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 2026-07-22 has been entered and fully considered.
In light of applicant’s amendment, filed 2026-07-22, the claim objections have been withdrawn.
Response to Arguments
Applicant’s arguments, see pages 1-2, filed 2026-07-22, with respect to the rejection of claims 28-29 under 35 U.S.C. § 102(a)(1) at ¶6 of the prior Office action as anticipated by “a general-purpose storage device” have been fully considered but they are not persuasive.
In particular, Applicant argues that the preamble of a “non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor, the computer program instructions defining steps of ...” requires storing the computer program, as the “present participle ‘storing’ is a structural attribute of the recited medium—it describes what the medium contains, not an aspirational reference to what an empty medium might one day be used to hold”. The Examiner respectfully submits, however, that the claim is directed to such an aspirational reference to what an empty medium might one day be used to hold. That is, the claim merely requires a “non-transitory computer-readable storage medium for tangibly storing”, and the “storing” requirement is merely part of the aspirational prepositional phrase “for tangibly storing”, thereby rendering the claim devoid of any actual requirement of storage of the computer program instructions.
The Examiner further notes that the Beauregard claims are still considered patentable subject matter; however, it is important to note that a proper Beauregard requires the non-transitory computer storage media to actually contain or store the software programming steps. Drafting the claims to encompass any non-transitory computer storage media that could be used “for tangibly storing” the computer program instructions expands the broadest reasonable interpretation of the claim to include a generic, empty storage device.
Thus, the Examiner respectfully submits that the rejection is proper.
Applicant’s arguments, see pages 1-2, filed 2026-07-22, with respect to the rejection of claims 1-2, 21-22, and 28-29 under 35 U.S.C. § 102(a)(1) at ¶7 of the prior Office action as anticipated by Zhang have been fully considered but they are not persuasive.
In response to applicant’s argument that Zhang fails to disclose “receive a command from an operating system” because Zhang allegedly does not describe an operating system as the source of the FC command, the Examiner respectfully disagrees. That is, Applicant alleges that an “external customer or manufacturer system connected to the PLD over a hardware configuration I/O bus is not an operating system, and the PLD fabric—the programmable logic array itself, executing a hardware bitstream—is not an operating system either”. The Examiner notes, however, that Applicant has provided no structural or functional distinction between the claimed “operating system” and the executing software that manages the “external system 130 of secure PLD customer 510 or secure PLD manufacturer 520” as disclosed in Zhang.
In determining the broadest reasonable interpretation of “an operating system” in accordance with MPEP § 2111, the Examiner first determined the plain meaning of “an operating system”, which is essentially any software that acts as an interface between a computer user and computer hardware and/or otherwise manages computing hardware. In addition, the Examiner notes that the Specification provides no special definition or disavowal of scope for an operating system, and instead broadly self-references the term with nebulous statements like “the operating system 108 can comprise a general-purpose operating system” ([0033]). Given that the programmable logic device (PLD) of Zhang actually receives an external command such as one “issued by PLD fabric 400 running a customer configuration programmed into secure PLD 410” – whatever the “running” configuration is that is “programmed into” the PLD may be considered an operating system, since it’s operating the PLD.
In response to applicant’s argument that Zhang fails to disclose “modify access to trace functionality in response to the command” because Zhang allegedly does not describe modifying access to trace functionality, the Examiner respectfully disagrees. That is, Applicant alleges that the claims require “operating-system-level kernel tracing subsystems—the mechanisms by which an operating system exposes runtime behavior of processes, the kernel, and the underlying hardware for observation”, whereas “Zhang’s PLD erasure and unlock operations have no relationship to any such tracing subsystem”. The Examiner respectfully submits, however, that Zhang’s PLD erasure and unlock operations do impact access to generic “trace functionality” such as claimed.
The Examiner first notes the specific trace functionality of dependent claims 5, 25, and 32 that each recite that “the trace functionality comprises one or more of access to ftrace, bpf, kprobes, uprobes, USDT tracepoints, LTTng, or perf event system calls” and/or the requirement for “operating-system-level kernel tracing subsystems” are not recited in the rejected claims and thus do not limit the scope of the generically claimed “trace functionality” of claim 1.
