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 01/29/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
This Office action is in response to amendment/reconsideration filed on 01/26/20256 the amendments have been considered. Claims 1-12, and 15 have been amended. Claims 1-15 are pending for examination, the rejection cited as stated below.
Response to Arguments
Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive. Applicant asserts that the Double Patenting Rejection is traversed. However, Applicant’s Representative has not given an indication as the reasoning behind traversing the rejection. The Examiner indicated that while the instant application and parent applications (Patents 11,616,781 and 12,238,103) are not identical, they are not patentably distinct from each other because they are both claiming common subject matter, handling communications using an air gap-based network isolation device. The Examiner notes that the Patent applications and the instant applications are patentability indistinct variations of the same inventive concept. The Examiner made the Double Patenting rejection determination based on the fact that the parent application has claims that have overall appearances with basically the same design characteristics and the differences between both parent application and current application are considered patentably insufficient when they are obvious to a person skilled in the art. While the parent applications and instant application have different scopes, the Examiner found that the difference in scope is minor and patentably indistinct between the claims being compared.
Thus, the applied nonstatutory double patenting rejection applies in the current application because the claims are directed to the same inventive concept but with different appearances or differing scope that are patentability indistinct from each other.
Applicant asserts that the prior art of Voss fails to disclose the limitations “a memory resource to store a set of configurations for an authentication process” and “a communication module that implements, for a communication received from an external computing device, authentication process that is based on the set of configurations”, as claimed in Claim 1, silent to “storing configuration data for configuring an authentication process”, “receive a communication from an external device”, “authenticate the communication or a source of the communication based on the configuration data”, and “based on authenticating the communication, transmitting a command that is based on the communication to a circuit board device”, as recited in Claim 9.
The Examiner respectfully disagrees, as Voss discloses in Paragraph 0030 that the air-gap device contains logging features (i.e., memory resource…) that generate a log that includes a user profile, passcode associated with a change in the configuration of the air-gap device, type of user input used to change the configuration of the air-gap device, etc. Paragraph 0038 discloses that the air-gap device includes one or more buttons that allow the user to open or close the air-gap of the air-gap device and also a user-identifier and/or password that is required to change the configuration of the air-gap device. Paragraph 0039 discloses that the user input is provided at the screen interface, a keyboard, mouse, or an external device, wherein the input to change the configuration of the air-gap device is provided by a separate user device, which is connected to the air-gap device.
Based on the rationale explained above, the Examiner disagrees with the prior art being silent to the claimed embodiment.
Claim Objections
Claim 1 and Claim 9 are objected to because of the following informalities: both Claims 1 and 9 contain the phrase “date network”, when it should be “data network”. Appropriate correction is required.
Claims 5-8 are objected to because of the following informalities: Claims 5-8 disclose “the circuit board…”, when it should be “the circuit board device…”. Appropriate correction is required.
Allowable Subject Matter
Claims 12-15 are allowed over the prior art of record when the Double Patenting Rejections is addressed, based on the fact that the configuration data that is stored in the air-gap-based, network isolation device, includes a whitelist of authorized devices or users, which is used in order to gain access to the air-gap device. The Examiner suggests incorporating this language into the other independent claims (Claim 1 and Claim 9) in order to move prosecution forward.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Patent No. 11,616,781 and over claims 1-3, 6-11, 14-19, and 21-23 of Patent No. 12,238,103. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both claiming common subject matter, handling communications using an air gap-based network isolation device.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Michael Steven Voss (US 20210110068 A1), hereinafter “Voss”.
