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 .
1. Instant application is a Continuation of Application No. 17/314865, now U.S. Patent 12,108,246. Claims 1-20 have been examined.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 09/25/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
3. Claims 10-15 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 10 recites, “receive a header from the primary node, wherein the includes a key refreshment counter value…”
Examiner believes “wherein the includes” should state “wherein the header includes” and will treat the claims as such for the remainder of the Office Action.
Claims 11-15 inherit the deficiency of the claim they depend on.
4. 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.
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.
5. Claims 1-5, 8-9 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Herzerg et al. (U.S. Patent Application Publication 2020/0007319; hereafter “Herzerg”), and further in view of Qi et al. (U.S. Patent Application Publication 2011/0150223; hereafter “Qi”).
For claims 1 and 16, Herzerg teaches a device and a method comprising:
a wireless interface (note paragraph [0041], network components of the controllers include wireless network cards/chip sets) configured to exchange data with a first secondary node during a current secure session (note paragraph [0051]-[0052] and [0090], steps 328, 334 and 338, messages are encoded with the current session key sent to the receiving ECU); and
a processing circuit coupled to the wireless interface and configured to derive a new network key for a subsequent secure session based on a key refreshment counter value (note paragraphs [0050] and [0089], if the message counter, i.e. key refreshment counter, for the current session has exceeded a maximum, a new session key is derived).
Herzerg differs from the claimed invention in that they fail to teach:
derive a new network key for a subsequent secure session based on a key change bit
Qi teaches:
derive a new network key for a subsequent secure session based on a key refreshment counter value (note paragraph [0016], key generation is triggered by packet number exhaustion, i.e. refreshment counter value) and a key change bit (note paragraph [0033], packets may contain a new key bit to indicate a receiver should change to a new key)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the subsequent session key generation based on counters of Herzerg and the new key bit of Qi. One of ordinary skill would have been motivated to combine Herzerg and Qi because it would provide a simple and convenient method for the sender to notify a recipient that they changed encryption keys.
For claims 2 and 17, the combination of Herzerg and Qi teaches claims 1 and 16, wherein the processing circuit is configured to derive the new network key without interrupting data communications between the device and a second secondary node (note Fig. 9-10 and paragraphs [0011], [0029], [0089] and [0097] of Herzerg, derivation of new session keys occurs “independently” by the sending and receiving ECUs to “continually maintain secure channels; i.e. without interrupting data communication; and note paragraphs [0066]-[0069] of Herzerg, ECUs store connection tables with different session keys and counters for each communication; i.e. deriving catch up network keys for one message type communication would not interrupt communications with other message types).
For claims 3 and 18, the combination of Herzerg and Qi claims 1 and 16, wherein the processing circuit is configured to derive the new network key based on the key refreshment counter value, the key change bit (note paragraph [0033] of Qi, packets may contain a new key bit to indicate a receiver should change to a new key), and a pre-shared key (note paragraphs [0050] and [0089] of Herzerg, if the message counter, i.e. key refreshment counter, for the current session has exceeded a maximum, a new session key is derived; new key is based on master key, i.e. pre-shared key, and the session counter concatenated with padding).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the subsequent session key generation based on counters of Herzerg and the new key bit of Qi. One of ordinary skill would have been motivated to combine Herzerg and Qi because it would provide a simple and convenient method for the sender to notify a recipient that they changed encryption keys.
For claims 4 and 19, the combination of Herzerg and Qi teaches claims 1 and 16, wherein the processing circuit is configured to derive the new network key based on the key refreshment counter value, the key change bit (note paragraph [0033] of Qi, packets may contain a new key bit to indicate a receiver should change to a new key), and a session count (note paragraphs [0050] and [0089] of Herzerg, if the message counter, i.e. key refreshment counter, for the current session has exceeded a maximum, a new session key is derived; new key is based on master key, i.e. pre-shared key, and the session counter concatenated with padding).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the subsequent session key generation based on counters of Herzerg and the new key bit of Qi. One of ordinary skill would have been motivated to combine Herzerg and Qi because it would provide a simple and convenient method for the sender to notify a recipient that they changed encryption keys.
