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, 8-12, 15, and 17-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 6-9, and 11-14 of U.S. Patent No. 11/394,704. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8-12, 15, and 17-20 of 18/962,359 is anticipated by Patent no. 11/394,704 claims 1, 4-5, 6-9, and 11-14. Therefore, Patent no. 11/394,704 claims 1, 4-5, 6-9, and 11-14 is in essence a “species” of the generic invention of application no. 18/962,359. It has been held that a generic invention is “anticipated” by “species” within the scope of the generic invention. See In re Goodman, 29 USPQ 2d 2010 (Fed.Cir. 1993).
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 being integrated into a practical application or significantly more.
Claims 1, 9, and 17, recites the limitations “determining a combination of inputs”, and “determining and based on the combination of inputs, that a user is in possession of secure physical entity”. The limitations as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for
recitation of generic components. That is other than a secure physical entity and a computing device, the claim element steps are practically performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract idea.
Accordingly, the claim recites "receiving, a first input of the combination of inputs and receiving a second input of the combination of inputs” are data gathering steps without significantly more. This judicial exception is not integrated into a practical application. The method of the "receiving" steps are recited at a high level of generality, as a generic computing device of receiving inputs. This generic computing device is no more than mere instructions to apply the exception using a generic component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The additional elements in the claim amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application or provide an inventive concept.
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.
Claims 1-2, 6-8, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Karam et al (2011/0070864) in view of Landrock et al. (2016/0260098).
As per claim 1, Karam discloses a method comprising:
determining, a combination of inputs (Karam: para. 0023, 0025, and 0027, plurality of input sequences from a plurality of input sensors is combined, the combination forms a multimodal input sequence);
receiving, a first input of the combination of inputs, the first input comprising an indication of a selection of a first physical structure, the first physical structure integrated with the computing device or provided as a peripheral of the computing device (Karam: para. 0023, 0025-0026, receiving by the first input (i.e. touches) includes an indication of a selection of a
first physical structure (i.e. touchscreen) integrated with the computing device (Karam: para. 0026, 0046, touchscreen integrated with the handheld device by the using the display that can detect and locate a touch on its surface);
receiving, a second input of the combination of inputs, the second input comprising an indication of proximity to a second physical structure (Karam: para. 0033-0034, receiving a second input (i.e. motion or location relative to the device) indication of proximity to a proximity sensor (i.e. second physical structure), the second physical structure integrated with the computing device or provided as a peripheral of the computing device (Karam: para. 0025-0026, 0034, 0046, second physical structure (i.e. proximity sensor) integrated with the computing device (i.e. handheld device)).
Karam does not explicitly disclose secure physical entity integrated with a computing device; determining, by the secure physical entity and based on the combination of inputs, that a user is in possession of the secure physical entity; and responsive to determining that the user is in possession of the secure physical entity, indicating, to an authenticator, that the user is in possession of the secure physical entity, the indicating effective to direct the authenticator to grant access to a resource of the computing device.
However, analogous art of Landrock discloses secure physical entity integrated with a computing device (Landrock: para. 0030-0031, 0063, See Fig. 3a, determining, by a microcontroller integrated with a separate processor of the mobile device #22, the case is integrated on the mobile device #22); determining, by the secure physical entity and based on the combination of inputs, that a user is in possession of the secure physical entity (Landrock: para. 0011-0012, 0015, and 0023, determining by the microcontroller (i.e. secure physical entity) based on user inputs, that a user is in possession of the microcontroller, the Examiner asserts that the case has a user interface where the user inputs are entered by the user, the user would have to be in possession of the case that is integrated on the mobile device in order to enter the user inputs; furthermore, the microcontroller verifies the user inputs are corrected); and responsive to determining that the user is in possession of the secure physical entity, indicating, to an authenticator, that the user is in possession of the secure physical entity, the indicating effective to direct the authenticator to grant access to a resource of the computing device (Landrock: para. 0011-0012, 0015, and 0023, the microcontroller verifies the user inputs are corrected and enabling use of a resource if the user inputs are corrected and thus not locked out).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include secure physical entity integrated with a computing device; determining, by the secure physical entity and based on the combination of inputs, that a user is in possession of the secure physical entity; and responsive to determining that the user is in possession of the secure physical entity, indicating, to an authenticator, that the user is in possession of the secure physical entity, the indicating effective to direct the authenticator to
grant access to a resource of the computing device of Landrock with the system/method of Karam. One would have been motivated to enhance the user experience of secure mobile computing (Landrock: para. 0010).
