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 .
Priority
2. Acknowledgement is made of Applicant’s benefit claim of U.S. Provisional Patent App. No. 63/671,504, filed July 15, 2024.
Status of Claims
3. This Office Action is issued in response to the claims filed on 07/11/2025.
Claims 1-20 are pending in this Office Action.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1-6, 8-13, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ness et al. (US 20240354753 A1), hereinafter “Ness” in view of Antonino et al. (US 20240265381 A1), hereinafter “Antonino.”
Regarding claim 1, Ness discloses a method for generating a key [within a trusted execution environment (TEE)], the method comprising:
generating, [within the TEE], a private key for a user in response to receiving a request to create a digital wallet from the user; creating a first shard, a second shard, and a third shard based on the private key using a sharding algorithm (paragraphs [0016]-[0017], [0036]-[0038], [0043]-[0044]);
encrypting the first shard (paragraphs [0048]-[0049]: encrypted key shard); and
transmitting the second shard to a developer associated with the digital wallet (paragraphs [0016]-[0017], [0036]-[0038], [0043]-[0044]: any party involving in secret sharing scheme of the digital wallet is a developer associated with the digital wallet).
Ness discloses “it is not uncommon to have at least a portion of the secrets residing on a Trusted Execution Environment (TEE), which limits the access to the secrets,.” but Ness does not explicitly disclose the private key generated within the TEE. However, generating a private key in a TEE is known in the art and Antonino’s teaching is an example (paragraphs [0100], [0103]-[0104], [0111], and [0174]: Custody Server-a TEE- generates public-private key-pairs).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Ness’s teaching of generating and distributing private key shards with Antonino’s teaching of generating a private key in a TEE and the motivation to do so would be to enhance security for the private key.
Regarding claim 2, Ness and Antonino disclose the method of claim 1, further comprising: creating a fourth shard and a fifth shard based on the third shard using the sharding algorithm; encrypting the fourth shard; and transmitting the fifth shard to the developer associated with the digital wallet (Ness: a). paragraphs [0016], [0021], [0043], [0057], and [0061]: further spitting and distributing key shard. b). paragraphs [0048]-[0049]: encrypted key shard. The combination of a) and b) would have an obvious and predictable result of creating a fourth shard and a fifth shard based on the third shard using the sharding algorithm; encrypting the fourth shard; and transmitting the fifth shard to the developer associated with the digital wallet).
Regarding claim 3, Ness and Antonino disclose the method of claim 2, further comprising: digitally signing a transaction request within the TEE (Antonino, Fig. 1 with associated text: transaction signing module 42 and paragraphs [0029]-[0032], [0106], [0115], [0151], [0177]).
Regarding claim 4, Ness and Antonino disclose the method of claim 3, wherein digitally signing the transaction request further comprises: receiving the transaction request; decrypting the fourth shard; forming the third shard using the sharding algorithm with the decrypted fourth shard and the fifth shard; decrypting the first shard; forming the private key in unencrypted form using the sharding algorithm with the decrypted first shard and the third shard; and signing a payload of the transaction request using the unencrypted private key (Ness, paragraphs [0016]-[0017], [0021]-[0023], [0036]-[0038], [0043]-[0044], [0048]-[0049]: dividing, encrypting, further dividing, distributing key shares, and reconstructing key from key shares. Antonino, paragraphs [0006]-[0028] and [0043]-[0056]: signing transaction using private key. The combination of Ness and Antonino’s teachings would result in obvious and predictable results of receiving the transaction request; decrypting the fourth shard; forming the third shard using the sharding algorithm with the decrypted fourth shard and the fifth shard; decrypting the first shard; forming the private key in unencrypted form using the sharding algorithm with the decrypted first shard and the third shard; and signing a payload of the transaction request using the unencrypted private key).
Regarding claim 5, Ness and Antonino disclose the method of claim 1, further comprising: recovering the digital wallet within the TEE (Antonino, paragraphs [0100], [0103]-[0104], [0108], [0111], and [0174]: Custody Server-a TEE- generates public-private key-pairs and recovers keys).
Regarding claim 6, Ness and Antonino disclose the method of claim 5, wherein recovering the digital wallet further comprises: receiving a digital wallet recovery request; decrypting the first shard; and combining the decrypted first shard with the second shard using the sharding algorithm to create a raw private key (Ness, paragraphs [0016]-[0017], [0021]-[0023], [0036]-[0038], [0043]-[0044],and [0048]-[0049]: dividing, encrypting, further dividing, distributing key shares, and reconstructing key from key shares. Antonino, paragraphs [0100], [0103]-[0104], [0108], [0111], and [0174]: Custody Server-a TEE- generates public-private key-pairs and recovers keys. The combination of Ness and Antonino’s teachings would result in obvious and predictable results of receiving a digital wallet recovery request; decrypting the first shard; and combining the decrypted first shard with the second shard using the sharding algorithm to create a raw private key.
Regarding claims 8-13, they claim similar subject matters to claims 1-6 respectively; therefore, claims 8-13 are rejected at least for the same reasons as claims 1-6 respectively. Antonino further discloses memory and processor comprising trusted execution environment (paragraphs [0079]-[0080]).
Regarding claims 15-19, they claim similar subject matters to claims 1-5 respectively; therefore, claims 15-19 are rejected at least for the same reasons as claims 1-5 respectively.
Allowable Subject Matter
6. Claims 7, 14, and 20 are 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.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 7, 14, and 20 written in independent forms:
a. Ness et al. (US 20240354753 A1) discloses generating, dividing, encrypting, distributing key shares, further dividing key share, and reconstructing key from key shares ([0016]-[0017], [0021]-[0023], [0036]-[0038], [0043]-[0044], [0048]-[0049], [0057], and [0061]).
b. Antonino et al. (US 20240265381 A1) discloses a networked custody server for signing transactions on behalf of a plurality of users. The custody server includes a processor that provides a trusted execution environment for securely decrypting and executing software instructions stored in an encrypted enclave of the custody server. A plurality of users' private keys are stored in the encrypted enclave with a respective access policy. The custody server receives a request to sign a transaction on behalf of a user, and user-authentication data for the user, and determines within the trusted execution environment whether the user-authentication data satisfies the access policy associated with the user. If so, it uses the user's private key to sign the transaction within the trusted execution environment (Fig.1 with associated text and paragraphs [0006]-[0028] and [0043]-[0056], [0100], [0103]-[0104], [0108], [0111], and [0174]).
c. Cela et al. (US 20240291650 A1) discloses a secure control plane (SCP), which in turn provides an isolated secure execution environment for a data plane (DP). Any arbitrary business logic can execute within the DP, and all sensitive data traversing the SCP and entering the DP is encrypted. Split keys generated outside the DP are assembled within, and only within, the DP, where they are used to decrypt sensitive data, enabling the business logic to perform computations using the sensitive data within the secure execution environment (Fig.1 with associated text and paragraphs [0016]-[0019], [0026], [0032][0041], [0044]-[0050]).
The prior arts of record fail to either disclose or sufficiently suggest the combination features as claimed and arranged by applicant. Although the above references teach similar aspects of claims 7, 14, and 20, none of these references individually or in reasonable combination discloses all the limitations as claimed in claims 7, 14, and 20 and each of these claims 7, 14, and 20 as a whole is not obvious over these prior arts. Therefore, claims 7, 14, and 20 are allowable over the prior arts of record.
Prior Art of Record
7. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: see attached PTO-892 Notice of References Cited.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANH T. LE whose telephone number is (571)270-0279. The examiner can normally be reached on Monday-Friday 8:00 am - 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANH T LE/Primary Examiner, Art Unit 2495
