groups aren’t separately classifiable and are therefore, not a search burden. Different classifications is only one indication of a burdenous examination. Searches requiring different key words is also an indication of a burdenous examination. The idea reflected in Group II is different than that of Group I as Group I requires particulars of a specific crypto expansion card whereas Group II is a system that uses an expansion card within two or more computers. Not only would different search strings and strategies be required, but the Groups are clearly classifiable in different areas. Group II merely recites an expansion card without reciting particulars of the expansion card. Applicant is not correct that Group II requires the expansion card of Group I as Group I recites specifics of the card whereas Group II merely uses a card without describing the structure of the card. Therefore, Applicant’s argument the claims are not distinct is not persuasive. Examiner has already pointed out how the Groups are distinct, do not overlap in scope, are not obvious variants, have separate utility and would be burdenous to search. The separate scope of the invention are also further evidence of different classification areas and distinctness. Applicant’s arguments are not persuasive.
For these reasons none of Applicant’s arguments regarding traversal of the restriction requirement are found persuasive and the restriction is maintained.
Claim Objections
Claims 1, 9 and 15 are objected to because of the following informalities:
Claim 1 recites the phrase “the computer expansion card.” However, the claim previously recites a “crypto expansion card.” It is suggested the phrase be amended to “the crypto expansion card” for clarity and consistency. Also, claim 1 recites the phrase “the secure micro controller unit.” However, the claim previously recites a “secured micro controller unit.” It is suggested the phrase be amended to “the secured micro controller unit” for clarity and consistency.
Claim 9 recites the phrase “the secure micro controller unit.” However, the claim previously recites a “secured micro controller unit.” It is suggested the phrase be amended to “the secured micro controller unit” for clarity and consistency.
Claim 15 recites the phrase “the computer expansion card.” However, the claim previously recites a “crypto expansion card.” It is suggested the phrase be amended to “the crypto expansion card” for clarity and consistency
Appropriate correction is required.
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.
Claims 7 and 15-21 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 7 recites the limitation “the micro controller unit configuration.” There is insufficient antecedent basis for this limitation.
Claim 15 recites the limitation “processing the verified cryptographic request and using the private cryptographic security key stored in the memory.” This limitation causes uncertainty about the meaning. For example, it is unclear if the limitation is stating that the private key is being used in processing the verified request or if the private key is just merely used at some point. For examining purposes, the latter is assumed. Dependent claims 16-21 are rejected for containing the same indefinite language as parent claim 15 without further remedying the indefinite language.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk (U.S. Pub. No. 2022/0329437) in view of Hu et al. (U.S. Pub. No. 2020/0210402 and hereinafter referred to as Hu).
As to claim 1, Burk discloses a crypto card comprising:
a computer interface configured to couple the computer card to a computing device (paragraphs [0021]-[0022] and Fig.1, Burk teaches an interface to connect a cryptographic processor device to a processor); and
a secure computing enclave coupled to the computer interface, where the secure computing enclave includes a secured micro controller unit (paragraphs [0021]-[0022] and Fig.1, Burk teaches a security enclave containing a controller to perform secure operations) by:
receiving a cryptographic request via the computer interface (paragraphs [0053] and [0087], Burk teaches receiving a request containing a signature),
verifying the cryptographic request is signed by a specific cryptographic key (paragraphs [0054]-[0055], Burk teaches verifying the signature using a public key), and
processing the verified cryptographic request on the secure micro controller unit (paragraphs [0057]-[0059], Burk teaches proceeding with a storage request if the verification is successful.).
Burk does not specifically disclose a crypto expansion card and configured to run smart contracts as claimed. However, Hu does disclose
disclose a crypto expansion card and configured to run smart contracts (paragraph [0054], Hu teaches an expansion card executing smart contracts.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Burk with the teachings of Hu for having a crypto expansion card because Burk already discloses an external cryptographic device connecting to a computer and it is a simple substitution to replace the cryptographic device of Burk with the expansion card of Hu to yield the predictable results of performing the cryptographic operations in an expansion card.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk and Hu as applied to claim 1 above, and further in view of Bell et al. (U.S. Pub. No. 2004/0201751 and hereinafter referred to as Bell).
