DETAILED ACTION
This is in response to the application filed on August 15, 2023 where Claims 1 – 15, of which Claims 1 and 15 are in independent form, are presented for examination.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 15, 2023 was filed before the mailing date of the current action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 – 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
1. Regarding Claim 1, the claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the preamble indicates it is a process claim (“A method of managing secret information in a…OPT..”), which appears to be a "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter, hence fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961). The body of the claim limits the semiconductor device and not the category of invention (e.g., processing steps) of the method claimed. Therefore, the method claim does not fall within any statutory category. See MPEP 2173.05(q).
2. Regarding Claims 2 – 14, the claims are rejected based on their dependency on Claim 1 and under the same rationale.
Claim Interpretation
3. This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “an OTP memory for storing,” “a sequencer for reading,” and “a register for storing” in Claims 1 and 15. Each of the OTP memory, sequencer, and register recite structure (e.g., hardware) used to perform the recited function.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 5, 8, 9, 12, and 13 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 enablement requirement.
4. Regarding Claims 5 and 12, the claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claim recites that the secret information, which is stored in OTP (One Time Programable) memory, is “invalidated by being overwritten with a random value or a zero value.” OTP memory, by its design can be only written to once, once programmed, or blown, the contents cannot be changed and the contents are retained after power is removed. Therefore, the fuses or bits that contain the secret information cannot be overwritten each time the semiconductor device is powered on.
5. Claims 8, 9 and 13 are rejected based on its dependency on Claim 8 and under the same rationale.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 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.
Claim(s) 1, 2, and 15 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over U.S. Patent 10,521,618 (hereinafter “Zhang”).
6. Regarding Claims 1 and 15, Zhang discloses a method of managing secret information in a semiconductor device comprising an OTP (One Time Programable) module, a security module and a processor [Fig. 2, items 132, 134 and Fig. 7, items 130, 132, 704; OTP memory module, security module, and processor], the OTP module further comprising:
an OTP memory for storing a secret information and a lifecycle flag for defining an operation phase and a discard phase [Fig. 2, item 222, 216; Col. 6, lines 1-9, lines 19-33; OTP memory storing device root key and LCS (life cycle state register) can be altered to enable or disable particular functions of the chip];
a sequencer for reading information stored in the OTP memory [Fig. 2, items 204; Col. 4, lines 9-19; OTP controller]; and
a register for storing the information read by the sequencer, wherein the security module performs a process by the secret information [Fig. 2, item 224; Fig. 6; Col. 10, line 46 – Col. 11, line 13; ECC parity bit validation performed by security module; Col. 11, lines 45-51; root key loaded to security module for cryptographic operations],
wherein the processor requests the process to the security module [Fig. 6; Col. 11, lines 45-51; root key loaded to security module for cryptographic operations for the semiconductor device], when changing the operation phase to the discard phase, the processor sends a request to the security module to invalidate the secret information [Fig. 6; Col. 11, lines 24-36; if ECC parity bits are invalid, OTP memory storing root key value is overwritten].
7. Regarding Claim 2, Zhang discloses the limitations of Claim 1. Zhang further discloses that the security module writes a flag indicating the discard phase to the lifecycle flag [Fig. 6; Col. 11, lines 24-36; if security module determines ECC parity bits are invalid, OTP memory storing root key value is overwritten and an invalid flag set].
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, in view of 8,645,716 (hereinafter “Dujari”),
8. Regarding Claim 3, Zhang discloses the limitations of Claim 2. Zhang further discloses that the semiconductor device comprises boot ROM and the methods are performed the execution of the boot ROM [Col. 3, lines 24-27, Col. 4, lines 22-33]. Zhang, however, does not specifically disclose that a firmware is read into the security module to invalidate the secret information and stop the semiconductor device.
Dujari discloses a system and method invalidating secret information stored on an OTP within computing device [Abstract]. Dujari further discloses that the security module executes a boot ROM to determine whether or not to invalidate the keys [Col. 6, lines 40-43]. It would have been obvious to one of ordinary skill in the art to combine the teachings of Dujari with Zhang since both systems control the availability of secret information stored in OTP memory. The motivation to do so is to ensure that the boot ROM is processed in a secure component of the semiconductor device for increased security when executing boot code (obvious to one skilled in the art).
