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 .
This office action is in response to the amendments filed on 02/04/2026.
Claims 1-20 are currently pending in this application. Claims 1, 3, 5, 8, 10, 12, 15, 17 and 19 have been amended.
No new IDS has been filed.
Examiner’s Note
Applicants are suggested to include information from figures 2 and 5 with related text into the claims to provide a better condition for an allowance.
Response to Arguments
Regarding the previous 112(b) rejections, the applicants have amended the claims and argued, in page 7 of the remarks, that “… claims 1, 8 and 15 have been amended …”. However, the applicant’s amendments cause the new rejections stated in the 112 rejections section below.
Regarding the double patenting rejections, the applicants, in page 7 of the remarks, state that “… requests that the rejection be held in abeyance because no claim in the present application is currently allowable …”. Therefore, the rejections are maintained.
Regarding the 102 rejections, the applicant, in page 8 of the remarks, has argued that “…Klemets does not teach every feature of the claims …”, however, the current limitations of the claims are in a condition of lack of clarity for a prior-art examination. Please see the 112 rejections and the examiner’s statement regarding the prior-art examination below.
Thus, the applicants’ arguments are not persuasive. Please see amended rejections below for the amended claims. This action is final.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL. — The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirements (e.g., a new matter issue).
Claim 1 (claims 8 and 15 include similar limitation) is amended to include a subject matter, “… transmitting, by the access provider network, the unique identifier to a UDN cloud service … receiving , from the UDN cloud service, a second list … based on determining that the UDN is identified by both the first list and the second list, placing the first client device in the UDN”, however, these amended limitations were not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Examiner noted that the specification describes “… transmitting the unique identifier to a UDN cloud … joining, responsive to determining that one or more other devices on the access provider network belong to the same UDN, the client device with the other device(s) belonging to the same UDN.” – see par. 0020; “… “… the UDN management module 370 receives the list of UDN(s) from the identity provider 350 through the UDN cloud (e.g., UDN cloud 630 shown in figure 6a) …” – see par. 0047; “… the access provider transmits a unique identifier of the client device to the UDN network (UDN cloud)” – see par. 0062. However, this information cannot be read as the recited limitations, “… transmitting, by the access provider network, the unique identifier to a UDN cloud service (note: the UDN cloud of figs. 6A and 6B does not provide any service) … receiving , from the UDN cloud service, a second list … based on determining that the UDN is identified by both the first list and the second list, placing the first client device in the UDN” (note: “joining the client device with the other devices” is not the same as “placing the first client device in the UDN”). See also the 112(b) rejections below.
Claims 2-7, 9-14 and 16-20 depend from the claim 1, 8 or 15, and are analyzed and rejected accordingly.
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 1 (claims 8 and 15 include similar limitations) recites “… automated grouping of client devices (see also claims 9 and 16) … receiving … a first list that identifies one or more UDNs to which the first client device belongs … one or more UDNs to which a second client device belongs … determining that a UDN is identified by both the first list and the second list; and … placing the first client device in the UDN”; however, it is not clear (1) whether placing the first client device in the UDN, which has been belonged to the first client device is defined as the automated grouping of client devices – omitting necessary step/component which cause the limitations unclear; (2) whether “the one (or more) UDN(s)” to which the first client device belongs is the same as “the UDN” in which the first client is placed or not (note: if they are the same then the first client device has already been in the UDN before placing in it or placing the first device to the UDN, twice); (3) the term, “one or more UDNs” included in two different locations (e.g., lines 9 and 12 of the claim 1) is the same or not – if they are not the same, suggested to use different terms, such as “a first one or more UDNs”, “a second one or more UDNs”, etc.
Claims 2-7, 9-14 and 16-20 depend from the claim 1, 8 or 15, and are analyzed and rejected accordingly.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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).
