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 .
This action is responsive to communication filed on 9/2/2025.
Claims 1-17 were originally filed. Claims 1-17 are cancelled. Claims 18-35 are newly added claims and are subject to examination.
This amendment and applicant’s arguments have been fully considered and entered by the Examiner.
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.
Claim 18 is 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.
With respect to claim 18, the claim does not particularly point out and distinctly define the metes and bounds of the subject matter. The claim is essentially reciting a an in-computer offline storage (ICOS) apparatus for supporting zero vulnerability computing (ZVC) by means of a toggle switch-controlled, a switchable non-volatile memory (NVM). It is just claiming a toggle switch or switching non-volatile memory. The claim in itself is just claiming a toggle switch which does not provide metes and bounds of the claim. If anything, the claim just describes intended use of what the apparatus and toggle switch will do.
Claim Objections
Claims 19-26 are objected to because of the following informalities: improperly dependent claims. With respect to claims 20-26, they are dependent on claim 1 which has been claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 18-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwong et al. U.S. Patent Publication # 2004/0015631 (hereinafter Kwong)
With respect to claim 18, Kwong teaches an in-computer offline storage (ICOS) apparatus for supporting zero vulnerability computer (ZVC) by means of a toggle switch-controlled, switchable non-volatile memory (NVM) (Fig. 1 element 31) permanently integrated (Fig. 1 element 12/21) into a host computer (Fig. 1 element 20) (i.e. Fig 1 element 21 is in I/O port of the computer which is permanently integrated into a host computer and wherein the external storage is connected to the host computer via the cable using USB) and configured to store data that, at the data owner’s behest (i.e. when owner wants the store data, the switch 31 will be turned on), remains offline even when the host computer is online or transiently switched on to bring it online briefly in communication with the host computer on a need basis (i.e. power on/off switch which means when power is off, data will not be stored or retrieved and the host computer can still be on.)(Paragraph 18, 20-24)
With respect to claim 19, Kwong teaches the ICOS apparatus of claim 18, wherein the permanent integration of the switchable NVM device (Fig. 1 element 31) is internal to the computer’s motherboard or externally mounted on the computer’s USB (Fig. 1 element 21) or SD card port (Paragraph 18, 20-21)
With respect to claim 20, Kwong teaches the ICOS apparatus of claim 18, wherein the NVM device is configured to remain offline by default, even when the host computer is online, providing an instantly switchable cold storage for private data and ensuring zero vulnerability of data during the host computer’s online activity (i.e. shut on/off based on the switch)(Paragraph 18, 21-23)
With respect to claim 21, Kwong teaches the ICOS apparatus of claim 18, wherein the toggle switch is either a physical hardware directly accessible to the data owner for manual control of the NVM device’s online and offline states or a virtual soft switch accessible to the data owner via the host computer’s user interface (Paragraph 18, 21-23)
With respect to claim 22, Kwong teaches the ICOS apparatus of claim 18, wherein the host computer is a network-connected desktop, laptop, tablet PC, handheld mobile device, wearable device, IoT device or remote server (Paragraph 18, 20)
With respect to claim 23, Kwong teaches the ICOS apparatus of claim 18, wherein the NVM device is a compact form factor NAND or NOR flash type data storage device (Paragraph 18, 20-22, 25) integration of which warrants no structural alterations either to the motherboard or the computer housing (Fig. 1-2)(Paragraph 18-23)
Claim Rejections - 35 USC § 103
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) 24, 26, 27-33, 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwong et al. U.S. Patent Publication # 2004/0015631 (hereinafter Kwong) in view of Silvestri et al. U.S. Patent Publication # 2021/0357914 (hereinafter Silvestri)
With respect to claim 24, Kwong teaches the ICOS apparatus of claim 18, but does not explicitly teach wherein the stored data assets are either personally identifiable information (PII) such as fingerprints, voice, face and iris or one or more data assets of value, such as cryptocurrency tokens, whether fungible or non-fungible.
