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 .
DETAILED ACTION
This Office Action is in response to the application 18/794,714 filed on 08/05/2024.
Claims 1-20 has been examined and is pending in this application.
Examiner’s notes
In attempt to accelerate the prosecution process, the Examiner called on 12/16/2025 to DAVID SCANLON (Reg. No. 81,672) at 704-331-7443 to propose to file terminal disclaimer to overcome double patenting rejection and to amend claims to clarify the invention. However, on 01/02/2026, Mr. David confirmed that applicant does not want to accept the examiner's amendment.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 08/05/2024, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
This application is a continuation of U.S. application No. 17/657,274, filed on March 30th, 2022 (Now U.S. patent No. 12,088,704).
Claim Objections
Claim 15 objected to because of the following informalities:
Regarding claim 15, claim 15 recites “the computer program product comprising ………. storing software instructions that, when executed, cause a device to:” which is unclear. It is not clear stored instructions executed by a device or something else.…”
Appropriate correction(s) is required.
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 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 8 and 15 contain subject matter, “encrypting, by data protection circuitry of the first device, first data using the second key”, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification, par. [0093] describes once the common key (and, in some embodiments, the new key) is obtained by the computing devices, various cryptographic data protection actions may be performed using the common key (or the new key). In this regard, as shown by operation 812, the apparatus 300 may include means, such as processor 302, memory 304, data protection circuitry 310, or the like, for performing a cryptographic data protection action using the common key or the new key. For example, each computing device 202A-202D now possesses a key which can be used to securely communicate with any of the other computing devices. Further, the end devices (computing device 202A and 202D) may now securely communicate data (e.g., encrypted with the new key) with each other without the intermediary devices gaining knowledge of the data.
However, the specification does not include description of subject matter, “…encrypting, by data protection circuitry of the first device, first data using the second key”. In other words, there is NOT any encrypting first data described in the specification.
Claims 1, 8 and 15 contain subject matter, “deriving, by key derivation circuitry of the first device, a second key based on the common key and a predetermined parameter set known to the first device and the third device”, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification, par. [0069] describes As shown by operation 604, the apparatus 300 includes means, such as processor 302, memory 304, key derivation circuitry 312, or the like, for generating a second key based on the second random bit set. The second key may be derived using a KDF that uses the random bit set as an input to the KDF. For example, each of the computing devices 202C and 202B may use the same KDF to each derive the second key using the second random bit set obtained by the computing devices. In this regard, the particular KDF used by each of the computing devices 202C and 202B to derive the second key may be predetermined in a prior agreement between the devices.
However, the specification does not include description of subject matter, “…deriving, by key derivation circuitry of the first device, a second key based on the common key and a predetermined parameter set known to the first device and the third device”. In other words, there is NOT any second key based on the common key and a predetermined parameter described in the specification.
Regarding claims 2-7, 9-14 and 16-20; claims 2-7, 9-14 and 16-20 are dependent on claims 1, 8 and 15, and are analyzed and rejected accordingly.
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.
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.
Regarding claims 1, 8 and 15, claims 1, 8 and 15 recite “wherein the common key originated from a third device …….” which is unclear. It is not clear how the common key originated from a third device. According to the specification par. [0011, 0062 and 0088-0089], The common key is generated based on a random bit set obtained by the first device and a second device, the second device having also generated the common key based on the random bit set. If the KCVs match, it can be assumed that the end computing devices 202A and 202D (as well as all intermediary devices, e.g., computing devices 202B and 202C) have each correctly obtained the same common key. In this regard, once all computing devices have obtained the common key, it may be desired for the end devices (e.g., computing devices 202A and 202D) to securely communicate data without the intermediary devices (e.g., computing devices 202B and 202C) gaining knowledge of the data. To do so, both computing device 202A and computing device 202D may derive a new key based on the common key.
Regarding claims 1, 8 and 15, claims 1, 8 and 15 recite “deriving, by key derivation circuitry of the first device, a second key based on the common key and a predetermined parameter set known to the first device and the third device …….” which is unclear. According to the specification par. [0089-0090], In this regard, once all computing devices have obtained the common key, it may be desired for the end devices (e.g., computing devices 202A and 202D) to securely communicate data without the intermediary devices (e.g., computing devices 202B and 202C) gaining knowledge of the data. To do so, both computing device 202A and computing device 202D may derive a new key based on the common key. The new key may be derived based on the common key and a predetermined parameter set known only to computing device 202A and computing device 202D.
