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 .
1. Claims 1,10 and 19 have been amended. Claims 1-20 have been examined.
Response to Arguments
2. Applicant’s arguments with respect to claims 1, 10 and 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on 08/10/2026 was filed after the mailing date of the Non-Final Rejection on 05/13/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
4. For claims 3 and 12, the phrase “one or more of” has been given the broadest, reasonable interpretation of only requiring a single element from the given options in order to satisfy the requirements of the limitation.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
6. 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.
Claim Rejections - 35 USC § 103
7. Claims 1-8, 10-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Milevski (U.S. Patent Application Publication 2019/0090135; hereafter “Milevski”), and further in view of Zhao (U.S. Patent Application Publication 2022/0312227; hereafter “Zhao”).
For claims 1 and 10, Milevski teaches a method and system for automatic network configuration based on biometric authentication, the system comprising:
one or more processors (note paragraph [0070], processor); and
one or more processor-readable storage media storing instructions which, when executed by the one or more processors (note paragraph [0075], memory storing instructions), cause performance of:
obtaining first biometric data from a first device (note paragraph [0095], step 504, sensors of wireless earpieces obtain biometric measurements) that is attachable to or substantially worn on a body of a user (note paragraphs [0050] and [0111], earpieces may be worn or attached with a securing mechanism);
obtaining second biometric data from a second device (note paragraphs [0057] and [0096], step 506, wireless earpieces obtain second biometric measurement derived from sensors of device 103) that is attachable to or worn on the body of the user (note paragraphs [0051] and [0118], second device may be smart device that is worn or attached, e.g. earpiece, watch, wristband, clothing, etc.);
comparing the first biometric data and the second biometric data (note paragraph [0097], step 508, first and second biometric measurements are compared);
determining that the first biometric data and the second biometric data correspond to the same user based on the comparison (note paragraphs [0012] and [0098]-[0099], if biometric measurements match, second device is authenticated as being worn by the same person);
establishing a communication link with the second device based on the determination that the first biometric data and the second biometric data correspond to the same user (note paragraph [0098], in response to authentication, device 103 is authorized to utilized the personal area network, i.e. establishing a communication link).
Milevski differs from the claimed invention in that they fail to teach:
transferring, using the communication link, user-specific configuration settings from the first device to the second device
Zhao teaches:
transferring, using the communication link, user-specific configuration settings from the first device to the second device (note paragraphs [0052]-[0053] and [0084], device settings including network settings, parental control setting and firewall setting, i.e. user-specific configuration settings, are transferred from a first device to a second device)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the biometric verification for wireless devices joining a personal area network of Milevski and the synchronization of user configuration settings between network devices of Zhao. One of ordinary skill would have been motivated to combine Milevski and Zhao because it would be more convenient for the user to have a process with less manual reconfiguration that transfers user settings to new devices that have different models or generations when upgrading or replacing a current device (note paragraphs [0003]-[0006] of Zhao).
For claim 19, the combination of Milevski and Zhao teaches a method for automatic network configuration based on biometric authentication, the method comprising:
receiving, at an intermediary device (note paragraphs [0051], [0058] and [0086], earpiece may server as a hub, i.e. intermediary device, for a personal area network; paragraph [0065], wireless device 304 may also function as a hub) first biometric data from a first device (note paragraph [0096], earpiece receives biometric measurements from more than one device) that includes one or more sensors wherein the first biometric data is derived from one or more sensor signals generated by the one or more sensors of the first device (note paragraphs [0057] and [0118], smart devices include biometric sensors);
receiving, at the intermediary device, second biometric data from a second device that includes one or more sensors (note paragraph [0096], earpiece receives biometric measurements from more than one device), wherein the second biometric data is derived from one or more sensor signals generated by the one or more sensors of the second device (note paragraphs [0057] and [0118], smart devices include biometric sensors);
comparing, by the intermediary device, the first biometric data received from the first device and the second biometric data received from the second device (note paragraph [0097], biometric measurements are compared);
determining, by the intermediary device, that the second device is attached to the body of the user based on the comparison (note paragraphs [0012] and [0098]-[0099], if biometric measurements match, second device is authenticated as being worn by the same person);
establishing, by the intermediary device, a communication link with the second device based on the determination that the second device is attached to the body of the user (note paragraph [0098], in response to authentication, device 103 is authorized to utilized the personal area network, i.e. establishing a communication link); and
transferring, using the communication link, user-specific configuration settings from the first device to the second device (note paragraphs [0052]-[0053] and [0084] of Zhao, device settings including network settings, parental control setting and firewall setting, i.e. user-specific configuration settings, are transferred from a first device to a second device).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the biometric verification for wireless devices joining a personal area network of Milevski and the synchronization of user configuration settings between network devices of Zhao. One of ordinary skill would have been motivated to combine Milevski and Zhao because it would be more convenient for the user to have a process with less manual reconfiguration that transfers user settings to new devices that have different models or generations when upgrading or replacing a current device (note paragraphs [0003]-[0006] of Zhao).
