DETAILED ACTION
This Office action is in response to a Continuation application filed by Applicant on 3/13/2025.
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 PTO-1449
The Information Disclosure Statement submitted by applicant on 3/18/2025 has been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
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 obvious-type double patenting as being unpatentable over claims 1, 8, and 15 of US 12,267,424 B2, issued Apr. 1, 2025. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim Rejections - 35 USC § 101
The present application, as claimed, satisfies the requirements for patent-eligible subject matter under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4–8, 11–15, 18–20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lewis (US 6,240,187 B1, issued May 29, 2001).
Regarding claims 1, 8, and 15, Lewis discloses: a memory device comprising: a storage array, the storage array storing a first cryptographic key (key controller 26 is coupled to storage 28 where the active private key (Apr) is stored. Lewis Figure 1 and 6:10–13.); and a processor configured to: determine a first signature is valid using a second cryptographic key (the digital signature SIG(Rpr) is verified by applying the replacement key. Lewis 8:24–26.), determine that a second signature is valid using the first cryptographic key (the digital signature SIG(Apr) is verified by applying the active key. Lewis 8:20–24.), and replace the first cryptographic key with the second cryptographic key after determining that both the first signature and second signature are valid (if both digital signatures are verified, the node replaces the active key with the replacement key. Lewis 8:27–33.).
Regarding claims 4, 11, and 18, Lewis discloses the limitations of claims 1, 8, and 15, respectively, wherein the processor is further configured to return an error code after determining that either the first signature is invalid or the second signature if invalid (if signatures are not verified the key replacement is ignored or a message is sent to the key server that an unauthorized key replacement message has apparently been sent. Lewis Figure 2 and 8:34–40.).
Regarding claims 5, 12, and 19, Lewis discloses the limitations of claims 4, 11, and 18, respectively, wherein the processor is further configured to prevent overwriting of the first cryptographic key after returning the error code (if signatures are not verified the key replacement is ignored or a message is sent to the key server that an unauthorized key replacement message has apparently been sent. Lewis Figure 2 and 8:34–40.).
Regarding claims 6, 13, and 20, Lewis discloses the limitations of claims 4, 11, and 18, respectively, wherein the error code indicates whether the first signature or the second signature is invalid (if signatures are not verified the key replacement is ignored or a message is sent to the key server that an unauthorized key replacement message has apparently been sent. Lewis Figure 2 and 8:34–40.).
Regarding claims 7 and 14, Lewis discloses the limitations of claims 1 and 8, respectively, wherein the first cryptographic key comprise a first public key and second cryptographic key comprises a second public key (the recited first key interpreted as the disclosed active public key A(pu) and the recited second key is interpreted as the disclosed replacement or new public key R(pu). Lewis 5:36–41.).
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.
Claims 2, 9, 16 rejected under 35 U.S.C. 103 as being unpatentable over Lewis in view of Ruane (US 2021/0143990 A1, issued May 13, 2021).
Regarding claims 2, 9, and 16, Lewis discloses the limitations of claims 1, 8, and 15, respectively. Lewis does not disclose: wherein determining that the first signature is valid comprises computing a first hash using the second cryptographic key, decrypting the first signature using the second cryptographic key to generate a second hash, and determining that the first signature is valid when the first hash and second hash are equal.
However, Ruane does disclose: wherein determining that the first signature is valid comprises computing a first hash using the second cryptographic key, decrypting the first signature using the second cryptographic key to generate a second hash, and determining that the first signature is valid when the first hash and second hash are equal (validating the digital signature, the security component uses a public key to generate hash data on the challenge, and the security component decrypts the digital signature using the public key. Ruane ¶ 42. If the hash data and the decrypted data match, the key is considered valid. Ruane ¶ 42.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the key replacement command includes the replacement public key, a field including the hash of the pubic key from the next replacement key pair, and two digital signatures of Lewis with computing hash values using received key and decrypting the signature and determining validity of the signature based upon matching the two resulting values based upon the teachings of Ruane. The motivation being to determine whether a different key was used to generate the signature or the signature was altered. Ruane ¶ 42.
Allowable Subject Matter
Were Applicant to overcome the above double patenting rejection, claims 3, 10, and 17 would be objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Durst (US 5,113,518, issued May 12, 1992), verifying key validity to present alert that a key is not valid and that an unauthorized attempt was made date a signature; Ashdown (US 2010/0174909 A1, published Jul. 8, 2010), verifying multiple digital signatures to enable key replacement; Sharifi Mehr (US 10,454,689 B1, issued Oct. 22, 2019), validate signatures to verify authenticity of certificates; Fletcher (US 2020/0213085 A1, published Jul. 2, 2020), validating multiple signature to facilitate sharing of new keys; Gueron (US 11,184,157 B1, issued Nov. 23, 2021), allowing an update to a key management service by confirming signatures are valid.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANCE M LITTLE whose telephone number is (571) 270-0408. The examiner can normally be reached on Monday - Friday 9:30am - 5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung (Jay) Kim can be reached on (571) 272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VANCE M LITTLE/Primary Examiner, Art Unit 2493
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