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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 28 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 20 of prior U.S. Patent No. 12,166,750. Claim 28 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 20 of prior U.S. Patent No. 12,166,750. This is a statutory double patenting rejection.
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 21-27 and 29-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,166,750. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are encompassed/anticipated by the claims of the ‘750 patent. The instant claims do not have the features of receiving the authentication requests, but are otherwise entirely anticipated by the claims of the ‘750 patent.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (performed by hand) without significantly more. The claims recite transmitting credentials (which could be hand delivered), receiving a code, and performing an action. This judicial exception is not integrated into a practical application because there are no details as to what action is performed. The dependent claims recite that the actions could include locking or unlocking a safe, cabinet, etc., which could also be performed by hand. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the use of a processor, computer readable medium, etc. are all well-known and used regularly in the computer science field.
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 21-24, 28, 31-35, 37, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Hardy et al. (US 2020/0213446) in view of Osborn et al. (KR 20210069055).
Regarding claims 21, 32, and 38, Hardy teaches a method (and corresponding medium and system) comprising:
Transmitting, by a processor, authentication credentials (Remote server successfully verifies user credentials – see [0026]. Credentials can be username and password input into kiosk – see [0084].
Receiving, by the processor, a code (displaying a corresponding unlock code on a display device responsive to the remote server successfully verifying the user credentials – see [0026]).
Performing, by the processor, one or more access actions based on the code (receiving the unlock code at the digital keypad of the locker – see [0026] and unlock locker responsive to successful verification and to dispense or accept an item – see figure 1B).
Hardy further teaches that an ID card of the employee can be used as a secondary form of identification – see [0084]. However, Hardy does not explicitly teach transmitting a second authentication credential associated with an entry of a card into a communication field.
Osborn teaches using two-factor authentication, including providing access credentials such as a password (i.e., login credentials) and bringing a contactless card into a communication field – see page 38 paragraph 2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Hardy by using two authentication inputs, including a entry card into a communication field (such as a contactless card) in order to create an additional layer of security, based upon the beneficial teachings provided by Osborn. These modifications would result in increased security to the system.
Regarding claim 24, Hardy teaches that the one or more access actions includes transmitting a notification of a package pickup (the first status indicates that the device has been dispensed – see [0021]).
Regarding claim 31, Hardy teaches that the one or more access actions are associated with a type of transaction, the type of transaction comprises a non-cash transaction (locker which uses drop off/pickup for an item – see [0022]).
Regarding claim 33, Hardy teaches that the processor and memory are implemented in a storage device (Kiosk at locker – see [0084]).
Regarding claims 22, 23, and 34, Hardy teaches that the one or more actions/storage device comprises opening package locker (which can be interpreted as a safe or cabinet) – see [0016].
Regarding claim 35, Hardy teaches that the processor and memory are in data communication with a storage device (Kiosk at locker – see [0084]).
Regarding claim 37, Hardy teaches that the processor is configured to perform the one or more access actions for a predetermined type of transaction (transaction = locker pickup to pickup/drop off item – see [0022]).
Regarding claim 28, although Hardy does not explicitly teach receiving an authentication request, wherein the first authentication credential is transmitted in response to the first authentication request, Hardy does teach that the credentials are entered using the kiosk in order to dispense the item (see [0051] - [0055] and that the kiosk sends the credentials to the remote server for verification). Therefore, it is intrinsic that an authentication request would be received, in order for the user to have the ability to enter their credentials. In addition, Hardy further teaches that an ID card of the employee can be used as a secondary form of identification – see [0084], and Osborn teaches using two-factor authentication, including providing access credentials such as a password (i.e., login credentials) and bringing a contactless card into a communication field – see page 38 paragraph 2.
Therefore, the combination of Hardy and Osborn suggests transmitting both of the credentials in response to receiving the authentication requests.
Claims 25-27, 29, 30, 36, 39, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Hardy et al. (US 2020/0213446) in view of Osborn et al. (KR 20210069055), and further in view of Boire-Lavigne et al. (US 2017/0091474).
The teachings of Hardy and Osborn are relied upon for the reasons set forth above.
Regarding claims 25-27, 29, 30, 36, 39, and 40, Hardy and Osborn do not teach that the one or more actions are performed for a predetermined time period, after an expiration of the predetermined time period, requiring a further authentication prior to performing the one or more access actions, when the one or more actions are completed prior to an expiration of the predetermined time period, requiring a further authentication to end performance of the one or more actions, receiving a second code if the first code is not received and inputted within the predetermined time period, attempting transmission of the first and second authentication credentials up to a predetermined threshold number, and delaying the performance of the actions when the attempted transmission of the first and second authentication credentials exceeds the predetermined threshold number.
Boire-Lavigne teaches: As a yet further measure against malicious users, the network device 120 may allow the recipient a threshold period of time and/or number of authentication attempts to respond with the correct authentication code. In such embodiments, the network device 120 may send the data 140 to the recipient in response to receiving the correct authentication code within the threshold period of time and/or number of authentication attempts and/or refrain from sending the data 140 to the recipient otherwise – see [0035].
Accordingly, the result-effective adjustment of this and other particular types of conventional working conditions (e.g., requiring re-authentication, thresholds for authentication attempts, expiration of authentication, etc.) is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. All of these details regarding the expiration, reauthentication, threshold attempts etc. have the same goal of protecting against malicious users.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Hardy and Osborn by limiting authentication attempts, reauthentication after threshold, expiring authentication, etc. in order to protect against malicious users based upon the beneficial teachings provided by Boire-Lavigne ([0025]).These modifications would result in increased security to the system.
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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/LISA C LEWIS/Primary Examiner, Art Unit 2495