DETAILED ACTION
This action is in response to the application filed on January 24, 2025. Claims 1-22 are pending. Of such, claims 1-20 represent a method and claims 21-22 represent a system directed to a host sending write requests to a storage device.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on November 11, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner with the exception of the following document.
Office Action for Korean Application due to lack of English translation.
Claim Objections
Claim 17 is objected to because of the following informalities:
Claim 17 – discloses “receiving a second request and the host authentication code to the storage device”, this is grammatically incorrect; should be “receiving…from the host”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claim discloses the limitation “wherein the order dis determined by an operation mode”, however the specification fails to disclose such operation mode or an order-determinant mechanism.
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 1-20 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.
Claims 1 and 11 disclose the limitation “the order…is changeable”. It is unclear what the metes and bounds are of the term “changeable”.
Claims 10 and 20 recites the limitation "the device authentication code". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites receiving a request from a host then providing a response to the storage device. This is indefinite as the storage device cannot provide a response to itself and should be corrected to providing the response to the host device.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12/212,678.
Presently presented Claim 1
US Patent ‘678
A method of operating a host, the method comprising: providing a first request regarding security write and write data to a storage device;
Claim 12 - a host processor configured to provide a first request among a series of requests regarding security write and the write data to a storage device,
receiving a first response, which indicates whether the first request has been received, from the storage device;
Claim 16 - wherein the host processor receives a first response indicating whether the first request has been received from the storage device,
generating a host authentication code
Claim 12 - generate a host authentication code using the write data
wherein an order of providing the first request and generating the host authentication code is changeable.
Claim 12 - wherein the generation of the host authentication code is in parallel with providing the write data
Presently presented Claim 11
US Patent ‘678
receiving a first request regarding security write and write data from a host;
Claim 1 - receive a first request among a series of requests regarding security write and write data from the host,
providing a first response, which indicates whether the first request has been received, to the storage device
Claim 6 - wherein the authenticated write controller provides a first response, which indicates whether the first request has been received,
and receiving a host authentication code
Claim 1 - receive a second request among the series of requests and the host authentication code from the host,
wherein an order of receiving the first request and receiving the host authentication code is changeable.
Claim 1 - wherein the generation of the host authentication code is in parallel with receiving the write data
Presently presented Claim 21
US Patent ‘678
a storage device that includes a memory device including a write protection area
Claim 4 - a memory device including a write protection area; and
and a host configured to perform an operation of providing, to the storage device, a first request regarding security write and write data
Claim 1 - receive a first request among a series of requests regarding security write and write data from the host,
in parallel with an operation of generating a host authentication code based on the write data
wherein the generation of the host authentication code is in parallel with receiving the write data
a key shared with the storage device.
Claim 10 - an authentication code generator configured to generate the device authentication code based on a key shared between the host and the storage device and the received write data; and
Dependent Claims
US Patent ‘678
Claims 2, 3, 12, 13
Claim 15
Claims 4, 14
Claims 1, 12
Claims 5, 15
Claims 1, 12
Claims 6, 16
Claims 1, 12
Claims 7, 17
Claims 1, 12
Claims 8, 18
Claims 6, 16
Claims 9, 19
Claims 7, 13, 16
Claims 10, 20
Claim 14
Claim 22
Claims 1, 9
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 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.
Claims 1-22 are rejected under 35 U.S.C. 103 as being unpatentable by Sela et al. (US 20200014544), hereinafter referred to as Sela, in view of Bellare et al. (US 5673318), hereinafter referred to as Bellare.
Regarding Claim 1, Sela discloses:
A method of operating a host, the method comprising: providing a first request regarding security write and write data to a storage device (In ¶ 52, Sela discloses “When host 120 attempts to write to RPMB 400, authentication circuit 412 of host 120 generates a MAC from key 414 and a message, e.g. by applying a hash function such as SHA256 to key 414 and the message (including write data)… Host 120 sends the MAC, write count, and message to memory system 100.”); receiving a first response, which indicates whether the first request has been received, from the storage device (In ¶ 68, Sela discloses “The memory system then sends a response 1006.”); and generating a host authentication code (In ¶ 52, Sela discloses “authentication circuit 412 of host 120 generates a MAC from key 414 and a message, e.g. by applying a hash function such as SHA256 to key 414 and the message (including write data).”),
However, Sela does not explicitly disclose an order of providing the first request and generating the host authentication code.
