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 .
Response to Amendment
Applicant’s remarks filed on 11/06/2025 has been considered by the Examiner.
Double Patenting
With respect to Double Patenting rejections, Applicant states in the remarks, “Applicant will consider filing a terminal disclaimer upon the indication of allowable subject matter”. Examiner maintains the Double Patenting rejection.
Claim Rejections - 35 USC § 112
In view of the amendments to the claims 1, 11 and 19 and Applicants supporting remarks with respect to amended limitations are persuasive and 35 USC 112 (b) rejection has been withdrawn.
With respect to the amended claims 2 and 12, “wherein the instructions further cause the one or more processors to obtain the client request via a detected proximity’, the Applicant did not overcome the 35 USC 112(b) rejection. Applicant directs to the paragraph #[0037] that was noted in the previous office action by the Examiner, and states that the Specification discloses “In some embodiments, if a revocation is received or indicated, the client/network service can transmit the command, which will cause the vehicle to cease utilizing the profile information and delete the information or otherwise render the information inaccessible”. Examiner agrees the instant Specification discloses the above information in para [0037]. However, the claimed limitation “obtain a client request for data profile information…” [claim 1 and claim 11], further limited by “cause the one or more processors to obtain the client request via a detected proximity” in claim 2 and claim 12, are not supported in the Applicant’s provided paragraph [0037] or anywhere else in the instant specification.
With respect to the terms “individual classes, individual class or sub-classes”, Applicant directs to instant specification paragraph [0030] and states “Illustratively, the profile information can be organized into a set of individual classes and sub-classes“. Examiners agree that instant Specification discloses “individual classes and sub-classes of the profile information can be organized according to type of profile information or utilization of profile information” with a few examples as “financial information, account information, etc.” and “selectively transfer or utilize profile information – based on the authorization by classes or rules related to individual classes”. However, the claims include a mere mention of the terms ““individual classes, individual class or sub-classes” as limitations without any support for the definition and/or usage of those terms. Examiner reminds the Applicant that while the claims are examined in the light of the specification, the claims by their own merit/content, must provide complete clarity, boundary and establishments of all the terms.
With respect to the terms “process a revocation command to prevent subsequent access”, Applicant directs to instant specification paragraph [0037], Examiner agrees with the text as stated in the remarks to be present in para [0037]. However, “obtain a client request for data profile information access, wherein the client request for data profile information access is directed to an identified vehicle” as claimed in claim 1 which further narrowed in claim 10, ”process a revocation command to prevent subsequent access to the at least a portion of the data profile information“, is not supported in the instant specification.
Merely using the terms as limitations without providing support within the claim limitations is indefinite. Further when such terms do not have any semblance of support in the instant specification is considered not binding. Examiner maintains 35 USC 112(b) rejection for claims 2, 6-8, 10, 12, 14-16 and 18, 20, 22 for failing to particularly point out the subject matter which the inventor regards as the instant invention and these dependent claims have not been included in the prior art rejection. Future amendments to the dependent claims will be further considered on their own inherited & individual merit.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 6-8, 10, 12, 14-16 and 18, 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claims 2 and 12: The term “obtain the client request via a detected proximity” is not defined within the claim, and the instant specification does not provide any support. At best, the instant specification discloses “The user input can be provided utilizing a network connection”, “user provided input such as user proximity to a selected vehicle”, see para [0033 & 0044]. There is no “detect”, “detecting” or “detection” that is disclosed in the instant specification. Examiner suggests amending the claims as disclosed in the specification, without introducing any new matter.
With respect to claims 6 – 8, 14-16 and 19-20: The terms “individual classes, individual class or sub-classes” are not defined within these claims, and the instant specification does not provide any support distinguishing them or defining them. At best, the instant specification discloses “selectively transfer profile information based on the authorization by classes and the profile information can be organized into a set of individual classes according to type of profile information, such as financial information, account information”, see the instant specification para [0030]. Examiner suggests amending the claims as disclosed in the specification, in particular, para [0032, 0033, 0035, 0043 & 0047], without introducing any new matter.