Regarding claims 1, 8 and 15, claims 1, 8 and 15 recite ““encrypting, by data protection circuitry of the first device, first data using the second key”, …….” which is unclear. According to the specification par. [0091], Once the new key is derived at computing device 202A and computing device 202D, the new key may be used to perform various cryptographic data protection actions. For example, computing device 202A may encrypt data using the new key and cause transmission of the encrypted data to computing device 202D (e.g., via intermediary computing devices 202B and 202C). Computing device 202D may then decrypt the data using the new key.
Regarding claims 2-7, 9-14 and 16-20; claims 2-7, 9-14 and 16-20 are dependent on claims 1, 8 and 15, and are analyzed and rejected accordingly.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
“The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. “
Claims 1-3, 7-10 and 14-17 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-5, 8-12 and 15-17 of U.S. Patent Application U.S. Patent Application No. 17/657,274 (Now U.S. patent No. 12,088,704). Although the claims at issue are not identical, they are not patentably distinct from each other because pending application has all the limitations of U.S. patent No. 12,088,704. The examiner underlined the difference in claim language.
Current Application No. 18/794,714
U.S. Patent Application No. 17/657,274 (Now U.S. patent No. 12,088,704)
Claims 1, 8 and 15, A method/device/ computer program product for secure key exchange, the method comprising:
receiving, by communications hardware of a first device, a message from a second device that is an intermediary device between the first device and a third device, wherein the message comprises a common key and is encrypted using a first key shared between the first device and the second device, the first key having been derived based at least on a first random bit set distributed to the first device and the second device, and wherein the common key originated from a third device;
decrypting, by data protection circuitry of the first device, the message using the first key to obtain the common key;
deriving, by key derivation circuitry of the first device, a second key based on the common key and a predetermined parameter set known to the first device and the third device;
encrypting, by data protection circuitry of the first device, first data using the second key; and
causing, by the communications hardware the first device and via the second device, transmission of the encrypted first data to the third device, the third device being enabled to decrypt the encrypted first data by having also derived the second key based on the common key and the predetermined parameter set.
Claims 1, 8 and 15, A method/device/ computer program product for secure key exchange, the method comprising:
deriving, by key derivation circuitry of a first device, a first key using at least a first random bit set distributed to a first pair of devices including the first device and a second device, the second device having also derived the first key using the first random bit set;
deriving, by the key derivation circuitry of the first device, a second key using at least a second random bit set distributed to a second pair of devices including the first device and a third device, the third device having also derived the second key using the second random bit set;
receiving, by communications hardware of the first device, a message from the second device, wherein the message received from the second device is encrypted using the first key derived by the first device and the second device, and wherein the message contains a common key derived based at least on a third random bit set known to the first device and the second device;
decrypting, by data protection circuitry of the first device, the message using the first key derived by the first device and the second device to produce a decrypted message;
encrypting, by the data protection circuitry of the first device, the decrypted message using the second key derived by the first device and the third device; and
causing transmission, by the communications hardware of the first device, of the encrypted message containing the common key to the third device, the third device being enabled to decrypt the encrypted message using the second key derived by the first device and the third device to obtain the common key and securely communicate with the first device and the second device, wherein each pair of devices respectively derive a key by using a random bit set known only to each device in the respective pair.
Claims 2-3, 7, 9-10, 14 and 16-17
Claims 2-5, 9-12 and 16-17
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 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 of this title, 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 1-6, 8-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Zibuschka (US 2018/0124029) and in view of Lee (US 11,689,360).
