DETAILED ACTION
This is in response to the application filed on July 4, 2024. A preliminary amendment filed on August 7, 2024, canceled Claims 1 – 20 and added Claims 21 – 40. Claims 21 – 40, of which Claims 21, 29, and 37 are in independent form, are presented for examination.
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 January 23, 2026 was filed before the mailing date of the current action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 21 – 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,061,709. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 7 of the patent anticipate the independent claims 21, 29, and 37 because the limitations of the current applications are identical or nearly identical to the limitations of Claims 1 and 7 with additional limitations regarding authentication and encrypted communications. Claim 29 is the method associated with Claim 21 and Claim 37 is the non-transitory computer-readable storage medium associated with Claim 21. Furthermore, Claims 22, 23, 26, 30, 31, 34, and 38 are also anticipated by Claim 1 of the patent as highlighted below.
Patent No. 12,061,709
Current Application
Claim 1: A computing device comprising:
one or more processors and memory, the memory storing instructions that when executed by the one or more processors causes the one or more processors to:
authenticate with a data recipient system using a prestored security engine and using a shared registration secret uniquely associating the computing device with the data recipient system;
in response to the authentication, receiving an installation bundle, the installation bundle comprising a data extraction agent and associated trust verification data unique to the data extraction agent;
unbundling the received installation bundle to load the data extraction agent, after verification of the associated trust verification data using the prestored security engine, wherein the trust verification data comprises a returned certificate;
retrieve an extraction job specification, for the data extraction agent, from an extraction job specification repository associated with the data recipient system;
using the extraction job specification, communicate to one or more client computing devices associated with a client system to extract data records from one or more data stores of the client system;
receive extracted data records from the one or more client computing devices; and
send the received extracted data records to the data recipient system, through a secure socket layer (SSL) connection with a firewall device configured to perform SSL decryption on the extracted data.
Claim 21: A system comprising:
one or more processors; and
one or more memories storing instructions that, when executed by the one or more processors, cause the system to perform a set of operations, the set of operations comprising:
receiving an installation bundle, the installation bundle comprising a data extraction agent and associated trust verification data unique to the data extraction agent, the associated trust verification data comprising a returned certificate;
loading the data extraction agent based on the received installation bundle,
after verification of the associated trust verification data;
retrieving an extraction job specification for the data extraction agent from an extraction job specification repository associated with a data recipient system; and
causing one or more data records to be extracted from one or more data stores,
based on the extraction job specification.
Claim 22: The system of claim 21, wherein the set of operations further comprises: authenticating with the data recipient system, prior to receiving the installation bundle.
Claim 23: The system of claim 22, wherein the authenticating with the data recipient system is performed using a prestored security engine and using a shared registration secret uniquely associating the computing device with the data recipient system.
Claim 26: The system of claim 25, wherein the set of operations further comprises:
receiving the one or more extracted data records; and
sending the one or more extracted data records to the data recipient system through the firewall device.
2. Claims 25, 27, 28, 32, 33, 35, 36, 39, and 40 of the current application are also anticipated by Claims 5, 6, 10 – 13, and 20 of the patent as the limitations are described identically or nearly identically.
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.
Claim(s) 21, 22, 24 – 26, 28 – 30, 32 – 34, 36, 37, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over PGPub. 2018/0032706 (hereinafter “Fox”), in view of PGPub. 2017/0351879 (hereinafter “Sion”).
3. Regarding Claims 21, 29, and 37, Fox discloses of a system [Fig. 1 and 4; Para. 0039, 0041, 0124-128; bootstrapper implemented as a separate computer device within client system] comprising:
one or more processors [Para. 0127-128]; and
one or more memory located inside the sealed housing storing instructions that when executed by the one or more processors causes the one or more processors [Para. 0127-128] to:
receiving an installation bundle, the installation bundle comprising a data extraction agent [Fig. 7; Para. 0106-119]
loading the data extraction agent based on the received installation bundle, after verification of the associated trust verification data [Fig. 7; Para. 0106-119];
retrieve an extraction job specification for the data extraction agent from an extraction job specification repository associated with the data recipient system [Fig. 1; Para. 0046, 0055, 0057, 0101; data extraction agent uses the relevant package, library, or configuration file specified in the received extraction job specification in order to crawl and/or extract data records from data sources];
using the extraction job specification, communicate to one or more client computing devices associated with a client system to extract data records from one or more data stores of the client system [Fig. 1; Para. 0046, 0055, 0057; data extraction agent uses the relevant package, library, or configuration file specified in the extraction job specification in order to crawl and/or extract data records from data sources];
receive extracted data records from the one or more client computing devices [Para. 0038, 0057-58; data extraction agents crawl and/or extract data record from data sources; each data source may be any repository on one or more computing devices that contain data records]; and
send the received extracted data records to the data recipient system [Fig. 1; Para. 0043, 0058-59; once the data records are extracted, the data extraction agent sends the extracted data records to the data record transformer implemented on the server system],
Fox, however, does not specifically disclose that the installation bundle comprises associated trust verification data unique to the data extraction agent, the associated trust verification data comprising a returned certificate.
