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 .
Election/Restrictions
Applicant’s election of Species I (claims 1-8) in the reply filed on 12/22/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 9-13 are withdrawn from consideration.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“the first processor portion: evaluates a received message to determine whether to provide an instruction to transition from a low power state by comparing at least one aspect of the received message to at least one transition from low power state criterion; generates a transition from low power state instruction if the at least one aspect of the received message satisfies the at least one transition from low power state criterion; and provides the transition from low power state instruction” (claim 1); and
“the second processor portion to transition from a low power state, wherein the second processor portion generated the at least one transition from low power state criterion before the second processor entered the low power state” (claim 2).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
The word one in the limitation “the at least on transition from low power state criterion” recited in claim 1 (lines 13-14) and claim 6 (line 12) appears mistyped.
Appropriate correction is required.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,126,241. Although the claims at issue are not identical, they are not patentably distinct from each other because all claim limitations of claims 1-2 and 4-8 in the current Application are disclosed in respective claims 1-7 of U.S. Patent No. 11,126,241.
"Generally, an obviousness-type double patenting analysis entails two steps. First, as a matter of law, a court construes the claim in the earlier patent and the claim in the later patent and determines the differences. Georgia-Pacific Corp. v. United States Gypsum Co., 195 F.3d 1322, 1326, 52, USPQ2d 1590, 1593 (Fed. Cir. 1999). Second, the court determines whether the differences in the subject matter between the two claims render the claims patentably distinct. Id. at 1327, 52 USPQ2d at 1595. A later claim that is not patentably distinct from an earlier claim in a commonly owned patent is invalid for obvious-type double patenting. In re Berg, 140 F.3d 1428, 1431,46 USPQ2d 1226, 1229 (Fed. Cir. 1998). A later patent claim is not patentably distinct from an earlier parent claim if the later claim is obvious over, or anticipated by, the patent claim. In re Longi, 759 F.2d at 896, 255 USPQ at 651 (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus)." Eli Lilly and Company v Barr Laboratories, Inc., United States Court of Appeals for the Federal Circuit, On petition for Rehearing en banc (decided: May 30, 2001).
Claim 3, being dependent on claim 1, is rejected based on the same ground of rejection.
In addition claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 16 of U.S. Patent No. 10,444,814 in view of Zhang et al., US Patent Appl. Pub. No. 2014/0298066.
Claims 1 and 16 of U.S. Patent No. 10,444,814 disclose all claim limitations of respective claims 1 and 6 in the current Application except the wireless user equipment device uses a shared value as an input to an algorithm to derive the at least one transition from low power state criterion.
Zhang teaches a system and method for securely waking a computer system over wireless network (Abstract, FIG(s) 1-4, paragraph 0009, paragraph 0038, lines 7-11, paragraph 0042), wherein a sleeping/first computer system (FIG. 1, 104, FIG. 4, 408) generates a registration message containing a nonce number value (shared value), which is transmitted and saved in the server memory, from where it is further retrieved by the end user /second computer (FIG. 1, 106, FIG. 4, 406) to be incorporated into the wakeup message which wakes up the sleeping/first computer after successful authentication of the nonce via decryption algorithm – i.e. sharing and decrypting the nonce in order to wake up the sleeping/first computer; paragraph 0015, lines 7-13, paragraphs 0016-0018, paragraph 0019, lines 1-2, paragraph 0020, lines 1-3, lines 7-8, FIG. 3, paragraph 0053, lines 1-3, paragraph 0055, lines 1-7, paragraph 0056, lines 1-4, paragraph 0059, lines 1-3, paragraph 0061, lines 1-11, paragraph 0062, paragraph 0064, lines 1-8, paragraph 0066, lines 1-2, paragraphs 0067-0068, FIG. 4, paragraphs 0074-0078). In Zhang, such circuitry and functionality allows for remote wake up of the computer system while ensuring security and providing power savings (paragraphs 0035-0036).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above-described circuitry and functionality, as suggested by Zhang with claims 1 and 16 of U.S. Patent No. 10,444,814 in order to implement the wireless user equipment device uses a shared value as an input to an algorithm to derive the at least one transition from low power state criterion. One of ordinary skill in the art would be motivated to do so in order to remotely wake up the system while ensuring security and providing power savings.
