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 .
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 09/25/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement has been considered by the Examiner.
Priority
The instant application claims priority to EP23157971, which was filed on 02/22/ 2023. A certified copy of the EP patent application has been received.
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).
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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 1-20 of the instant application is anticipated by claims 1-15 of U.S. Patent No. 12132824 in that claims 1-15 of U.S. Patent No.12132824 contains all the limitations of claims 1-20 of the instant application. Claims 1-20 of the instant application therefore are not patently distinct from U.S. Patent No.12132824 claims and as such are unpatentable.
Claim 1 of the instant application is anticipated by claim 1 of U.S. Patent No. 12132824 in that claim 1 of U.S. Patent No.12132824 contains all the limitations of claim 1 of the instant application. Claim 1 of the instant application therefore, is not patently distinct from claim 1 of U.S. Patent No.12132824 and as such is unpatentable.
Claim 19 of the instant application is anticipated by claim 1 of U.S. Patent No. 12132824 in that claim 15 of U.S. Patent No.12132824 contains all the limitations of claim 19 of the instant application. Claim 19 of the instant application therefore, is not patently distinct from the claim 15 of U.S. Patent No.12132824 and as such is unpatentable.
Allowable Subject Matter
The invention defined in claims 1 and 19 are not suggested by the prior art of record. Claims 1 and 19 would be allowed if the claims overcome the Double Patenting Rejection set forth in this Office Action
Reason for allowance
The invention defined in claims 1 and 19 are not suggested by the prior art of record. The prior art of record (in particular, BOBINSKI; MIKE US 20170180125, KUANG; Randy et al. US 20150172292, Seo Jung Hoon KR 20120108599, Everspaugh; Dr. Adam US-20230246850, LU; Zhou US-20180091509, YAMAGUCHI; Takahiro US-20110219232, Mandich; Denis US 20220131838, Sullivan; Garry Joseph et al. US 12167236 and Jarjoui; Wissam et al. US 11233658) singly or in combination does not disclose, with respect to independent claim 1 “providing device initialization data to an issuer system, wherein the device initialization data comprises the public device key and the public issuer authentication key;
the issuer system generating a device authentication key pair comprising a public device authentication key and a private device authentication key; encrypting the user private key and the public device authentication key with the public device key to provide encrypted data;
digitally signing the encrypted data using a private issuer key associated with the public
issuer key to provide signed encrypted data;
the issuer system providing personalization device data, wherein the personalization
device data comprises the encrypted data and the signed encrypted data;
injecting the encrypted data and the signed encrypted data into the initialized user device to provide the personalized user device;” and similar limitations of independent claim 19 in combination with the other claimed features as a whole.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GHODRAT JAMSHIDI whose telephone number is (571)270-1956. The examiner can normally be reached 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Colin can be reached at 5712723862. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GHODRAT JAMSHIDI/ Primary Examiner, Art Unit 2493