DETAILED ACTION
Claims 1-20 are presented on 10/10/2024 for examination on merits. Claims 1, 12, and 18 are independent base claims.
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 .
Examiner's Instructions for filing Response to this Office Action
When the Applicant submits amendments regarding to the claims in response the Office Action, the Examiner would appreciate Applicant if a clean copy of the claims is provided to facilitate the prosecution which otherwise requires extra time for editing the marked-up claims from OCR.
Please submit two sets of claims:
Set #1 as in a typical filing which includes indicators for the status of claim and all marked amendments to the claims; and
Set #2 as an appendix to the Arguments/Remarks for a clean version of the claims which has all the markups removed for entry by the Examiner.
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.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent # 12,143,403 (hereinafter “USPAT 403”).
Although the claims at issue are not identical, they are not patentably distinct from each other in terms of the subject matter and features that are claimed.
Regarding claim 1, USPAT 403 anticipates:
A method of securing a computing device comprising the steps of:
executing a kernel on a computing device, wherein the kernel initiates basic functionality for the computing device (USPAT 403, CLM. 1: executing a kernel on a computing device, wherein the kernel initiates basic functionality for the computing device); and
executing a security process, wherein when the security process is initiated the kernel permits limited networking functionality for the computing device (USPAT 403, CLM. 1: executing a security process, wherein when the security process is initiated the kernel permits limited networking functionality), wherein initiating executing the security process comprises the steps of:
performing a first audit of a first configuration of the computing device (USPAT 403, CLM. 1: performing a first audit of a first configuration of the computing device);
generating an initial key based on the first audit (USPAT 403, CLM. 1: generating an initial key based on the first audit; performing a first comparison of the initial key and a previous key that was previously generated);
performing a first comparison of the initial key and a previous key that was previously generated (USPAT 403, CLM. 1: performing a first comparison of the initial key and a previous key that was previously generated);
analyzing a timestamp to determine whether the security process is being run on a computer that has a security breach via analyzing the timestamp to determine if the security process is being told an incorrect date and time (USPAT 403, CLM. 1: analyzing the timestamp to determine whether the security process is being run on a computer …); and
initiating an enabled mode for the security process based on a result of analyzing the timestamp and as a result of the first comparison indicating there has not been a security breach, thereby enabling unlimited network communications between the computing device and other devices (USPAT 403, CLM. 1: initiating an enabled mode for the security process based on a result of analyzing the timestamp and as a result of the first comparison indicating there has not been a security breach, thereby enabling unlimited network communications between the computing device and other devices).
Independent claims 12 and 18 are similar to claims 11 and 16, respectively. And claims 12 and 18 essentially the same as claim 1 and thus are rejected for the same reason as claim 1 using the same rationale.
Regarding dependent claims 2-11, 13-17, and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Secondly,
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over 1-20 of US Patent No. 10,826,924 B1 (hereinafter “USPAT 924”).
Regarding claim 1, USPAT 924 anticipates the claimed method of securing a computing device comprising the steps of: executing a kernel on a computing device, wherein the kernel initiates basic functionality for the computing device; and executing a security process that comprises the steps as presented in the claim. The feature mapping is as follows:
performing a first audit of a first configuration of the computing device (USPAT 924, CLM. 1: performing a first audit of a first configuration of the computing device);
generating an initial key based on the first audit (USPAT 924, CLM. 1: generating an initial key);
performing a first comparison of the initial key and a previous key that was previously generated (USPAT 924, CLM. 1: performing a first comparison of the initial key and a previous key …);
analyzing a timestamp to determine whether the security process is being run on a computer that has a security breach via analyzing the timestamp to determine if the security process is being told an incorrect date and time (USPAT 924, CLM. 7: analyzing the timestamp to determine the security process is initiated…); and
initiating an enabled mode for the security process based on a result of analyzing the timestamp and as a result of the first comparison indicating there has not been a security breach, thereby enabling unlimited network communications between the computing device and other devices (USPAT 924, CLM. 1: initiating an enabled mode for the security process as a result of the first comparison indicating there has not been a security breach).
Independent claims 12 and 18 are similar to claims 11 and 16, respectively. And claims 12 and 18 essentially the same as claim 1 and thus are rejected for the same reason as claim 1 using the same rationale.
Regarding dependent claims 2-11, 13-17, and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Claim Objections
Claims 1, 9, 12, and 18 are objected to because of the following informalities:
Claims 1, 9, 12, and 18 each recite “the steps of” deficiently. While it is understood that the phrase “the steps of” here means the steps that are laid out in the following portions of the claim, the limitation should not be worded as such because the steps may be otherwise interpreted as previously specified steps by context. The Examiner suggests changing the limitation to “steps of.” It is noted that the Examiner reserves rights to issue a rejection under 35 U.S.C. 112(b) for this issue if unclarity is found in the next office action.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-20 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 pre-AIA the applicant regards as the invention.
The rejection(s) under 35 U.S.C. 112(b) is/are determined by the following reasons:
Claims 1 and 12 each recite two instances of “a computing device,” the first instance in the preamble, and the second in the beginning of the body of the claims. The recitation of two instances of “a computing device” causes indefiniteness and insufficient antecedent basis for the limitation. It is noted that claims 1 and 12 also recite the limitation of “the computing device” unclearly or lacking sufficient antecedent basis because of the aforementioned reasons.
Claims 2-3, 7, 9-10, and 13 each recite the limitation of “the computing device” without sufficient antecedent basis as they depend from claims 1 and 12, respectively.
Claims 5 and 17 each recite “the step of mounting a hard drive” without sufficient antecedent basis in the claims.
Claims 6, 14, 15, and 19 each recite “the step of enabling new network connections to be opened” without sufficient antecedent basis in the claims.
Claims 7 and 20 each recite “the step of enabling functionality for at least one peripheral device coupled to the computing device” without sufficient antecedent basis in the claims.
Claims 12 and 18 each recite “the kernel” without sufficient antecedent basis in the claims. It is noted that claim 13 recites “a kernel” in the clause “further comprising the step of executing a kernel on the computing device” unclearly, as claim 13 depends from claim 12 in which “the kernel” is already recited.
Claims 2-11, 13-17, and 19-20 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, because they depend from the rejected base claims 1, 12, and 18, respectively.
Allowable Subject Matter
Claims 1-20 are allowable over prior art for the following reasons:
Independent claims 1, 12, and 18 each repeat a substantial portion of the allowable subject matter of the parent case Application No. 17/083653, filed 10/29/2020, now U.S. Patent # 12,143,403. Therefore, independent claims 1, 12, and 18 are allowable. Dependent Claims 2-11, 13-17, and 19-20 are allowed by virtue of their dependencies on the Independent claims as they further limit the scope of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the prior art additionally discloses certain parts of the claim features (See “PTO-892 Notice of Reference Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON ZHAO whose telephone number is (571)272.9953. The examiner can normally be reached on Monday to Friday, 7:30 A.M to 5:00 P.M EST.
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/Don G Zhao/Primary Examiner, Art Unit 2493 12/26/2025