Sion further discloses of communicating the trust verification data from the bundle to the data recipient system using the installed data extraction agent to complete registration [Fig. 8; Para. 0159-171]. It would have been obvious to one skilled in the art before the effective filing date of the current application to combine the teachings of Sion with Fox since they both install application packages in client devices. The combination would enable the client system to verify the application package before installing the application package. The motivation to do so is to ensure that the correct package from a trusted source is installed to prevent security issues for the client device (obvious to one skilled in the art).
4. Regarding Claims 22 and 30, Fox, in view of Sion, discloses the limitations of Claims 21 and 29. Fox further discloses of authenticating with the data recipient system, prior to receiving the installation bundle [Fig. 6; Para. 0092, 0095, 0097; a device within the client system sends a command including a unique URL including the restricted use token; deployment engine validates the restricted use token and can include in the server system (data recipient system); also establishes a secure channel, such as an HTTPS connection; deployment engine part of the server system].
5. Regarding Claims 24 and 32, Fox, in view of Sion, discloses the limitations of Claims 21 and 29. Fox further discloses that the retrieving an extraction job specification includes polling the extraction job specification from the data recipient system via the data extraction agent [Fig. 1; Para. 0046, 0055, 0057, 0101; data extraction agent uses the relevant package, library, or configuration file specified in the received extraction job specification in order to crawl and/or extract data records from data sources].
6. Regarding Claims 25, 33, and 39, Fox, in view of Sion, discloses the limitations of Claims 24 and 32 (Claim 39 combine limitations of Claims 32 and 33). Fox further discloses that the data extraction agent polls the data recipient system through a firewall device [Para. 0074; data extraction agent polls for new message request by the data record transformer].
7. Regarding Claims 26 and 34, Fox, in view of Sion, discloses the limitations of Claims 25 and 33. Fox further discloses of:
receiving the one or more extracted data records [Para. 0038, 0057-58; data extraction agents crawl and/or extract data record from data sources; each data source may be any repository on one or more computing devices that contain data records]; and
sending the one or more extracted data records to the data recipient system through the firewall device [Fig .1; Para. 0043, 0058-59; once the data records are extracted, the data extraction agent sends the extracted data records to the data record transformer implemented on the server system].
8. Regarding Claims 28, 36, and 40, Fox, in view of Sion, discloses the limitations of Claims 21, 29, and 37. Fox further discloses that the loading the data extraction agent includes loading the data extraction agent in a virtual environment via a containerized structure [Fig. 5; Para 0149-150].
Claims 23, 31 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Fox, in view of Sion, in further view of PGPub. 2012/0252405 (hereinafter “Lortz”).
9. Regarding Claims 23, 31, and 38, Fox, in view of Sion, discloses the limitations of Claims 22, 30, and 37. Neither Fox nor Sion, however, specifically discloses that the bootstrapper authenticates with a data recipient system using a prestored security engine and using a shared registration secret uniquely associating the computing device with the data recipient system
Lortz discloses a system and method for establishing secure communications between a device and server based on a preexisting trust relationship [Abstract; Para. 0017]. Lortz further discloses that the device stores its digital certificate in secure memory to establish a trust relationship between the device and the server and supports SSL and TLS protocols (authenticates with a data recipient system using a prestored security engine and using a shared registration secret uniquely associating the computing device with the data recipient system) [Para. 0017]. It would have been obvious to one skilled in the art before the effective filing date of the current invention to incorporate the teachings of Lortz with Fox since both systems establish a secure SSL/TLS communication channel to download software from a server to a device. The combination utilizes well-known protocols to communicate via HTTPS through the URI of the server. The motivation to do so is to provide mass adaptability and commercial viability (obvious to one skilled in the art).
Claims 27 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Fox, in view of Sion, in further view of PGPub. 2020/0356674 (hereinafter “Nikolai”).
10. Regarding Claims 27 and 35, Fox, in view of Sion, discloses the limitations of Claims 21 and 29. Neither Fox nor Sion, however, specifically discloses of performing self-monitoring of errors and providing a report of the self-monitoring to the data recipient system for monitoring by the data recipient system.
Nikolai discloses a system and method for remotely testing devices [Abstract]. Nikolai further discloses of performing self-monitoring of errors and providing self-monitoring data back to the data recipient system for central monitoring by data recipient system [Para. 0064-65; audit data]. It would have been obvious to one skilled in the art before the effective filing date to combine the teachings of Nokolai and Fox since they both have clients and servers exchange data between them. The combination would enable the servers in Fox to periodically monitor the status of the client devices within the client systems. The motivation to do so is to ensure client devices are working properly.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. PGPub. 2016/0381080; PGPub. 2014/0304294 – systems similar to Muniraju reference.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tae K. Kim, whose telephone number is (571) 270-1979. The examiner can normally be reached on Monday - Friday (10:00 AM - 6:30 PM EST).
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/TAE K KIM/Primary Examiner, Art Unit 2496