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 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.
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Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,095,960; claims 1-15 of U.S. Patent No. 11,503,178; claims 1-20 of U.S. Patent No. 10,868,937. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the issued patent make obvious the claims of the pending application in that the claims are directed to substantially the same subject matter as the parent case though not necessarily presented in the same sequential order or the same claim numbering as shown in the table below (for purposes of illustration rather than limitation).
Instant Application: 18/885,335
Patent: 12,095,960; 11,503,178; 10,868,937
Claim 1. A data transfer device comprising: an enclosure; a computer-readable memory within the enclosure, the computer-readable memory storing encrypted data and computer-executable instructions; and a processor within the enclosure, the processor programmed by the computer- executable instructions to at least: establish a connection to an external storage device; send the encrypted data to the external storage device in response to establishing the connection with the external storage device; and automatically delete the encrypted data from the computer-readable memory in response to sending the encrypted data to the external storage device.
Claim 1. A data transfer device comprising: an enclosure with a plurality of input/output connection ports; a processor within the enclosure; and a memory within the enclosure, the memory comprising: a data store; and a data transfer component, wherein the data transfer component directs the processor to: transfer data from an external data source via at least one of the plurality of input/output connection ports, wherein the external data source is external to the data transfer device; encrypt the data transferred from the external data source to generate encrypted data; store the encrypted data in the data store; and responsive to a successful transfer of the data from the external data source and storage of the encrypted data to the data store, automatically delete the data from the external data source.
“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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2-21 is/are rejected under 35 U.S.C. 102(a1)/(a2) as being anticipated by LaBorde (2015/0278449).
Regarding claim 2, LaBorde discloses a data transfer device comprising: an enclosure [FIG. 28B: client device, manager device]; a computer-readable memory within the enclosure, the computer-readable memory storing encrypted data and computer-executable instructions [FIG. 28B, Claim 19: memory including instructions to generate resource request including authentication credential, encrypt the data set and store the encrypted data set in the memory]; and a processor within the enclosure [FIG. 28B: controller], the processor programmed by the computer- executable instructions to at least: establish a connection to an external storage device [FIG. 28B: controller in client device communicating with external manager device]; send the encrypted data to the external storage device in response to establishing the connection with the external storage device [Claim 19: encrypt the data set and store the encrypted data set in the memory to be transmitted to the external manager device]; and automatically delete the encrypted data from the computer-readable memory in response to sending the encrypted data to the external storage device [Claim 19: delete the encrypted data set from the memory after receiving an acknowledgment message indicating successful transmission from the external manager device].
Regarding claim 3, LaBorde discloses the data transfer device of claim 2, wherein to store the encrypted data in the computer-readable memory, the processor is further programmed by the computer-executable instructions to: transfer data from an external data source [Claim 19: encrypt the data set and store the encrypted data set in memory to be transmitted to the external manager device]; and encrypt the data [Claim 19: encrypt the data set and store the encrypted data set in memory to be transmitted to the external manager device].
Regarding claim 4, LaBorde discloses the data transfer device of claim 3, wherein the data comprises media data FIG. 28A: medical record data capture].
Regarding claim 5, LaBorde discloses the data transfer device of claim 4, wherein the processor is configured to receive, from an external computing device, one or more instructions for pausing deletion of the encrypted data from the computer-readable memory until an authorized user has validated the encrypted data for deletion [Claim 19: delete the encrypted data set from the memory].
Regarding claim 6, LaBorde discloses the data transfer device of claim 5, wherein a validation of the media data for deletion by the authorized user includes receiving instructions from a remote computing device that directs the processor to playback the media data prior to deletion [FIG. 28B; ¶0014].
Regarding claim 7, LaBorde discloses the data transfer device of claim 5, wherein the media data is further processed by at least dynamically adjusting a resolution of the media data for playback in response to either (i) instructions received from the external computing device or (ii) a determined connection speed on at least one of a plurality of input/output connection ports utilized by the external computing device [¶0014].
Regarding claim 8, LaBorde discloses the data transfer device of claim 2, wherein the external storage device is associated with a cloud-based storage service [FIG. 28A].
Regarding claim 9, LaBorde discloses the data transfer device of claim 2, wherein the connection to the external storage device utilizes a cellular connection [¶0082].
Regarding claim 10, LaBorde discloses the data transfer device of claim 2, wherein the enclosure further comprises an interface area including one or more hard disk drive slots and one or more memory card slots [FIG. 28A, 28B].
Regarding claim 11, LaBorde discloses the data transfer device of claim 10, wherein the one or more memory card slots includes a secure digital (SD) card slot, a compact flash (CF) card slot, and a Personal Computer Memory Card International Association (PCMCIA) card slot [FIG. 28A, 28B].
Regarding claim 12, LaBorde discloses the data transfer device of claim 2, wherein the enclosure is configured to be worn by a user [FIG. 28A].
Regarding claim 13, the rationale in the rejection of claim 2 is herein incorporated.
Regarding claim 14, the rationale in the rejection of claim 3 is herein incorporated.
Regarding claim 15, the rationale in the rejection of claim 4 is herein incorporated.
Regarding claim 16, the rationale in the rejection of claim 5 is herein incorporated.
Regarding claim 17, the rationale in the rejection of claim 6 is herein incorporated.
Regarding claim 18, the rationale in the rejection of claim 7 is herein incorporated.
Regarding claim 19, the rationale in the rejection of claim 8 is herein incorporated.
Regarding claim 20, the rationale in the rejection of claim 9 is herein incorporated.
Regarding claim 21, the rationale in the rejection of claim 12 is herein incorporated.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chandrashekar et al. (US2018/0165698); HITTEL, Sean et al. (US2018/0288087); Anderson, Glen J et al. (US 2018/0007546).
Regarding claims 2 and 13, Chandrashekar discloses a data transfer device comprising: an enclosure [FIG. 4]; a computer-readable memory within the enclosure, the computer-readable memory storing encrypted data and computer-executable instructions [FIG. 4: Mass Storage 414]; and a processor within the enclosure [¶0046, 0074: migrating VMs and transfer data in the cloud computing facility], the processor programmed by the computer- executable instructions to at least: establish a connection to an external storage device [¶0036: transmitting and receiving data to and from mass-storage devices and other I/O devices and subsystems].
Chandrashekar does not explicitly disclose sending the encrypted data to the external storage device in response to establishing the connection with the external storage device.
HITTEL, however, discloses sending the encrypted data to the external storage device in response to establishing the connection with the external storage device [FIG. 1; ¶0154: encrypting the file objects; storing the encoded data on cloud-based services; connection cloud-based storage services through network(s)].
It would have been obvious to one of ordinary skill in the art to have encrypted and storing the encrypted data in order to prevent infection and propagation of malware (¶0011).
Chandrashekar et al. and Hittel do not explicitly disclose automatically delete the encrypted data from the computer-readable memory in response to sending the encrypted data to the external storage device.
Anderson, however, discloses automatically delete the encrypted data from the computer-readable memory in response to sending the encrypted data to the external storage device [Claim 19: delete the encrypted data set from the memory after receiving an acknowledgment message indicating successful transmission from the external manager device].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. LaBorde (US 20150278449) discloses a system that permits authentication and authorization to access resources and encrypt data received via a communication medium.
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/MARDOCHEE CHERY/Primary Examiner, Art Unit 2133