With respect to claims 10, 18 and 22: The term “process a revocation command to prevent subsequent access” (Emphasis added), is not defined and the instant specification does not provide any support. At best, the instant specification discloses “revocation rules”, “if a revocation is received or indicated, vehicle cease utilizing the profile information and delete the information”, see instant specification para [0028 - 0029, 0033, 0037]. Examiner suggests amending the claims as disclosed in the specification, without introducing any new matter.
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 – 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,354,449. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader version of the US Patent 11,354,449 and claiming generating a public/private key pair, encrypting provisioning data using private key to create encrypted provisioning data that can be used for subsequent provisioning, whereas the instant invention claims encrypted data profile information that is encrypted with the encrypted data keys that process a revocation issued to prevent subsequent access to the profile information. Therefore, the claims of the instant application are rendered obvious by the listed Patent and a Terminal Disclaimer is required.
Claim Rejections - 35 USC § 102
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 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, 3-5, 9, 11, 13, 17, 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US Publication 2011/0112969 by Zaid et al., “Vehicle access control service3s and platform”.
As per claims 1 and 11, Zaid discloses “obtain a client request for data profile information access, wherein the client request for data profile information access is directed to an identified vehicle (Fig.4 - 7; associated texts; para [0124 - 0128]);
receive a set of encrypted data from a network service, the set of encrypted data including at least one encrypted data profile information and at least one encrypted data key, wherein the encrypted data profile information is encrypted with the at least one encrypted data key; receive a main key, wherein the main key is encrypted using a vehicle public key (para [0065, 0124, 0128 and 0132]);
decrypt the main key with a vehicle private key, wherein the vehicle private key is complimentary to the vehicle public key; decrypt the at least one encrypted data key using the decrypted main key ([0124, 0128 and 0132]);
decrypt at least a portion of the encrypted data profile information using the at least one decrypted data key to access the at least a portion of the data profile information (para [0128]); and causing access to the at least a portion of the encrypted data profile information (para [0128 and 0132], encrypted vehicle access information)“
Dependent claims are rejected by the virtue of their dependence on the above rejected parent claim 1 or claim 11.
As per claim 3, Zaid discloses “obtain client request via a transmitted client request (para [0124])”.
As per claims 4 and 13, Zaid discloses “transmit the vehicle public key to a client (para [0124])”.
As per claim 5, Zaid discloses “transmit the vehicle public key to the network service to transmit to one or more clients (para [0128])”.
As per claims 9, 17 and 21, Zaid discloses “processing the at least a portion of the data profile according to one or more processing rules (para [0128 and 0132])”.
Examiner has cited portions and particular paragraphs (or, columns and line numbers) from the prior art applied to the claims above for the convenience of the Applicant. Applicant is advised to review the prior art to incorporate all of the embodiments disclosed, background information provided in the reference, along with the related art description, in formulating a response to this office action. It is respectfully requested of the Applicant in preparing response, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
The examiner requests, in response to this office action, support be shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line number(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application. When responding to this office action, applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of art disclosed by the references cited or the objections made.
Conclusion
Examiner had reached out to the Attorney on record, Mr. Andersen with an Examiner proposed amendment to claims 10, 18 and 22, along with moving some of the other limitations in the other dependent claims to the respective independent claims 1, 11 and 19, to distinguish from the Examiner provided prior art, Mr. Andersen informed that the Applicants prefer receiving an office action for further considerations.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the listed prior art additionally discloses certain parts of the claim features (See PTO 892, Notice of References cited).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PRAMILA PARTHASARATHY whose telephone number is (571)272-3866. The examiner can normally be reached Mon-Fri: 7AM - 2PM EST.
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, Hadi Armouche can be reached at (571)270-3618. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PRAMILA PARTHASARATHY/ Primary Examiner, Art Unit 2409