9. Regarding Claim 4, Zhang, in view of Dujari, discloses the limitations of Claim 3. Zhang further discloses that the semiconductor device has a ROM (Read Only Memory) and the firmware is stored in the ROM [Col. 3, lines 24-27, Col. 4, lines 22-33].
10. Regarding Claim 5, Zhang, in view of Dujari, discloses the limitations of Claim 4. The combination of Zhang and Dujari further discloses that the security module overwrites the secret information with a random value or a zero value to invalidate the secret information [Zhang, Col. 11, lines 28-31; Dujari, Abstract; all fuses burnt].
11. Regarding Claim 6, Zhang, in view of Dujari, discloses the limitations of Claim 5. Zhang further discloses that write control to the OTP memory is invalidated so that the secret information is not overwritten in the operation phase [Col. 11, lines 37-44; status flag is set].
12. Regarding Claim 7, Zhang, in view of Dujari, discloses the limitations of Claim 6. Zhang further discloses that write control to the OTP memory is validated so that the secret information can be overwritten in the discard phase [Col. 11, lines 6-36; ECC parity bit does not match].
13. Regarding Claim 8, Zhang, in view of Dujari, discloses the limitations of Claim 5. Zhang further discloses that overwriting the secret information is performed by the firmware each time the semiconductor device is powered on [Col. 4, lines 22-25, Col. 11, lines 37-44; status flag is set at each reboot; status flags part of OTP].
14. Regarding Claim 9, Zhang, in view of Dujari, discloses the limitations of Claim 8. Zhang further discloses that the stop of the semiconductor device is performed by stopping subsequent processes after the security module invalidates the secret information [Col. 11, lines 6-30; cryptography functions of the semiconductor device also disabled; all fuses burnt].
15. Regarding Claim 10, Zhang, in view of Dujari, discloses the limitations of Claim 1. Duraji further discloses that the security module sends a discard phase request to the sequencer and the sequencer writes the flag of the discard phase to the lifecycle flag to invalidate the secret information [Figs. 2 and 4; Col. 6, lines 20--40].
16. Regarding Claim 11, Zhang, in view of Dujari, discloses the limitations of Claim 10. Zhang further discloses that the sequencer masks the secret information stored in the register and updates a lifecycle flag stored in the register [Fig. 6; Col. 11, lines 24-36; if ECC parity bits are invalid, OTP memory storing root key value is overwritten and invalid flag is set].
17. Regarding Claim 12, Zhang, in view of Dujari, discloses the limitations of Claim 10. The combination of Zhang and Dujari further discloses that the secret information is invalidated by being overwritten with a random value or a zero value [Zhang, Col. 11, lines 28-31; Dujari, Abstract].
18. Regarding Claim 13, Zhang, in view of Dujari, discloses the limitations of Claim 12. Zhang further discloses that overwriting the secret information is performed by the sequencer each time the semiconductor device is powered on [[Col. 4, lines 22-25, Col. 11, lines 37-44; status flag is set at each reboot].
19. Regarding Claim 14, Zhang, in view of Dujari, discloses the limitations of Claim 10. Zhang further discloses that, when the security module recognizes moving to the discard phase and stops a service request from the processor, stop of the semiconductor device is performed [Col. 11, lines 6-30; cryptography functions of the semiconductor device are disabled].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. PGPub. 2023/0018085; U.S. Patent 12,299,183.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tae K. Kim, whose telephone number is (571) 270-1979. The examiner can normally be reached on Monday - Friday (10:00 AM - 6:30 PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jorge Ortiz-Criado, can be reached on (571) 272-7624. The fax phone number for submitting all Official communications is (703) 872-9306. The fax phone number for submitting informal communications such as drafts, proposed amendments, etc., may be faxed directly to the examiner at (571) 270-2979.
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/TAE K KIM/Primary Examiner, Art Unit 2496