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 .
The following is a Final Office action in response to communications received on February 18, 2026. Claims 21, 23-26, 28-31 and 33-35 are pending and addressed below.
Response to Arguments
Applicant’s amendments are not sufficient to overcome the nonstatutory double patenting rejections set forth in the previous Office Action. Applicant states in the Remarks that a terminal disclaimer would be filed upon allowance. However, no terminal disclaimer has been filed. Therefore, the rejections are maintained and repeated herein below.
Applicant’s amendments are sufficient to overcome the claim objections set forth in the previous Office Action.
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 21, 23-26, 28-31 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,228,420. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 21, 23-26, 28-31 and 33-35 are disclosed by claims 1-17 of U.S. Patent No. 11,228,420.
Claims 21, 23-26, 28-31 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,560,256. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 21, 23-26, 28-31 and 33-35 are disclosed by claims 1-15 of U.S. Patent No. 10,560,256.
Claims 21, 23-26, 28-31 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,103,872. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 21, 23-26, 28-31 and 33-35 are disclosed by claims 1-19 of U.S. Patent No. 10,103,872.
Allowable Subject Matter
Claims 21, 23-26, 28-31 and 33-35 would be allowable if rewritten or amended to overcome all of the rejection(s) set forth in this Office action.
Claim 21 recites, inter alia, “wherein the session information to define one or more of an integrity parameter, a cryptography parameter, or a replay parameter to facilitate control over operations of and communication between the first and second modules.”
The closest prior art of record are:
Jaber et al. (U.S. Pub. No. 2013/0007455 and hereinafter referred to as Jaber) which discloses BIOS connected to a processor for providing trusted communication by using a session shared secret (paragraphs [0021], [0028], [0029], [0034], [0036], [0037] and Figs. 1-2)
Rajakarunanayake et al. (U.S. Pub. No. 2014/0123209 and hereinafter referred to as Rajakarunanayake) which discloses audio data is captured at a microphone and encrypted before transferring to another module (paragraphs [0017], [0018], [0022] and Fig. 1)
While the prior art does disclose encrypted communication of recorded data and communication between modules using shared memory space, the prior art was not found to disclose the cited limitation in combination with the other limitations. Therefore, claim 21 is considered to recite allowable subject matter over the prior art. Claims 26 and 31 are considered to recite allowable subject matter over the prior art for similar reasons to claim 21. Dependent claims 23-5, 28-30 and 33-35 are considered to recite allowable subject matter over the prior art based on their dependency.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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, Taghi Arani can be reached at 571-272-3787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THADDEUS J PLECHA/Examiner, Art Unit 2438
Prosecution Insights