DETAILED ACTION
Continuation
This application is a continuation application of US 17/183,900 (filed on Feb. 24, 2021 – now US Patent No. 12,184,661). The prosecution history and references cited in the above application have been fully considered.
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 .
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, 2, 4-8, 11-15, and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6-9, 13-17, and 20 of U.S. Patent No. 12,184,661. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the conflicting patent anticipate the claims of the instant application.
See the following table for an exemplary comparison between the limitations of the method claims of the instant application and conflicting patent.
Instant Application (18/924,631)
Conflicting Patent (12,184,661)
1. A method for creating consent contracts for networking communications, the method comprising:
1. A method for creating consent contracts for networking communications, the method comprising:
receiving, at a consent-contract system, consent data from a first server of a data center that indicates consent by the first server to receive communications from a second server of the data center, the consent data being received prior to the second server sending requests to establish a connection with the first server;
receiving, at a consent-contract system, consent data from a first device that indicates consent by the first device to receive network communications from sending devices, the consent data being received prior to the sending devices sending requests to establish a connection with the first device;
receiving, at the consent-contract system, request data that includes a request by the second server to communicate with the first server, the request data being received prior to the second server sending communications for the first server;
receiving, at the consent-contract system, request data that includes a request by a second device of the sending devices to communicate with the first device, the request data being received prior to the second device sending network communications to the first device;
determining, using the consent data and the request data, that the first server consented to receive communications from the second server;
determining, using the consent data and the request data, that the first device consented to receive network communications from the second device;
and creating a consent contract that indicates consent by the first server to receive the communications from the second server.
creating a consent contract that indicates consent by the first device to receive the network communications from the second device;
sending the consent contract to an edge device that is disposed in a wide area network (WAN) through which the network communications are to be communicated; subsequent to the consent contract being created and sent to the edge device of the WAN: receiving, at the edge device of the WAN, the network communications sent from the second device and to the first device; and based at least in part on the consent contract indicating the consent by the first device to receive the network communications from the second device, sending the network communications to the first device.
4. The method of claim 1, further comprising storing the consent contract in a consent database managed by the consent-contract system, wherein the consent database is stored in a location associated with the data center.
7. The method of claim 1, further comprising: storing the consent contract in a consent database managed by the consent-contract system;
determining that a threshold period of time has elapsed from when the consent contract was created; and removing the consent contract from the consent database based at least in part on determining that the threshold period of time has elapsed.
5. The method of claim 1, further comprising: receiving, from the second server, first data indicating a set of permissions granted to the second server;
2. The method of claim 1, further comprising: receiving, from the second device, first data indicating a set of permissions granted to the second device;
and determining that the first server has provided second data indicating consent to receive network communications from devices with the set of permissions.
and determining that the first device has provided second data indicating consent to receive network communications from devices with the set of permissions.
6. The method of claim 1, wherein the consent data comprises at least one of: a first range of addresses associated with devices with which the first server has consented to communicating; a second range of addresses associated with devices with which the first server has restricted from communicating; a first indication that that the first server consents to communicate with devices that desire to send network communications of a particular communication type; or a second indication that that the first server consents to communicate with devices that desire to establish a connection of a particular connection type.
6. The method of claim 1, wherein the consent data comprises at least one of: a first range of addresses associated with devices with which the first device has consented to communicating; a second range of addresses associated with devices with which the first device has restricted from communicating; a first indication that that the first device consents to communicate with devices that desire to send network communications of a particular communication type; or a second indication that that the first device consents to communicate with sending devices that desire to establish a connection of a particular connection type.
7. The method of claim 1, further comprising: storing the consent contract in a consent database managed by the consent-contract system; determining that a threshold period of time has elapsed from when the consent contract was created; and removing the consent contract from the consent database based at least in part on determining that the threshold period of time has elapsed.
7. The method of claim 1, further comprising: storing the consent contract in a consent database managed by the consent-contract system; determining that a threshold period of time has elapsed from when the consent contract was created; and removing the consent contract from the consent database based at least in part on determining that the threshold period of time has elapsed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
For step 1, a claim is determined whether it falls within one of the four statutory categories. Claims 1-7 are directed to a method, claims 8-14 are directed to a system comprising hardware components, and claims 15-20 are directed to a non-transitory computer-readable storage medium storing executable instructions. Therefore, claims 1-20 fall within at least one of the statutory categories of invention and passes step 1.