Regarding claim 1, Zibuschka discloses a method for secure key exchange (Zibuschka Abstract; The method comprises encrypting and decrypting, with a processor of the first device, communications with other devices in the group of devices using a shared key that is stored in a memory of each device in the group of devices), the method comprising:
receiving, by communications hardware of a first device, a message from a second device that is an intermediary device between the first device and a third device, wherein the message comprises a common key and is encrypted using a first key shared between the first device and the second device, the first key having been derived based at least on a first random bit set distributed to the first device and the second device, and wherein the common key originated from a third device (Zibuschka abstract, par. 0031, 0045 and claim 1; Receiving, with a transceiver of the first device, a first message from a second device in the group of devices; The method comprises encrypting and decrypting, with a processor of the first device, communications with other devices in the group of devices using a shared key that is stored in a memory of each device in the group of devices. Transmitting, with the first device, the shared key to a third device in the network. Once the device 102 has been joined into a user-generated sphere 104, the processor 202 is configured to encrypt outgoing messages to other member devices 102 in the sphere 104 using the respective sphere key for the sphere. Particularly, the processor 308 of the owner device 106 is configured to generate a sphere key SEC.sub.i for the newly created sphere 104. In one embodiment, the sphere key SEC.sub.i comprises a very long number or alphanumeric string that is generated randomly or pseudo-randomly. See also par. 0017, 0023 and 0062);
decrypting, by data protection circuitry of the first device, the message using the first key to obtain the common key (Zibuschka abstract and par. 0062; The method comprises encrypting and decrypting, with a processor of the first device, communications with other devices in the group of devices using a shared key that is stored in a memory of each device in the group of devices; In response to the message header including the sphere identifier for the respective sphere 104, the processor 202 is configured to use the sphere key SEC.sub.i for the respective sphere 104 to decrypt a body of the message. Additionally, in one embodiment, the processor 202 is configured to encrypt information relating to the respective sphere 104 using the sphere key SEC.sub.i for the respective sphere 104 before storage in the memory 204);
deriving, by key derivation circuitry of the first device, a second key based on the common key and a predetermined parameter set known to the first device and the third device (Zibuschka abstract and par. 0031 and 0045; The method comprises encrypting and decrypting, with a processor of the first device, communications with other devices in the group of devices using a shared key that is stored in a memory of each device in the group of devices. Transmitting, with the first device, the shared key to a third device in the network. Once the device 102 has been joined into a user-generated sphere 104, the processor 202 is configured to encrypt outgoing messages to other member devices 102 in the sphere 104 using the respective sphere key for the sphere. Particularly, the processor 308 of the owner device 106 is configured to generate a sphere key SEC.sub.i for the newly created sphere 104. In one embodiment, the sphere key SEC.sub.i comprises a very long number or alphanumeric string that is generated randomly or pseudo-randomly. See also par. 0017 and 0023);
encrypting, by data protection circuitry of the first device, first data using the second key (Zibuschka abstract and par. 0031; The method comprises encrypting and decrypting, with a processor of the first device, communications with other devices in the group of devices using a shared key that is stored in a memory of each device in the group of devices. Transmitting, with the first device, the shared key to a third device in the network. Once the device 102 has been joined into a user-generated sphere 104, the processor 202 is configured to encrypt outgoing messages to other member devices 102 in the sphere 104 using the respective sphere key for the sphere. See also par. 0062).
Zibuschka discloses receiving, by communications hardware of a first device, a message from a second device and transmitting, with the first device, the shared key to a third device (Zibuschka abstract and claim 1). However, Zibuschka does not explicitly disclose causing, by the communications hardware the first device and via the second device, transmission of the encrypted first data to the third device.
However, in an analogous field of key distribution, Lee discloses causing, by the communications hardware the first device and via the second device, transmission of the encrypted first data to the third device (Lee abstract, col. 7; lines 60-64; The first quantum cryptographic key is encrypted with a third quantum cryptographic key shared between the 1-2 quantum key distribution device QKD1-2 112 and the 3-1 quantum key distribution device QKD3-1 131 and is transmitted ); the third device being enabled to decrypt the encrypted first data by having also derived the second key based on the common key and the predetermined parameter set (Lee abstract, col. 12; lines 66-67 and col. 13; lines 1-4; The third quantum node controller QNC3 135 receives the encrypted first quantum cryptographic key and decrypts the encrypted first quantum cryptographic key with the third quantum cryptographic key (Key_AC of FIG. 6), thereby extracting the first quantum cryptographic key ((h) of FIG. 6)).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the key distribution system of Zibuschka using key distribution system taught in Lee in order to generates a quantum cryptographic key and encrypts data using the obtained quantum cryptographic key to perform communication (Lee col. 1; lines 59-62).
Regarding claim 2, Zibuschka and Lee disclose the method of claim 1,
Zibuschka further discloses wherein causing transmission of the encrypted first data to the third device via the second device comprises causing transmission of the encrypted first data to the second device to enable the second device, as the intermediary device between the first device and the third device, to cause transmission of the encrypted first data to the third device, and wherein the second device is unable to decrypt the encrypted first data having not derived the second key (As seen in par. 0017, 0023 and 0045 of Zibuschka. Zibuschka teaches the user-generated sphere 104 is associated with a shared secret, cryptographic key, or “sphere key”, which is used to encrypt or otherwise secure communications between member devices 102 of the respective sphere 104. Each sphere 104 defines a group of trusted member devices 102 and is associated with a shared secret, cryptographic key, or “sphere key”, which is used to encrypt or otherwise secure communications between member devices 102 of the respective sphere. Generating a sphere key for the new sphere using a processor (block 420). Particularly, the processor 308 of the owner device 106 is configured to generate a sphere key SEC.sub.i for the newly created sphere 104. In one embodiment, the sphere key SEC.sub.i comprises a very long number or alphanumeric string that is generated randomly or pseudo-randomly);
Regarding claim 3, Zibuschka and Lee disclose the method of claim 1,
Zibuschka further discloses further comprising: encrypting, by the data protection circuitry of the first device, second data using the common key; and causing, by the communications hardware the first device, transmission of the encrypted second data to the second device and the third device, the second device and the third device being enabled to decrypt the encrypted second data by having also derived the common key ((Zibuschka abstract; The method comprises encrypting and decrypting, with a processor of the first device, communications with other devices in the group of devices using a shared key that is stored in a memory of each device in the group of devices)).