As per claim 2, Karam and Landrock disclose the method of claim 1. Karam further discloses wherein determining that the user is in possession of the secure physical entity is based on a unique combination of the first input and the second input from two or more combinations of the first input and the second input (Karam: para. 0011-0012, 0015, and 0023, determining by microcontroller (i.e. secure physical entity), based on user inputs, that a user is in possession of the microcontroller, the Examiner asserts that the case has a user interface where the user inputs are entered by the user, the user would have to be in possession of the case).
As per claim 6, Karam and Landrock disclose the method of claim 1.
Landrock further discloses wherein the secure physical entity is a silicon chip integral with an integrated circuit, motherboard, or other hardware of the computing device (Landrock: only one needs to be disclosed with “or”; however, discloses the secure physical entity (i.e. microcontroller) includes a silicon chip integral with an integrated circuit (i.e. DSP chip, FPGA, ASIC), and other hardware of the computing device (i.e. microprocessor)).
Same motivation as claim 1 above.
As per claim 7, Karam and Landrock disclose the method of claim 1.
The combination of Karam and Landrock further discloses further comprising:
determining, by the secure physical entity, that the combination of inputs (Landrock: para. 0015, user inputs which includes more than one input; therefore, the Examiner asserts is a combination of inputs, the microcontroller determines which is the secure physical entity), .
match one of two or more unique input combinations stored in the secure physical entity (Landrock: para. 0025-0026, and 0038, combination of inputs match one of the multiple unique input combinations (i.e. stores five input sequences)).
Same motivation as claim 1 above.
As per claim 8, Karam and Landrock disclose the method of claim 1.
Karam further discloses wherein receiving the second input comprising the indication of the proximity to the second physical structure includes detecting motion by a proximity sensor (Karam: para. 0025-0026, and 0033-0034, proximity to a second physical structure (i.e. proximity sensor), detecting motion (i.e. location relative to the user)).
As per claim 17, rejected under similar basis as claim 1 above.
As per claim 18, Karam, and Landrock disclose the one or more non-transitory computer storage media of claim 17. Karam further discloses wherein receiving the second input comprises receiving the second input simultaneously with receiving the first input (Karam: para. 0023, 0025, allow a user to provide simultaneous input through a plurality of input sensors (i.e. first and second input)).
As claim 19, Karam and Landrock disclose the one or more non-transitory computer storage media of claim 17, wherein the first physical structure includes a contact with a touch sensor (Karam: para. 0026, 0034, first physical structure (i.e. touchscreen) includes a contact (i.e. user touching screen) with a touch screen).
As per claim 20, Karam and Landrock disclose the one or more non-transitory computer storage media of claim 17. Karam further discloses wherein receiving the second input comprising the indication of a proximity to a second physical structure includes detecting motion by a proximity sensor (Karam: para. 0025-0026, 0033-0034, proximity to a second physical structure (i.e. proximity sensor), detecting motion (i.e. location relative to the user)).
Claims 3-5, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Karam et al (2011/0070864) in view of Landrock et al. (2016/0260098), and further in view of Masters (2019/0251765).
As per claim 3, Karam and Landrock disclose the method of claim 2.
Karam and Landrock do not explicitly disclose; however, analogous art of Masters discloses wherein granting the user, by the authenticator, access to the resource of the computing
device (Masters: See Fig. 3 #310) further comprises granting a first right to the resource of the computing device based on the first unique combination (Masters: para. 0028-0029, 0037).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include granting the user, by the authenticator, access to the resource of the computing device granting a first right to the resource of the computing device based on the first unique combination of Masters with the system/method of Karam and Landrock, the motivation is that it is a security measure that ensures user has access rights to physically access the access controlled area (Masters: para. 0029).
As per claim 4, Karam, Landrock, and Masters disclose the method of claim 3. Masters further discloses wherein granting the user, by the authenticator, access to the resource of the computing device (Masters: See Fig. 3 #310) further comprises granting a second right to the resource of the computing device based on the second unique combination, the second right differing from the first right (Masters: See Fig. 3 #316, para. 0028-0029, 0037).
Same motivation as claim 3 above.
