Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This is in response to Application #18/913,722 filed on 10/11/2024 in which Claims 1-12 are presented for examination.
Status of Claims
Claims 1-12 are pending, of which Claims 1-12 would be considered allowable over prior art if it were not for the Double Patenting rejections on Claims 1-12 and the Claim Objections on Claim 1.
Applicant’s Most Recent Claim Set of 10/11/2024
Applicant’s most recent claim set of 10/11/2024 is considered to be the latest claim set under consideration by the examiner.
Claim Objections
Regarding Claim 1, this claim is objected to for an apparent copy and paste typo when composing Claim 1 which creates a Lack of Antecedent Basis issue and in addition has the effect of making the claim harder to understand. The phrase in question is found at Claim 1 lines 6-7, which currently reads as “the sending a message to the device that includes a first portion with a command and a second portion that is based on a hash of the nonce, while the device is booted;”. This copy and paste typo apparently occurred when coping and pasting from the Instant Application’s Parent Application’s claims which had similar limitations but were found in a System Claim, instead of a Method Claim like the Instant Application. There is no “sending a message to the device” explained in the Instant Application’s claims before hitting this phrase that is objected to. The examiner construes this passage of limitations to actually read as “the server sending a signed server key to the device while the device is booted that is included in a message sent from the server to the device that also includes a first portion with a command and a second portion that is based on a hash of the nonce, all sent while the device is booted”. The applicant is free to reword this construed passage by the examiner, as long as the meaning stays clearly the same. If the applicant should feel that a different meaning applies, the examiner will give it full consideration.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention, so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim(s) 1-12 (is/are) rejected under 35 U.S.C. 101 as claiming the same invention as that of claim(s) 1-12 of prior U.S. Patent No. 11,763,003. This is a statutory double patenting rejection.
With respect to claim(s) 1-12 of the instant application, please refer to the table below, which illustrates the same invention relationship of the claim limitations at issue:
Instant application
U.S. Patent No. 11,763,003
Claim 1
Claim 1
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Allowable Subject Matter
Claims 1-12 are considered allowable over prior art.
The instant invention is directed to a system for providing secure communications between a server and the firmware of an electronic device.
The closest prior art, as recited, Brossard et al. US Patent Application Publication #2015/0121497 and Yu et al. US Patent Application Publication #2013/0010957, are also generally directed to various aspects of providing secure communications between a server and the firmware of an electronic device. However, Brossard et al. or Yu et al. does not teach or suggest, either singularly or in combination, the particular combination of steps or elements as recited in the independent claim(s) 1. For example, none of the cited prior art teaches or suggests the steps of:
Regarding Claim 1:
Although the combination of Brossard et al. or Yu et al. teaches various aspects of providing secure communications between a server and the firmware of a device, Brossard et al. or Yu et al. fails to teach a server securely sending a command to a device including a server sending a signed server key to the device while the device is booted, the server instructing the device to reboot a first time, while the device is booted, the server receiving, from the device after the device has rebooted, a nonce encrypted using the signed server key, the server sending a signed server key to the device while the device is booted that is included in a message sent from the server to the device that also includes a first portion with a command and a second portion that is based on a hash of the nonce, all sent while the device is booted, the server instructing the device to reboot a second time, while the device is booted.
When combined with the additional limitations found in Claim 1.
Therefore Claims 1-12 of the instant application would be considered allowable over the cited prior art if it were not for the Claim Objections on Claim 1 and the Double Patenting Rejections on Claim 1-12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rao et al - US_20040093597: Rao et al teaches a secure firmware update system for updating firmware in mobile handsets.
Zimmer et al - US_20050021968: Zimmer et al teaches a secure method for implementing a trusted firmware/BIOS update.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY HOLDER whose telephone number is 571-270-3789. The examiner can normally be reached on Monday-Friday 10:00AM-7:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linglan Edwards, can be reached on (571) 270-5440. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRADLEY W HOLDER/
Primary Examiner, Art Unit 2408