DETAILED ACTION
A response was received on 17 June 2026. By this response, Claims 1-5 have been amended. No claims have been added or canceled. Claims 1-5 are currently pending in the present application.
Response to Amendment
Applicant has not resubmitted the amendments to the specification and abstract as set forth in the preliminary amendment filed 31 October 2024 in a manner compliant with 37 CFR 1.121(b) and 1.72(b) as required in the previous Office action.
Further, the substitute specification does not comply with the requirements of 37 CFR 1.121(b)(3) and 1.125(b) and (c). In particular, the substitute specification is not clearly accompanied by a statement that the substitute specification includes no new matter as required by 37 CFR 1.125(b). Further, a clean copy of the substitute specification without markings has not been provided as required by 37 CFR 1.125(c). The copy of the substitute specification labeled as “clean” still appears to include numerous markings (for example, see paragraphs 0056, 0094-0095, 0098, 0107-0108, 0114, 0125, and 0130-0131). Still further, the substitute specification does not fully comply with the requirement of 37 CFR 1.125(c) that the substitute specification must include markings showing all changes relative to the immediate prior version of the specification of record. For example, because the preliminary amendment to the specification was not entered and was required to be resubmitted (see the Office action mailed 01 April 2026), the paragraph newly marked as paragraph 001 should be underlined showing added text. Further, there are numerous locations where text is marked with both strikethrough and underlining (for example, as a non-limiting example, see many paragraph numbers such as several paragraphs in the Background section, as well as other text such as in paragraphs 006 and 0016), making it unclear whether such text is intended to be part of the specification as amended. This is further compounded by inconsistencies between at least the paragraph numbering in the clean and marked-up versions of the substitute specification (which results in “empty” paragraphs in at least the marked-up copy). The substitute specification also does not clearly comply with the requirement of 37 CFR 1.125(c) that the text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot easily be perceived, noting that double brackets may also be used to show deletion of five or fewer consecutive characters. In particular, in at least paragraphs 0040-0041 and 0052-0056, it appears that certain text (such as punctuation marks), as well as white space throughout the specification, may be intended to be marked with strikethrough for deletion, but in the font and text color used, it is difficult to discern whether such text is, in fact, marked with strikethrough. Additionally, the substitute specification does not clearly comply with the requirement of 37 CFR 1.52(a)(iv) and (v) that all papers must be in permanent dark ink or its equivalent and have sufficient clarity and contrast to permit reproduction of legible copies. As per MPEP § 608.01 I., legibility includes ability to be photocopied and scanned, and the use of a black colored font text on a white background is strongly recommended. The text of many of the amendments appears to be in a non-black color and appears pixelated, which makes portions of the amended text difficult to read and which may not be properly scanned by optical character recognition. Because of the above deficiencies, the substitute specification has not been entered. Applicant is required to resubmit the substitute specification in a manner fully compliant with 37 CFR 1.121(b)(3) and 1.125, and Applicant is further still required to resubmit the amended abstract in a manner compliant with 37 CFR 1.72.
Response to Arguments
Applicant’s arguments with respect to the rejections of Claims 1-5 under 35 U.S.C. 103 have been considered but are moot in view of the new grounds of rejection set forth below.
Drawings
The objections to the drawings for informalities and as requiring a prior art label are withdrawn in light of the amended drawings filed.
It is noted that Applicant has stated that the amended drawings include changes to Figures 8 and 16-19 (page 6 of the present response). However, it does not appear that any changes have been made to Figure 19, and no explanation of changes to Figure 19 was provided (in contrast to the explanation of changes in Figures 8 and 16-18 on page 6 of the present response). Applicant is respectfully requested to clarify on the record whether any changes have been made to Figure 19 or if it remains as original.
Specification
As noted above, the substitute specification is not compliant with 37 CFR 1.121 and 1.125 for numerous reasons and has not been entered. As noted above, Applicant is required to resubmit the substitute specification in a manner compliant with 37 CFR 1.121(b)(3) and 1.125(b) and (c) and to resubmit the abstract in a manner compliant with 37 CFR 1.72.
The objection to the disclosure is NOT withdrawn because the substitute specification has not been entered. The non-compliant substitute specification has not been analyzed on the merits as to whether the objections have been overcome. The objections are repeated below for Applicant’s convenience.
The disclosure is objected to because of the following informalities:
It is noted that two versions of the specification have been provided as of the filing date; although it appears that the content is identical, the pagination is different. In the following description, reference will be made to the version of the specification filed 31 October 2024 having 27 pages.
