DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026-06-17 has been entered.
Response to Amendment
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in reply to papers filed on 2026-06-17. Claims 1, 3-7, 9-13, 15-21 are pending1, following Applicant's addition of new claims 20-21, and cancellation of claims 2, 8, 14. Claims 1, 7, 13, 19 is/are independent.
Response to Arguments
Applicant’s arguments have been fully considered but are moot in view of the new ground(s) of rejection.
With respect to claim(s) 1 (see page(s) 9-11 of Applicant’s Remarks), Applicant argues that the prior art of record (in particular, U.S. Publication 20210081117 to Liu et al. (hereinafter "Liu '117") in view of U.S. Publication 20230401321 to Moshe et al. (hereinafter "Moshe '321")) does not disclose applying write-protection to a whole region of storage while maintaining a second region as read-writeable. However, U.S. Publication 20090259784 to Perry et al. (hereinafter "Perry '784") discloses such a method [Perry '784 ¶ 0017, 0021-0025]. As detailed in the rejections below, it would have been obvious to a person having ordinary skill in the art to have modified Liu '117 in view of Perry '784 to have arrived at the claimed invention.
Applicant’s arguments with respect to the remaining claim(s) is/are based on Applicant’s arguments with respect to claim(s) 1 and have been considered as detailed above.
Summary of Claim Rejections under 35 U.S.C. § 103
The following table summarizes the rejections set forth in detail below of the claims over the prior art.
Claim No.
Liu '117 in view of Perry '784
Liu '117 in view of Perry '784 in view of Lewis '222
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Claim Rejections - 35 U.S.C. § 103
The following is a quotation of the appropriate paragraphs of AIA 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 AIA 35 U.S.C. 103 that 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-5, 7, 9-11, 13, 15-17, 19-21 is/are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Publication 20210081117 to Liu et al. (hereinafter "Liu '117") in view of U.S. Publication 20090259784 to Perry et al. (hereinafter "Perry '784"). Liu '117 is prior art to the claims under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 102(a)(2). Perry '784 is prior art to the claims under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 102(a)(2).
Per claim 1 (independent):
Liu '117 discloses a firmware protection method (protects firmware storage in response to DoS attack [Liu '117 ¶ 0020, 0047])
Liu '117 does not disclose assigning one or more sectors of a storage device to a first region and assigning one or more sectors of the storage device to a second region, wherein no sector is assigned to both the first region and the second region, a portion of the first region being used to store firmware
However, Liu '117 discloses assigning one or more sectors of a storage device to a first region2 and the second region, a portion of the first region being used to store firmware (stores firmware policies, variables, and code in various protected memory addresses [Liu '117 ¶ 0045]; according to protection policy 208, controller 202 monitors access requests to NVM 210 within BIOS/UEFI 108 [Liu '117 ¶ 0018-0019, 0015, Fig. 2])
Liu '117 discloses monitoring an access request to the storage device and obtaining access request data (according to protection policy 208, controller 202 monitors access requests to NVM 210 within BIOS/UEFI 108 [Liu '117 ¶ 0018-0019, 0015, Fig. 2])
Liu '117 discloses in response to the access request data, when determining that the access request is a denial-of-service (DOS) attack ("As the usage of the non-volatile memory 210 rises, the controller 202 may execute the executable code 206 in accordance with the memory protection policy 208 to prevent the DoS attack." [Liu '117 ¶ 0046, 0027, 009, 0020])
Liu '117 does not disclose performing write protection on the first region of the storage device while keeping the second region writable, maintaining the power supply to the storage device, and allowing the storage device to be accessible to the firmware, performing the write protection including setting data of the first region to a read-only mode when the access request is a DoS attack
