DETAILED ACTION
A response was received on 20 May 2026. By this response, Claims 1-3, 5-10, 12-17, and 19-21 have been amended. No claims have been added or canceled. Claims 1-21 are currently pending in the present application.
Response to Arguments
Applicant’s arguments with respect to the rejection of Claims 1-21 under 35 U.S.C. 102 and 103 have been considered but are moot in view of the new grounds of rejection set forth below.
Drawings
The objection to Figures 5 and 6 as requiring a prior art label is withdrawn in light of the amended drawings filed. The objection to Figure 4 for informalities is NOT withdrawn because the amendments have raised new issues, as detailed below.
The drawings are objected to because they include informalities. In Figure 4, it appears that element 60 should include a text label for clarity as per 37 CFR 1.84(o). 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.
Specification
The objections to the abstract and disclosure for informalities are withdrawn in light of the amendments thereto. Applicant’s cooperation is again requested in correcting any other errors of which applicant may become aware in the specification.
Claim Objections
The objection to Claim 8 for informalities is withdrawn in light of the amendments thereto.
Claim Rejections - 35 USC § 112
The rejection of Claims 8, 10, 11, 13-15, and 17-21 under 35 U.S.C. 112(b) is withdrawn in light of the amendments to the claims. The rejection of Claims 1-7, 9, 12, and 16 under 35 U.S.C. 112(b) as indefinite is NOT withdrawn because not all issues have been addressed and/or because the amendments have raised new issues, as detailed below.
The following is a quotation 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 1-21 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 claims contain 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 has been amended to recite “providing control information from configurable functional circuit blocks in the integrated circuit device”, and Claims 1 and 15 have been amended to recite similar limitations. Claim 8 has further been amended to recite “using the control information… to generate values of control signals” as well as “selecting a first decryption algorithm… using the control signals” and “selecting a first encryption algorithm… using the control signals”, and Claims 1 and 15 have been amended to recite similar limitations. Although Applicant points to Figure 1 and paragraphs 0016-0023 and 0033-0034 for support of the claims as amended, and although there are general mentions of control information in paragraphs 0033 and 0034, it is noted that paragraph 0033 describes receiving control information from a source external to the IC rather than from configurable functional circuit blocks within the IC device as claimed and in paragraph 0034. Paragraphs 0033-0034 also generally mention generating control signals using the control information in similar terminology as recited in the claims. Further, paragraphs 0017, 0020, 0022-0023, and 0033-0034 generally mention control signals being used to select encryption or decryption algorithms in similar language as recited in the claims. However, as per MPEP § 2161.01, subsection I, for computer-implemented functional limitations, claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved, for example, when the algorithm or steps/procedure for performing the computer function are not explained in sufficient detail, where simply restating the function recited in the claim is not sufficient. Here, the claims recite generating values of control signals using control information, but the specification provides no algorithm or explanation of how to generate such control signals from the control information. Further, the claims recite selecting first decryption and encryption algorithms using control signals, but the specification provides no algorithm or explanation of how to select algorithms based on the control signals. At most, the specification describes selecting the algorithms from a list of algorithms by a programmer, designer, or user, rather than using control information from functional circuit blocks within the IC device itself (see paragraph 0022). As per MPEP § 2161.01, subsection I, if the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, a rejection under 35 U.S.C. 112(a), for lack of written description, must be made.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
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 1-7, 9, 12, and 16 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 second bitstream” in line 16. It is not clear whether this is intended to refer to the same (encrypted) second bitstream recited in line 9. This ambiguity renders the claim indefinite. It appears that the claim may be clarified to first introduce the unencrypted second bitstream before it is encrypted so that subsequent reference to generating an encrypted second bitstream may be made, to make the timing and antecedent basis more clear, if that is the intent of the claims as amended.
Claim 2 recites “the second bitstream” in lines 8 and 9-10. It is not clear whether these limitations are intended to refer to the second bitstream before or after encryption.
Claim 9 recites “the second bitstream” in lines 9 and 11. It is not clear whether these limitations are intended to refer to the second bitstream before or after encryption
Claim 12 recites “a key wrapping encryption algorithm” in line 5. It is not clear whether this is intended to refer to the same key wrapping encryption algorithm of Claim 10 or a distinct algorithm. Similarly, Claim 12 recites “a wrapping encryption key” in line 6. It is not clear whether this is intended to refer to the same wrapping encryption key of Claim 10 or a distinct key.
