CTNF 18/991,242 CTNF 80001 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION The instant application having Application No. 18/991,242 is presented for examination by the examiner. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 21, 22, 28, 29, 35, and 36 rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 2, 6, and 16 of U.S. Patent No. 12,218,923 . Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitation of broader genus claims of ‘242 are contained in the narrower species claims of ‘923, as enunciated in (ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001). “A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001) . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 21-23, 28-30, and 35-37 are rejected under 35 U.S.C. 102 ( a)(1 ) as being anticipated by USP Application Publication 2016/0373414 to MacCarthaigh . As per claims 21, 28, and 35, MacCarthaigh teaches causing, at a network-accessible service, a first security artifact [secret private key of the certificate of the web server] associated with an application to be stored at a location inaccessible by a client hosting the application [stored at handshake server; 0021 and 0026]; obtaining at least a portion of contents of a set of handshake messages of a security protocol initiated by the client, the set of handshake messages associated with the application (0024); generating, in accordance with the security protocol, a second security artifact [session keys] using the portion of contents of the set of handshake messages and the first security artifact [the private key is used to decrypt the packet from the client that was encrypted using the public key of the server; 0026 and 0027]; and utilizing the second security artifact to perform at least a cryptographic operation with respect to a client-server interaction of the application [encrypted communication using the session keys; 0027]. As per claims 22, 29, and 36, MacCarthaigh teaches the security protocol is a version of Transport Layer Security (TLS), and wherein the first security artifact comprises a private key of a cryptographic key pair of a TLS server certificate of the application (0023 and 0025). As per claims 23, 30, and 37, MacCarthaigh teaches receiving the set of client-initiated handshake messages of the security protocol at a load balancer of the network-accessible service in an un-encrypted form from the client [clientHello messages are unencrypted; 0041, 0042, 0050] . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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 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. 07-20-aia AIA 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 of this title, 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. 07-21-aia AIA Claim s 24, 31, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over MacCarthaigh in view of NPL entitled “New-AWS Certificate Manager – Deploy SSL/TLS-Based Apps on AWS" by Barr published 2016, hereinafter Barr . As per claims 24, 31, and 38 MacCarthaigh does not explicitly teach the first security artifact has an associated validity period, and wherein the computer-implemented method further comprises: automatically causing the associated validity period to be extended, without obtaining a request for extending the associated validity period. MacCarthaigh does use certificates but does not explicitly disclose extending their validity period. Certificates are known in the art to have lifetimes. Barr explicitly teaches the first security artifact has an associated validity period, and wherein the computer-implemented method further comprises: automatically causing the associated validity period to be extended, without obtaining a request for extending the associated validity period [a certificate manager that automatically renews certificates; see section “New AWS Certificate Manager]. This renewal process automates tasks previously performed manually. Automation is advantageous where possible. MacCarthaigh already teaches policies on session lifetimes (0032). The claim is obvious because one of ordinary skill in the art can combine methods known before the effective filing date which produce predictable results. Automating the certificates renewal in MacCarthaigh produces a predictable result. MacCarthaigh already teaches policies on session lifetimes (0032) . 07-21-aia AIA Claim s 25, 26, 32, 33, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over MacCarthaigh in view of USP Application Publication 2021/0160236 to Ray et al., hereinafter Ray . As per claims 25, 32, and 39, MacCarthaigh teaches obtaining, at the network-accessible service via a programmatic interface, an indication of a policy associated with the application and the security protocol (0048 and 0086). MacCarthaigh is silent in explicitly teaching the policy indicates one or more of an acceptable key exchange algorithm, an acceptable authentication algorithm, an acceptable data encryption algorithm, an acceptable message authentication code algorithm and an acceptable compression algorithm; and verifying that the policy is not violated by the set of client-initiated handshake messages. On the other hand, Ray teaches is specified by an administrator of the application via a programmatic interface, and wherein the policy indicates one or more of: (a) an acceptable key exchange algorithm, (b) an acceptable authentication algorithm (0057) , (c) an acceptable data encryption algorithm, (d) an acceptable message authentication code algorithm, or (e) an acceptable compression algorithm. Ray teaches an admin can input any number policies and when a selected protocol is used, the policies can be applied to the application (0059). A protocol is deemed acceptable because it can have the policies applied and implemented to it. The identity protocols of MacCarthaigh are already subject to polices. Instituting the policy claims of Ray to those protocol would not produce any unpredictable results because Ray’s policies are protocol agnostic. The claim is obvious because one of ordinary skill in the art can combine methods known before the effective filing date which do not produce unpredictable results. As per claims 26 and 33, MacCarthaigh teaches obtaining, at the network-accessible service, via the programmatic interface, an indication of an applicability rule of the policy, wherein the applicability rule is a member of a set comprising one or more of a rule associated with the first security artifact, a rule associated with a set of client addresses, a rule associated with a client location and a rule associated with one or more domain names, wherein verifying that the policy is not violated comprises applying the policy in accordance with the applicability rule (0048) . 07-21-aia AIA Claim s 27, 34, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over MacCarthaigh in view of USP Application Publication 2018/0075231 to Subramanian et al., hereinafter Subramanian . As per claims 27, 34, and 40, MacCarthaigh is silent in explicitly teaching storing, at the network-accessible service responsive to the one or more programmatic requests, an indication of a multi-tenant mode; and causing contents of client-initiated handshake messages associated with another application to be obtained and processed according to the multi-tenant mode. MacCarthaigh does teach a multi-tenant mode (key server access corresponding private key and there are multiple customer and multiple services (0021) to which they connect to; 0094. Subramanian teaches storing, at the network-accessible service responsive to the one or more programmatic requests, an indication of a multi-tenant mode; and causing contents of client-initiated handshake messages associated with another application to be obtained and processed according to the multi-tenant mode (0121 and 0122). Subramanian uses preferences to indicate a Cloud Gate multi-tenant mode to support multiple tenants. This is a configuration artifact to manage resource by APIs (0085). MacCarthaigh already handles a multi-tenant across a fleet of servers. There needs to be a way to implement the separation of domains that are in MacCarthaigh. Subramanian teaches a practical way in order to recognize multi-tenants so that the correct keys are identified. The claim is obvious because one of ordinary skill in the art can combine methods known before the effective filing date which produce predictable results. Storing an indication of a multi-tenant mode was a known way to enable the multi-tenant mode present in MacCarthaigh . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on the enclosed PTO-892 form . Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R. VAUGHAN whose telephone number is (571)270-7316. The examiner can normally be reached on Monday - Friday, 9:30am - 5:30pm, EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can be reached on (571) 272-2092. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MICHAEL R VAUGHAN/ Primary Examiner, Art Unit 2431 Application/Control Number: 18/991,242 Page 2 Art Unit: 2431 Application/Control Number: 18/991,242 Page 3 Art Unit: 2431 Application/Control Number: 18/991,242 Page 4 Art Unit: 2431 Application/Control Number: 18/991,242 Page 5 Art Unit: 2431 Application/Control Number: 18/991,242 Page 6 Art Unit: 2431 Application/Control Number: 18/991,242 Page 7 Art Unit: 2431 Application/Control Number: 18/991,242 Page 8 Art Unit: 2431 Application/Control Number: 18/991,242 Page 9 Art Unit: 2431 Application/Control Number: 18/991,242 Page 10 Art Unit: 2431 Application/Control Number: 18/991,242 Page 11 Art Unit: 2431 Application/Control Number: 18/991,242 Page 12 Art Unit: 2431
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