DETAILED ACTION
A response to the notice of non-compliant amendment was received on 30 March 2026. By this response, Claims 1-20 have been canceled and new Claims 21-40 have been added. Claims 21-40 are currently pending in the present application.
Response to Arguments
Applicant’s arguments with respect to claims 1-20 have been considered but are moot in light of the cancellation of the claims.
Drawings
The objections to the drawings under 37 CFR 1.84(p)(4) and (5) are withdrawn in light of the amendments to the drawings and specification.
Specification
The objection to the disclosure is NOT withdrawn; although Applicant has addressed the noted minor grammatical errors in the substitute specification, Applicant has not clearly addressed the lack of a brief summary of the invention.
The disclosure is objected to because of the following informalities:
The specification does not include a brief summary of the invention as per 37 CFR 1.73. See also MPEP § 608.01(d). If a summary was intentionally omitted, Applicant is requested to make a statement on the record confirming this omission.
Appropriate correction is required. Applicant’s cooperation is again requested in correcting any other errors of which applicant may become aware in the specification.
The amendment filed 30 March 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: In paragraph 0076, identification of a replacement component was not previously described in the specification, and therefore, the change from “replaced component” to “replacement component” constitutes new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 21 and 29 are objected to because of the following informalities:
In Claim 21, line 8, it appears that “the” should be inserted before “first endpoint device”.
In Claim 29, line 9, it appears that “the” should be inserted before “first endpoint device”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The rejection of Claims 1-20 under 35 U.S.C. 112(b) is moot in view of the cancellation of the claims.
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21, 29, and 37 have been amended to recite “identifying a replacement component” or similar limitations. However, although the specification has been amended to recite similar language in paragraph 0076, the specification as originally filed only recited identifying a component that was replaced (see original paragraph 0076) rather than identifying a replacement component. Further, it is noted that Applicant has not specifically pointed out where the new claims are supported except to make a general statement that support can be found in the original claims and specification (page 9 of the present response). See also MPEP § 2163.04. Therefore, there is not clearly sufficient written description of the claimed subject matter in the specification.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-40 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 21 recites “a replacement component installed in a first endpoint device that will prevent the first endpoint device from authenticating the owner as having authority over the endpoint device” in lines 3-5. First, it is not grammatically clear what the phrase “that will prevent the first endpoint device from authenticating” is intended to modify, the component or the device. Further, with respect to “the endpoint device”, it is not clear to which of the plural endpoint devices (see lines 1 and 3) this limitation is intended to refer. The claim further recites “based on the identifying of the replacement component” in line 8. However, it is not clear how the following steps are, in fact, “based on the identifying” because there is no reference to the identification or the replacement component in those subsequent steps. If this is intended to recite “in response to the identifying of the replacement component” or similar as a limitation on the timing of the steps, this would be considered definite. The claim additionally recites “to replace old credential” in line 13. This appears to be missing an article or other descriptor (e.g. “an” or “the”) before “old credential” which is unclear as to whether this introduces a new limitation or is intended to refer to a previous limitation. The claim also recites “an updated new ownership voucher” in line 21. The use of both “updated” and “new” makes it unclear whether this was a previously existing voucher that has been updated or if it is a new voucher. It is also not clear whether this is intended to refer to an update of the new voucher recited in line 15 or if it is entirely independent of the previously recited new voucher. The above ambiguities render the claim indefinite.
Claim 22 recites “a component that is replaced” in line 1. The timing of when this replacement occurs relative to the other steps of the claims is not clear due to the tense of the verb “is replaced”.
Claim 25 recites “the trusted platform module that is replaced” in line 1. As in Claim 22, the timing of when this replacement occurs relative to the other steps of the claims is not clear due to the tense of the verb “is replaced”. The claim further recites “the first endpoint uses to access a second secure channel” in lines 2-3. It is not clear whether this use and/or access is intended to be a step of the method.