Silvestri teaches wherein the stored data assets are either personally identifiable information (PII) such as fingerprints, voice, face and iris or one or more data assets of value, such as cryptocurrency tokens, whether fungible or non-fungible (Paragraph 120-122, 46). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having stored data assets are either PII. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
With respect to claim 26, Kwong teaches the ICOS apparatus of claim 18, but fails to further teach wherein the ICOS device is configured to be a cryptocurrency hardware wallet, a multi-factor authenticator, or a personal storage device, the ownership of which is immutably recorded in a smart contract on a blockchain and minted as a non-fungible token (NFT).
Silvestri further teaches Silvestri further teaches wherein the ICOS device configured to be a cryptocurrency hardware wallet (Paragraph 120-122), a multi-factor authenticator, authenticator or a PII storage device, the ownership of which device is immutably recorded in a smart contract on a blockchain and minted as a non-fungible token (NFT) (Paragraph 46). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having stored data assets are either PII. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
With respect to claim 27, Kwong teaches a method of permanent in-computer offline storage (ICOS) that is integrated in a network-connected host computer and remains offline by default to boost the security of personally identifiable information(PI comprising the steps of:
- storing the data on a non-volatile memory (NVM) device (Fig. 1 element 30) endowed with a user-controlled ON/OFF toggle switch (Fig. 1 element 31 that by default remains in the OFF mode (i.e. a user can set the switch to be off all the time, and can turn on when needed. Also, Examiner would like to point out that as known in art, whenever one buys switch based equipment, by default, the equipment is in the off state), wherein the device is either permanently mounted onto the host computer via its external USB (Fig. 1 element 21) or SD-card port, or integrated with the host computer's motherboard (Paragraph 18, 20-21)
-using the toggle switch to switch ON the direct communication channel between the ICOS device and the host computer (i.e. power on/off switch which means when power is off, data will not stored or retrieved hence data is controlled)(Paragraph 21)or a wireless companion device to allow online processing of the data saved on the ICOS device (Paragraph 21)
-switching OFF the communication channel promptly as soon as the desired processing is accomplished, either voluntarily by the user (Paragraph 18, 20-24) or via an automatic inactivity alert from the system: and
-retaining the stored data in an offline state irrespective of whether the host computer remains connected in its default configuration (i.e. storing data in the flash memory)(Paragraph 18-24), thereby providing zero vulnerability computing (ZVC) by ensuring that the data remains secure and switchable only by the data owner (Paragraph 18-24).
Kwong does not explicitly teach wireless companion device.
Silvestri teaches using toggle switch (i.e. power button)(Fig. 1 element 114) to switch ON the direct communication channel between the ICOS device and the host computer (Paragraph 18) or a wireless companion device ( Fig. 14a element 1202) to allow online processing of the data saved on the ICOS device (i.e. cold hardware wallet connected using wireless connection) (Paragraph 26, 173). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having a wireless companion device at data owner’s behest. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
With respect to claim 28, Kwong and Silvestri teaches the method of claim 27, but Kwong further teaches wherein the permanent integration of the switchable NVM device is internal to the computer’s motherboard or externally mounted onto the computer’s USB or SD card port (Paragraph 18, 21-23)
With respect to claim 29, Kwong and Silvestri teaches the method of claim 27, but Kwong further teaches wherein the NVM device is configured to remain offline by default, even when the host computer is online, providing an instantly switchable cold storage for private data and ensuring zero vulnerability of data during the host computer’s online activity (i.e. shut on/off based on the switch)(Paragraph 18, 21-23)
With respect to claim 30, Kwong and Silvestri teaches the method of claim 27, but Kwong further teaches wherein the toggle switch is either a physical hardware switch directly accessible to the data owner for manual control of the NVM device’s online and offline states or a virtual soft switch accessible to the data owner via the host computer’s user interface (Paragraph 18, 21-23)
