DETAILED ACTION
Response to Arguments
Claims 1-20 are currently pending. Claims 1-20 were amended.
Double Patenting
Applicant’s arguments on pg. 7 of the REMARKS, filed on July 9, 2026, have been fully considered and are partially persuasive. Specifically, Applicant provided the distinctions between current claim 20 and the patented claims. Therefore, the non-statutory double patenting rejection has been withdrawn for claim 20. However, claims 1-19 remain rejected under the grounds of non-statutory double patenting. See Double Patenting for details.
Claim Objections
The objection of claims 11 and 19 has been withdrawn in view of the amendments to claims 11 and 19.
Claim Rejections Under 35 U.S.C. §§ 102 and 103
Applicant’s arguments on pp. 8-9 of the REMARKS regarding the 35 U.S.C. § 102(a)(1) rejection of independent claims 1, 12, and 20 as being anticipated by POLEFKO (US 2013/0205032) has been fully considered and are persuasive. Therefore, the 35 U.S.C. 102 rejection over POLEFKO have been withdrawn. However, after further consideration and an updated search, a new ground of rejection has been issued. See Claim Rejections - 35 USC § 103 for details.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,212,969. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims recite “pre-storing” in contrast to “storing” in the conflict claims. The features for “pre-storing” in current independent claims 1 and 12 is in the same context of “storing” in independent claims 1, 13, and 19 of conflicting patent. Specifically, the conflicting patent stores the identification in a client/non-medical device “prior to delivery of a medical device”, which is subsequently used in establishing communications with the medical device (e.g., when the medical device is delivered and received). Furthermore, prior to delivery is not distinct from prior to beginning a pairing process, as recited in the current claims. A user cannot initiate a pairing process if they it is not in proximity (i.e., it has not been delivered to the user). Thus, the conflicting claims are effectively “pre-storing” the identification information before any form of pairing, or network connection establishments, is performed. The remaining limitations of the current independent claims are anticipated by the independent claims of the conflicting patent.
The features of the current dependent claims are anticipated by respective corresponding dependent claims of the conflicting patent. Although different languages are used, the overall context and scope remain indistinct. For, example, dependent claim 5 is directed to pre-storing “before shipment”, which is not distinct from the limitation of “prior to delivery” in the independent claims of the conflicting patent.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 should corrected as: “before [[a]] beginning of the pairing …”
Appropriate correction is required.
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.
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.
Claims 1, 2, 4, 6, 7, 10-13, 15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0286113 to Kirke (hereinafter, “KIRKE”) in view of US 2018/0270340 to Ahmad et al. (hereinafter, “AHMAD”).
As per claim 1: Kirke discloses: A processor-implemented method comprising: pre-storing, prior to beginning a pairing process, first identification information of a (“The list of authorized devices 504 may be stored within the memory 505.…the list of authorized devices 504 may comprise identification information of one or more additional handheld communication devices that may be "pre-authorized" to communicate with the handheld communication device 502, prior to pairing the additional devices with the handheld 502 or prior to establishing any connection or communication between the additional devices and the handheld communication device 502…” [KIRKE, ¶0038]); receiving, by the (“Handheld communication devices 506, . . . , 512 may then communicate identification information to handheld communication device 502” [KIRKE, ¶0039]); and establishing a (“The handheld communication device 502 may then match the received identification information with identification information of "pre-authorized" devices stored within the list of authorized devices 504….handheld communication device 502 may establish a connection with handheld communication devices 506, 508, and 512” [KIRKE, ¶0038]).
KIRKE does not describe the handheld communication devices as “medical” and “non-medical”. However, AHMAD discloses a portable breath analysis device (“medical”) configured to communicate wirelessly with a mobile device (“non-medical”) of a user [AHMAD, ¶0004]. The communications are encrypted (“secure”) [AHMAD, ¶0052-0053].
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the handheld devices in KIRKE as any known device type, such as a medical device and a mobile device presented in AHMAD, and to provide improved connection security by encryption. Furthermore, the handheld devices in KIRKE would have been interchangeable as medical or non-medical. Both AHMAD and KIRKE are directed to the analogous art of wirelessly linking devices. The claims do not explicitly limit how the secure communication link is established based on a device’s type, nor do the devices in KIRKE and AHMAD. As the devices in KIRKE and AHMAD are functionally capable of wireless pairing, the specific type of the device is merely an intended use. Therefore, the modification of implementing different types of devices in KIRKE would have resulted in a reasonable expectation of success.
As per claim 2: KIRKE in view of AHMAD discloses all limitations of claim 1. The motivation for incorporating AHMAD with KIRKE in claim 1 is also applicable herein. Therefore, KIRKE in view of AHMAD discloses: wherein: the non-medical device is configured to monitor and/or control the medical device (“The disclosed pairing and communication protocol may also be used to wirelessly pair a user's mobile device with other types of portable healthcare or medical devices that are used for health, medical, and/or wellness applications, such as wrist-worn activity monitors, heart rate monitors, pedometers, sleep monitoring devices, and/or the like.”[AHMAD, ¶0027]).