Bellare discloses:
wherein an order of providing the first request and generating the host authentication code is changeable. (In Col 1, Lines 65-67, Bellare discloses “Authentication codes are created and verified in such a way that the operations can be performed in a parallel, or pipelined, fashion.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 2, the combination of Sela and Bellare disclose:
The method of claim 1, wherein the host authentication code is generated based on a key and the write data. (In ¶ 52, Sela discloses “generates a MAC from key 414 and a message, e.g. by applying a hash function such as SHA256 to key 414 and the message (including write data)”)
Regarding Claim 3, the combination of Sela and Bellare disclose:
The method of claim 2, wherein the key is shared between the storage device and the host. (In ¶ 45, Sela discloses “The RPMB feature is based on a symmetric key which resides in both the storage device and the entity (e.g. host SoC, remote server, etc.).” and further discloses in ¶ 51 “Keys 404 and 414 are identical”)
Regarding Claim 4, the combination of Sela and Bellare disclose the limitations of claim 1.
However, Sela does not explicitly disclose an operation mode.
Bellare discloses:
The method of claim 1, wherein the order is determined by an operation mode. (In Col 1, Lines 65-67, Bellare discloses “Authentication codes are created and verified in such a way that the operations can be performed in a parallel, or pipelined, fashion.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 5, the combination of Sela and Bellare disclose:
The method of claim 1, wherein generating the host authentication code is completed before providing the first request. (In ¶ 52, Sela discloses “ authentication circuit 412 of host 120 generates a MAC from key …Host 120 sends the MAC and… message to memory system 100”)
Regarding Claim 6, the combination of Sela and Bellare disclose the limitations of Claim 1.
However, Sela does not explicitly disclose the sequence of operations.
Bellare discloses:
The method of claim 1, wherein generating the host authentication code is in parallel with providing the first request. (In Col 2, Lines 22-27, Bellare discloses “Computing of the pseudo-random function can be done independently for each word x.sub.i (e.g. in a parallel or pipelined manner), as the pseudo-random function is applied to each word independent of the other words.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 7, the combination of Sela and Bellare disclose:
The method of claim 1, further comprising: providing a second request and the host authentication code to the storage device. (In ¶ 63, Sela discloses “Server 702 sends a RPMB write key programming request 706 to memory system 700. Memory system 700 sends a response 708. Then, server 702 sends a result read request 710 to confirm writing of the RPMB write key and memory system 700 sends a response 712 providing confirmation.”)
Regarding Claim 8, the combination of Sela and Bellare disclose:
The method of claim 7, further comprising: receiving a second response, which indicates whether the second request has been received, from the storage device. (In ¶ 66, Sela discloses “Memory system 900 sends a response 908, e.g. an acknowledgement that read key programming request 906 was received.”)
Regarding Claim 9, the combination of Sela and Bellare disclose:
The method of claim 8, further comprising: providing a third request to the storage device; and receiving a third response, which includes a result of a program operation on the write data, from the storage device. (In ¶ 68, Sela discloses “The remote server then sends a result read request 1008 to verify that the write command was successfully executed and that the data was written. Memory system 1000 sends response 1010 to confirm that the data was written.”)
Regarding Claim 10, the combination of Sela and Bellare disclose:
The method of claim 9, wherein the result of the program operation includes information indicating whether the program operation has passed or failed and authentication information indicating integrity of the write data, and wherein the authentication information is generated based on a result of comparing the device authentication code, which is generated by the storage device based on the write data, with the host authentication code (In ¶ 69, Sela discloses “An authentication circuit in the memory system calculates a MAC (second MAC) using the write key and compares this MAC with the MAC from the remote server 1024 (i.e. compares first MAC and second MAC). A determination is made as to whether these MACs are identical 1026. If the MACs are identical, then the authentication circuit grants write access 1028 and the memory system stores data from the remote server in the RPMB 1030. If the MACs are not identical, then the authentication circuit denies write access 1032 and the memory system sends a response indicating that write access is denied 1034.”).