Regarding Claim 1, Voss discloses a circuit board device for an air-gap-based, network isolation device (Voss, Fig 1, Paragraph 0016, schematic of an embodiment of an air-gap device), comprising:
an airgap device operable to switch between a disconnected state in which a physical airgap is formed by the airgap device, and a connected state in which the physical airgap is closed (Voss, Figs 1 and 2, Paragraph 0015, ethernet network connect/disconnect (i.e., air gap) device utilizing electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraph 0016, air-gap device includes a plurality of interfaces used to connect/disconnect, open/close, wherein the interfaces are interconnected by a relay array block.);
a memory resource to store a set of configurations for an authentication process (Voss, Paragraph 030, air-gap device contain logging features that include user profile and passcode associated with a change in the configuration of the air-gap device, type of input used to change the configuration of the air-gap device, etc.);
a set of connection port elements, each connection port element in the set of connection port elements being interconnected to the airgap device and including a plurality of connection ports, including a first connection port for connecting to an internal network or resource, and a second connection port element for connecting to a data network (Voss, Figs 1 and 2, Paragraph 0015, ethernet network connect/disconnect (i.e., air gap) device utilizing electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraphs 0016-0017, air-gap device includes a plurality of interfaces used to connect/disconnect, open/close, wherein the interfaces are interconnected by a relay array block. Paragraph 0039, other connections used to interface with other devices. Paragraph 0045, air-gap device can be connected and disconnected from the internet);
wherein for at least a first connection port element of the set, the respective first connection port and the second connection port are interconnected to one another by the airgap device (Voss, Paragraph 0016, array block which contains interconnected interfaces. Paragraph 0042, air gap device contains array block used for connections);
a controller connected to the airgap device (Voss, Fig 1, Paragraph 0023, fourth interface associated with a controller is connected to the relay array block);
and a communications module comprising a set of communication receivers connected to the controller (Voss, Fig 1, Paragraphs 0016, 0023, fourth interface associated with a controller. Paragraph 0027, fourth interface is used to configure array block to switch between normal or gapped configuration);
wherein the communications module is configured to (i) receive, via a communication receiver of the set, a communication from a master an external computing device, (ii) implement, for the communication, an authentication process that is based on the set of configurations, (ii) based on a command included in the communication, cause the controller to trigger the airgap device into switching between the disconnected state and the connected state (Voss, Fig 1, Paragraph 0027, the fourth interface can be used to interface with the controller to configure the relay array block (e.g., to switch between a normal or gapped configuration, or the like) (i.e., wherein the device that connects to the fourth interface to interface with the controller can be considered to be the "master computer", as claimed claimed),
wherein when the airgap device is in the connected state, the first connection port element is configured to connect the internal network or resource to the date network (Voss, Paragraph 0027, switching between normal or gapped configuration. Paragraphs 0038-0039, interface used to open or close the air-gap device in order for communication to occur);
and wherein when the airgap device is in the disconnected state, the first connection port element is configured to physically airgap the internal network or resource from the data network (Voss, Paragraph 0027, switching between normal or gapped configuration. Paragraphs 0038-0039, interface used to open or close the air-gap device in order for communication to occur).
Regarding Claim 2, Voss discloses the circuit board device of claim 1 above, wherein the first connection port element is operable to implement an comprises a unique authentication protocol that is specific to the first connection port element and configured in accordance with the stored configurations (Voss, Paragraph 0028, configuration or relay array block is switched based on user input at a user interface. Paragraph 0030, air-gap device includes logging features, which include a user profile and/or passcode associated with a change in the configuration of the air-gap device. Such logging feature adds an auditable security trail to the use of the air-gap device).
Regarding Claim 3, Voss discloses the circuit board device of claim 1 above, further comprising:
a plurality of status indicators, each status indicator being associated with a corresponding connection port element of the set of connection port elements (Voss, Paragraph 0038, front face of the air-gap device comprises an air-gap indicator status, which includes lights);
wherein the status indicator indicates whether the corresponding connection port element is connected to or disconnected from the data network (Voss, Paragraph 0038, front face of the air-gap device comprises an air-gap indicator status, which includes lights that indicate whether the air-gap device is in an “open” or a “closed” configuration).
Regarding Claim 4, Voss discloses the circuit board device of claim 3 above, wherein the status indicator comprises a multi-colored light element (Voss, Paragraph 0038, status indicator includes lights indicating the operational status of the air-gap device).
Regarding Claim 5, Voss discloses the circuit board of claim 1 above, wherein the data network includes the Internet, and wherein each communication receiver of the set is operable to receive an out-of- band communication, transmitted using a communication protocol that is distinct from a communication protocol of the data network (Voss, Paragraph 0015, air-gap device using electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraph 0024, multiple interfaces physically separated from the control signaling path for the relay array block. Such an air-gap device cannot be network compromised and can provide security for critical data or network segments by selective isolation. Paragraph 0036, fourth interface is different than the other three, wherein the controller can communicate with an external device, which can allow for the fourth interface to be absent).
Regarding Claim 6, Voss discloses the circuit board of claim 5 above, wherein the out-of-band communication is transmitted as a short message service (SMS) from a computing device of a user (Voss, Paragraph 0036, using interfaces to connect to external devices wirelessly and/or via hardwire interfaces. Paragraph 0039, input is received from a user device).
Regarding Claim 7, Voss discloses the circuit board of claim 7 above, wherein the communication module implements the authentication process by authenticating at least one of a message transmitted from the computing device or a source of the message (Voss, Paragraph 0030, air-gap device includes logging features, which include a user profile and/or passcode associated with a change in the configuration of the air-gap device. Such logging feature adds an auditable security trail to the use of the air-gap device).
Regarding Claim 8, Voss discloses the circuit board of claim 7 above, wherein upon completing the authentication process, the airgap device is switched to a connected state for a predetermined duration or until a second communication is communicated from the computing device that transmitted the message (Voss, Paragraph 0015, Ethernet network connect/disconnect (i.e., air gap) device utilizing electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraph 0030, air-gap device includes logging features, which include a user profile and/or passcode associated with a change in the configuration of the air-gap device. Paragraph 0039, user input is provided through an external device, wherein the user device can be wirelessly connected to the controller of the air-gap device via a wireless network not connected to the outside world. Input from such a user device can be via a browser, mobile app, or the like).
