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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/30/2024 & 12/23/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 8-9, 13-14 and 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-10 and 12-20 of U.S. Patent No. 11,444,771 and US Patent No. 17,941,442. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the instant application are anticipated by the claims of the patent.
Claim 8 of the instant application is mapped to claims 1 & 5 of the patent. Claim 9 of the instant application is mapped to claims 2-3 of the patent. Claim 13 of the instant application is mapped to claims 6-7 of the patent. Claims 14 & 18-19 of the instant application are mapped to claims 1, 3, & 5 of the patent. Claim mappings applies to both patent numbers.
Instant Application No. 18/778,802
US Patent No. 11,444,771
8. A method comprising: receiving, at a trusted partner system, a batch of activation codes from a key management server, each activation code associated with a unique identifier (UID) of a semiconductor device; storing the batch of activation codes in a secure hardware module of the trusted partner system;
1. A method comprising: storing a plurality of activation codes, each of the activation codes associated with a respective unique identifier (UID) of semiconductor device;
receiving, from a customer system, a key generation request including a UID and a device-generated response code;
receiving, over a network, a request to generate a new storage root key (SRK), the request including a response code and a requested UID;
retrieving, by the trusted partner system, an activation code associated with the received UID from the secure hardware module;
identifying a selected activation code from the plurality of activation codes based on the requested UID;
generating a shared storage root key (SHRSRK) using the device-generated response code and the retrieved activation code; storing the generated SHRSRK in association with the UID in the secure hardware module;
generating the SRK using the response code and the selected activation code; associating the SRK with the requested UID and storing the SRK;
and transmitting a key generation confirmation to the customer system without revealing the generated SHRSRK
and returning an acknowledgement in response to the request.
5. The method of claim 1, further comprising: transmitting a request for an activation code database to a key management server (KMS); receiving, in response to the request, the activation code database, the activation code database comprising the plurality of activation codes; and storing the activation code database in a hardware security module.
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.
Claim 1 is 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. The claim discloses “a key provisioning server” for storage, authenticating, identifying and generating, however, applicant’s specification discloses a trusted partner (TP) to perform the limitations (Figures 1 & 4A, specification paragraphs 0017 and 0052-0066). The claim discloses “receiving, by the key provisioning server from a semiconductor device a key generation request”, however, applicant’s specification discloses the trusted partner receiving from a customer system on behalf of the semiconductor device the request (Figures 1 & 2, specification paragraphs 0018-0019 and 0052-0066). The claim discloses “provisioning the generated deice-specific cryptographic key to the semiconductor” however, applicant specification only discloses a request with provision command and the TP to provision semiconductor devices after the current CAK value has changed (paragraphs 0023, 0036, 0050 and 0053).
Any claim not specifically addressed above is being rejected as incorporating the deficiencies of a claim upon which it depends.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, and Double Patenting set forth in this Office action.
Examiner’s Statement for Indicating Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: After a fully conducted search and consideration, the prior art either taken alone or in combination neither anticipates nor render obvious to the claimed subject matter of the instant application. The closest prior art Farmer, III (US Patent No. 10,609,070) discloses connecting to a provisioning site where the user connects to a site for which they want to provision their device to use this method 401; Login to account is the act of using a username and password to authenticate a connection 402; Detect client type is an operation where the provisioning site queries the client device for its type: laptop, smart phone, tablet or other device along with information on the operating system and other necessary information 407; Download the client is the operation to place a copy of the fingerprint client and other utilities appropriate to the client's configuration on the client device 408; Run the Client is the operation of executing the fingerprint software on the client 409; the web service 101 requests device provisioning from the central authority 105 410; the authorization client 103 connects to the central authority 105 411; the central authority 105 generates seeds for this client device and username combination 412; the central authority 105 generates a record for this entry with appropriate metadata 413; the central authority 105 sends the seeds to the authorization client 103 414; the authorization client 103 saves and encrypts these seeds locally (Farmer, column 4, lines 45-column 7, line 60 and Abstract), which is equivalent to claim limitations “receiving, at a trusted