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 .
Claims 1-20 are pending.
The IDSes , filed 2/4/25 (2) 5/28/25, and 9/30/25, have been considered.
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 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7, 9, 13 of U.S. Patent No.11625186.
Claim(s) 1 and 7 of patent # US11625186 contain(s) every element of claim(s) 1 and 9-11 of the instant application and as such anticipate(s) claim(s) 1 and 9-11 of the instant application.
“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).
Below is an example claim mapping between the claim of the current application and patent:
Current Application
1. A method, comprising:
clearing data stored in a memory of the network device using the host computer and/or a user interface;
resetting the network device to its default state using the retrieved database information;
determining, by a host computer, device information for a network device communicatively coupled to the host computer; retrieving, from a database, information including at least one of a data erasure procedure and expected or default response which is indicative of a successful erasure of the memory of the network device corresponding to the device information as determined.
Patent 11,625,186
1. A method for use in erasing data stored in the memory of a network device, the method comprising: performing a data erasure procedure to erase stored data from the memory of the network device; requesting data from the memory of the network device after completion of the data erasure procedure or accessing the memory of the network device after completion of the data erasure procedure; determining the outcome of the data erasure procedure based at least in part on: the results of a comparison between a response received from the network device in reply to the request for data and an expected response which is indicative of a successful erasure of the memory of the network device; or the results of a comparison between any contents of the memory of the network device after completion of the data erasure procedure and expected contents of the memory of the network device after completion of the data erasure procedure which are indicative of a successful erasure of the memory of the network device; wherein the network device has an Ethernet port for communication with a Wide Area Network (WAN) and the method comprises establishing a connection with the network device via the Ethernet port according to a WAN Management Protocol, for example wherein the WAN Management Protocol comprises a TR-069 CPE WAN Management Protocol; and further comprising sending a FactoryReset Remote Procedure Call (RPC) message to the network device to reset the network device to its factory default state and cause the memory of the network device to be erased and/or sending a ScheduleDownload or a Download message to the network device to cause the network device to download a firmware update from a designated location and to apply the firmware update in order to overwrite existing firmware of the network device.
7. A method as claimed in claim 1, comprising: requesting network device information from the network device or accessing network device information stored in the memory of the network device; selecting the data erasure procedure from a database of data erasure procedures based at least in part on network device information received from the network device in reply to the request for network device information or selecting the data erasure procedure from a database of data erasure procedures based at least in part on the accessed network device information; and selecting the expected response which is indicative of a successful erasure of the memory of the network device from a database of expected responses based at least in part on the received network device information or selecting the expected contents of the memory of the network device which are indicative of a successful erasure of the memory of the network device from a database of expected contents based at least in part on the accessed network device information..
As can be seen from above, the parent claims 1, in combination with 7, include the limitations of claim 1 of the current application, and further limitations, anticipating the claim 1 of the current application.
Claims 9-10 are similarly mapped to patent claim 7.
Claim 11 is mapped to patent claim 1.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,197,763.
Claim(s) 1-18 of patent # US 12,197,763 contain(s) every element of claim(s) 1-20 of the instant application and as such anticipate(s) claim(s) 1-20 of the instant application.
“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).
Below is a mapping between the claim of the current application and patent:
Current Application
1. A method, comprising: determining, by a host computer, device information for a network device communicatively coupled to the host computer; retrieving, from a database, information including at least one of a data erasure procedure and expected or default response which is indicative of a successful erasure of a memory of the network device corresponding to the device information as determined; resetting the network device to its default state using the retrieved database information; and clearing data stored in a memory of the network device using the host computer and/or a user interface.
Patent 12,197,763
A method, comprising: determining, by a host computer, device information for a network device communicatively coupled to the host computer; retrieving, from a database, information including at least one of a data erasure procedure and expected or default response which is indicative of a successful erasure of the memory of the network device corresponding to the device information as determined; resetting the network device to its default state using the retrieved database information; clearing data stored in a memory of the network device using the host computer and/or a user interface;
determining an outcome of at least one of the resetting or the clearing; outputting an indication of whether resetting the network device was successful and/or whether clearing the memory of the network device was successful; and wherein determining an outcome of at least one of the resetting or the clearing further comprises: requesting data from the memory of the network device after completion of the data erasure procedure or accessing the memory of the network device after completion of the data erasure procedure; and determining the outcome of the data erasure procedure based at least in part on: the results of a comparison between a response received from the network device in reply to the request for data and an expected response obtained from the retrieved database information which is indicative of a successful erasure of the memory of the network device; or the results of a comparison between any contents of the memory of the network device after completion of the data erasure procedure and expected contents obtained from the retrieved database information of the memory of the network device after completion of the data erasure procedure which are indicative of a successful erasure of the memory of the network device.
As can be seen from above, the patent claim 1 includes the limitations of claim 1 of the current application, and further limitations, anticipating the claim of the current application.
Independent claims 12 and 20 are similarly mapped to patent claim 11 and 18 of the patent..
Dependent claims 2-11, 13-19 are mapped to claims 2-10 and 12-17 of the patent.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-6, 10-16, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kellokoski et al (US20190212942, “Kellokoski”).