For step 2A (Prong One), a claim is determined whether it recites an abstract idea, law of nature, or natural phenomenon. Independent claims 1, 8, and 15 recite limitations for:
“determining…that the first server consented to receive communications from the second sever”
“creating a consent contract that indicates consent by a first server to receive the communications from the second server”
However, there are no elements recited in those limitations that would preclude them from being practically performed in the mind, or with pen/paper, under broadest reasonable interpretation (BRI). Limitation [A] is directed to an evaluation or judgement process. For example, a human can perform the determination act by viewing a printout, or information off a computer screen, to judge if something is permitted. Limitation [B] is directed to creating a consent contract, which is merely an indicator to a permitted action. The extent of the creation is not explicitly described in a manner that would preclude any mental activities under BRI. For example, the consent can simply be a verbal/written authorization to perform an action. Thus, the independent claims present at least one limitation that falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the independent claims recite an abstract idea.
For step 2A (Prong Two), a claim is determined whether it recites additional elements that integrate the judicial exception into a practical application. These additional elements are:
“receiving…consent data…request data…”
Various recitations of a computer performing the steps (e.g. a “a consent-contract system”, “one or more processors”).
However, these elements fail to add something more meaningful to the judicial exception as generic computer components – e.g. a “system” in claim 8 – are used to apply the exception. See MPEP 2106.05(f). Furthermore, the additional elements are directed to extra-solution activity that includes necessary data gathering and outputting as recited in limitation [C]. See MPEP 2106.05(g): “An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent.”
Furthermore, claiming that these limitations are applied in a “first server” and a “second server” of a “data center” do not add more meaningful limitations to the claimed invention. Such limitations simply link the judicial exception to a particular technological environment and does not integrate the judicial exception into a practical application. See MPEP 2106.05(h).
Furthermore, the limitations fail to define a specific meaningful activity that would show improvement to the functioning of the computer or technological field (e.g. how is the consent contract actively used to protect an overall network, or an entity on the network). For example, the current claims fail to provide details of explicitly enforcing the consent contract to block or allow communications between the servers. The consent contract merely serves as an indicator of consent. Thus, the independent claims fail to present enough elements to integrate the abstract idea into a practical application. Accordingly, the independent claims are directed to an abstract idea.
For step 2B, a claim is determined whether any elements, or combination of elements, are enough to ensure that the claims amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Since these elements are recited at a high level of generality, such that they can be represented as ordinary computer systems. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Having a system with a processor to perform such elements does not instantly preclude it from mental activities if the act itself is presented in a generic/abstract manner – it would be mere instructions to apply an exception (see MPEP 2106.05(f)). Hence, the independent claims are not patent eligible. Furthermore, generally linking the use of the judicial exception to a particular technological environment does not integrate the exception into a practical application (see MPEP 2106.04(d) and MPEP 2106.05(h))
Dependent Claims: The dependent claims further recite additional mental steps with insignificantly extra-solution activities (e.g., claims 2-5, 7, 9-12, 14, and 16-19) that include receiving, removing, and storing data. In another example, the dependent claims further recite the characteristics of the consent data (e.g., claims 6, 13, and 20) without further providing meaningful limitations to the characteristics and its application to the rest of the claimed invention. These are nominal limitations that do not provide more than an insignificant relationship to the exception. Thus, none of the elements in the dependent claims preclude them from being performed mentally nor do they present additional meaningful elements that are more than an abstract idea.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7-12, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/03513681 to Dudziak et al. (hereinafter, “DUDZIAK”).
As per claim 1: DUDZIAK discloses: A method for creating consent contracts for networking communications (an example environment 300 for implementing systems and/or methods [DUDZIAK, ¶0025]), the method comprising: receiving, at a consent-contract system, consent data from a first server of a data center that indicates consent by the first server to receive communications from a second server of the data center (a data structure 500 stores consent information received from the user device that includes identifying options and actions associated with an application [DUDZIAK, ¶0045, 0068]; the data structure 500 stores information regarding custom consent parameters [DUDZIAK, ¶0041; Fig. 5]; Fig. 3 illustrates the environment 300 where the user device 305, application 310, consent gateway 315, and network 340 [DUDZIAK, ¶0025]), the consent data being received prior to the second server sending requests to establish a connection with the first server (an application (server) cannot directly communicate with the user device if consent is not given yet as determined by the consent gateway [DUDZIAK, ¶0059]); receiving, at the consent-contract system, request data that includes a request by the second server to communicate with the first server (Process 700 may include receiving application traffic for a user device (block 705). For example, consent gateway 315 may receive traffic from application server 310 (e.g., via network 340). The received traffic may be destined for a particular user device 305. [DUDZIAK, ¶0057]), the request data being received prior to the second server sending communications for the first server (as stated earlier through [DUDZIAK, ¶0059]); determining, using the consent data and the request data, that the first server consented to receive communications from the second server (Process 700 may also include determining whether the application is authorized for the user device (block 710). For example, consent gateway 315 may determine whether user device 305 has previously granted consent to application server 310. [DUDZIAK, ¶0058]); and creating a consent contract that indicates consent by the first server to receive the communications from the second server (Process 800 may additionally include storing information associating the application and the user device with the determined level of consent (block 835). For example, consent gateway 315 may store or output information indicating the level of consent (determined at block 830) that has been granted to application server 310, by user device 305. [DUDZIAK, ¶0070]).
