DETAILED ACTION
A response to the restriction requirement was received on 27 January 2026. By this response, Claims 17-20 have been canceled and new Claims 21-24 have been added. No claims have been amended. Claims 1-16 and 21-24 are currently pending in the present application.
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 27 January 2026 is acknowledged. Applicant has constructively elected Invention I by the cancellation of Claims 17-20 directed to Invention II. See MPEP § 818.02(c).
Drawings
Figure 6 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because they include informalities. In Figure 2, decision block 206, and Figure 3, decision blocks 310, 316, and 320, it is not clear what decisions are actually being made in these blocks because there is no text description in the decision blocks. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
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. The above is not intended as an exhaustive list of errors in the specification. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 1 recites a system that comprises a Device Identity Composition Engine (DICE) and a secure element that is configured for performing various functions. The specification states that the DICE could also be implemented as a secure element and provides examples of secure elements such as a secure enclave, trusted execution environment, TPM, or secure element in the cloud (see paragraph 0034; see also Claim 2 reciting the enclave and trusted execution environment). Both the DICE (“engine”) and secure element could be implemented as a software process, such as the trusted environment; further, the secure enclave or secure element in the cloud could also be implemented as software processes. It is also known that TPMs can be implemented as virtual TPMs, which would also constitute a software process (e.g. as a virtual machine). Therefore, neither the DICE nor the secure element is clearly limited to a hardware implementation, and therefore, the claim encompasses embodiments
which constitute software per se. Computer software does not fall within any of the
statutory classes of invention. See Gottschalk v. Benson, 409 U.S. 63, 72, 175 USPQ
673, 676-77 (1972). Software does not constitute a statutory process, because the
software itself is not a series of steps that are performed. Software is also not a
machine, article, or composition of matter. When a claim encompasses both statutory
and non-statutory subject matter, the claim as a whole is considered to be directed to
non-statutory subject matter. See MPEP § 2106(II). Claims 2-7 are rejected due to
their dependence on rejected Claim 1.
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 1-16 and 21-24 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 1 recites “a software layer” in line 4. It is not clear where this layer appears or whether this software layer is an element of the DICE, the SE, a separate element of the claimed system, or an element outside the system. This ambiguity renders the claim indefinite.
Claim 4 recites “a command to store the DICE public keys from a key management server” in lines 1-2. It is not grammatically clear what the phrase “from a key management server” is intended to modify; from the placement of the phrase, it appears that the public keys are from the KMS, but from context, it appears that this may be intended to state that the command is from the KMS. The claim further recites “read the DICE public keys from the DICE to execute the command” in lines 4-5. It is not clear how reading the public keys would execute a command.
Claim 6 recites “a public key corresponding to the software layer” in lines 1-2. It is not clear whether this is intended to refer to the same public key as recited in Claim 1 or a distinct public key corresponding to the software layer.
Claim 7 recites “and generating a digital signature” in line 3. It is not clear what this is intended to modify or be coordinated with. Further, the tense of “generating” is not in parallel structure with “configured to receive… and identify”, and therefore, the subject of “generating” is not clear.
Claim 8 recites “a software layer stored by a computing system” in lines 2-3. It is not clear how the computing system relates to the other structural elements of the SE and the DICE. This ambiguity renders the claim indefinite.
Claim 15 recites “a public key corresponding to the software layer” in lines 1-2. It is not clear whether this is intended to refer to the same public key as recited in Claim 8 or a distinct public key corresponding to the software layer.
Claim 16 recites “a public key corresponding to the software layer” in lines 1-2. It is not clear whether this is intended to refer to the same public key as recited in Claim 8 or a distinct public key corresponding to the software layer.
Claim 21 recites “a software layer stored by a computing system” in lines 4-5. It is not clear if the computing system includes the claimed processor and/or medium, and it is not clear how the computing system relates to the other structural elements of the SE and the DICE. This ambiguity renders the claim indefinite.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
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 (i.e., changing from AIA to pre-AIA ) 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 1-16 and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al, US Patent Application Publication 2024/0106839, in view of England et al, US Patent 7415620.
In reference to Claim 1, Smith discloses a system that includes a DICE and a secure element (see Figure 2, DICE; see also paragraph 0049, DICE, and paragraph 0045, embedded SE) for providing an identifier of a software layer to the DICE and validating a response from the DICE to allow access to the software layer (see paragraph 0094, identity of each layer; paragraph 0130, verification of identity; see also paragraphs 0131-0137 for layers of attestation including firmware, operating system, and other software). However, Smith does not explicitly disclose the use of a nonce or a public key of the software layer.
