Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 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.
Claims 1-20 are pending. Claims 1, 8 and 15 have been amended.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement submitted by applicant on 12/26/2025 has been considered. Please see attached PTO-1449.
In light of the Terminal Disclosure of 12-26-2025 the double patenting rejection of claims over US Patent No. 12,067,101 has been withdrawn.
Response to Arguments
Applicant's amendments/arguments filed on 12-26-2026 have been fully considered but are moot in view of the new ground(s) of rejection.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (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).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,768,928. Claims 1-20 of U.S. Patent No. 11,768,928 contains every element of claim 1-20 of the instant application and as such anticipate claim 1-20 of the instant application. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,048,79. Claims 1-20 of U.S. Patent No. 11,048,79 contains every element of claim 1-20 of the instant application and as such anticipate claim 1-20 of the instant application. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,992,674. Claims 1-20 of U.S. Patent No. 9992674 contains every element of claim 1-20 of the instant application and as such anticipate claim 1-20 of the instant application. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 8,826,415. Claims 1-25 of U.S. Patent No. 8,826,415 contains every element of claim 1-20 of the instant application and as such anticipate claim 1-20 of the instant application. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) patent may not be obtained though the invention is not identically disclose or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 4-6, 8, 11-13, 15 and 18-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hawkins et al. (US Publication No. 2007/0277230), hereinafter Hawkins, in view of Queru (US Patent No. 9,075,979), hereinafter Queru, further in view of Heidaru-Bateni et al. (US Patent No. 7,450,069), hereinafter Heidari.
As per claim 1, 8 and 15, Hawkins discloses a method, comprising, by a first computing device that is operating in a first state (paragraph [0042], computing device 130 performs a lock, absence of r0aming device 120 causes device to perform the lock): receiving, using a wireless communications protocol (paragraph [0116], “wireless communication”), a device identifier associated with a second computing device (paragraph [0123], “authentication data is communicated from access device 140 to the mobile device …Authentication may include any of a variety of data…including such data and method as digital signature, encryption (private key and public key), digital certificates, passwords, etc..”); in response to determining, based on the device identifier, that the second computing device is known to the first computing device(paragraph [0123], “authentication data is verified by the mobile device”): transitioning the first computing device into a second state (paragraph [0123], once authentication verified access is allowed to the mobile device, paragraph [0040], receiving a code or the identifier that unlocks the device, paragraph [0045], device 120 communicates the security key to unlock the computing device).
Howkins does not explicitly disclose, but in an analogous art, Queru discloses, outputting a first signal to the second computing device, wherein the first signal is constructed to cause the second computing device to output a second signal; and in response to determining, based on the first and second signals, that the first and second computing devices are within a threshold distance from one another allowing access to device (column 8, line 48- 59 and column9, lines 5-17, “When the computer system 400 verifies that the received information is accurate, the computer system 400 determines that a first authentication factor was successfully completed. The computer system 400 searches for a device… that only an authenticated user will possess. When the mobile device 404 is proximate to the computer system 400, the device 404 receives the request for identification signals [first signal] from the computer system 400….the application may cause the mobile device 404 to transmit signals [second signal] to the computer system 400 in response to receiving the request. The computer system 400 receives the signals that the mobile device 404 transmits, and verifies that the received signals establish that the mobile device 404 is in physical proximity to the computer system 400. In this manner, when the computer system 400 verifies that the mobile device 404 is proximate to the computer system, the system 400 authenticates the user 402 and grants access).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Howkins with Queru. This would have been obvious because one of ordinary skill in the art would have been motivated to do so in order to achieve the predictable result of enhancing security by requiring multiple forms of verification to prevent unauthorized access.
Howkins in view of Queru does not explicitly disclose, but in an analogous art, Heidari disclose, wherein at least a portion of content of the second signal is based on at least a portion of content of the first signal (column 8, lines 27-36, “in a step 404, network device 102 transmits a packet 112 to a second network device… In a step 406, Packet 112 is received at device 104... In a step 408, device 104…transmits a response packet, packet 114, to device 102... Packets 112 and 114 can be the same packet with the same information, or additional…information”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Query with Heidari. This would have been obvious because one of ordinary skill in the art would have been motivated to perform range calculation among two or more electronic devices.
As per claim 4, 11 and 18, Howkins furthermore discloses, wherein, during a pairing procedure conducted prior to receiving the device identifier, the first computing device stores the device identifier (figure 1A, identifier 127, 137, paragraph [0040], “mobile computing device may communicate the identifier 127…to enable Bluetooth connectivity with the laptop”).
