DETAILED ACTION
Applicant’s amendment filed 1/16/2026 has been fully considered.
Claims 1-20 have been examined.
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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The objection to the claims is withdrawn.
The rejection under 35 USC § 112 is withdrawn.
Applicant’s arguments with respect to the rejection of claims 1-20 on the ground of nonstatutory double patenting over U.S. Patent Nos. 12032493 and 11604740 have been fully considered but they are not persuasive.
Examiner notes that this is not a proper reply. As per MPEP § 804(1)(B)(1) [added in 2015-07], a “complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321” and that “such a filing should not be held in abeyance”.
The Examiner therefore maintains the nonstatutory double patenting over U.S. Patent Nos. 12032493 and 11604740, as well as notes the requirements for a proper reply for any future response.
Applicant’s arguments with respect to the rejection under 35 USC 101 have been fully considered and are persuasive. The rejection under 35 USC 101 has been withdrawn.
Applicant’s arguments with respect to the prior art rejections have been fully considered and are persuasive. The prior art rejections have been withdrawn.
Claim Rejections - 35 USC § 112
Claims 1-20 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 9 recites the limitation "the position offset value”. There is insufficient antecedent basis for this limitation in the claim.
This is not intended to be a complete list of such indefiniteness issues.
Double Patenting
Claims 1-20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of Patent Nos. 12032493 and 11604740. Although the conflicting claims are not identical, they are not patentably distinct from each other because
“A computer-implemented method for obfuscating cryptographic material stored in a memory, the method comprising: writing each byte of the cryptographic material to a different location in an obfuscation buffer, wherein each different location is based on a different random offset value determined for each byte of the cryptographic material; and storing a location of each byte of the cryptographic material in a position tracking buffer, wherein a first location of a first byte of the cryptographic material in the position tracking buffer is based on the position start offset value and a subsequent location of each subsequent byte of the cryptographic material in the position tracking buffer is based on the position start offset value plus an index associated with each byte of the cryptographic material written to the obfuscation buffer” (claim 1, instant application) is analogous to
“A computer-implemented method for obfuscating cryptographic material stored in a memory, the method comprising: allocating a block of the memory for the cryptographic material, wherein the block of the memory comprises a header, an obfuscation buffer, and a position tracking buffer; determining a position start offset value; determining a random offset value for each byte of the cryptographic material to be written to the obfuscation buffer; writing each byte of the cryptographic material to a different location in the obfuscation buffer, wherein each different location is based on a different random offset value determined for each byte of the cryptographic material; and storing a location of each byte of the cryptographic material in the position tracking buffer, wherein a first location of a first byte of the cryptographic material in the position tracking buffer is based on the position start offset value and a subsequent location of each subsequent byte of the cryptographic material in the position tracking buffer is based on the position start offset value plus an index associated with each byte of the cryptographic material written to the obfuscation buffer” (claim 1, patent 12032493) and analogous to
“A computer-implemented method for obfuscating cryptographic material stored in a memory, the method comprising: allocating a block of the memory for the cryptographic material, wherein the block of the memory comprises a header, an obfuscation buffer, and a position tracking buffer; determining a position start offset value; writing first random data to the obfuscation buffer; writing second random data to the position tracking buffer; determining a random offset value for a first byte of the cryptographic material to be written to the obfuscation buffer; writing the first byte of the cryptographic material to the obfuscation buffer at a first address based on the random offset value; storing the first address at a second address in the position tracking buffer, wherein the second address is based on the position start offset value plus an index indicating which byte of the cryptographic material was written to the obfuscation buffer; and for each subsequent byte of the cryptographic material: determining a different random offset value for each subsequent byte of the cryptographic material; writing each subsequent byte of the cryptographic material to the obfuscation buffer at a different obfuscation buffer address based on the different random offset value determined for each subsequent byte of the cryptographic material; and storing each different obfuscation buffer address of each subsequent byte of the cryptographic material in the obfuscation buffer at a different address in the position tracking buffer, wherein each of the different addresses in the position tracking buffer is based on the position start offset plus an index indicating which byte of the cryptographic material was written to the obfuscation buffer” (claim 1, patent 11604740).
This is a provisional obviousness-type double patenting rejection because the conflicting claims of the instant application have not in fact been patented.
The claims of the conflicting patents and/or applications contain every element of claims 1-20 of the instant application and thus anticipate the claims of the instant application. Claims 1-20 of the instant application therefore are not patently distinct from the copending application claims and as such are unpatentable for obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species with that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
“Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is “anticipated” by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim) 4. This court’s predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic claim. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: the remaining references put forth on the PTO-892 form are directed to data storage obfuscation techniques, Pogmore (20130086393), Asher (8806439), Garner (8719588), Farrugia (8667301, 20110246787), Morita (20110219173), Coomer (9059838), Sklyarov (7783046), Anckaert (20100106920).
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David García Cervetti whose telephone number is (571)272-5861. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/David Garcia Cervetti/Primary Examiner, Art Unit 2409