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 .
Response to Arguments
Applicant’s amendments have overcome the 101 rejection of record.
Applicant’s amendments overcome the statutory double patenting rejection of claim 28.
The Examiner acknowledges Applicant’s request that the non-statutory double patenting rejection be held in abeyance.
Applicant’s arguments regarding the 103 rejection are deemed moot in view of the new grounds of rejection presented below.
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 21-40 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 § 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), with evidence provided by Masterman (10,108,971).
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, wherein the one or more actions comprise accessing a storage device (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. Hardy also does not teach transmitting a third authentication credential, the third authentication credential associated with a user’s biometric information.
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. Osborne also teaches using two-factor authentication including biometric information – see page 38 paragraph 2 again.
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 an entry card into a communication field (such as a contactless card) or biometric information, 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.
Although Osborn teaches multiple types of authentication, including credentials, contactless card, and biometrics, as well as two factor authentication, Osborn does not explicitly teach using all three of these together for authentication. One of ordinary skill in the art would understand that three factor authentication is even more secure than two factor authentication, as it would enhance security.
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 using three authentication inputs, including an entry card into a communication field (such as a contactless card) and biometric information, in order to create an even additional layer of security, based upon the beneficial teachings provided by Osborn. These modifications would result in increased security to the system.
Further, evidence is provided by Masterman (US 10,108,791) to demonstrate that three factor authentication was well known in the art before the effective filing date of the claimed invention, for the purpose of enhanced security. Lawrence teaches: The action may include requiring authentication with certain predetermined characteristics with respect to complexity, strength, frequency, scope (e.g., amount and/or type of data objects protected by the authentication), and the like. For instance, if the confidence level is high, then no authentication may be required. Alternatively, a relatively weak method of authentication (e.g., a simple username/password authentication form) may be required. When the confidence level is high, authentication may be requested at a relatively low frequency (or the expiration time for re-authentication may be extended). Additionally, the scope of the authentication may be reduced such that authentication is only required for a smaller set of data or applications (e.g., the more sensitive portions). On the other hand, if the confidence level is low, then a relatively stronger or more secure form of authentication may be required (e.g., three-factor authentication) – see column 2 lines 19-35.
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 access the 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) with evidence provided by Masterman (10,108,971), 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
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.
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 at 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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