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 office action is in response to amendments filed on January 5, 2026.
Claims 1, 3, 5, 9, 13 have been amended. Claims 6, 8, 15 are canceled. Claims 16-23 are new.
Claims 1-5, 7, 9-14, 16-23 are pending.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 5, 2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 7, 9-14, 16-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claims 12-13 are objected to because of the following informalities:
In line 5 of Claim 12, Claim 12 recites “shares in a private key”. It is recommended by the Examiner to amend this limitation to read as “shares of a private key” for consistency with the other independent claims.
In lines 1-2 of Claim 13, Claim 13 recites “A non-transitory computer-readable storage medium including instructions that...” which is followed later by “and wherein the component corresponds to identification data comprising: instructions to receive authentication data comprising at least a signature” in lines 5-7 of Claim 13. While it is understood that the instructions are stored on the non-transitory computer-readable storage medium, the latter recited limitation suggests that the identification data comprises the later recited instructions in the way the limitation is written now. It is recommended by the Examiner to amend the claim for clarity of what comprises the recited instructions. 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 3, 12-13, 17, and 21-22 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 3 recites the limitation "the component" in lines 5-7 of Claim 3. There is insufficient antecedent basis for this limitation in the claim. Claim 3 recites “at least one component of a set of components” in line 4 of Claim 3, but also depends upon Claim 1 which recites “a component”. As there are multiple possible components, it is unclear what a recitation of “the component” specifically refers to, rendering the claim indefinite.
Claim 12 recites the limitation "the component" in lines 7-8, 10 of Claim 12. There is insufficient antecedent basis for this limitation in the claim. Claim 12 recites “a replaceable component” in line 1 of Claim 12, “a set of components” in line 3 of Claim 12, and “a component of the device” in line 6 of Claim 12. As there are multiple possible components, it is unclear what a recitation of “the component” specifically refers to, rendering the claim indefinite. It is recommended by the Examiner to consistently refer to the singular component as “the replaceable component” or distinguish between components if they are different as necessary.
Claim 13 recites the limitation "the component" in lines 5-6 and 10 of Claim 13. There is insufficient antecedent basis for this limitation in the claim. Claim 13 recites both “a set of components” in line 3 of Claim 13 and “a component” in line 4 of Claim 13. As there are multiple possible components, it is unclear what a recitation of “the component” specifically refers to, rendering the claim indefinite. It is recommended by the Examiner to distinguish the singular component from the other components such as by reciting that the component is “a first component of the set of components”.
Claim 17 recites the limitation “create… the message” in lines 7-8 of Claim 17. There is insufficient antecedent basis for this limitation in the claim. Claim 17 depends upon Claim 1 which recites creating a message from identification data, while Claim 17 recites creating the message from first and second identification data. For this reason, it is unclear whether “the message” refers to a new message or the message in Claim 1, rendering the claim indefinite.
Claims 21-22 are rejected for similar reasons as above in Claim 17 as they recite similar limitations of “create… the message”.
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 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 1-5, 7, 9-12, 16, 18-20, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Vivek et al. (U.S. Pub. No. 2020/0353167 A1), hereinafter referred to as “Vivek”, in view of Jeran et al. (U.S. Pub. No. 2016/0154957 A1) hereinafter referred to as “Jeran”, and further in view of Mensch et al. (U.S. Patent. No. 11,593,526 B1), hereinafter referred to as “Mensch”.
Regarding Claim 1:
Vivek teaches the following limitations:
A non-transitory computer-readable storage medium including instructions that, when executed by a processor of an electronic device, cause the processor to (Par. [0078]). generate, using a share generator of the electronic device, a share of a private key of a private-key/public key pair corresponding to a component of the electronic device (Par. [0020], Par. [0025], Par. [0028], Par. [0046]). Vivek teaches share generation which use a private key. wherein the private key determines authenticity of the component (Par. [0013], Par. [0015], Par. [0052]). These shares and the private key are used for authenticity determination. and wherein the component corresponds to identification data (Par. [0022], Par. [0024], Par. [0026]). The components have corresponding identification data. create a message, (Par. [0013], Par. [0038], Par. [0041]). Vivek teaches creating an encrypted message using the shares. This involves using a token. establish, using the electronic device, a signature using the share and the message (Par. [0013], Par. [0038], Par. [0040], Par. [0057], Par. [0058]). Vivek teaches a distributed signing protocol with a threshold signature scheme which involves a share. It is recommended by the Examiner to re-include aspects of a distributed signing protocol into the claim since despite the recitation of a share, the claim may be construed to be directed towards authentication of a singular component with a digital signature. (taught by Mensch below)
Jeran teaches the following limitation:
the message including the identification data of the component (Par. [0015], Par. [0023], Par. [0037]). Jeran teaches that the message to be signed for a digital signature can include a unique component identifier for authentication.
