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 .
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,166,876. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims in USPAT 12,166,876 is directed generating a cryptographic key using a seed value obtained from a PUF and processing a cryptographic operation using the cryptographic key. The claims in the instant invention are directed to selecting a cryptographic key generated using a seed from a PUF and performing a key management operation on the cryptographic key.
Claim Rejections - 35 USC § 102
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 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)(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 1-4 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Liu et al. (US-2022019017).
a. Referring to claims 1, 8 and 15:
Regarding claims 1, 8 and 15, Liu teaches a device comprising: a physically unclonable function (PUF) (Para 13… PUF); a volatile storage area storing a plurality of cryptographic keys generated using a seed value derived from the PUF (Para 20…. memory storing wrapped keys generated using a PUF sequence); and a processor configured to: receive a key management request from an external device via an interface, select a cryptographic key from the plurality of cryptographic keys based on the key management request, perform a key management operation on the selected cryptographic key, and provide a response to the external device indicating a result of the key management operation (Para 22 and 23…. key retrieval request from an external device, selecting a key and providing a response to the external device).
a. Referring to claims 2, 9 and 16:
Regarding claims 2, 9 and 16, Liu teaches the device of claim 1, wherein the key management operation comprises generating a new cryptographic key (Para 21…. key generation request).
a. Referring to claims 3 and 10:
Regarding claims 3 and 10, Liu teaches the device of claim 1, wherein the key management operation comprises exporting a public portion of the selected cryptographic key (Para…. transmitting key identifier).
a. Referring to claims 4, 11 and 17:
Regarding claims 4, 11 and 17, Liu teaches the device of claim 1, wherein the interface comprises a Peripheral Component Interconnect Express (PCIe) interface (Para 14…. data bus which may be a PCIe interface as evident to one of ordinary skill in the art).
a. Referring to claims 7, 14 and 20:
Regarding claims 7, 14 and 20, Liu teaches the device of claim 1, wherein the cryptographic keys comprise asymmetric key pairs (Para 13…. generation of cryptographic keys which would comprise asymmetric keys as known by a person of ordinary skill in the art).
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(s) 5, 6, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (US-2022019017), and further in view of Bell et al. (US-20130142329).
a. Referring to claims 5, 12 and 18:
Regarding claims 5, 12 and 18, Liu teaches the storage of claim 1, but fails to teach that the storage area comprises a static random-access memory. However, storage areas comprising static random-access memory is well known in the art and described in Para 15 and 23…. (SRAM memory). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the teaching of Liu and implement the storage as a static random-access memory as taught by Bell for the purpose of fast temporary data storage and access.
a. Referring to claims 6, 13 and 19:
Regarding claims 6, 13 and 19, the combination of Liu and Bell teaches the device of claim 1, wherein the PUF comprises a designated portion of the volatile storage area. (See Bell, Para 15…. PUF SRAM)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZUNNA OKEKE whose telephone number is (571)270-3854. The examiner can normally be reached Mon - Fri 8 - 4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ELENI SHIFERAW can be reached at (571) 272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IZUNNA OKEKE/Primary Examiner, Art Unit 2497
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