DETAILED ACTION
The following is a Final Office action in response to applicants’ amendment and remarks filed on 07/21/2026. Claims 2, 7-11, 15-17, 19, 22, and 23 have been amended, and Claims 3, 4, 12, 18, and 20 have been canceled. Therefore, Claims 2, 5-11, 13-17, 19, and 21-23 are currently pending and have been considered as follows.
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
In view of the amendment to the claims, the 35 U.S.C. 112(f) interpretation of Claim 11 and the 35 U.S.C. 112(b) rejection of Claim 11 are withdrawn.
In view of the amendment to the claims, applicants’ arguments on pages 9-10 of the remarks filed 07/21/2026 regarding the 35 U.S.C. 103 rejection have been fully considered, and they are persuasive. Therefore, the 35 U.S.C. 103 rejection of Claims 2, 5-11, 13-17, 19, and 21-23 is withdrawn.
A terminal disclaimer has not yet been filed in view of parent U.S. Patent No. 12,212,579 B2. Therefore, the nonstatutory double patenting rejection of Claims 2, 5-10, and 19-23 is maintained for the reasons stated subsequently in this office action.
Claim Objections
Claim 21 is objected to because of the following informalities:
Claim 21 lines 1-2 recite “The non-transitory computer-readable storage medium according to claim 20” which should be corrected as “The non-transitory computer-readable storage medium according to claim [[20]]19”;
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21 recites the limitation "the metadata" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "the metadata" in line 4. There is insufficient antecedent basis for this limitation in the claim.
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.
Parent Patent No. 12,212,579 B2
Claims 2, 5-10, 19, and 21-23 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over Claims 1-9 and 18-22 of parent U.S. Patent No. 12,212,579 B2 (common inventive entity and assignee). Although the conflicting claims are not identical, they are not patentably distinct from each other because it is clear that all the elements of the instant application claims 2, 5-10, 19, and 21-23 are to be found in parent patent claims 1-9 and 18-22. The difference claims include more elements and are more specific. Thus, the invention of claims 1-9 and 18-22 of the patent is in effect a “species” of the “generic” invention of the instant application claims 2, 5-10, 19, and 21-23. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). The following Claims Comparison Table illustrates the anticipatory relationship of the claims at issue.
Claims Comparison Table
Instant Application:
18/999,391
U.S. Patent No. 12,212,579 B2
(common inventive entity and assignee)
Claim 2:
A computer-implemented method of transmitting data by a communications device to a second device, the method comprising:
encrypting, by the communications device, a data stream including the data, thereby obtaining an encrypted data stream, wherein the communications device includes a network formatter, and a tunnel manager, wherein each of the network formatter and the tunnel manager are operatively interconnected through a processor;
transmitting, by the communications device, the encrypted data stream to the second device using a first connection to allow the second device to receive and decrypt the encrypted data stream to obtain a decrypted data stream;
transmitting, by the communications device to the second device using a second connection, metadata indicating a location of the data in the data stream, the location allowing the second device to identify and encrypt the data in the decrypted data stream.
Claim 1:
A computer-implemented method of transmitting data by an Internet of Things device to a second device, the method comprising:
encrypting, by the Internet of Things device, a data stream including the data, thereby obtaining an encrypted data stream, wherein the Internet of Things device includes a processor, an application module, a network formatter, and a tunnel manager, wherein each of the application module, the network formatter and the tunnel manager are operatively connected to the processor;
transmitting, by the Internet of Things device, the encrypted data stream to the second device to allow the second device to receive and decrypt the encrypted data stream to obtain a decrypted data stream;
indicating, by the Internet of Things device to the second device, a location of the data in the data stream, the location allowing the second device to identify and encrypt the data in the decrypted data stream.
Claim 2:
The computer-implemented method according to claim 1, further comprising: transmitting, by the Internet of Things device to the second device, metadata comprising the location of the data in the data stream.
Claim 3:
The computer-implemented method according to claim 2, further comprising: transmitting, by the Internet of Things device, the encrypted data stream to the second device using a first connection, and transmitting, by the Internet of Things device, the metadata to the second device using a second connection.
Claim 5:
The computer-implemented method according to claim 2, wherein the data in the data stream is unencrypted sensor data.
Claim 4:
The computer-implemented method according to claim 1, wherein the data in the data stream is unencrypted sensor data.
Claim 6:
The computer-implemented method according to claim 2, wherein the communications device is a battery powered communications device, the data in the data stream is sensor data and the second device is a backend device.
Claim 5:
The computer-implemented method according to claim 1, wherein the Internet of Things device is a battery powered Internet of Things device, the data in the data stream is sensor data and the second device is a backend device.
Claim 7:
The computer-implemented method according to claim 3, wherein the metadata comprises a cryptographic key, and the method further comprises causing the second device to encrypt the data into a second stream using the cryptographic key.
Claim 6:
The computer-implemented method according to claim 2, wherein the metadata comprises a cryptographic key, and the method further comprises causing the second device to encrypt the data into a second stream using the cryptographic key.