As to claim 2, the combination of teachings between Burk and Hu disclose the crypto expansion card of claim 1. The combination of teachings between Burk and Hu does not specifically disclose where the processing of the verified cryptographic request includes using a private cryptographic security key as claimed. However, Bell does disclose
where the processing of the verified cryptographic request includes using a private cryptographic security key (paragraph [0015], Bell teaches encrypting/signing data with a private key before storing.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Bell for using a private cryptographic security key in the processing of the verified cryptographic request because this would increase security.
As to claim 3, the combination of teachings between Burk, Hu and Bell disclose the crypto expansion card of claim 2 where the private cryptographic security key is accessed via an auxiliary data connector (paragraph [0015], Bell discloses multiple ways for obtaining a private key including downloading it from a separate device (i.e. auxiliary).).
Examiner supplies the same rationale for the combination of the references as in claim 2 above
As to claim 4, the combination of teachings between Burk, Hu and Bell disclose the crypto expansion card of claim 2 where the secure computing enclave also includes: a secure memory that stores the private cryptographic security key (paragraph [0022], Burk teaches a secure memory that stores a private key.).
As to claim 5, the combination of teachings between Burk, Hu and Bell disclose the crypto expansion card of claim 2 where the processing of the verified cryptographic request includes using the private cryptographic security key to generate a cryptographic signature (paragraph [0015], Bell teaches encrypting/signing data with a private key before storing.).
Examiner supplies the same rationale for the combination of the references as in claim 2 above.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Bell as applied to claim 5 above, and further in view of Wang (U.S. Pub. No. 2021/0097528).
As to claim 6, the combination of teachings between Burk, Hu and Bell disclose the crypto expansion card of claim 5. The combination of teachings between Burk, Hu and Bell does not specifically disclose where the processing of the verified cryptographic request includes an on-blockchain transaction with a multi signature address as claimed. However, Wang does disclose
where the processing of the verified cryptographic request includes an on-blockchain transaction with a multi signature address (paragraphs [0028] and [0064], Wag teaches performing an action related to multi-signature blockchain transactions.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the processing of the verified cryptographic request include an on-blockchain transaction with a multi signature address because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the on-blockchain transaction with a multi signature address in Wang to yield the predictable results of performing the cryptographic request of on-blockchain transaction with a multi signature address.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk and Hu as applied to claim 1 above, and further in view of Abeloe (U.S. Patent No. 10,802,488).
As to claim 7, the combination of teachings between Burk and Hu disclose the crypto expansion card of claim 1. The combination of teachings between Burk and Hu does not specifically disclose where the micro controller unit configuration is unalterable as claimed. However, Abeloe does disclose
where the micro controller unit configuration is unalterable (col. 19 lines 6-11, Abeloe teaches a controller is unchangeable.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Abeloe for having the micro controller unit configuration be unalterable because thus would increase security.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk and Hu as applied to claim 1 above, and further in view of Tait et al. (U.S. Pub. No. 2023/0010440 and hereinafter referred to as Tait).
As to claim 8, the combination of teachings between Burk and Hu disclose the crypto expansion card of claim 1. The combination of teachings between Burk and Hu does not specifically disclose where the secure computing enclave is on a single integrated circuit chip as claimed. However, Tait does disclose
where the secure computing enclave is on a single integrated circuit chip (paragraph [0028], Tait teaches the enclave is on a system-on-chip.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Tait for having the secure computing enclave be on a single integrated circuit chip because thus would increase efficiency.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk and Hu as applied to claim 1 above, and further in view of Madrid et al. (U.S. Pub. No. 2018/0217828 and hereinafter referred to as Madrid).
As to claim 9, the combination of teachings between Burk and Hu disclose the crypto expansion card of claim 1. The combination of teachings between Burk and Hu does not specifically disclose where the secure micro controller unit is updatable with a cryptographically signed update as claimed. However, Madrid does disclose
where the secure micro controller unit is updatable with a cryptographically signed update (paragraphs [0037] and [0042], Madrid teaches signed updates for a controller.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Madrid for having the secure micro controller unit be updatable with a cryptographically signed update because thus would increase flexibility.
Claim(s) 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk and Hu as applied to claim 1 above, and further in view of Wang (U.S. Pub. No. 2021/0097528).