However, Liu '117 discloses performing write protection on the first address of the storage device, maintaining the power supply to the storage device, and allowing the storage device to be accessible to the firmware, performing the write protection including setting data of the first region to a read-only mode when the access request is a DoS attack ("As the usage of the non-volatile memory 210 rises, the controller 202 may execute the executable code 206 in accordance with the memory protection policy 208 to prevent the DoS attack." [Liu '117 ¶ 0046, 0027, 009, 0020]; according to protection policy 208, controller 202 prevents selected write requests to NVM 210 within BIOS/UEFI 108 [Liu '117 ¶ 0045, 0031, 0021] and ensures continued function of BIOS/UEFI 108 by preserving space in NVM 210 [Liu '117 ¶ 0045, 0031])
Further:
Perry '784 discloses assigning one or more sectors of a storage device to a first region and assigning one or more sectors of the storage device to a second region, wherein no sector is assigned to both the first region and the second region, a portion of the first region being used to store firmware (partitions storage into areas [Perry '784 ¶ 0023, 0003]; stores boot code/firmware in an area of storage [Perry '784 ¶ 0021, 0003, 0014])
Perry '784 discloses performing write protection on the first region of the storage device while keeping the second region writable, maintaining the power supply to the storage device, and allowing the storage device to be accessible to the firmware, performing the write protection including setting data of the first region to a read-only mode when the access request is a attack ("protect data stored in protected area 118 against remote attacks while still enabling access by HD 102 to storage device 104 " [Perry '784 ¶ 0024]; host locks function or area of memory responsive to attack [Perry '784 ¶ 0017, 0023, 0025])
It would have been obvious to a person having ordinary skill in the art (1) before the effective filing date of the claimed invention and (2) before the invention was made to have modified Liu '117 with setting read-only mode on a particular divided storage region made of sectors as in Perry '784 to arrive at an apparatus, method, and product including:
assigning one or more sectors of a storage device to a first region and assigning one or more sectors of the storage device to a second region, wherein no sector is assigned to both the first region and the second region, a portion of the first region being used to store firmware
performing write protection on the first region of the storage device while keeping the second region writable, maintaining the power supply to the storage device, and allowing the storage device to be accessible to the firmware, performing the write protection including setting data of the first region to a read-only mode when the access request is a DoS attack
A person having ordinary skill in the art would have been motivated to combine them at least because applying different security policies different memory regions responsive to an attack provides a quick and reliable way to secure memory that stores sensitive data, such as firmware. A person having ordinary skill in the art would have been further motivated to combine them at least because Perry '784 teaches [Perry '784 ¶ 0021-0025, 0003, 0014, 0017] modifying a firmware protection method [Liu '117 ¶ 0020, 0047] such as that of Liu '117 to arrive at the claimed invention; because Perry '784 and Liu '117 are in the same field of endeavor; because doing so constitutes use of a known technique (read-only mode for a particular storage region of sectors [Perry '784 ¶ 0021-0025, 0003, 0014, 0017]) to improve similar devices and/or methods (firmware protection method [Liu '117 ¶ 0020, 0047]) in the same way; because doing so constitutes applying a known technique (read-only mode for a particular storage region of sectors [Perry '784 ¶ 0021-0025, 0003, 0014, 0017]) to known devices and/or methods (firmware protection method [Liu '117 ¶ 0020, 0047]) ready for improvement to yield predictable results; and because the modification amounts to combining prior art elements according to known methods to yield predictable results. Here, (1) the prior art included each element (as detailed above); (2) one of ordinary skill in the art could have combined the elements as claimed by known methods, and in this combination, each element merely performs the same function as it does separately (security method protects firmware from denial of service attacks [Liu '117 ¶ 0020, 0047] by applying read-only mode to a particular storage region of sectors [Perry '784 ¶ 0021-0025, 0003, 0014, 0017]); (3) one of ordinary skill in the art would have recognized that the results of the combination were predictable; and (4) other considerations do not overcome this conclusion.
