DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 25-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the specification does not provide a definition for the claimed “computer-readable storage media”. A Broadest reasonable interpretation for the term “computer -readable storage media” would include both statutory embodiments and non-statutory embodiments such as signals. The words "storage" and/or "recording" are insufficient to convey only statutory embodiments to one of ordinary skill in the art absent an explicit and deliberate limiting definition or clear differentiation between storage media and transitory media in the disclosure. As such, the claim(s) is/are drawn to a form of energy. Energy is not one of the four categories of invention and therefore this/these claim(s) is/are not statutory. Energy is not a series of steps or acts and thus is not a process. Energy is not a physical article or object and as such is not a machine or manufacture. Energy is not a combination of substances and therefore not a composition of matter.
Amending the claims to recite a "non-transitory computer-readable storage media” would overcome this rejection.
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 25-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 25, 30, and 35 describe tracking one or more calls previously associated with the TPM or the operation, but the specification does not appear to describe the concept of tracking at all. The examiner notes that figure 5 and the associated description includes identifying whether or not the current call is an initial request, but that is not the same as the claimed tracking. Identifying whether something is an initial request does not explicitly or implicitly require tracking of prior calls. As an example, an initial request may simply take a specific form or be a specific command and non-initial requests may be identified simply by having a different form or being a different command, neither of which require any tracking of prior calls. Since the originally filed specification fails to detail how this tracking works or is integrated into the base system, the applicant’s claims fail to comply with the written description requirement. For the purposes of examination, the claimed tracking will be given its common and usual meaning which is to follow and note the course or progress of.
Claims 26-29, 31-34, and 36-39 are rejected as being dependent from, but failing to cure the deficiencies of, a rejected base claim.
Allowable Subject Matter
Claims 25-39 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, consistent with the interpretation provided by the examiner, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
[A] Xu et al. (NPL – Satem: Trusted Service Code Execution across Transactions)
XU et al. describes issuing calls to a TPM supported service (see, e.g., XU §4 #5), tracking the results of previous calls to a TPM and verifying authentication information (see, e.g., XU §4 #2 and #4, valid only if p = p’) and storing results in a protected memory region (XU, e.g., §5.1.1 #4).
[B] Bajikar et al. (US PGPub No. 2005/0039013)
Bajikar et al. describes that attestation information can be stored in the TPM (see, e.g., Bajikar:Fig 3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gary W Cygiel whose telephone number is (571)270-1170. The examiner can normally be reached Monday - Thursday 11am-3pm PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arpan P Savla can be reached at (571) 272-1077. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Gary W. Cygiel/Primary Examiner, Art Unit 2137