DETAILED ACTION
This office action is in response to the correspondence filed on 06/10/2026. Claims 1-2 and 9-11 are still pending and are examined. Claims 3-8 and 12-15 are withdrawn.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of invention Group I in the reply filed on 06/10/2026 is acknowledged. The traversal is on the ground(s) that claim 1 is a generic or linking claim. For example, each of claims 3-4 of Group II and claims 5-8 and 12-15 of Group III depend directly or indirectly from base independent claim 1. This is not found persuasive because per PCT Written Opinion of the Internation Search Authority entered 01/24/2025, claim 1 is disclosed by prior art D1 (Foster), and therefore, it is not a special technical feature. Group I-III lack unity of invention because even though the inventions of these groups require the technical feature of a PUF in claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Foster (US Pub No. 20190156066 A1).
In addition, per MPEP § 823: "The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis)". I.e, “generic or linking claim” is not applicable in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis).
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 12/23/2024, 01/05/2025, and 04/10/2026. The submission is 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-2, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 32, of copending Application No. 18864383. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are anticipated by the copending application claim. Both the instant application and the copending application are claiming the basic working structure of a ‘PUF’ as seen in the example below in claim 1 of the instant application and claim 1 of the copending application. The instant application is broader in scope and has essentially the same steps as the copending application
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application
Copending U.S. Application No. 18864383
1. (Original) A physically unclonable function, 'PUF', configured to receive a challenge signal and produce a response signal dependent on the challenge signal in response thereto;
wherein the PUF comprises a photonic crystal structure of plural dimensionality which is configured to:
be illuminated by an optical input signal which is, or is derived from, the challenge signal;
and
responsive thereto, produce an optical output signal dependent on the optical input signal's interaction with the photonic crystal structure, wherein the response signal is, or is derived from, the optical output signal.
32. (New) A physically unclonable function, 'PUF', configured to receive a challenge signal, mixed with a scattered signal from an environment of the PUF, and produce a response signal dependent on the challenge signal in response thereto,
the response being for authenticating identity of the PUF and authenticating the environment; wherein the PUF comprises a photonic crystal structure of plural dimensionality which is configured to:
be illuminated by an optical input signal which is, or is derived from, the challenge signal; and
responsive thereto, produce an optical output signal dependent on the optical input signal's interaction with the photonic crystal structure, wherein the response signal is, or is derived from, the optical output signal.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Foster et al. (US Pub No. 20190156066 A1, referred to as Foster).
Regarding claims 1-2, taking claim 1 as exemplary, Foster anticipates,
1. (Original) A physically unclonable function, 'PUF', configured to receive a challenge signal and produce a response signal dependent on the challenge signal in response thereto; (Foster: par. 70,
see also fig. 11 and 22A; the response waveform, or phota," is generated by illuminating the cavity with a spectrally encoded ultrashort optical pulse called an authentication challenge. Due to the cavity design, the input pulse excites an extremely large number of spatial modes that interact with the structural randomness of the cavity to produce at the output port a rich spectra-temporal response the characteristics of which verify the authenticity of the cavity.) wherein the PUF comprises a photonic crystal structure of plural dimensionality which is configured to: (Foster: see fig. 2F and par. 62)
be illuminated by an optical input signal which is, or is derived from, the challenge signal;
and (Foster: par. 70, illuminating the cavity with a spectrally encoded ultrashort optical pulse called an authentication challenge.)
responsive thereto, produce an optical output signal dependent on the optical input signal's interaction with the photonic crystal structure, wherein the response signal is, or is derived from, the optical output signal. (Foster: par. 70, the response waveform, or phota, is generated by illuminating the cavity with a spectrally encoded ultrashort optical pulse called an authentication challenge. Due to the cavity design, the input pulse excites an extremely large number of spatial modes that interact with the structural randomness of the cavity to produce at the output port a rich spectra-temporal response the characteristics of which verify the authenticity of the cavity.)
Examiner notes per instant specification: page 1, lines 20-25, a PUF is a device configured to receive a defined input or challenge signal and provide a physically defined response thereto which serves as a unique identifier.)
Regarding claim 9, Foster anticipates,
9. (Currently Amended) A method of using the PUF of claim 1, the method comprising:
receiving the challenge signal; and (Foster: par. 70, illuminating the cavity with a spectrally encoded ultrashort optical pulse called an authentication challenge)
producing the response signal. (Foster: par. 70, the response waveform, or phota, is generated by illuminating the cavity with a spectrally encoded ultrashort optical pulse called an authentication challenge. Due to the cavity design, the input pulse excites an extremely large number of spatial modes that interact with the structural randomness of the cavity to produce at the output port a rich spectra-temporal response the characteristics of which verify the authenticity of the cavity.)
Regarding claim 10, Foster anticipates,
10. (Original) An authentication method comprising:
generating a list of challenge-response pairs, 'CRPs', by performing the method of claim 9 repeatedly using different challenge signals and recording the corresponding response signals;
and (Foster: par. 70, see also fig. 11, CRP library.)
securely communicating a different subset of the CRPs to each of a plurality of challengers so that each challenger of the plurality can confirm that a correspondent is in possession of the PUF by transmitting a challenge signal selected from their subset of the CRPs to the correspondent and confirming that a response signal received from the correspondent matches the response signal corresponding to the selected challenge signal. (Foster: par. 70, see also fig. 11, CRP library.)
Claim Rejections - 35 USC § 103
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Foster in view of Pinkseet al. (US Pub No. 20150229482 A1, referred to as Pinkse).
Regarding claim 11, Foster discloses,
11. (Currently Amended) An authentication method comprising:
receiving a message comprising a challenge signal and a predicted response signal;
performing the method of claim 9; and (Foster: par. 70)
Foster does not explicitly disclose, however Pinkse teaches,
determining whether an originator of the message is authenticated based on a comparison between the response signal produced and the predicted response signal. (Pinkse: par. 5; a PUF owner should typically prove access to a secret by presenting his PUF to a verifying party. The verifying party sends a signal called challenge to the PUF, and the PUF then creates a unique and hard to predict reply signal called response. This response is supplied back to the verifying party so that it can be verified that the PUF owner actually has authorized access to the secret or resource (determining).)
It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to implement the teachings of Pinkse into the teachings of Foster with a motivation to provide a robust verification system for authentication by comparing response signals.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bares; William Henry et al. US-PGPUB US 20120290845 A1 Predicting a response of a physical unclonable function (PUF) circuit to a challenge.
PLUSQUELLIC; James et al. US-PGPUB US 20210135887 A1 Correlation-based robust authentication technique using helper data only
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KA SHAN CHOY whose telephone number is (571) 272-1569. The examiner can normally be reached on MON - FRI: 9AM-5:30PM EST Alternate Fridays.
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/KA SHAN CHOY/Primary Examiner, Art Unit 2435
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