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 .
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 12/22/2023, 06/04/2024, 10/01/2024 and 07/31/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement has been considered by the Examiner.
Priority
The instant application claims priority to JP 2018-166429, which was filed on 2018-09-05 A certified copy of the Japanese patent application has been received.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 27-41 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims are recited such that they define a system and or an apparatus but none of the claims positively identify hardware components of the system. Examiner suggest amending the claim by adding hardware processor and memory to overcome the rejection.
Claim 42 is not statutory as it is drawn to only the program (software per se) and not the program in combination with the disk and as such fails to fall into a statutory category of invention as no hardware is claimed.
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.
Claims 27-42 are rejected on the ground of statutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11902454.
With respect to claim 27 and 42 of instant application, claim 17 o of U.S. Patent No. 11902454 disclose all the limitations of claim 27. Although the claims at issue are not identical, they are not patentably distinct from each other. Therefore claim 17 of the patent anticipates claims 27 and 42.
With respect to claim 37 of instant application, claims 1 and 7 of U.S. Patent No. 11902454 disclose all the limitations of claim 37. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1 and 7 of the patent anticipates claim 37 because they teach all the limitations of claim 37 of the instant application.
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 27, 29-37 and 39-42 are is rejected under 35 U.S.C. 103 as being unpatentable over Haque; Asad US 20190020648 (hereinafter Haque) in view of Watanabe; Hiroshi et al US 10581841 (hereinafter Watanabe).
As per claim 27, Haque teaches: A communication system, comprising:
a first apparatus (a user device (Haque: Abs. ); and
a second apparatus that communicates with the first apparatus, wherein the second apparatus obtains a first public key of the first apparatus generated based on a first private key of the first apparatus (network device (second apparatus) , receives request comprise of public key of the user device. Haque: Abs.);
the second apparatus determines as a first network address of the first apparatus, entirety of the first network address being entirety or a part of a first hash value, the first hash value being generated based on the first public key and a predetermined hash function (“an address may be determined for the second device. The address may be determined using the public key. The first device may obtain the public key of the second device from the digital certificate. The first device may receive the public key of the second device, such as from an intermediary device. The address may be determined by applying a deterministic function to the public key. The deterministic function may comprise an algorithm which, for a given input, produces a same output. The deterministic function may comprise a hash function, such as MD4, MD5, SHA-1, SHA-256, SHA-512 or SHA-3” Haque: para. 180),
the second apparatus transmits to the first apparatus, a second public key of the second apparatus [generated based on a second private key of the second apparatus], and
the first apparatus determines as a second network address of the second apparatus, entirety of the second network address being entirety or a part of a second hash value, the second hash value being generated based on the second public key received from the second apparatus and the predetermined hash function(“an address may be determined for the second device. The address may be determined using the public key. The first device may obtain the public key of the second device from the digital certificate. The first device may receive the public key of the second device, such as from an intermediary device. The address may be determined by applying a deterministic function to the public key. The deterministic function may comprise an algorithm which, for a given input, produces a same output. The deterministic function may comprise a hash function, such as MD4, MD5, SHA-1, SHA-256, SHA-512 or SHA-3” para. 180), Haque: para. 180),
Haque does not explicitly teach; however, Watanabe discloses: public key generated based on a second private key of the second apparatus (" The identification core may. output a public key generated based on the private key with a key generator." Watanabe, Column 23 line 65-66).
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 Haque with the teachings Watanabe of to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied in a predictable manner to confined in the identification core. The public key is publicized as a logical address of a logical node. The logical node and the physical node are uniquely linked by the public key and the private key. The security of the whole network is thus effectively improved (Watanabe, Abstract).
As per claim 29, the rejection of claim 27 is incorporated herein. Haque teaches: the second apparatus transmits to the first apparatus, a digital certificate associated with the second public key (Haque: para. 4).
