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 .
Continuation
This application is a continuation application of US 17/670,375 (filed on Feb. 11, 2022 – now US Patent No. 12,363,544, which is a continuation application of US 15/939,847 (filed on Mar. 29, 2018 – now US Patent No. 11,284,263). The prosecution history and references cited in the above applications have been fully considered.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/939,847, filed on May 8, 2018.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12-21 of US Patent No. 12,363,544. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the conflicting patents contain every element of claims 1-18 of the instant application and thus anticipates the claims of the instant application. Therefore, claims 1-18 of the instant application are not patentably distinct from the earlier patent claims and is unpatentable over obvious-type double patenting. “A later patent claim is not patentably distinct from an earlier claim if the later claim is 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 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).
Claim Rejections - 35 USC § 103
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 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, 2, 4-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/01268471 to Ho (hereinafter, “Ho”) in view of W. R. Claycomb and D. Shin, (hereinafter, “Claycomb”) "Secure device pairing using audio," 43rd Annual 2009 International Carnahan Conference on Security Technology, pp. 77-84 and in further view of US 2008/02687761 to Amendola (hereinafter, “Amendola”).
As per claim 1: Ho discloses: A (wireless devices 10 and 20 [Ho, ¶0016]); wherein the hearing device is configured to: transmit security data of the (all or some master key identifiers (MKID) possessed by a device may be advertised to devices in their beacons, or a first device may probe a second device for current available MKIDs [Ho, ¶0080]); transmit authentication material to the user device, wherein the security data is different from the authentication material (an initiator (“”) composes and sends a message 1 to a responder (“user device”), wherein message 1 specifies a MKID and an I-Nonce to begin a 4-way handshake [Ho, ¶0083]); receive from the user device a first authentication data (a message 2 is received from the responder, wherein message 2 contains a message integrity code (MIC) and a newly generated R-Nonce [Ho, ¶0088]); verify the first authentication data using the processing unit of the (the initiator verifies the MIC from message 2 [Ho, ¶0091-0092]); wirelessly transmit an authentication response to the user device (the initiator responds with a message 3 that includes the same I-Nonce from message 1 and another MIC [Ho, ¶0095]),
Ho does not explicitly disclose, but Claycomb discloses: wherein the authentication response comprises a pseudo random sound signal (“Using our own codec, this [a random number] was encoded into a sequence of audio tones and coupled with additional baseline tones to form an entire message.” [Claycomb, pg. 81, 1st para., left column]; “…our codec randomizes the tones used to represent bit sequences during each transmission…” [Claycomb, pg. 82, 1st para., right column]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the response of message 3 in Ho as an audio encoded message, such as suggested in Claycomb, to improve the overall security in the authentication process of Ho. Audio transmission as a location-limited channel (LLC) ensures that the source of an audio-encoded message is authentic due to requiring physical proximity of the devices. Furthermore, audio transmission as an LLC enables secure transmission of key establishment information between devices. See [Claycomb, pg. 78, III. Approach]
Ho does not describe the initiator as a “hearing” device. However, Amendola discloses: a hearing device (a first Bluetooth device 100 has a limited user interface and can be a headset [Amendola, ¶0015]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to try any type of wireless capable device in Ho, such as a Bluetooth headset disclosed in Amendola, with reasonable expectation of success. Nothing in Ho would have excluded the wireless devices from being Bluetooth headsets as they were common audio peripherals in personal and business computing environments. Thus, it would have been obvious to implement the 4-way handshake with any known wireless capable device to achieve the same predictable result of establishing wireless pairing.
As per claim 2: Ho in view of Claycomb and Amendola disclose all limitations of claim 1. Furthermore, Ho discloses: wherein the hearing device is configured to transmit the security data and the authentication material in separate transmissions (the specified MKID obtain from a separate communications – beacons [Ho, ¶0080]).
As per claim 4: Ho in view of Claycomb and Amendola disclose all limitations of claim 1. Furthermore, Ho discloses: wherein the authentication material comprises a hearing device identifier (the primitives for establishing the PTK via the 4-way handshake includes source and destination EUIs (MAC addresses) [Ho, ¶0034, 0037; Table 4]).
As per claim 5: Ho in view of Claycomb and Amendola disclose all limitations of claim 1. The motivation for incorporating Claycomb in claim 1 is also applicable in claim 5. Therefore, Claycomb discloses: wherein the pseudo random sound signal comprises a tone (encoding in audio tones [Claycomb, pg. 79, 3rd para., right column]).
As per claim 6: Ho in view of Claycomb and Amendola disclose all limitations of claim 5. The motivation for incorporating Claycomb in claim 1 is also applicable in claim 6. Therefore, Claycomb discloses: wherein the tone is a random tone (randomizing the tones [Claycomb, pg. 82, 1st para., right column]).
