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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/21/2026 has been entered.
As per instant Amendment, claims 1 and 11 have been amended; claims 2 and 12 have been canceled; claims 1 and 11 are independent claims. Claims 1, 3-11 and 13-18 have been examined and are pending. This Action is made Non-Final.
Response to Arguments
Applicant's arguments filed 5/21/2026 have been fully considered but they are not persuasive and/or are moot in view of new grounds of rejection.
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.
Claim(s) 1, 3-5, 7, 8, 10, 11, 13-15 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2022/0107737 A1) in view of Nickerson et al. (US 2008/0027587 A1) and Chen (US 2009/0144455 A1) and Barney (US 2015/0143136 A1).
Regarding Claim 1;
Choi discloses a firmware protecting device, applied to an electronic device to protect firmware ([0084] - The firmware validity test may mean an operation of testing the validity of the operational firmware. Specifically, the firmware validity test may be an operation of testing the integrity of the operational firmware data based on the firmware data through an error detection algorithm), the firmware protecting device comprising:
a first memory, adapted to store the firmware (FIG. 4 – Volatile Memory Device w/ Operational Firmware Data Storage and [0007] - ...a volatile memory device configured to store operational firmware data... and [0011]);
a second memory (FIG. 4 and Nonvolatile Memory Device w/ Firmware Data and [0007] - a volatile memory device configured to store operational firmware data and [0011]) ;
and a control unit (FIG. 4 – Firmware controller and [0096]-[0097] - The firmware controller 210 may execute operational firmware based on the operational firmware data. When power is applied to the storage device 1000, the firmware controller 210 may load firmware data stored in the nonvolatile memory device 100, and store the firmware data as operational firmware data in the volatile memory device 220), and the control unit comprising:
a detection module, adapted to detect the first memory to determine whether the firmware is tampered with ([0007] and [0011] and [0084] - The firmware validity test may mean an operation of testing the validity of the operational firmware. Specifically, the firmware validity test may be an operation of testing the integrity of the operational firmware data based on the firmware data through an error detection algorithm); and
...when it is detected that the firmware is tampered with, ....using the ... original firmware to replace the tampered firmware ([0011] - the method including: loading firmware onto each of first and second memory regions; running the firmware loaded onto the first memory region; determining the running firmware as corrupted with reference to the firmware loaded onto the second memory region; and replacing the corrupted firmware with the firmware loaded onto the second memory region) [, and]
wherein the ... key is stored in a ... module (HSM) ((FIG. 4 and [0037]-[0038] and [0105] - In an embodiment, the volatile memory device 220 may be implemented as a tightly coupled memory (TCM). The TCM may mean a memory which only the firmware controller 210 having authority can access. For example, only a firmware controller having authority among a plurality of firmware controllers (not shown) may acquire data stored in the TCM, and a firmware controller having no authority may not acquire the data stored in the TCM and [0140] - For example, the volatile memory device 220 may store a signature 11 and an authentication key (i.e., a public key) 12, which are loaded from the nonvolatile memory device 100, in response to the power being applied to the storage device 1000).
Choi fails to explicitly disclose:
an encryption module, adapted to generate an encryption key, and encrypt the firmware by using the encryption key to generate encrypted data stored in the second memory;
[...]
a decryption module, adapted to decrypt, when it is detected that the firmware is tampered with, the encrypted data by using the encryption key to generate original firmware to replace the tampered firmware;
wherein both the first memory and the second memory are read-only memories (ROMs),
wherein the encryption key is stored in a hardware security module (HSM), and
wherein the hardware security module is an expansion card or an external device.
However, in an analogous art, Nickerson teaches
an encryption module, adapted to generate an encryption key, and encrypt the firmware by using the encryption key to generate encrypted data stored in the second memory ([0165] and [0222] - In some embodiments, the firmware image 33d is stored in memory 68 on the re-flash module 65g in an encrypted form. Further, the firmware image is transferred to the control panel 30 in the encrypted form and the bootloader contains the key to decrypt the image to be stored in the flash memory 33a providing additional security and/or protection so that even if the image is intercepted during transfer it is still encrypted.... In some embodiments, the firmware image 33d is validated prior to being encrypted and stored in the memory 68 on the module 65g.... which is then protected, such as by providing password protections, encrypting or otherwise protecting, for example by applying convolution (bit, byte, block or the like), applying exclusive OR (bit, byte, block level or the like), data encryption standard (DES), triple DES (3DES), substitution, RSA (Ron Rivest, Adi Shamir, and Leonard Adleman), digital signature standard (DSS), scrambling, digital signature algorithm (DSA), key encryption, public key encryption (PKI), CipherSaber, Rivest Cipher 2 (RC2), Rivest Cipher 4 (RC4), rearranging, content scrambling system (CSS), transposition, a combination of substitution and transposition, advanced encryption standard (AES), Diffe-Hellman (DH), secure hash algorithm (SHA), message digest algorithm (MD5), pretty good protection (PGP), and/or other such protections and/or combinations of protections.)
