DETAILED 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 Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 13-20 have been renumbered 12-19.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations is/are: component in claims 1, 2, 4, 6, 7-9, 11-18 and supply item in claims 19, 20.
Because this/these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 7, 9, 13 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 7 recites the limitation "the host firmware" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the host firmware" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the response" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the host firmware clock" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the threshold" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/593,101 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘101 application include all the limitations of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application
Application No. 18/593,101
reading a host start time from a host firmware clock of the imaging device, the host start time corresponding to a start of an action performed by a component of the imaging device…(Claim 1)
reading a host start time from a host firmware clock of the imaging device…(Claim 1)
and reading a host end time from the host firmware clock, the host end time corresponding to an end of the action performed by the component of the imaging device…(Claim 1)
reading a host end time from the host firmware clock…(Claim 1)
comparing a host interval time between the host start time and the host end time with a component interval time, corresponding to the time taken to perform the action by the component…(Claim 1)
comparing a host interval time between the host start time and the host end time with a security interval time between the security start time and the security end time… (Claim 1)
and when a difference between the host interval time and the component interval time is greater than a threshold, determining that the host firmware clock has been tampered with. (Claim 1)
and when a difference between the host interval time and the security interval time is greater than a threshold, determining that the host firmware clock has been tampered with. (Claim 1)
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 1-4, 7-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. Claims 1, 12, and 13 recite the receiving of a start time and an end time, comparing the interval between the start time and end time to a component interval time, and determining whether the result of this comparison is greater than a threshold, which can be considered to fall into the “Mental Process” grouping of the step 2A, prong one analysis for subject matter eligibility (MPEP 2106.04(a)). Additionally, MPEP 2106.04(a)(2), section III, explains that courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper) to perform the limitation (See Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
This judicial exception is not integrated into a practical application because the additional elements include an imaging device, a firmware clock, and a generically claims “component”. These additional elements would be considered to be merely the tool used to perform the abstract idea (See MPEP 2106.05(f)) and utilized to generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements would be considered generic computer technology that is well-known, routine, and convention and therefore, insufficient to qualify as “significantly more” (MPEP 2106.05(A)).
Claims 2-4, 7-11 include limitations similar to the above-mentioned limitations which fall into the “Mental Process” grouping of the step 2A, prong one analysis for subject matter eligibility (MPEP 2106.04(a)) and limitations that were not sufficient to integrate the judicial exception into a practical application or sufficient to amount to significantly more than the judicial exception.
Claim 14 recites “perform the action for the component interval time” and “communicate the end of the action to host firmware of the imaging device”. The identified additional elements are not sufficient to how improvement in the functioning of a computer or an improvement to other technology or technical field, implement the judicial exception with a particular machine, a transformation, or applying or using the judicial exception in some other meaningful way beyond linking.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements amount to well-understood, routine, and conventional computer functionality. Therefore, the claims do not include an inventive concept that is significantly more than the abstract idea.
Claim 15 recites “the component suspends communication with the host firmware for the component interval time”. The identified additional elements are not sufficient to how improvement in the functioning of a computer or an improvement to other technology or technical field, implement the judicial exception with a particular machine, a transformation, or applying or using the judicial exception in some other meaningful way beyond linking. Additionally, the claim would be considered an insignificant extra-solution activity.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements amount to well-understood, routine, and conventional computer functionality. Therefore, the claims do not include an inventive concept that is significantly more than the abstract idea.
Claims 16-19 include limitations that are not sufficient to integrate the judicial exception into a practical application or sufficient to amount to significantly more than the judicial exception.
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.
Claims 1, 2, 4, 7-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2009512019 (“019”). Referring to claim 1, ‘019 discloses a clock tamper detection procedure wherein clock cycles are counted for a real-time clock until a desired count is reached such that the real-time clock is checked periodically (Page 9, first- fourth paragraphs: time between the clock checks reads on the claimed host time interval and the time of the previous check can read on the claimed host start time, while the time of the current check can read on the claimed host end time; client device reads on the imaging device; Examiner notes that the “imaging” name represents non-functional descriptive material since the “imaging” name does not define structure, nor does the name require functional steps to be performed in the claims. See MPEP 2111.04-2111.05) such that clock reading procedures can be implemented by firmware (Page 22, first full paragraph), which meets the limitation of reading a host start time from a host firmware clock of the imaging device, the host start time corresponding to a start of an action performed by a component of the imaging device, reading a host end time from the host end time from the host firmware clock, the host end time corresponding to an end of the action performed by the component of the imaging device. The time between clock checks is compared to an expected time interval (Page 9, fourth paragraph), which meets the limitation of comparing a host interval time between the host start time and the host end time with a component interval time, corresponding to the time taken to perform an action by the component. If the interval is large, a clock reset is performed (Page 9, fifth paragraph), which meets the limitation of when a different between the host interval time and the component interval time is greater than a threshold, determine that the host firmware clock has been tampered with.