partner system, a batch of activation codes from a key management server, each activation code associated with a unique identifier (UID) of a semiconductor device; storing the batch of activation codes in the trusted partner system; one-time key validating”; the other relevant prior art Bowness (US Patent No. 9,432,339) discloses a method performed by a computing device for renewing a remote token. The method includes (a) receiving an activation code from the remote token across a network, the activation code including an identification of the token, (b) verifying that the activation code was cryptographically generated with reference to a one-time passcode (OTP) generated by the identified token using an initial key assigned to the token, and (c) in response to verifying, negotiating a new key with the token, the new key to be assigned to the token for use in producing OTPs in the future. Related computer program products, systems, and apparatuses are also described. (Bowness, Abstract), HARTLEY et al. (US Pub No. 2014/0205092) discloses securely provisioning copies of an electronic circuit. A first entity (e.g., a chip manufacturer) embeds one or more secret values into copies of the electronic circuit. A second entity (e.g., an OEM): 1) embeds a trust anchor in a first copy of the electronic circuit; 2) causes the electronic circuit to generate a message signing key pair using the trust anchor and the embedded secret value(s); 3) signs provisioning code using a code signing private key; and 4) sends a corresponding code signing public key, the trust anchor, and the signed provisioning code to a third entity (e.g., a product manufacturer). The third entity embeds the trust anchor in a second copy of the electronic circuit and causes the electronic circuit to: 1) generate the message signing private key; 2) verify the signature of the signed provisioning code using the code signing public key; and 3) launch the provisioning code on the electronic circuit. The electronic circuit can authenticate itself to the OEM using the message signing key pair. (HARTLEY, Abstract), Tseng (US Pub No. 2006/0005027) discloses a system, which is for verifying authenticity of an object that has a unique identification number, comprises an authentication code generating device that is adapted to be attached to the object. The authentication code generating device includes a chip that is operable so as to generate a varying secret key, a first authentication code based on the varying secret key, and a second authentication code based on the varying secret key and the unique identification number of the object. A verifying code can be generated, such as through an inquiry-based user interface, based on two of the first and second authentication codes and the unique identification number of the object, and can be matched to the remaining one of the first and second authentication codes and the unique identification number of the object in order to verify authenticity of the object. (Tseng, paragraph 0011), LEMSITZER et al. (US Pub No. 2020/0296135) discloses a method of provisioning customer device, including: receiving and securely storing an encryption key from a manufacturer of the security chip at the time of manufacture; receiving and securely storing a first secret token from a customer device manufacturer, wherein the first secret token is associated with a first service; providing the first secret token to a security device provisioning hub; receiving and securely storing access credentials to the first service; and connecting to the first service using the access credentials for the first service. (LEMSITZER, paragraphs 0013 & 0025), and Kanungo et al. (US Pub No. 2019/0297065) discloses a method of generating and managing a key package using a key manufacturing server. The key manufacturing server performs the steps of: (i) obtaining a key package from a development signing server; (ii) generating at least one production key that is specific to a device in the key package; (iii) communicating the key package with the at least one production key to a key manager associated with the device using a communication link; and (iv) obtaining the key package with at least one device key that is generated by the key manager. (Kanungo, Abstract), however, the prior art taken alone or in combination fails to teach or suggest “receiving, at a trusted partner system, a batch of activation codes from a key management server, each activation code associated with a unique identifier (UID) of a semiconductor device; storing the batch of activation codes in a secure hardware module of the trusted partner system; receiving, from a customer system, a key generation request including a UID and a device-generated response code; retrieving, by the trusted partner system, an activation code associated with the received UID from the secure hardware module; generating a shared storage root key (SHRSRK) using the device-generated response code and the retrieved activation code; storing the generated SHRSRK in association with the UID in the secure hardware module; and transmitting a key generation confirmation to the customer system without revealing the generated SHRSRK” (as recited in claim 8 and similarly in claims 1 & 14). Claims are allowed in light of the above claim limitations when in combination with the remaining claim limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAQUEAL D WADE whose telephone number is (571)270-0357. The examiner can normally be reached M-F 8:00-5:00.
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/SHAQUEAL D WADE-WRIGHT/Primary Examiner, Art Unit 2407