For claim 5, the combination of Herzerg and Qi teaches claim 1, wherein the processing circuit is configured to:
perform pairing operations that include storage of network and key exchange information (note paragraphs [0036]-[0037] and [0066] of Herzerg, pair of communicating controller/ECUs establish and store shared secrets and counters in any of a variety of ways including public key cryptography, i.e. pairing operation); and
derive the new network key without another key exchange (note paragraph [0089] of Herzerg, new network key is generated based on current key, master key and counter, i.e. without performing another key exchange).
For claim 8, the combination of Herzerg and Qi teaches claim 1, wherein the processing circuit is configured to derive the new network key while the wireless interface is transmitting broadcast communications (note paragraphs [0036]-[0037] and [0050] of Herzerg, new network key is derived during communication of a group of controllers/ECUs, i.e. broadcast communication).
For claim 9, the combination of Herzerg and Qi teaches claim 1, wherein the processing circuit is configured to derive the new network key while the wireless interface is transmitting unicast communications (note paragraphs [0036]-[0037] and [0050] of Herzerg, new network key is derived during communication of a pair of controllers/ECUs, i.e. unicast communication).
6. Claims 6-7 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Herzerg and Qi as applied to claims 1 and 16 above, and further in view of Adler et al. (U.S. Patent Application Publication 2017/0359717; hereafter “Adler”).
For claims 6 and 20, the combination of Herzerg and Qi differs from the claimed invention in that they fail to teach:
identify a plurality of secondary nodes including the first secondary node based on broadcast communications transmitted by the wireless interface during a scanning phase; and
cause the wireless interface to transmit unicast communications to exchange network and security information with the plurality of secondary nodes identified in a scanning phase.
Adler teaches:
identify a plurality of secondary nodes including the first secondary node based on broadcast communications transmitted by the wireless interface during a scanning phase (note paragraph [0052] of Adler, pairing broadcast message during scanning phase); and
cause the wireless interface to transmit unicast communications to exchange network and security information with the plurality of secondary nodes identified in a scanning phase (note paragraph [0053] of Adler, devices go through pairing operation to exchange security information).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Herzerg and Qi and the pairing devices to exchange key information of Adler. It would have been obvious because combining prior art elements would yield the predictable results of performing a pairing operation to exchange key information (Adler) where the subsequent session keys are generated based on shared information without another key exchange (Herzerg, Qi and Adler).
For claim 7, the combination of Herzerg, Qi and Adler teaches claim 1, wherein new network key derived by the processing circuit enables forward secrecy, backward secrecy (note paragraph [0091] of Adler, ratchet of keys using current key and shared secret provides forward and backward secrecy), and nonce-key pair misuse prevention (note paragraph [0084] of Adler, new session keys prevent nonce misuse).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Herzerg and Qi and the pairing devices to exchange key information of Adler. It would have been obvious because combining prior art elements would yield the predictable results of performing a pairing operation to exchange key information (Adler) where the subsequent session keys are generated based on shared information without another key exchange (Herzerg, Qi and Adler).
7. Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Herzerg and Qi as applied to claim 1 above, and further in view of Kadansky et al. (U.S. Patent 6,295,361; hereafter “Kadansky”).
For claim 10, Herzerg teaches a device comprising:
a wireless interface (note paragraph [0041], network components of the controllers include wireless network cards/chip sets) configured to:
exchange data with a primary node during a current secure session (note paragraph [0051]-[0052] and [0090], steps 328, 334 and 338, messages are encoded with the current session key sent to the receiving ECU); and
a processing circuit coupled to the wireless interface and configured to derive a new network key for a subsequent secure session based on the key refreshment counter value (note paragraphs [0050] and [0089], if the message counter, i.e. key refreshment counter, for the current session has exceeded a maximum, a new session key is derived).
Herzerg differs from the claimed invention in that they fail to teach:
derive a new network key for a subsequent secure session based on a key change bit
Qi teaches:
derive a new network key for a subsequent secure session based on a key refreshment counter value (note paragraph [0016], key generation is triggered by packet number exhaustion, i.e. refreshment counter value) and a key change bit (note paragraph [0033], packets may contain a new key bit to indicate a receiver should change to a new key)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the subsequent session key generation based on counters of Herzerg and the new key bit of Qi. One of ordinary skill would have been motivated to combine Herzerg and Qi because it would provide a simple and convenient method for the sender to notify a recipient that they changed encryption keys.