As per claim 5, Karam and Landrock disclose the method of claim 2. Karam and Landrock do not explicitly disclose; however, Masters discloses wherein the first unique combination corresponds to a first user and the second unique combination corresponds to a second user (Masters: See Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the first unique combination corresponds to a first user and the second unique combination corresponds to a second user of Masters with the system/method of Karam and Landrock, the motivation is that security is increased by having more than one user that can input unique combinations (i.e. credentials) (Masters: para. 0059).
As per claim 9, rejected under similar scope as claim 1. Claim 9 further discloses,
determining, based on combination of inputs, that a specific user, between at least a first user and second user (Masters: para. 0028-0029, and 0037).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include determining, based on combination of inputs, that a specific user, between at least a first user and second user of Masters with the system/method of Karam and Landrock, the motivation is that security is increased by having more than one user that can input unique combinations (i.e. credentials) (Masters: para. 0059).
As per claim 10, Karam, Landrock, and Masters disclose the system of claim 9. Karam further discloses wherein receiving the second input comprises receiving the second input simultaneously with receiving the first input (Karam: para. 0023, 0025, allow a user to provide simultaneous input through a plurality of input sensors (i.e. first and second input)).
As per claim 11, Karam, Landrock, and Masters disclose the system of claim 9.
Karam further discloses wherein the first physical structure includes a contact with a touch sensor (Karam: para. 0026, 0034, first physical structure (i.e. touchscreen) includes a contact (i.e. user touching screen) with a touch screen).
As per claim 12, Karam, Landrock, and Masters disclose the system of claim 9. Karam further discloses wherein receiving the second input comprising the indication of a proximity to a second physical structure includes detecting motion by a proximity sensor (Karam: para. 0025-0026, 0033-0034, proximity to a second physical structure (i.e. proximity sensor), detecting motion (i.e. location relative to the user)).
As per claim 13, Karam, Landrock, and Masters disclose the system of claim 9.
Landrock further discloses wherein the operations further comprise responsive to determining, by the secure physical entity, possession of the secure physical entity, enabling use of a resource of the computing device (Landrock: para. 0011-0012, 0015, and 0023, determining by the microcontroller (i.e. secure physical entity) based on user inputs, that a user is in possession of the microcontroller, the Examiner asserts that the case has a user interface where the user inputs are entered by the user, the user would have to be in possession of the case that is integrated on the mobile device in order to enter the user inputs; furthermore, the microcontroller verifies the user inputs are corrected).
Same motivation as claim 9 above.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Karam et al (2011/0070864) in view of Landrock et al. (2016/0260098), and in view of Masters (2019/0251765), and further in view of Zhou (2017/0085688).
As per claim 14, Karam, Landrock, and Masters disclose the system of claim 9.
Karam, Landrock, and Masters do not explicitly disclose; however, analogous art of Zhou discloses wherein the secure physical entity comprises a silicon chip integral with an integrated circuit, motherboard, or other hardware of the computing device (Zhou: para. 0007, 0083, 0077, silicon chip integral with a motherboard (i.e. PCB printed circuit board)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the secure physical entity is a silicon chip integral with an integrated circuit, motherboard, or other hardware of the computing device of Zhou with Karam, Landrock, and Masters, the motivation is that this is an efficient method that has a silicon chip that can be mounted on a flexible PCB to form a flexible computing system (Zhou: para. 0083).
As per claim 15, Karam, Landrock, and Masters disclose the system of claim 9. Landrock further disclose wherein the operations further comprise: determining, by the secure physical entity , whether the combination of inputs match one of multiple unique input combinations stored in the secure physical entity (Landrock: para. 0011-0012, 0015, and 0023).
Same motivation as claim 9.
As per claim 16, Karam, Landrock, and Masters disclose the system of claim 15.
Karam further discloses wherein the operations further comprise: responsive to the combination of inputs not matching one of the multiple unique input combinations, denying access to a resource of the computing device (Karam: para. 0031, and 0038-0039, combination of inputs not matching one of the multiple unique input combinations, denying access to the resource of the computing device (i.e. handheld device)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENISE E JACKSON whose telephone number is (571)272-3791. The examiner can normally be reached M-F 7:00am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip J Chea can be reached at (571) 272-3951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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2/25/2026
/J.E.J/Examiner, Art Unit 2499
/PHILIP J CHEA/Supervisory Patent Examiner, Art Unit 2499