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 an Amendment application received on 05/19/2026. In the application, claim 1 has been amended. Claims 2-7 remain original. No claim has been cancelled and no new claim has been added.
For this Office Action, claims 1-7 have been received for consideration and have been examined.
Response to Arguments
Claim Rejections – 35 USC § 101
Applicant’s amendments to independent claim 1 have been reviewed and amendments have overcome the raised 35 USC § 101 Abstract Idea rejection. Therefore, the rejection has been withdrawn.
Claim Rejections – 35 USC § 102
Applicant’s arguments, filed 05/19/2026, with respect to the rejection(s) of claim(s) under 35 USC § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found reference.
Claim Interpretation
Applicant’s amendments and explanation have been reviewed, however, the claim language in light of the specification still invoke 35 USC § 112(f) due to lack of recitation of sufficient structure, to entirely perform the recited function.
Examiner would like to note that not only claims, the specification is also utterly silent if TRNG, control logic, and controller are hardware or software. Even Applicant mentions in the remarks (Page # 9) that Control logic can be implemented in hardware or firmware which renders the invocation of 35 USC § 112(f) and related 112(a) & (b) rejections valid because claim and specification lacks basic structure to support the claimed entities.
Applicant is recommended to positively amend the claim to recite supporting structure so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f).
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over NPL document titled “AUTOSAR - Specification of Secure Hardware Extensions” published 11/28/2019 in view of Claes et al., (US20160191494A1).
Regarding claim 1, NPL discloses:
A system configured to encrypt vehicle communication, comprising:
a hardware extension including a true-random number generator (TRNG), a random-access memory, a control logic, and a controller (Page # 9: Basically SHE consists of three building blocks, a storage area to keep the cryptographic keys and additional corresponding information, a implementation of a block cipher (AES) and a control logic connecting the parts to the CPU of the microcontroller, see Figure 4.1 for a simplified block diagram; Page # 10: Throughout the whole document the term "CPU" denotes the actual microprocessor while "microcontroller" is used to describe the hardware complete chip, i.e. a CPU and all included peripherals. The term "control logic" refers to the system (e.g. a finite state machine or a small microprocessor) controlling the algorithms and memories inside of SHE; also see Figure 4.3; Page # 16), wherein:
the TRNG is configured to output a true random number (Page # 24: section 4.5: Random number generation; 4.5.1 Seed generation: The seed for the pseudo random number generator can be generated in two different ways. Either by implementing another pseudo random number generator as described in Chapter 4.5.1.1);
the random-access memory is configured to store the true-random number [[as a one-time password]] and a counter value received from a counter, wherein the one-time password is stored prior to encryption (Page # 43: section 4.9: The protocol is secured against replay attacks by including a counter value stored within SHE).
NPL fails to disclose:
the random access memory stores the one-time password; the control logic is configured to send the one-time password to an advanced encryption standard (AES) block cipher configured to encrypt the one-time password utilizing the counter value and a symmetric key as an input parameter to generate a signature; and the controller is in communication with the hardware extension, the controller configured to: receive, from the AES block cipher, the signature; store the signature at a memory associated with the controller; and increase the counter value at the counter to establish a second counter value.