[...]
a decryption module, adapted to decrypt, when it is detected that the firmware is tampered with, the encrypted data by using the encryption key to generate original firmware to replace the tampered firmware ([0165] and [0222] - In some embodiments, the firmware image 33d is stored in memory 68 on the re-flash module 65g in an encrypted form.... Maintaining the firmware image 33d in the module 65g in an encrypted form provides protection of the firmware image... Further, the firmware image is transferred to the control panel 30 in the encrypted form and the bootloader contains the key to decrypt the image to be stored in the flash memory 33a providing additional security and/or protection so that even if the image is intercepted during transfer it is still encrypted.... [0223] – Additionally... The version of the firmware 33d can replace the firmware 33a of the control panel 30, which can provide the control panel with enhanced features, fix problems with a prior version of firmware, provide additional communication capabilities and the like.)
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Nickerson to the firmware protecting device of Choi to include an encryption module, adapted to generate an encryption key, and encrypt the firmware by using the encryption key to generate encrypted data stored in the second memory; [...] a decryption module, adapted to decrypt, when it is detected that the firmware is tampered with, the encrypted data by using the encryption key to generate original firmware to replace the tampered firmware.
One would have been motivated to combine the teachings of Nickerson to Choi to do so as it provides / allows providing additional security and/or protection so that even if the image is intercepted ... it is still encrypted (Nickerson, [0222]).
However, in an analogous art, Chen teaches [concepts of] wherein both a first memory and a second memory are read-only memories (ROMs) (FIG. 2 and [0014] - The first memory 66 can be a flash ROM for storing firmware data of the display device 62. The second memory 68 stores specification information of the display device 62, such as model or serial number of the display device 62. The second memory 68 can be an electrically erasable programmable read-only memory (EEPROM). The third memory 70 backs up old firmware of the display device 62, in which the third memory 70 can be a read only memory (ROM)).
A person of ordinary skill in the art would have the technical skills to make the mere substitution and the outcome would be predictable. Mainly, substituting one for the other achieves a predictable result because Chen uses a first memory and a second memory as read-only memories (ROMs) in the same role as Choi’s first memory and second memory. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a first memory and a second memory as read-only memories (ROMs) of Chen for the first memory and second memory of Choi in view of Nickerson to arrive at the claimed invention because such a step is known and results of the substitution would have been predictable (i.e., use of different variations of memories to store).
However, in an analogous art, Barney teaches [concepts of]
wherein the encryption key is stored in a hardware security module (HSM) ([0055]-[0057] - In another more detailed embodiment of the data processing and storage apparatus, the hardware security module is configured for: [0056] exclusively performing the encryption and the decryption operations in case the encryption and decryption operations are purely performed using the master cryptographic key stored in the internal storage), and
wherein the hardware security module is an expansion card or an external device ([0006] - The term "hardware security module", as used herein, shall extend to any physical computing device that safeguards and manages digital keys for strong authentication and provides crypto processing without revealing decrypted data. In particular, the term hardware security modules shall include FIPS 140-1 and 140-2 certified products. Hardware security modules may come in the form of a plug-in card or an external security device that can be attached directly to a server or general purpose computer through a network or universal serial bus (USB) connection).
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Barney to the firmware protecting device of Choi in view of Nickerson and Chen to include wherein the encryption key is stored in a hardware security module (HSM), and wherein the hardware security module is an expansion card or an external device.
One would have been motivated to combine the teachings of Barney to Choi in view of Nickerson and Chen to do so as it provides / allows to prevent tampering and bus probing (Barney, [0006]).
Regarding Claim 3;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1.
