DETAILED ACTION
Notice of 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 .
Response to Amendment
The amendment filed 2026-03-09 has been entered and fully considered.
In light of applicant’s amendment, filed 2026-03-09, the claim objections have been withdrawn.
In light of applicant’s amendment, filed 2026-03-09, the 35 U.S.C. § 101 rejection at ¶7 has been withdrawn.
In light of applicant’s amendment, filed 2026-03-09, the 35 U.S.C. § 112(b) rejection at ¶9 has been partially withdrawn; See response to arguments.
In light of applicant’s amendment, filed 2026-03-09, the 35 U.S.C. § 112(b) rejection at ¶10 has been withdrawn.
Response to Arguments
Applicant’s arguments, see pages 4-7, filed 2026-03-09, with respect to the rejection of claim 15 under 35 U.S.C. § 101 (at ¶6) have been fully considered but they are not persuasive.
In particular, applicant argues that amended claim 15 explicitly ties the instructions to computer memory and processor execution, thereby requiring the presence of a machine (the computer) that performs the claimed functionality; however, the Examiner respectfully submits that the claim merely recites that the computer program product comprises “software code instructions stored in a memory of a second device and configured, when executed by a processor” and as such, the claim does not positively recite the memory or processor as elements of the computer program product itself. Since the claimed computer program product only comprises the “software code instructions”, it is still directed towards software per se. Thus, the Examiner respectfully submits that the rejection is proper.
Applicant’s arguments, see pages 2-3, filed 2026-03-09, with respect to the rejection of claims 1, 4, 12, and 15-16 under 35 U.S.C. § 112(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant’s arguments, see pages 3-4, filed 2026-03-09, with respect to the rejection of claims 1, 4, 12, and 15-16 under 35 U.S.C. § 112(b) have been fully considered but they are not fully persuasive.
In particular, the Examiner acknowledges that most of the ambiguity with modifiers have been corrected by the amendment, but one ambiguous modifier still remains; See 35 U.S.C. § 112(b) rejection at ¶15. Thus, the Examiner respectfully submits that the maintained portion of the rejection is proper.
Applicant’s arguments, see pages 2-3, filed 2026-03-09, with respect to the rejection of claims 1, 4, 12, and 15-16 under 35 U.S.C. § 102(a)(2) have been fully considered but they are not persuasive. In response to Applicant’s arguments that Santinelli fails to anticipate the claimed invention, the Examiner respectfully disagrees.
Applicant first argues that Santinelli does not disclose the claimed feature “sealed data generated by a sealing enclave by sealing on a first device a predetermined message with a first hardware key associated with said first device, wherein the first hardware key is based on a value depending on an identity of said sealing enclave”, as recited in amended claim 1, as Santinelli merely describes modifying a software program so that it depends on an association key generated by a remote key server and stored within a trusted execution environment. The Examiner respectfully submits, however, that this argument does not explain how the claim limitation distinguishes from the disclosure of Santinelli. Note, for example, that the claimed “sealing enclave” has no particular structure that distinguishes from a generic computer, e.g., the claim doesn’t limit it to a separate hardware chip that safely secures cryptographic elements. The claim doesn’t even require that any of the elements be cryptographic in nature. Further note that the claim limitation “the first hardware key is based on a value depending on an identity of said sealing enclave” has so many loose associations that it may as well be “Six Degrees of Kevin Bacon”.
In this instance, Santinelli discloses a key that has only been delivered in a single platform and that was generated by and housed in a TEE of an association key server, which is encompassed by the broadest reasonable interpretation (BRI) of the nebulous claim language. That is, the Examiner finds that the BRI of “sealed data generated by a sealing enclave by sealing on a first device a predetermined message with a first hardware key associated with said first device, wherein the first hardware key is based on a value depending on an identity of said sealing enclave” encompasses any data generated by a device using some other data (any data being accepted as input is effectively “predetermined” input) and a key that has any relation whatsoever to an identity of the device. Because the key of Santinelli is generated in a secure TEE, there is inherently some other data (e.g. random seeds) used in generation of the “association key”. Further, this key can be considered at least based in some fashion on the identity of the first device. Thus, the disclosure of Santinelli meets the BRI of the nebulous claim limitation.
Applicant first argues that Santinelli does not disclose the claimed feature “obtaining a second hardware key associated with said second device and verifying that the second device is authorized to execute the application using said obtained second hardware key and said retrieved sealed data”. The Examiner first notes, however, that Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. In this instance, the Examiner notes that Santinelli discloses two keys (e.g., “a unique association key or a key derived from the latter” [0079]).
The Examiner surmises that applicant is relying on features suggested by, but not required by, the claims. For example, the Examiner suspects that applicant is under the impression that the claims require the second key to be generated or obtained from the second device, but this is not required by the claims. That is, the claim recites “wherein the second hardware key is provided by a hardware associated with the second device”, and the BRI of “hardware associated with the second device” includes the first device itself (which is where both keys are generated in Santinelli). Further, because Santinelli discloses that there are two steps two steps (identification and validation) that each require a key for the software to run (e.g. [0086]), both keys are required similar to as claimed.
