DETAILED ACTION
Claims 1-26 are pending in this 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 .
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 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. Claim recites the judicial exception of the abstract idea of a mathematical concept. See MPEP 2106.04(a). This judicial exception is not integrated into a practical application because there are not details about a real-world context using the described conversion of points from one elliptical curve to another. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because it is not explained in a meaningful way how the invention is improving its application in the context of when in the real world this abstract idea would be applied. See MPEP 2106.04(d).
Response to Arguments
Applicant’s arguments with respect to the objection to claim 1 has been fully considered as is persuasive. The objection is hereby withdrawn.
Applicant's arguments with respect to the rejection of claims 1-26 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
As per all claims, Applicant reiterates that the claimed inventions are integrated into a practical application and that there is a real-world problem that is being solved. Applicant points out the instant specification at [0035]-[0036] states a purpose of: “Montgomery curve based elliptic curve primitives and twisted Edwards curve based primitives are important new cryptographic primitives that have been standardized by IETF RFC 8032 and RFC 7748 and recently also in FIPS 186-5 and SP800-186. Both are taking state-of-the-art cryptographic developments into account that were not available in 1999 when the first NIST ECC parameters came out.” Applicant further explains that the invention “allow a high-level user to implement the newly proposed algorithms based on existing cryptographic capabilities and interfaces thus allowing for interoperability with older products.”
Based on these past argument points, Applicant argues that “[t]he methods disclosed herein provide clear instructions of how to compute the result of a Montgomery based Diffie-Hellman protocol or the result of a scalar multiplication in EdDSA (rB) when only a Weierstrass implementation is available.” See specification at [0048]-[0049].
Applicant further points out that: “a key-derivation function used in the QuVanstone Implicit Certificate Scheme (ECQV) to derive an elliptic curve scalar K1 from another elliptic curve scalar Ko, to generate cryptographic signatures for Schnorr signature generation and ECDAA signature generation, or to perform operations for an RSA public or private interface.”
Applicant further points out that the application: “allows older products that support classical elliptical curve cryptography based on Weierstrass curves arithmetic to compute new standardized protocols which involve more sophisticated parameters and/or arithmetic.” See [0056]-[0057].
Applicant further points out that past case law does not preclude patenting based on a judicial exception as long as it is integrated into a practical application and that one way to demonstrate practical application is improvement and that the claim must reflect the steps and/or components of the improvement but does not need to state the improvement in the claim itself.
Examiner agrees that there is an improvement in the specification and agrees with the case law provided by the Applicant. Examiner also completely agrees that the improvement does not need to be explicitly stated in the claim. However, Examiner does not believe that the steps or components of the improvement are clearly stated in claim language. Examiner does note the latest amendment includes: “a first elliptic curve that cannot be updated or changed.” This was most likely was made in light of Examiner’s previous suggestion of a cryptographic processor that was “required” to use a particular elliptic curve. Examiner further notes that “an elliptical curve that cannot be updated” is different than a processor that is required to use a particular elliptical curve. Furthermore, “cannot be updated or changed” doesn’t really doesn’t really convey that this processor is in “an older product that only supports classical elliptical curve cryptography” - which is the critical component in the improvement that would demonstrate a practical application. If the previously suggested “required” language does not work for the Applicant, the claim language still needs to clearly convey the presence of “a legacy product which cannot be updated to handle newer sophisticated cryptography”.
In the current form, the rejection of the claims are maintained.
Examiner notes that progress has been and hopefully based on the remarks above it is clear to the Applicant what language needs be included to overcome the remaining rejection under 35 U.S.C. 101. However, Examiner is definitely open to conducting an after-final interview to discuss any further issues or concerns.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Macchetti et al. (WO-2024100108-A1), Brown et al. (US PGPUB No. 2012/0314855), Chan et al. (US PGPUB No. 2020/0186346), Gutoski et al. (US Patent No. 9,942,039), et al. ("Speed-Oriented Architecture for Binary Field Point Multiplication on Elliptic Curves," in IEEE Access, vol. 7, pp. 32048-32060, 2019, doi: 10.1109/ACCESS.2019.2903170) and Cheung et al. ("On the Design and Optimization of a Quantum Polynomial-Time Attack on Elliptic Curve Cryptography," arXiv:0710.1093, February 6, 2009) all disclose various aspects of elliptical curve cryptography and converting points between two curves.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER C SHAW whose telephone number is (571)270-7179. The examiner can normally be reached Max Flex.
Examiner interviews are available via telephone, in-person, 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, Carl Colin can be reached on 571-272-3862. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER C SHAW/Primary Examiner, Art Unit 2493 May 29, 2026
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