Regarding Claim 9, Voss discloses a system comprising:
a computer system and a circuit board device, the computer system comprising a communication transceiver to communicate with a computing device of a user and a serial transceiver (Voss, Fig 1, Paragraph 0016, schematic of an embodiment of an air-gap device),
wherein the computer system is configured to:
store configuration data for configuring an authentication process (Voss, Paragraph 030, air-gap device contain logging features that include user profile and passcode associated with a change in the configuration of the air-gap device, type of input used to change the configuration of the air-gap device, etc.);
receive, via the communication transceiver, a communication from an external device (Voss, Paragraph 0036, using interfaces to connect to external devices wirelessly and/or via hardwire interfaces.);
authenticate the communication or a source of the communication based on the configuration data (Voss, Paragraph 0038, password used in order to change the configuration of the air-gap device);
and based on authenticating the communication, transmitting a command that is based on the communication to a circuit board device (Voss, Paragraphs 0038-0039, password is used in order to change the configuration from open to close and vice versa);
wherein the circuit board device comprises:
an airgap device operable to switch between a disconnected state in which a physical airgap is formed by the airgap device, and a connected state in which the physical airgap is closed (Voss, Figs 1 and 2, Paragraph 0015, ethernet network connect/disconnect (i.e., air gap) device utilizing electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraph 0016, air-gap device includes a plurality of interfaces used to connect/disconnect, open/close, wherein the interfaces are interconnected by a relay array block);
a set of connection port elements, each connection port element in the set of connection port elements being interconnected to the airgap device and including a plurality of connection ports, including a first connection port for connecting to an internal network or resource, and a second connection port element for connecting to a data network (Voss, Figs 1 and 2, Paragraph 0015, ethernet network connect/disconnect (i.e., air gap) device utilizing electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraphs 0016-0017, air-gap device includes a plurality of interfaces used to connect/disconnect, open/close, wherein the interfaces are interconnected by a relay array block. Paragraph 0039, other connections used to interface with other devices. Paragraph 0045, air-gap device can be connected and disconnected from the internet);
wherein for at least a first connection port element of the set, the respective first connection port and the second connection port are interconnected to one another by the airgap device (Voss, Paragraph 0016, array block which contains interconnected interfaces. Paragraph 0042, air gap device contains array block used for connections);
a controller connected to the airgap device (Voss, Fig 1, Paragraph 0023, fourth interface associated with a controller is connected to the relay array block);
and a communications module comprising a set of communication receivers connected to the controller (Voss, Fig 1, Paragraphs 0016, 0023, fourth interface associated with a controller. Paragraph 0027, fourth interface is used to configure array block to switch between normal or gapped configuration);
wherein the communications module is configured to (i) receive, via a communication receiver of the set, the command transmitted from the computer system, (ii) based on a command included in the communication, cause the controller to trigger the airgap device into switching between the disconnected state and the connected state (Voss, Fig 1, Paragraph 0027, the fourth interface can be used to interface with the controller to configure the relay array block (e.g., to switch between a normal or gapped configuration, or the like) (i.e., wherein the device that connects to the fourth interface to interface with the controller can be considered to be the "master computer", as claimed claimed);
wherein when the airgap device is in the connected state, the first connection port element is configured to connect the internal network or resource to the date network (Voss, Paragraph 0027, switching between normal or gapped configuration. Paragraphs 0038-0039, interface used to open or close the air-gap device in order for communication to occur);
and wherein when the airgap device is in the disconnected state, the first connection port element is configured to physically airgap the internal network or resource from the data network (Voss, Paragraph 0027, switching between normal or gapped configuration. Paragraphs 0038-0039, interface used to open or close the air-gap device in order for communication to occur).
Regarding Claim 10, Voss discloses the system of claim 9, wherein each connection port element of the set includes a distinct authentication process that is configured un accordance with a corresponding set of configuration data, each connection port element enables a corresponding internal network or resource to be connected to the data network using the airgap device, or a second airgap device (Voss, Paragraphs 0038-0039, password is used in order to change the configuration from open to close and vice versa).
Regarding Claim 11, Voss discloses the system of claim 10 above, wherein the communication transceiver of the computer system includes an SMS modem to communicate with an authorized mobile computing device using SMS messages, and wherein upon the computer system completing the authentication process, the computer system transmits a command to the controller to close the airgap device of a connection port element specified by the user in the SMS communications (Voss, Paragraph 0015, Ethernet network connect/disconnect (i.e., air gap) device utilizing electromechanical relays under microprocessor control utilizing out-of-band signaling. Paragraph 0030, air-gap device includes logging features, which include a user profile and/or passcode associated with a change in the configuration of the air-gap device. Paragraph 0039, user input is provided through an external device, wherein the user device can be wirelessly connected to the controller of the air-gap device via a wireless network not connected to the outside world. Input from such a user device can be via a browser, mobile app, or the like).
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 JAVIER O GUZMAN whose telephone number is (571)270-0588. The examiner can normally be reached Monday - Friday 8 am to 4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian J Gillis can be reached at 571-272-7952. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAVIER O GUZMAN/ Primary Examiner, Art Unit 2446