Vivek teaches a threshold-signature scheme for verifying the authenticity of components of a medical device, but does not teach incorporating component identifiers into a message for authentication. Jeran however teaches that in a hardware component authentication system, the identifier of a hardware component can be incorporated into a message to be signed for authentication and can additionally allow for checking whether the component is expected based on their identifier (Par. [0010], Par. [0015]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the message token of Vivek with the identifier-based message of Jeran in order to gain the predictable result of the signed message including a component identification. One of ordinary skill in the art would have recognized that the identifier-based message of Jeran is compatible with the system of Vivek as both are directed towards hardware component authentication systems, and that using such a component signature would gain the predictable result of the message containing a component identifier and allow for checking whether the identifier is expected.
Mensch teaches the following limitation:
and transmit the authentication data to an authentication server (Col. 7, lines 56-67, Col. 8, lines 1-9, Col. 9, lines 18-67). Mensch teaches that a remote authentication server can be communicated with as an alternative to authenticating locally at the device itself.
Vivek/Jeran teaches a threshold-signature scheme for verifying the authenticity of components of a device, but does not teach sending authentication data to a server and instead performs local authentication. Mensch however teaches that in a hardware component authentication system, an authentication server can alternatively be used for authenticating components instead of performing the authentication locally (Col. 7, lines 56-67, Col. 8, lines 1-9, Col. 9, lines 18-67). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the local authentication of Vivek/Jeran with the server-based authentication of Mensch in order to gain the predictable result of transmitting the authentication data to an authentication server for verification. One of ordinary skill in the art would have recognized that the authentication server of Mensch is an alternative substitute to the local authentication in Vivek/Jeran as both are directed towards hardware component authentication systems as Mensch teaches the server performing the functionality of authentication as an alternative, and that using such an authentication server would gain the predictable result of the device transmitting authentication data to the server for verification.
Regarding Claim 2:
Vivek teaches the following limitation:
including further instructions that, when executed by the processor of the electronic device, cause the processor to create the message associated with the component (Par. [0038]). Vivek teaches generating a message such as by hashing a token.
Regarding Claim 3:
Jeran teaches the following limitation:
including further instructions that, when executed by the processor of the electronic device, cause the processor to create the message comprising at least one of: identification data of at least one component of a set of components, usage data associated with the component, registration data associated with the component, origin data associated with the component, and received data comprising at least one of a time stamp, counter or reference (Par. [0015], Par. [0023], Par. [0037]). Previously, it was shown that Jeran taught incorporating identification data into a message for signing. In combination with Vivek which teaches the component being part of a set of components, this teaches the claimed limitation.
The reasons for motivation/combination of references remain the same as in Claim 1.Regarding Claim 4:
Jeran teaches the following limitation:
in which the instructions to create the message comprise instructions to access identification data associated with a set of components and deriving a message from that identification data (Par. [0015], Par. [0023], Par. [0037]).
The reasons for motivation/combination of references remain the same as in Claim 1.
Regarding Claim 5:
Vivek teaches the following limitation:
in which the instructions to create the signature from the share comprises instructions to: generate the signature using signature generation of a threshold signature scheme; or create a plurality of signature shares from the message and at least a threshold number of respective shares, and aggregate signature shares to generate the signature; or derive at least one of the signature shares or the signature from a distributed signing protocol implemented by the component (Par. [0013], Par. [0020], Par. [0028], Par. [0038], Par. [0040]). Vivek teaches a (t,n) threshold signature scheme. This (t,n) threshold signature scheme creates signature shares using a threshold t of shares, and these signature shares are combined, i.e. aggregated, to create the signature. Furthermore, this (t, n) threshold signature scheme is a type of distributed signing protocol as these shares are distributed amongst the components.