As per claim 30, the rejection of claim 29 is incorporated herein. Haque teaches: the second apparatus acquires the digital certificate from a certificate authority (“The digital certificate may be created by a certification authority. The second device may transmit the public key and the private key to the certification authority when the second device is initialized, turned on, or when a program is executed on the second device. The certification authority may create the digital certificate for the second device in response to receiving the keys. The certification authority may transmit or install the digital certificate on the second device. ”Haque: para. 84).
As per claim 31, the rejection of claim 27 is incorporated herein. Haque teaches: the digital certificate includes at least one of attribute information related to an attribute of the second apparatus and attribute information of a user associated with the second apparatus (“The digital certificate may comprise the public key of the second device. The digital certificate may comprise one or more unique identifiers of the second device (e.g., a string of characters, a hash, a name, or an identification number). The digital certificate may comprise a subject of the public key, such as a serial number or a name (e.g., an X.500 Distinguished Name). “Haque: para. 86).
As per claim 32, this claim defines an apparatus that corresponds to system of claim 27 and does not define beyond limitations of claim 27. Therefore, claim 32 is rejected with the same rational as in the rejection of claim 27.
As per claim 33, this claim defines an apparatus that corresponds to system of claim 28 and does not define beyond limitations of claim 28. Therefore, claim 33 is rejected with the same rational as in the rejection of claim 28.
As per claim 34, this claim defines an apparatus that corresponds to system of claim 29 and does not define beyond limitations of claim 29. Therefore, claim 34 is rejected with the same rational as in the rejection of claim 29.
As per claim 35, this claim defines an apparatus that corresponds to system of claim 30 and does not define beyond limitations of claim 30. Therefore, claim 35 is rejected with the same rational as in the rejection of claim 30.
As per claim 36, this claim defines an apparatus that corresponds to system of claim 31 and does not define beyond limitations of claim 31. Therefore, claim 36 is rejected with the same rational as in the rejection of claim 31.
As per claim 37, this claim defines an method that corresponds to system of claim 27 and does not define beyond limitations of claim 27. Therefore, claim 37 is rejected with the same rational as in the rejection of claim 27.
As per claim 39, this claim defines an apparatus that corresponds to system of claim 29 and does not define beyond limitations of claim 29. Therefore, claim 39 is rejected with the same rational as in the rejection of claim 29.
As per claim 40, this claim defines an apparatus that corresponds to system of claim 30 and does not define beyond limitations of claim 30. Therefore, claim 40 is rejected with the same rational as in the rejection of claim 30.
As per claim 41, this claim defines an apparatus that corresponds to system of claim 31 and does not define beyond limitations of claim 31. Therefore, claim 41 is rejected with the same rational as in the rejection of claim 31.
As per claim 42, this claim defines a communication program that corresponds to system of claim 37 and does not define beyond limitations of claim 37. Therefore, claim 42 is rejected with the same rational as in the rejection of claim 37.
Claims 28 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Haque; in view of Watanabe and further in view of BI, Jun CN 101610255 (hereinafter BI).
As per claim 28, the rejection of claim 27 is incorporated herein. The combination of Haque and Watanabe does not teach; however, BI discloses: the second apparatus determines as the second private key, a candidate among private keys generated by a random number generator upon a hash value generated based on the predetermined hash function and a public key to be paired with the candidate private key satisfying a condition for use as a network address (“step (2.1), an authentication gateway generates one public and private key pair (p, s), or manually configures one male the private key based on the public key and unidirectional Hash function hash configured in advance, the function can be any one-way hash function” BI: page: 11, lines 12-19) .
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Haque and Watanabe with the teaching of BI to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied in order to facilitate secure communication.
As per claim 38, this claim defines an apparatus that corresponds to system of claim 28 and does not define beyond limitations of claim 28. Therefore, claim 38 is rejected with the same rational as in the rejection of claim 28.
Conclusion
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/GHODRAT JAMSHIDI/ Primary Examiner, Art Unit 2493