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 .
Detailed Action
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 has been entered.
Claims 1, 8, and 15 are amended
Claims 1-20 are pending
Priority
This application is a continuation-in-part of U.S. Patent Application Serial No.
17/672,224, filed February 15, 2022, which claims priority to foreign application United Kingdom Patent Application Serial No. 2102750.3, filed February 26, 2021. All foreign priority documents have been received. Therefore, the effective filling date of this application is February 26, 2021.
Response to Arguments
Applicant’s arguments filed on 10/27/2025 have been fully considered.
With respect to the arguments of independent claim 1. Applicant has argued that WANG and SUDHAKAR fail to teach “subsequent to transmitting the encrypted version of the set of data to the destination, verify that the signature is indicative of the set of data being from a known source;”. Applicant’s representative has argued that the combination of WANG and SUDHAKAR is improper due to SUDHAKAR relating to assuring a receiver’s non repudiation and WANG relating to verifying a digital signature of firmware data. Examiner respectfully disagrees. The combination of WANG and SUDHAKAR is proper. Both references relate to transmission of data between a sender and receiver and verification of data. SUDHAKAR further states ([SUDHAKAR, para. 0051] “The receiver sends back a verifying signature for the encrypted data and in response to validating the signature, the sender service sends an encrypted version of the decryption key to the receiver.”). The signature is directly related to the encrypted data. SUDHAKAR teaches that after encrypted data is transmitted a signature is verified, and based on the verification of the signature a decryption key is sent to the receiver to decrypt the encrypted data. The citations of SUDHAKAR clearly teaches this limitation as shown in the rejection below. Furthermore, WANG teaches if a signature is from a known source ([WANG, para. 0080] “the verification device is configured to verify whether a digital signature of the first firmware data (cipher text+digital signature) received from the first transmission is reliable …”). Both references relate to verifying of signature in relation to transmission of data, and both references relate to ensuring authenticity and integrity between communicating parties. Therefore, the combination of WANG and SUDHAKAR results in a proper USC 103 rejection that teaches all limitations of independent claim 1.
As for the newly amended limitation of “transmit an encrypted version of the set of data to a destination within a second computer network as the set of data is received by the system, without storing a full copy of the set of data at the system;” examiner is now relying on a new third reference MEVERGNIES to better teach this limitation.
Claims 8 and 15 are independent claims that recite of similar limitations of claim 1. Therefore, the same rejection and response applies.
Additional arguments are moot in view of new grounds of rejection necessitated by the claim amendments.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“… verification unit configured to …” in claim 1
“… the destination is configured to …” in claim 1, 8, and 15
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
See specification paragraph 0140 for hardware support.
See specification paragraphs 0020, 0040-0045, 0130, 0132, and 0138 for description of claimed function.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 8, 9, 15, and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 17/672,224 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the corresponding claims further recite similar/same limitation of the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Current application no. 17/882,243
copending Application No. 17/672,224
1.) A system comprising: at least one hardware processor implementing a verification unit configured to:
receive a set of data from a first computer network; transmit an encrypted version of the set of data to a destination within a second computer network as the set of data is received by the system, without storing a full copy of the set of data at the system;
receive a signature associated with the set of data from the first computer network;
subsequent to transmitting the encrypted version of the set of data to the destination, verify that the signature is indicative of the set of data being from a known source; and
in response to verification of the signature, transmit a decryption key associated with the encrypted version of the set of data to the destination, wherein the destination is configured to decrypt the set of data with the decryption key.
1.) A verification unit for a first computer network, the verification unit being operable to receive a set of data, and a signature for the set of data, from the rest of the first computer network, the verification unit comprising;
a. an encryption engine operable to encrypt the received set of data using an encryption key; and
b. a signature checker operable to verify the signature of the set of data;
wherein the verification unit is operable to transmit the encrypted set of data to a second computer network, and to transmit the encryption key to the second computer network if the signature is verified.
2.) The system of claim 1, further configured to, in response to a failed verification of the signature, discard the decryption key.
9.) A verification unit according to claim 7 wherein the key generator is operable to discard the encryption key if the signature is not verified.