The combination of Herzerg and Qi differs from the claimed invention in that they fail to explicitly teach:
receive a header from the primary node, wherein the includes a key refreshment counter value, and a key change bit;
Kadansky teaches:
receive a header from the primary node, wherein the includes a key refreshment counter value, and a key change bit (note Fig. 9 and 10(c) and column 9, line 62 through column 10, line 17, received packets which include a header with key change flag and packet number);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Herzerg and Qi and the packet headers of Kadansky. One of ordinary skill would have been motivated to combine Herzerg, Qi and Kadansky because a packet header would provide a convenient method for processing packets for relevant session key information.
For claim 11, the combination of Herzerg, Qi and Kadansky teaches claim 10, wherein the processing circuit is configured to derive the new network key without interrupting data communications between the primary node and a second secondary node (note Fig. 9-10 and paragraphs [0011], [0029], [0089] and [0097] of Herzerg, derivation of new session keys occurs “independently” by the sending and receiving ECUs to “continually maintain secure channels; i.e. without interrupting data communication; and note paragraphs [0066]-[0069] of Herzerg, ECUs store connection tables with different session keys and counters for each communication; i.e. deriving catch up network keys for one message type communication would not interrupt communications with other message types).
For claim 12, the combination of Herzerg, Qi and Kadansky teaches claim 10, wherein the processing circuit is configured to derive the new network key based on the key refreshment counter value, the key change bit (note paragraph [0033] of Qi, packets may contain a new key bit to indicate a receiver should change to a new key), and a pre-shared key (note paragraphs [0050] and [0089] of Herzerg, if the message counter, i.e. key refreshment counter, for the current session has exceeded a maximum, a new session key is derived; new key is based on master key, i.e. pre-shared key, and the session counter concatenated with padding).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the subsequent session key generation based on counters of Herzerg and the new key bit of Qi. One of ordinary skill would have been motivated to combine Herzerg and Qi because it would provide a simple and convenient method for the sender to notify a recipient that they changed encryption keys.
For claim 13, the combination of Herzerg, Qi and Kadansky teaches claim 10, wherein the processing circuit is configured to derive the new network key based on the key refreshment counter value, the key change bit (note paragraph [0033] of Qi, packets may contain a new key bit to indicate a receiver should change to a new key), and a session count (note paragraphs [0050] and [0089] of Herzerg, if the message counter, i.e. key refreshment counter, for the current session has exceeded a maximum, a new session key is derived; new key is based on master key, i.e. pre-shared key, and the session counter concatenated with padding).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the subsequent session key generation based on counters of Herzerg and the new key bit of Qi. One of ordinary skill would have been motivated to combine Herzerg and Qi because it would provide a simple and convenient method for the sender to notify a recipient that they changed encryption keys.
8. Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Herzerg, Qi and Kadansky as applied to claim 10 above, and further in view of Adler.
For claim 14, the combination of Herzerg, Qi and Kadansky differs from the claimed invention in that they fail to teach:
wherein the processing circuit is configured to derive catch up network keys until reaching the current network key during one or more secure sessions.
Adler teaches:
wherein the processing circuit is configured to derive catch up network keys until reaching the current network key during one or more secure sessions (note paragraphs [0037] and [0071], the device ratchets the link key, i.e. derives catch up network keys, to reach the current version of the link key).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Herzerg, Qi and Kadansky and the ratcheting of network keys of Adler. One of ordinary skill would have been motivated to combine Herzerg, Qi, Kadansky and Adler because ratcheting the network key would allow for devices to synchronize the session key in the event that a device lags behind the other device with generating session keys (note paragraphs [0036]-[0037] and [0071] of Adler).
