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 is in response to the original filing of 09/28/2023. Claims 1-23 are pending and have been considered below.
Priority
18/553,022 filed 09/28/2023 is a National Stage entry of PCT/GB2022/050916 , International Filing Date: 04/12/2022; Claims foreign priority to 2105183.4, filed 04/12/2021.
Drawings
The drawings filed on 09/28/2023 are accepted.
Specification
The amendment to the specification filed on 09/28/2023 is accepted.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/28/20234 and 12/29/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 5-10 and 14-19 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims 5-10 and 15-19 have not been further treated on the merits.
Claims 4-10 dependent from at least claim 4, a multiple dependent claim.
Claims 15-19 dependent from at least claim 14, a multiple dependent claim.
For examination purpose only, claim 4 will be considered as depending on claim 3 only.
For examination purpose only, claim 14 will be considered as depending on claim 13 only.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-23 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim s1-20 of co-pending Application No. 18/553,021. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-25 of the co-pending application are anticipated by the claims of the present application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-23 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-25 of co-pending application.
A side-by-side comparison of claims 1, 11 and 21 of the pending application and the 18/553,021 co-pending application is given in the following table to show their similarities and differences:
18/553,022
18/553,021
1. An electronic device comprising a security module having a physical unclonable function (PUF), the security module configured to establish an enrolment key pair (EPK, ESK) based on a first challenge and response to the PUF, the enrolment key pair comprising an enrolment public key (EPK) and an enrolment secret key (ESK);
wherein the electronic device is configured to establish a device key pair (DPK, DSK) based on a second challenge and response to the PUF, the device key pair comprising a device public key (DPK) and a device secret key (DSK);
the electronic device further comprising:
one or more memories having installed thereon a primary trusted root certificate; and a processor configured to:
over a secure connection, transmit a certificate signing request (CSR) to a server for a certificate certifying that the DPK is associated with a device identifier, the CSR comprising:
the device identifier; and the DPK; wherein the CSR is signed using the DSK, and wherein the device identifier is based on a function of the EPK;
over the secure connection, receive a device certificate associating the DPK with the device identifier;
verify that the device certificate is a descendant of the primary trusted root certificate; and in response to the verification, install the device certificate in memory.
12. A server of a server system comprising one or more servers, the server system for authenticating an electronic device, the server configured to:
receive a certificate signing request (CSR) for a certificate certifying that a device public key (DPK) of a device key pair is associated with a device identifier for identifying an electronic device, the CSR comprising:
the device identifier; and
the DPK;
wherein the CSR is signed using a device secret key (DSK) of the device key pair, and wherein the device identifier is based on a function of an enrolment public key (EPK) of an enrolment key pair known to belong to the electronic device; cause the device identifier of the CSR to be checked against a database of device identifiers for which the server may sign a certificate; cause a check of the device identifier of the CSR to be performed to verify that the device identifier is known to identify the electronic device;
sign a device certificate based on the CSR, wherein the device certificate is a descendant of a primary trusted root certificate known to the electronic device;
initiate transmission of the device certificate from the server system over a secure connection to the electronic device identified by the device identifier.
.21. A system comprising an electronic device and one or more servers: wherein the electronic device comprises a security module having a physical unclonable function (PUF), the security module configured to establish an enrolment key pair (EPK, ESK) based on a first challenge and response to the PUF, the enrolment key pair comprising an enrolment public key (EPK) and an enrolment secret key (ESK); wherein the electronic device is configured to establish a device key pair (DPK,DSK) based on a second challenge and response to the PUF, the device key pair comprising a device public key (DPK) and a device secret key (DSK); the electronic device further comprising: one or more memories having installed thereon a primary trusted root certificate; and a processor configured to: over a secure connection, transmit a certificate signing request (CSR) to the one or more servers for a certificate certifying that the DPK is associated with a device identifier, the CSR comprising: the device identifier; and the DPK; wherein the CSR is signed using the DSK, and wherein the device identifier is based on a function of the EPK; over the secure connection, receive a device certificate associating the DPK with the device identifier; verify that the device certificate is a descendant of the primary trusted root certificate; and in response to the verification, install the device certificate in memory; and wherein the one or more servers are configured to: receive the CSR over the secure connection from the electronic device; check the device identifier against a database of device identifiers for which the server may sign a certificate; verify that the device identifier is known to identify the electronic device; sign the device certificate based on the CSR, wherein the device certificate is a descendant of the primary trusted root certificate; send the device certificate over the secure connection to the electronic device identified by the device identifier.