As per claim 4: KIRKE in view of AHMAD discloses all limitations of claim 1. The motivation for incorporating AHMAD with KIRKE in claim 1 is also applicable herein. Therefore, KIRKE in view of AHMAD discloses: wherein pre-storing the first identification information of the medical device in the non-medical device includes pre-storing, before a beginning of a paring process between the medical device and the non-medical device, the first identification information of the medical device in a non-volatile memory device of the non-medical device (“The list of authorized devices 504 may be stored within the memory 505.” [KIRKE, ¶0038]; in view of AHMAD as discussed in claim 1, the types of devices can be medical/non-medical and are inter-changeable among the handheld devices of KIRKE).
As per claim 6: KIRKE in view of AHMAD discloses all limitations of claim 1. Furthermore, KIRKE discloses: (“The list of authorized devices 504 may be stored within the memory 505.” [KIRKE, ¶0038]).
KIRKE does not explicitly discloses, but AHMAD discloses: retrieving, from a network server, the first identification information using a user account (a user logging into an account to retrieve a unique identifier, associated with a breath analysis device, from the server operating in a cloud computing environment; wherein the unique identifier is subsequently used for pairing with the breath analysis device [AHMAD, ¶0034-0035, 0040, 0116]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the list of authorized devices in KIRKE in any known manner in the art. KIRKE is not limited to a particular method of obtaining identifiers of the authorized devices, and the method in AHMAD to achieve that would have been a reasonable expectation of success. In view of AHMAD, only authenticated users would have been able to access and retrieve the list of devices authorized to establish connections in view of AHMAD.
As per claim 7: KIRKE in view of AHMAD discloses all limitations of claim 1. The motivation for incorporating AHMAD with KIRKE in claim 1 is also applicable herein. Therefore, KIRKE in view of AHMAD discloses: wherein the first identification information uniquely identifies the medical device (the list of authorized devices 504 may comprise identification information of one or more additional handheld communication devices [KIRKE, ¶0038]; in view of AHMAD as discussed in claim 1, the types of devices can be medical/non-medical and are inter-changeable among the handheld devices of KIRKE).
As per claim 10: KIRKE in view of AHMAD discloses all limitations of claim 1. KIRKE does not explicitly disclose, but AHMAD discloses: wherein receiving the second identification information of the medical device includes receiving, from the medical device, a broadcast message that includes the second identification information of the medical device (broadcasting a beacon message [AHMAD, ¶0038]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement a function for the devices in AHMAD to listen for message broadcasts. Broadcasting was well-known technique and is effective in finding devices in proximity when initiating a wireless connection process.
As per claim 11: KIRKE in view of AHMAD discloses all limitations of claim 1. KIRKE does not explicitly disclose, but AHMAD discloses: wherein establishing the secure communication link between the medical device and the non-medical device includes sending, by the non-medical device to the medical device, a connection request with or without identification information (transmitting beacon messages to solicit responses to initiate a pairing process [AHMAD, ¶0068-0069]; wherein the beacon message instructs a device to transit a peripheral identification [AHMAD, ¶0038-0040]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement a function for the devices in KIRKE to listen for beacon messages for improved connection procedures. Beacon messages would have enabled energy efficient means for device discovery without manual user input.
As per claim 12: Claim 12 is different in overall scope from claim 1 but recites substantially similar subject matter as claim 1. Claim 12 is directed to an electronic device configured to perform the method of claim 1. Thus, the response provided above for claim 1 is equally applicable to claim 12.
As per claim 13: Claim 13 incorporates all limitations of claim 12. Claim 13 is directed to an electronic device configured to perform the method of claim 4. Thus, the responses provided for claims 4 and 12 are equally applicable to claim 13.
As per claim 15: Claim 15 incorporates all limitations of claim 12. Claim 15 is directed to an electronic device configured to perform the method of claim 6. Thus, the responses provided for claims 6 and 12 are equally applicable to claim 15.
As per claim 18: Claim 18 incorporates all limitations of claim 12. Claim 18 is directed to an electronic device configured to perform the method of claim 10. Thus, the responses provided for claims 10 and 12 are equally applicable to claim 18.
As per claim 19: Claim 19 incorporates all limitations of claim 12. Claim 19 is directed to an electronic device configured to perform the method of claim 11. Thus, the responses provided for claims 11 and 12 are equally applicable to claim 19.
As per claim 20: Claim 20 is different in overall scope from claims 1 and 6 but recites substantially similar subject matter as claims 1 and 6. Claim 20 is directed to a method performing the methods of claims 1 and 6. Thus, the responses provided for claims 1 and 6 are equally applicable to claim 20.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over KIRKE in view of AHMAD and in further view of US 9,477,635 to Kuscher et al. (hereinafter, “KUSCHER”).
