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 .
1. This is in response to communication filed on 6/30/26 in which claims 21-40 are pending.
Response to Arguments
2. Applicant's arguments filed 6/30/26 have been fully considered but they are not persuasive. Applicant’s representative argues that Schmidt et al fails to teach wherein “the identify agent communicates the first device information to the authentication service prior to receiving the unique identifier from the authentication service”. However, Schmidt et al clearly teaches wherein In the local user authentication at 328, local OP may send an OP authentication page to the user/browser 302 and/or the user/browser 302 may send authentication information (e.g., authentication credentials) to the local OP 304. At 330, local OP 304 may verify the authentication information (e.g., authentication credentials). Local OP 304 may also calculate signature key S (e.g., Kasc) at 332 (See paragraph [0058-0062]).
Double Patenting
3. 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.
4. Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,166898. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim the same device, method and one or more computer readable non-transitory storage media of using signed device information to authenticated a user.
U.S. Patent No. 12,166,898
U.S. Application No. 18/954775
1. A device comprising one or more processors and one or more computer-readable non-transitory storage media coupled to the one or more processors and including instructions that, when executed by the one or more processors, cause the device to perform operations comprising:
establishing, by an identity agent installed on a device, a connection to a browser installed on the device; generating, by the identity agent, first device information, a public key, and a private key; communicating, by the identity agent, the first device information and the public key to an authentication service;
receiving, by the identity agent, a unique identifier from the authentication service; generating, by the identity agent, a first signature of the first device information; and communicating, by the identity agent, the first signature, the first device information, and the unique identifier to the browser.
21. A device comprising one or more processors and one or more computer- readable non-transitory storage media coupled to the one or more processors and including instructions that, when executed by the one or more processors, cause the device to perform operations comprising:
establishing, by an identity agent installed on the device, a connection to a browser installed on the
device; generating, by the identity agent, first device information;
communicating, by the identity agent, the first device information to an authentication service;
receiving, by the identity agent, a unique identifier from the authentication service; generating, by the
identity agent, a first signature of the first device information; and communicating, by the identity agent, the first signature to the browser, the identify agent communicates the first device information to the authentication service prior to receiving the unique identifier from the authentication service
25. (New) The device of Claim 21, the operations further comprising: generating, by the identity agent, a public key and a private key; and generating, by the identity agent, the first signature of the first device information by signing the first device information with the private key.
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of the public key and the private key of claim 25 of the present application to obtain the recitation of claim 1 of the U.S. Patent 12,166898.
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 21-22, 28-29 and 35-36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication No. 2012/0254959 to Schmidt et al.
a. As per claim 21, Schmidt et al teaches a device comprising one or more processors and one or more computer- readable non-transitory storage media coupled to the one or more processors and including instructions that, when executed by the one or more processors (See paragraph [0198]), cause the device to perform operations comprising:
establishing, by an identity agent installed on the device (See paragraph [0037], Local OP may be to facilitate authentication of the user and/or the device through assertion(s) about the identity of the user and/or the device, a connection to a browser installed on the device (See paragraph [0037 and 0040]); generating, by the identity agent, first device information (See paragraph [0038], The identity assertion messages may assert the state of verification of one or more identifiers relating to a user and/or a device); communicating, by the identity agent, the first device information to an authentication service (See paragraph [0056]); receiving, by the identity agent, a unique identifier from the authentication service (See paragraph [0060-0061], 308 may generate a random, unique association handle A and/or calculate a signature key S (e.g., Kasc) at 316]); generating, by the identity agent, a first signature of the first device information (See paragraph [0040], the local OP 304 to calculate a signature at 334); and communicating, by the identity agent, the first signature to the browser (See paragraph [0061], local OP 304 may send a redirect message to user/browser 302. The redirect message may include association handle A and/or parameters signed using the signature calculated at 334), wherein the identify agent communicates the first device information to the authentication service prior to receiving the unique identifier from the authentication service (See paragraph [0058-0062], In the local user authentication at 328, local OP may send an OP authentication page to the user/browser 302 and/or the user/browser 302 may send authentication information (e.g., authentication credentials) to the local OP 304. At 330, local OP 304 may verify the authentication information (e.g., authentication credentials). Local OP 304 may also calculate signature key S (e.g., Kasc) at 332)).
b. As per claim 28, Schmidt et al teaches a method, comprising: establishing, by an identity agent installed on a device (See paragraph [0037], ], Local OP may be to facilitate authentication of the user and/or the device through assertion(s) about the identity of the user and/or the device), a connection to a browser installed on the device (See paragraph [0037 and 0040]); generating, by the identity agent, first device information (See paragraph [0038], A local OP may process, create, manage, and/or send identity assertion messages to one or more external recipients. The identity assertion messages may assert the state of verification of one or more identifiers relating to a user and/or a device); communicating, by the identity agent, the first device information to an authentication service (See paragraph[0056]); receiving, by the identity agent, a unique identifier from the authentication service (See paragraph [0060-0061])A local OP may process, create, manage, and/or send identity assertion messages to one or more external recipients. The identity assertion messages may assert the state of verification of one or more identifiers relating to a user and/or a device); generating, by the identity agent, a first signature of the first device information (See paragraph [0040], the local OP 304 to calculate a signature at 334); and communicating, by the identity agent, the first signature to the browser (See paragraph [0061], local OP 304 may send a redirect message to user/browser 302. The redirect message may include association handle A and/or parameters signed using the signature calculated at 334), wherein the identify agent communicates the first device information to the authentication service prior to receiving the unique identifier from the authentication service (See paragraph [0058-0062], In the local user authentication at 328, local OP may send an OP authentication page to the user/browser 302 and/or the user/browser 302 may send authentication information (e.g., authentication credentials) to the local OP 304. At 330, local OP 304 may verify the authentication information (e.g., authentication credentials). Local OP 304 may also calculate signature key S (e.g., Kasc) at 332)).