Regarding Claim 7:
Vivek teaches the following limitation:
in which the instructions to generate the authentication data comprises instructions to generate authentication data comprising at least one of: the signature, the message, a public key of a private key/public key pair, and identification data of the device (Par. [0013], Par. [0020], Par. [0028], Par. [0038], Par. [0040]).
Regarding Claim 9:
Vivek teaches the following limitation: in which the instructions to create the shares of the private key comprise instructions to establish the shares of the private key using key generation of a threshold signature scheme (Par. [0013], Par. [0028]).
Regarding Claim 10:
Vivek teaches the following limitation:
comprising instructions to initiate authenticating a number of components associated with the device in response to an event (Par. [0034], Par. [0044], Par. [0050], Par. [0051]). Vivek teaches authenticating the device in response to a function authorization process on the device.
Regarding Claim 11:
Vivek teaches the following limitation:
further comprising instructions to receive the event from the authentication server or instructions to receive the event from an event generator associated with the device (Par. [0034], Par. [0044], Par. [0050], Par. [0051]). This event can be considered to be received/generated by the signature manager of Vivek.
Regarding Claim 12:
Vivek teaches the following limitations:
A replaceable component for a device; the replaceable component comprising a processor and a memory (Par. [0014], Par. [0022], Par. [0024], Par. [0026]). Vivek teaches that the components of a medical device are replaceable and having a processor and memory.
the replaceable component being one component of a set of components associated with the device (Par. [0013], Par. [0014], Par. [0024]). The medical device contains multiple components.
(Par. [0013], Par. [0025], Par. [0028], Par. [0078]). wherein the private key authenticates the authenticity of the component (Par. [0013], Par. [0015], Par. [0052]). and wherein the component corresponds to identification data from which a signature can be derived in conjunction with a message associated with the components (Par. [0013], Par. [0022], Par. [0024], Par. [0025], Par. [0026], Par. [0028], Par. [0078]). wherein the message is created in part from (Par. [0013], Par. [0038], Par. [0041]). Jeran teaches the following limitation:
the components storing, in respective memories (Fig. 1A, Par. [0015], Par. [0017]). Jeran teaches replaceable components having a memory to store data. wherein the message is created in part from the identification data of the component (Par. [0015], Par. [0023], Par. [0037]).
Vivek teaches a threshold-signature scheme for verifying the authenticity of components of a medical device, but does not teach incorporating component identifiers into a message for authentication. Jeran however teaches that in a hardware component authentication system, the identifier of a hardware component can be incorporated into a message to be signed for authentication and can additionally allow for checking whether the component is expected based on their identifier (Par. [0010], Par. [0015]). These identifiers are furthermore stored in memory on the components (Par. [0015]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the message token of Vivek with the identifier-based message of Jeran in order to gain the predictable result of the signed message including a component identification. Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the component signature system of Vivek with the component memories of Jeran in order to gain the predictable result of the components having memories to store data. One of ordinary skill in the art would have recognized that the identifier-based message of Jeran is compatible with the system of Vivek as both are directed towards hardware component authentication systems, and that using such a component signature would gain the predictable result of the message containing a component identifier and allow for checking whether the identifier is expected. Furthermore, one of ordinary skill in the art would have recognized that the component memories of Jeran would have been a suitable implementation for storing such component identifiers, gaining the predictable result of the components having memories to store data.
Mensch teaches the following limitation:
the components storing, (Col. 16, lines 41-67, Col. 17, lines 1-12). Mensch teaches that the components have a private key for performing encryption/signing. In combination with the threshold signature system of Vivek which uses key shares for creating signature shares, this teaches shares of a private key.
Vivek/Jeran teaches a threshold-signature scheme for verifying the authenticity of components of a device and components having memory, but does not teach the components storing the shares of a private key directly. Mensch however teaches that in a hardware component authentication system, a hardware component can store and use an encryption key themselves (Col. 16, lines 41-67, Col. 17, lines 1-12), and this would be directed towards a share of a private key in the context of the threshold signature scheme of Vivek. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the authentication system of Vivek/Jeran with the key storage of Mensch in order to gain the predictable result of the components storing shares of a private key in their respective memories. One of ordinary skill in the art would have recognized that the component keys of Mensch is compatible with the components of Vivek/Jeran as both are directed towards hardware component signature systems and Jeran was further shown to teach components having memories to store data, and that storing such keys would gain the predictable result of the components having their own respective share of a private key stored.
