DETAILED ACTION
This Office Action is in response to the Application Ser. No. 18/771,823 filed on July 12, 2024. The response filed December 10, 2025, has been entered. Claims 1-20 are pending. Claims 15-20 are withdrawn from consideration. Claims 1-14 are examined.
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 .
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 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.
Priority
Acknowledgment is made of applicant’s claim for domestic priority as a continuation under 35 U.S.C. 120 based on Non-Provisional Application Ser. No. 18/305,105 filed on April 21, 2023.
Drawings
The drawings were received on July 12, 2024. These drawings are accepted.
Information Disclosure Statement
Applicant’s submission of the Information Disclosure Statement dated September 3, 2024, is acknowledged by the Examiner and the cited references have been considered in the examination of the claims now pending (see attached PTO-1449).
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-14) in the reply filed on December 10, 2025, is acknowledged.
Claim Objections
The claims are objected to because of the following informalities:
regarding Claim 8, the term “a LAMA” recited in line 2 should be “a locally administered medium access control address (LAMA)”.
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 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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of issued U.S. Patent 12,081,515 B1.
Although the claims at issue are not identical, they are not patentably distinct from each other because it would be obvious to one of ordinary skill in the art at the time of the effective filing that the claims cover substantially the same subject matter, i.e., deconflicting locally administered MAC addresses. The following charts provide examples of how independent Claims 1 and 8 of the instant application corresponds to Claims 1 and 7 of the issued patent. Similar relationships hold for the dependent claims.
Instant Application
Issued Patent
18/771,823
US 12,081,515 B1
8. A method comprising:
7. A method comprising:
receiving a request for a client device to use a LAMA;
receiving a request for a client device to use a LAMA;
determining that the LAMA is in use or reserved for future use by a first access point; and
determining that the LAMA is reserved for future use by an access point that is out of range of the client device; and
transmitting to the client device a message denying connectivity to the client device using the LAMA.
prior to the client device roaming to the access point, transmitting to the client device a message denying connectivity to the client device using the LAMA, wherein the message indicates a range of LAMAs that the client device is prohibited from selecting.
Instant Application
Issued Patent
18/771,823
US 12,081,515 B1
1. An apparatus comprising:
1. An apparatus comprising:
a memory; and
a memory; and
a processor communicatively coupled to the memory, the processor configured to:
a processor communicatively coupled to the memory, the processor configured to:
receive a request for a client device to use a locally administered medium access control address (LAMA);
receive a request for a client device to use a locally administered medium access control address (LAMA);
determine that the LAMA is in use or reserved for future use by an access point that is out of range of the client device; and
determine that the LAMA is reserved for future use by an access point that is out of range of the client device; and
prior to the client device roaming to the access point, transmit to the client device a message denying connectivity to the client device using the LAMA, wherein the message indicates a LAMA that the client device is prohibited from selecting.
prior to the client device roaming to the access point, transmit to the client device a message denying connectivity to the client device using the LAMA, wherein the message indicates a range of LAMAs that the client device is prohibited from selecting.
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.
Claims 8-9, 11-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wentink et al., Pub. No. US 2020/0213270 A1, hereby “Wentink”.
Regarding Claim 8, Wentink discloses “A method comprising (Wentink fig. 3 and paragraphs 2, 6 and 162: a method for determining a free locally administered address) comprising:
receiving a request for a client device to use a LAMA (Wentink figs. 1 and 3 and paragraphs 28, 146, 151 and 163: AP 102 receives a request from first apparatus 110, the request including a locally administered address, selected from a range of locally administered addresses, that the first apparatus 110 intends to use);
determining that the LAMA is in use or reserved for future use by a first access point (Wentink figs. 1 and 3 and paragraphs 30-31, 132, 136 and 162-163: AP 102 determines that the requested locally administered address is already in use); and
transmitting to the client device a message denying connectivity to the client device using the LAMA (Wentink figs. 1 and 3 and paragraphs 32, 152 and 163: AP 102 transmits a response to first apparatus 110, wherein the response may indicate the requested locally administered address is unavailable for use by the first apparatus, i.e., a message denying connectivity using the requested locally administered address).”
Regarding Claim 9, Wentink discloses all of the limitations of Claim 8.
Additionally, Wentink discloses “wherein the message instructs the client device to select another LAMA (Wentink figs. 1 and 3 and paragraphs 32, 152 and 163: first apparatus 110 selects a second locally administered address from the range of locally administered addresses when the response received from AP 102 indicates the first locally administered address is already in use).”
Regarding Claim 11, Wentink discloses all of the limitations of Claim 9.
Additionally, Wentink discloses “wherein the message further recommends a LAMA for the client device to use (Wentink paragraphs 52, 137 and 167: the response from AP 102 may include one or more locally administered addresses that are available for use, i.e., recommends a LAMA to the client device).”
Regarding Claim 12, Wentink discloses all of the limitations of Claim 9.
Additionally, Wentink discloses “wherein the message further recommends a range of LAMAs from which the client device selects a LAMA for use (Wentink paragraphs 52, 137 and 167: the response from AP 102 may include a list of locally administered addresses that are available for use, i.e., recommends a range of locally administered addresses that are available for selection by the first apparatus).”