Claim 29 recites “a replacement component installed in a first endpoint device that will prevent the first endpoint device from authenticating the owner as having authority over the endpoint device” in lines 5-7. First, it is not grammatically clear what the phrase “that will prevent the first endpoint device from authenticating” is intended to modify, the component or the device. Further, with respect to “the endpoint device”, it is not clear to which of the plural endpoint devices (see lines 3 and 4) this limitation is intended to refer. The claim further recites “based on the identifying of the replacement component” in line 9. However, it is not clear how the following operations are, in fact, “based on the identifying” because there is no reference to the identification or the replacement component in those subsequent steps. If this is intended to recite “in response to the identifying of the replacement component” or similar as a limitation on the timing of the operations, this would be considered definite. The claim additionally recites “to replace old credential” in line 13. This appears to be missing an article or other descriptor (e.g. “an” or “the”) before “old credential” which is unclear as to whether this introduces a new limitation or is intended to refer to a previous limitation. The claim also recites “an updated new ownership voucher” in line 18. The use of both “updated” and “new” makes it unclear whether this was a previously existing voucher that has been updated or if it is a new voucher. It is also not clear whether this is intended to refer to an update of the new voucher recited in line 14 or if it is entirely independent of the previously recited new voucher. The above ambiguities render the claim indefinite.
Claim 30 recites “a component that is replaced” in lines 1-2. The timing of when this replacement occurs relative to the other steps of the claims is not clear due to the tense of the verb “is replaced”.
Claim 33 recites “the trusted platform module that is replaced” in lines 1-2. As in Claim 30, the timing of when this replacement occurs relative to the other steps of the claims is not clear due to the tense of the verb “is replaced”. The claim further recites “the first endpoint uses to access a second secure channel” in lines 2-3. It is not clear whether this use and/or access is intended to be an operation performed by the processor.
Claim 37 recites “the deployment being owned by an owner and the deployment management system comprises” in lines 2-3. These two clauses are not in parallel structure which is grammatically ambiguous. The claim further recites “a replacement component installed in a first endpoint device that will prevent the endpoint device from authenticating the owner as having authority over the endpoint device and which is a member of the deployment” in lines 6-9. First, it is not grammatically clear what the phrase “that will prevent the endpoint device from authenticating” is intended to modify, the component or the device. Further, with respect to “the endpoint device”, it is not clear to which of the plural endpoint devices (see lines 2 and 6) this limitation is intended to refer. Additionally, it is not grammatically clear what the phrase “and which is a member of the deployment” is intended to modify or be coordinated with. The claim additionally recites “based on the identifying of the replacement component” in line 10. However, it is not clear how the following functions are, in fact, “based on the identifying” because there is no reference to the identification or the replacement component in those subsequent functions. If this is intended to recite “in response to the identifying of the replacement component” or similar as a limitation on the timing of the functions, this would be considered definite. The claim also recites “to replace old credential” in line 16. This appears to be missing an article or other descriptor (e.g. “an” or “the”) before “old credential” which is unclear as to whether this introduces a new limitation or is intended to refer to a previous limitation. The claim further recites “an updated new ownership voucher” in lines 21-22. The use of both “updated” and “new” makes it unclear whether this was a previously existing voucher that has been updated or if it is a new voucher. It is also not clear whether this is intended to refer to an update of the new voucher recited in line 17 or if it is entirely independent of the previously recited new voucher. The above ambiguities render the claim indefinite.
Claim 38 recites “a component that is replaced” in line 1. The timing of when this replacement occurs relative to the other steps of the claims is not clear due to the tense of the verb “is replaced”.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
Examiner’s Note
Because the claims are rendered indefinite based on the numerous issues as detailed above (especially the difficulty of discerning how steps are “based on the identifying”) in reference to the rejections under 35 U.S.C. 112(b), and do not have clear written description support as per 35 U.S.C. 112(a), it has not been possible to fully construe pending Claims 1-20 for novelty under 35 U.S.C. 102 and non-obviousness under 35 U.S.C. 103. As per MPEP § 2173.06 II, if there is uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. See also In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962). A search has been performed to the extent possible, and references that appear to be relevant were cited in the previous Office action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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