Regarding claims 8, 9, 15, and 16, they recite of similar features of claims 1 and 2. Therefore, the double patenting rejection of claims 8, 9, 15, and 16 is similar to that of claims 1 and 2.
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.
Claims 1, 3-6, 8, 10-13, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over WANG (US-20230229775-A1) based on its priority to foreign application CN 202010722761.3A filed on July 24 2020, in view of SUDHAKAR (US-20070160203-A1), and further in view of MEVERGNIES (US-20150033338-A1), hereinafter WANG-SUDHAKAR-MEVERGNIES.
Regarding claim 1, WANG teaches “A system comprising: at least one hardware processor implementing a verification unit configured to: receive a set of data from a first computer network; ([WANG, para. 0007] “embodiments of the present disclosure, a firmware data verification device is provided and includes”) ([WANG, para. 0008] “a receiving portion, configured to receive first firmware data sent by a data generation device, wherein the first firmware data includes second firmware data encrypted by the data generation device and a digital signature generated by the data generation device according to the second firmware data”) transmit an encrypted version of the set of data to a destination within a second computer network; ([WANG, para. 0064] “a sending portion 104, configured to send the plurality of encrypted data packets to a firmware updating device, so that the firmware updating device decrypts the plurality of data packets and performs firmware updating.”) receive a signature associated with the set of data from the first computer network; ([WANG, para. 0008] “a receiving portion, configured to receive first firmware data sent by a data generation device, wherein the first firmware data includes … a digital signature generated by the data generation device according to the second firmware data”) …. verify that the signature is indicative of the set of data being from a known source; ([WANG, para. 0009] “a verifying portion, configured to verify the digital signature in the first firmware data, so as to determine whether the digital signature has been verified”) ([WANG, para. 0080] “the verification device is configured to verify whether a digital signature of the first firmware data (cipher text+digital signature) received from the first transmission is reliable, thereby verifying whether a source of firmware data is reliable. Only verified (i.e., digital signature verification is passed) firmware data may be allowed to be sent to the outside through the second transmission”)
However, WANG does not teach of “as the set of data is received by the system, without storing a full copy of the set of data at the system … subsequent to transmitting the encrypted version of the set of data to the destination, verify that the signature … and in response to verification of the signature, transmit a decryption key associated with the encrypted version of the set of data to the destination, wherein the destination is configured to decrypt the set of data with the decryption key.”
In analogous teaching SUDHAKAR teaches “… subsequent to transmitting the encrypted version of the set of data to the destination, verify that the signature … and in response to verification of the signature, transmit a decryption key associated with the encrypted version of the set of data to the destination, wherein the destination is configured to decrypt the set of data with the decryption key.” ([SUDHAKAR, para. 0051] “According to an embodiment, at 242, during the communication the sender service first transmits encrypted data that is encrypted with the decryption key. The receiver sends back a verifying signature for the encrypted data and in response to validating the signature, the sender service sends an encrypted version of the decryption key to the receiver.”) ([SUDHAKAR, para. 0071] “the sender communication service 401 then sends in a second transmission and encrypted version of a decryption key that the receiver communication service 402 may use to decrypt the previously sent and acknowledged encrypted data.”)
Thus, given the teaching of SUDHAKAR, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the teaching of first sending encrypted data and after verifying a signate of the encrypted data transmitting a decryption key by SUDHAKAR into the system of verifying signature and transmitting encrypted data by WANG. One of ordinary skill in the art would have been motivated to do so because SUDHAKAR recognizes the need to protect transmission of data and implement non-repudiation of a receiver ([SUDHAKAR, para. 0011] “if the value of the message associated with the transaction is high and it is also time sensitive in nature, then without more robust techniques beyond a purely software-based solution there is also a chance that the receiver may suffer a potentially substantial loss.”) ([SUDHAKAR, para. 0012] “improved techniques that augment existing software techniques are desirable for purposes of ensuring non-repudiation of a receiver”) ([SUDHAKAR, para. 0013] “techniques are provided for assuring a receiver does not repudiate an electronic communication by incorporating a secure device in that communication.”).
However, WANG-SUDHAKAR does not teach “transmit an encrypted version of the set of data to a destination … as the set of data is received by the system, without storing a full copy of the set of data at the system;”.