As per claim 7: Ho in view of Claycomb and Amendola disclose all limitations of claim 1. Furthermore, Ho discloses: wherein the hearing device is further configured to: receive from the user device a second authentication data (responder sends a message 4 that includes the R-Nonce and another MIC [Ho, ¶0099]); and verify the second authentication data (the initiator verifies the MIC from message 4 [Ho, ¶0101]).
As per claim 8: Ho in view of Claycomb and Amendola disclose all limitations of claim 7. Furthermore, Ho discloses: wherein the hearing device is further configured to determine an authentication key if the second authentication data is successfully verified (if the MIC from message 4 is successfully verified, the pairwise temporal key (PTK) or a group temporal key (GTK) is installed [Ho, ¶0081, 0101-0103]).
As per claim 9: Ho in view of Claycomb and Amendola disclose all limitations of claim 7. Furthermore, Ho discloses: wherein the hearing device is further configured to transmit to the user device another authentication response comprising an authentication key identifier indicative of the authentication key if the second authentication data is successfully verified (upon successful completion of the 4-way handshake, a GTKID in a message is distributed to be verified as a unique TKID [Ho, ¶0102-0104]).
As per claim 10: Claim 10 is different in overall scope from claim 1 but recites substantially similar subject matter as claim 1. Specifically, claim 10 is directed to a method corresponding to the hearing device of claim 1. Ho discloses a method of their disclosed system [Ho, ¶0008]. Thus, the responses provided herein and in claim 1 are applicable to claim 10.
As per claim 11: Ho in view of Claycomb and Amendola disclose all limitations of claim 10. The motivation for incorporating Claycomb in claim 1 is also applicable herein. Therefore, Ho in view of Claycomb disclose: wherein the sound signal is transmitted by the hearing device as at least a part of the authentication response after the first authentication data is received by the hearing device (the 4-way handshake consists of four messages that are sent back and forth between two devices, e.g., upon receiving message 2 (containing the “first authentication data”, or the R-Nonce) [Ho, ¶0082; 0089]; in view of Claycomb and previously discussed in claim 1, a message can be audio-encoded to utilize a location-limited channel for transmission).
As per claim 12: Claim 12 incorporates all limitations of claim 11. Claim 12 is directed to a method corresponding to the hearing device of claim 5. Therefore, the responses provided for claims 5 and 11 are equally applicable to claim 12.
As per claim 13: Claim 13 incorporates all limitations of claim 12. Claim 13 is directed to a method corresponding to the hearing device of claim 6. Therefore, the responses provided for claims 6 and 12 are equally applicable to claim 13.
As per claim 14: Claim 14 incorporates all limitations of claim 10. Claim 14 is directed to a method corresponding to the hearing device of claim 7. Therefore, the responses provided for claims 7 and 10 are equally applicable to claim 14.
As per claim 15: Ho in view of Claycomb and Amendola disclose all limitations of claim 10. Furthermore, Ho discloses: wherein the authentication response is transmitted if the first authentication data is successfully verified (if verification of the PTK MIC fails upon receiving message 2, abort the 4-way handshake; otherwise, construct message 3 for transmission [Ho, ¶0089-0094]).
As per claim 16: Claim 16 incorporates all limitations of claim 10. Claim 16 is directed to a method corresponding to the hearing device of claim 2. Therefore, the responses provided for claims 2 and 10 are equally applicable to claim 16.
As per claim 18: Claim 18 incorporates all limitations of claim 10. Claim 18 is directed to a method corresponding to the hearing device of claim 4. Therefore, the responses provided for claims 4 and 10 are equally applicable to claim 18.
Claims 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ho in view of Claycomb in view of Amendola and in further view of US 2012/0257543 to Baum et al. (hereinafter, “Baum”).
As per claim 3: Ho in view of Claycomb and Amendola disclose all limitations of claim 1. Ho in view of Claycomb and Amendola do not explicitly disclose, but Baum discloses: wherein the security data is indicative of an authentication type (a wireless beacon could include the type of security protocols to be employed in a wireless network connection [Baum, ¶0016]).
Thus, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the beacons providing the MKID in [Ho, ¶0080] to further include a type of security protocol to accurately identify the authentication protocol to be applied. This modification would have allowed different types of authentication protocols to be available, thereby enabling a greater range of access across varied devices and networks.
As per claim 17: Claim 17 incorporates all limitations of claim 10. Claim 17 is directed to a method corresponding to the hearing device of claim 3. Therefore, the responses provided for claims 3 and 10 are equally applicable to claim 17.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2012/0266221: A device pairing protocol utilizes a sound channel to receive a response message to a challenge message. See ¶0078.
US 2003/0065918: Audio is used to transmit a random bit and response to a challenge. See ¶0073.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT B LEUNG whose telephone number is (571)270-1453. The examiner can normally be reached Mon - Thurs: 10am-7pm ET.
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/ROBERT B LEUNG/Primary Examiner, Art Unit 2494
1 Cited in the IDS filed 4/02/2025.
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