DETAILED ACTION
Notice of 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 .
Priority
Applicant’s claim for the benefit of prior-filed applications under 35 U.S.C. 119(e) and under 35 U.S.C. 120 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2025-02-18 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-5 are rejected on the ground of nonstatutory double patenting over the following US Patents in view of the prior art of record: 10868806, 11102194, 11856027, 11799844, 12407728, and 12238104.
Although the claims at issue are not identical to the parent patents, they are not patentably distinct from each other because independent claim 1 of the instant application is anticipated by the claims of the issued parent patents, and the dependent claims 2-5 are otherwise obvious in view of the prior art of record.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter; specifically, it is directed towards software, per se.
Claims 1-5 are directed towards software, per se. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re ZIetz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a secure network comprising packet processing units (PPUs), a set of policies, a plurality of visas, and a plurality of internal packets typically covers forms of hardware, software per se, and combinations thereof in view of the ordinary and customary meaning of the terms (and the a set of policies, a plurality of visas, and a plurality of internal packets are customarily only software per se), particularly when the specification is silent. Furthermore, with respect to the instant Application, the interpretation of the PPUs as software, per se, is also consistent with the Specification, paragraph 0261. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers software per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter, as software per se does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter). Software is descriptive material that can be considered statutory ONLY if it is both functional and clearly embodied as structural, non-transitory matter; See MPEP § 2106.03(I). Even if the software of the claim(s) is functional, it is not clearly defined as being embodied as structural, non-transitory matter and is therefore not statutory.
The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US Pre-Grant Publication No. 20160248682-A1, hereinafter “Lee”).
With respect to independent claim 1, Lee discloses a secure communication system enabling secure transport of information comprising:
a secure network comprising one or more packet processing units (PPUs) {paras. 0049-0051 and 0081-0108: a “packet … passes through a packet data network gateway (P-GW) on its way from its source to its destination. At the P-GW, the packet can be inspected/reviewed/analyzed”}.
a set of policies {paras. 0061-0064, 0085-0087, 0091, and 0099: “one or more policies”}.
a plurality of visas, each issued based on said policies {paras. 0085-0087, 0091, and 0099: “derive the network token in view of an application access policy”}.
a plurality of internal packets within which said secure network transports said information, wherein each of said internal packets is associated with one of said visas {paras. 0063 and 0079: “gateway device can verify that the packet, associated with a network token, is heading toward a server of a given service provider”}.
wherein a PPU among said PPUs transmits an internal packet among said internal packets only if allowed by said policies as specified by the visa associated with said internal packet {paras. 0051, 0090, and 0107: “Uplink network tokens and/or downlink network tokens may be used by a P-GW to enforce network policies”, wherein “Upon successful verification [of the token], the packet may be sent to its destination. If the verification is not successful, the packet can be discarded”}.
With respect to dependent claim 2, Lee discloses additionally comprising: a visa service issuing said visa {para. 0023, 0085-0087, 0139, & 0212: “a gateway device (e.g., a P-GW)”, e.g. “P-GW 510”, wherein “P-GW 510 may derive 522 the network token”}.
With respect to dependent claim 3, Lee discloses wherein said visas comprises an endorsement from said visa service {paras. 0086 and 0099: “the network token may be derived as” an HMAC including “KP-GW”, which “is a secret key of P-GW”}.
With respect to dependent claim 4, Lee discloses wherein said endorsement indicates endorsement from multiple sub-servers among a plurality of sub-servers comprising said visa service {paras. 0207-0232 and 0253: “exemplary gateway device” may be implemented as “hardware and/or software modules” that are “distributed across multiple devices”}.
With respect to dependent claim 5, Lee discloses wherein said multiple sub-servers comprise a required fraction of said plurality of sub-servers {paras. 0207-0232 and 0253: all “hardware and/or software modules” are expected to operate in unison in generating or validating tokens}.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
The reference Kolbe et al. (US Pre-Grant Publication No. 20180302479-A1) discloses a core network that requires packets to comprise a valid token traverse a secured network.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William (“Bill”) Korzuch can be reached at 571-272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491
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