Claims 2-5 and 7-8 being dependent of respective claims 1 and 6, are rejected based on the same ground of rejection.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1, 5, 6, and 8 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Zhang et al., US Patent Appl. Pub. No. 2014/0298066.
Regarding claim 1, Zhang discloses a system (FIG(s) 1-5), comprising:
a first processor portion (FIG. 2 control logic 208 – paragraphs 0044 and 0050) of a wireless user equipment device (sleeping client computer FIG. 1, 104, FIG. 2, 220, FIG. 4 408 – paragraphs 0040, 0042, and 0049, paragraph 0072, line 1-3), communicating with wireless network 102 – paragraph 0038, lines 7-11, paragraph 0042), wherein the first processor portion:
evaluates a received message to determine whether to provide an instruction to transition from a low power state by comparing at least one aspect of the received message to at least one transition from low power state criterion (paragraph 0019, lines 1-2, paragraph 0020, lines 1-3, paragraph 0067, lines 1-5, paragraph 0078, lines 1-4);
generates a transition from low power state instruction if the at least one aspect of the received message satisfies the at least one transition from low power state criterion (paragraph 0020, lines 7-8, paragraph 0076, lines 5-11, paragraph 0078, lines 4-6); and
provides the transition from low power state instruction (inherently disclosed – the control logic 208 in NIC 206 must necessarily provide an instruction to the remaining portion of the sleeping client computer in order to wake-up upon meeting the wake-up criteria; paragraph 0020, lines 1-3, lines 7-8, paragraph 0067, paragraph 0078); and
wherein the wireless user equipment device uses a shared value (nonce number value – paragraph 0055, lines 1-7) as an input to an algorithm to derive the at least one transition from low power state criterion (the sleeping/first computer system generates a registration message containing the nonce number value [shared value], which is transmitted and saved in the server memory, from where it is further retrieved by the end user /second computer to be incorporated into the wakeup message which wakes up the sleeping/first computer after successful authentication of the nonce via decryption algorithm – i.e. sharing and decrypting the nonce in order to wake up the sleeping/first computer; paragraph 0015, lines 7-13, paragraphs 0016-0018, paragraph 0019, lines 1-2, paragraph 0020, lines 1-3, lines 7-8, FIG. 3, paragraph 0053, lines 1-3, paragraph 0055, lines 1-7, paragraph 0056, lines 1-4, paragraph 0059, lines 1-3, paragraph 0061, lines 1-11, paragraph 0062, paragraph 0064, lines 1-8, paragraph 0066, lines 1-2, paragraphs 0067-0068, FIG. 4, paragraphs 0074-0078).
Regarding claim 5, Zhang further discloses the system further comprising a memory (memory 204, FIG. 2) that is accessible by the first processor portion (paragraph 0045, lines 10-14, paragraph 0049, lines 1-7, paragraph 0050), wherein the wireless user equipment device uses DOCKET M2MD-009C2 as an input to the algorithm a secret value stored in the memory (pre-shared key) to derive the at least one transition from low power state criterion, wherein the secret value is not included in the received message (paragraphs 0067 and 0068).
Regarding claim 6, Zhang discloses a method comprising all claim limitations as addressed above for claim 1.
Regarding claim 8, Zhang further discloses a method, further comprising, with the first processor portion, using as an input to a cryptographic algorithm a secret value (pre-shared key) stored in a memory of the wireless user equipment device (memory 204, FIG. 2) to derive the at least one transition from low power state criterion, wherein the secret value is not included in the received message (paragraph 0045, lines 10-14, paragraph 0049, lines 1-7, paragraph 0050, paragraphs 0067 and 0068).
Claim Rejections - 35 USC § 103
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 2 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al., US Patent Appl. Pub. No. 2014/0298066.
