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.
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Claims 1-2, 11-12, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5 of copending Application No. 18638593 in view of Kocher et al US 20160026826 (hereinafter Kocher). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the claims of the instant application is disclosed and covered by the claims in the copending application 18638593 in view of Kocher, see table and rejection below.
This is a provisional nonstatutory double patenting rejection.
Instant Application 19064331
Copending Application 18638593
1.A method of generating a decryptable encrypted file M* attesting to the authenticity of a file F on a computing device, comprising:
receiving a digital file C;
generating a nonce ω;
generating a random stream S;
hashing C with ω and applying the resulting hash to an extended output function resulting in C*;
organizing C* into d addressable segments having addresses 1 to d;
deriving a set of N challenges from S, where each challenge encodes an address within the range of 1 to d;
extracting from C* a sequential, addressable set of N responses corresponding to the addresses in C* encoded in the set of N challenges;
using the N responses as or to derive an encryption key K;
receiving a message M attesting to the authenticity of F, and
using K to encrypt M resulting in M*.
1. A method of storing a remotely decryptable encrypted file M on a remote device, comprising:
receiving a digital file C;
generating a nonce ω;
generating a random stream S;
hashing C with ω and applying the resulting hash to an extended output function resulting in C*;
organize C* into d addressable segments having addresses 1 to d;
derive a set of N challenges from S, where each challenge encodes an address within the range of 1 to d;
extract from C* a sequential, addressable set of N responses corresponding to the addresses in C* encoded in the set of N challenges;
randomly pick a binary number of K having N bits,
and
encrypt M with K, resulting in M*;
store M*;
identify those responses in the sequential, addressable set of N responses located at addresses having the same sequential positions of a first binary symbol in K, resulting in an identified subset of f responses;
store the identified subset of f responses in non-volatile memory at the remote device
2. The method of claim 1, wherein deriving a set of N challenges from S comprises hashing S and supplying the resulting hash to an extended output function resulting in a bitstream having a sufficient bit length such that it may be segmented into segments of sufficient bitlength to identify every address 1 to d.
5. (Original) The method of claim 1, wherein deriving a set of N challenges from S, where each challenge encodes an address within the range of 1 to d comprises hashing S and applying an extended output function to the resulting hash.
Copending Application 18638593 does not teach, but Kocher teaches receiving a message M attesting to the authenticity of F (abstract discloses a bitstream is received that comprises a data segment (M). A function is computed on the data segment M to see if the modified data segment matched the authentication data (F). Paragraph 51 also discloses the data segment(s) (M) are encrypted using at least one cryptographic key based on said message key KMESSAGE for producing ciphertext E from the input segments D (which can be mapped to F)).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify copending Application 18638593 method of decrypting an encrypted file M with Kocher’s teachings of receiving a message M to attest to the authenticity of the input segment file to protect systems and data against external attack such as unauthorized access to, or disclosure or alteration of, such data by attackers (paragraphs 2-3 of Kocher).
Claim Objections
Claims 1-19 are objected to because of the following informalities:
Claims 1, 11, and 19 reciting “hashing C with ω…” should be “ “hashing the C with the ω…”.
Claims 1, 11, and 19 reciting “organizing C*…..” should instead be “organizing the C*….”.
Claims 1,11, and 19 reciting “extracting from C*…corresponding to the address in C* encoded in the set of N challenges;” should instead be “extracting from the C*…corresponding to the address in the C* encoded in the set of the N challenges;”
Claims 1, 11, and 19 reciting “attesting to the authenticity of F, and using K to encrypt M resulting in M*” should instead be “attesting to the authenticity of the F, and using the K to encrypt the M resulting in the M*”.
Claims 2 and 12 reciting “deriving a set of N challenges from S comprising hashing S” should instead be “deriving [[a]] the set of N challenges from the S comprising hashing the S.
Claims 3 and 13 reciting “wherein hashing C with ω comprising concatenating C and ω” should instead be “wherein hashing the C with the ω comprising concatenating the C and the ω.
Claims 6 and 16 reciting “an encrypted version of F” should instead be “an encrypted version of the F”.
Claims 7 and 17 reciting “a position in C*” should instead be “ a position in the C*”.
Claim 8 recites an encryption key K” should instead be “[[an]] the encryption key K”.
Claims 9 and 18 reciting “distributing C…and M*” should instead be “distributing the C…and the M*”.
Claim 10 reciting “deleting K” should instead be “deleting the K”.
Claims 4-5 are objected to because said claims depend upon claim 1.
Claims 14-15 are objected to because said claims depend upon claim 11.
Appropriate correction is required.
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.
Claims 1-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “addresses 1 to d” but fails to define d.
Claim 1 recites N challenges and N responses but fails to define N; it is unclear whether N in “a set of N challenges” and “addressable set of N responses” intend to be the same value or different values.
Claim 1 recites “using the N responses as or derive an encryption key K”. There appears to be words missing from the limitation.
Claim 1 further recites “ attesting to the authenticity of F” but fail to disclose obtaining or retrieving or comparing the file F. Therefore, it is unclear how the attesting to the authenticity of F is achieved, if the method does not recite obtaining file F.
Claims 2-10 are rejected as being dependent on, and failing to cure the deficiencies of, rejected independent claim 1.
Claim 11 recites “addresses 1 to d” but fails to define d.
Claim 11 recites N challenges and N responses but fails to define N; it is unclear whether N in “a set of N challenges” and “addressable set of N responses” intend to be the same value or different values.
Claim 11 recites “using the N responses as or derive an encryption key K”. There appears to be words missing from the limitation.
Claim 11 further recites “ attesting to the authenticity of F” but fail to disclose obtaining or retrieving or comparing the file F. Therefore, it is unclear how the attesting to the authenticity of F is achieved, , if the method does not recite obtaining file F.
Claims 12-18 are rejected as being dependent on, and failing to cure the deficiencies of, rejected independent claim 11.
Claim 19 recites “addresses 1 to d” but fails to define d.
Claim 19 recites N challenges and N responses but fails to define N; it is unclear whether N in “a set of N challenges” and “addressable set of N responses” intend to be the same value or different values.
Claim 19 recites “using the N responses as or derive an encryption key K”. There appears to be words missing from the limitation.
Claim 19 further recites “ attesting to the authenticity of F” but fail to disclose obtaining or retrieving or comparing the file F. Therefore, it is unclear how the attesting to the authenticity of F is achieved, , if the method does not recite obtaining file F.
Allowable Subject Matter
Claims 1-19 would be allowable if rewritten/amended to overcome (a) the 35 USC 112(b) rejection, (b)claim objections, and (c) filing a terminal disclaimer to overcome the double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: the examiner does not find references anticipating nor a combination of references making obvious to “organizing C* in d addressable segments having addresses 1 to d; deriving a set of N challenges from S, where each challenge encodes an address within the range of 1 to d; and extracting from C* a sequential, addressable set of N responses corresponding to the addresses in C* encoded in the set of N challenges” in combination with all the elements in the independent claims.
Conclusion
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/F.F/ Examiner, Art Unit 2437
/BENJAMIN E LANIER/ Primary Examiner, Art Unit 2437
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