Per claim 3 (dependent on claim 1):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 1 above, incorporated herein by reference
Liu '117 does not disclose the second region includes a read-write region
Further:
Perry '784 discloses the second region includes a read-write region ("protect data stored in protected area 118 against remote attacks while still enabling access by HD 102 to storage device 104 " [Perry '784 ¶ 0024]; host locks function or area of memory responsive to attack [Perry '784 ¶ 0017, 0023, 0025])
For the reasons detailed above with respect to claim 1, it would have been obvious to a person having ordinary skill in the art (1) before the effective filing date of the claimed invention and (2) before the invention was made to have modified Liu '117 with setting read-only mode on a particular divided storage region made of sectors as in Perry '784 to arrive at an apparatus, method, and product including:
the second region includes a read-write region
Per claim 4 (dependent on claim 1):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 1 above, incorporated herein by reference
Liu '117 discloses determining an access mode and an access count of the access request (multiple usage thresholds depending on write request category [Liu '117 ¶ 0023-0025, 0046])
Liu '117 discloses when the access mode is violated access and the access count is greater than a predetermined threshold, determining the access request is the DOS attack (usage threshold triggers protections [Liu '117 ¶ 0046, 0023-0025])
Per claim 5 (dependent on claim 4):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 4 above, incorporated herein by reference
Liu '117 discloses in response to the access count being less than or equal to the predetermined threshold, determining that the DOS attack has stopped; and removing the write protection from the first region of the storage device (when usage is below threshold, allow write request [Liu '117 ¶ 0046, 0037])
Per claim 7 (independent):
Liu '117 discloses a controller comprising an attack protection assembly configured to (protects firmware storage in response to DoS attack [Liu '117 ¶ 0020, 0047]; processor(s), memory, computer readable media, storage, executable instructions [Liu '117 ¶ 0039-0040, 0032, 0011-0014, Fig. 4])
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 2 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 9 (dependent on claim 7):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 7 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 4 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 10 (dependent on claim 7):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 7 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 5 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 11 (dependent on claim 10):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 10 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 6 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 13 (independent):
Liu '117 discloses an electronic device comprising a processor and a memory storing a computer program that, when executed by the processor, causes the processor to perform operations (protects firmware storage in response to DoS attack [Liu '117 ¶ 0020, 0047]; processor(s), memory, computer readable media, storage, executable instructions [Liu '117 ¶ 0039-0040, 0032, 0011-0014, Fig. 4])
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 1 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 15 (dependent on claim 13):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 13 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 3 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 16 (dependent on claim 13):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 13 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 4 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 17 (dependent on claim 16):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 16 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 5 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 19 (independent):
Liu '117 discloses a firmware protection method (protects firmware storage in response to DoS attack [Liu '117 ¶ 0020, 0047])
Liu '117 does not disclose assigning one or more sectors of a storage device to a first region and assigning one or more sectors of the storage device to a second region, wherein no sector is assigned to both the first region and the second region, a portion of the first region being used to store firmware
However, Liu '117 discloses assigning one or more sectors of a storage device to a first region and a portion of the first region being used to store firmware (stores firmware policies, variables, and code in various protected memory addresses [Liu '117 ¶ 0045]; according to protection policy 208, controller 202 monitors access requests to NVM 210 within BIOS/UEFI 108 [Liu '117 ¶ 0018-0019, 0015, Fig. 2])
Liu '117 discloses monitoring an access request to the storage device and obtaining access request data (according to protection policy 208, controller 202 monitors access requests to NVM 210 within BIOS/UEFI 108 [Liu '117 ¶ 0018-0019, 0015, Fig. 2])
Liu '117 discloses determining an access mode and an access count of the access request (multiple usage thresholds depending on write request category [Liu '117 ¶ 0023-0025, 0046])
Liu '117 discloses when the access mode is violated access and the access count is greater than a predetermined threshold, determining the access request is a denial-of-service (DoS) attack, the access mode being violated access when an access type of the access mode is a write or erase access to data in a read-only mode (usage threshold triggers protections [Liu '117 ¶ 0046, 0023-0025]; protects firmware storage in response to DoS attack [Liu '117 ¶ 0020, 0047])