Regarding Claim 14, Wentink discloses all of the limitations of Claim 8.
Additionally, Wentink discloses “wherein the request is a request to connect to the first access point (Wentink paragraphs 28 and 163: the request received by AP 102 may be an association request, i.e., a request to connect to the AP).”
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wentink in view of de la Oliva et al., Pub. No. US 2023/0269220 A1, hereby “de la Oliva”.
Regarding Claim 10, Wentink discloses all of the limitations of Claim 9.
However, while Wentink discloses transmitting a response from the AP to the first apparatus that indicates the locally administered address selected by the first apparatus is already in use (Wentink paragraphs 32, 152 and 163), and further discloses that the response may include a list of locally administered addresses that are available for use by the first apparatus (Wentink paragraphs 52, 137 and 167), Wentink does not explicitly disclose “wherein the message further indicates a range of LAMAs that the client device is prohibited from selecting.”
In the same field of endeavor, de la Oliva discloses a method and apparatus for distribution of dynamic MAC addresses in a wireless network (de la Oliva paragraphs 2-3 and 22-24) wherein a receiving client or server sends a DEFEND message indicating a range of MAC addresses sought by a requesting client is already in use in response to receiving a DISCOVER message requesting use of a range of MAC addresses from the requesting client (de la Oliva figs. 4-5 and paragraphs 87 and 91: DEFEND message indicates a range of MAC addresses is already in use, i.e., a range of MAC addresses that the requesting client is prohibited from selecting).”
It would have been obvious ton one of ordinary skill in the art at the time of the effective filing to modify the method of Wentink to indicate a range of MAC addresses that are already in use in the response sent to the first apparatus as taught by de la Oliva because doing so constitutes a simple substitution of one known element (an indication of MAC addresses that are available for use by the requesting device) for another (an indication of MAC addresses that are already in use by other devices) to obtain predictable and desirable results (selection of another MAC address that is not already in use by the first apparatus). See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Wentink in view of Kneckt et al., Pub. No. US 2023/0089319 A1, hereby “Kneckt”.
Regarding Claim 13, Wentink discloses all of the limitations of Claim 8.
However, while Wentink discloses determining by the access point that the locally administered address requested by the first apparatus is already in use (Wentink paragraphs 30-31, 132, 136 and 162-16), Wentink does not explicitly disclose “wherein the LAMA falls within a contiguous range of LAMAs that are reserved for future use by the first access point.”
In the same field of endeavor, Kneckt discloses a method for MAC address collision detection and avoidance (Kneckt fig. 11 and paragraphs 120-128) wherein an access point determines whether a MAC address proposed for use by a wireless station conflicts with MAC addresses reserved for future use (Kneckt paragraph 122: “AP 1110 or a server (not shown) may store the MAC addresses currently in use and/or MAC addresses to be used in the future, and determine whether the MAC addresses currently in use and MAC addresses to be used in the future will collide.”).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing to modify the method of Wentink to determine whether the locally administered address requested by the first station conflicts with MAC addresses reserved for future use as taught by Kneckt because doing so constitutes applying a known technique (checking a requested MAC address against MAC addresses to be used in the future) to known devices and/or methods (an access point) ready for improvement to yield predictable and desirable results (avoiding MAC address collisions). See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Orava et al., Pub. No. US 2003/0177267 A1, discloses a system and method for acquiring a temporary MAC address for use in a wireless network wherein an access point receives a request comprising a suggested temporary MAC address from a mobile terminal, determines that the suggested temporary MAC address is already in use, and transmits a response indicating the error to the mobile terminal;
Haley et al., Pat. No. US 7,529,851 B1, discloses a method and apparatus for automatically assigning a locally administered MAC address to a client device wherein a server receives a MAC address request frame from a client, determines whether the requested MAC address is already in use by another client, and sends a MAC address response indicating the requested MAC address is not available to the client;
Pang, Pub. No. US 2018/0077111 A1, discloses a system and method for dynamically allocating an leasing MAC addresses in a wireless network wherein an access point receives a probe request from a wireless station indicating a MAC address the wireless station would like to use, determines that MAC address indicated by the probe request is already in use by comparing the MAC with a list of assignable dynamic MAC addresses, and transmits a probe response indicating denial of assignment to the wireless station in response to the determination; and
Pang, Pub. No. US 2018/0077742 A1, discloses a method for MAC address collision detection and avoidance during roaming of a client device from a first access point to a second access point, wherein a client device transmits a broadcast solicitation message comprising a dynamic MAC address the client device intends to use before the client device associates with the second access point.
A shortened statutory period for reply to this action is set to expire THREE MONTHS from the mailing date of this action. An extension of time may be obtained under 37 CFR 1.136(a). However, in no event, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C MCBETH whose telephone number is (571)270-0495. The examiner can normally be reached on Monday - Friday, 8:00AM - 4:30PM ET.
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/WILLIAM C MCBETH/Examiner, Art Unit 2449