DETAILED ACTION
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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 12,273,439. Although the claims at issue are not identical, they are not patentably distinct from each other because limitations in both sets of inventions are directed to generating a keystream based on a first key and a first fresh value, generating a first ciphertext packet based on performing an exclusive OR operation using the keystream and a first plaintext packet, and sending the first ciphertext packet.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 2, 6-9, 13-16, and 20 are rejected under 35 U.S.C. 102[a][1] as being anticipated by Merchan et al. (US-20140270163).
a. Referring to claims 1, 7, 8, 14, and 15:
Regarding claims 1, 7, 8, 14, and 15, Merchan teaches a communication apparatus, comprising: at least one processor; and at least one memory coupled to the at least one processor and storing programming instructions for execution by the at least one processor to: generate a keystream based on a first key and a first fresh value, wherein the first fresh value is a number of packets transmitted by the communication apparatus (Para 45…. counter value and key as inputs to generate nonce as the keystream); generate a first ciphertext packet based on performing an exclusive OR operation using the keystream and a first plaintext packet (generating a ciphertext using the nonce with an XOR operation); and send the first ciphertext packet and a truncated first fresh value, wherein the truncated first fresh value is a part of the first fresh value (Para 51 and 52…. send the ciphertext and intermediate smaller counter value).
a. Referring to claims 2, 9, and 16:
Regarding claims 2, 9 and 16, Merchan teaches the communication apparatus according to claim 1, wherein the truncated first fresh value is configured starting from a least significant bit (LSB) of the first fresh value (Para 54…. least significant bit of the intermediate smaller counter value).
a. Referring to claims 6, 13 and 20:
Regarding claims 6, 13 and 20, Merchan teaches the communication apparatus according to claim 1, wherein the generating the first ciphertext packet based on performing an exclusive OR operation using the keystream and the first plaintext packet comprises: generating a message authentication code based on a second key and the first plaintext packet, wherein the message authentication code is used to perform integrity check on the first plaintext packet (Para 48…. MAC for authenticity checking); forming a second plaintext packet based on arranging the first plaintext packet and the message authentication code (Para 79…. optionally generates MAC and encrypts); and generating the first ciphertext packet based on performing an exclusive OR operation using the keystream and the second plaintext packet (see the rejection in claim 1).
Allowable Subject Matter
Claims 3-5, 10-12, 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:
Claims 3-5, 10-12, and 17-19 recites forming a second ciphertext packet based on arranging the first ciphertext packet, the message authentication code, and the truncated first fresh value, and sending the first ciphertext packet and the truncated first fresh value. The prior art fails to teach unique limitation of forming and sending the three values.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZUNNA OKEKE whose telephone number is (571)270-3854. The examiner can normally be reached Mon - Fri 8 - 4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ELENI SHIFERAW can be reached at (571) 272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IZUNNA OKEKE/Primary Examiner, Art Unit 2497
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