As per claim 2: DUDZIAK discloses all limitations of claim 1. Furthermore, DUZIAK does disclose: wherein the consent data is first consent data, the data center is a first data center, and the request data is first request data, the method further comprising: receiving, at the consent-contract system, second consent data from the first server of the first data center that indicates consent by the first server to receive communications from a third server of a second data center, the second consent data being received prior to the third server sending requests to establish a connection with the first server; receiving, at the consent-contract system, second request data that includes a request by the third server to communicate with the first server, the second request data being received prior to the third server sending communications for the first server; determining, using the second consent data and the second request data, that the first server consented to receive communications from the third server; and creating a consent contract that indicates consent by the first server to receive the communications from the third server (the same consent management and traffic control technique between a user device and an application described in DUDZIAK of claim 1 is also applicable herein; e.g., the data structure 500 enables information identifying multiple applications using application IDs (i.e., identifying “third”, fourth, fifth, etc. servers) for custom consent messages, and consent options/actions [DUDZIAK, ¶0041-0043]).
As per claim 3: DUDZIAK discloses all limitations of claim 1. Furthermore, DUDZIAK discloses: wherein the consent data is first consent data and the request data is first request data (different application servers or services may provide different consent request messages [DUDZIAK, ¶0017]; for example, custom consent messages and consent options/actions are associated via an application ID [DUDZIAK, ¶0042]), the method further comprising: receiving, at the consent-contract system, second request data that includes a request by a third server of the data center to communicate with the first server (Process 700 may include receiving application traffic for a user device (block 705) [DUDZIAK, ¶0057]), the second request data being received prior to the third server sending communications to the first server (the application (server) cannot directly communicate with the user device if consent is not given yet as determined by the consent gateway [DUDZIAK, ¶0059]); determining an absence of consent data from the first server that indicates consent by the first server to receive communications from the third server (determining if no consent exists [DUDZIAK, ¶0058; Fig. 7(710)]); determining, using the absence of consent data and the request data, that the first server did not consent to receive communications from the third server at a first instance (If, on the other hand, the application has not been previously denied for the user device (block 710--NO and block 720--NO) [DUDZIAK, ¶0061; Fig. 7(710 & 720)]); receiving, at the consent-contract system, second consent data that indicates consent by the first server to receive communications from the third server at a second instance; determining, using the second request data and second consent data, that the first server consented to receive communications from the third server; and creating a consent contract that indicates consent by the first server to receive the communications from the third server (process 700 may include requesting consent for the application from the user device (block 730). An example of requesting consent is described below with respect to process 800, shown in FIG. 8. [DUDZIAK, ¶0061]; also see the response in claim 1 corresponding to associated portions of DUZIAK to the process of Fig. 8).
As per claim 4: DUDZIAK discloses all limitations of claim 1. Furthermore, DUDZIAK discloses: further comprising storing the consent contract in a consent database managed by the consent-contract system, wherein the consent database is stored in a location associated with the data center (FIG. 5 is an example data structure 500, which may be stored by consent gateway 315, and/or by another device. Data structure 500 may store information regarding custom consent parameters, which may be used by consent gateway 315 when determining whether a particular user device 305 has granted or denied consent for a particular application or service. [DUDZIAK, ¶0041]).
As per claim 5: DUDZIAK discloses all limitations of claim 1. Furthermore, DUDZIAK discloses: further comprising: receiving, from the second server, first data indicating a set of permissions granted to the second server (identifying information is used for identifying the traffic to and/or from a particular application server [DUDZIAK, ¶0051]; the application ID of the data structure is the identifying information associated with consent options and actions [DUDZIAK, ¶0042]); and determining that the first server has provided second data indicating consent to receive network communications from devices with the set of permissions (the data structure stores consent information received from the user device that includes identifying options and actions associated with an application [DUDZIAK, ¶0045, 0068]; consent refers to whether an application is authorized (“permissions”) to send messages to the user device [DUDZIAK, ¶0028]).
As per claim 7: DUDZIAK discloses all limitations of claim 1. Furthermore, DUDZIAK discloses: further comprising: storing the consent contract in a consent database managed by the consent-contract system (FIG. 5 is an example data structure 500, which may be stored by consent gateway 315, and/or by another device. Data structure 500 may store information regarding custom consent parameters [DUDZIAK, ¶0041]); determining that a threshold period of time has elapsed from when the consent contract was created (duration of time for consent granted [DUDZIAK, ¶0073]); and removing the consent contract from the consent database based at least in part on determining that the threshold period of time has elapsed (the duration of time signifies that the consent would expire after said duration and no longer be valid, removed, or the like).