Liu '117 does not disclose in response to the access request data, when determining that the access request is the DoS attack, performing write protection on the first region of the storage device, maintaining the power supply to the storage device while keeping the second region writable, and allowing the storage device to be accessible to the firmware
However, Liu '117 discloses in response to the access request data, when determining that the access request is the DoS attack, performing write protection on the first address of the storage device, maintaining the power supply to the storage device, and allowing the storage device to be accessible to the firmware (usage threshold triggers protections [Liu '117 ¶ 0046, 0023-0025]; protects firmware storage in response to DoS attack [Liu '117 ¶ 0020, 0047]; "As the usage of the non-volatile memory 210 rises, the controller 202 may execute the executable code 206 in accordance with the memory protection policy 208 to prevent the DoS attack." [Liu '117 ¶ 0046, 0027, 009, 0020]; according to protection policy 208, controller 202 prevents selected write requests to NVM 210 within BIOS/UEFI 108 [Liu '117 ¶ 0045, 0031, 0021] and ensures continued function of BIOS/UEFI 108 by preserving space in NVM 210 [Liu '117 ¶ 0045, 0031])
Further:
Perry '784 discloses assigning one or more sectors of a storage device to a first region and assigning one or more sectors of the storage device to a second region, wherein no sector is assigned to both the first region and the second region, a portion of the first region being used to store firmware (partitions storage into areas [Perry '784 ¶ 0023, 0003]; stores boot code/firmware in an area of storage [Perry '784 ¶ 0021, 0003, 0014])
Perry '784 discloses in response to the access request data, when determining that the access request is the attack, performing write protection on the first region of the storage device, maintaining the power supply to the storage device while keeping the second region writable, and allowing the storage device to be accessible to the firmware ("protect data stored in protected area 118 against remote attacks while still enabling access by HD 102 to storage device 104 " [Perry '784 ¶ 0024]; host locks function or area of memory responsive to attack [Perry '784 ¶ 0017, 0023, 0025])
For the reasons detailed above with respect to claim 1, it would have been obvious to a person having ordinary skill in the art (1) before the effective filing date of the claimed invention and (2) before the invention was made to have modified Liu '117 with setting read-only mode on a particular divided storage region made of sectors as in Perry '784 to arrive at an apparatus, method, and product including:
assigning one or more sectors of a storage device to a first region and assigning one or more sectors of the storage device to a second region, wherein no sector is assigned to both the first region and the second region, a portion of the first region being used to store firmware
in response to the access request data, when determining that the access request is the DoS attack, performing write protection on the first region of the storage device, maintaining the power supply to the storage device while keeping the second region writable, and allowing the storage device to be accessible to the firmware
Per claim 20 (dependent on claim 1):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 1 above, incorporated herein by reference
Liu '117 does not disclose performing the write protection includes asserting write protection pins of the storage device
Further:
Perry '784 discloses performing the write protection includes asserting write protection pins of the storage device (lock and lock clear pins [Perry '784 ¶ 0021])
For the reasons detailed above with respect to claim 1, it would have been obvious to a person having ordinary skill in the art (1) before the effective filing date of the claimed invention and (2) before the invention was made to have modified Liu '117 with setting read-only mode on a particular divided storage region made of sectors as in Perry '784 to arrive at an apparatus, method, and product including:
performing the write protection includes asserting write protection pins of the storage device
Per claim 21 (dependent on claim 4):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 4 above, incorporated herein by reference
Liu '117 does not disclose the violated access includes erase access and write access
Further:
Perry '784 discloses the violated access includes erase access and write access (prevents erase operations [Perry '784 ¶ 0023])
For the reasons detailed above with respect to claim 1, it would have been obvious to a person having ordinary skill in the art (1) before the effective filing date of the claimed invention and (2) before the invention was made to have modified Liu '117 with setting read-only mode on a particular divided storage region made of sectors as in Perry '784 to arrive at an apparatus, method, and product including:
the violated access includes erase access and write access
Claim(s) 6, 12, 18 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Liu '117 in view of Perry '784 in view of U.S. Publication 20220358222 to Lewis (hereinafter "Lewis '222"). Lewis '222 is prior art to the claims under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 102(a)(2).