In analogous teaching MEVERGNIES teaches “transmit an encrypted version of the set of data to a destination … as the set of data is received by the system, without storing a full copy of the set of data at the system;” ([MEVERGNIES, para. 0049] “As one example of a possible difference between method 300 and an alternative embodiment, the first agent may perform the encoding and the encoded datum may be transmitted without storing it in the first agent. As another example, transmissions of the packets of the encoded datum may be interleaved with the encoding, in other words, the transmission of one or more n-bit packets may occur before all of the m-bit packets have been encoded.”) ([MEVERGNIES, para. 0016] “Encoding agent 110 may represent any component, device, other agent, or portion thereof that may encode data”) ([MEVERGNIES, para. 0033] “The starting point may be selected randomly. Each two-bit packet of the input datum is encoded based on its value and the current state of the state machine”).
Thus, given the teaching of MEVERGNIES, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the teaching of not storing data that is to be transmitted by MEVERGNIES into the system of verifying signature and transmitting encrypted data by WANG-SUDHAKAR. One of ordinary skill in the art would have been motivated to do so because MEVERGNIES recognizes the need to improve security ([MEVERGNIES, para. 0004] “Malicious attacks are a serious threat to the security of information processing systems. … Many techniques have been developed to defend against side channel attacks, but more are needed as information processing system development continues.”) ([MEVERGNIES, para. 0009] “Embodiments of an invention for hardening data transmissions against power side channel analysis are described.”)
Regarding claim 8, this claim recites of a method that corresponds to system claim 1. Therefore, claim 8 is rejected in a similar manner as in the rejection of claim 1.
Regarding claim 15, this claim recites of an article of manufacture comprising a non-transitory, computer-readable medium having instructions which once executed perform the steps of system claim 1. Therefore, claim 15 is rejected in a similar manner as in the rejection of claim 1.
Regarding claims 3, 10, and 17, WANG-SUDHAKAR-MEVERGNIES teach all limitations of claims 1, 8, and 15. WANG further teaches “wherein the decryption key is associated with a symmetric encryption algorithm.” ([WANG, para. 0078] “In some embodiments, encryption and a digital signature may use a symmetric encryption algorithm and may also use an asymmetric encryption algorithm. In case of symmetric encryption, an encryption portion uses the same key as a decryption portion inside a device to be upgraded. In case of asymmetric encryption, the encryption portion uses a public key for encryption and the decryption portion inside the device to be upgraded uses a private key for decryption.”)
Regarding claims 4, 11, and 18, WANG-SUDHAKAR-MEVERGNIES teach all limitations of claims 1, 8, and 15. WANG further teaches “wherein the decryption key is associated with an asymmetric encryption algorithm.” ([WANG, para. 0078] “In some embodiments, encryption and a digital signature may use a symmetric encryption algorithm and may also use an asymmetric encryption algorithm. In case of symmetric encryption, an encryption portion uses the same key as a decryption portion inside a device to be upgraded. In case of asymmetric encryption, the encryption portion uses a public key for encryption and the decryption portion inside the device to be upgraded uses a private key for decryption.”)
Regarding claims 5, 12, and 19, WANG-SUDHAKAR-MEVERGNIES teach all limitations of claims 1, 8, and 15. WANG further teaches “wherein the set of data received from the first computer network is the encrypted version of the set of data, ([WANG, para. 0064] “a sending portion 104, configured to send the plurality of encrypted data packets to a firmware updating device, so that the firmware updating device decrypts the plurality of data packets and performs firmware updating.”).
SUDHAKAR further teaches “… and wherein the decryption key is received from the first computer network” ([SUDHAKAR, para. 0051] “The receiver sends back a verifying signature for the encrypted data and in response to validating the signature, the sender service sends an encrypted version of the decryption key to the receiver.”) ([SUDHAKAR, para. 0068] “The non-repudiation system 400 includes a sender communication service 401, a receiver communication service 402, and a secure device 403. These components communicate over a network 410.”).
The same motivation to modify WANG with SUDHAKAR as in the rejection of claim 1 applies.