As to claim 10, the combination of teachings between Burk and Hu disclose the crypto expansion card of claim 1. The combination of teachings between Burk and Hu does not specifically disclose where the cryptographic request is to transfer a crypto asset as claimed. However, Wang does disclose
where the cryptographic request is to transfer a crypto asset (paragraph [0039], Wang teaches processing a request for transferring digital assets in an enclave.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the cryptographic request be to transfer a crypto asset because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the transfer of a crypto asset in Wang to yield the predictable results of performing the cryptographic request to transfer of a crypto asset.
As to claim 11, the combination of teachings between Burk, Hu and Wang disclose the crypto expansion card of claim 10 where the cryptographic request to transfer the crypto asset involves an on-blockchain address (paragraphs [0029] and [0039], Wang teaches processing a request for transferring digital assets in an enclave for a blockchain involving a blockchain address.).
Examiner supplies the same rationale for the combination of the references as in claim 10 above.
As to claim 12, the combination of teachings between Burk, Hu and Wang disclose the crypto expansion card of claim 11 where the cryptographic request to transfer crypto assets between an on-blockchain address and an off-blockchain account (paragraph [0130], Wang teaches transferring assets from a blockchain to an off-chain account.).
Examiner supplies the same rationale for the combination of the references as in claim 10 above.
As to claim 13, the combination of teachings between Burk, Hu and Wang disclose the crypto expansion card of claim 11 where the cryptographic request to transfer the crypto asset involves an off-blockchain account (paragraph [0130], Wang teaches transferring assets from a blockchain to an off-chain account.).
Examiner supplies the same rationale for the combination of the references as in claim 10 above.
As to claim 14, the combination of teachings between Burk, Hu and Wang disclose the crypto expansion card of claim 11 where the cryptographic request to transfer the crypto asset includes an open transactions protocol transaction (paragraph [0068], Wang teaches transactions are open transactions viewable by all participants.).
Examiner supplies the same rationale for the combination of the references as in claim 10 above.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk (U.S. Pub. No. 2022/0329437) in view of Hu et al. (U.S. Pub. No. 2020/0210402 and hereinafter referred to as Hu) in view of Abeloe (U.S. Patent No. 10,802,488).
As to claim 15, Burk discloses a crypto card comprising:
a computer interface configured to couple the computer card to a computing device (paragraphs [0021]-[0022] and Fig.1, Burk teaches an interface to connect a cryptographic processor device to a processor);
a memory that stores a private cryptographic security key (paragraph [0022], Burk teaches a secure memory that stores a private key) and
a micro controller unit (paragraphs [0021]-[0022] and Fig.1, Burk teaches a security enclave containing a controller to perform secure operations) by:
receiving a cryptographic request via the computer interface (paragraphs [0053] and [0087], Burk teaches receiving a request containing a signature),
verifying the cryptographic request is signed by a specific cryptographic key (paragraphs [0054]-[0055], Burk teaches verifying the signature using a public key),
processing the verified cryptographic request (paragraphs [0057]-[0059], Burk teaches proceeding with a storage request if the verification is successful.). Burk does not specifically disclose a crypto expansion card; an unalterable micro controller unit configured to run smart contacts; and using the private cryptographic security key stored in the memory as claimed. However, Hu does disclose
disclose a crypto expansion card and configured to run smart contracts (paragraph [0054], Hu teaches an expansion card executing smart contracts); and
using the private cryptographic security key stored in the memory (paragraphs [0039] and [0067], Hu teaches using a private key.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Burk with the teachings of Hu for having a crypto expansion card because Burk already discloses an external cryptographic device connecting to a computer and it is a simple substitution to replace the cryptographic device of Burk with the expansion card of Hu to yield the predictable results of performing the cryptographic operations in an expansion card.
The combination of teachings between Burk and Hu does not specifically disclose an unalterable micro controller unit as claimed. However, Abeloe does disclose
an unalterable micro controller unit (col. 19 lines 6-11, Abeloe teaches a controller is unchangeable.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Abeloe for having an unalterable micro controller unit because thus would increase security.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Abeloe as applied to claim 15 above, and further in view of Bell et al. (U.S. Pub. No. 2004/0201751 and hereinafter referred to as Bell).
