DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
The Preliminary Amendment filed 01 May 2025 has been received and considered.
Claims 16-33 are pending.
This Action is Non-Final.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 16-20, 22-25, 27-31, and 33 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Saito (US20070079135) in view of Trandal et al. (US 20090241175).
As per claims 16, 17, and 28 Saito discloses system (see Figs. 1 and 4) and method comprising: a portable device:
obtaining a graphical encoded information item which is displayed on a display of a computing apparatus (see paragraph [0043] step S105 where the camera of the mobile phone captures the two-dimensional code);
decoding the encoded information from the encoded information item (see paragraph [0043] step S106 decoding the two-dimensional code); and
transmitting data to first server apparatus, the data including the decoded information and a first identifier identifying the device or a user of the device, wherein the decoded information includes an apparatus identification information item for allowing identification of the computing apparatus (see paragraphs [0043]-[0048] where the mobile phone sends the decoded information which includes a session ID that identifies the computing apparatus by identifying the session between the server and the user terminal, i.e. computing apparatus, as described in paragraph [0040] and further sends information identifying the phone itself, e.g. the MAC address or phone number, for identification); and
the first server apparatus: receiving the data from the device; establishing the identity of the user of the device, wherein establishing the identity of the user comprises using the first identifier to determine if the user is registered with the first server apparatus (see paragraphs [0048]-[0050] using the mobile phone identifying information to look up stored, i.e. registered, user IDs);
in response to establishing the identity of the user, authorising the user to access a service; and providing the service to the user via the computing apparatus using the apparatus identification information item; or sending a second message to a second server apparatus, the second message including the apparatus identification information item and indicating that the user is authorised to access the service provided by the second server apparatus, the second server apparatus responding to receipt of the second message by providing the service to the user via the computing apparatus using the apparatus identification information item (see paragraphs [0050]-[0056] where there user ID is verified additional steps are taken which result in the sending of a message to the web server which includes the session ID which the webserver verifies prior to providing the service).
Saito fails to explicitly disclose the data transmitted by the phone to the server is provided in a single first message.
However, Trandal et al. teaches a mobile phone decoding graphical encoded information and sending this decoded information together with identifying information for the phone in a single message (see paragraphs [0057]-[0058] where the data extracted from the decoded data matrix and the phone id are sent to the authentication server in “the same transmission”).
At the time of the invention it would have been obvious to one of ordinary skill in the art to send the data of the Saito system in a single message.
Motivation, as recognized by one of ordinary skill in the art, to do so would have been to save time and resources by reducing the number of messages transmitted.
As per claims 18, 23, and 29, the modified Saito and Trandal et al. system discloses the decoded information comprises a verification information item, the method further comprising the first server apparatus: comparing the verification information item with a reference verification item; if there is identity between the verification information item and the reference verification item, providing the service to the user via the computing apparatus using the apparatus identification information item; and if there is not identity between the verification information item and the reference verification item aborting the method prior to providing the service to the user via the computing apparatus using the apparatus identification information item (see Saito paragraphs [0043]-[0056] and Trandal et al. paragraphs [0057]-[0058]).
As per claims 19, 24, and 30, the modified Saito and Trandal et al. system discloses sending the second message to the second server apparatus, wherein the encoded information comprises a second identifier, the second identifier identifying second server apparatus (see Saito paragraphs [0043]-[0048]).
As per claims 20, 25, and 31, the modified Saito and Trandal et al. system discloses the encoded information comprises a third identifier, the third identifier identifying the first server apparatus, and wherein the first message is transmitted to the first server apparatus based on the third identifier (see Saito paragraphs [0043]-[0048]).
As per claims 22, 27, and 33, the modified Saito and Trandal et al. system discloses establishing the identity of the user of the device comprises: initiating a communication channel with the device based on the first identifier; receiving user-provided information from the device via the communication channel; comparing the received user-provided information with stored reference user- provided information; and verifying, and thereby establishing, the identity of the user when it is determined that there is identity between the received user-provided information and the reference user-provided information (see Trandal et al. paragraphs [0057]-[0058] and [0080]-[0090]).
Claims 21, 26, and 32 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the modified Saito and Trandal et al. system as applied to claims 16, 17, and 28 above, and further in view of Lee et al. (US 20110055547).
As per claims 21, 26, and 32, the modified Saito and Trandal et al. system fails to explicitly disclose the portable device: prior to transmitting the first message, receiving a user input; comparing the received user input to a stored reference input; and transmitting the first message, when it is determined that there is identity between the received user input and the stored reference user input.
However, Lee et al. teaches the portable device: prior to transmitting the first message, receiving a user input; comparing the received user input to a stored reference input; and transmitting the first message, when it is determined that there is identity between the received user input and the stored reference user input. (see paragraph [0065]).
At the time of the invention, it would have been obvious to one of ordinary skill in the art, to include the user input is verified at the phone in the modified Saito and Trandal et al. system.
Motivation, as recognized by one of ordinary skill in the art, to do so would have been to add an additional layer of security verifying the user at the phone.
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 16-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-48 of U.S. Patent No. 9,614,849. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-48 of the ‘849 contains equivalent limitations of the currently pending claim and as such anticipates the current claim and/or are obvious over Saito, Trandal et al., and/or Lee et al. as put forth above.
Claims 16-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 10,530,769. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-27 of the ‘769 contains equivalent limitations of the currently pending claim and as such anticipates the current claim and/or are obvious over Saito, Trandal et al., and/or Lee et al. as put forth above.
Claims 16-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,146,561. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of the ‘561 contains equivalent limitations of the currently pending claim and as such anticipates the current claim and/or are obvious over Saito, Trandal et al., and/or Lee et al. as put forth above.
NOTE: Application No. 17/450,328 and 18/212,010 are abandoned and as such no Double Patenting rejections are made, If the ‘328 and/or ‘010 Application is revised in its current state, Statutory Double patenting would be required as Claim 16 of the present application is a duplicate of claim 1 in the ‘328 Application and in the ‘010 Application. Where the remaining claims would be obvious in view Saito, Trandal et al., and/or Lee et al. as put forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: the remaining references put forth on the PTO-892 form are directed towards authentication using portable devices and graphical codes.
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/Michael Pyzocha/Primary Examiner, Art Unit 2409