With respect to claim 31, Kwong and Silvestri teaches the method of claim 27, but Kwong further teaches wherein the host computer is a network-connected desktop, laptop, tablet PC, handheld mobile device, wearable device, IoT device or remote server (Paragraph 18, 20)
With respect to claim 32, Kwong and Silvestri teaches the method of claim 27, but Kwong further teaches wherein the NVM device is a compact form factor NAND or NOR flash type data storage device, integration of which warrants no structural alterations either to the motherboard or the computer housing (Paragraph 18, 20-22, 25)
With respect to claim 33, Kwong and Silvestri teaches the method of claim 27, but Silvestri further teaches wherein the stored data assets are either personally identifiable information (PII), such as fingerprints, voice, face and iris or one or more data assets of value, such a cryptocurrency tokens, whether fungible or non-fungible (Paragraph 27, 122, 133-135)
With respect to claim 35, Kwong and Silvestri teaches the method of claim 27, but Silvestri further teaches wherein the ICOS device is configured to be a cryptocurrency hardware wallet(Paragraph 120-122), a multi-factor authenticator, authenticator or a PII storage device, the ownership of which device is immutably recorded in a smart contract on a blockchain and minted as a non-fungible token (NFT) (Paragraph 46). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having stored data assets are either PII. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
Claim(s) 25, 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kwong et al. U.S. Patent Publication # 2004/0015631 (hereinafter Kwong) in view of Silvestri et al. U.S. Patent Publication # 2021/0357914 (hereinafter Silvestri) further in view of Jang et al. U.S. Patent Publication # 2022/0021515 (hereinafter Jang)
With respect to claim 25, Kwong teaches the ICOS apparatus of claim 18, but fails to teach wherein the access to the data stored is further secured by deploying homomorphic encryption, particularly fully homomorphic encryption (FHE) and the partial homomorphic encryption (PHE) as appropriate for maximum protection through the life of the data and particularly during the transition of the data from cold (offline) to hot (online) storage, wherein PHE algorithms create a buffer (warm) between cold and hot storage.
Silvestri teaches wherein the access to the data stored is further secured by deploying homomorphic encryption, for maximum protection through the life of the data (Paragraph 69, 122) and particularly during the transition of the data from cold (offline) to hot (online) storage, wherein PHE algorithms create a buffer (warm) between cold and hot storage (paragraph 122, 133-135). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having homomorphic encryption. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
Kwong and Silvestri does not explicitly teach particularly fully homomorphic encryption (FHE) and the partial homomorphic encryption (PHE) as appropriate
Jang teaches data stored secured by homomorphic encryption, particularly fully homomorphic encryption (FHE) and partial homomorphic encryption (PHE) (Paragraph 64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement Jang’s teaching in Kwong and Silvestri’s teaching to come up with having data stored is further secured by homomorphic encryption, particularly fully homomorphic encryption (FHE) and partial homomorphic encryption (PHE). The motivation for doing so would be it can support limited and unlimited number of operations between ciphertexts.
With respect to claim 34, Kwong and Silvestri teaches the method of claim 27, but Silvestri further teaches, wherein the access to the data stored is further secured by deployed homomorphic encryption, particularly fully homomorphic encryption (FHE) and partial homomorphic encryption (PHE) as appropriate, for maximum protection through the life of the data (Paragraph 69, 122) and particularly during the transition of the data from cold (offline) to hot (online) storage, wherein PHE algorithms create a buffer (warm) between cold and hot storage (paragraph 122, 133-135). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having homomorphic encryption. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
Kwong and Silvestri does not explicitly teach particularly fully homomorphic encryption (FHE) and the partial homomorphic encryption (PHE) as appropriate.
Jang teaches data stored secured by homomorphic encryption, particularly fully homomorphic encryption (FHE) and partial homomorphic encryption (PHE) (Paragraph 64). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement Jang’s teaching in Kwong and Silvestri’s teaching to come up with having data stored is further secured by homomorphic encryption, particularly fully homomorphic encryption (FHE) and partial homomorphic encryption (PHE). The motivation for doing so would be it can support limited and unlimited number of operations between ciphertexts.
