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 .
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 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.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10541966. Although the claims at issue are not identical, they are not patentably distinct from each other because the application’s claims merely broaden the scope of the patented claims by not claiming some claim elements (i.e., sending a query notification message).
Claim 1 of Instant Application
Claim 1 of US 10541966
A computing device operating within a first virtual network, comprising: a hardware processor; and a memory coupled to the hardware processor, the memory comprising an address management logic configured to determine if an overlap exists between private IP address ranges of a first virtual network and a second virtual network, the address management logic configured to perform the method comprising:
A computing device operating within a first virtual network, comprising: a hardware processor; and a memory coupled to the hardware processor,
receive a message from a first device of the first virtual network, the message being directed from the first device to a second device of the second virtual network; determine if a first private IP address of the first virtual network overlaps with a second private IP address of the second virtual network;
the memory comprises an address translation control module that, when executed by the hardware processor and a message is to be transmitted from the first virtual network to a second virtual network different than the first virtual network has been received, conducts private Internet Protocol (IP) address resolution by at least (i) providing one or more query messages to address management logic that is configured to access an IP address pool having
an address range that is non-overlapping of an address range associated with the first virtual network and an address range associated with the second virtual network, and
responsive to a determination that the first private IP address overlaps with the second private IP address, return a unique non-overlapping private IP address to a first intermediary device of the first virtual network, wherein the unique non-overlapping private IP address is substituted for the first private IP address; and instruct the message to be transmitted from the first intermediary device to a second intermediary device of the second virtual network, the second intermediary device being configured to conduct a private IP address translation to recover a source IP address of the first device and a source IP address of the second device.
(ii) substituting at least a source IP address within the message with a selected private IP address provided by the address management logic when the address management logic determines that the first virtual network and the second virtual network have overlapping private IP address
ranges,
wherein the one or more query messages to further cause the address management logic to send a query notification message to a computing device for the second virtual network, the query notification message includes a private
IP address from the IP address pool for substitution with a destination IP address of the message.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11153262. Although the claims at issue are not identical, they are not patentably distinct from each other because the application’s claims merely broaden the scope of the patented claims by not claiming some claim elements (i.e., determining that the first virtual private network and the second virtual private network include non-overlapping private IP address ranges).
Claim 1 of Instant Application
Claim 1 of US 11153262
A computing device operating within a first virtual network, comprising: a hardware processor; and a memory coupled to the hardware processor, the memory comprising an address management logic configured to determine if an overlap exists between private IP address ranges of a first virtual network and a second virtual network, the address management logic configured to perform the method comprising:
A computerized method for enabling communications between networks with overlapping Internet Protocol (IP) address ranges, the computerized method comprising:
receive a message from a first device of the first virtual network, the message being directed from the first device to a second device of the second virtual network; determine if a first private IP address of the first virtual network overlaps with a second private IP address of the second virtual network;
receiving a first message from a first computing device operating within a first virtual private network for transmission to a second computing device operating within a second virtual private network different than the first virtual private network; determining whether the first virtual private network and the second virtual private network include overlapping private IP address ranges;
responsive to a determination that the first private IP address overlaps with the second private IP address, return a unique non-overlapping private IP address to a first intermediary device of the first virtual network, wherein the unique non-overlapping private IP address is substituted for the first private IP address; and instruct the message to be transmitted from the first intermediary device to a second intermediary device of the second virtual network, the second intermediary device being configured to conduct a private IP address translation to recover a source IP address of the first device and a source IP address of the second device.
responsive to determining that the first virtual private network and the second virtual private network including overlapping private IP address ranges, substituting a private IP address within the first message with a selected unique, non-overlapping private IP address, the non-overlapping private IP address being outside an IP address range allocated to the first virtual private network, and transmitting the first message to the second computing device; and
responsive to determining that the first virtual private network and the second virtual private network include non-overlapping private IP address ranges, transmitting a second message in response to the first message without substituting the private IP address within the second message with another private IP address.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12058094. Although the claims at issue are not identical, they are not patentably distinct from each other because the application’s claims merely broaden the scope of the patented claims by not claiming some claim elements (i.e., receiving a second address mapping query message).