The paragraph numbering in the specification is not clear, because numerous paragraph numbers appear to be followed by plural paragraphs. For example, see paragraph number 0002, which is followed by two paragraphs before paragraph number 0003; paragraph numbers 0004, 0007, and 0009, which are each followed by three paragraphs; and paragraph number 0011, which is followed by nineteen paragraphs. As per 37 CFR 1.52(b)(6), the paragraphs should be individually and consecutively numbered. See also MPEP § 608.01.
The specification includes minor grammatical and other errors. For example, in paragraph 0004, second paragraph, line 3, reference is made to a “public key/secret key pair”, and reference is made throughout the specification to secret keys. However, the key paired with an asymmetric public key is generally referred to as a private key, whereas the term “secret key” is generally used to refer to a symmetric key. Therefore, this usage is contrary to the accepted definition of the term and has not been redefined. In paragraph 0015, lines 6-7, the phrase “destination devices are a total of three devices” is not in clear idiomatic English. In paragraph 0016, lines 8-9, it is not clear what is meant by “a calculation subject who has performed the calculation together”; it is not clear what the calculation is performed together with. In paragraph 0019, line 4, it appears that “processing of these processing units” may be intended to read “processing by these processing units”. In paragraph 0022, lines 5-6, in the phrase “a public key PK paired with a secret key SK individually possessed by each destination device”, it is not clear what is meant by “individually possessed”. For example, it is not clear if the same secret (private) key is possessed by each destination device. In paragraph 0022, lines 7-9, and paragraph 0023, lines 5-7, it is not clear how simply distributing the first or second encrypted data would thereby cause the decryption of this data. In paragraph 0025, second paragraph, line 2, the phrase “an own key” is grammatically unclear and not in clear idiomatic English. Similar unclear use of “own key” or “own signature” appears throughout the specification. In paragraph 0029, third paragraph, line 4, it appears that “connecting” may be intended to read “concatenating”. In paragraph 0033, second paragraph, lines 3-4, it is not clear how the server “checks the transmitted public key PK10 with the signature SK10(R1)”; it appears that, instead, the signature would be checked with the public key (by decrypting the signature with the public key and comparing the results). See also paragraph 0036, third paragraph, and paragraph 0038, third paragraph. In paragraph 0039, second paragraph, line 3, the phrase “are a set to be” is grammatically unclear.
Appropriate correction is required. The above is not intended as an exhaustive list of errors in the specification. The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is again requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
The objections to Claims 1, 2, and 5 for informalities are withdrawn in light of the amendments thereto.
Claim Rejections - 35 USC § 112
The rejection of Claims 1-5 under 35 U.S.C. 112(b) as indefinite is NOT withdrawn, because the amendments have raised new issues, as detailed below.
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 1-5 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.
Claim 1 recites “a public key paired with a private key respectively possessed by each of the destination devices” in lines 5-6. The phrase “respectively possessed by each of the destination devices” is not clear as to whether each destination device possesses the same private key (paired with a single public key) or if there are to be plural public/private key pairs. Although the use of “respectively” suggests that it may be intended for each destination device to have its own key pair, the use of “a public key” and “a private key” is not clear as to whether each device has its own respective keys. The claim further recites “a calculation result, which is calculated by an offload destination device by executing an offload process” in lines 12-13. The tense of the verb “is calculated” makes the relative timing of when the calculation is performed by the offload device unclear. The above ambiguities render the claim indefinite.
Claim 2 recites “data used for processing by the common key distributer, and data used for processing by the data output circuit that are stored in the first protection region” in lines 4-6. It is not grammatically clear what these are intended to modify or be coordinated with. That is, it is not clear how these phrases relate grammatically to the remainder of the claim. It appears that only “stored data” in line 4 is the object of the verb “to protect… from unauthorized data access” and therefore the following phrases are not clear.