For claims 2 and 11, the combination of Milevski and Zhao teaches claims 1 and 10, wherein the first biometric data and the second biometric data are different types of biometric data (note paragraphs [0085], [0095], [0097] and [0109] of Milevski, biometric measurements may come from one or a combination of different types of biometric sensors).
For claims 3 and 12, the combination of Milevski and Zhao teaches claims 1 and 10, wherein the first biometric data and the second biometric data each comprise one or more of: movement data, skin temperature data, or glucose measurement data (note paragraphs [0083] and [0095] of Milevski, sensors may include accelerometer and gyroscope, i.e. movement data; paragraph [0108] of Milevski, sensors may include glucose levels, temperature and skin conduction;).
For claims 4 and 13, the combination of Milevski and Zhao teaches claims 1 and 10, wherein comparing the first biometric data and the second biometric data comprises comparing the second biometric data received by the first device from the second device to first biometric data stored in memory of the first device (note paragraphs [0069], [0075], [0097] and [0101]-[0102] of Milevski, first biometric data generated by earpiece may be stored as a profile in memory; first biometric data is then compared with received second biometric data).
For claims 5 and 14, the combination of Milevski and Zhao teaches claims 1 and 10, wherein the first device and the second device both compare the first biometric data and the second biometric data (note paragraph [0086] of Milevski, bilateral biometric verification may be performed by earpieces and wireless device 304).
For claims 6 and 15, the combination of Milevski and Zhao teaches claims 5 and 14, wherein the first device and the second device are each capable of establishing the communication link (note paragraphs [0064]-[0065], [0069] and [0075]-[0076] of Milevski, both earpieces and wireless device 304 are capable of establishing a wireless link), and wherein establishment of the communication link is initiated by the first device responsive to the first device comparing the first biometric data and the second biometric data before the second device (note paragraph [0098] of Milevski, in response to authentication, device 103 is authorized to utilized the personal area network, i.e. establishing a communication link).
For claims 7 and 16, the combination of Milevski and Zhao teaches claims 1 and 10, wherein the second device is a replacement device for the first device (note paragraphs [0051] and [0134] of Milevski, second device may be secondary pair of earpieces for swapping out in response to low batteries or failure; second device may be replacement socks).
For claims 8 and 17, the combination of Milevski and Zhao teaches claims and 1 and 10, wherein establishment of the communication link is via an intermediary device (note paragraphs [0051], [0068], [0095]-[0098], [0109], [0114] and [0118] of Milevski, wireless earpieces can serve as a hub, i.e. intermediate device, that receives biometric data from other devices in the personal area network, i.e. first and second devices).
8. Claims 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Milevski and Zhao as applied to claims 1 and 10 above, and further in view of Remde (U.S. Patent Application Publication 2011/0218495; hereafter “Remde”).
For claims 9 and 18, the combination of Milevski and Zhao teaches claims 1 and 10, wherein the first device and the second device each comprise [a medical device] and one or more sensors, and wherein the first device and the second device are each substantially attached to or substantially worn on the body of the user in that the insulin pump and the one or more sensors are attached to or worn on the body of the user (note paragraphs [0090] and [0118] of Milevski, devices 103 may be medical equipment or medical devices that are worn or attached to the user).
