DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1 – 5 and 7 – 20 are pending.
Response to Arguments
Applicant’s arguments filed 29 January 2026, with respect to the rejections of the claims under 35 U.S.C. 103 have been fully considered and are persuasive. The rejections of the claims have been withdrawn.
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 – 5 and 7 – 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 16 of copending Application No. 18/108,575 in view of US Patent No. 10,585,819 (hereinafter Kachare) and US Patent No. 10,298,385 (hereinafter Khedr).
US Patent Application No. 18/108,575 requires all the limitations of claim 1 of the instant application (US Patent Application No. 18/108,575; Claims 1 and 8) except “a Fully Homomorphic Encryption (FHE) circuit” and “to deliver a request received from the host processor to the storage device via the first connector.”
However, Kachare teaches the delivering a request received from a host processor (Kachare; Figure 22B Item 2236, Col 24 Lines 60 – 64) to the storage device via the first connector (Kachare; Figure 22B Item 2248, Col 25 Lines 2 – 7).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the claims of the instant application to include the request delivery because doing so allows for communicating requests from the host to the storage.
US Patent Application No. 18/108,575 in combination with Kachare does not teach “a Fully Homomorphic Encryption (FHE) circuit.”
However, Khedr teaches the use of an acceleration circuit that is a Fully Homomorphic Encryption (FHE) circuit (Khedr; Figure 1 Item 102, Col 15 Lines 5 – 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the claims of US Patent Application No. 18/108,575 in combination with Kachare to include the FHE circuit because doing so allows for processing resources to be freed for other tasks (Khedr; Col 15 Lines 5 – 15).
US Patent Application No. 18/108,575 requires all the limitations of claim 2 of the instant application (US Patent Application No. 18/108,575; Claim 2).
US Patent Application No. 18/108,575 requires all the limitations of claim 3 of the instant application (US Patent Application No. 18/108,575; Claims 4 and 5).
US Patent Application No. 18/108,575 requires all the limitations of claim 4 of the instant application (US Patent Application No. 18/108,575; Claims 4, 5, and 6).
US Patent Application No. 18/108,575 requires all the limitations of claim 5 of the instant application (US Patent Application No. 18/108,575; Claim 7).
US Patent Application No. 18/108,575 requires all the limitations of claim 7 of the instant application (US Patent Application No. 18/108,575; Claim 9).
US Patent Application No. 18/108,575 requires all the limitations of claim 8 of the instant application (US Patent Application No. 18/108,575; Claim 1).
US Patent Application No. 18/108,575 requires all the limitations of claim 9 of the instant application (US Patent Application No. 18/108,575; Claims 10 and 16) except “a Fully Homomorphic Encryption (FHE) circuit.
However, Khedr teaches the use of an acceleration circuit that is a Fully Homomorphic Encryption (FHE) circuit (Khedr; Figure 1 Item 102, Col 15 Lines 5 – 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the claims of US Patent Application No. 18/108,575 to include the FHE circuit because doing so allows for processing resources to be freed for other tasks (Khedr; Col 15 Lines 5 – 15).
US Patent Application No. 18/108,575 requires all the limitations of claim 10 of the instant application (US Patent Application No. 18/108,575; Claim 11).
US Patent Application No. 18/108,575 requires all the limitations of claim 11 of the instant application (US Patent Application No. 18/108,575; Claim 12).
US Patent Application No. 18/108,575 requires all the limitations of claim 12 of the instant application (US Patent Application No. 18/108,575; Claim 13).
US Patent Application No. 18/108,575 requires all the limitations of claim 13 of the instant application (US Patent Application No. 18/108,575; Claims 12, 13, and 14).
US Patent Application No. 18/108,575 requires all the limitations of claim 14 of the instant application (US Patent Application No. 18/108,575; Claim 15).
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 6 and 7 would be allowable if rewritten, amended, or a proper Terminal Disclaimer is filed to overcome the non-statutory double patenting rejection(s) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 15 – 20 are allowable.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 1 – 5, 7, and 8 would be allowable if rewritten, amended, or a proper Terminal Disclaimer is filed to overcome the non-statutory double patenting rejection(s) set forth in this Office action because the prior art of record fails to teach or suggest alone or in combination a storage for a list of device configurations, wherein the multi-function device is configured to selectively expose the FHE circuit to the host processor based at least in part on the list of device configurations, as required by independent claim 1, in combination with the other claimed limitations (emphasis added). The prior art of record teaches selectively exposing the circuit to the host, but does not teach doing so based on a list of device configurations stored in a storage, as required by independent claim 1.
Claims 2 – 5, 7, and 8 would also be allowable because of its dependence upon allowable independent claim 1.
Claims 9 – 14 would be allowable if rewritten, amended, or a proper Terminal Disclaimer is filed to overcome the non-statutory double patenting rejection(s) set forth in this Office action because the prior art of record fails to teach or suggest alone or in combination a storage for a list of device configurations, wherein the multi-function device is configured to selectively expose the FHE circuit to the host processor based at least in part on the list of device configurations, as required by independent claim 9, in combination with the other claimed limitations (emphasis added). The prior art of record teaches selectively exposing the circuit to the host, but does not teach doing so based on a list of device configurations stored in a storage, as required by independent claim 9.
Claims 10 – 14 would also be allowable because of its dependence upon allowable independent claim 9.
Claims 15 – 20 are allowable because the prior art of record fails to teach or suggest alone or in combination selectively exposing the FHE circuit to the host processor based at least in part on a list of device configurations, as required by independent claim 15, in combination with the other claimed limitations (emphasis added). The prior art of record teaches selectively exposing the circuit to the host, but does not teach doing so based on a list of device configurations stored in a storage, as required by independent claim 15.
Claims 16 – 20 would also be allowable because of its dependence upon allowable independent claim 15.
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 RICHARD B FRANKLIN whose telephone number is (571)272-0669. The examiner can normally be reached M-F 8:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Idriss Alrobaye can be reached at (571) 270-1023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD B FRANKLIN/ Examiner, Art Unit 2181
/IDRISS N ALROBAYE/ Supervisory Patent Examiner, Art Unit 2181