Claim 3 recites “a public key paired with a private key respectively possessed by each of the destination devices” in lines 7-8. The phrase “respectively possessed by each of the destination devices” is not clear as to whether each destination device possesses the same private key (paired with a single public key) or if there are to be plural public/private key pairs. Although the use of “respectively” suggests that it may be intended for each destination device to have its own key pair, the use of “a public key” and “a private key” is not clear as to whether each device has its own respective keys. The claim further recites “a calculation result, which is calculated by an offload destination device by executing an offload process” in lines 12-13. The tense of the verb “is calculated” makes the relative timing of when the calculation is performed by the offload device unclear. Further, it is not clear whether the offload destination device is intended to be an element of the claimed system. The claim additionally recites “data used for processing by the common key distributer, and data used for processing by the data output circuit that are stored in the first protection region” in lines 18-20. It is not grammatically clear what these are intended to modify or be coordinated with. That is, it is not clear how these phrases relate grammatically to the remainder of the claim. It appears that only “stored data” in line 18 is the object of the verb “to protect… from unauthorized data access” and therefore the following phrases are not clear. The claim also recites “the verifier verifies… determines… and distributes” in lines 27-31; it is not clear how the claimed system would include these steps, although it appears that this may be intended to recite that the verifier is configured to perform the steps. The above ambiguities render the claim indefinite.
Claim 4 recites “an offload destination device” in line 2. It is not clear whether this is intended to refer to the offload device of Claim 3 or to a distinct device. Claim 4 further recites “a signature of the offload destination device” in lines 3-4. However, it is not clear what is actually signed.
Claim 5 recites “a public key paired with a private key respectively possessed by each of the destination devices” in lines 7-8. The phrase “respectively possessed by each of the destination devices” is not clear as to whether each destination device possesses the same private key (paired with a single public key) or if there are to be plural public/private key pairs. Although the use of “respectively” suggests that it may be intended for each destination device to have its own key pair, the use of “a public key” and “a private key” is not clear as to whether each device has its own respective keys. The claim further recites “a calculation result, which is calculated by an offload destination device by executing an offload process” in lines 11-12. The tense of the verb “is calculated” makes the relative timing of when the calculation is performed by the offload device unclear. Further, it is not clear whether the calculating and/or executing are intended to be required steps of the claimed method. The above ambiguities render the claim indefinite.
Claims not explicitly referred to above are rejected due to their dependence on a rejected base claim.
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 1, 2, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Imbayashi, US Patent Application Publication 2022/0385455, in view of Matsuzaki et al, US Patent 6813357, and Hoshizuki, US Patent Application Publication 2020/0328882 (cited by Applicant).
In reference to Claim 1, Imbayashi discloses a distribution device that includes a common key distributer that generates a common key shared by plural devices (Figure 4, step S113; paragraph 0066, system key is common/symmetric key), generates first encrypted data by encrypting the common key by a public key paired with a private key possessed by a destination device (Figure 5, step S217; paragraph 0077, key encrypted by public key), and distributing the first encrypted data to the destination device which decrypts the common key (Figure 5, steps S219 and S221; paragraphs 0077-0078, key transmitted and decrypted); and a data output circuit that distributes second encrypted data, obtained by encrypting a calculation result using the common key, to the destination device which decrypts the calculation result (Figure 6, steps S315-S317; paragraph 0087, encrypted result is stored for later decryption). However, Imbayashi does not explicitly disclose a plurality of destination devices.
Matsuzaki discloses a distribution device that generates a common key that is distributed to plurality of destination devices and encrypted by a public key (for example, see Figures 1-3, base station 0 corresponding to distribution device and terminals 1-5 corresponding to destination devices; see also column 11, line 36-column 12, line 28). 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 device of Imbayashi to include multiple destination devices as taught by Matsuzaki, in order to allow distribution of a common key to plural terminals while allowing exclusion of certain terminals (see Matsuzaki, column 11, lines 36-55).
Further, although at least Imbayashi discloses offloading the calculation to an offload process (e.g. a separate calculation processor 131 in a virtual execution environment within the calculation server, see also steps S311-S319), Imbayashi does not explicitly disclose encrypting a calculation result which was calculated by an offload destination device by executing an offload process. However, Hoshizuki discloses a device where a calculation result to be encrypted is calculated by an offload destination device executing an offload process (see Figure 1, arithmetic apparatus 30 separate from server 20; see also Figure 6, steps S113-S117; paragraph 0062, arithmetic apparatus 30 can be an FPGA, for example, as described throughout the present specification as the offload device; see also paragraph 0084, arithmetic operation, i.e. calculation, performed by arithmetic apparatus, i.e. offload apparatus executing offload process). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the device of Imbayashi and Matsuzaki, in order to reduce the load on the server (see Hoshizuki, paragraph 0160) and to increase security by making it harder to perform illegal operations on the data (see Hoshizuki, paragraph 0062).
