DETAILED ACTION
This Office Action is in response to the application 19/062,260 filed on 02/25/2025.
Claims 1-20 have been examined and are pending in this application. Claims 19 and 20 have been amended.
This application is a continuation of U.S. Patent Application No.18/542,551, filed
December 15, 2023, which is a continuation of U.S. Patent Application No. 17/941,909,
filed September 9, 2022, which is a continuation of U.S. Patent Application No.
16/958,104, filed June 25, 2020 (each of which are incorporated herein by reference in
their entirety), which is a National Stage of PCT/EP2018/086576 filed December 21, 2018, and claims priority to European Patent Application No. 17306983.2 filed December 29, 2017.
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 .
Election/Restrictions
For the record, the Examiner acknowledges that NO restrictions warranted at applicant’s initial time of filing for patent.
Priority
This application is related to a National Stage of PCT/EP2018/086576 filed December 21, 2018, and claims priority to European Patent Application No. 17306983.2 filed December 29. 2017.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 10/25/2016, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Oath/Declaration
For the record, the Examiner acknowledges that the Oath/Declaration submitted on 05/08/2015 has been accepted.
Drawings
For the record, the Examiner acknowledges that the drawings filed on 05/08/2015 has been accepted.
Specification
For the record, the Examiner acknowledges that the Applicant's specification filed on 05/08/2015 has been accepted.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,244,691 in view of claims 1-13 of U.S. Patent No.: 11,876,895 and in view of claims 1-16 of U.S. Patent 11,496,292. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent applications are related to installation of keys associated with an application on a remote device, for managing execution of the application on the remote device.
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 (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 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (hereinafter Liu), Pub. No.: US 2016/0254918 in view of Bannister et al. (hereinafter Bannister), Pub. No: US 2020/0236093.
Referring to claim 1, Liu teaches a method for securing content to a device, comprising:
receiving, at the device, from an application owner in a secure network environment, an encrypted application root key and data comprising an application policy and content for a respective application, wherein the respective application is installed on the device (fig. 8, step 815; receive one or more TSP certificate and figs. 6, 7B).
Liu does not explicitly disclose periodically installing, at the device, subsequent application keys derived from a key ladder.
However, in an analogous art, Bannister teaches periodically installing, at the device, subsequent application keys derived from a key ladder (Bannister: para. 0077, a shared secret to create/drive a shared symmetric key).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (AIA ) to combine the teachings of Liu with the method and system of Bannister, wherein periodically installing, at the device, subsequent application keys derived from a key ladder to provide users with a means for monitoring computing devices to detect and prevent unauthorized behavior. More specifically, this disclosure relates to extracting encryption keys to enable monitoring services (Bannister: para. 0002).
Referring to claim 2, Liu teaches the method according to claim 1. Bannister further teaches wherein the application root key is a symmetric key and wherein the subsequent application keys are symmetric keys (Bannister: para. 0077, symmetric key).
Referring to claim 3, Liu teaches the method according to claim 1. Bannister further teaches wherein the application root key is an asymmetric key and wherein the subsequent application keys are symmetric keys (Bannister: paras. 0010; 0077; symmetric; asymmetric).
Referring to claim 4, Liu teaches the method according to claim 1. Bannister further teaches wherein the application root key is a symmetric key and wherein the subsequent application keys are asymmetric keys (Bannister: paras. 0010; 0077; symmetric; asymmetric).
Referring to claim 5, Liu teaches the method according to claim 1. Bannister further teaches wherein the application root key is an asymmetric key and wherein the subsequent application keys are asymmetric keys (Bannister: paras. 0010; 0077; symmetric; asymmetric).
Referring to claim 6, Liu teaches the method according to claim 1. Liu further teaches wherein the subsequent application keys are generated by the application owner with the key ladder (Liu: fig. 6, diagram 600).
Referring to claim 7, Liu teaches the method according to claim 6. Bannister further teaches comprising: generating, at the device, a key seed using the application policy and an application identifier for the respective application; and sending the key seed to the application owner, wherein the application owner generates a transport key using the key seed and the application root key (Bannister: paras, 0055, 0077).
Referring to claim 8, Liu teaches the method according to claim 7. Liu further teaches wherein the application owner encrypts the subsequent application keys using the transport key and sends the encrypted subsequent application keys to the device for installation (Liu: paras. 0006, 0056 and fig. 3; encryption certificate).
Referring to claim 9, Liu teaches the method according to claim 1. Liu further teaches wherein the subsequent application keys derived from the key ladder are configured to inherit the application policy associated with the received encrypted application root key, for further usage (Liu: fig. 6, diagram 600).
Referring to claim 10, Liu teaches the method according to claim 1. Bannister further teaches wherein the encrypted application root key is encrypted with a symmetric device encryption key (Bannister: para. 0010, …as a shared symmetric).
Referring to claim 11, Liu teaches the method according to claim 10. Bannister further teaches comprising decrypting, at the device, the encrypted application root key with a symmetric device encryption key (Bannister: para. 0010).
Referring to claim 12, Liu teaches the method according to claim 1. Bannister further teaches wherein the encrypted application root key is encrypted with a public device encryption key (Bannister: para. 0010).
Referring to claim 13, Liu teaches the method according to claim 12. Bannister further teaches comprising decrypting, at the device, the encrypted application root key with a private device encryption key (Bannister: para. 0077, decrypt traffic ….).
Referring to claim 14, Liu teaches the method according to claim 1. Liu further teaches wherein the encrypted application root key is signed with a symmetric device signature key (Liu: fig. 8, step 815; and figs. 6, 7B).
Referring to claim 15, Liu teaches the method according to claim 14. Liu further teaches comprising verifying, at the device, a signature of the encrypted application root key with a symmetric device signature key (Liu: fig. 8; step 815; public key and signature).
Referring to claim 16, Liu teaches the method according to claim 1. Liu further teaches wherein the encrypted application root key is signed with a private device signature key (Liu: figs. 6, 7B and 8, step 815).
Referring to claim 17, Liu teaches the method according to claim 16. Liu further teaches comprising verifying, at the device, a signature of the encrypted application root key with a public device signature key (Liu: fig. 8; step 815; public key and signature).
Referring to claim 18, Liu teaches the method according to claim 1. Bannister further teaches wherein the application policy regulates data transfer between the device and the application owner (Bannister: para. 0010, computer device and remote server).
Referring to claim 19, This claim is similar in scope to claim 1, and is therefore rejected under similar rationale.
Referring to claim 20, This claim is similar in scope to claim 1, and is therefore rejected under similar rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONAS A BAYOU whose telephone number is (571)272-7610. The examiner can normally be reached Monday-Friday 7AM-4PM.
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/YONAS A BAYOU/Primary Examiner, Art Unit 2499 08/11/2026
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