Referring to claim 2, 019 discloses that the client enters a sleep mode for the duration of the wait period such as 5 minutes (Page 8, last paragraph – Page 9, first paragraph), which meets the limitation of wherein the host start time is the time when a command is sent to the component of the imaging device, and the host end time is the time when a response to the command is received from the component. The time between clock checks is compared to an expected time interval (Page 9, fourth paragraph), which meets the limitation of and the component interval time is an expected response time for the command.
Referring to claim 4, ‘019 discloses a clock tamper detection procedure wherein clock cycles are counted for a real-time clock until a desired count is reached such that the real-time clock is checked periodically (Page 9, first- fourth paragraphs: time between the clock checks reads on the claimed host time interval and the time of the previous check can read on the claimed host start time, while the time of the current check can read on the claimed host end time;) such that clock reading procedures can be implemented by firmware (Page 22, first full paragraph), which meets the limitation of wherein the host firmware of the imaging device sends the host start time and the host end time. The time between clock checks is compared to an expected time interval (Page 9, fourth paragraph), which meets the limitation of the component performs the steps of comparing a host interval time, with the component interval time. If the interval is large, a clock reset is performed (Page 9, fifth paragraph), which meets the limitation of when a different between the host interval time and the component interval time is greater than a threshold, determining that the host firmware clock has been tampered with.
Referring to claim 7, ‘019 discloses a clock tamper detection procedure wherein clock cycles are counted for a real-time clock until a desired count is reached such that the real-time clock is checked periodically (Page 9, first- fourth paragraphs: time between the clock checks reads on the claimed host time interval and the time of the previous check can read on the claimed host start time, while the time of the current check can read on the claimed host end time) and the time between clock checks is compared to an expected time interval (Page 9, fourth paragraph) such that clock reading procedures can be implemented by firmware (Page 22, first full paragraph), which meets the limitation of wherein the steps of comparing the host interval time with the component interval time and, when the different between the host interval time and the component interval time is greater than the threshold, determining that the host firmware clock has been tampered with, are performed by the host firmware.
Referring to claim 8, ‘019 discloses that the functionality is implemented in a client device (Page 9, first – fourth paragraph: the name of the device represents non-functional descriptive material since the name of the device does not define structure, nor does the name of the device require functional steps to be performed. See MPEP 2111.04-2111.05), which meets the limitation of wherein the component is a security device of the imaging device.
Referring to claim 9, ‘019 discloses that the client enters a sleep mode for the duration of the wait period such as 5 minutes (Page 8, last paragraph – Page 9, first paragraph), which meets the limitation of wherein when the host firmware of the imaging device receives the response, the host sends the host end time to the component.
Referring to claim 10, ‘019 discloses that the client enters a sleep mode for the duration of the wait period such as 5 minutes (Page 8, last paragraph – Page 9, first paragraph: start of the sleep mode would correspond with the claimed command; the beginning of the sleep mode corresponds with the claimed host start time), which meets the limitation of wherein the command comprises the host start time.
Referring to claim 11, ‘019 discloses that the functionality is implemented in a client device (Page 9, first – fourth paragraph), which meets the limitation of wherein the steps of comparing the host interval time with the component interval time and, when the different between the host interval time and the component interval time is greater than the threshold, determining that the host firmware clock has been tampered with, are performed by the component.
Referring to claim 12, ‘019 discloses a clock tamper detection procedure wherein clock cycles are counted for a real-time clock until a desired count is reached such that the real-time clock is checked periodically (Page 9, first- fourth paragraphs: time between the clock checks reads on the claimed host time interval and the time of the previous check can read on the claimed host start time, while the time of the current check can read on the claimed host end time; client device reads on the imaging device; Examiner notes that the “imaging” name represents non-functional descriptive material since the “imaging” name does not define structure, nor does the name require functional steps to be performed in the claims. See MPEP 2111.04-2111.05) such that clock reading procedures can be implemented by firmware (Page 22, first full paragraph), which meets the limitation of read a host start time from a host firmware clock of the imaging device, the host start time corresponding to a start of an action performed by a component of the imaging device, read a host end time from the host end time from the host firmware clock, the host end time corresponding to an end of the action performed by the component of the imaging device. The time between clock checks is compared to an expected time interval (Page 9, fourth paragraph), which meets the limitation of compare a host interval time between the host start time and the host end time with a component interval time, corresponding to the time taken to perform an action by the component. If the interval is large, a clock reset is performed (Page 9, fifth paragraph), which meets the limitation of when a different between the host interval time and the component interval time is greater than a threshold, determine that the host firmware clock has been tampered with.
Referring to claim 13, ‘019 discloses a clock tamper detection procedure wherein clock cycles are counted for a real-time clock until a desired count is reached such that the real-time clock is checked periodically (Page 9, first- fourth paragraphs: time between the clock checks reads on the claimed host time interval and the time of the previous check can read on the claimed host start time, while the time of the current check can read on the claimed host end time; client device reads on the imaging device; Examiner notes that the “imaging” name represents non-functional descriptive material since the “imaging” name does not define structure, nor does the name require functional steps to be performed in the claims. See MPEP 2111.04-2111.05), which meets the limitation of receiving a host start time and a host end time and calculate a host interval time between the host start time and the host end time, or receive the host interval time. The time between clock checks is compared to an expected time interval (Page 9, fourth paragraph), which meets the limitation of compare the host interval time, with a component interval time corresponding to the time taken to perform an action by the component. If the interval is large, a clock reset is performed (Page 9, fifth paragraph), which meets the limitation of when a different between the host interval time and the component interval time is greater than the threshold determine that the host firmware clock has been tampered with.