However, Claes discloses:
the random access memory stores one-time password ([0017] In case the dynamic variable is based on a time value or on the value of an event related variable the result of the cryptographic combination of the value of the dynamic variable with the value of the secret cryptographic key may be referred to as a one-time password (OTP);
the control logic is configured to send the one-time password to an advanced encryption standard (AES) block cipher configured to encrypt the one-time password utilizing the counter value and a symmetric key as an input parameter to generate a signature ([0015] The Functioning of a Software or Hardware Token; [0016] In some embodiments a token, such as the software token and/or the hardware token, may be adapted to generate a one-time password (OTP) or an electronic signature by cryptographically combining the value of a dynamic variable with the value of a secret cryptographic key using a cryptographic algorithm that is parameterized with the secret cryptographic key … In some embodiments the specific event may for example comprise the usage by the token of the event related variable to generate an OTP or electronic signature. In some embodiments the event related variable may comprise a counter and the update algorithm may comprise the monotonic incrementing (or decrementing) of the counter); and
the controller is in communication with the hardware extension, the controller configured to:
receive, from the AES block cipher, the signature ([0077] In some embodiments the application server (150) may be adapted to host a server part of a computer based application that may be accessed by a user, for example by using access device (160). In some embodiments the interaction of the user with the computer based application may be secured by the usage of dynamic credentials generated by a hardware token or a software token associated with the user. For example a user may have to present a valid OTP to log in or may have to present a valid electronic signature over the data of a transaction that the user requests the application to perform);
store the signature at a memory associated with the controller ([0077] For example a user may have to present a valid OTP to log in or may have to present a valid electronic signature over the data of a transaction that the user requests the application to perform); and
increase the counter value at the counter to establish a second counter value ([0016] In some embodiments the specific event may for example comprise the usage by the token of the event related variable to generate an OTP or electronic signature. In some embodiments the event related variable may comprise a counter and the update algorithm may comprise the monotonic incrementing (or decrementing) of the counter).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify the Secure Hardware Extension (SHE) comprising random number generator of NPL and include a system which generates dynamic credentials using one-time password and signature, as disclosed by Claes.
The motivation to include Claes’s system is to enhance signature generation using one-time password in order to prevent replay attacks.
Regarding claim 2, NPL discloses:
The system of claim 1, wherein the AES block cipher is configured to encrypt the second counter value and a second one-time password to create a second signature (Claes: [0016]).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify the Secure Hardware Extension (SHE) comprising random number generator of NPL and include a system which generates dynamic credentials using one-time password and signature, as disclosed by Claes.
The motivation to include Claes’s system is to enhance signature generation using one-time password in order to prevent replay attacks.
Regarding claim 3, NPL discloses:
The system of claim 1, wherein the TRNG and the random- access memory are components of an Automotive Open System Architecture (AUTOSAR) Secure Hardware Extension compliant unit (NPL: Page # 24: section 4.5; section 4.5.1.2).
Regarding claim 4, NPL discloses:
The system of claim 1, wherein the signature is encrypted utilizing electronic codebook mode of the AES block cipher (NPL: Page # 13: see section 4.3.1 disclosing Secure Hardware Extension supports electronic cipher book mode (ECB)).
Regarding claim 5, NPL discloses:
The system of claim 1, wherein the hardware extension is an Automotive Open System Architecture (AUTOSAR) Secure Hardware Extension module (NPL: Page # 9-10; Section 4.1: Introduction).
Regarding claim 6, NPL discloses:
The system of claim 1, wherein the counter is associated with a counter component of the controller and the counter component is not located on the hardware extension (NPL: Page # 15: section 4.4).
Regarding claim 7, NPL discloses:
The system of claim 1, wherein the counter is a monotonic counter (Claes: [0016]).
It would have been obvious to an ordinary skill in the art before the effective filing date of the claimed invention to modify the Secure Hardware Extension (SHE) comprising random number generator of NPL and include a system which generates dynamic credentials using one-time password and signature, as disclosed by Claes.
The motivation to include Claes’s system is to enhance signature generation using one-time password in order to prevent replay attacks.
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 limitation(s) is/are:
“a true-random number generator (TRNG) configured to”,
“control logic configured to” and
“the controller configured to” in claim 1,
Because this/these claim limitation(s) is/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 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 1-7 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
Dependent claims 2-7 inherit these deficiencies.
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 1-7 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.
“a true-random number generator (TRNG) is configured to”,
“control logic is configured to” and
“the controller configured to” in claim 1
invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Dependent claims 2-7 inherit these deficiencies.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Van Vredendaal et al., US20240430099A1
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/SYED M AHSAN/Primary Examiner, Art Unit 2491
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