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 filed on 10/2/2024 has been considered.
Drawings
The drawings filed on 10/2/2024 are accepted.
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.
Claim 28-47 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 7, 9-11, 14, 15, 17 and 20 of U.S. Patent No. 11,985,500. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader in every instance than the patented claims.
Instant claims 28, 29, 31 and 33 are broader than patented claims 1, 2, 1 and 1.
Instant claims 30, 32 and 34 are broader than patented claims 4, 5 and 7.
Instant claims 35, 38 and 40 are broader than patented claim 14.
Instant claim 36, 37 and 41 are broader than patented claims 15, 17 and 20.
Instant claims 42, 45 and 47 are broader than patented claim 9.
Instant claims 43, 44 and 46 are broader than patented claims 10, 11 and 11.
Claims 28-30, 33-36, 40-44, 46 and 47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 28-30, 33, 35-37, 42, 43, 46 of copending Application No. 18/613,240 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the copending claims in every instance.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant claims 28 and 33 are broader than copending claim 28.
Instant claims 29, 30 and 34 are broader than copending claims 29, 30 and 33
Instant claims 35 and 40 are broader than copending claim 42.
Instant claims 36 and 41 are broader than copending claims 43 and 46.
Instant claims 42 and 47 are broader than copending claim 35.
Instant claims 43, 44 and 46 are broader than copending claims 36 and 37.
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 28-47 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jakobsson (US-11,005,989).
Regarding claim 28, Jakobsson teaches an apparatus (Fig. 1 [120]), comprising:
one or more processors; (Fig. 1 [152]) and
one or more computer-readable non-transitory storage media comprising instructions that, when executed by the one or more processors (Page 1 [0020]), cause one or more components of the system to perform operations comprising:
obtaining an authenticator indicating that the caller information associated with a communication request has been authenticated; (Col. 18 lines 32-33 “If the information is validated, the device/app is then enrolled”, Col. 18 lines 7-35 and Fig. 3B)
storing the authenticator; (Col. 18 lines 32-35 i.e. the status of the enrolled app is stored at the verification server)
receiving a verification request from a network; (Fig. 2B [222]) and
transmitting the authenticator to the network in response to the verification request. (Col. 20 lines 32-35 and Fig. 2B [230])
Regarding claim 29, Jakobsson teaches wherein obtaining an authenticator comprises generating the authenticator. (Col. 22 lines 61-64 i.e. creating and conveying assurance or failure)
Regarding claim 30, Jakobsson teaches wherein the authenticator is generated in response to a certificate management and validation procedure for cryptographic authentication. (Col. 23 Claims 4 and 9 with the included dependence upon Claim 1 and Col. 9 lines 10-16)
Regarding claim 31, Jakobsson teaches wherein transmitting the authenticator comprises appending the authenticator to a message. (Col. 17 lines 29-32, Col. 20 lines 32-35 and Fig. 8 [824])
Regarding claim 32, Jakobsson teaches wherein obtaining an authenticator comprises receiving the authenticator as part of a certificate management and validation procedure for cryptographic authentication. (Col. 23 Claims 4 and 9 with the included dependence upon Claim 1 and Col. 9 lines 10-16)
Regarding claim 33, Jakobsson teaches wherein the communication request is associated with a first communication protocol. (Col. 15 lines 16-29)
Regarding claim 34, Jakobsson teaches wherein the verification request is received via a second communication protocol. (Col. 15 lines 41-48)
Regarding claims 35-41, the limitations of claims 35-41 are rejected as being the same reasons set forth above in claims 28-34.
Regarding claims 42-47 the limitations of claims 42-47 are rejected as being the same reasons set forth above in claims 28-33.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-11,997,230 to Milligan et al. which discloses a call origination validation method in a wireless communication network.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW C SAMS whose telephone number is (571)272-8099. The examiner can normally be reached M-F 8:30-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Anderson can be reached at (571)272-4177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew C Sams/Primary Examiner, Art Unit 2646