Regarding Claim 11, Sela discloses:
A method of operating a storage device, the method comprising: receiving a first request regarding security write and write data from a host (In ¶ 52, Sela discloses “When host 120 attempts to write to RPMB 400, authentication circuit 412 of host 120 generates a MAC from key 414 and a message, e.g. by applying a hash function such as SHA256 to key 414 and the message (including write data)… Host 120 sends the MAC, write count, and message to memory system 100.”); providing a first response, which indicates whether the first request has been received, to the storage device (In ¶ 68, Sela discloses “The memory system then sends a response 1006.”); and receiving a host authentication code (In ¶ 52, Sela discloses “and the received message and compares this MAC with the MAC received from host 120 (i.e. with MAC generated by authentication circuit 412).”),
However, Sela does not explicitly disclose an order of providing the first request and generating the host authentication code.
Bellare discloses:
wherein an order of receiving the first request and receiving the host authentication code is changeable. (In Col 1, Lines 65-67, Bellare discloses “Authentication codes are created and verified in such a way that the operations can be performed in a parallel, or pipelined, fashion.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 12, the combination of Sela and Bellare disclose:
The method of claim 11, wherein the host authentication code is generated based on a key and the write data. (In ¶ 52, Sela discloses “generates a MAC from key 414 and a message, e.g. by applying a hash function such as SHA256 to key 414 and the message (including write data)”)
Regarding Claim 13, the combination of Sela and Bellare disclose:
The method of claim 12, wherein the key is shared between the storage device and the host. (In ¶ 45, Sela discloses “The RPMB feature is based on a symmetric key which resides in both the storage device and the entity (e.g. host SoC, remote server, etc.).” and further discloses in ¶ 51 “Keys 404 and 414 are identical”)
Regarding Claim 14, the combination of Sela and Bellare disclose the limitations of claim 11.
However, Sela does not explicitly disclose an operation mode.
Bellare discloses:
The method of claim 11, wherein the order is determined by an operation mode. (In Col 1, Lines 65-67, Bellare discloses “Authentication codes are created and verified in such a way that the operations can be performed in a parallel, or pipelined, fashion.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 15, the combination of Sela and Bellare disclose the limitations of claim 11.
However, Sela does not explicitly disclose the sequence of operations.
Bellare discloses:
The method of claim 11, wherein receiving the host authentication code is parallel with receiving the first request. (In Col 2, Lines 22-27, Bellare discloses “Computing of the pseudo-random function can be done independently for each word x.sub.i (e.g. in a parallel or pipelined manner), as the pseudo-random function is applied to each word independent of the other words.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 16, the combination of Sela and Bellare disclose:
The method of claim 11, wherein receiving the host authentication code is completed after receiving the first request. (In ¶ 52, Sela discloses “Host 120 sends the MAC, write count, and message to memory system 100” and in ¶ 63, further discloses “Server 702 sends a RPMB write key programming request 706 to memory system 700. Memory system 700 sends a response 708. Then, server 702 sends a result read request 710 to confirm writing of the RPMB write key and memory system 700 sends a response 712 providing confirmation.”)
Regarding Claim 17, the combination of Sela and Bellare disclose:
The method of claim 11, further comprising: receiving a second request and the host authentication code to the storage device. (In ¶ 63, Sela discloses “Server 702 sends a RPMB write key programming request 706 to memory system 700. Memory system 700 sends a response 708. Then, server 702 sends a result read request 710 to confirm writing of the RPMB write key and memory system 700 sends a response 712 providing confirmation.”)
Regarding Claim 18, the combination of Sela and Bellare disclose:
The method of claim 17, further comprising: providing a second response, which indicates whether the second request has been received, to the host. (In ¶ 66, Sela discloses “Memory system 900 sends a response 908, e.g. an acknowledgement that read key programming request 906 was received.”)
Regarding Claim 19, the combination of Sela and Bellare disclose:
The method of claim 18, further comprising: receiving a third request from the host; and providing a third response, which includes a result of a program operation on the write data, to the host. (In ¶ 68, Sela discloses “The remote server then sends a result read request 1008 to verify that the write command was successfully executed and that the data was written. Memory system 1000 sends response 1010 to confirm that the data was written.”)
