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 .
DETAILED ACTION
This office action is in response to the communication filed on 10/6/2025.
Claims 1-10 and 21-30 have been examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/21/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 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.
(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.
Claims 1, 2, 4-8, 21, 22, 24-26, and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Egebjerg et al. (EP 2919414 A1) hereinafter referred to as Egebjerg.
Regarding claims 1, 21, and 26, Egebjerg disclosed a system (Egebjerg Figs. 1-3 for example), comprising:
processing circuitry (Egebjerg Figs. 1-3 for example); and
a memory, accessible by the processing circuitry, the memory storing instructions that, when executed by the processing circuitry, cause the processing circuitry to perform operations (Egebjerg Figs. 1-3 for example) comprising:
determining that a certificate stored on an operational technology (OT) device operating in an OT environment has expired or is within a threshold period of time from expiration (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example);
generating a certificate signing request for a new certificate for the OT device (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example);
transmitting the certificate signing request and a public key stored in a second memory of the OT device to a certificate authority (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example);
receiving the new certificate from the certificate authority (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example); and
transmitting the new certificate to the OT device for storage in the second memory (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example).
Regarding claims 2 and 22, Egebjerg disclosed that the certificate identifies one or more security zones of the OT environment in which the OT device is authorized to operate, one or more conduits of the OT environment in which the OT device is authorized to operate, or both (Egebjerg Paragraphs 0023 and 0036-0037 for example).
Regarding claim 4, Egebjerg disclosed that the certificate signing request comprises identification of a name, identification of an organization, identification of the public key, identification of a domain name, one or more digital signatures, or any combination thereof (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example).
Regarding claims 5, 24, and 28, Egebjerg disclosed that the operations comprise: verifying, via a policy manager application executing on the processing circuitry, before initial operation of the OT device in the OT environment, the certificate stored on the OT device; and operating the OT device within the OT environment in accordance with the certificate stored on the OT device (Egebjerg Paragraphs 0014 and 0021 for example).
Regarding claim 6, Egebjerg disclosed the system comprising the OT device (Egebjerg Figs. 1-3 and Paragraphs 0039-0040 for example).
Regarding claim 7, Egebjerg disclosed that the certificate is configured to expire upon a passage of a particular amount of time from issuance (Egebjerg Paragraph 0024 for example).
Regarding claims 8 and 25, Egebjerg disclosed that the certificate is configured to expire at a particular time on a particular date (Egebjerg Paragraph 0024 for example).
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 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 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.
Claims 9, 10, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Egebjerg.
Regarding claims 9 and 29, while Egebjerg disclose the use of public key certificates and signing requests thereof, Egebjerg did not explicitly teach that the certificate signing request comprises a PKXS #10 certificate signing request.
Official Notice: However, it was well-known in the art of public key infrastructure that the PKCS #10 specification describes the most common form of certificate signing request. As such, it would have been obvious to the person having ordinary skill in the art before the effective date of the invention to have used a PKCS #10 certificate signing request in the certificate signing system of Egebjerg. This would have been obvious because the person having ordinary skill in the art would have been motivated to utilize a well-known specific means to implement the generic teaching of Egebjerg.
Regarding claims 10 and 30, while Egebjerg taught the use of certificates, Egebjerg did not explicitly teach that the certificate comprises a X.509 certificate.
Official Notice: However, it was well-known in the art of public key infrastructure that the X.509 specification defines the format of public key certificates. As such, it would have been obvious to the person having ordinary skill in the art before the effective date of the invention to have used a X.509 certificates in the certificate signing system of Egebjerg. This would have been obvious because the person having ordinary skill in the art would have been motivated to utilize a well-known specific means to implement the generic teaching of Egebjerg.
Claims 3, 23, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Egebjerg, and further in view of Collinge et al. (US Patent Application Publication Number 2020/0302441) hereinafter referred to as Collinge.
Regarding claims 3, 23, and 27, Egebjerg did not explicitly teach that the operations comprise generating an additional certificate and transmitting the additional certificate to the OT device along with the new certificate, wherein the new certificate and the additional certificate form a certificate chain configured to establish a chain of custody for the new certificate.
Collinge taught that when generating and issuing a new certificate, the scheme can generate a containing including a list of certificates in the chain of trust, as well as additional certificates including the validating certificate of the issuer (Collinge Paragraph 0102-0112 for example).
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the invention to have employed the teachings of Collinge in the certificate issuing system of Egebjerg by having the security service generate for and provide to the turbine controller a container for the certificate including the certificate, a list of certifications in the chain of trust, and the validation certificate. This would have been obvious because the person having ordinary skill in the art would have been motivated to provide a means for the windmill controller to provide and fully validate its certificate.
Conclusion
Claims 1-10 and 21-30 have been rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2018/0323977 taught a system for issuing certificates to industrial control systems but did not mention certificate expiration or renewal.
US 2020/0410080 taught a project oriented certificate management system including operational certificates which include the context of the installation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T HENNING whose telephone number is (571)272-3790. The examiner can normally be reached Monday-Friday 9AM-3PM EST.
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, William Korzuch can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW T HENNING/Primary Examiner, Art Unit 2491