Regarding Claim 16:
Jeran teaches the following limitation:
wherein the electronic device is a printer and the component is a printer cartridge (Par. [0014]-[0017]). Jeran teaches that a printer and printer cartridge as a system for component authentication. It is noted by the Examiner that while primary reference Vivek mainly discusses embodiments in the context of medical devices, Vivek teaches that their system extends to device systems beyond medical devices (Vivek, Par. [0004]) and would be compatible with Jeran as such.
The reasons for motivation/combination of references remain the same as in Claim 1.
Regarding Claim 18:
Jeran teaches the following limitation:
wherein the authentication data includes (Par. [0015], Par. [0023], Par. [0037]). Previously, Jeran was shown to teach that a component identifier was used to construct the message which was signed, and this can be considered a type of device identifier under the broadest reasonable interpretation.
Mensch teaches the following limitation:
the public key of the private-key/public key pair (Col. 16, lines 41-67, Col. 17, lines 1-32). Mensch teaches that a public key can be provided to authenticate a signature.
The reasons for motivation/combination of references remain the same as in Claim 1.
Regarding Claim 19:
Jeran teaches the following limitation:
wherein the message is a common message accessible by the component and the electronic device (Par. [0015], Par. [0023], Par. [0037]). Previously, Jeran was shown to teach a message in the form of a component identifier stored on the component. Under the broadest reasonable interpretation, this can be considered a common message as it is used in communication between the device and component.
The reasons for motivation/combination of references remain the same as in Claim 1.
Regarding Claim 20:
Jeran teaches the following limitation:
wherein the replaceable component is a printer cartridge (Par. [0014]-[0017]).
The reasons for motivation/combination of references remain the same as in Claim 12.
Regarding Claim 23:
Vivek teaches the following limitations:
wherein the component is a first component of a plurality of components, the identification data is first identification data, and the share is a first share (Par. [0013], Par. [0022], Par. [0024], Par. [0026], Par. [0038], Par. [0040], Par. [0057], Par. [0058]). Previously, Vivek was shown to teach that there are multiple shares and components with corresponding identification information as part of a threshold signature scheme for component authentication.
and wherein the signature is established according to a distributed signing protocol between the plurality of components (Par. [0013], Par. [0038], Par. [0040], Par. [0057], Par. [0058]). This threshold signature process is a type of distributed signing protocol.
Jeran teaches the following limitations:
wherein communications are shared between the plurality of components to implement the distributed signing protocol (Par. [0015], Par. [0023], Par. [0037], [0042]). Previously, Jeran was combined with Vivek in such a manner that the components share their identifier to implement the threshold signature scheme. Under the broadest reasonable interpretation, this can be considered a sharing of communications between components. It is recommended by the Examiner to further elaborate what these shared communications comprise in order to further prosecution.
The reasons for motivation/combination of references remain the same as in Claim 1.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Vivek in view of Jeran.
Regarding Claim 13:
Vivek teaches the following limitations:
A non-transitory computer-readable storage medium including instructions that, when executed by a processor of an electronic device, cause the processor to authenticate a set of components of a device (Par. [0013], Par. [0035], Par. [0052], Par. [0078]). the components having associated respective shares of a private key of a private-key/public key pair corresponding to a component of the electronic device (Par. [0013], Par. [0025], Par. [0028], Par. [0078]). wherein the private key authenticates the authenticity of the component (Par. [0013], Par. [0015], Par. [0052]).
and wherein the component corresponds to identification data (Par. [0022], Par. [0024], Par. [0026]). comprising: instructions to receive authentication data comprising at least a signature; the signature having been derived from the shares and a message associated with the components (Par. [0013], Par. [0020], Par. [0028], Par. [0038], Par. [0040]).
wherein the message is created in part using (Par. [0013], Par. [0038], Par. [0041]).
instructions to verify the signature using at least a public key [verification key] and the message associated with the components (Par. [0041], Par. [0050], Par. [0051]). Vivek teaches using a verification key to validate the signature and message.
instructions to determine, in response to said verifying, a verification status of valid or not valid associated with a number of components of the device (Par. [0041], Par. [0050], Par. [0051]). Vivek determines whether to authorize or block a device’s function depending upon the above step, and this involves whether a threshold has been met regarding signing from the components.
