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 .
DETAILED ACTION
This is in response to Application #18/906,051 filed on 10/03/2024 in which Claims 1-20 are presented for examination.
Status of Claims
Claims 1-20 are pending, of which Claims 1, 2, 3, 4, 8, 10, 11, 12, 13, 17, 19, 20 are rejected under 35 U.S.C. 103 ,Claims 1, 11, 20 are rejected under Double Patenting, dependent Claims 5, 6, 7, 9, 14, 15, 16, 18 are objected to as being allowable as a whole over prior art if rewritten in independent form including all of the limitations of their base independent claim and any intervening dependent claims.
Applicant’s Most Recent Claim Set of 10/03/2024
Applicant’s most recent claim set of 10/03/2024 is considered to be the latest claim set under consideration by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “the device is configured to execute, in claim(s) 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Objections
Regarding Claim 7, this claim is objected to for what appears to be a typographical error. This claim recites “the first second credential data” in Line(s) 16-17, for the purposes of this examination the examiner construes this phrase to read as “the first credential data”.
Regarding Claim 10, this claim is objected to for what appears to be a typographical error. This claim recites “when the when the” in Line(s) 4, for the purposes of this examination the examiner construes this phrase to read as “when the”.
Regarding Claim 19, this claim is objected to for what appears to be a typographical error. This claim recites “when the when the” in Line(s) 3-4, for the purposes of this examination the examiner construes this phrase to read as “when the”.
Appropriate correction is required.
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(s) 1, 11 (is/are) of the instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-2, 10-11, 12, 14 of U.S. Patent No. 12,137,089. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application’s Parent Patent No. 12,137,089’s claims 1-2, 10-11, 12, 14 anticipate claims 1, 11 of the instant application
With respect to claim(s) 1, 11 of the instant application, please refer to the table below, which illustrates the anticipatory relationship of the claim limitations at issue:
Instant application
U.S. Patent No. 12,137,089
Claim 1
Claims 1, 2, 12, 14
Claim 11
Claims 10, 11
Claim(s) 1, 11, 20 (is/are) of the instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 10, 18 of U.S. Patent No. 11,368,444. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application’s Parent Patent No. 11,368,444’s claims 1, 10, 18 anticipate claims 1, 11, 20 of the instant application
With respect to claim(s) 1, 11, 20 of the instant application, please refer to the table below, which illustrates the anticipatory relationship of the claim limitations at issue:
Instant application
U.S. Patent No. 11,368,444
Claim 1
Claim 1
Claim 11
Claim 10
Claim 20
Claim 18
Prior Art Rejections - 35 USC § 102 and/or 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 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.
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2, 4, 8, 10, 11, 13, 17, 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Pellegrini et al. US Patent Application Publication 2019/0380020 in view of Cole US Patent Application Publication 2018/0115551.
Regarding Claim 1, Pellegrini et al. discloses:
An apparatus, comprising: a communications interface; a memory storing instructions; and at least one processor coupled to the communications interface and the memory, the at least one processor being configured to execute the instructions to [(Pellegrini et al. Par 26 Lines 1-6; Figure 1A-ii) where Pellegrini et al. teaches an Emergency Management System with a processor, memory, and communications interface]:
receive, via the communications interface, a first request for an element of data, the first request comprising an access token and first credential data associated with an application program [(Pellegrini et al. Par 169 Lines 1-7) where Pellegrini et al. teaches a Credential Management System that receives a data request containing a device identifier or first credential data and an access token from an Emergency Response Application sent via a communications interface];
when the first credential data corresponds to second credential data associated with the application program, determine that the requested data element is accessible to the application program and perform operations that validate the access token [(Pellegrini et al. Par 169 Lines 7-14; 20-22; Par 173 Lines 1-5) where Pellegrini et al. teaches the Credential Management System determines that the first credential data or device identifier corresponds to a second credential data or correlated org ID, both associated with the Emergency Response Application, the Credential Management System transmitting the data request, now containing both first and second credential data in addition to the access token, over an encrypted channel to the Clearinghouse, the Clearinghouse validating the access token];
based on the validation of the access token, obtain the requested data element; and transmit the data element to a device via the communications interface [(Pellegrini et al. Par 173 Lines 1-5, 13-18) where Pellegrini et al. teaches that based on the Clearinghouse validating the access token, the Clearinghouse returns or transmits via the communications interface the requested data to the Emergency Response Application executing on a device with a GUI interface].
Pellegrini et al. does not appear to explicitly disclose:
that the returned data is encrypted
However, Cole discloses:
that the returned data is encrypted [(Cole Par 99 Lines 17-18) where Cole teaches that the retrieved or returned data is encrypted].
