DETAILED ACTION
Claims 10-26 and 28-32 were cancelled in a preliminary amendment.
Claims 33-40 were added in a preliminary amendment.
Claims 1-9, 27 and 33-40 have been examined.
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 .
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.
Priority
The current application is a National Stage entry of PCT/IB2022/056554, International Filing Date: 07/15/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/14/2025 and 03/17/2025 have been considered by the examiner.
Examiner’s Remarks
The Examiner contacted the Attorney on 07/20/2026 and 07/22/2026 with regards to proposed Examiner’s Amendments to obviate the 35 U.S.C. 112(b) issues with two of the dependent claims. A voicemail message was left after each call; however, the messages were not returned.
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.
Claims 7 and 38 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 7 recites the limitation "the first private key of the first subsequent hardware module" in line 14. Claim 38 recites “the first private key of the first subsequent hardware module” in lines 11 and 12. There is insufficient antecedent basis for these limitations in the claims (i.e., “the first private key”). It is recommended to amend these limitations to remove “the” and have the claim limitations be either “a first private key” or “a private key”. Appropriate correction is required.
Allowable Subject Matter
Claims 1-9, 27, and 33-40 distinguish themselves over the prior art. Though claims 1-6, 8, 9, 27, 33-37, 39, and 40 are considered allowable, claims 7 and 38 are rejected in view of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph.
Claims 7 and 38 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As per independent claims 1 and 27, generally, the prior art of record, United States Patent Application Publication No. US 20180167211 A1 to Falk et al. which shows determination of a device-specific private key for an asymmetrical cryptographic method on a device; United States Patent Application Publication No. US 20170163417 A1 to McLean et al. which shows an apparatus and method for key provisioning; and United States Patent Application Publication No. US 20230362136 A1 to Cheng et al. which shows a secure data exchange using format-preserving encryption, fails to teach alone, or in combination, other than via hindsight, at the time of the filing of the claimed invention, the claim elements (i.e., claim 1: “deriving a secret of the master hardware module (secretHMO) based on the UMS of the master hardware module (UMS_HMO) and a Security Descriptor, SD, of the master hardware module (SD_HMO_LO) using a first Key Derivation Function, KDF, of the master hardware module; generating an asymmetric key pair of the master hardware module (DeviceID) based on the secret of the master hardware module (secretHMO) using a function (f()); and receiving a UMS of the first subsequent hardware module (UMSHM1) and a first SD of the first subsequent hardware module (SDHM1_LO) from the first subsequent hardware module”; claim 27: “deriving a secret of the master hardware module (202) (secretHMO) based on the UMS (206) of the master hardware module (202) (UMS_HMO) and a Security Descriptor, SD, of the master hardware module (202) (SD_HMOLO) using a first Key Derivation Function, KDF, of the master hardware module; generate generating an asymmetric key pair of the master hardware module (DeviceID) based on the secret of the master hardware module (secret_HMO) using a function (f()); and receive receiving a UMS of the first subsequent hardware module (UMSHM1) and a first SD of the first subsequent hardware module (SD_HM1_LO) from the first subsequent hardware module”); serving to patently distinguish the invention from said prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references cited on form PTO-892 are cited to further show the state of the art with respect to key generation tied to particular hardware.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH L AVERY whose telephone number is (571)272-8627. The examiner can normally be reached M-F 8:30am -5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can be reached at 571-272-2092. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH L AVERY/Primary Examiner, Art Unit 2431
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