Claim 8:
The computer-implemented method according to claim 3, further comprising: encrypting, by the communications device, the data stream using a first cipher, and encrypting, by the communications device, the metadata using a second cipher different from the first cipher.
Claim 7:
The computer-implemented method according to claim 2, further comprising: encrypting, by the Internet of Things device, the data stream using a first cipher, and encrypting, by the Internet of Things device, the metadata using a second cipher different from the first cipher.
Claim 9:
The computer-implemented method according to claim 2, further comprising: running at least one application that outputs the data based on input from a sensor; receiving, by the network formatter, the data output from the at least one application; and formatting, by the network formatter, the data into the data stream.
Claim 8:
The computer-implemented method according to claim 1, further comprising: running, on the application module, applications that output the data based on input from a sensor; receiving, by the network formatter, the data from the application module; and formatting, by the network formatter, the data into the data stream.
Claim 10:
The computer-implemented method according to claim 2, wherein transmitting, by the communications device to the second device using the second connection, comprises: transmitting, by the tunnel manager, the metadata to the second device, wherein the metadata further includes a cryptographic key or a reference to a cryptographic key.
Claim 9:
The computer-implemented method according to claim 1, further comprising: generating, by the tunnel manager, metadata; and transmitting, by the tunnel manager, the metadata to the second device, wherein the metadata includes the location of the data in the data stream and a cryptographic key or a reference to a cryptographic key.
Claim 19:
A non-transitory computer-readable storage medium comprising instructions which, when executed by a processor of an communications device, cause the processor to:
encrypt a data stream including data, thereby obtaining an encrypted data stream, wherein the communications device includes a network formatter, and a tunnel manager, wherein each of the network formatter and the tunnel manager are operatively interconnected through a processor, transmit, by the communications device, the encrypted data stream to a second device using a first connection to allow the second device to receive and decrypt the encrypted data stream to obtain a decrypted data stream, and
transmit, using a second connection, an indication of a location of the data in the data stream, the location allowing the second device to identify and encrypt the data in the decrypted data stream.
Claim 18:
A non-transitory computer-readable storage medium comprising instructions which, when executed by a processor of an Internet of Things device, cause the processor to:
encrypt a data stream including data, thereby obtaining an encrypted data stream for transmission by the Internet of Things device to a second device to allow the second device to receive and decrypt the encrypted data stream to obtain a decrypted data stream, wherein the Internet of Things device includes a processor, an application module, a network formatter, and a tunnel manager, wherein each of the application module, the network formatter and the tunnel manager are operatively connected to the processor, and
generate an indication of a location of the data in the data stream, for transmission by the Internet of Things device to the second device to allow the second device to identify and encrypt the data in the decrypted data stream.
Claim 19:
The non-transitory computer-readable storage medium according to claim 18, further comprising instructions which, when executed by the processor, cause the processor to: generate metadata identifying the location of the data in the data stream, for transmission by the Internet of Things device to the second device using a second connection that is separate from a first connection used to transmit the encrypted data stream.
Claim 21:
The non-transitory computer-readable storage medium according to claim 20, further comprising instructions which, when executed by the processor, cause the processor to: encrypt the data stream using a first cipher, and encrypt the metadata using a second cipher different from the first cipher.
Claim 20:
The non-transitory computer-readable storage medium according to claim 19, further comprising instructions which, when executed by the processor, cause the processor to: encrypt the data stream using a first cipher, and encrypt the metadata using a second cipher different from the first cipher.
Claim 22:
The non-transitory computer-readable storage medium according to claim 19, further comprising instructions which, when executed by the processor, cause the processor to: run, on the application module, at least one application that outputs the data based on input from a sensor; receive, using the network formatter, the data from the application module; and format, using the network formatter, the data into the data stream.
Claim 21:
The non-transitory computer-readable storage medium according to claim 18, further comprising instructions which, when executed by the processor, cause the processor to: run, on the application module, applications that output the data based on input from a sensor; receive, using the network formatter, the data from the application module; and format, using the network formatter, the data into the data stream.
Claim 23:
The non-transitory computer-readable storage medium according to claim 17, further comprising instructions which, when executed by the processor, cause the processor to: generate, using the tunnel manager, metadata; and transmit, using the tunnel manager, the metadata to the second device, wherein the metadata includes the location of the data in the data stream and a cryptographic key or a reference to a cryptographic key.
Claim 22:
The non-transitory computer-readable storage medium according to claim 18, further comprising instructions which, when executed by the processor, cause the processor to: generate, using the tunnel manager, metadata; and transmit, using the tunnel manager, the metadata to the second device, wherein the metadata includes the location of the data in the data stream and a cryptographic key or a reference to a cryptographic key.
Allowable Subject Matter
Claims 11 and 13-17 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicants’ disclosure.
Deana-Roga et al. (US 20090204817 A1)
Arena (US 9008314 B2)
Feekes (US 20150117639 A1)
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 Kenneth Chang whose telephone number is (571)270-7530. The examiner can normally be reached Monday - Friday 9:30am-5:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Taghi Arani can be reached at 571-272-3787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH W CHANG/Primary Examiner, Art Unit 2438
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