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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to a method of replacing a first secret with a second when multiple owners are detected, classified in H04L 9/0861.
II. Claims 16-20, drawn to a medium that generates cryptographic keys based on a second secret if ownership has changed, and otherwise based on a first secret, classified in H04L 9/0891.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination III has separate utility such as not replacing the first secret with the second, as is done in group I. Group II does not include a second secret. Each group has elements and limitations that are not in the other groups. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions are seen as divergent and require separate search strategies. It is also anticipated that each group would require a separate rejection, and might be amended in different directions based on those rejections.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Milin N. Patel on 5 January 2026 a provisional election was made without traverse to prosecute the invention of 1, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Applicant must cancel group 2, as discussed in the interview and outlined above.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 25 July 2024 and 18 July 2025 have been considered by the examiner.
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.
Claim 3-5 is 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.
Claims 3 and 5 recite the limitation "the baseboard management controller". There is insufficient antecedent basis for this limitation in the claims.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Egranov et al., USPN 2022/0058270.
With regard to claim 1, Egranov discloses a method including determining, by a management controller of a computer platform, whether an ownership history of management firmware for the management controller represents multiple owners (0045, 0047, 0003), wherein the management controller includes a set of one-time programmable elements that represent a first secret (0044, 0047), and managing use of the first secret based on the ownership history (0040, 0047), wherein the managing includes, responsive to determining, by the management controller, that the ownership history represents multiple owners (0112-0115, 0045, 0048), generating, by the management controller, a second secret to replace the first secret (0027, 0112-0115, 0067-0070), storing, by the management controller, the second secret in a non-volatile memory (0044), and generating, by the management controller, cryptographic keys based on the second secret (0054, 0111).
With regard to claim 2, Egranov discloses the method of claim 1, as outlined above, and further discloses determining, by the management controller, that the ownership history represents multiple owners based on a state of a one-time programmable element (0044, 0112-0115, 0045, 0048).
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.
Claims 3-5, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Egranov in view of Khatri et al., USPN 2023/0015519.
With regard to claim 3, Egranov discloses the method of claim 1, as outlined above, and further discloses determining, by the management controller, whether the second secret is stored in the non-volatile memory (0044), and generating, by the management controller, the second secret responsive to determining that the second secret is not stored in the non-volatile memory (0027, 0112-0115, 0044-0047, 0067-0070). Egranov does not disclose the management controller is a baseboard management controller. Khatri discloses a method for transferring security ownership, including firmware control, from one owner to another (0042), similar to that of Egranov, and further discloses implanting a baseboard management controller for network control (0027). The examiner further took official notice that it is well known in the art to use a baseboard management controller for allowing network control. This notice was not traversed and is thus taken as admitted prior art. It would have been obvious for one of ordinary skill in the art, prior to the instant effective filing date, to implement the BMC of Khatri or examiner’s notice in the platform of Egranov, for the motivation of improved remote monitoring and management of the host.
With regard to claim 4, Egranov in view of Khatri discloses the method of claim 3, as outlined above, and Egranov further discloses a firmware image is encrypted by a first cryptographic key (0036-0039, 0067, 0044, 0047), the method further including re-encrypting, by the management controller, the firmware image with a second cryptographic key other than the first cryptographic key responsive to the management controller determining that the second secret is not stored in the non-volatile memory (0056, 0036-0039, 0027, 0112-0115, 0044-0047, 0067-0070).
With regard to claim 5, Egranov in view of Khatri discloses the method of claim 3, as outlined above, and further discloses responsive to determining that the ownership history represents multiple owners, generating, by the management controller, a notification of a firmware ownership transfer; and communicating the notification to a remote management server (0112, 0053, 0060).
References Cited
Sakib et al., USPN 2022/0391510, discloses a system that transfers ownership using firmware (0028), and implements a baseboard management controller (0038), but was not seen as the best prior art to use in forming a rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB LIPMAN whose telephone number is (571)272-3837. The examiner can normally be reached 5:30AM-6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Shayanfar can be reached on 571-27050. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB LIPMAN/Primary Examiner, Art Unit 2434