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 arguments filed 07/24/2026 have been fully considered but they are not persuasive. With respect to claim 1, the limitation requires applying or removing inter-domain security policy to one or more portion of the content of a message according to a protection policy. Contrary to applicant’s argument and giving a broad reasonable interpretation to the limitation, a message by itself includes one portion of the message. The limitation does not explicitly recite or restrict the requirement to multiple parts of a message. The applied reference teaches (Para 47) applying security policy to media or content in a communication. Examiner interprets the policy applied to the media as being applied to a portion of a communication, which directly anticipates the claimed subject matter. With respect to claim 2 and claim 3, by extension, http as a transport protocol is used in transmitting the data. Fridman teaches (Para 49) the communication being http-based, which anticipates the claimed limitations.
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 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. US-11,729,609. Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims are directed to applying inter-domain security protection to, or removing inter-domain security protection from, one or more portions of the content of a field in the message according to a protection policy that includes information indicating to which one or more portions of the content inter-domain security protection is to be applied or removed..
Claim Rejections - 35 USC § 102
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.
Claims 1-20 are rejected under 35 U.S.C. 102a[a][1] as being anticipated by Fridman et al. (US-20080133729).
a. Referring to claims 1, 10, and 20:
Regarding claims 1, 10 and 20, Fridman teaches a method performed by network equipment in one of multiple different core network domains of a wireless communication system, the method comprising: receiving a message that has been, or is to be, transmitted between the different core network domains (Para 43…. message transmission); applying inter-domain security protection to, or removing inter-domain security protection from, one or more portions of the content of a field in the message according to a protection policy that includes information indicating to which one or more portions of the content inter-domain security protection is to be applied or removed (Para 37, 43 and 47…. applying inter-domain security according to a protection policy to media/content of a communication); and forwarding the message, with inter-domain security protection applied or removed to the one or more portions, towards a destination of the message (Para 44 and 47…. domain policy enforcement to apply the policy)
a. Referring to claims 2, 11 and 17:
Regarding claims 2, 11 and 17, Fridman teaches the method of claim 1, wherein the message is a Hypertext Transfer Protocol (HTTP) message and the field is an HTTP field (Para 49 and 39…. HTTP communication).
a. Referring to claims 3 and 18:
Regarding claims 3 and 18, Fridman teaches the method of claim 2, wherein the HTTP message is an HTTP request message and the field is a path field, and wherein the content of the path field is a request Uniform Resource Identifier, URI (See the rejection in claims 1 and 2 and in Para 39…. web-based request comprising URI).
a. Referring to claims 4 and 14:
Regarding claims 4 and 14, Fridman teaches the method of claim 1, wherein the information includes one or more regular expressions that indicate the one or more portions (Para 49 and 39…. information format).
a. Referring to claims 5 and 15:
Regarding claims 5 and 15, Fridman teaches the method of claim 1, wherein the information includes one or more JavaScript Object Notation, JSON, Pointers, that indicate the one or more portions (Para 49…. information format).
a. Referring to claims 6 and 16:
Regarding claims 6 and 16, Fridman teaches the method of claim 1, wherein the protection policy further indicates, for each of the one or more portions, a type of inter-domain security protection to be applied or removed, and wherein, for each of the one or more portions, the type of inter-domain security protection to be applied or removed comprises confidentiality protection and/or integrity protection (Para 37…. protection to be applied includes privacy, security, etc.).
a. Referring to claims 7 and 19:
Regarding claims 7 and 19, Fridman teaches the method of claim 1, wherein the protection policy is included in the message (Para 43…. message including policy).
a. Referring to claims 8 and 12:
Regarding claims 8 and 12, Fridman teaches the method of claim 1, further comprising, responsive to receiving the message, transmitting a discovery request to a network repository function, NRF, requesting discovery of the protection policy for protecting the message, and receiving the protection policy in response to the discovery request (Para 43…. policy mediation module for discovering the protection policy to be enforced/applied).
a. Referring to claims 9 and 13:
Regarding claims 9 and 13, Fridman teaches the method of claim 1, further comprising receiving the protection policy from network equipment in a path that the message takes from a source of the message to the destination of the message (Para 43…. domain policy mediation module).
Allowable Subject Matter
Claims 21-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 21 and 23 recite the limitation of the protection policy indicating how to parse the content of the field, to identify the one or more portions to which the inter-domain security protection is to be applied or from which the inter- domain security protection is to be removed.
Conclusion
THIS ACTION IS MADE FINAL. 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 IZUNNA OKEKE whose telephone number is (571)270-3854. The examiner can normally be reached Mon - Fri 8 - 4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ELENI SHIFERAW can be reached at (571) 272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IZUNNA OKEKE/Primary Examiner, Art Unit 2497
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