DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file. All certified copies of the priority documents have been received in Application No. 16/371,496.
Oath/Declaration
3. The receipt of Oath/Declaration is acknowledged.
Information Disclosure Statement
4. The information disclosure statement (IDS) submitted on 10/08/2024, and 10/31/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
5. The drawing(s) filed on 10/08/2024 are accepted by the Examiner.
Status of Claims
6. Claims 1-11 are pending in this application.
Claim Rejections - 35 USC § 112
7. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
8. Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
9. Claim 1 first requires the communication device to send “an authentication response'' to the terminal device. It then requires receipt of connection information after authentication executed in response to “receiving the authentication response from the terminal device" has succeeded. The claim does not differentiate or introduce a second authentication response sent by the terminal. It is unclear whether this “receiving the authentication response from the terminal device" refers to the earlier claimed device to terminal response to the terminal device, response with its direction mistakenly reversed, a further terminal to device response, or the terminal's separate authentication confirmation. The identity and timing of the authentication condition therefore cannot be determined from the claim.
Claims 2-6 depend from claim 1; claims 3 and 4 expressly repeat the same condition.
10. Claim 7 first requires the terminal device to receive an authentication response from the
communication device. It subsequently recites authentication executed by the communication device in response to “sending the authentication response to the communication device." The terminal has not previously been required to send that response. It Is unclear whether the response direction is reversed, whether a second response is meant, or whether the authentication confirmation is meant.
Claims 8-10 depend from claim 7, and claims 9 and 10 repeat the phrase.
11. Independent claim 11 also contains the corresponding inconsistency. The description at Fig. 8; Steps T620-T630 distinguishes an authentication response from a later authentication Confirm message (Applicant’s Disclosure: FIG. 8, T620-T630; ¶¶ [0135; 0138-0139]), so those ‘messages’ make it look like they are substituted for one another which makes it unclear to the examiner.
12. For purposes of examination the claims are interpreted as referring to successful authentication following the recited terminal to device authentication request and device to terminal authentication response, with a subsequent configuration request exchange.
Applicant is required to clarify this claim language.
Double Patenting
13. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
14. Claims 1-4, and 6-11 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1, 14-16, and 19 of US Patent No. 11,630,619 (hereinafter ‘619) in view of Goto (US 2018/0077255 A1).
15. Claim 5 is rejected over ‘619 in view of Goto and further in view of Cammarota et al. (US 2018/0109418 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other:
Regarding Claim 1:
US 11,630,619
Claim 15:
A communication device comprising:
a wireless interface;
one or more processors; and a memory storing instructions that, when executed by the one or more processors, cause the communication device to:
receive, from a terminal device via the wireless interface, a first authentication request generated using a first public key of the communication device;
send, to the terminal device via the wireless interface, a first authentication response responsive to the first authentication request;
after sending the first authentication response to the terminal device, receive second connection information from the terminal device via the wireless interface,
wherein the second connection information comprises information for establishing a second wireless connection via the wireless interface between the communication device and an external device different from the communication device;
establish, using the second connection information, the second wireless connection via the wireless interface between the communication device and the external device;
after receiving the second connection information from the terminal device, receive a query request from the terminal device via the wireless interface; and
after receiving the query request from the terminal device,
send, to the terminal device via the wireless interface, a query response responsive to the query request,
in a case where the communication device establishes the second wireless connection with the external device using the second connection information.
Current Application
Claim 1:
A communication device comprising:
one or more processors; and a memory storing instructions that, when executed by the one or more processors, cause the communication device to:
receive, from a terminal device different from the communication device, an authentication request;
send, to the terminal device, an authentication response responsive to the authentication request;
send, to the terminal device, a request for requesting the terminal device to send connection information,
the connection information being information for establishing a wireless connection between the communication device and an external device;
receive, from the terminal device, the connection information responsive to the request after an authentication executed in response to receiving the authentication response from the terminal device has succeeded;
attempt a process for establishing the wireless connection with the external device using the connection information; and send, to the terminal device, a result of the attempt of the process for establishing the wireless connection.