1. An electronic device comprising: a security module having a physical unclonable function (PUF), the security module configured to establish an enrolment key pair (EPK, ESK) based on a first challenge and response to the PUF, the enrolment key pair comprising an enrolment public key (EPK) and an enrolment secret key (ESK);
one or more memories; and
a processor configured to:
over a secure connection, transmit a certificate signing request (CSR) to a server for a certificate certifying that the EPK is associated with a device identifier, the CSR comprising:
the device identifier; and the EPK; wherein the CSR is signed using the ESK, and wherein the device identifier is based on a function of the EPK;
over the secure connection, receive a temporary enrolment device certificate certifying that the EPK is associated with the device identifier and including a validity period; and
install the temporary enrolment device certificate in memory.
12. A server configured to: receive a certificate signing request (CSR) comprising
a device identifier and an enrolment public key (EPK) of an enrolment key pair established by an electronic device, the CSR for a certificate certifying that the EPK is associated with the device identifier,
wherein the device identifier is based on a function of the EPK; cause the device identifier to be checked against a database of device identifiers for which the server may sign a certificate; cause a check of the device identifier to be performed to certify the device identifier is a function of the EPK; cause the EPK to be associated with the device identifier in the database;
sign a temporary enrolment device certificate certifying that the EPK is associated with the device identifier and including a validity period; and
initiate transmission of the signed temporary enrolment device certificate over a secure connection to the electronic device identified by the device identifier.
23. A system comprising: an electronic device comprising: a security module having a physical unclonable function (PUF), the security module configured to establish an enrolment key pair (EPK, ESK) based on a first challenge and response to the PUF, the enrolment key pair comprising an enrolment public key (EPK) and an enrolment secret key (ESK); one or more memories; and a processor configured to: over a secure connection, transmit a certificate signing request (CSR) to a server of one or more servers for a certificate certifying that the EPK is associated with a device identifier, the CSR comprising: the device identifier; and the EPK; wherein the CSR is signed using the ESK, and wherein the device identifier is based on a function of the EPK; over the secure connection, receive a temporary enrolment device certificate certifying that the EPK is associated with the device identifier and including a validity period; and in response to the verification, install the temporary enrolment device certificate in memory; and one or more servers configured to: receive over the secure connection from the electronic device the CSR comprising the device identifier and the EPK for a certificate certifying that the EPK is associated with the device identifier; check the device identifier against a database of device identifiers for which the one or more servers may sign a certificate; check the device identifier to certify the device identifier is a function of the EPK; associate the EPK with the device identifier in the database; sign the temporary enrolment device certificate certifying that the EPK is associated with the device identifier and including the validity period; and send the signed temporary enrolment device certificate over the secure connection to the electronic device.
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.
Claims 1-3, 11 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over
Liu U.S. 2022/0303769 A1 in view of Hamlet et al U.S. 8,848,905 B1.
Claims 1 and 11: Hamlet et al teaches an electronic device (Fig.5, item 505, item 540) and a method for performance by an electronic device comprising a security module having a physical unclonable function (PUF) (col.5, lines 31-43, electronic device 505 comprising a PUF 540), the security module configured to establish an enrolment key pair (EPK, ESK) based on a first challenge and response to the PUF, the enrolment key pair comprising an enrolment public key (EPK) and an enrolment secret key (ESK) (col.7, lines 38-55, challenger 510 retrieves the device ID associated with device 505. For example, the ID may be a serial number physically displayed on the part (e.g., sticker, engraving, printed, etc.) or it may be electronically stored within device 505 (e.g., within non-volatile memory).
