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 text of those sections of Title 35 U.S.C not included in this section can be found in the prior office action.
The prior office actions are incorporated herein by reference. In particular, the observations with respect to claim language, and response to previously presented arguments.
Claims 11-14 have been amended.
No new claims have been added.
No claims have been cancelled.
Claims 1-20 are pending.
Response to Arguments
Applicant’s arguments regarding prior art rejection of the pending claims are persuasive, Therefore the rejection of claims have been withdrawn.
Regarding double patenting rejection of the pending claims applicant argues “the current forms of the present claims are not fixed, and that subsequent amendments or
cancellations of claims may eliminate the need to file a terminal disclaimer. Thus, Applicant will defer the filing of a terminal disclaimer in accordance with MPEP § 804 until such time that these provisional double patenting rejections remain as the only outstanding rejections.” Therefore, the double patenting rejection of the claims is maintained.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12052367. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12052367. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the patent teaches all of the limitations of claim 1 of the instant application.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 of U.S. Patent No. 12052367. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 8 of the patent teaches all of the limitations of claim 8 of the instant application.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 of U.S. Patent No. 12052367. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 15 of the patent teaches all of the limitations of claim 15 of the instant application.
Allowable Subject Matter
The subject matter of claims 1, 8 and 15 are not suggested by the prior art of record. Claims 1, 8 and 15 would be allowable if the claims overcome the double patenting rejection set forth in this Office Action.
Reason for allowance
The invention defined in claims 1, 8 and 15 are not suggested by the prior art of record.
The prior art of record (in particular, Beatson; Rodney US-9286457, ABDALLAH; David S. US-20150178548, KERR; MICHAEL A. US-20160054865, Sampas; George P. US-20130081119, Behm; Michael F. US-12111899, Ashley; James US-20170193207, Bernat; Andrew US-10623386, Agbamu; Akporefe US-20230134651, Michaels; David US-8566952, OLIE JEAN-LOUIS WO-2023057652 and PUZERIS; Eimantas US-20210226933) singly or in combination does not disclose, with respect to independent claim 1 “configuring, by the infrastructure device, the user device to transmit, while receiving the first service, a second service request to receive encrypted content; and
configuring, by the infrastructure device, the user device to decrypt the encrypted
content based at least in part on utilizing a master key and on authenticating second biometric information.” and similar limitations of independent claims 8 and 15 in combination with the other claimed features as a whole.
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 GHODRAT JAMSHIDI whose telephone number is (571)270-1956. The examiner can normally be reached 10:00-6:00.
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, Carl Colin can be reached at 5712723862. 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.
/GHODRAT JAMSHIDI/ Primary Examiner, Art Unit 2493
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