Regarding Claim 7:
US 11,630,619
Claim 14:
A terminal device comprising:
a wireless interface;
one or more processors; and a memory configured to store instructions that, when executed by the one or more processors, cause the terminal device to:
obtain a first public key of a communication device;
send, to the communication device via the wireless interface, a first authentication request generated using the first public key;
receive, from the communication device via the wireless interface, a first authentication response responsive to the first authentication request;
after the first authentication response is received from the communication device, generate second connection information for establishing a second wireless connection between the communication device and an external device different from the communication device;
send the second connection information to the communication device via the wireless interface;
after sending the second connection information to the communication device, send a query request to the communication device via the wireless interface; and
after sending the query request to the communication device, receive, from the communication device via the wireless interface, a query response responsive to the query request,
in a case where the communication device establishes the second wireless connection with the external device using the second connection information.
Current Application
Claim 7:
A terminal device comprising:
one or more processors; and a memory storing instructions that, when executed by the one or more processors, cause the terminal device to:
send, to a communication device, an authentication request;
receive, from the communication device, an authentication response responsive to the authentication request;
receive, from the communication device, a request for requesting the terminal device to send connection information, the connection information being information for establishing a wireless connection between the communication device and an external device;
send, to the communication device, the connection information responsive to the request after an authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded; and
receive, from the communication device, a result of a process which is attempted by the communication device using the connection information and for establishing the wireless connection between the communication device and the external device.
Regarding Claim 1:
As shown in the table above, claim 15 of ‘619 contains every element of claim 1 of the current application, however ‘619 does not expressly disclose send, to the terminal device, a request for requesting the terminal device to send connection information; the connection information being information for establishing a wireless connection between the communication device and an external device; receive, from the terminal device, the connection information responsive to the request after an authentication executed in response to receiving the authentication response from the terminal device has succeeded.
Goto discloses send, to the terminal device, a request for requesting the terminal device to send connection information; the connection information being information for establishing a wireless connection between the communication device and an external device; receive, from the terminal device, the connection information responsive to the request after an authentication executed in response to receiving the authentication response from the terminal device has succeeded.
Goto: after smartphone 304 sends authentication request F402 and receives the printer’s response F403, it sends confirmation F404 on successful authentication; printer 305 then sends setting request F405 to the smartphone, receives communication parameters in response F406, and uses them to request a connection to access point 302 at F407 (FIG. 4; ¶¶ [0027-0032]).
‘619 in view of Goto are combinable because they are from the same field of endeavor of image processing; e.g.; both concern configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device. Both disclose that the terminal and device exchange authentication messages before the device connects to an external access point.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ’619 by adding Goto’s printer to smartphone setting request F405 after successful authentication and supplying the connection information in the responsive setting response F406, before using that information for the external-device connection.
The suggestion/motivation for doing is to initiate parameter delivery to the authenticated printer as disclosed by Goto (FIG. 4; ¶ [0030]) because the change permits the terminal to supply connection settings when the communication device requests them.
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 1.
Regarding Claim 7:
As shown in the table above, claim 14 of ‘619 contains every element of claim 7 of the current application, however ‘619 does not expressly disclose receive, from the communication device, a request for requesting the terminal device to send connection information, the connection information being information for establishing a wireless connection between the communication device and an external device;
send, to the communication device, the connection information responsive to the request after an authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded;
Goto discloses receive, from the communication device, a request for requesting the terminal device to send connection information, the connection information being information for establishing a wireless connection between the communication device and an external device;
Goto FIG. 4, F405-F406; ¶ [0030].
send, to the communication device, the connection information responsive to the request after an authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded;
Goto FIG. 4, F403-F406; ¶¶ [0028-0030]
‘619 in view of Goto are combinable because they are from the same field of endeavor of image processing; e.g.; both concern configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device. Both disclose that the terminal and device exchange authentication messages before the device connects to an external access point.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ’619 by adding Goto’s printer to smartphone setting request F405 after successful authentication and supplying the connection information in the responsive setting response F406, before using that information for the external-device connection.
The suggestion/motivation for doing is to initiate parameter delivery to the authenticated printer as disclosed by Goto (FIG. 4; ¶ [0030]) because the change permits the terminal to supply connection settings when the communication device requests them.
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 7
Regarding Claim 11 (drawn to a computer-readable medium (CRM)):
The proposed rejection of device claim 7 above including the table, over ‘619 in view of Goto is similarly cited to reject the computer readable medium of claim 11 because these steps occur in the operation of the device as discussed above. Thus, the arguments similar to that presented above for claim 7 are equally applicable to claim 11.
It is noted that ‘619 claim discloses a computer-readable storage medium in claims 1-13.