(41) In a process block 710, challenger 510 uses the ID to access the associated public key from device fingerprint list 515, col.9, lines38-43, during the fingerprinting operation, the public key is exported from device 505 along with a device ID to enroll the device fingerprint with device fingerprint list 515);
wherein the electronic device is configured to establish a device key pair (DPK, DSK) based on a second challenge and response to the PUF, the device key pair comprising a device public key (DPK) and a device secret key (DSK)( col.7, line55 to col.8, line 30, challenger 510 generates a test value or test message for submission to cryptographic fingerprint unit 535 as a sort of secret phrase challenge. The test value can be a numeric value, an alphanumeric phrase, or otherwise. One embodiment uses a random nonce for the test value that is especially hard for anyone other than the challenger to predict. In a process block 730, challenger 510 encrypts the test value using the private key obtained in process block 720. In a process block 735, the encrypted test value is submitted to cryptographic fingerprint unit 535 as a sort of cryptographic challenge. If device 505 is the original, non-substituted device, then its PUF circuit 540 will be able to regenerate the PUF value used to seed the key generator that created the original public-private key pair. Thus, the authentic device 505 is the only device that will be able to regenerate the original private key to decrypt the encrypted test value and respond to the challenged with the decrypted test value);
Hamlet et al fails to teach, however Lu et al the electronic device further comprising:
one or more memories having installed thereon a primary trusted root certificate (par.11, 40,60, 65-66, Layer 0 (or N) is certificated by the manufacturer (via a manufacturer-generated root certificate or third-party root certificate); and
a processor (par.66, 79) configured to:
over a secure connection, transmit a certificate signing request (CSR) to a server for a certificate certifying that the DPK is associated with a device identifier (par.30, generates a certificate signing request (CSR) for a device; this CSR binds an asymmetric key pair (public/private key) to a unique identifier (UID) of the device. Thus, the CSR can be used to prove that the UID is associated with the asymmetric key pair and can be used to verify the signature signed using the private key), the CSR comprising:
the device identifier (par. 30, this CSR binds an asymmetric key pair (public/private key) to a unique identifier (UID) of the device.); and
the DPK(par. 30, this CSR binds an asymmetric key pair (public/private key) to a unique identifier (UID) of the device);
wherein the CSR is signed using the DSK, and wherein the device identifier is based on a function of the EPK (par.33, returning to the CSR, the method may utilize the device public key as the public key of the CSR. If a manufacturer generated the device key pair, the manufacturer signs the CSR using the device private key. In some embodiments, after purchasing the device, a customer may request or purchase the CSR from the manufacturer. The customer can then use the CSR to generate the device certificate.);
over the secure connection, receive a device certificate associating the DPK with the device identifier (par.48, the ECA (e.g., implemented in DICE Layer 0) may receive a certificate enrollment request from a higher layer (block 402) such as a Layer 1 or greater. The ECA will verify the enrollment request originates from the component named in the CSR Subject (block 404). For example, an enrollment request may be accompanied by a layer attestation that proves layering semantics to the ECA or the enrollment request may arrive over a trusted communication path., par.50 the CSR includes the generated public key (PK.sub.N+1), the component identifier (TCI.sub.N+1) as measured by the layer itself, and the IMEI);
verify that the device certificate is a descendant of the primary trusted root certificate (par.48, the ECA will verify the enrollment request originates from the component named in the CSR Subject (block 404). For example, an enrollment request may be accompanied by a layer attestation that proves layering semantics to the ECA or the enrollment request may arrive over a trusted communication path par.53 In response to receiving the CSR (block 602), the ECA layer verifies the values received from layer N+1 (block 604) by verifying that the signature was created by the layer N+1 private key (K.sub.N+1) using the CSR public key (PK.sub.N+1) included in the request. The ECA layer then uses the original TCI.sub.N+1 and CDI.sub.N+1 values, or rederives them, to form a new CDI (CDI.sub.new) (block 606). The ECA layer extracts the supplied TCI.sub.N+1 value from the certificate and verifies that it matches the original value. The ECA layer then ensures the CDI.sub.new is the same as CDI.sub.N+1 (block 606). The ECA layer regenerates the next layer's key pair (PK.sub.new, K.sub.new). The ECA layer then verifies that the public key in the CSR is the same as the regenerated key (PK.sub.new) and delete the generated private key K.sub.new (block 608). Finally, the ECA layer issues the certificate using a CSR template (block 610). In some embodiments, the ECA layer signs the certificate with its private key.); and
in response to the verification, install the device certificate in memory (par. 25, the Layer 1 (244) code stores this certificate (226) and uses the certificate (226) for identity validation to the MNO. In some embodiments, the Layer 1 (244) code may include its own ECA functionality to respond to CSRs from Layer 2 code, and so forth).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the disclosure of Hamlet et al with the additional features of Liu in order to provide the ability verifying a digital signature of the certificate request using the first digital certificate., as suggested by Liu par.01.
