DETAILED CORRESPONDENCE
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 .
Acknowledgments
This Action is in response to the patent application filed on December 13, 2024. Claims 1-20 are currently pending and have been fully examined.
The examiner notes that the present claims are rejected under Non-statutory double patenting and would be allowable upon filing a Terminal Disclaimer by Applicant.
Non-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 §§ 706.02(l)(1) - 706.02(l)(3) 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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 4-6, and 8-9, 11-12, 14, and 16-18, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,207,322 in view of US 9,736,541 B1 (“Nijim”.)
Although the claims at issue are not identical, they are not patentably distinct from each other.
With respect to claims 1, 8 and 14, of the present application, claim 1 of U.S. Patent No. 12,207,322 discloses:
a system comprising:
a wireless communication device; and
an interactive electronic device,
wherein the wireless communication device comprises:
a wireless communication circuitry;
a memory configured to store computer-readable instructions; and
a first processor configured to execute computer-readable instructions to:
access identifiers associated with the wireless communication device, and
transmit a message including the identifiers via the wireless communication circuitry,
wherein the interactive electronic device comprises a second processor configured to execute one or more computer-readable instructions stored in a second memory of the interactive electronic device to:
receive the message with the identifiers;
provide the identifiers from the message to a pairing server; and
receive pairing information from the pairing server,
wherein the interactive electronic device and the wireless communication device establish an encrypted connection based on the identifiers received from the pairing server being the same as corresponding identifiers.
The additional limitation:
the pairing information including at least two server-provided identifiers for pairing the wireless communication device and the interactive electronic device, and
establish an encrypted connection based on the at least two server-provided identifiers,
although not in U.S. Patent No., 12,207,322 would be obvious in light of Nijim, as Nijim, which like the present Application discloses pairing devices based on pairing information received from a server, at least in Col. 3 ll. 34-60 teaches a pairing server that provides multiple pairing information/messages including device ID to the pairing devices
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify claim 1 of U.S. Patent No. 12,207,322, to include pairing devices based on multiple pairing information provided by a pairing server, as taught by Nijim, in order to increase security of established pairing relationship. (See Nijim Col. 6 ll. 17-27.)
With respect to Claims 2, 9 and 16 of the present application, claim 2 of U.S. Patent No. 12,207,322 disclose:
wherein the identifiers include a passkey and a unique identifier of the wireless communication device,
although the passkey of claim 2 in U.S. Patent No., 12,207,322 is not explicitly named a “6-digit passkey” the number of digits in a passkey is non-functional descriptive material which does not further limit the scope of the claim.
With respect to Claims 4, 11 and 17 of the present application, claim 4 of U.S. Patent No. 12,207,322 discloses:
wherein the message comprises an advertising message for a wireless communication protocol and a payload of the advertising message comprises the identifiers.
With respect to Claim 5 of the present application, claim 6 of U.S. Patent No. 12,207,322 discloses:
wherein the wireless communication circuitry comprises a Bluetooth wireless communication interface.
With respect to Claims 6, 12 and 17 of the present application, claim 8 of U.S. Patent No. 12,207,322 discloses:
wherein the wireless communication device is a payment instrument.
The examiner notes that although claim 8 of the U.S. Patent No. 12,207,322 teaches the claim recitation, but the claim recitation indicates non-functional descriptive material and does not further limit the scope of the claim, even if it was not taught by the Patent.
Claims 3, 10 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,207,322 in view of “Nijim”, further in view of US 2017/0019873 A1 (“Britt”)
With respect to claims 3, 10 and 15 of the present application, the additional limitation:
generating, at the wireless communication device, the message is taught by claim 4 of U.S. Patent No. 12,207,322.
The limitation:
encrypt the identifiers prior to transmitting the message,
although not in U.S. Patent No., 12,207,322 and Nijim, would be obvious in light of Britt, as Britt, which like the present Application discloses secure pairing of devices, at least in [0114]-[0116] teaches pairing devices using encrypted pairing data.
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify claims of U.S. Patent No. 12,207,322, and Nijim, to include establish pairing between devices using encrypted messages, as taught by Britt, in order to provide additional security of pairing messages.
Claims 7, 13 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,207,322 in view of “Nijim”, further in view of US 2016/0066122 A1 (“KAO”)
With respect to claims 7, 13 and 19 of the present application, of the present application, claim 1 of Nijim teaches determining if the mobile device to STB pairing relationship is authorized based in part on the pairing information associated with the visual code and the device ID associated with the mobile device (i.e., two identifiers)
With respect to the additional limitation:
generate an error message upon determining that the at least two server-provided identifiers are not the same as the corresponding two of the identifiers; and
display the error message on the interactive electronic device,
although not in U.S. Patent No., 12,207,322 and Nijim, would be obvious in light of Kao, which like the present Application discloses methods for pairing devices, at least in [0039] teaches displaying a message to the user that indicates the pairing has failed.
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify claims of U.S. Patent No. 12,207,322, and Nijim, to include providing error messages to user when pairing fails, as taught by Kao, in order to for the user to try again for pairing.
With respect to claim 20 of the present application, of the present application, claim 1 of Nijim teaches determining if the mobile device to STB pairing relationship is authorized based in part on the pairing information associated with the visual code and the device ID associated with the mobile device (i.e., two identifiers)
With respect to the additional limitation:
wherein determining that the at least two server-provided identifiers are not the same as the corresponding two of the identifiers includes receiving an error message from the pairing server indicating that the at least two server-provided identifiers are not the same as the corresponding two of the identifiers,
although not in U.S. Patent No., 12,207,322 and Nijim, would be obvious in light of Kao, which like the present Application discloses methods for pairing devices, at least in [0033]-[0035] teaches receiving a response message form the server indicating success or failure of pairing, and in [0039] Kao teaches displaying a message to the user that indicates the pairing has failed.
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify claims of U.S. Patent No. 12,207,322, and Nijim, to include providing error messages to user when pairing fails, as taught by Kao, in order to for the user to try again for pairing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Olsen (US 2010/0217719) teaches pairing between two devices and providing error messages when pairing fails, Roulland (US 2013/0139218) teaches secure connection between devices by pairing, MacKenzie (US 2015/0365512 ) teaches secure pairing between devices and other instruments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698