Claim 1 of Instant Application
Claim 1 of US 12058094
A computing device operating within a first virtual network, comprising: a hardware processor; and a memory coupled to the hardware processor, the memory comprising an address management logic configured to determine if an overlap exists between private IP address ranges of a first virtual network and a second virtual network, the address management logic configured to perform the method comprising:
A computerized method for enabling communications between networks with overlapping Internet Protocol (IP) address ranges, the computerized method comprising:
receive a message from a first device of the first virtual network, the message being directed from the first device to a second device of the second virtual network; determine if a first private IP address of the first virtual network overlaps with a second private IP address of the second virtual network;
receiving a first address mapping query message from a first intermediary device associated with a first network, the first address mapping query message includes a source IP address and a network identifier; transmitting a first private IP address map in response to the first address mapping query message to the first intermediary device, the first private IP address map including at least a first plurality of private IP addresses each uniquely assigned to a computing device residing in the first network;
in response to a triggering event detected by a second intermediary device associated with a second network, receiving a second address mapping query message; transmitting a second private IP address map in response to the second address mapping query message, the second private IP address map including at least a second plurality of private IP addresses each uniquely assigned to a computing device residing in the second network;
responsive to a determination that the first private IP address overlaps with the second private IP address, return a unique non-overlapping private IP address to a first intermediary device of the first virtual network, wherein the unique non-overlapping private IP address is substituted for the first private IP address; and instruct the message to be transmitted from the first intermediary device to a second intermediary device of the second virtual network, the second intermediary device being configured to conduct a private IP address translation to recover a source IP address of the first device and a source IP address of the second device.
substituting the source IP address for a private IP address associated with the computing device prior to transmission of a message from the first intermediary device to the second intermediary device upon determining that the first network and the second network include overlapping private IP address ranges; and retaining the source IP address within the message being transmitted from the first intermediary device to the second intermediary device in response to the first network and the second network including non-overlapping private IP address ranges.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Alkhatib et al. (US Pub. 2004/0249974) in view of Furukawa (US Pub. 2008/0298367).
Regarding claim 1, Alkhatib teaches a computing device operating within a first virtual network, comprising: a hardware processor; and a memory coupled to the hardware processor, the memory comprising the address management logic configured to perform the method comprising: receive a message from a first device of the first virtual network (see device B in Figure 3), the message being directed from the first device to a second device of the second virtual network (see device A in Figure 3); and instruct the message to be transmitted from the first intermediary device to a second intermediary device of the second virtual network (see Firewall; NAT 302 and Firewall; NAT 304 in Figure 3), the second intermediary device being configured to conduct a private IP address translation to recover a source IP address of the first device and a source IP address of the second device (see NAT 304 in Figure 3). Alkhatib, however, does not teach an address management logic configured to determine if an overlap exists between private IP address ranges of a first virtual network and a second virtual network, and determine if a first private IP address of the first virtual network overlaps with a second private IP address of the second virtual network; responsive to a determination that the first private IP address overlaps with the second private IP address, return a unique non-overlapping private IP address to a first intermediary device of the first virtual network, wherein the unique non-overlapping private IP address is substituted for the first private IP address. Furukawa teaches an address management logic configured to determine if an overlap exists between private IP address ranges of a first virtual network and a second virtual network, and determine if a first private IP address of the first virtual network overlaps with a second private IP address of the second virtual network; responsive to a determination that the first private IP address overlaps with the second private IP address, return a unique non-overlapping private IP address to a first intermediary device of the first virtual network, wherein the unique non-overlapping private IP address is substituted for the first private IP address (“The virtual address assignment unit 134 checks whether or not there is an overlapping private IP address among computers of the sites A, B, and C, by reference to routing information collected from all VPN routers of the VPN. When an overlapping private IP address is found, the virtual address assignment unit 134 assigns virtual IP address which do not overlap within the VPN for the private IP address” in [0039]). It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Alkhatib to have an address management logic configured to determine if an overlap exists between private IP address ranges of a first virtual network and a second virtual network, and determine if a first private IP address of the first virtual network overlaps with a second private IP address of the second virtual network; responsive to a determination that the first private IP address overlaps with the second private IP address, return a unique non-overlapping private IP address to a first intermediary device of the first virtual network, wherein the unique non-overlapping private IP address is substituted for the first private IP address as taught by Furukawa in order to avoid overlapping IP address [0039].
Regarding claim 2, Furukawa teaches the unique non-overlapping private IP address is outside an IP address range allocated to the first virtual network (“VPN router 100A replaces the source address of the packet to the virtual address 20.0.0.1” in [0065]).
Regarding claim 3, Alkhatib teaches the first intermediary device and the second intermediary device correspond to a first gateway and a second gateway (see “gateway” in [0080]).
Allowable Subject Matter
Claims 4-12 would be allowable if the terminal disclaimer (for 10541966, 11153262 and 12058094) is timely filed to overcome the rejection based on nonstatutory double patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The prior art in the record (in particular, US Pub. 2004/0249974 to Alkhatib et al. (hereinafter “Alkhatib”)) does not disclose, with respect to claim 4, substituting the source IP address for a private IP address associated with the first device upon determining that the first network and the second network include overlapping private IP address ranges; retaining the source IP address within the message being transmitted from the first device to the second device; and conducting a private IP address translation to recover the source IP address as claimed. Rather, Alkhatib teaches conducting a private IP address translation (see NAT 304 in Figure 3). The same reasoning applies to claim 8 mutatis mutandis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLEMENCE S HAN whose telephone number is (571)272-3158. The examiner can normally be reached Monday-Friday 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edan Orgad can be reached at (571)272-7884. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLEMENCE S HAN/Primary Examiner, Art Unit 2414
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