Claim 2: the combination teaches
wherein the processor is further configured to, over the secure connection, receive an IoT hub root certificate and store the IoT hub root certificate in memory (Liu, par,15, 41, 48).
The same motivation to modify Hamlet et al in view of Liu applied to claim 1 above applies here.
Claim 3: the combination teaches
wherein the processor is further configured to, over the secure connection, receive an IoT hub endpoint and store the IoT hub endpoint in memory (Liu, par,15, 41, 48).
The same motivation to modify Hamlet et al in view of Liu applied to claim 1 above applies here.
Claim 22: the combination teaches computer readable medium comprising instructions which, when executed by a processor of an electronic device, cause the electronic device to perform a method according to claim 11(see rejection of claim 11 above).
Claims 12-14, 20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Liu U.S. 2022/0303769 A1 in view of Hojsik et al U.S. 2018/0323977 A1.
Claims 12 and 20: Liu teaches a server of a server system comprising one or more servers, the server system for authenticating an electronic device (par.10-11), the server configured to and method comprising:
receive a certificate signing request (CSR) for a certificate certifying that a device public key (DPK) of a device key pair is associated with a device identifier for identifying an electronic device (par.30, generates a certificate signing request (CSR) for a device; this CSR binds an asymmetric key pair (public/private key) to a unique identifier (UID) of the device. Thus, the CSR can be used to prove that the UID is associated with the asymmetric key pair and can be used to verify the signature signed using the private key), the CSR comprising:
the device identifier (par. 30, this CSR binds an asymmetric key pair (public/private key) to a unique identifier (UID) of the device); and
the DPK (par. 30, this CSR binds an asymmetric key pair (public/private key) to a unique identifier (UID) of the device);
wherein the CSR is signed using a device secret key (DSK) of the device key pair, and wherein the device identifier is based on a function of an enrolment public key (EPK) of an enrolment key pair known to belong to the electronic device (par.33, returning to the CSR, the method may utilize the device public key as the public key of the CSR. If a manufacturer generated the device key pair, the manufacturer signs the CSR using the device private key. In some embodiments, after purchasing the device, a customer may request or purchase the CSR from the manufacturer. The customer can then use the CSR to generate the device certificate);
sign a device certificate based on the CSR, wherein the device certificate is a descendant of a primary trusted root certificate known to the electronic device(par.48, the ECA will verify the enrollment request originates from the component named in the CSR Subject (block 404). For example, an enrollment request may be accompanied by a layer attestation that proves layering semantics to the ECA or the enrollment request may arrive over a trusted communication path par.53 In response to receiving the CSR (block 602), the ECA layer verifies the values received from layer N+1 (block 604) by verifying that the signature was created by the layer N+1 private key (K.sub.N+1) using the CSR public key (PK.sub.N+1) included in the request. The ECA layer then uses the original TCI.sub.N+1 and CDI.sub.N+1 values, or rederives them, to form a new CDI (CDI.sub.new) (block 606). The ECA layer extracts the supplied TCI.sub.N+1 value from the certificate and verifies that it matches the original value. The ECA layer then ensures the CDI.sub.new is the same as CDI.sub.N+1 (block 606). The ECA layer regenerates the next layer's key pair (PK.sub.new, K.sub.new). The ECA layer then verifies that the public key in the CSR is the same as the regenerated key (PK.sub.new) and delete the generated private key K.sub.new (block 608). Finally, the ECA layer issues the certificate using a CSR template (block 610). In some embodiments, the ECA layer signs the certificate with its private key);
initiate transmission of the device certificate from the server system over a secure connection to the electronic device identified by the device identifier(par. 25, the Layer 1 (244) code stores this certificate (226) and uses the certificate (226) for identity validation to the MNO. In some embodiments, the Layer 1 (244) code may include its own ECA functionality to respond to CSRs from Layer 2 code, and so forth).
