DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Amendment filed 18 May 2026 has been received and considered.
Claims 6-10 are pending.
This Action is Final.
Claim Objections
The Objections to the claims are withdrawn based on the filed amendment.
Claim Rejections - 35 USC § 103
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 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 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Triola (US 20120072837), in view of Soderlind et al. (US 20020069123), in view of Anguiano Jimenez (US 9412139) and further in view of Pavlicic (US 20070208944).
As per claims 6, 8, and 9, Triola discloses a certification platform for certifying an electronic notice by a single telecommunications operator without a need for additional network entities external to the single telecommunications operator, the electronic notice originating from a client and to be shown to a recipient in order to be signed when an identity of the recipient is verified, the platform comprising (see paragraph [0072] where all the certification and client devices are connected via one network):
a notice server for implementing a plurality of electronic notice email systems, the notice server of the single telecommunications operator configured for uploading the notice to be signed (see paragraphs [0072] and [0086] where the recipients are notified);
an identity server for generating identifying evidence associated with the electronic notice; an email management server for collecting the identifying evidence, the email management server storing a content of the original email and any attachments (see paragraphs [0080]-[0086] where the entities involved are identified and evidence is gathered, where email servers store emails and their attachments);
a database server for storing a content of the electronic notice (see paragraphs [0083]-[0085] receiving the documents and, for example, paragraph [0120] where the document/contract is stored);
a time stamp server (see paragraph [0101] where a time stamp is applied);
a validation server associated with the single telecommunications operator and forming part of a network operated by the single telecommunications operator, the validation server for ensuring the identity of the recipient using a digital certificate contained of the recipient (see paragraph [0082] digital certificate authentication);
a certified message server for sending certified messages, and a generated documents server for storing the digital certificates generated by the validation server for generating a transaction certificate with network data and the electronic notice; (see paragraphs [0081]-[0085]);
wherein the notice server shows the content of the electronic notice to be signed by the recipient only when data contained in the digital certificate verifies the identity of the recipient (see paragraphs [0082]-[0088] and FIG 2 where all entities are authenticated in step 216 prior to showing the documents in step 222; note paragraph [0086] where the document is shown on a website or able to be downloaded);
wherein the validation server excluded a need for additional network entities external to the single telecommunications operator (see paragraph [0072]);
wherein the notice is a certified SMS or a certified email that comprises at least one URL linking a server of a CA (certification authority) server through which communication is carried out (see paragraphs [0080]-[0088] and [0103]).
While Triola teaches the use of a digital certificate for verifying the identities or the recipients, there lacks an explicit teaching that the certificate is stored in the browser.
However, Soderlind et al. teaches the use of a digital certificate in a browser as part of identity verification (see paragraph [0029]).
At a time before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to use a digital certificate contained in a browser to perform the identity verification of the Triola system.
Motivation to do so would have been restrict access to devices with the stored certificate (see Soderlind et al. paragraph [0029]).
While the modified Triola and Soderlind et al. system discloses sending a URL, there lacks an explicit recitation that the URL is linking to a proxy server of a CA server.
However, Anguiano Jimenez teaches a system for certifying notices where a URL links to a proxy of a CA server (see column 3 lines 25-47 where the link points to a web portal or the emitter which acts as a proxy to the server since the traffic must first go to this web portal for authentication before being redirected to the server for access).
At a time before the effective filing date of the invention, it would have been obvious to include the URL to a proxy of Anguiano Jimenez in the modified Triola and Soderlind et al. system.
Motivation to do so would have been to allow for delegated authentication (see Anguiano Jimenez column 3 lines 25-47) which allows for offloading of the authentication.
The modified Triola, Soderlind et al., and Anguiano Jimenez system fails to explicitly disclose the timing of the application of the timestamp, i.e. applying time stamps to the transaction certificate once the transaction certificate has been signed
However, Pavlicic teaches applying time stamps to the transaction certificate once the transaction certificate has been signed (see paragraphs [0031]-[0035]).
At a time before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include the specific time stamping of Pavlicic in the modified Triola, Soderlind et al., and Anguiano Jimenez system.
Motivation to do so would have been to allow for determining the earliest time at which the electronic signature was valid in association with the document (see Pavlicic paragraph [0035)).
As per claims 7 and 10, the modified Triola, Soderlind et al., Anguiano Jimenez, and Pavlicic system discloses the certified message server sends a first copy of the signed and stamped transaction certificate and all generated evidence to the transmitter and sends a second copy of the signed and stamped transaction certificate and all generated evidence to the recipient to be collected by their respective users (see Triola paragraphs [0087]-[0090] and [0101]).
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 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,750,592. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘802 claims anticipate the currently pending claims.
More specifically, claim 1 of the present application corresponds to a platform for implementing the method as described in claim 1 of ‘592. Additionally, claim 1 of ‘592 performs the same steps as the components of currently pending claims 6-10 and there are no additional structural details of the components and therefore claims 6-10 of the current application is not patently distinct from the claims presenting in the ‘592 patent.
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,938,802. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘802 claims anticipate the currently pending claims.
More specifically, claims 6-10 of the present application correspond to a platform for implementing the method as described in claim 1 of ‘802. Additionally, claim 1 of ‘802 performs the same steps as the components of currently pending claims 6-10 and there are no additional structural details of the components and therefore claims 6-10 of the current application is not patently distinct from the claims presenting in the ‘802 patent.
Claims 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,563,028. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘028 claims anticipate the currently pending claims.
More specifically, claims 6-10 of the present application correspond to a platform for implementing the method as described in claim 1 of ‘028. Additionally, claim 1 of ‘028performs the same steps as the components of currently pending claims 6-10 and there are no additional structural details of the components and therefore claims 6-10 of the current application is not patently distinct from the claims presenting in the ‘028 patent.
Response to Arguments
Applicant's arguments filed 18 May 2026 have been fully considered but they are not persuasive. Applicant argues the prior art fails to teach the claimed single telecommunications operator, there lacks proper motivation to combine the references and that the double patenting be held in abeyance.
Applicant's argument that each of the pieces of cited prior art fails to teach the claimed single telecommunications operator is not persuasive and as such the Examiner maintains that the prior art renders this limitation obvious. More specifically, the Specification provides a limited description of the single telecommunications operator, "the platform is connected to a telecommunications. operator (or communications operator throughout this document) and preferably implemented in the same, it allows certification tasks to be carried out without the need for network entities external to the communications operator" (see page 3 lines 12-16). There is no further description of what constitutes an operator or what devices are external to said operator. Each of the cited prior art references contain various connected device to create a platform for certification tasks. Since these devices are part of the overall system for certification, they are considered to be part of a single "communications operator" and render this limitation obvious over the prior art.
With respect to Applicant's argument that the motivation to combine is either lacking or conflicts with the single communications operator, the Examiner respectfully disagrees. As put forth above, each of the elements are considered part of the single communications operator and, as such, offloading from one device in the single communications operator to another device in the single communications operator still provides the benefit of using dedicated specialized devices which improves efficiency of the system. Therefore, the motivation is proper and does not conflict with the claimed invention.
Applicant's arguments that the Non-statutory double patenting rejection are not fully responsive (see MPEP 804I.B.1.) and since no explicit faults in the rejections have been raised, these rejections are maintained.
Any additional arguments not specifically addressed are moot in view of the above response.
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 MICHAEL J PYZOCHA whose telephone number is (571)272-3875. The examiner can normally be reached Monday-Thursday 7:30am-5:00pm.
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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/Michael Pyzocha/ Primary Examiner, Art Unit 2409
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