As to claim 16, the combination of teachings between Burk, Hu and Abeloe disclose the crypto expansion card of claim 15. The combination of teachings between Burk, Hu and Abeloe does not specifically disclose where the processing of the verified cryptographic request includes generating a cryptographic signature with the private cryptographic security key as claimed. However, Bell does disclose
where the processing of the verified cryptographic request includes generating a cryptographic signature with the private cryptographic security key (paragraph [0015], Bell teaches encrypting/signing data with a private key before storing.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Bell for using a private cryptographic security key in the processing of the verified cryptographic request because this would increase security.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu, Abeloe and Bell as applied to claim 16 above, and further in view of Wang (U.S. Pub. No. 2021/0097528).
As to claim 17, the combination of teachings between Burk, Hu, Abeloe and Bell disclose the crypto expansion card of claim 16. The combination of teachings between Burk, Hu, Abeloe and Bell does not specifically disclose where the processing of the verified cryptographic request includes an on-blockchain address as claimed. However, Wang does disclose
where the processing of the verified cryptographic request includes an on-blockchain address (paragraphs [0029] and [0039], Wang teaches processing a request for transferring digital assets in an enclave for a blockchain involving a blockchain address.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the cryptographic include an on-blockchain address because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the on-blockchain address request in Wang to yield the predictable results of performing the cryptographic request for an on-blockchain address.
Claim(s) 18, 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Abeloe as applied to claim 15 above, and further in view of Wang (U.S. Pub. No. 2021/0097528).
As to claim 18, the combination of teachings between Burk, Hu and Abeloe disclose the crypto expansion card of claim 15. The combination of teachings between Burk, Hu and Abeloe does not specifically disclose where the processing of the verified cryptographic request includes an open transactions protocol transaction as claimed. However, Wang does disclose
where the processing of the verified cryptographic request includes an open transactions protocol transaction (paragraph [0068], Wang teaches transactions are open transactions viewable by all participants.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the cryptographic include an open transactions protocol transaction because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the open transactions protocol transaction request in Wang to yield the predictable results of performing the cryptographic request for open transactions protocol transaction.
As to claim 20, the combination of teachings between Burk, Hu and Abeloe disclose the crypto expansion card of claim 15. The combination of teachings between Burk, Hu and Abeloe does not specifically disclose where the processing of the verified cryptographic request moves crypto assets between an on-blockchain address and an off-blockchain account as claimed. However, Wang does disclose
where the processing of the verified cryptographic request moves crypto assets between an on-blockchain address and an off-blockchain account (paragraph [0130], Wang teaches transferring assets from a blockchain to an off-chain account.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the cryptographic include an on-blockchain address and an off-blockchain account because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the on-blockchain address and an off-blockchain account in Wang to yield the predictable results of performing the cryptographic request for on-blockchain address and an off-blockchain account.
As to claim 21, the combination of teachings between Burk, Hu and Abeloe disclose the crypto expansion card of claim 15. The combination of teachings between Burk, Hu and Abeloe does not specifically disclose where the processing of the verified cryptographic request moves crypto assets out of an off-blockchain account as claimed. However, Wang does disclose
where the processing of the verified cryptographic request moves crypto assets out of an off-blockchain account (paragraph [0130], Wang teaches transferring assets from a blockchain to an off-chain account.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the cryptographic request include an off-blockchain account because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the off-blockchain account request in Wang to yield the predictable results of performing the cryptographic request for an off-blockchain account.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Abeloe as applied to claim 15 above, and further in view of Tait et al. (U.S. Pub. No. 2023/0010440 and hereinafter referred to as Tait).
As to claim 19, the combination of teachings between Burk, Hu and Abeloe disclose the crypto expansion card of claim 15. The combination of teachings between Burk, Hu and Abeloe does not specifically disclose where the memory and the unalterable micro controller unit are on a single integrated circuit as claimed. However, Tait does disclose
where the memory and the unalterable micro controller unit are on a single integrated circuit (paragraph [0028], Tait teaches the enclave is on a system-on-chip.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Tait for having the secure computing enclave be on a single integrated circuit chip because thus would increase efficiency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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/THADDEUS J PLECHA/Examiner, Art Unit 2438