Regarding Claim 20, the combination of Sela and Bellare disclose:
The method of claim 19, wherein the result of the program operation includes information indicating whether the program operation has passed or failed and authentication information indicating integrity of the write data, and wherein the authentication information is generated based on a result of comparing the device authentication code, which is generated by the storage device based on the write data, with the host authentication code. (In ¶ 69, Sela discloses “An authentication circuit in the memory system calculates a MAC (second MAC) using the write key and compares this MAC with the MAC from the remote server 1024 (i.e. compares first MAC and second MAC). A determination is made as to whether these MACs are identical 1026. If the MACs are identical, then the authentication circuit grants write access 1028 and the memory system stores data from the remote server in the RPMB 1030. If the MACs are not identical, then the authentication circuit denies write access 1032 and the memory system sends a response indicating that write access is denied 1034.”).
Regarding Claim 21, Sela discloses:
A computing system comprising: a storage device that includes a memory device including a write protection area (In ¶ 51, Sela discloses “memory system 100 includes an authentication circuit 402 in controller 102, which is configured to authenticate access to RPMB 400.”); and a host configured to perform an operation of providing, to the storage device, a first request regarding security write and write data (In ¶ 68, Sela discloses “Remote server 1002 sends an RPMB write command with a MAC calculated from the write key 1004.” And ¶ 52 “Host 120 sends the MAC, write count, and message to memory system 100.”) with an operation of generating a host authentication code based on the write data and a key shared with the storage device (In ¶ 52, Sela discloses “When host 120 attempts to write to RPMB 400, authentication circuit 412 of host 120 generates a MAC from key 414 and a message, e.g. by applying a hash function such as SHA256 to key 414 and the message (including write data).” And further in ¶ 45, discloses “The RPMB feature is based on a symmetric key which resides in both the storage device and the entity (e.g. host SoC, remote server, etc.).” )
However, Sela does not explicitly disclose the sequence of operations.
Bellare discloses:
in parallel with an operation (In Col 1, Lines 65-67, Bellare discloses “Authentication codes are created and verified in such a way that the operations can be performed in a parallel, or pipelined, fashion.”)
One in ordinary skill in the art of cryptography would have been motivated, before the effective filing date of the claimed invention to modify Sela’s approach by utilizing Bellare’s approach of modifying the timing of the authentication code generation as the motivation would be to avoid latency issues by having to slow down the transmission times to match the rate at which the cryptographic primitives could be computed (See Bellare, Col 1, Lines 55-60)
Regarding Claim 22, the combination of Sela and Bellare disclose:
The computing system of claim 21, wherein the storage device is configured to: receive, from the host, the first request and the write data (In ¶ 52, Sela discloses “Host 120 sends the MAC, write count, and message to memory system 100.”); generate a device authentication code based on the write data and the key (In ¶ 52, Sela discloses “authentication circuit 402 generates a MAC from key 404 and the received message and compares this MAC with the MAC received from host 120 (i.e. with MAC generated by authentication circuit 412).”); receive, from the host, a second request and the host authentication code (In ¶ 52, Sela discloses “Host 120 sends the MAC,”); determine whether the write data has integrity based on a comparison of the host authentication code with the device authentication code (In ¶ 52, Sela discloses “compares this MAC with the MAC received from host 120 (i.e. with MAC generated by authentication circuit 412).”); and control the memory device to program the write data with integrity in the write protection area (In ¶ 52, Sela discloses “If keys 404 and 414 are identical and the message is unchanged then the corresponding MACs will be identical and authentication circuit 402 grants write access to host 120 to write data in RPMB 400.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shin et al. (US Publication Number 20150350206) discloses a storage system includes a host configured to provide a request for setting or clearing secure write protection.
Osaki et al. (US Publication Number 20210176065) discloses a storage controller generates encrypted data using a data encryption key and generates an authentication code based on the encrypted data using an authentication key.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHADI H KOBROSLI whose telephone number is (571)272-1952. The examiner can normally be reached M-F 9am-5pm ET.
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/SHADI H KOBROSLI/Examiner, Art Unit 2492 /RUPAL DHARIA/Supervisory Patent Examiner, Art Unit 2492
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