As to claim 1, 12, 20:
Kellokoski teaches a method (method; 0001, 0012), a system (Fig. 1B) with a processing resource to execution instructions of the method (erase apparatus 20 comprising processor and memory for storing and executing instructions; Fig. 1B; 0090-0091), or a non-transitory computer-readable storage medium comprising instructions to perform the method (computer-readable memory storing instructions; 0080, claim 27), comprising:
determining, by a host computer (host 30 in apparatus 20; 0093-0094), device information for a network device communicatively coupled to the host computer (retrieve configuration of device 10; 0097; device 10 located remotely from apparatus 20; 0090);
retrieving, from a database, information including at least one of a data erasure procedure and expected or default response which is indicative of a successful erasure of the memory of the network device corresponding to the device information as determined (retrieve/load instruction/software to implement operation of factory reset procedure from firmware/storage 24, which would include all information/data in the erase/reset procedures and responses/indicators of function success/failure; 0090-0094; Fig. 1B, 4; load all necessary protocols to communicate with attached devices; 0089);
resetting the network device to its default state using the retrieved database information (perform factory reset of device; 0005, 0007, 0010, 0097, 0114); and
clearing data stored in a memory of the network device using the host computer and/or a user interface (delete/erase data on device; 0005-0007, 0010, 0011, 0056, 0061, 0065; host send reset/erase command; 0093-0094, 0009-0014).
As to claim 2, 13:
Kellokoski teaches resetting the network device to its default state using the retrieved database information by performing a factory reset of the network device and performing a firmware update on the network device (factory reset; 0007-0011; erase/overwrite programs and data; 0011, 0029; factory reset and re-flash software/applications/packages on device; 0094-0097).
As to claim 3:
Kellokoski teaches updating the firmware of the network device after clearing the memory of the network device (perform factory reset; 0007-0011; perform erase/overwrite software/firmware/OS of storage device; 0011; 0029, 0094-0097).
As to claim 4, 14:
Kellokoski teaches outputting an indication of whether resetting the network device was successful further comprises recording or storing at least one of the received response, any contents of the memory of the network device, and the determined outcome of the data erasure procedure, for example (not limiting) in the Cloud (store and provide result of verification to host; 0136, 0138).
As to claim 5, 15:
Kellokoski teaches determining an outcome of at least one of the resetting or the clearing further comprises: requesting data from the memory of the network device after completion of the data erasure procedure or accessing the memory of the network device after completion of the data erasure procedure (following overwrite/erase procedure, perform verification; retrieve data and compare contents; 0127, 0136-0139); and determining the outcome of the data erasure procedure based at least in part on: a comparison between a response received from the network device in reply to the request for data and an expected response obtained from the retrieved database information which is indicative of a successful erasure of the memory of the network device; or a comparison between any contents of the memory of the network device after completion of the data erasure procedure and expected contents obtained from the retrieved database information of the memory of the network device after completion of the data erasure procedure which are indicative of a successful erasure of the memory of the network device (compare read data with known set of data; 0016, 0041, 0138-0141).
As to claim 6, 16:
Kellokoski teaches the expected response comprises a default response or wherein the expected contents of the memory of the network device comprise default contents (provide negative or positive response; 0138; Fig. 4).
As to claim 10:
Kellokoski teaches displaying the indication of whether resetting the network device was successful and whether clearing the memory of the network device was successful (returning result of verification process; 00138-0139, user interface 28, , which can be a display from a laptop/computer, can display information to user; 0093).
As to claim 11:
Kellokoski teaches determining, by the host computer, device information for a second network device communicatively coupled to the computer device; retrieving, from the database, second retrieved database information corresponding to the device information for the second device as determined; resetting the second network device using the second retrieved database information; clearing data stored in a memory of the second network device using the host computer and/or the user interface; determining an outcome of at least one of the resetting the second network device or the clearing data in a memory of the second network device; and outputting an indication of whether resetting the second network device was successful and/or whether clearing the memory of the second network device was successful (above functions are identical to that of claim 1, but applied to a different device. Kellokoski further teaches using invention in environment of plural devices (0139-0140). Thus, the operation of Kellokoski’ s teaching, as used in claim 1, can be applied to the environment where there plural devices attached to the host; See response to claim 1).
Allowable Subject Matter
Claims 7-9 and 17-19 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:
As to claim 7/17, the prior art does not further suggest the method of claim 5/15, further comprising: requesting IP address data and/or MAC address data from the memory of the network device after completion of the data erasure procedure or accessing a pre-defined portion of the memory of the network device used to store IP address data and/or MAC address data after completion of the data erasure procedure; and determining a successful outcome based at least in part on: verifying that the received response from the network device does not include any IP address data and/or any MAC address data after completion of the data erasure procedure; or verifying that the pre-defined portion of the memory of the network device used to store IP address data and/or MAC address data does not include any IP address data and/or any MAC address data after completion of the data erasure procedure.
As to claim 8/18, the prior art does not further suggest the method of claim 5/15, further comprising: requesting running configuration data from the memory of the network device after completion of the data erasure procedure or accessing a pre-defined portion of the memory of the network device used to store running configuration data after completion of the data erasure procedure; and determining a successful outcome based at least in part on: verifying that the received response from the network device corresponds to an expected running configuration which is indicative of a successful erasure of the memory of the network device; or verifying that the pre-defined portion of the memory of the network device used to store running configuration data includes running configuration data that corresponds to an expected running configuration which is indicative of a successful erasure of the memory of the network device.
As to claim 9/19, the prior art does not further suggest the method of claim 5/15, further comprising: requesting network device information from the network device or accessing network device information stored in the memory of the network device; selecting the data erasure procedure from a database of data erasure procedures based at least in part on network device information received from the network device in reply to the request for network device information or selecting the data erasure procedure from a database of data erasure procedures based at least in part on the accessed network device information; and selecting the expected response which is indicative of a successful erasure of the memory of the network device from a database of expected responses based at least in part on the received network device information or selecting the expected contents of the memory of the network device which are indicative of a successful erasure of the memory of the network device from a database of expected contents based at least in part on the accessed network device information.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THAN NGUYEN whose telephone number is (571)272-4198. The examiner can normally be reached M-F 7:00am -4:00pm.
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, Tim Vo can be reached on (571)272-3642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THAN NGUYEN/Primary Examiner, Art Unit 2138