DETAILED ACTION
This non-final office action is in response to claims 1-20 filed October 08, 2024 for examination. Claims 1-20 are being examined and are pending.
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 .
Drawings
The drawings filed on October 08, 2024 have been accepted.
Information Disclosure Statement
The information disclosure statement (IDS) was filed on 12/31/2024 and 04/28/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-18 U.S. Patent Application No. 12,143,399(S/N # 17/367,062). Although the conflicting claims are not identical, they are not patentably distinct from each other because the referenced US Patent and the instant application are claiming common subject matter, as follows (only independent claim 1 is shown as example):
Claim Comparison Table:
Instant Application # 18/909,0704
US Patent 12,143,399(S/N # 17/367,062)
storing, in a database of a central computer system, a first email address and a first address of a first computer system associated with a first email user, and a second email address and a second address of a second computer system associated with a second email user; receiving, at the central computer system, a first email indicating the first email address as an email sender, the first email indicating the second email address as an email recipient; retrieving, from the database of the central computer system, the first address and the second address based on receiving the first email; sending, from the central computer system to the first address, an inquiry message requesting confirmation of the first email; receiving, at the central computer system from the first address, a response message based on transmitting the inquiry message; and sending, from the central computer system to the second address of the second computer system, an email confirmation message in accordance with the response message indicating that the first email is valid.
an email receiver module configured to receive an email with a sender email address of an email sender and a recipient email address of an email recipient; a first data storage module configured to store a first device address of a first device associated with the email sender, the first data storage module identified by a first identifier transformed from the sender email address, the first device address used to contact the email sender; a second data storage module configured to store a second device address of a second device associated with the email recipient, the second data storage module identified by a second identifier transformed from the recipient email address, the second device address used to contact the email recipient; a control and communication module configured to transform the sender email address into the first identifier to instruct the first storage module to conduct a first search based on the sender email address and transform the recipient email address into the second identifier to instruct the second storage module to conduct a second search based on the recipient email address, the first search producing the first device address and the second search producing the second device address; and an email transmitter module configured to transmit, to the email recipient, the email with an email certification code that is accessible by the email recipient in accordance with the email sender confirming the validity of the email via a message that is different than the email, the email certification code being used by the email recipient to determine an identity of a sender of the email.
Allowable Subject Matter
Claims 1-20 are allowed over prior arts.
Claims 1-20 would be allowable if rewritten or amended or filed terminal disclaimer to overcome the rejection(s) under non-statutory double patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Prior art US 10110569 B1 (Coelho et al.) has been found to tech the processor of the first mobile device of the first user may further be configured to transmit the secret key and the personal private key of the first user to the personal virtual server, and the system further comprises a second device comprising a processor configured to access data stored on the personal virtual server by receiving the first user's password and downloading the secret key and the personal private key of the first user to the second device. The processor of the first mobile device of the first user may further be configured to generate a file key to encrypt a file, upload the encrypted file to the personal virtual server, and download the encrypted file from the virtual server to the first mobile device of the first user and decrypt the file using the file key. The processor of the first mobile device of the first user may further be configured to transmit a request to a second user to learn a personal public key of the second user, transmit an email to the second user, the email comprising the personal public key of the first user as an attachment to the email and a first security code, transmit a text message to the second user, the text message comprising the personal public key of the first user and a second security code, receive a ciphertext in an email from the second user, the ciphertext comprising a personal public key for the second user and encrypted by the mobile device of the second user using the personal public key of the first user and chosen ciphertext attack (CCA)-secure public key encryption scheme, import the ciphertext and decrypt the ciphertext encrypted by the mobile device of the second user, verify an email address and phone number of the second user, and that the ciphertext was received within a predetermined time, accept the personal public key of the second user after verifying the email address and phone number of the second user, and that the ciphertext was received within a predetermined time, and store the personal public key of the second user and personal information of the second user in at least one of the personal virtual server and the mobile device of the first user. The processor of the first mobile device of the first user may be further configured to, encrypt the file key using a public-key encryption scheme and the personal public key of the second user and upload the encrypted file key to the personal virtual server, and transmit an access link to the second user, the access link configured provide the second user with access to the encrypted file on the personal virtual server. The system may further comprise a first mobile device of the second user comprising a processor configured to access and download the encrypted file on the personal virtual server of the first user, recover the file key using a personal private key of the second user, decrypt the encrypted file with the file key. The processor of the first mobile device of the first user may be further configured to encrypt a message using the second user's personal public key and a CCA-secure public-key encryption scheme, the message comprising at least one of a text message and an email message, and send the encrypted message to the second user. The processor may be further configured to establish a temporary shared key for the first user and the second user by having the first user encrypt the temporary shared key using the personal public key of the second user. The processor may further be configured to prompt the first user move the personal virtual server to a new datacenter in a location proximate the first user, and prompt the first user to split portions of data on stored on the personal virtual server such that a single file in the personal virtual server is stored in a plurality of datacenters.
Prior art US 20160248778 A1 (Erdal et al.) has been found to tech facilitating transmission of an electronic mail (email) containing a link to the one or more transferable files to each of the users in the trust list of trusted users comprises: receiving a first email message from a first user device of a first user of a first trust list to be transmitted to a second user as a trusted member of the first trust list, the first email message containing a first transferable file attached therein; extracting the first transferable file from the first email message; storing the first transferable file in a first data store of the data server; generating a second email message based on the first email message without including the first transferable file, wherein the second email message includes a link to the predetermined storage location of the first data store; and transmitting the second email message to a second user device of the second user without sending the transferable file attached therein. Claim 3.
Independent claim 1 identifies the following combination of features:
storing, in a database of a central computer system, a first email address and a first address of a first computer system associated with a first email user, and a second email address and a second address of a second computer system associated with a second email user;
receiving, at the central computer system, a first email indicating the first email address as an email sender, the first email indicating the second email address as an email recipient;
retrieving, from the database of the central computer system, the first address and the second address based on receiving the first email;
sending, from the central computer system to the first address, an inquiry message requesting confirmation of the first email;
receiving, at the central computer system from the first address, a response message based on transmitting the inquiry message; and
sending, from the central computer system to the second address of the second computer system, an email confirmation message in accordance with the response message indicating that the first email is valid.
Other independent claims 9 and 15 although different, further recite similar limitations to those found in claim 1.
None of the prior arts taken alone anticipate the claimed invention. The prior arts also do not provide sufficient motivation to be combined and to be modified in such a way as to render obvious the above combination of claimed features within the context of the claimed invention as a whole without the usage of impermissible hindsight reasoning. Therefore, the examiner found the invention as claimed to be allowable.
Dependent claims 2-8, 10-14, and 16-20 are also allowed due to their dependency on independent allowable claims 1, 9, and 15.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWNCHOY RAHMAN whose telephone number is (571)270-7471. The examiner can normally be reached Monday - Friday 8:30A-5P ET.
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/Shawnchoy Rahman/Primary Examiner, Art Unit 2438