DETAILED ACTION
This action is in response to communication on September 17th, 2024.
Claims 21-40 are currently pending. Claims 1-20 are canceled via preliminary amendment. And claims 21-40 are newly presented via preliminary amendment.
The present application is a continuation of application no. 18/331,630, filed on June 8th, 2023, which has matured into patent no. 12,120,087, which is a continuation of application no. 17/724,980, filed on April 20th, 2022, which has matured into patent no. 11,716,307, which is a continuation of application no. 17/677,461, filed on February 22nd, 2022, which has matured into patent no. 11,444,911.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Application nos. 12,120,087, 11,716,307 and 11,444,911.
Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to use a second domain name server as the operative domain name server for a VPN tunnel.
Instant Application
Patent no. 12,120,087
Patent no. 11,444,911
Pat. no. 11,716,307
Claims 21, 29, and 37
Claim 1
Claim 1
Claim 1
Claims 22 and 30
Claim 1
Claim 1
Claim 1
Claims 23 and 31
Claim 1
Claim 1
Claim 1
Claims 24 and 32
Claim 4
Claim 3
Claim 4
Claims 25 and 33
Claim 5
Claim 1
Claim 5
Claims 26, 34, and 38
Claim 5
Claim 4
Claim 6
Claims 27, 35, and 39
Claim 6
Claim 5
Claim 7
Claims 28, 36, and 40
Claim 7
Claim 6
Claim 8
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)(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.
Claims 21-23, 28-31, 33-36, and 40 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jain et al (U.S. Patent Application Publication no. 2017/0064749, hereinafter Jain).
With respect to claims 21, 29, and 34, Jain discloses a method, system, and non-transitory computer readable medium for domain name system configuration during virtual private network connection (paragraph [0146], lines 1-8, re-routing operations redirect DNS name queries), the method comprising:
transmitting, to a client device, by a virtual private network service provider system, via a virtual private network tunnel (paragraph [0057], lines 10-15, VPN client), first content obtained, from a first external source (paragraph [0055], lines 1-8, VPN connections to the resources), by reconfiguring an operative domain name system server for the virtual private network tunnel from a first domain name system server to a second domain name system server (paragraph [0087], lines 10-13, DNS server identifier).
With respect to claims 22, 30, and 35, Jain discloses the method of claims 21, 29, and 34, wherein transmitting the first content includes:
transmitting the first content in response to receiving, by the virtual private network service provider system, from the client device, via the virtual private network tunnel, a first request for the first content, wherein the first request identifies the first external source for the first content, and wherein the first domain name system server is configured as the operative domain name system server for the virtual private network tunnel (paragraph [0087], lines 10-13, match the rule identifier of a DNS rule).
With respect to claims 23, 31, and 36, Jain discloses the method of claims 22, 30, and 35, further comprising:
prior to receiving the first request, establishing the virtual private network tunnel, wherein establishing the virtual private network tunnel includes receiving, by the virtual private network service provider system, from the client device, virtual private network configuration data indicating the first domain name system server as the operative domain name system server for the virtual private network tunnel (paragraph [0147], lines 1-8, default DNS server).
With respect to claims 28, 33, and 40, Jain discloses the method of claims 21, 29, and 34, wherein transmitting the first content includes:
transmitting, to the client device, by the virtual private network service provider system, via the virtual private network tunnel, a domain name system configuration message, wherein the domain name system configuration message indicates the second domain name system server, such that the client device configures the second domain name system server as the operative domain name system server for the virtual private network tunnel (paragraph [0151], DNS operation that re-routes the DNS name query of the second mobile device 1304 out of the datacenter 1600 to a DNS server 1630 for second-region mobile devices that access the datacenter DNS server in the first region).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Namdev Pat. Pub. 2023/0108854
Rudnik Pat. Pub. 2020/0314067
Chan Pat. Pub. 2016/0269353
Buck Pat. Pub. 2021/0258350
Parla Pat. Pub. 2014/0344917
Saltzman Pat. Pub. 2019/0104186
Narula Pat. Pub. 2022/0368675
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAKE J RUBIN whose telephone number is (571)270-3802. The examiner can normally be reached on Monday - Friday, 9am - 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ario Etienne can be reached on 571-272-4001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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8/22/24
/BLAKE J RUBIN/Primary Examiner, Art Unit 2457
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