Regarding claims 6, 13, and 20, WANG-SUDHAKAR-MEVERGNIES teach all limitations of claims 1, 8, and 15. WANG further teaches “further configured to: in response to a determination that the set of data received from the first computer network is not encrypted, encrypt the set of data to generate the encrypted version of the set of data.” ([WANG, para. 0076] “As shown in FIG. 4 , original firmware data generated by the data generation device is a plain text, then the original firmware data (plain text) is encrypted to the second firmware data (cipher text) by using a first key through an encryption portion, then the first firmware data (cipher text+digital signature) is generated after an exclusive digital signature is added through a signing portion, and finally is sent to the outside through first transmission.”)
Claims 2, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over WANG-SUDHAKAR-MEVERGNIES in view of TAZZARI (US-20180083774-A1).
Regarding claim 2, 9, and 16, WANG-SUDHAKAR-MEVERGNIES teach all limitations of claims 1, 8, and 15. However, WANG-SUDHAKAR-MEVERGNIES does not teach of “further configured to, in response to a failed verification of the signature, discard the decryption key.”.
In analogous teaching TAZZARI teaches “further configured to, in response to a failed verification of the signature, discard the decryption key.” ([TAZZARI, para. 0028] “if an invalid-key message is received, the entire set of stored symmetric encryption keys can be discarded, e.g. erased from the storage memory of the second device, and the process of secure transmission of a fresh set of symmetric keys can be performed anew”).
Thus, given the teaching of TAZZARI, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the teaching of discarding a decryption key by TAZZARI into the system of verifying signature and transmitting encrypted data by WANG-SUDHAKAR-MEVERGNIES . One of ordinary skill in the art would have been motivated to do so because TAZZARI recognizes the need to improve secure data transmission ([TAZZARI, para. 0013] “A need therefore exists for a method which allows secure data transmission, but which requires less data traffic for establishing a secure transmission channel.”).
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over WANG-SUDHAKAR-MEVERGNIES in view of WALLACE (US-6601170-B1).
Regarding claims 7 and 14, WANG-SUDHAKAR-MEVERGNIES teach all limitations of claims 1 and 8. However, WANG-SUDHAKAR-MEVERGNIES does not teach of “wherein the first computer network is the internet.”.
In analogous teaching WALLACE teaches “wherein the first computer network is the internet.” ([WALLACE, abstract] “A method and system for creating secure Internet user states between one or more servers and one or more users. The invention is carried out by a server receiving over the Internet from a user private data relating to the user and a user key; creating an encryption key from the user key; encrypting the private data with the encryption key”).
Thus, given the teaching of WALLACE, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine the teaching of computer network being the internet by WALLACE into the system of verifying signature and transmitting encrypted data by WANG-SUDHAKAR-MEVERGNIES . One of ordinary skill in the art would have been motivated to do so because WALLACE recognizes the need to protect privacy ([WALLACE, col. 4 lines 49-52] “An object of the present invention is to protect the privacy of Internet users by protecting private user data used for establishing Internet user states.”).
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
ROSENBERG (US-20170208064-A1): This prior art teaches of methods and systems for directly and securely transferring encrypted medical data between two remote locations, such as an imaging site and a diagnostic site, wherein the diagnostic site is not within a data transfer network utilized by the imaging site. The invention allows the diagnostic site to receive medical data and view the data using a thin client viewer, and allows the diagnostic site to register as an in-network site.
HENDERSON (US-20180248692-A1): This prior art teaches of one-to-many cryptographic systems and methods are disclosed, including numerous industry applications. Embodiments of the present invention can generate and regenerate the same symmetric key from a random token. The one-to-many cryptographic systems and methods include a cryptographic module being in communication with one or more remote locations. The cryptographic module is configured to encrypt data received from the remote locations and to decrypt data for receipt by the remote locations. The cryptographic module includes a key generator configured to use two or more inputs to reproducibly generate the symmetric key and a cryptographic engine configured to use the symmetric key for encrypting and decrypting data. Corresponding methods are also provided.
Conclusion
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/A.A./
12/09/2025
/AFAQ ALI/Examiner, Art Unit 2434
/KAMBIZ ZAND/Supervisory Patent Examiner, Art Unit 2434