Regarding Claim 2:
The proposed combination of ‘619 in view of Goto further discloses the communication device as in claim 1, wherein in a case where the attempt of the process for establishing the wireless connection succeeds, the result is sent to the terminal device (‘619: the last part of claim 15 of ‘619 that states “attempt a process for establishing the wireless connection with the external device using the connection information; and send, to the terminal device, a result of the attempt of the process for establishing the wireless connection”).
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 2.
Regarding Claim 3:
The proposed combination of ‘619 in view of Goto further discloses the communication device as in claim 1, wherein the request is sent to the terminal device after the authentication executed in response to receiving the authentication response from the terminal device has succeeded (Goto: discloses confirmation F404 upon successful authentication before printer setting request F405 (FIG. 4; ¶ [0030])).
‘619 in view of Goto are combinable because they are from the same field of endeavor of image processing; e.g.; both concern configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device. Both disclose that the terminal and device exchange authentication messages before the device connects to an external access point.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose wherein the request is sent to the terminal device after the authentication executed in response to receiving the authentication response from the terminal device has succeeded.
The suggestion/motivation for doing is for securely setting the communication parameters and executing wireless connection processing as disclosed by Goto in the background of invention.
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 3.
Regarding Claim 4:
The proposed combination of ‘619 in view of Goto further discloses the communication device as in claim 1, wherein the authentication executed in response to receiving the authentication response from the terminal device is executed based on information exchanged in receiving the authentication request and sending the authentication response (Goto teaches public key derived identification information in request F402, the printer’s comparison and response F403, and smartphone validation of that response (¶¶ [0027-0029])).
‘619 in view of Goto are combinable because they are from the same field of endeavor of image processing; e.g.; both concern configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device. Both disclose that the terminal and device exchange authentication messages before the device connects to an external access point.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose wherein the authentication executed in response to receiving the authentication response from the terminal device is executed based on information exchanged in receiving the authentication request and sending the authentication response.
The suggestion/motivation for doing is for securely setting the communication parameters and executing wireless connection processing as disclosed by Goto in the background of invention.
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 4.
Regarding Claim 6:
The proposed combination of ‘619 in view of Goto further discloses the communication device as in claim 1, wherein the communication device is configured to execute printing (‘619 Claim 16 discloses “wherein the communication device further comprises a print mechanism, …further cause the communication device to:…print data representing an image to be printed; and in a case where the print data is received from the terminal device, control the print mechanism to print the image.”).
Regarding Claim 8:
The proposed combination of ‘619 in view of Goto further discloses the terminal device as in claim 7, wherein in a case where the process which is attempted by the communication device for establishing the wireless connection succeeds, the result is received from the communication device (‘619 claim 14 discloses “receive, from the communication device via the wireless interface, a query response responsive to the query request, in a case where the communication device establishes the second wireless connection with the external device using the second connection information.”).
Regarding Claim 9:
The proposed combination of ‘619 in view of Goto further discloses the terminal device as in claim 7, wherein the request is received from the communication device after the authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded (Goto: teaches confirmation F404 on success before printer request F405 (FIG. 4; ¶ [0030])).
‘619 in view of Goto are combinable because they are from the same field of endeavor of image processing; e.g.; both concern configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device. Both disclose that the terminal and device exchange authentication messages before the device connects to an external access point.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose wherein the request is received from the communication device after the authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded.
The suggestion/motivation for doing is to let the printer know that authentication has succeeded as disclosed by Goto at ¶ [0030].
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 9.
Regarding Claim 10:
The proposed combination of ‘619 in view of Goto further discloses the terminal device as in claim 7, wherein the authentication executed by the communication device in response to sending the authentication response to the communication device is executed based on information exchanged in sending the authentication request and receiving the authentication response (Goto teaches generation and validation of identification information from the public key in authentication request F402 and response F403 (¶¶ [0027]–[0029])).
‘619 in view of Goto are combinable because they are from the same field of endeavor of image processing; e.g.; both concern configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device. Both disclose that the terminal and device exchange authentication messages before the device connects to an external access point.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose wherein the authentication executed by the communication device in response to sending the authentication response to the communication device is executed based on information exchanged in sending the authentication request and receiving the authentication response.
The suggestion/motivation for doing is for doing an authentication request and to receive an authentication response if successful as disclosed by Goto.
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 10.