As per claim 3: KIRKE in view of AHMAD discloses all limitations of claim 1. KIRKE and AHMAD do not explicitly disclose, but KUSCHER discloses: wherein: the second identification information is different from the first identification information (an identifier is generated from hashing information to uniquely identify a device [KUSCHER, col. 3, lines 13-18]; a similarity function can be applied to determine if two device IDs (hashed values) are deemed to a match based on degrees of similarity (i.e., the hashed values are not identical and are “different”) [KUSCHER, col. 8, lines 29-65]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the identification information in KIRKE as hash values of information of devices to protect sensitive user information while still maintaining the uniqueness of the data (identifier). See [KUSCHER, col. 8, lines 6-18].
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over KIRKE in view of AHMAD and in further view of US 2020/0021991 to Fox et al. (hereinafter, “FOX”).
As per claim 5: KIRKE in view of AHMAD discloses all limitations of claim 1. KIRKE and AHMAD do not explicitly disclose, but FOX discloses: wherein pre-storing the first identification information of the medical device in the non-medical device includes pre-storing, before shipment of the medical device or the non-medical device, the first identification information of the medical device in the non-medical device (a whitelist of IDs is used to in part of allowing communications with a Wi-Fi device, wherein the whitelist can be included in the Wi-Fi device prior its shipment [FOX, ¶0045-0047]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the list of authorized devices in KIRKE in any known manner in the art. KIRKE does not exclude any particular method in initially establishing the list. Therefore, it would have been obvious to try the method in FOX with a reasonable expectation of success. A list of authorized devices pre-stored before shipping the handheld device(s) would have improved security by utilizing a list of officially pre-approved devices.
As per claim 14: Claim 14 incorporates all limitations of claim 12. Claim 14 is directed to an electronic device configured to perform the method of claim 5. Thus, the responses provided for claims 5 and 12 are equally applicable to claim 14.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over KIRKE in view of AHMAD and in further view of US 9,980,140 to Spencer et al. (hereinafter, “SPENCER” – cited in the IDS filed 12/30/2024)
As per claim 8: KIRKE in view of AHMAD discloses all limitations of claim 1. Furthermore, there were many well-known forms of device identifiers in computer networking. Therefore, KIRKE in view of AHMAD and SPENCER discloses: wherein the first identification information comprises: a device serial number associated with the medical device (a unique identifier in the form of a serial number [AHMAD, ¶0106, 0109]); a numeric identifier associated with the medical device (a unique identifier in the form of a serial number [AHMAD, ¶0106, 0109]); a cryptographic public signature verification key (secure pairing between devices by authentication using a public key [SPENCER, col. 10, lines 32-55]); a cryptographic private payload decryption key (a random shared secret is provided to create a symmetric key for a device [SPENCER, col. 19, lines 18-34); or a hash value of the second identification information (signing messages using the hash of a message that is encrypted with a private key that can be decrypted to determine a match for secure pairing [SPENCER, col. 10, lines 32-55).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the identification information in KIRKE in any form capable of identifying an entity. The selection of the type of identifiers used would have been based on the security requirements of the overall system. For example, a numeric identifier would have been simpler, but less secure, to implement and cryptographic keys as identifier would have been more complex, but more secure, to implement.
As per claim 16: Claim 16 incorporates all limitations of claim 12. Claim 16 is directed to an electronic device configured to perform the method of claim 8. Thus, the responses provided for claims 8 and 12 are equally applicable to claim 16.
Claims 9 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over KIRKE in view of AHMAD, SPENCER, and in further view of US 2014/0256260 to Ueda et al. (hereinafter, “UEDA” – cited in the IDS filed 12/30/2024)
As per claim 9: KIRKE in view of AHMAD discloses all limitations of claim 1. Furthermore, there were many well-known forms of device identifiers in computer networking. Therefore, KIRKE in view of AHMAD, SPENCER, and UEDA discloses: wherein the second identification information comprises: a numeric identifier associated with the medical device (a unique identifier in the form of a serial number [AHMAD, ¶0106, 0109]); a random number (initiating a pairing process using a challenge-response process that includes a random value [SPECNER, col. 22, lines 3-18]); a timestamp (creating and storing a timestamp to be compared with a timestamp received during wireless pairing [UEDA, ¶0053-0054]); or a cryptographic signature (signing messages over a hash of a message that is encrypted with a private key and verifiable through a public key [SPENCER, col. 10, lines 32-55]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to implement the identification information in KIRKE in any form capable of identifying an entity with a reasonable expectation of success. The selection of the type of identifiers used would have been based on the security requirements of the overall system. For example, a numeric identifier would have been simpler, but less secure, to implement and cryptographic keys as identifier would have been more complex, but more secure, to implement.
As per claim 17: Claim 17 incorporates all limitations of claim 12. Claim 17 is directed to an electronic device configured to perform the method of claim 9. Thus, the responses provided for claims 9 and 12 are equally applicable to claim 17.
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 ROBERT B LEUNG whose telephone number is (571)270-1453. The examiner can normally be reached Mon - Thurs: 10am-7pm ET.
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/ROBERT B LEUNG/Primary Examiner, Art Unit 2494
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