DETAILED ACTION
This Office action is in response to a Divisional patent application filed by Applicant on 3/3/2025.
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 .
Information Disclosure Statement PTO-1449
The Information Disclosure Statement submitted by applicant on 3/3/2025 has been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
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.
Claim 1–17 rejected on the ground of nonstatutory obvious-type double patenting as being unpatentable over claims 1 and 14 of US 12,267,327 B2, issued Apr. 1, 2025. Although the claims at issue are not identical, they are not patentably distinct from each other. The only differences are in the conflicting patent’s employment of and managing response of a block list, whereas the present application is directed toward a broadly claimed action list.
Claim Rejections - 35 USC § 101
The present application, as claimed, satisfies the requirements for patent-eligible subject matter under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
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, 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.
Claims 1–3 rejected under 35 U.S.C. 103 as being unpatentable over Ting (US 2007/0136792 A1, published Jun. 14, 2007) in view of Woodward (US 2013/0031615 A1, published Jan. 31, 2013).
Regarding claim 1, Ting discloses: a system comprising: at least one memory configured to store instructions, a store of credentials for a set of users, an event cache, and an action list (database operating within an authentication system. Ting Figure 3 and ¶ 38.); and at least one processor configured to execute the instructions to cause the system to perform, in response to receiving an authentication request from a requestor address, determining whether credentials of the authentication request are present in the store of credentials (an authentication request including authentication credentials and a MAC address arrives at the authentication server, the system finds records matching the received user-supplied biometric credential in the record. Ting ¶¶ 38–39.), transmitting an authentication failure response to the requestor address if the credentials of the authentication request are not present in the store of credentials (if the received credentials do not match the user-supplied credentials the user is instructed to provide alternative authentication information. Ting ¶ 39.), in response to the requestor address being present in the action list, determine at least one action required for the requestor address and initiate the at least one action (the system determines if there is a match for the received MAC address on record. Ting ¶¶ 38–39. If the address is in the record, the system initiates that action of trying to match the received user-supplied biometric credential in the record. Ting ¶¶ 38–39.), and selectively transmitting an authentication success response to the requestor address in response to the at least one action (if the records contain the credential that the user supplied, the credentials are determined to be valid and the authentication is granted. Ting ¶ 39.).
Ting does not disclose: determining whether the requestor address is present in the action list if the credentials of the authentication request are present in the store of credentials.
However, Woodward does disclose: determining whether the requestor address is present in the action list if the credentials of the authentication request are present in the store of credentials (following receipt of a request for authentication and validation of authentication credentials, the service address is checked based upon previously stored allocated addresses to authorize a service. Woodward ¶¶ 38 and 43.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the authentication server determining whether the address of the requestor matches addresses on record before determining the validity of received user access credentials of Ting with the determining if the address is in an action list if the credentials of the request are present in the store of credentials based upon the teachings of Woodward. The motivation being to use multiple factors such as authentication credentials and managed endpoint address allocation to determine how to authorize roaming services on a computer network. Woodward ¶ 38.
Regarding claim 2, Ting in view of Woodward discloses the limitations of claim 1, wherein the credentials of the authentication request include a username and a hash of a password (Ting ¶ 11.).
Regarding claim 3, Ting in view of Woodward discloses the limitations of claim 2, wherein the determining whether the credentials of the authentication request are present in the store of credentials comprises: determining whether the username of the credentials of the authentication request is present in the store of credentials; recording an identity-not-found failure in the event cache in response to the username not being found in the store of credentials; determining whether the password of the credentials of the authentication request is present in the store of credentials if the username is present in the store of credentials; and recording a password failure event in the event cache in response to the password not being found in the store of credentials (valid authentication credential can be added (recorded) or removed from the subset based upon usage history. Ting ¶¶ 11 and 33.).
Claim 11-17 rejected under 35 U.S.C. 103 as being unpatentable over Ting in view of Woodward in view of Palki (US 2018/0007049 A1, published Jan. 4, 2018).
Regarding claim 11, Ting in view of Woodward discloses the limitations of claim 1, wherein determining the at least one action includes identifying enabled actions for the requester address (if the received credentials do not match the user-supplied credentials the user is instructed to provide alternative authentication information. Ting ¶ 39.).
Ting in view of Woodward does not disclose: the enabled actions including a completely automated public turning test to tell computers and humans apart (CAPTCHA) process and a two-factor authentication process.
However, Palki does disclose: the enabled actions including a completely automated public turning test to tell computers and humans apart (CAPTCHA) process and a two-factor authentication process (various stages of authentication including username and password verification followed by an electronic phone verification mechanism, or depending on the environment where the phone mechanism is unavailable, substituting a CAPTCHA and other factor-based authentication for confirming the user’s identity. Palki ¶ 49.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the authentication server determining whether the address of the requestor matches addresses on record before determining the validity of received user access credentials of Ting with employing a CAPTCHA process and a two-factor process for authentication based upon the teachings of Palki. The motivation being modify the authentication process to account for various levels of security and different network availability conditions. Palki ¶ 49.
Regarding claim 12, Ting in view of Woodward in view of Palki discloses the limitations of claim 11, wherein initiating the at least one action includes performing at least one of the CAPTCHA process or the two-factor authentication process (various stages of authentication including username and password verification followed by an electronic phone verification mechanism, or depending on the environment where the phone mechanism is unavailable, substituting a CAPTCHA and other factor-based authentication for confirming the user’s identity. Palki ¶ 49.).
Regarding claim 13, Ting in view of Woodward in view of Palki discloses the limitations of claim 12, wherein the CAPTCHA process is repeated until the CAPTCHA process is completed successfully (presenting the user with a series of CAPTCHA to ensure the user is who they say they are. Palki ¶¶ 49 and 121.).
Regarding claim 14, Ting in view of Woodward in view of Palki discloses the limitations of claim 12, wherein the authentication success response is transmitted in response to the CAPTCHA process being completed successfully (success results in permitting access. Palki Figure 6, element 622 and ¶¶ 53 and 120–121.).
Regarding claim 15, Ting in view of Woodward in view of Palki discloses the limitations of claim 12, wherein the two-factor authentication process includes sending a second factor to the requestor address; and analyzing an input received after the sending of the second factor to determine if the input matches the second factor (an electronic phone verification mechanism. Palki ¶ 49.).
Regarding claim 16, Ting in view of Woodward in view of Palki discloses the limitations of claim 15, wherein an authentication failure response is transmitted in response to the input not matching the second factor (notification that login attempt failed. Palki ¶ 105.).
Regarding claim 17, Ting in view of Woodward in view of Palki discloses the limitations of claim 15, wherein the authentication success response is transmitted in response to the input matching the second factor (success results in permitting access. Palki Figure 6, element 622 and ¶¶ 53 and 120–121.).
Allowable Subject Matter
Claims 4–10 are rejected above under double patenting. However, in terms of prior art, if Applicant overcomes the double patenting rejection, claims 4–10 would be 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANCE M LITTLE whose telephone number is (571) 270-0408. The examiner can normally be reached on Monday - Friday 9:30am - 5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jung (Jay) Kim can be reached on (571) 272-3804. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VANCE M LITTLE/Primary Examiner, Art Unit 2493
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