Further, the Examiner notes that Zhang makes clear that “by erasing/nullifying lock policy sectors 460 and resetting all lock statuses to an unlocked status … all assets/sectors/ports [become] accessible by PLD fabric 400 and/or over configuration I/O 448” ([0096]). These unlocked assets include “various security functions or features (e.g., decryption, authentication, and/or other security functions or features) in NVM 450 for use in performing a debug process” ([0096]). More particularly, the Examiner agrees that this erasure “is a destructive wipe of customer configuration and key material” as argued by Applicant, but the Examiner notes that the destructive wipe makes available (i.e., will “modify access to”) assets for use in performing a debug process. The Examiner further notes that making “all assets/sectors/ports” accessible inherently allows for “tracing” during a debug process. Further, even if such tracing functionality is not inherent, then it is at least at once envisaged; See MPEP §2131.02(III). Thus, the Examiner respectfully submits that the disclosure of removing all security restrictions and making “all assets/sectors/ports” accessible for debug access as disclosed in Zhang anticipated the generically claimed act of “modify access to trace functionality in response to the command”.
Thus, the Examiner respectfully submits that the rejection is proper.
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)(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 28-29 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by a general-purpose .
The Examiner notes that 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); See also MPEP 2111.01. It is noted that claims are directed towards a “non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed” with the instructions defining steps of the recited acts. As opposed to, e.g., a non-transitory computer-readable storage medium with instructions that, when executed by the processor, causes the processor to perform acts, the instant claim merely recites a storage “for tangibly storing” (i.e. an intended use) instructions “capable of being executed” to perform the following steps. That is, the claim does not require that the medium store the instructions that when executed perform the steps that follow (i.e., the claim does not require that the medium actually store the instructions that when executed perform the steps); instead, the claim encompasses embodiments such as a generic, non-programmed storage device that could be programmed or operated to perform the steps. Thus, the claim is met by any general-purpose storage device with sufficient storage that could be operable to store the instructions that perform the claimed acts vs a storage device programmed to perform the recited acts. Therefore, the claims are clearly anticipated by any general-purpose storage device with sufficient storage that is operable to perform the claimed steps.
Claims 1-2, 21-22, and 28-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (US Pre-Grant Publication No. 20210081578-A1, hereinafter “Zhang”).
With respect to independent claim 1, Zhang discloses a device comprising:
a write-protected storage device storing a public key {paras. 0060-0061: “NVM 450 may include multiple differentiated lockable sectors” that “granularly allow or disallow read, write, and/or erase access to the corresponding resource”, one of the sectors including “a device key sector 458 (e.g., an AES key sector and a separate public key/key pair sector)”}.
a controller {para. 0071: “secure PLD 410”}, the controller configured to:
receive a command from an operating system {para. 0093: “a logic device receives a failure characterization command”}.
validate the command using the public key {para. 0094: “secure PLD 410 may be configured to authenticate an FC command signed by an application private key using an application public key stored in NVM 450”}.
modify access to trace functionality in response to the command {paras. 0090-0100: “erasing/nullifying lock policy sectors 460 and resetting all lock statuses to an unlocked status (e.g., such that all assets/sectors/ports are accessible by PLD fabric 400 and/or over configuration I/O 448)” and “retain various security functions or features (e.g., decryption, authentication, and/or other security functions or features) in NVM 450 for use in performing a debug process or reinitializing a debugged secure PLD 410”; note that rending “all assets/sectors/ports” as accessible enables tracing functionality during “a debug process”; further, even if “trace functionality” is not inherent, then it is at least at once envisaged as part of a “debug process” from making assets and ports inspectable for the debug process; See MPEP § 2131.02(III)}.
With respect to dependent claim 2, Zhang discloses wherein the command to modify access to trace functionality comprises one of a command to allow access to trace functionality or a command to disallow access to trace functionality {paras. 0090-0100: “erasing/nullifying lock policy sectors 460 and resetting all lock statuses to an unlocked status (e.g., such that all assets/sectors/ports are accessible by PLD fabric 400 and/or over configuration I/O 448)” and “retain various security functions or features (e.g., decryption, authentication, and/or other security functions or features) in NVM 450 for use in performing a debug process or reinitializing a debugged secure PLD 410”}.
With respect to claims 21-22 and 28-29, a corresponding reasoning as given earlier in this section with respect to claims 1-2 applies, mutatis mutandis, to the subject matter of claims 21-22 and 28-29; therefore, claims 21-22 and 28-29 are rejected, for similar reasons, under the grounds as set forth for claims 1-2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
The reference US-20170288867-A1 also anticipates the claims by disclosing a storage device that will only unlock access to a diagnostic interface a solid-state storage if a request is signed by a private key corresponding to a public key stored by the storage device.
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 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 mailing 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.
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, 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.
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.
/Kevin Bechtel/
Primary Examiner, Art Unit 2491
Prosecution Insights