Nickerson further teaches wherein the firmware is a basic input/output system (BIOS) ([0112] - In preferred form, the communication bus is a multi-drop serial bus and is described further below. It is also noted that as used throughout this specification, the term "microcontroller" refers to an electrical device that minimally includes a processor logic (e.g., one or more microprocessors), memory (e.g., one or more memory devices), and inputs and outputs and is adapted to execute instructions based on information stored in memory either within the microcontroller or external to the microcontroller and [0103] - Some embodiments further provide abilities to provide new or revised operating code, instructions, software, programs and/or firmware to an irrigation controller without having to replace a processor or memory, and/or without having to take apart the irrigation controller. Firmware generally is a set of instructions, code and/or software that is embedded in a hardware device or memory).
Similar rationale and motivation is noted for the combination of Nickerson to Choi in view of Nickerson and Chen and Barney as per Claim 1, above.
Regarding Claim 4;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1. Choi further discloses wherein the control unit is an embedded controller (EC), and the ... key is stored in the embedded controller (FIG. 4 and [0037]-[0038] – The storage device 1000 may be a device including an embedded system and [0105] - In an embodiment, the volatile memory device 220 may be implemented as a tightly coupled memory (TCM). The TCM may mean a memory which only the firmware controller 210 having authority can access. For example, only a firmware controller having authority among a plurality of firmware controllers (not shown) may acquire data stored in the TCM, and a firmware controller having no authority may not acquire the data stored in the TCM and [0140] - For example, the volatile memory device 220 may store a signature 11 and an authentication key (i.e., a public key) 12, which are loaded from the nonvolatile memory device 100, in response to the power being applied to the storage device 1000).
Nickerson further teaches wherein the control unit is an embedded controller (EC), and the encryption key is stored in the embedded controller (FIG. 11 – Control Panel Circuitry w/ Microcontroller and Flash Memory and [0103] – ...embedded... and [0165] - In some embodiments, the firmware 33a of the control unit 30 includes a dedicated code, application and/or program, referred to below as bootloader code 33c (see FIG. 76, for example). The bootloader code 33c can be a limited functionality code that implements a re-flash of the firmware 33a and/or activates the irrigation controller to operate according to currently store firmware. For example, the flash memory 33 of the control unit 30 can store a version of the firmware that is about a 128 Kbyte image of the firmware code and [0222] - In some embodiments, the firmware image 33d is stored in memory 68 on the re-flash module 65g in an encrypted form. Further, the firmware image is transferred to the control panel 30 in the encrypted form and the bootloader contains the key to decrypt the image to be stored in the flash memory 33a providing additional security and/or protection so that even if the image is intercepted during transfer it is still encrypted....).
Similar rationale and motivation is noted for the combination of Nickerson to Choi in view of Nickerson and Chen and Barney, as per Claim 1, above.
Regarding Claim 5;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 4.
Choi further discloses wherein the embedded controller comprises a common access area and a safe access area, and the ... key is stored in the safe access area (FIG. 4 and [0037]-[0038] – The storage device 1000 may be a device including an embedded system and [0105] - In an embodiment, the volatile memory device 220 may be implemented as a tightly coupled memory (TCM). The TCM may mean a memory which only the firmware controller 210 having authority can access. For example, only a firmware controller having authority among a plurality of firmware controllers (not shown) may acquire data stored in the TCM, and a firmware controller having no authority may not acquire the data stored in the TCM and [0140] - For example, the volatile memory device 220 may store a signature 11 and an authentication key (i.e., a public key) 12, which are loaded from the nonvolatile memory device 100, in response to the power being applied to the storage device 1000).
Nickerson further teaches wherein the embedded controller comprises ... the encryption key is stored in the safe access area ([0165] and [0222] - In some embodiments, the firmware image 33d is stored in memory 68 on the re-flash module 65g in an encrypted form. Further, the firmware image is transferred to the control panel 30 in the encrypted form and the bootloader contains the key to decrypt the image to be stored in the flash memory 33a providing additional security and/or protection so that even if the image is intercepted during transfer it is still encrypted.... In some embodiments, the firmware image 33d is validated prior to being encrypted and stored in the memory 68 on the module 65g.... which is then protected, such as by providing password protections, encrypting or otherwise protecting, for example by applying convolution (bit, byte, block or the like), applying exclusive OR (bit, byte, block level or the like), data encryption standard (DES), triple DES (3DES), substitution, RSA (Ron Rivest, Adi Shamir, and Leonard Adleman), digital signature standard (DSS), scrambling, digital signature algorithm (DSA), key encryption, public key encryption (PKI), CipherSaber, Rivest Cipher 2 (RC2), Rivest Cipher 4 (RC4), rearranging, content scrambling system (CSS), transposition, a combination of substitution and transposition, advanced encryption standard (AES), Diffe-Hellman (DH), secure hash algorithm (SHA), message digest algorithm (MD5), pretty good protection (PGP), and/or other such protections and/or combinations of protections.)