Per claim 6 (dependent on claim 1):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 1 above, incorporated herein by reference
Liu '117 does not disclose notifying the firmware that the storage device is under the DOS attack for the firmware to notify about an inspection method and/or a resolution method for the DOS attack
However, Liu '117 discloses notifying the firmware that the storage device is under the DOS attack (sends error message when usage is above threshold [Liu '117 ¶ 0038]; DoS attack [Liu '117 ¶ 0020, 0046-0047])
Further:
Lewis '222 discloses notifying the firmware that the storage device is under the attack for the firmware to notify about an inspection method and/or a resolution method for the attack (firmware event notification and resolution framework [Lewis '222 ¶ 0022, 0049, Fig. 3, Fig. 4])
It would have been obvious to a person having ordinary skill in the art (1) before the effective filing date of the claimed invention and (2) before the invention was made to have modified Liu '117 with the firmware security event framework of Lewis '222 to arrive at an apparatus, method, and product including:
notifying the firmware that the storage device is under the DOS attack for the firmware to notify about an inspection method and/or a resolution method for the DOS attack
A person having ordinary skill in the art would have been motivated to combine them at least because firmware security event framework is capable of mitigating an attack in response to a notification. A person having ordinary skill in the art would have been further motivated to combine them at least because Lewis '222 teaches [Lewis '222 ¶ 0022, 0049, Fig. 3, Fig. 4] modifying a (firmware protection method [Liu '117 ¶ 0020, 0047]) such as that of Liu '117 to arrive at the claimed invention; because Lewis '222 and Liu '117 are in the same field of endeavor; because doing so constitutes use of a known technique (firmware security event framework [Lewis '222 ¶ 0022, 0049, Fig. 3, Fig. 4]) to improve similar devices and/or methods (firmware protection method [Liu '117 ¶ 0020, 0047]) in the same way; because doing so constitutes applying a known technique (firmware security event framework [Lewis '222 ¶ 0022, 0049, Fig. 3, Fig. 4]) to known devices and/or methods (firmware protection method [Liu '117 ¶ 0020, 0047]) ready for improvement to yield predictable results; and because the modification amounts to combining prior art elements according to known methods to yield predictable results. Here, (1) the prior art included each element (as detailed above); (2) one of ordinary skill in the art could have combined the elements as claimed by known methods, and in this combination, each element merely performs the same function as it does separately (security method protects firmware from denial of service attacks [Liu '117 ¶ 0020, 0047] by notifying firmware security event framework [Lewis '222 ¶ 0022, 0049, Fig. 3, Fig. 4]); (3) one of ordinary skill in the art would have recognized that the results of the combination were predictable; and (4) other considerations do not overcome this conclusion.
Per claim 12 (dependent on claim 7):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 7 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 7 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Per claim 18 (dependent on claim 13):
Liu '117 in view of Perry '784 discloses the elements detailed in the rejection of claim 13 above, incorporated herein by reference
The remaining limitations of the claim(s) correspond(s) to features of claim(s) 6 and the claim(s) is/are rejected for the reasons detailed with respect to those claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE C PARSONS whose telephone number is (571)270-1475. The examiner can normally be reached on MTWRF 7:30-4:30.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung Kim can be reached on (571) 272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THEODORE C PARSONS/Primary Examiner, Art Unit 2494
1 Applicant's Remarks of 2026-06-17 at page 8 mention a claim 22, but this appears to be a typographical error. Claim number 22 remains unused.
2 Examiner notes that there must be at least one region containing all sectors by default. Examiner agrees that Liu '117 does not disclose a second region, nor assigning some sectors to the second region.
Prosecution Insights