For claim 15, the combination of Herzerg, Qi, Kadansky and Adler teaches claim 14, wherein the processing circuit is configured to derive the catch up network keys (note paragraphs [0037] and [0071] of Adler, network session key is ratcheted for session count between devices) without interrupting data communications between the primary node and a second secondary node (note Fig. 9-10 and paragraphs [0011], [0029], [0089] and [0097] of Herzerg, derivation of new session keys occurs “independently” by sending and receiving ECUs to “continually maintain secure channels; i.e. without interrupting data communication; and note paragraphs [0066]-[0069] of Herzerg, ECUs store connection tables with different session keys and counters for each communication; i.e. deriving catch up network keys for one message type communication would not interrupt communications with other message types).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Herzerg, Qi and Kadansky and the ratcheting of network keys of Adler. One of ordinary skill would have been motivated to combine Herzerg, Qi, Kadansky and Adler because ratcheting the network key would allow for devices to synchronize the session key in the event that a device lags behind the other device with generating session keys (note paragraphs [0036]-[0037] and [0071] of Adler).
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
9. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,108,246. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
12,108,246
1. A device comprising:
a wireless interface configured to exchange data with a first secondary node during a current secure session; and
a processing circuit coupled to the wireless interface and configured to derive a new network key for a subsequent secure session based on a key refreshment counter value and a key change bit.
1. A wireless interface, comprising: network formation circuitry configured to establish a wireless network between a primary node and a first secondary node; data exchange circuitry configured to perform data exchanges between the primary node and the first secondary node using secure sessions
key refreshment circuitry configured to derive a new network key for the wireless network based on a pre-shared key, further based on a header, and further based on a current network key concatenated with a session count, wherein the header includes a frame counter value, a key refreshment counter value, and a key change bit
10. A device comprising:
wireless interface configured to:
exchange data with a primary node during a current secure session; and
receive a header from the primary node, wherein the includes a key refreshment counter value, and a key change bit; and
a processing circuit coupled to the wireless interface and configured to derive a new network key for a subsequent secure session based on the key refreshment counter value and the key change bit.
1.
A wireless interface, comprising: network formation circuitry configured to establish a wireless network between a primary node and a first secondary node; data exchange circuitry configured to perform data exchanges between the primary node and the first secondary node using secure sessions
key refreshment circuitry configured to derive a new network key for the wireless network based on a pre-shared key, further based on a header, and further based on a current network key concatenated with a session count, wherein the header includes a frame counter value, a key refreshment counter value, and a key change bit
16. A method for a primary node in a network, the method comprising:
exchanging data with a first secondary node during a current secure session; and
deriving, by the primary node, a new network key for a subsequent secure session based on a key refreshment counter value and a key change bit.
18. A method, comprising: establishing, by a wireless interface, a network with a primary node and a first secondary node; performing, by the wireless interface, data exchanges between the primary node and the first secondary node using secure sessions; and
during a current secure session, deriving, by the wireless interface, a new network key for a subsequent secure session of the network based on a pre-shared key, a header, and a current network key concatenated with a session count, wherein the header includes a frame counter value, a key refreshment counter value, and a key change bit.
Claims 2, 11 and 17
Claims 9, 17 and 21
Claims 3, 12 and 18
Claims 1, 11 and 18 – pre-shared key
Claims 4, 13 and 19
Claims 1, 11 and 18 – session count
Claim 5
Claim 4
Claims 6 and 20
Claim 5
Claim 7
Claim 6
Claim 8
Claim 7
Claim 9
Claim 8
Claim 14
Claims 2 and 12
Claim 15
Claims 3 and 13
Claims 1-21 of U.S. Patent No. 12,108,246 contain every element of claims 1-20 of the instant application and as such anticipate claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Conclusion
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Potter et al. (U.S. Patent Application Publication 2022/0131839) discloses a packet containing a freshness value (i.e. key refresh counter) used in deriving a new key (note paragraphs [0053], [0130] and [0211]).
Kozaki et al. (U.S. Patent Application Publication 2008/0247550) discloses a key change flag in a packet header (note paragraph [0082]).
Kharvar et al. (U.S. Patent Application Publication 2020/0146088) discloses a key refresh flag (note paragraphs [0039] and [0049]).
Levesque et al. (U.S. Patent Application Publication 2018/0317089) discloses a packet header with a counter used in deriving a new session key (note paragraphs [0070]-[0072]).
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at (571)270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/ Primary Examiner, Art Unit 2407
Prosecution Insights