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 .
Claim Objections
Claim 17 is objected to because of the following informalities: claim 17 is a device claim listed as being dependent on claim 6, a method claim. Claim 17 should probably be dependent on claim 16. Appropriate correction is required.
Claims 1, 11 are objected to because of the following informalities: claims refer to KEM DECAPS and KEM ENCAPS, the first use of the abbreviations should be spelled out. Appropriate correction is required.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,388,631. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations are similar and merely reworded.
19/258004
12,388,631
1. A method for a device to securely communicate with a network, the method performed by the device, the method comprising:
a) storing (i) a set of key encapsulation mechanism (KEM) algorithms comprising a first KEM algorithm, and (ii) a server static public key;
b) generating a device ephemeral private key and a device ephemeral public key for the first KEM algorithm, wherein the device ephemeral public key corresponds to the device ephemeral private key;
c) conducting a KEM ENCAPS function to generate a first shared secret and a first asymmetric ciphertext using at least the server static public key;
d) generating a first symmetric ciphering key using the first shared secret;
e) encrypting a first plaintext into a first symmetric ciphertext, wherein the first plaintext comprises the device ephemeral public key, an identifier for the first KEM algorithm, and the set of KEM algorithms;
f) sending, to the network via a network interface, a first message comprising the first asymmetric ciphertext and the first symmetric ciphertext;
g) receiving, from the network, a second message comprising a second symmetric ciphertext and a third symmetric ciphertext;
h) decrypting the second symmetric ciphertext with the first symmetric ciphering key in order to read a second asymmetric ciphertext;
i) conducting a KEM DECAPS function with the device ephemeral private key and the first KEM algorithm to generate a second shared secret;
j) generating a second symmetric ciphering key using at least the first shared secret and the second shared secret; and
k) decrypting the third symmetric ciphertext into a second plaintext using the second symmetric ciphering key.
1. A method for a server to securely communicate with a device, the method performed by the server, the method comprising:
a) storing in nonvolatile memory a first set of key encapsulation mechanism (KEM) parameters and a server static private key;
b) receiving a first message from the device, wherein the first message includes a first asymmetric ciphertext and a first symmetric ciphertext;
c) conducting a KEM decapsulation (DECAPS) function with the first asymmetric ciphertext and the server static private key in order to generate a first shared secret;
d) generating a first symmetric ciphering key using at least the first shared secret;
e) decrypting the first symmetric ciphertext using the first symmetric ciphering key, wherein a first plaintext from the first symmetric ciphertext includes a device ephemeral public key, a second set of KEM parameters, and a first subset of both (i) the first set of KEM parameters and (ii) the second set of KEM parameters;
f) selecting a second subset of both the first set of KEM parameters and the second set of KEM parameters, wherein the first subset and the second subset are different;
g) conducting a KEM encapsulation (ENCAPS) function to generate a second shared secret and a second asymmetric ciphertext using at least (i) the device ephemeral public key and (ii) the first subset;
h) generating a second symmetric ciphering key using at least the second shared secret;
i) generating a server ephemeral public key and a server ephemeral private key using the second subset;
j) encrypting (i) the second asymmetric ciphertext into a second symmetric ciphertext using the first symmetric ciphering key, and (ii) a second plaintext comprising the server ephemeral public key into a third symmetric ciphertext using the second symmetric ciphering key; and
k) sending a second message to the device, wherein the second message includes the second symmetric ciphertext and the third symmetric ciphertext.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J GOODCHILD whose telephone number is (571)270-1589. The examiner can normally be reached M-F 8am-4:30pm.
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/William J. Goodchild/Primary Examiner, Art Unit 2433