Thus, the Examiner respectfully submits that the rejection is proper.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2026-03-18 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner, except as noted infra.
The information disclosure statement filed 2026-03-18 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein (as indicated by strikethrough) has not been considered.
The Examiner notes that applicant has also submitted a copy of US-20210019396-A1; however, applicant is not required to submit copies of US PG-Pubs. Further, it is not listed on the IDS and so it has not been considered.
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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter; specifically, it is directed towards software, per se.
Claim 15 is directed towards software, per se. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re ZIetz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a “computer program product comprising software code instructions stored in a memory of a second device and configured, when executed by a processor” typically covers forms of hardware, software per se, and combinations thereof in view of the ordinary and customary meaning of computer program product, particularly when the specification is silent; See MPEP 2111.01. Note that neither the memory nor the processor are recited elements of the computer program product per se. When the broadest reasonable interpretation of a claim covers software per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter, as software per se does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter). Software is descriptive material that can be considered statutory ONLY if it is both functional and clearly embodied as structural, non-transitory matter; See MPEP § 2106.03(I). Even if the software of the claim(s) is functional, it is not clearly defined as being embodied as structural, non-transitory matter and is therefore not statutory.
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.
Claims 1, 4, 12, and 15-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, Claim 1 recites the limitation “sealing on a first device a predetermined message with a first hardware key”, and it is unclear whether the prepositional phrase “with a first hardware key” is modifying the “predetermined message” or the act of “sealing”. Claims 15-16 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim Rejections - 35 USC § 102
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)(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, 4, 12, and 15-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Santinelli et al. (US Pre-Grant Publication No. 20240104194-A1, hereinafter “Santinelli”).
With respect to independent claim 1, Santinelli discloses a method for securely executing an application on a second device,
wherein a memory space of said application comprises an execution enclave configured to access a memory of the second device, the memory storing sealed data generated by a sealing enclave by sealing on a first device a predetermined message with a first hardware key associated with said first device, wherein the first hardware key is based on a value depending on an identity of said sealing enclave {paras. 0080 & 0086: “a specific version of the program that requires a key for its operation and which is hidden in a trusted execution environment is produced”, wherein “this key has only been delivered in a single platform (and in its trusted environment)”, and wherein the key originated from a “key server”}; and
wherein said execution enclave verifies that the second device is authorized to execute the application, the verifying comprising:
retrieving (E1) said sealed data from said memory {para. 0087: “loader transfers its load (the encrypted data structure) and an execution order to the part of the program modified and placed in the trusted execution environment”}.
retrieving (E2) an enclave identity of said execution enclave {paras. 0065, 0077, 0079, & 0086: “two steps (identification-validation of the computing platforms” with a “key inoculated on the execution machine and located in the trusted environment”}.
based on said retrieved enclave identity, obtaining a second hardware key associated with said second device and verifying that the second device is authorized to execute the application using said obtained second hardware key and said retrieved sealed data (E3), wherein the second hardware key is provided by a hardware associated with the second device {paras. 0079 & 0086-0087: generating “a unique association key or a key derived from the latter and which is used both for the identification of the computing platform” and that “produces a decryption of the data structure by use of a key duly positioned in this same trusted execution environment”, wherein “this version of the program can only be executed on this single machine” based on the key}.
in response to successful verification that the second device is authorized to execute the application, enabling execution (E4) of said application on said second device {para. 0087: “the result is transmitted to the loader which can then load into memory the decrypted instructions and start the execution of the program in the normal environment”; also note that this is a contingent limitation that does not limit the scope of the claim; See MPEP § 2111.04(II)}.
With respect to dependent claim 4, Santinelli discloses wherein said value depending on an identity of said sealing enclave comprises a hash of data comprising an enclave code of said sealing enclave {para. 0076: “signature is produced by an asymmetric encryption (use of the private key for the encryption) and a hash of the piece of data transferred”}.
With respect to dependent claim 12, Santinelli discloses wherein said first device and second device belong to a group of trusted devices, the first hardware key is a group signature key for said group of trusted devices, said signature generated by the sealing enclave is a group signature proving that the first device belongs to said group of trusted devices and the verification that the second device is authorized to execute the application is a verification that the second device is among said group of trusted devices by verifying said signature using said second hardware key as a group signature key {paras. 0076 & 0080: “a unique association key (or a derived key), generated by an association key server and which is housed through a secure communication channel in the TEE trusted execution environment” (the generation of the unique association key implies a trust between the user device and key server), and wherein “Upon reception of the request and of the signature, the epilog can carry out the operations of verification of authenticity (origin and integrity) of the requests (and their data) before processing them”}.
With respect to claims 15-16, a corresponding reasoning as given earlier in this section with respect to claim 1 applies, mutatis mutandis, to the subject matter of claims 15-16; therefore, claims 15-16are rejected, for similar reasons, under the grounds as set forth for claim 1.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William (“Bill”) 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.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491