Regarding claims 2 and 7, Zhang discloses the system and method, as per claims 1 and 6, respectively. Zhang further discloses a second processing portion (FIG. 2, CPU 202 – paragraphs 0042, paragraph 0045, lines 1-8).
With respect to claim 2, Zhang does not specifically mention the instruction to transition from a low power state is provided to the second processor portion to cause the second processor portion to transition from a low power state.
With respect to claims 2 and 7, Zhang does not specifically mention the second processor portion generated the at least one transition from low power state criterion before the second processor entered the low power state.
However, Zhang discloses the second processing portion (FIG. 2, CPU 202 – paragraphs 0042, paragraph 0045, lines 1-8) in the sleeping/first computer which is asleep during the sleep state and awoken by the control logic 208 of NIC 206 after meeting the exit from sleep criteria (paragraphs 0049-0050, 0067, and 0078). Further, Zhang discloses the wake-up criteria being based on decrypting and comparing the received nonce with an original/pre-configured nonce (i.e. comparison with a nonce that was predetermined and prestored in the sleeping computer prior to the sleeping computer entering the sleep/low power state – paragraph 0068). In Zhang, such circuitry and functionality allows for remote wake up of the computer system while ensuring security and providing power savings (paragraphs 0035-0036).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above-described circuitry and functionality, as suggested by Zhang in order to implement the instruction to transition from a low power state is provided to the second processor portion to cause the second processor portion to transition from a low power state and the second processor portion generated the at least one transition from low power state criterion before the second processor entered the low power state. One of ordinary skill in the art would be motivated to do so in order to remotely wake up the system while ensuring security and providing power savings.
Claim 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al., US Patent Appl. Pub. No. 2014/0298066 in view of Chen et al., US Patent Appl. Pub. No. 2016/0269891.
Regarding claim 3, Zhang discloses the system, as per claim 1.
Zhang does not specifically state a SIM profile, wherein the algorithm is a cryptographic algorithm stored in the SIM profile.
Chen teaches a system and method for multi-subscriber information module (SIM) profiles or embedded SIM (paragraph 0002), utilizing an encryption algorithm for the server to encrypt the command content for OTA SIM profile selection and an associated decryption algorithm (cryptographic algorithm) for the wireless device to decrypt the received content (FIG. 1, paragraph 0029, lines 1-4), Thus, ensuring security against hacking or unauthorized replacement of the OTA command (paragraph 0029, lines 4-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above describe decryption (cryptographic) algorithm associated with selection of SIM profile(s), as suggested by Chen with the system disclosed by Zhang in order to implement a SIM profile, wherein the algorithm is a cryptographic algorithm stored in the SIM profile. One of ordinary skill in the art would be motivated to do so in order to ensure security against hacking or unauthorized replacement of the received message.
Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al., US Patent Appl. Pub. No. 2014/0298066 in view of Fratti et al., US Patent Appl. Pub. No. 2010/0281252.
Regarding claim 4, Zhang discloses the system, as per claim 1.
Zhang does not specifically state a SIM card, wherein the algorithm is a cryptographic algorithm stored in the SIM card.
Fratti teaches storing a decryption (cryptographic) algorithm in the memory of SIM card of a wireless device (FIG. 2, 225, paragraph 0021) and utilizing the decryption algorithm for decrypting and verifying the electronic certificate of the encrypted payload decryption key 210 (FIG. 3, 320, paragraph 0028). In Fratti, the above-described device and functionality prevents against compromising the privacy of data sent across the wireless communication network, thus, ensuring security (paragraph 0003, paragraph 0033, lines 1-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the above-described device and functionality, as suggested by Fratti with the device disclosed by Zhang in order to implement a SIM card, wherein the algorithm is a cryptographic algorithm stored in the SIM card. One of ordinary skill in the art would be motivated to do so in order to prevent against compromising the privacy of data sent across the wireless communication network thus, ensuring security.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFAN STOYNOV whose telephone number is (571)272-4236. The examiner can normally be reached on 8AM - 4:30PM.
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/STEFAN STOYNOV/Primary Examiner, Art Unit 2186