As per claim 5, 12 and 19, Howkins furthermore discloses wherein: the first state comprises a locked state (paragraph [0042], “computing device 130 perform a lock, absence of roaming device 120 causes device to perform the lock) and the second state comprises an unlocked state (paragraph [0040], receiving a code or the identifier that unlocks the device); and the first computing device comprises a personal computing device, a security door, or an automobile (paragraph [0040], laptop or desktop computers).
As per claim 6, 13 and 20, Howkins furthermore discloses, wherein the first and second signals are transmitted over a communications protocol (paragraph [0068]-[0069], signal sent to secure element via speaker and response received by the computing device via microphone are inaudible sound waves) that is distinct from the wireless communications protocol (paragraph [0038], “Bluetooth, and/or WiFi transceivers”. Inaudible sound waves sent and received between the speakers and microphone is distinct from Bluetooth or WiFi wireless communications protocol).
Claims 2, 3, 9, 10, 16 and 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hawkins, Queru and Heidari, further in view of Kamperman (US Patent No. 8,886,939), hereinafter Kamperman.
As per claims 2, 9 and 16, Hawkins discloses, prior to transitioning the first computing device into the second state determining that the second computing device is authenticated (paragraph [0123], once authentication verified access is allowed to the mobile device, paragraph [0040], receiving a code or the identifier that unlocks the device, paragraph [0045], device 120 communicates the security key to unlock the computing device).
Hawkins as modified does not explicitly disclose, determining that the second signal is derived from the first signal. However, in an analogous art, Kamperman discloses determining that the second signal is derived from the first signal (column 2, lines 32-47, “transmitting a first signal from the first communication device to the second communication device at a first time t1, said second communication device being adapted for receiving said first signal, generating a second signal by modifying the received first signal according to the common secret and transmitting the second signal to the first device, receiving the second signal at a second time t2, checking if the second signal has been modified according to the common secret”. It is noted that the second signal is generated by modifying the first signal. As such, checking if the second signal has been modified includes determining that the second signal is derived from the first signal ).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Hawkins with Kamperman. This would have been obvious because one of ordinary skill in the art would have been motivated to do so in order to achieve the predictable result of preventing access to unauthorized devices.
As per claims 3, 10 and 17, Hawkins as modified does not explicitly disclose, but in an analogous art, kamperman discloses, wherein determining that the first and second computing devices are within the threshold distance from one another comprises: deriving a time of flight based on the first and second signals, wherein the time of flight corresponds to a physical distance between the first computing device and the second computing device; and determining, based on the time of flight, that the physical distance is less than or equal to a predefined distance.(column 2, lines 38-50, transmitting a first signal from the first communication device to the second communication device at a first time t1, said second communication device being adapted for receiving said first signal, generating a second signal and transmitting the second signal to the first device, receiving the second signal at a second time t2, determining the distance between the first and the second communication device according to a time difference between t1 and t2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the modified Hawkins with Kamperman. This would have been obvious because one of ordinary skill in the art would have been motivated to perform authenticate distance measurement between devices.
Claims 7 and 14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hawkins, Queru and Heidari further in view of Libeskind et al. (US Patent No. 2009/0060498), hereinafter Libeskind.
As per claim 7 and 14, Hawkins as modified does not explicitly disclose, but in an analogous art, Libeskind discloses, wherein the second signal comprises a copy of the first signal (paragraph [0006], a first node configured for transmitting a first signal to a second node, the second node configured for transmitting a copy of the first signal to the first node in response to receiving the first signal).
It would have been obvious to one of ordinary skill in the art before the effective filing data of the claimed invention to combine the modified Hawkins with Libeskind. This would have been obvious because one of ordinary skill in the art would have been motivated to do so in order to measure a roundtrip time for the fires signal to travel between a first node and second node.
References Cited, Not Used
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Singh, (US Publication No.2005/0030151) discloses, systems, methods, and devices for providing secure authentication of a user to a machine and/or system and secure operation of the machine and/or system thereafter. A representative method, amount others, includes: authenticating a user to a system directly or via a proximity device; authenticating the proximity device to a receiver in the system; upon successful authentication, initiating operation of the system; and intermittently communicating between the proximity device and the receiver to verify whether the proximity device is within continued proximity of the system.
Sengupta, (US Publication No.2005/0221798) discloses, techniques and structures for providing proximity based authentication, security, and/or user notification in a wireless system.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ali Abyaneh whose telephone number is (571) 272-7961. The examiner can normally be reached on Monday-Friday from (8:00-5:00). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached on (571) 270-5143. can be reached on (571) 272-4063. The fax phone numbers for the organization where this application or proceeding is assigned as (571) 273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/ALI S ABYANEH/ Primary Examiner, Art Unit 2437