Claim 16 recites “the second bitstream” in line 10. It is not clear whether these limitations are intended to refer to the second bitstream before or after encryption.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
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, 2, 5-9, 13-16, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Donlin et al, US Patent 7788502, in view of Chen et al, US Patent 9094699 (cited in the previous Office action).
In reference to Claim 8, Donlin discloses a method that includes selecting a first decryption algorithm from a plurality of decryption algorithms and selecting a first encryption algorithm from a plurality of encryption algorithms (column 18, lines 40-53, and column 19, lines 36-67, selecting algorithms), receiving and decrypting a first bitstream using a decryption circuit configured to apply the first decryption algorithm (column 5, lines 5-7, decrypting encrypted bitstreams; column 18, lines 40-53, and column 19, lines 36-67, selecting algorithms and decrypting) and encrypting and transmitting a second bitstream using an encryption circuit configured to apply the first encryption algorithm (column 8, lines 57-63, and column 13, lines 5-21, encrypting bitstreams). However, Donlin does not explicitly disclose providing control information from functional blocks, using the control information to generate control signals, or using the control signals to select the algorithms.
Chen discloses a method that includes providing control information from functional blocks to an interface circuit and using the control information to generate values of control signals that are used to select encryption and decryption algorithms from a plurality of algorithms (see column 16, line 65-column 17, line 17, control information includes algorithm type and key parameters) and receiving and decrypting a bitstream using the selected algorithm (see column 14, line 49-column 15, line 49). Therefore, 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 method of Donlin to include the selection of the algorithms using control signals, in order to provide strong pairing between a security key and a destination of the data (see Chen, column 16, line 65-column 17, line 17, and column 7, lines 18-38).
In reference to Claim 9, Donlin and Chen further disclose providing the bitstreams to the configurable functional blocks using a fabric interface circuit that also provides authentication of the bitstreams (see Donlin, Figure 3, fabric 310; see also column 12, lines 21-41, describing the fabric, and column 17, lines 1-31, authentication).
In reference to Claim 13, Donlin and Chen further disclose a PLD, FPGA, or GPU device (see Donlin, column 1, lines 11-16, PLD, FPGA, and throughout).
In reference to Claim 14, Donlin and Chen further disclose reconfiguring the decryption and encryption circuits to apply different second decryption and encryption algorithms (see, for example, Donlin, column 18, lines 40-53, algorithm selected on the fly; column 19, line 36-column 20, line 20, line 24, different algorithms selected).
Claims 1, 2, 6, and 7 are directed to integrated circuit devices having functionality corresponding substantially to the methods of Claims 8, 9, 13, and 14, and are rejected by a similar rationale, mutatis mutandis.
Claims 15, 16, 20, and 21 are directed to software implementations of the methods of Claims 8, 9, 13, and 14, and are rejected by a similar rationale.
In reference to Claims 5 and 19, Donlin and Chen further disclose that the configurable functional circuit blocks are configurable using the decrypted first bitstream to perform functions for a variety of applications (see column 5, lines 5-28, and column 17, lines 9-31).
Claims 3, 4, 10-12, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Donlin in view of Chen as applied to Claims 1, 8, and 15 above, and further in view of Newell, US Patent 9672385.
In reference to Claim 10 and 12, Donlin and Chen disclose everything as detailed above with respect to Claim 8, and Donlin and Chen further disclose receiving a decryption or encryption key (Donlin, column 9, lines 1-15) and receiving a wrapped key (see Chen, column 7, lines 39-62); however, neither Donlin nor Chen explicitly discloses wrapping the key. Newell discloses a method that includes receiving encryption or decryption keys and wrapping the received keys by encrypting the keys to generate wrapped encryption or decryption keys (column 8, line 59-column 9, line 13). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the method of Donlin and Chen to include the key wrapping of Newell, in order to prevent cloning (see Newell, column 4, lines 1-19).
In reference to Claim 11, Donlin, Chen, and Newell further disclose generating the wrapping key (Newell, column 7, lines 1-20, generating key; column 4, lines 20-50, protecting key).
Claims 3 and 4 are directed to integrated circuit devices having functionality corresponding substantially to the methods of Claims 12 and 11, and are rejected by a similar rationale, mutatis mutandis.
Claims 17 and 18 are directed to software implementations of the methods of Claims 12 and 11, and are rejected by a similar rationale.
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 Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
Examiner interviews are available via telephone 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, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