Similar rationale and motivation is noted for the combination of Nickerson to Choi in view of Nickerson and Chen and Barney, as per Claim 1, above.
Regarding Claim 7;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1.
Choi further discloses wherein the first memory, the second memory, and the control unit are arranged on a motherboard (FIG. 4 – Memory Controller and Volatile Memory Device and Nonvolatile Memory Device and [0037]-[0038] – The storage device 1000 may be a device including an embedded system and [0039] - The storage device 1000 may be manufactured as one of various kinds of package types. For example, the storage device 1000 may be manufactured as any one of various kinds of package types such as a Package-On-Package (POP), a System-In-Package (SIP), a System-On-Chip (SOC), a Multi-Chip Package (MCP), a Chip-On-Board (COB), a Wafer-level Fabricated Package (WFP), and a Wafer-level Stack Package (WSP).
Regarding Claim 8;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1.
Choi further discloses wherein the control unit calculates a calculated value by using a hash algorithm for the firmware in the first memory, and compares the calculated value with a preset value to determine whether the firmware is tampered with ([0084]-[0085] - The firmware validity test may mean an operation of testing the validity of the operational firmware. Specifically, the firmware validity test may be an operation of testing the integrity of the operational firmware data based on the firmware data through an error detection algorithm. The error detection algorithm may mean, for example, a cyclic redundancy check (CRC), a checksum, a hash-based message authentication code (HMAC), an advanced encryption standard (AES), a Rivest Shamir Adleman-probabilistic signature scheme (RSA-PSS), and the like)
Regarding Claim 10;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1.
Choi further discloses wherein the electronic device comprises a trusted platform module (TPM) (FIG. 4. - Memory controller and [0084] - Specifically, the firmware validity test may be an operation of testing the integrity of the operational firmware data based on the firmware data through an error detection algorithm and [0092]), the trusted platform module is adapted to communicate with the first memory to determine whether the firmware is tampered with (FIG. 4 and [0105] - In an embodiment, the volatile memory device 220 may be implemented as a tightly coupled memory (TCM). The TCM may mean a memory which only the firmware controller 210 having authority can access. For example, only a firmware controller having authority among a plurality of firmware controllers (not shown) may acquire data stored in the TCM, and a firmware controller having no authority may not acquire the data stored in the TCM and [0084]-[0085] The firmware validity test may mean an operation of testing the validity of the operational firmware. Specifically, the firmware validity test may be an operation of testing the integrity of the operational firmware data based on the firmware data through an error detection algorithm and 0092] - memory controller 200 to perform the firmware validity test) As noted the error detection algorithm is a form of a trusted platform module, and notify, when the firmware is tampered with, the control unit ... use[s]... the original firmware to replace the tampered firmware ([0011] - the method including: loading firmware onto each of first and second memory regions; running the firmware loaded onto the first memory region; determining the running firmware as corrupted with reference to the firmware loaded onto the second memory region; and replacing the corrupted firmware with the firmware loaded onto the second memory region).
Nickerson further teaches wherein the electronic device comprises... a platform controller hub (PCH), when the firmware is tampered with, the control unit through the platform controller hub to use the encryption key to decrypt the encrypted data to generate the original firmware to replace the tampered firmware ([0165] and [0222] - In some embodiments, the firmware image 33d is stored in memory 68 on the re-flash module 65g in an encrypted form. Further, the firmware image is transferred to the control panel 30 in the encrypted form and the bootloader contains the key to decrypt the image to be stored in the flash memory 33a (i.e., as noted a form of a PCH) providing additional security and/or protection so that even if the image is intercepted during transfer it is still encrypted.... In some embodiments, the firmware image 33d is validated prior to being encrypted and stored in the memory 68 on the module 65g.... which is then protected, such as by providing password protections, encrypting or otherwise protecting, for example by applying convolution (bit, byte, block or the like), applying exclusive OR (bit, byte, block level or the like), data encryption standard (DES), triple DES (3DES), substitution, RSA (Ron Rivest, Adi Shamir, and Leonard Adleman), digital signature standard (DSS), scrambling, digital signature algorithm (DSA), key encryption, public key encryption (PKI), CipherSaber, Rivest Cipher 2 (RC2), Rivest Cipher 4 (RC4), rearranging, content scrambling system (CSS), transposition, a combination of substitution and transposition, advanced encryption standard (AES), Diffe-Hellman (DH), secure hash algorithm (SHA), message digest algorithm (MD5), pretty good protection (PGP), and/or other such protections and/or combinations of protections.)