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of the Patent No. US 12,081,534 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Current Application No. 18/803058
Reference Patent No. US 12,081,534 B2
Claim 1: A method of automated grouping of client devices for a user-defined network (UDN), the method comprising:
receiving, from a first client device and at an access provider network, an authentication request, wherein the authentication request includes a unique identifier of the first client device;
transmitting, by the access provider network, the unique identifier to a UDN cloud service;
receiving, from the UDN cloud service and based on the unique identifier, a first list that identifies one or more UDNs to which the first client device belongs;
receiving, from the UDN cloud service, a second list that identifies one or more UDNs to which a second client device belongs; determining that a UDN is identified by both a first list and the second list; and based on determining that the UDN is identified by both the first list and the second list, placing the first client device in the UDN.
Claim 1: A method of automated grouping of client devices for a user-defined network (UDN), the method comprising:
receiving, from a first client device, an authentication request to join an access provider network, wherein the authentication request includes a unique identifier of the first client device …
transmitting the unique identifier to a UDN cloud …
receiving, responsive to the identity provider authenticating the authentication request, a first list from the UDN cloud, wherein the first list indicates that the UDN is associated (equivalent to belongs to the first client device) with the unique identifier; and
joining the first client device with a second client device present on the access provider network based on a second list from the UDN cloud (equivalent to receiving a second list), wherein the second list indicates that the UDN is associated with the second device (equivalent to placing the first client device in the UDN).
Claim 2: The method of claim 1, further comprising advertising support for an automatic grouping of client devices for UDNs.
Claim 2: The method of claim 1, further comprising … advertising support for an automatic grouping of client devices for UDNs.
Claim 3: The method of claim 2, wherein support for the automatic grouping of client devices is advertised responsive to receiving a query from the first client device.
Claim 3: The method of claim 2, wherein … the advertising support for the automatic grouping of client devices are responsive to receiving a query from the first client device.
Claim 4: The method of claim 3, wherein the query from the first client device complies with Access Network Query Protocol (ANQP).
Claim 4: The method of claim 3, wherein the query from the first client device complies with Access Network Query Protocol (ANQP).
Claim 5: The method of claim 1, wherein a Media Access Control (MAC) address of the first client device is not transmitted to a federation-based network or to an identity provider.
Claim 5: The method of claim 1, wherein a Media Access Control (MAC) address of the first client device is not transmitted to the federation-based network or to the identity provider.
Claim 6: The method of claim 1, further comprising:
receiving, from the second client device, a request to join the access provider network using a unique identifier of the second client device; and
creating, using a Media Access Control (MAC) address of the second client device and the unique identifier of the second client device, a local instance of the UDN.
Claim 6: The method of claim 1, further comprising:
receiving, from the second client device, a request to join the access provider network using a unique identifier of the second client device … and
creating, using a Media Access Control (MAC) address of the second client device and the unique identifier of the second client device, a local instance of the UDN.
Claim 7: The method of claim 1, wherein the unique identifier is stored by the first client device in a profile.
Claim 7: The method of claim 1, wherein the unique identifier is stored by the first client device in a profile ...
Claims 8-20 are the device or medium claims, which have similar limitations with claims 8-20 of the Patent No. US 12,081,534 B2, and analyzed and rejected accordingly (note: see the above rejections of claim 1-7 for the mapping of the claim limitations).
Examiner’s Note Regarding Prior-art Rejections
As explained in the 112 rejections stated above, the current limitations are in a condition of lack of clarity and/or capability (e.g., omitting necessary component/step) for a prior-art examination. However, a potential concept of the application can be found in:
US 2019/0215692 A1 by Grayson et al. (e.g., providing access to wireless networks requested by the user device based on the identity provider and an access provider, etc.);
US 8,307,093 B2 by Klemets et al. (e.g., providing a mobile device to access an UPnP service using the on-line identity provider based on the user ID and providing a list of libraries available to the mobile device, etc.).
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 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 MAUNG T LWIN whose telephone number is (571)270-7845. The examiner can normally be reached Monday - Friday 10:00 am - 6:00 pm.
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/MAUNG T LWIN/ Primary Examiner, Art Unit 2495
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