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 .
Authorization for Internet Communication
In the interest of compact prosecution, the Examiner recommends filing a written authorization for Internet communication. Doing so would permit the USPTO to communicate using Internet e-mail to schedule interviews or discuss other aspects of the application. Without a written authorization in place, the USPTO cannot respond to Internet e-mail correspondence. The preferred method of providing authorization is by filing form PTO/SB/439, available at: https://www.uspto.gov/patent/forms/forms. See MPEP § 502.03. Authorizations in an Internet e-mail do not have the same effect as filing the form in the record.
Information Disclosure Statement
Applicant is respectfully reminded of the duty under 37 C.F.R. 1.56 to disclose all pertinent information and material pertaining to the patentability of the instant invention, by submitting in a timely manner PTO-1449, Information Disclosure Statement (IDS), with the filing of an application or thereafter.
Status
Claims 1-20 are pending.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-3, drawn to social networking services, classified in H04L 51/52
II. Claims 4-20, drawn to joining mechanisms, classified in H04L 67/1046.
The inventions are distinct, each from the other because of the following reasons. Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as social networking separate from joining a group. Subcombination II has separate utility such as joining a group separate from social networking. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where a subcombination is elected and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). If any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because the aforementioned inventions are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply: separate classification thereof, supra; each invention has attained recognition in the art as a separate subject for inventive effort; or a different field of search, e.g., searching different classes/ subclasses, supra, or employing different search queries are required.
To be complete, a reply to this requirement must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 of the other invention(s).
In a voicemail from Theodore Wood on May 1, 2026 a provisional election was made without traverse to prosecute the invention II, claims 4-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-3 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 5, 6, 9-13, 16, 17, and 20 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.
Regarding claims 5 and 16, “the nomination email” lacks antecedent basis.
Regarding claims 6 and 17, “the acknowledgment packet” lacks antecedent basis. This could be overcome by amending claims 6 and 17 to depend from claims 5 and 16, respectively.
Regarding claims 9 and 20, “the peer nomination databases” lacks antecedent basis.
Regarding claim 10, “the dedicated databases” lacks antecedent basis.
Regarding claim 12, “the proper response” lacks antecedent basis. This could be overcome by amending the claim to depend from claim 6.
Regarding claim 13, “the acknowledgment packet” lacks antecedent basis. This could be overcome by amending the claim to depend from claim 6.
Regarding claim 14, “the peer parameter message” lacks antecedent basis. This could be overcome by amending the claim to depend from claim 13.
Claim Rejections - 35 USC § 103
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.
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.
Claims 4-7 and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over WO 0188674 (Tuvell) in view of WO 2016120826 (Main).
Regarding claims 4 and 15, Tuvell teaches or suggests a non-transitory computer readable medium having stored thereon computer executable instructions that, if executed by a computing device, cause the computing device to perform a method for use by a memory controller of a peer-to-peer communications system (P2PCS) (15:24-30), the method comprising:
nominating a prospective peer for addition to a group of peers communicating via a peer to peer communications system (P2PCS) (15:33-6:2) chair sends an invitation message to the potential invitee; wherein the nominating includes an active peer within the group sending to the prospective peer, via the P2PCS, a nomination request using email as a primary transport mechanism;
wherein the nomination request includes an encrypted payload including instructions (17:1-14 cryptographic data, one-time key information encrypted); and
wherein the encryption is performed (i) via the P2PCS and (ii) responsive to prearranged data (17:17-18 nonce).
Tuvell does not expressly disclose but Maim teaches or suggests a prearranged passphrase (claims 2 and 3). It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine Tuvell’s system and Maim’s passphrase because a passphrase is a recognized alternative to a code (id.).
Regarding claims 5 and 16, the aforementioned combination teaches or suggests accepting the nomination email at a nominee device instance associated with the prospective peer (Tuvell 18:17, Maim claims 2 and 3); returning, via the prospective peer, the prearranged passphrase to the nominee device instance (Tuvell 18:22-25, Maim claims 2 and 3); and sending, via the P2PCS at the nominee device instance, an acknowledgment packet responsive to the instructions (Tuvell 18:22-25, Maim claims 2 and 3).
Regarding claims 6 and 17, Tuvell teaches or suggests accepting the prospective peer if the acknowledgment packet contains a proper response (21:23-24).
Regarding claims 7 and 18, Tuvell teaches or suggests the nominating occurs via a nominating device instance or a nominating application instance (15:33-34).
Regarding claim 11, Tuvell teaches or suggests secure communication within the group of users (4:17-29).
Regarding claim 12, Tuvell teaches or suggests the proper response includes specific content unique to the onboarding transaction 18:22-19:1).
Regarding claim 13, Tuvell teaches or suggests sending a peer parameter packet, via the nominator device instance, when the acknowledgment packet contains a proper response (21:24-23:27).
Regarding claim 14, Tuvell teaches or suggests the peer parameter message is decrypted using the obfuscation employed in the nomination message (22:25 et seq, 23:30-24:3).
Claims 8-10, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 0188674 (Tuvell) in view of WO 2016120826 (Main) further in view of US 20110276396 (Rathod).
Regarding claims 8 and 19, Tuvell does not expressly disclose but Rathod teaches or suggests the P2PCS includes a computational engine communicatively coupled to dedicated databases (¶ 138). It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine Tuvell’s system, Maim’s passphrase, and Rathod’s computational engine communicatively coupled to dedicated databases to implement the aforementioned operations.
Regarding claims 9 and 20, Rathod teaches or suggests each of the peer nomination databases is configured to store specific data associated with each component of the P2PCS (¶ 138).
Regarding claim 10, Rathod teaches or suggests the dedicated databases include a message database (dB), a packet transmit/receive dB, a peer dB, and an email provider dB (¶ 138).
Other Art
The prior art made of record and not relied upon is considered pertinent to the instant disclosure. For example, EP 3651105 teaches endorsing nodes may compute an invite code.
Conclusion
Any response to this Office action containing amended or newly presented claims should specifically point out support in the original disclosure for the new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should specifically point out the support for any amendments made to the disclosure.”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lance Leonard Barry whose telephone number is (571) 272-5856. The examiner can normally be reached M-F 730-1630.
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 email the Examiner.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ario Etienne can be reached on 571-272-4001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LANCE LEONARD BARRY/ Primary Examiner, Art Unit 2457
Prosecution Insights