England discloses a system that includes a secure element (Figure 2, cryptography accelerator 62) for providing a nonce and an identifier of a software layer and validating a response using a public key corresponding to the software layer to allow access to the software layer (column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed; column 8, lines 40-50, public key used to verify signature). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system (and more specifically the verification) of Smith to include the nonce and public key as taught by England, in order to establish a chain of trust (see England, column 4, lines 33-37).
In reference to Claim 2, Smith and England further disclose a trusted execution environment, secure enclave, or hardware security module (Smith, paragraph 0037, TEE, paragraph 0106, enclaves, paragraph 0049, where TPM is hardware security module; England, column 8, lines 27-32, protected environment).
In reference to Claim 3, Smith and England further disclose a protected storage area storing keys including the public key of the software layer (see Smith, paragraph 0236, secure area in memory; England, column 12, line 50-column 14, line 10, section “Secure Storage”).
In reference to Claim 4, Smith and England further disclose a command for storing keys signed by a private key where the command is verified using a corresponding public key and the public keys are read (for example, England, column 6, lines 14-25, server, and column 13, line 64-column 14, line 4, secrets, i.e. keys, stored and signed).
In reference to Claim 5, Smith and England further disclose reading the public key from the protected storage area, decrypting a digital signature to generate a decrypted result, and comparing the decrypted result to the nonce and identifier to validate the response (England, column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed; column 8, lines 40-50, public key used to verify signature).
In reference to Claim 6, Smith and England further disclose determining if a received nonce and layer identifier match the nonce and identifier prior to decryption (England, column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed; column 8, lines 40-50, public key used to verify signature).
In reference to Claim 7, Smith and England further disclose receiving the nonce and identifier of the software layer and identifying a private key based on the identifier and generating the digital signature using the none and identifier of the software layer (England, column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed).
In reference to Claim 8, Smith discloses a method that includes a secure element receiving a request to access a software layer (see paragraph 0045, embedded SE; paragraph 0156, request); the SE transmitting a request to a DICE including an identifier of a software layer (see paragraph 0049 and 0244; see paragraph 0094, identity of each layer) and validating a response from the DICE to allow access to the software layer (see paragraph 0094, identity of each layer; paragraph 0130, verification of identity; see also paragraphs 0131-0137 for layers of attestation including firmware, operating system, and other software). However, Smith does not explicitly disclose the use of a nonce or a public key of the software layer.
England discloses a method that includes a secure element (Figure 2, cryptography accelerator 62) receiving a request to access a software layer (column 4, lines 38-56, in response to request) and transmitting a request including a nonce and an identifier of a software layer and validating a response using a public key corresponding to the software layer to allow access to the software layer (column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed; column 8, lines 40-50, public key used to verify signature). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method (and more specifically the validation) of Smith to include the use of the nonce and public key as taught by England, in order to establish a chain of trust (see England, column 4, lines 33-37).
In reference to Claim 9, Smith and England further disclose a request to access a software layer managed by the DICE (Smith, paragraph 0156).
In reference to Claim 10, Smith and England further disclose generating a pseudorandom value (England, column 12, lines 51-63).
In reference to Claims 11-13, Smith and England further disclose extracting a received nonce, layer identifier, and digital signature and determining that the received nonce and layer identifier match the nonce and layer identifier in the request (England, column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed; column 8, lines 40-50, public key used to verify signature).
In reference to Claim 14, Smith and England further disclose reading the public key from the protected storage area, decrypting a digital signature to generate a decrypted result, and comparing the decrypted result to the nonce and identifier to validate the response (England, column 4, lines 38-56, operating system identity corresponds to software layer identifier, where the nonce and identity are signed; column 8, lines 40-50, public key used to verify signature).
In reference to Claim 15, Smith and England further disclose disallowing access if the nonces do not match, the layer identifiers do not match, or the decrypted result does not match (see England, column 14, line 57-column 15, line 7, if conditions not met then components not trusted).
In reference to Claim 16, Smith and England further disclose executing the software layer (for example, see England, column 10, lines 3-18).
Claims 21-24 are directed to software implementations of the methods of Claims 8 and 11-14 (where Claim 23 corresponds to the combination of Claims 12 and 13), and are rejected by a similar rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schaap et al, US Patent 10382210, discloses systems in which securely loaded software is executed and a nonce and identifier are bound to the firmware.
Sion, US Patent 10706182, discloses systems that use a set of identity, software version, nonce value, and signatures for authentication.
Rodriguez et al, US Patent 12032977, discloses devices that facilitate verification of an operating system using enclaves or hardware security modules.
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.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
