DETAILED ACTION
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,431,485. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the ‘485 patent.
The instant claims are the same except for removing the steps of loading the public key and storing information on the device. Therefore, the claims are anticipated by the ‘485 reference.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,132,828. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the ‘828 patent.
The instant claims are the same except for removing “at least one of a server authentication key, a client authentication key, and a server encryption key” from the key expansion. Therefore, the claims are anticipated by the ‘828 reference.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims only recite a first computing device, a second computing device, and a server computing device comprising a processor. Each of the devices and the processor can be interpreted as software only. The examiner suggests that the server computing device add language that includes a memory as part of the device.
Allowable Subject Matter
Claims 1-20 would be allowable if a terminal disclaimer is filed to overcome the double patenting rejection of record, as well as amendments to overcome the 101 rejection of record for claims 1-10.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is:
Ho (US 2010/0100740) which teaches: generating a shared symmetric master key for the secure communication link using the public key, the private key and a random number - see claim 46, for example.
Herwono et al. (US 2009/0287922) which teaches: MK (Master Key--K_C or K_WS in FIG. 2) is fed into a PRNG (Pseudo Random Number Generator) to produce Transient EAP Keys (TEKs) for protecting EAP-SIM packets, MSK (Master Session Key) for link layer security and EMSK (Extended Master Session Key). EAP-SIM requires two TEKs for its own purposes, the authentication key K_aut to be used with the AT_MAC attribute, and the encryption key K_encr, to be used with the AT_ENCR_DATA attribute - see [0045].
Brown et al. (US 2005/0251680) which teaches: A master key for encrypting messages is calculated based upon a first private key, a second private key, the third public key and the fourth public key. For re-keying, a new second key pair having a new second public key and a new second private key is generated, and a new fourth public key is received. A new master key is calculated using elliptic curve calculations using the new second private key and the new fourth public key - see abstract. Also see [0023], [0032], [0033], [0036], [0037], and [0041].
Campagna (US 2003/0084279) which teaches: The Pre-Master-Secret is combined at the client 1 with the client and server random values to generate a key block, which is then divided into the appropriate keys needed to satisfy the negotiated ciphersuite. Thus, for example, the keys that are generated may include DES read and write keys as well as hash algorithm read and write keys. However, the ultimate number of keys obtained will depend on the negotiated ciphersuite - see [0013]. The server 5 decrypts the received encrypted Pre-Master-Secret using the server's private key that is associated with the server's public key. The server 5 generates the key block and determines the keys needed to satisfy the negotiated ciphersuite in the same manner as the client 1. The server 5 checks the integrity of the data received from the client 1 by comparing its own generated hash to the hash received from the client 1. Once the integrity check is completed, the SSL server 5 sends a finished message (such as a hash of the combination of all server messages sent to the client 1 and the Master Secret) and a change cipherspec message to the client 1. The client 1 checks the integrity of the finished message received from the server 5 using the derived keys and the negotiated ciphersuite. If the integrity check is successful, the SSL handshake protocol has been successfully completed - see [0015].
However, the cited references do not teach or suggest the invention as instantly claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA C LEWIS whose telephone number is (571)270-7724. The examiner can normally be reached Monday - Thursday 7am-2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LISA C LEWIS/Primary Examiner, Art Unit 2495
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