Pellegrini et al. and Cole are analogous art because they are from the “same field of endeavor” and are from the same “problem-solving area”. Namely, they are both from the field of “information security”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Pellegrini et al. and the teachings of Cole by providing retrieved or returned data that is encrypted as taught by Cole in the teaching described by Pellegrini et al.
The motivation for doing so would be to increase the usability and flexibility of Pellegrini et al. by providing retrieved or returned data that is encrypted as taught by Cole in the teaching described by Pellegrini et al. so as to provide industry standard security of encrypted data for retrieved or returned data.
Regarding Claim 2, most of the limitations of this claim have been noted in the rejection of Claim 1. Applicant is directed to the rejection of Claim 1 above. In addition, the combination of Pellegrini et al. and Cole discloses:
The apparatus of claim 1, wherein the at least one processor is further configured to receive the first request from the device, the device is configured to execute the application program, and the first request being generated by executed application program [(Pellegrini et al. Par 169 Lines 1-14; Par 173 Lines 1-5, 13-18) where Pellegrini et al. teaches a Credential Management System that receives a first data request containing a device identifier or first credential data and an access token from an Emergency Response Application executing on a device with a GUI interface].
Regarding Claim 4, most of the limitations of this claim have been noted in the rejection of Claim 1. Applicant is directed to the rejection of Claim 1 above. In addition, the combination of Pellegrini et al. and Cole discloses:
The apparatus of claim 1, wherein: the first request further comprises an application identifier associated with the application program [(Pellegrini et al. Par 169 Lines 1-7) where Pellegrini et al. teaches a Credential Management System that receives a data request containing a device identifier or first credential data and an access token from an Emergency Response Application sent via a communications interface, thereby providing an application identifier of the emergency data request message, device identifier, and first credential data all combined]; and
the at least one processor is further configured to: obtain the second credential data based on the application identifier; establish a correspondence between the first credential data and the second credential data; and based on the established correspondence, determine that the requested data element is accessible to the application program [(Pellegrini et al. Par 169 Lines 1-14; 20-22; Par 173 Lines 1-5, 13-18) where Pellegrini et al. teaches the Credential Management System determines that the first credential data or device identifier corresponds to a second credential data or correlated org ID issued by the Credential Management System and based on providing an application identifier of the received emergency data request message, device identifier, and first credential data all combined, and the Credential Management System transmitting the data request, now containing both first and second credential data in addition to the access token, over an encrypted channel to the Clearinghouse, the Clearinghouse validating the access token, and based on the Clearinghouse validating the access token, the Clearinghouse determines that the requested data is available and accessible to the Emergency Response Application, and as a result, returns or transmits via the communications interface the requested data to the Emergency Response Application] .
Regarding Claim 8, most of the limitations of this claim have been noted in the rejection of Claim 1. Applicant is directed to the rejection of Claim 1 above. In addition, the combination of Pellegrini et al. and Cole discloses:
The apparatus of claim 1, wherein the at least one processor is further configured to: identify and obtain a reference access token associated with the application program from a portion of the memory or data repository; extract the access token from the first request, and determine that the reference access token corresponds to the extracted access token; and validate the extracted access token based on the determination that the reference access token corresponds to the extracted access token [(Cole Par 100 Lines 1-12)].
Regarding Claim 10, most of the limitations of this claim have been noted in the rejection of Claim 1. Applicant is directed to the rejection of Claim 1 above. In addition, the combination of Pellegrini et al. and Cole discloses:
The apparatus of claim 1, wherein the at least one processor is further configured to: determine that the requested data element is inaccessible to the application program when the when the first credential data fails to correspond to second credential data; generate an error message indicative of the inaccessibility of the requested data element to the application program; and transmit the error message to the device via the communications interface [(Pellegrini et al. Par 169 Lines 1-14, 24-27) (Cole Par 403 Lines 1-5) where Pellegrini et al. and Cole teach that the requested data is not accessible or authorized to be provided to the application program if the corresponding second credential data or correlated org ID is both not valid and fails to correspond to the first credential data, with an error message generated to inform the submitter of the message, the application program, that the data request has failed].
Regarding Claim 11:
It is a method claim corresponding to the apparatus claim of claim 1. Therefore, claim 11 is rejected with the same rationale as applied against claim 1 above.
Regarding Claim 13:
It is a method claim corresponding to the apparatus claim of claim 4. Therefore, claim 13 is rejected with the same rationale as applied against claim 4 above.
Regarding Claim 17:
It is a method claim corresponding to the apparatus claim of claim 8. Therefore, claim 17 is rejected with the same rationale as applied against claim 8 above.
Regarding Claim 19:
It is a method claim corresponding to the apparatus claim of claim 10. Therefore, claim 19 is rejected with the same rationale as applied against claim 10 above.