Similar rationale and motivation is noted for the combination of Nickerson to Choi in view of Nickerson and Chen and Barney, as per Claim 1, above.
Regarding Claim(s) 11, 13-15 and 17-18; claim(s) 11, 13-15 and 17-18 is/are directed to a/an method associated with the device claimed in claim(s) 1, 3-5, 7, 8, and 10. Claim(s) 11, 13-15 and 17-18 is/are similar in scope to claim(s) 1, 3-5, 7, 8, and 10, and is/are therefore rejected under similar rationale.
Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2022/0107737 A1) in view of Nickerson et al. (US 2008/0027587 A1) and Chen (US 2009/0144455 A1) and Barney (US 2015/0143136 A1) and further in view of Kato (US 2012/0054501 A1).
Regarding Claim 6;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1.
Choi in view of Nickerson and Chen and Barney fail to explicitly disclose wherein the control unit generates the encryption key after the electronic device is turned on for the first time.
However, in an analogous art, Kato teaches wherein [a] control unit generates the encryption key after the electronic device is turned on for the first time ([0020] - Next, the processor 101 determines whether or not generation of an encrypting key is necessary (Act 102). In Act 102, the processor 101 detects, for example, an initial activation of the image processing apparatus 1, and determines that the generation of an encrypting key is necessary if detecting that an encrypting key is not stored on the FROM 107 and Claim 2).
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Kato to the firmware protecting device w/ control unit of Choi in view of Nickerson and Chen and Barney to include wherein [a] control unit generates the encryption key after the electronic device is turned on for the first time.
One would have been motivated to combine the teachings of Kato to Choi in view of Nickerson and Chen and Barney to do so as it provides / allows stor[ing] an encrypting key for encrypting ... data. (Nickerson, [0222]).
Regarding Claim(s) 16; claim(s) 16 is/are directed to a/an method associated with the device claimed in claim(s) 6. Claim(s) 16 is/are similar in scope to claim(s) 6, and is/are therefore rejected under similar rationale.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. (US 2022/0107737 A1) in view of Nickerson et al. (US 2008/0027587 A1) and Chen (US 2009/0144455 A1) and Barney (US 2015/0143136 A1) and further in view of Hung et al. (US 2018/0293192 A1).
Regarding Claim 9;
Choi in view of Nickerson and Chen and Barney disclose the device to Claim 1.
Choi in view of Nickerson and Chen and Barney fail to explicitly disclose wherein the control unit communicates with the first memory and the second memory respectively through two serial peripheral interfaces (SPIs).
However, in an analogous art, Hung teaches wherein the control unit communicates with the first memory and the second memory respectively through two serial peripheral interfaces (SPIs) ([0010] - Referring to FIGS. 2 and 3, FIG. 2 is a schematic diagram showing a basic architecture of a multi-memory collaboration structure based on SPI interface according to first and second embodiments of the invention, and FIG. 3 is a schematic diagram showing data transmission between a control module and first and second memories according to the first embodiment of the invention).
Therefore, it would have been obvious to one of ordinarily skill in the art before the effective filing date of the claimed invention to combine the teachings of Hung to the firmware protecting device of Choi in view of Nickerson and Chen and Barney to include wherein the control unit communicates with the first memory and the second memory respectively through two serial peripheral interfaces (SPIs).
One would have been motivated to combine the teachings of Hung to Choi in view of Nickerson and Chen and Barney to do so as it provides / allows use of a SPI interface, which may reduce the fabrication costs and reduce the package size (Hung, [0009]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 attached.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARI L SCHMIDT whose telephone number is (571)270-1385. The examiner can normally be reached Monday-Friday 10am - 6pm (MDT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu Pham can be reached at (571)270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARI L SCHMIDT/Primary Examiner, Art Unit 2439
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