Jeran teaches the following limitation: wherein the message is created in part using the identification data of the component (Par. [0015], Par. [0023], Par. [0037]). Vivek teaches a threshold-signature scheme for verifying the authenticity of components of a medical device, but does not teach incorporating component identifiers into a message for authentication. Jeran however teaches that in a hardware component authentication system, the identifier of a hardware component can be incorporated into a message to be signed for authentication and can additionally allow for checking whether the component is expected based on their identifier (Par. [0010], Par. [0015]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the message token of Vivek with the identifier-based message of Jeran in order to gain the predictable result of the signed message including a component identification. One of ordinary skill in the art would have recognized that the identifier-based message of Jeran is compatible with the system of Vivek as both are directed towards hardware component authentication systems, and that using such a component signature would gain the predictable result of the message containing a component identifier and allow for checking whether the identifier is expected.
Regarding Claim 14:
Vivek teaches the following limitation: in which the instructions to receive the authentication data comprising at least the signature comprise instructions to receive authentication data comprising at least one of the signature, the message associated with the components or the public key, pk (Par. [0013], Par. [0020], Par. [0028], Par. [0038], Par. [0040]).
Allowable Subject Matter
Claims 17 and 21-22 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Vivek is directed towards a system for threshold signatures and authentication (Par. [0004]). Vivek further teaches that a function can be authorized based on generating shares and meeting a threshold number of components (Par. [0034]), and creating and verifying a digital signature from signature shares corresponding to the device components (Par. [0038]-[0041]). Vivek further teaches that this digital signature is derived from encrypting a message/token (Par. [0038]).
Jeran is directed towards a system for printer cartridge authentication for authenticity (Par. [0015]). Jeran further teaches that a printer cartridge can contain a memory for storing a unique identifier and digital signature for authentication (Fig. 1A, Par. [0014]-[0015]). Jeran further teaches that an authentication session can be performed to verify whether the identifier and additional setting information are genuine/expected (Par. [0010], Par. [0015], Par. [0023], Par. [0037]).
The prior art of record does not explicitly disclose, in light of other features recited in independent claims, “wherein the component is a first component, the identification data is first identification data, and the share is a first share; wherein the instructions cause the processor further to: generate, using the share generator of the electronic device, a second share of the private key, the second share associated with a second component of the electronic device” in conjunction with “and create, using the first identification data of the first component and second identification data of the second component of the electronic device, the message” in Claim 17. In Claim 21, this is analogously “wherein the component is a first component, the identification data is first identification data, and the share is a first share, and wherein the instructions, when executed by the processor of the electronic device, cause the processor further to: generate, using the share generator of the electronic device, a second share of the private key, the second share associated with a second component of the electronic device” in conjunction with “and create, using the first identification data of the first component and second identification data of the second component of the electronic device, the message, the message including a combination of the first identification data of the first component and the second identification data of the second component”. In Claim 22, this is analogously “wherein the component is a first component, the identification data is first identification data, and the share is a first share, and wherein the instructions, when executed by the processor of the electronic device, cause the processor further to: receive, from the first component, the first identification data; receive, from a second component, second identification data” and “and create, using the first identification data of the first component and second identification data of the second component of the electronic device, the message”.
While Vivek teaches a threshold signature scheme for authenticating device components, Vivek is silent with regards to message construction and incorporation of a device identifier into this message. On the other hand, Jeran teaches that for component authentication, a device identifier can be incorporated as part of a signed message for authentication, but this is limited to a single component identifier and Jeran is silent with regards to a distributed signature scheme nor combining such identifiers into a single message. Therefore, while the prior art of record discloses distributed signing systems and incorporating component identifiers into digital signatures, the recitation of incorporating plural component identifiers into a single message in the context of a distributed signing protocol for component authenticity as presented in the independent claims is not anticipated nor obvious over the prior art of record.
Related Art
The following prior art made of record and cited on PTO-892, but not relied upon, is considered pertinent to applicant’s disclosure:
Ayoub et al. (U.S. Pub. No. 2021/0019447 A1)– Includes methods regarding printer cartridge authentication
Lee et al. (U.S. Pub. No. 2020/0359222 A1) – Includes methods regarding device provenance
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN V VO whose telephone number is (571)272-2505. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can be reached on (571)272-2092. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V.V./Examiner, Art Unit 2431
/TRANG T DOAN/Primary Examiner, Art Unit 2431
Prosecution Insights