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 .
Detailed Action
Office Action is in response to the instant Application 18/882,361 filed on 9/11/2024. Claims 1-20 are pending.
Examiner Note: Examiner attempted to contact Applicant’s representative Ishir Mehta. However, they are no longer with the firm, there were no other Attorneys of record and all other attempts to contact were unsuccessful.
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, 8 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 15 of U.S. Patent No. 12,120,101. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of claims 1, 8 and 15 of the instant Application are anticipated by the limitations recited in 1, 8 and 15 of U.S. Patent No. 12,120,101.
Regarding claims 2-7, 9-14 and 16-20; claims 2-7, 9-14 and 16-20 are also rejected under Double Patenting for similar reasons respectively and are dependent on claims 1, 10 and 11 and therefore inherit the rejection from issues of the independent claims.
Allowable Subject Matter
Claims 1-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The instant Application is allowed for similar reasons as parent Application 17/852,976, filed 06/29/2022, now U.S. Patent # 12,120,101 and Terminal Disclaimer approved on. An updated search was conducted on 2/5/2026 and the claims are still in condition for Allowance.
Applicant's arguments/amendments filed on 6/6/2024 make the record is clear regarding reasons for allowance. See MPEP 1302.14(1). According to MPEP 1302.14 (I): “In most cases, the examiner’s actions and the applicant’s replies make evident the reasons for allowance, satisfying the “record as a whole” proviso of the rule. This is particularly true when applicant fully complies with 37 CFR 1.111 (b) and (e) and 37 CFR 1.133(b). Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary."
A Final search was conducted by Examiner, and of the searched prior, none were able to disclose, teach or even suggest in combination “receive the first data from the NAS device via a network file system (NFS) protocol based at least in part on the request, wherein the first network adapter card is configured for inflight encryption of the first data; determine that the first data from the NAS device was received via an NFS port of a plurality of ports; determine that the first data is unencrypted based at least in part on receiving the first data via the NFS port of the plurality of ports; encrypt the first data based at least in part on the first data being received via the NFS port; and transmit the encrypted first data to the server via the first network adapter card and a second network adapter card, wherein the second network adapter card is configured for inflight decryption of the encrypted first data received from the first network adapter card” as recited in claim 1 and similarly recited in claims 8 and 15.
These limitations are not taught by conventional means regarding inflight secure communications. Conventional means would encrypt data before transmission. While the instant application does disclose this, it further goes into details about how data is encrypted depending on port types. This adds a novelty to the claims and as a result the claims are in condition for Allowance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODERICK TOLENTINO whose telephone number is (571)272-2661. The examiner can normally be reached Mon- Fri 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu Pham can be reached on 571-270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RODERICK . TOLENTINO
Examiner
Art Unit 2439
/RODERICK TOLENTINO/Primary Examiner, Art Unit 2439
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