Response to Arguments
Applicant's arguments filed 9/2/2025 have been fully considered but they are not persuasive.
A). Applicant states neither Kwong and/or Silvestri does not teach wherein a “NVM device is “permanently integrated” into a host computer and remains offline even when the host computer is online” for “zero vulnerability computing (ZVC)””.
With respect to remark A, Examiner respectfully disagrees with the applicant. Examiner would like to first point out many issues which the claims/claim language. With respect to newly added claim 18, it is clearly an intended use claim. Claim clearly just recite “An incomputer offline storage (ICOS) apparatus for supporting zero vulnerability computing (ZVC) by means of a toggle switch-controlled, switchable non-volatile memory (NVM) permanently integrated into a host computer and configured to store data. “.
Kwong clearly teaches an ICOS apparatus in Fig 1, wherein a toggle switch-controlled switchable non-volatile memory (NVM)(Fig. 1 element 31)(Paragraph 16). In Paragraph 16, it clearly shows having a external storage device being connected to the computer via permanently integrated USB into a host computer (Fig. 1) to store data (Paragraph 16, 18).
According to specification of the current application in Paragraph 64 and Fig. 1, it clearly shows/states “ICOS device when mounted on either a USB port or a SD Slot of a host computer. The form factor of such ICOS device is so small that it can be permanently mounted on the host computer”. This clearly shows that Fig. 1 element 110a is put in the USB slot on the host computer (Fig. 1 element 114a). Kwong clearly shows a similar configuration wherein in Fig 1 of Kwong, it shows the external storage (Fig. 1 element 30) with a toggle switch (Fig 1 element 31) being mounted using USB (Fig. 1 element 21)) on the host computer (Fig. 1 element 20). Applicant states that Kwong does not teach “permanently integrated into a host computer”. The Fig. 1 of instant application and Paragraph 64, it clearly states permanently mounted on the host computer is plugging it in a USB slot. Therefore, Kwong clearly teaches an ICOS apparatus in Fig 1, wherein a toggle switch-controlled switchable non-volatile memory (NVM)(Fig. 1 element 31)(Paragraph 16). In Paragraph 16, it clearly shows having a external storage device being connected to the computer via permanently integrated USB into a host computer (Fig. 1) to store data (Paragraph 16, 18).
Kwong further teaches store data that, at the data owner’s behest (i.e. when owner wants the store data, the switch 31 will be turned on), remains offline even when the host computer is online or transiently switched on to bring it online briefly in communication with the host computer on a need basis (i.e. power on/off switch which means when power is off, data will not be stored or retrieved and the host computer can still be on.)(Paragraph 18, 20-24). Examiner would like to point out that it is inherent/obvious that when the switch to the external storage is switched off, the data storage will be off line when host computer is online. The data storage switch can be turned on as needed basis.
B). Applicant states Kwong, Silvestri and Jiang does not teach newly added claim 27.
First, Examiner also would like to point out that Applicant states Kwong or Silvestri does not teach “remains offline by default” to boost the security of personally identifiable information. Examiner would like to state that it is obvious to one of ordinary skill in the art, that if the storage device is OFF hence is offline, it will boost security of PII because the storage device is turned OFF.
Furthermore, ““remains offline by default” to boost the security of personally identifiable information” is part of preamble and preamble is not given patentable weight. Furthermore, “to boost the security of personally identifiable information (PII) is intended use language.