Referring to claim 14, ‘019 discloses that the real-time clock is checked every 5 minutes (Page 9, paragraph 1: 5-minute wait period reads on the claimed action), which meets the limitation of perform the action for the component interval time. After the predetermined wait time, the client device reads the current value of the real-time clock (Page 9, paragraph 2) such that the clock reading procedures can be implemented by firmware (Page 22, first full paragraph), which meets the limitation of communicate the end of the action to host firmware of the imaging device.
Referring to claim 15, ‘019 discloses that the client enters a sleep mode for the duration of the wait period (Page 8, last paragraph), which meets the limitation of wherein the component suspends communication with the host firmware for the component interval time.
Referring to claim 16, ‘019 discloses that the wait time is predetermined such as 5 minutes (Page 8, last paragraph – Page 9, first paragraph), which meets the limitation of wherein the action is an operation with a consistent execution time.
Referring to claim 17, ‘019 discloses that the functionality is implemented in a client device (Page 9, first – fourth paragraph: the name of the device represents non-functional descriptive material since the name of the device does not define structure, nor does the name of the device require functional steps to be performed. See MPEP 2111.04-2111.05), which meets the limitation of wherein the component is a security device.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2009512019 (“019”), in view of Wang, CN 116547612. Referring to claim 3, ‘019 discloses that the interval between clock checks is based on the use of a counter (Page 9, first paragraph). ‘019 does not specify subtraction of a start time from an end time. Wang discloses time interval determination using counters (Page 10, fifth paragraph) and time interval determination by subtracting a start time from an ending time (Page 10, fourth paragraph), which meets the limitation of determining the host interval time by subtracting the host start time from the host end time. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the interval of ‘019 to have been determined by subtracting a start time from and end time, instead of using counters, since Wang discloses that such an interval determine represents one of a finite number of possible embodiments that could be utilized by one of ordinary skill in the art with a reasonable expectation of success.
Claims 5, 6, 18, 19 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2009512019 (“019”), in view of Sasaki, EP 3425546. Referring to claim 5, ‘019 does not specify that the clock tampering system is implemented in a supply item for use in an imaging system. Sasaki discloses tamper detection processing implemented (Page 10, first paragraph) within a printer cartridge (Page 8, third paragraph) such that a failed authentication of the cartridge results in the stopping of image forming operations by the printer (Page 14, second to last paragraph), which meets the limitation of when it is determined that the host firmware clock has been tampered with, preventing normal operation of the imaging device, wherein preventing normal operation of the imaging device comprises interrupting signals sent to a print component. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the clock tampering functionality of ‘019 to have been implemented within a printer cartridge in order to provide reliable cartridge verification as suggested by Sasaki (Page 3, second full paragraph).
Referring to claim 6, ‘019 does not specify that the clock tampering system is implemented in a supply item for use in an imaging system. Sasaki discloses tamper detection processing implemented (Page 10, first paragraph) within a printer cartridge (Page 8, third paragraph) such that a failed authentication of the cartridge results in the stopping of image forming operations by the printer (Page 14, second to last paragraph), which meets the limitation of wherein preventing normal operation of the imaging device comprises interrupting signals sent to a print component. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the clock tampering functionality of ‘019 to have been implemented within a printer cartridge in order to provide reliable cartridge verification as suggested by Sasaki (Page 3, second full paragraph).
Referring to claims 18, 19, ‘019 does not specify that the clock tampering system is implemented in a supply item for use in an imaging system. Sasaki discloses tamper detection processing implemented (Page 10, first paragraph: calculation unit 107 within the IC tag 101 of cartridge) within a printer cartridge (Page 8, third paragraph: IC tag 101 added to process cartridge 210; cartridge 210 reads on the claimed supply item), which meets the limitation of a supply item for use with an imaging device in an imaging system, an imaging system comprising the supply item of claim 19 installed in the imaging device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the clock tampering functionality of ‘019 to have been implemented within a printer cartridge in order to provide reliable cartridge verification as suggested by Sasaki (Page 3, second full paragraph).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McGarry, U.S. Patent No. 12,271,470, discloses detecting system clock attacks.
Williams, U.S. Publication No. 2023/0123015, discloses maintaining time measurements on an imaging device.
Aoyagi, U.S. Patent No. 11,403,399, discloses detecting software tampering on an imaging device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN E LANIER whose telephone number is (571)272-3805. The examiner can normally be reached M-Th: 6:20-4:50.
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/BENJAMIN E LANIER/ Primary Examiner, Art Unit 2437