Regarding claim 4, Zibuschka and Lee disclose the method of claim 1,
Zibuschka further discloses further comprising: performing, by key confirmation circuitry of the first device, a key confirmation process that confirms whether the first device and the third device each possess at least one of the common key or the second key (Zibuschka abstract; par. 0017, 0023 and 0045; Each sphere 104 defines a group of trusted member devices 102 and is associated with a shared secret, cryptographic key, or “sphere key”, which is used to encrypt or otherwise secure communications between member devices 102 of the respective sphere. Particularly, the processor 308 of the owner device 106 is configured to generate a sphere key SEC.sub.i for the newly created sphere 104. In one embodiment, the sphere key SEC.sub.i comprises a very long number or alphanumeric string that is generated randomly or pseudo-randomly).
Regarding claim 5, Zibuschka and Lee disclose the method of claim 1,
Lee further discloses wherein the common key is initially derived using a first key derivation function (KDF), and wherein the second key is derived using a second KDF that is different from the first KDF (Lee col. 15; lines 14-22; The quantum cryptographic key distribution unit 240 performs a function of distributing the quantum cryptographic key generated by the quantum key distribution device QKD to a service device or the like. The random quantum cryptographic key generation/selection unit 250 generates a random quantum cryptographic key or selects one of the quantum cryptographic keys generated by the quantum key distribution device QKD, thereby selecting the first quantum cryptographic key).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the key distribution system of Zibuschka using key distribution system taught in Lee in order to generates a quantum cryptographic key and encrypts data using the obtained quantum cryptographic key to perform communication (Lee col. 1; lines 59-62).
Regarding claim 6, Zibuschka and Lee disclose the method of claim 1,
Zibuschka further discloses wherein the predetermined parameter set comprises a password known only to the first device and the third device (Zibuschka abstract; par. 0017, 0023 and 0045; Each sphere 104 defines a group of trusted member devices 102 and is associated with a shared secret, cryptographic key, or “sphere key”, which is used to encrypt or otherwise secure communications between member devices 102 of the respective sphere).
Regarding claims 8-13; claims 8-13 are directed to a device associated with the method claimed in claims 1-6 respectively. Claims 8-13 are similar in scope to claims 1-6 respectively, and are therefore rejected under similar rationale respectively.
Regarding claims 15-20; claims 15-20 are directed to a computer program product associated with the method claimed in claims 1-6 respectively. Claims 15-20 and are similar in scope to claims 1-6 respectively, and are therefore rejected under similar rationale respectively.
Claims 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Zibuschka (US 2018/0124029), in view of Lee (US 11,689,360) and further in view of Beausoleil (US 2006/0115086).
Regarding claim 7, Zibuschka and Lee disclose the method of claim 1,
Zibuschka and Lee failed to disclose but Beausoleil discloses wherein the first random bit set is generated via a quantum entangled random number generator (QERNG) (Beausoleil abstract and par. 0011; A quantum random number generator uses measurements of a quantum state to generate a random value. A quantum random number generator in accordance with a selected embodiment of the invention uses measurements of quantum states to produce a sequence of bits with randomness stemming from quantum physics).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the key generation system of Zibuschka and Lee using key generation system taught in Beausoleil in order to generate a random value and to authenticate that the quantum state had the required properties for generation of a random series having the desired statistics (Beausoleil abstract).
Regarding claim 14; claim 14 is directed to a device associated with the method claimed in claim 7. Claim 14 is similar in scope to claim 7, and is therefore rejected under similar rationale respectively.7
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANCHIT K SARKER whose telephone number is (571)270-7907. The examiner can normally be reached M-F 8:30 AM-5:30 PM.
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/SANCHIT K SARKER/Primary Examiner, Art Unit 2495