In reference to Claim 2, Imbayashi, Matsuzaki, and Hoshizuki further disclose a first protection region for protecting stored data from unauthorized data access where data used for processing by the distributer and output circuit are stored in the first protection region (Imbayashi, paragraph 0087, encrypted data can be stored in secure storage 116).
Claim 5 is directed to a method corresponding to the functionality of the distribution device of Claim 1, and is rejected by a similar rationale.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Imbayashi in view of Matsuzaki, Hoshizuki, and Hanna, US Patent 8104073.
In reference to Claim 3, Imbayashi discloses a system including a distribution device that includes a common key distributer that generates a common key shared by plural devices (Figure 4, step S113; paragraph 0066, system key is common/symmetric key), generates first encrypted data by encrypting the common key by a public key paired with a private key possessed by a destination device (Figure 5, step S217; paragraph 0077, key encrypted by public key), and distributes the first encrypted data to the destination device which decrypts the common key (Figure 5, steps S219 and S221; paragraphs 0077-0078, key transmitted and decrypted); and a data output circuit that distributes second encrypted data, obtained by encrypting a calculation result using the common key, to the destination device which decrypts the calculation result (Figure 6, steps S315-S317; paragraph 0087, encrypted result is stored for later decryption), as well as a first protection region for protecting stored data from unauthorized data access where data used for processing by the distributer and output circuit are stored in the first protection region (paragraph 0087, encrypted data can be stored in secure storage 116). However, Imbayashi does not explicitly disclose a plurality of destination devices.
Matsuzaki discloses a distribution device that generates a common key that is distributed to plurality of destination devices and encrypted by a public key (for example, see Figures 1-3, base station 0 corresponding to distribution device and terminals 1-5 corresponding to destination devices; see also column 11, line 36-column 12, line 28). 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 device of Imbayashi to include multiple destination devices as taught by Matsuzaki, in order to allow distribution of a common key to plural terminals while allowing exclusion of certain terminals (see Matsuzaki, column 11, lines 36-55).
Further, although at least Imbayashi discloses offloading the calculation to an offload process (e.g. a separate calculation processor 131 in a virtual execution environment within the calculation server, see also steps S311-S319), Imbayashi does not explicitly disclose encrypting a calculation result which was calculated by an offload destination device by executing an offload process. However, Hoshizuki discloses a device where a calculation result to be encrypted is calculated by an offload destination device executing an offload process (see Figure 1, arithmetic apparatus 30 separate from server 20; see also Figure 6, steps S113-S117; paragraph 0062, arithmetic apparatus 30 can be an FPGA, for example, as described throughout the present specification as the offload device; see also paragraph 0084, arithmetic operation, i.e. calculation, performed by arithmetic apparatus, i.e. offload apparatus executing offload process). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the device of Imbayashi and Matsuzaki, in order to reduce the load on the server (see Hoshizuki, paragraph 0160) and to increase security by making it harder to perform illegal operations on the data (see Hoshizuki, paragraph 0062).
Further, none of Imbayshi, Matsuzaki, or Hoshizuki explicitly discloses a second protection region in the destination devices and verifying the presence of the second protection region. However, Hanna discloses a system in which destination devices have a second protection region for protecting stored data from unauthorized access (Figure 1, endpoint device 4, TPM chip 22) where a verifier on a distribution device (health evaluation module 26 on access control device 20) verifies whether or not a destination device has a second protection region based on device information and if the verification passes allowing data to be sent to the destination device (column 4, line 63-column 5, line 64, determining presence of TPM, corresponding to second protection region; column 9,line 48-column 10, line 34, packets are sent if endpoint has acceptable configuration and signature from TPM is valid). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the system of Imbayashi, Matsuzaki, and Hoshizuki to include the verification of second protection regions on the destination devices as taught by Hanna, in order to allow secure exchange of network access control information (see Hanna, column 1, line 55-column 2, line 7).
In reference to Claim 4, Imbayashi, Matsuzaki, Hoshizuki, and Hanna further disclose an offload destination device calculating the calculation result (Imbayashi, calculation server 100) where the offload device transmits the calculation result and a signature (Imbayashi, step S317; Matsuzaki, column 16, lines 13-17, signature added to distributed data to improve security), the data output circuit distributes the second encrypted data and signature to each destination device (Imbayashi, step S317; Matsuzaki, plural destination devices terminals 1-5, and column 16, lines 13-17, signature), and the destination device verifies the result by decrypting the signature (Matsuzaki, column 16, lines 46-50, verifying signature).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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