Lu fails to teach however Hojsik et al in the same field of endeavor teaches
cause the device identifier of the CSR to be checked against a database of device identifiers for which the server may sign a certificate (par.56, 82-83, the authorizer 316 can verify a serial number or other identifier sent by the device 302 as part of the manufacturer's device certificate or otherwise obtained against a whitelist (which can be maintained by the certificate authority 318);
cause a check of the device identifier of the CSR to be performed to verify that the device identifier is known to identify the electronic device (par.56, 82-83, the authorizer 316 can verify a serial number or other identifier sent by the device 302 as part of the manufacturer's device certificate or otherwise obtained against a whitelist (which can be maintained by the certificate authority 318);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the disclosure of Liu with the additional features of Hojsik et al in order to provide the ability verifying a digital signature of the certificate request using the first digital certificate, as suggested by Hojsik et al abstract.
Claim 13: the combination teaches a server according to claim 12,
server further configured to initiate transmission of a IoT hub root certificate over the secure connection from the server system to the electronic device and/or to initiate transmission of a IoT hub endpoint over the secure connection to the electronic device (Liu, par,15, 41, 48).
The same motivation to modify Liu in view of Hojsik et al applied to claim 12 above applies here.
Claim 14: the combination teaches a server according to any of claims 12 to 13,
the server further configured to cause the registration of the device certificate to an IoT hub (Liu, par,15, 41, 48).
The same motivation to modify Liu in view of Hojsik et al applied to claim 12 above applies here.
Claim 23: the combination teaches computer readable medium comprising instructions which, when executed by a processor of a server, cause the server to perform a method according to claim 20(see rejection of claim 20 above).
Allowable Subject Matter
Claim 21 is allowed.
Claims 4 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: claim 21: The prior art of record either alone or in combination fails to teach wherein the electronic device is configured to establish a device key pair (DPK,DSK) based on a second challenge and response to the PUF, the device key pair comprising a device public key (DPK) and a device secret key (DSK); the electronic device further comprising: one or more memories having installed thereon a primary trusted root certificate; and a processor configured to: over a secure connection, transmit a certificate signing request (CSR) to the one or more servers for a certificate certifying that the DPK is associated with a device identifier, the CSR comprising: the device identifier; and the DPK; wherein the CSR is signed using the DSK, and wherein the device identifier is based on a function of the EPK; over the secure connection, receive a device certificate associating the DPK with the device identifier; verify that the device certificate is a descendant of the primary trusted root certificate; and in response to the verification, install the device certificate in memory; and wherein the one or more servers are configured to: receive the CSR over the secure connection from the electronic device; check the device identifier against a database of device identifiers for which the server may sign a certificate; verify that the device identifier is known to identify the electronic device; sign the device certificate based on the CSR, wherein the device certificate is a descendant of the primary trusted root certificate; send the device certificate over the secure connection to the electronic device identified by the device identifier.
Claim 4: wherein the one or more memories have installed thereon an issuing certificate, wherein the issuing certificate is a descendant of the primary trusted root certificate, and wherein verifying that the device certificate is a descendant of the primary trusted root certificate comprises verifying that the device certificate is a direct descendant of the issuing certificate
The following prior art are cited to further show the state of the art at the time of applicant’s invention.
Shiner et al 2022/0131700 A1Virtual subscriber identification and virtual identification module and virtual smart card.
Lu et al 20190097818 A1 Programmable device key provisioning,
Conclusion
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