16. Claim 5 is rejected over ‘619 in view of Goto and further in view of Cammarota et al. (US 2018/0109418 A1).
Regarding Claim 5:
The proposed combination of ‘619 in view of Goto further discloses the communication device as in claim 1, wherein the communication device is capable of executing a process according to the Device Provisioning Protocol (DPP) (Goto Fig. 4¶¶ [0027-0030] shows a sequence of operations based on DPP),
‘619 in view of Goto do not expressly disclose the authentication request is a DPP Authentication Request, and the authentication response is a DPP Authentication Response.
Cammarota discloses wherein the authentication request is a DPP Authentication Request, and the authentication response is a DPP Authentication Response (Cammarota expressly identifies DPP Authentication Request 217 and DPP Authentication Response 227 (FIG. 2; ¶¶ [0042-0043])).
‘619, Goto and Cammarota are combinable because they are from the same field of endeavor of image processing; e.g.; all disclose configuring a printer or other communication device to join a wireless network using connection information supplied by a terminal device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to disclose wherein wherein the authentication request is a DPP Authentication Request, and the authentication response is a DPP Authentication Response.
The suggestion/motivation for doing is use the DPP authentication phase before configuring the enrollee for network access.
Therefore, it would have been obvious to combine ‘619 with Goto to obtain the invention as specified in claim 5.
Allowable Subject Matter
17. Claims 1-11 would be allowable if rewritten or amended to overcome the rejection(s) under nonstatutory double patenting, set forth in this Office action and, if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
18. The following is an examiner’s statement of reasons for allowance:
Regarding Claim 1:
None of the prior art searched and made of record neither anticipates nor suggests in the claimed combinations a communication device comprising: one or more processors; and a memory storing instructions that, when executed by the one or more processors, cause the communication device to: receive, from a terminal device different from the communication device, an authentication request; send, to the terminal device, an authentication response responsive to the authentication request; send, to the terminal device, a request for requesting the terminal device to send connection information, the connection information being information for establishing a wireless connection between the communication device and an external device; receive, from the terminal device, the connection information responsive to the request after an authentication executed in response to receiving the authentication response from the terminal device has succeeded; attempt a process for establishing the wireless connection with the external device using the connection information; and send, to the terminal device, a result of the attempt of the process for establishing the wireless connection.
Regarding Claim 7:
None of the prior art searched and made of record neither anticipates nor suggests in the claimed combinations a terminal device comprising: one or more processors; and a memory storing instructions that, when executed by the one or more processors, cause the terminal device to: send, to a communication device, an authentication request; receive, from the communication device, an authentication response responsive to the authentication request; receive, from the communication device, a request for requesting the terminal device to send connection information, the connection information being information for establishing a wireless connection between the communication device and an external device; send, to the communication device, the connection information responsive to the request after an authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded; and receive, from the communication device, a result of a process which is attempted by the communication device using the connection information and for establishing the wireless connection between the communication device and the external device.
Regarding Claim 11:
None of the prior art searched and made of record neither anticipates nor suggests in the claimed combinations one or more non-transitory computer-readable media storing instructions that, when executed by one or more processors, cause a terminal device to: send, to a communication device, an authentication request; receive, from the communication device, an authentication response responsive to the authentication request; receive, from the communication device, a request for requesting the terminal device to send connection information, the connection information being information for establishing a wireless connection between the communication device and an external device; send, to the communication device, the connection information responsive to the request after an authentication executed by the communication device in response to sending the authentication response to the communication device has succeeded; and receive, from the communication device, a result of a process which is attempted by the communication device using the connection information and for establishing the wireless connection between the communication device and the external device.
19. Regarding Claims 2-6, and 8-10:
Claims 2-6 and 8-10 depend from allowable claims 1 and 7 and, by virtue of their dependency, are also indicated as allowable subject matter.
Conclusion
20. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Benoit et al. (US 2015/0229475 A1) discloses device provisioning (e.g., enrollment, configuration, and/or authentication) of a client device with a network device may be assisted using a configurator device. The configurator device may obtain a client public key associated with the client device and send the client public device to the network device. The network device may use the client public key in an authentication process between the network device and the client device. Following the authentication process, the client device may be configured for use with the network device to gain access to other network resources. In this manner, permission to gain access to the network device can be transparent to the user, often without the user having to enter codes or passwords.
22. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL R MCLEAN whose telephone number is (571)270-1679. The examiner can normally be reached Monday-Thursday, 6AM - 4PM, PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Akwasi M Sarpong can be reached on 571.270.3438. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NEIL R MCLEAN/Primary Examiner, Art Unit 2681
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