As per claim 8: Claim 8 is different in overall scope from claim 1. Claim 8 is directed to a system corresponding to the method of claim 1. Therefore, the response provided for claim 1 is also applicable to claim 8.
As per claim 9: DUDZIAK discloses all limitations of claim 8. Claim 9 is directed to a system corresponding to the method of claim 2. Therefore, the responses provided for claims 2 and 8 are also applicable to claim 9
As per claim 10: DUDZIAK discloses all limitations of claim 8. Claim 10 is directed to a system corresponding to the method of claim 3. Therefore, the responses provided for claims 3 and 8 are also applicable to claim 10
As per claim 11: DUDZIAK discloses all limitations of claim 8. Claim 11 is directed to a system corresponding to the method of claim 4. Therefore, the responses provided for claims 4 and 8 are also applicable to claim 11.
As per claim 12: DUDZIAK discloses all limitations of claim 8. Claim 12 is directed to a system corresponding to the method of claim 5. Therefore, the responses provided for claims 5 and 8 are also applicable to claim 12.
As per claim 14: DUDZIAK discloses all limitations of claim 8. Claim 14 is directed to a system corresponding to the method of claim 7. Therefore, the responses provided for claims 7 and 8 are also applicable to claim 14.
As per claim 15: Claim 15 is different in overall scope from claim 1. Claim 15 is directed to one or more non-transitory computer-readable media corresponding to the method of claim 1. Therefore, the response provided for claim 1 is also applicable to claim 15.
As per claim 16: DUDZIAK discloses all limitations of claim 15. Claim 16 is directed to one or more non-transitory computer-readable media corresponding to the method of claim 2. Therefore, the responses provided for claims 2 and 15 are also applicable to claim 16.
As per claim 17: DUDZIAK discloses all limitations of claim 15. Claim 17 is directed to one or more non-transitory computer-readable media corresponding to the method of claim 3. Therefore, the responses provided for claims 3 and 15 are also applicable to claim 17.
As per claim 18: DUDZIAK discloses all limitations of claim 15. Claim 18 is directed to one or more non-transitory computer-readable media corresponding to the method of claim 4. Therefore, the responses provided for claims 4 and 15 are also applicable to claim 18.
As per claim 19: DUDZIAK discloses all limitations of claim 15. Claim 19 is directed to one or more non-transitory computer-readable media corresponding to the method of claim 5. Therefore, the responses provided for claims 5 and 15 are also applicable to claim 19.
Claim Rejections - 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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6, 13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over DUDZIAK in view of US 10,778,721 to Holbrook et al. (hereinafter “HOLBROOK”).
As per claim 6: DUDZIAK discloses all limitations of claim 1. DUDZIAK does not explicitly disclose, but HOLBROOK discloses: wherein the consent data comprises at least one of: a first range of addresses associated with devices with which the first server has consented to communicating (an access control list includes access control entries to network characteristics and associated actions [HOLBROOK, col. 1, lines 60-65]; network characteristics include an address range for a permit rule [HOLBROOK, col. 16, lines 20-34]); a second range of addresses associated with devices with which the first server has restricted from communicating (network characteristics include an address range for a deny rule [HOLBROOK, col. 16, lines 20-34]); a first indication that that the first server consents to communicate with devices that desire to send network communications of a particular communication type; or a second indication that that the first server consents to communicate with devices that desire to establish a connection of a particular connection type (network characteristics include protocol type [HOLBROOK, col. 10, lines 33-47]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify DUDZIAK to enable the user to provide finer grained consent options/actions to the consent gateway, such as an access control list in HOLBROOK. This would have provided users with more flexibility in defining consent (authorization) parameters to the consent gateway rather than simply providing an application ID as disclosed in DUDZIAK.
As per claim 13: DUDZIAK discloses all limitations of claim 8. Claim 13 is directed to a system corresponding to the method of claim 6. Therefore, the responses provided for claims 6 and 8 are also applicable to claim 13.
As per claim 20: DUDZIAK discloses all limitations of claim 15. Claim 20 is directed to a one or more non-transitory computer-readable media corresponding to the method of claim 6. Therefore, the responses provided for claims 6 and 15 are also applicable to claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2014/0337914: A resource owner’s previous authorization and/or client classifications are used to automatically authorize a client to access the owner’s resource(s). This enables an intelligent automated consent technique. See Abstract.
US 2021/0021577: A distributed registry based on blockchain technology enables control of personal data to third parties by obtaining user consent/permission. See ¶0040
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/ROBERT B LEUNG/Primary Examiner, Art Unit 2494
1 Cited in the IDS filed 10/23/2024.