Milevski differs from the claimed invention in that they fail to teach:
wherein the first device and the second device each comprise an insulin pump
Remde teaches:
wherein the first device and the second device each comprise an insulin pump and one or more sensors (note paragraphs [0020] and [0046], insulin pump comprises sensors), and wherein the first device and the second device are each substantially attached to or substantially worn on the body of the user in that the insulin pump and the one or more sensors are attached to or worn on the body of the user (note paragraph [0058], insulin pump may be attached to the skin).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Milevski and Zhao and replacement of wireless insulin pumps of Remde. It would have been obvious because a simple substation of one known element (insulin pump of Remde) for another (medical device of Milevski) would yield the predictable results of verifying a medical device is attached to the same user using biometrics (Milevski) where the medical device is an insulin pump (Remde).
9. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Milevski and Zhao as applied to claim 19 above, and further in view of Kim et al. (U.S. Patent Application Publication 2016/0036810; hereafter “Kim”).
For claim 20, the combination of Milevski and Zhao differs from the claimed invention in that they fail to teach:
further comprising polling, by the intermediary device, the first device, wherein the first biometric data is transmitted by the first device responsive to the polling.
Kim teaches:
further comprising polling, by the intermediary device, the first device, wherein the first biometric data is transmitted by the first device responsive to the polling (note paragraphs [0073]-[0074], step 450, first device 410 searches for neighboring device, i.e. polling; step 465, second device 420 transmits biometric data in response to the polling).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the combination of Milevski and Zhao and broadcasts looking for neighboring devices of Kim. It would have been obvious because a simple substation of one known element (broadcast of Kim) for another (new device joining the network of Milevski) would yield the predictable results of verifying a device is attached to the same user using biometrics by a hub device (Milevski) where the hub device broadcasts a message and receives biometric data as a response (Kim).
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.
10. Claims 1-3, 8-12 and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,159,697. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Application
12,159,697
Claims 1 and 10 - A system for automatic network configuration based on biometric authentication, the system comprising:
one or more processors; and
one or more processor-readable storage media storing instructions which, when executed by the one or more processors, cause performance of:
obtaining first biometric data from a first device that is attachable to or worn on a body of a user;
obtaining second biometric data from a second device that is attachable to or worn on the body of the user;
comparing the first biometric data and the second biometric data;
determining that the first biometric data and the second biometric data correspond to the same user based on the comparison; and
establishing a communication link with the second device based on the determination that the first biometric data and the second biometric data correspond to the same user; and
transferring, using the communication link, user-specific configuration settings from first device to the second device.
Claims 1 and 18 - A system for automatic network configuration based on biometric authentication, the system comprising:
one or more processors; and
one or more processor-readable storage media storing instructions which, when executed by the one or more processors, cause performance of:
obtaining first biometric data from a first device that includes one or more sensors and that is entirely attached to a body of a user, wherein the first biometric data is derived from one or more sensor signals generated by the one or more sensors of the first device;
obtaining second biometric data from a second device that includes one or more sensors and that is entirely attachable to the body of the user, wherein the second biometric data is derived from one or more sensor signals generated by the one or more sensors of the second device;
comparing the first biometric data and the second biometric data;
determining that the second device is attached to the body of the user based on the comparison;
establishing a communication link with the second device based on the determination that the second device is attached to the body of the user; and instructing, by the one or more processors, to detach the first device from the body of the user.
(claim 8)
communicating user-specific configuration data to the second device via the communication link
Claims 2 and 11
Claim 3
Claims 3 and 12
Claims 14 and 16
Claims 8 and 17
Claim 10
Claims 9 and 18
Claim 17
Claims 1-20 of U.S. Patent No. 12,159,697 contain every element of claims 1-3, 8-12 and 17-18 of the instant application and as such anticipate claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
11. Claims 4-7, 13-16 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,159,697 in view of Milevski and Kim.
For claims 4-7, 13-16 and 19-20, 12,159,697 fails to teach the claimed limitations. Milevski and Kim teach these limitations as shown in the rejections above. It would have been obvious to one of ordinary skill in the art to combine the automatic network configuration based on biometric authentication of 12,159,697 and the wireless networks and biometric authentication of Milevski and Kim. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of automatic network configuration based on biometric authentication (12,159,697) where the comparison is made by an intermediary hub device (Milevski) which initiates biometric data using a polling broadcast (Kim).
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al. (U.S. Patent Application Publication 2020/0351156) discloses transferring configuration information to a new device joining a user’s network (note Fig. 2 and paragraphs [0012] and [0033]).
13. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at (571)270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/Primary Examiner, Art Unit 2407