c. As per claim 35, Schmidt et al teaches one or more computer-readable non-transitory storage media embodying instructions that, when executed by a processor, cause the processor to perform operations comprising: establishing, by an identity agent installed on a device Local OP may be to facilitate authentication of the user and/or the device through assertion(s) about the identity of the user and/or the device), a connection to a browser installed on the device (See paragraph [0037 and 0040]); generating, by the identity agent, first device information (See paragraph [0038], A local OP may process, create, manage, and/or send identity assertion messages to one or more external recipients. The identity assertion messages may assert the state of verification of one or more identifiers relating to a user and/or a device); communicating, by the identity agent, the first device information to an authentication service (See paragraph [0056]); receiving, by the identity agent, a unique identifier from the authentication service See paragraph [0060-0061])A local OP may process, create, manage, and/or send identity assertion messages to one or more external recipients. The identity assertion messages may assert the state of verification of one or more identifiers relating to a user and/or a device); generating, by the identity agent, a first signature of the first device information (See paragraph [0040], the local OP 304 to calculate a signature at 334); and communicating, by the identity agent, the first signature to the browser (See paragraph [0061], local OP 304 may send a redirect message to user/browser 302. The redirect message may include association handle A and/or parameters signed using the signature calculated at 334).
d. As per claims 22, 29 and 36, Schmidt et al teaches the claimed invention as described above. Furthermore, Schmidt et al teaches receiving, by the identity agent, a request for second device information from the browser; generating, by the identity agent, the second device information; generating, by the identity agent, a second signature of the second device information; and communicating, by the identity agent, the second signature to the browser; wherein the second device information is the same as or different than the first device information (See paragraph [0185-0186] and figure 19A, Each of the WTRUs 1902a, 1902b, 1902c, 1902d may be any type of device configured to operate and/or communicate in a wireless environment. By way of example, the WTRUs 1902a, 1902b, 1902c, 1902d may be configured to transmit and/or receive wireless signals and may include user equipment (UE), a mobile station, a fixed or mobile subscriber unit, a pager, a cellular telephone, a personal digital assistant (PDA), a smartphone, a laptop, a netbook, a personal computer, a wireless sensor, consumer electronics, and the like.).
Claim Rejections - 35 USC § 103
7. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
8. Claims 23, 30 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2012/0254959 to Schmidt et al in view of U.S. Publication No. 2015/0244711 to Venkataraman et al.
a. As per claims 23, 30 and 37, Schmidt teaches the claimed invention as described above. However, Schmidt fails to teach wherein the first device information comprises one or more of the following: an International Mobile Equipment Identity (IMEI) number of the device; a latest version of the identity agent installed on the device; a latest version of the browser installed on the device; a latest version of an operating system (OS) installed on the device; and an identification of firewalls installed on the device.
Venkataraman et al teaches wherein the first device information comprises one or more of the following: an International Mobile Equipment Identity (IMEI) number of the device; a latest version of the identity agent installed on the device; a latest version of the browser installed on the device; a latest version of an operating system (OS) installed on the device; and an identification of firewalls installed on the device (See paragraph [0106], The certificate may comprise metadata that uniquely identifies the client electronic device 310b (e.g., an International Mobile Station Equipment Identity (IMEI)).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Venkataraman et al teaches in order to uniquely identify the client electronic device.
9. Claims 24, 31 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2012/0254959 to Schmidt et al in view of U.S. Publication No. 2018/0198616 to Feather et al.
a. As per claims 24, 31 and 38, Schmidt teaches the claimed invention as described above. However, Schmidt fails to teach wherein: the unique identifier is a globally unique identifier (GUID); and the unique identifier uniquely identifies the identity agent.
Feather et al teaches wherein: the unique identifier is a globally unique identifier (GUID); and the unique identifier uniquely identifies the identity agent (See paragraph [0023], an agent identifier to the host 150 or the host agent 152, and may transmit the agent identifier to the host 150. In some implementations, once the agent identifier has been assigned to the host 150, the agent identifier may not be reassigned to a different host or a different configuration of the same host 150).
It would have been obvious to one with ordinary skill in the art to incorporate the teaching of Feather et al in the claimed invention of Schmidt in order to uniquely and globally identify the agent to the host and the system.
Allowable Subject Matter
10. Claims 25-27, 32-34, 39-40 would be allowable if a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) is used to overcome the actual rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the if rewritten to overcome the rejection under the double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
11. 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.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DJENANE BAYARD whose telephone number is (571)272-3878. The examiner can normally be reached 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Follansbee can be reached at (571)272-3964. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DJENANE M BAYARD/Primary Examiner, Art Unit 2444
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