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 27. When reading the preamble in the context of the entire claim, the recitation ““remains offline by default” to boost the security of personally identifiable information” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Furthermore, In response to applicant's argument that “”remains offline by default” to boost the security of personally identifiable information”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Examiner respectfully disagrees with the applicant because in Paragraphs 18, 20-21, Kwong teaches storing the data on a non-volatile memory (NVM) device (Fig. 1 element 30) endowed with a user-controlled ON/OFF toggle switch (Fig. 1 element 31 that by default remains in the OFF mode (i.e. a user can set the switch to be off all the time, and can turn on when needed. Also, Examiner would like to point out that as known in art, whenever one buys switch based equipment, by default, the equipment is in the off state), wherein the device is either permanently mounted onto the host computer via its external USB (Fig. 1 element 21) or SD-card port, or integrated with the host computer's motherboard (Paragraph 18, 20-21).
Kwong teaches using the toggle switch to switch ON the direct communication channel between the ICOS device and the host computer (i.e. power on/off switch which means when power is off, data will not stored or retrieved hence data is controlled)(Paragraph 21)or a wireless companion device to allow online processing of the data saved on the ICOS device (Paragraph 21)
Kwong switching OFF the communication channel promptly as soon as the desired processing is accomplished, either voluntarily by the user (Paragraph 18, 20-24) or via an automatic inactivity alert from the system: and
Kwong retaining the stored data in an offline state irrespective of whether the host computer remains connected in its default configuration (i.e. storing data in the flash memory)(Paragraph 18-24), thereby providing zero vulnerability computing (ZVC) by ensuring that the data remains secure and switchable only by the data owner (Paragraph 18-24).
Kwong does not explicitly teach wireless companion device.
Silvestri teaches using toggle switch (i.e. power button)(Fig. 1 element 114) to switch ON the direct communication channel between the ICOS device and the host computer (Paragraph 18) or a wireless companion device ( Fig. 14a element 1202) to allow online processing of the data saved on the ICOS device (i.e. cold hardware wallet connected using wireless connection) (Paragraph 26, 173). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having a wireless companion device at data owner’s behest. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
C). Applicant states that Kwong, Silvestri and Jang teach away and do not meet 35 USC 103 obviousness test.
With respect to Kwong, Silvestri and Jang, they do not teach away from the claimed solution as presented here.
Kwong teaches about user controlled toggle switch (Fig. 1 element 31) on the storage device (Fig. 1 element 30) wherein when the switch is turned off on the storage, it provides concept of zero vulnerability computing when the switch is turned off on the storage device, no one from the outside can access it or hack it or cannot steal any PII information because the storage device is turned off. This provide zero vulnerability computing. As shown in Fig. 1 of Kwong, Fig. 1 element 31 is a toggle switch for storage device to turn off the power to the storage device. Furthermore, Silvestri is used for teaching wireless companion device wherein, using toggle switch (i.e. power button)(Fig. 1 element 114) to switch ON the direct communication channel between the ICOS device and the host computer (Paragraph 18) or a wireless companion device ( Fig. 14a element 1202) to allow online processing of the data saved on the ICOS device (i.e. cold hardware wallet connected using wireless connection) (Paragraph 26, 173). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to Silvestri’s teaching in Kwong’s teaching to come up with having a wireless companion device at data owner’s behest. The motivation for doing so would be so the cryptocurrencies can be offloaded to offline storage thereby preventing the cryptocurrencies from being hacked/stolen.
With respect to 103 obviousness test, Examiner respectfully disagrees with the applicant because, as stated in response to remark A, and B, Examiner has clearly shown Kwong, Silvestri teaches the claim limitations using 103 rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
A). Tran et al. U.S. Patent Publication # 20180264347 which teaches about different types of encryption method including homomorphic encryption method.
B). Wiewiorka et al. U.S. Patent Publication # 2024/0005302 which teaches about cold wallet storage device including a connector, a controller and non-volatile memory.
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 DHAIRYA A PATEL whose telephone number is (571)272-5809. The examiner can normally be reached M-F 7:30am-4:00pm.
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DHAIRYA A. PATEL
Primary Examiner
Art Unit 2453
/DHAIRYA A PATEL/ Primary Examiner, Art Unit 2453