Regarding Claim 20:
It is a medium claim corresponding to the apparatus claim of claim 1. Therefore, claim 20 is rejected with the same rationale as applied against claim 1 above.
Claim(s) 3, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Pellegrini et al. US Patent Application Publication 2019/0380020 in view of Cole US Patent Application Publication 2018/0115551 and further in view of Narita et al. US Patent Application Publication 2002/0199097.
Regarding Claim 3: the combination of Pellegrini et al. and Cole discloses:
The apparatus of claim 1, wherein the at least one processor is further configured to:
The combination of Pellegrini et al. and Cole does not appear to explicitly disclose:
load a public cryptographic key of the application program from the memory; and encrypt the requested data element using the public cryptographic key.
However, Narita et al. discloses:
load a public cryptographic key of the application program from the memory; and encrypt the requested data element using the public cryptographic key [(Narita et al. Par 48 Lines 8-11) where Narita et al. teaches a public cryptographic key of an application program on a billing and authentication server storing the public cryptographic key in memory for later use, then retrieving it from memory when needed to encrypt data requested by the application program to transmit in encrypted form, encrypted by the public cryptographic key].
Pellegrini et al. and Cole, and Narita et al. are analogous art because they are from the “same field of endeavor” and are from the same “problem-solving area,”. Namely, they are both from the field of “information security”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Pellegrini et al. and Cole and the teachings of Narita et al. by providing a public cryptographic key of an application program on a billing and authentication server storing the public cryptographic key in memory for later use, then retrieving it from memory when needed to encrypt data requested by the application program to transmit in encrypted form, encrypted by the public cryptographic key as taught by Narita et al. in the teaching described by Pellegrini et al. and Cole.
The motivation for doing so would be to increase the usability and flexibility of Pellegrini et al. and Cole, and Narita et al. by providing a public cryptographic key of an application program on a billing and authentication server storing the public cryptographic key in memory for later use, then retrieving it from memory when needed to encrypt data requested by the application program to transmit in encrypted form, encrypted by the public cryptographic key as taught by Narita et al. in the teaching described by Pellegrini et al. and Cole so as provide industry standard PKI type public key encryption of transmitted data to secure the transmitted data during transmission.
Regarding Claim 12:
It is a method claim corresponding to the system claims of claims 2 and 3. Therefore, claim 12 is rejected with the same rationale as applied against claims 2 and 3 above.
Allowable Subject Matter – Dependent Claim(s)
Claims 5, 6, 7, 9, 14, 15, 16, 18 are objected to as being dependent upon a rejected base claim, but would be allowable as a whole over prior art if rewritten in independent form including all of the limitations of their base independent claim, and any intervening dependent claims.
The following is a statement of reasons for the indication of allowable subject matter.
The closest prior art, as recited, Pellegrini et al. US Patent Application Publication 2019/0380020 and Cole US Patent Application Publication 2018/0115551, are also generally directed to various aspects of providing access to data between third party applications. However, Pellegrini et al or Cole does not teach or suggest, either singularly or in combination, the particular combination of steps or elements as recited in the dependent Claims 5, 6, 7, 9, 14, 15, 16, 18 when also incorporating all of the limitations of their base independent claim and any intervening dependent claims. For example, none of the cited prior art teaches or suggests the steps of:
load, from the memory, one or more ledger blocks of a distributed ledger, and obtain the second credential data from the one or more ledger blocks of the distributed ledger based on the application identifier, the first request further comprises an application identifier associated with the application program, generate a second request that includes the application identifier and the first credential data, transmit, via the communications interface, the second request to a computing system associated with a centralized authority, the second request causing the computing system to execute additional instructions included within a first ledger blocks of a distributed ledger, the executed additional instructions further causing the computing system to obtain the second credential data from a second ledger block of the distributed ledger based on the application identifier and establish a correspondence between the first second credential data and the second credential data, the access token comprises an OAuth token, and the reference access token comprises a reference OAuth token, and generate the reference OAuth token and store the reference OAuth token within a portion of the memory.
As recited in dependent Claims 5, 6, 7, 9, 14, 15, 16, 18 when also incorporating all of the limitations of their base independent claim, any intervening dependent claims, any additional limitations found in dependent Claims 5, 6, 7, 9, 14, 15, 16, 18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lu - US_20140189799_A1_I: Lu teaches the authorization of a third party application to utilize a resource by multi-factor authorization.
Ashley et al - US_20050154889_A1_I: Ashley et al teaches a lightweight public key based procedure utilized by a GSS protocol to enhance flexibility.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY HOLDER whose telephone number is 571-270-3789. The examiner can normally be reached on Monday-Friday 10:00AM-7:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linglan Edwards, can be reached on (571) 270-5440. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY W HOLDER/
Primary Examiner, Art Unit 2408