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 .
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 04/23/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement has been 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 2-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12294649. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the U.S. Patent No. 12294649 teach all the limitations of the instant application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-18 of U.S. Patent No. 12294649. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the U.S. Patent No. 12294649 teach all the limitations of Claim 2 of the instant application.
Claim 11 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12294649. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the U.S. Patent No. 12294649 teach all the limitations of Claim 11 of the instant application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12294649. Although the claims at issue are not identical, they are not patentably distinct from each other. The claims of the U.S. Patent No. 12294649 teach all the limitations of Claim 17 of the instant application.
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 2-4, 11-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kaur; Samian US 20210195686 (hereinafter Kaur) in view of Cohen; Yiftach et al. US 10243741 (hereinafter Cohen).
As per claim 2, Kaur teaches: A system comprising one or more computers and one or more storage devices on which are stored instructions that are operable, when executed by the one or more computers, to cause the one or more computers to perform operations comprising:
determining, for a wireless device that was connected to a first network and by the system coupled to a second network, whether the wireless device disconnected from the first network and requested access to connect to the second network (an application processor facilitating a switch in a user device connection from a first network to a second network. Kaur: para. 65 and 77), and
in response to determining that the wireless device disconnected from the first network and requested access to connect to the second network, transmitting, to the wireless device (“The application processor may initiate a switch protocol to cause the user device to connect to the second network.” Kaur: para. 65)
Kaur does not explicitly teach; however, Cohen discloses: an acceptance message that a) was encrypted using a first key and b) causes the wireless device to connect to the second network and transmit data across the second network using a second key that is different from the first key (sever utilizes a shared key for encrypting communication with the first device and provides the first device with a third key to communicate with a third device (Cohen: col.1, lines 23-63. Also see Cohen: col. 5, lines 51-62 wherein the method is used in wireless communication.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Kaur with the teachings of Cohen to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to secure network communication.
As per claim 3, the rejection of claim 2 is incorporated herein. Kaur does not explicitly teach; however, Cohen discloses: the acceptance message comprises the second key (the first device receives a third key [second key]), the operations comprising: receiving, from the wireless device and via the second network, the data that was encrypted by the wireless device using the second key (communication with a third device is encrypted using the provided third key. Cohen: col. 11, lines 26-48); and forwarding the encrypted data to another system (Cohen: col. 11, lines 26-48).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Kaur with the teachings of Cohen to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to secure network communication.
As per claim 4, the rejection of claim 2 is incorporated herein. Kaur does not explicitly teach; however, Cohen discloses: encrypting, using the first key, the acceptance message, wherein: transmitting the acceptance message comprises transmitting the encrypted acceptance message ( the message is encrypted using a symmetric key. Cohen: col. 11, lines 26-48).
As per claim 11, this claim defines a computer-readable medium storing instructions corresponding to system claim 2 and does not define beyond limitations of claim 2. Therefore, claim 11 is rejected with the same rational as in the rejection of claim 2.
As per claim 12, this claim defines a computer-readable medium storing instructions corresponding to system claim 3 and does not define beyond limitations of claim 3. Therefore, claim 12 is rejected with the same rational as in the rejection of claim 3.
As per claim 13, this claim defines a computer-readable medium storing instructions corresponding to system claim 4 and does not define beyond limitations of claim 4. Therefore, claim 13 is rejected with the same rational as in the rejection of claim 4.
As per claim 17, this claim defines a method corresponding to system claim 2 and does not define beyond limitations of claim 2. Therefore, claim 17 is rejected with the same rational as in the rejection of claim 2.
As per claim 18, this claim defines a method corresponding to system claim 3 and does not define beyond limitations of claim 3. Therefore, claim 18 is rejected with the same rational as in the rejection of claim 3.
As per claim 19, this claim defines a method corresponding to system claim 4 and does not define beyond limitations of claim 4. Therefore, claim 19 is rejected with the same rational as in the rejection of claim 4.
Claims 5, 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaur in view of Cohen and further in view of Huang; Rongsheng et al. US 11882517 (hereinafter Huang).
As per claim 5, the rejection of claim 2 is incorporated herein. The combination of Kaur and Cohen does not explicitly teach; however, Huang discloses: receiving, from the wireless device before transmitting the acceptance message, a request to connect to the second network that includes an identifier for the wireless device, the identifier comprising different data than the first key and the second key (Huang: col. 14, lines 51-67); and
determining, using the identifier for the wireless device, whether to allow the wireless device access to the second network ((Huang: col. 14, lines 51-67); wherein: transmitting the acceptance message is responsive to determining to allow the wireless device access to the second network (Huang: fig. 7).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Kaur and Cohen with the teachings of Huang to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to allow authorized devices to be connected to the network.
As per claim 14, this claim defines a computer-readable medium storing instructions corresponding to system claim 5 and does not define beyond limitations of claim 5. Therefore, claim 14 is rejected with the same rational as in the rejection of claim 5.
As per claim 20, this claim defines a method corresponding to system claim 5 and does not define beyond limitations of claim 5. Therefore, claim 20 is rejected with the same rational as in the rejection of claim 5.
Claims 6, 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kaur in view of Cohen and further in view of Adams, Jr.; Richard L. et al. US 5442708 (hereinafter Adams).
As per claim 6, the rejection of claim 2 is incorporated herein. Kaur does not explicitly teach; however, Cohen discloses: in response to determining that the wireless device disconnected from the first network and requested access to connect to the second network:
generating the second key that is different data than an identifier for the wireless device (Cohen: col. 9, lines 41-43);
The combination of Kaur and Cohen dose not teach; however, Adams discloses: transmitting, to another system that is a destination of the data transmitted by the
wireless device across the second network, data for the second key to enable the other system to decrypt the data transmitted by the wireless device across the second network (col. 10, lines 45-60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Kaur and Cohen with the teachings of Adams to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to allow decryption of data in a different system.
As per claim 7, the rejection of claim 6 is incorporated herein. Kaur teaches: the wireless device was programmed with the identifier during a device configuration process (Kaur: para. 33-34).
As per claim 15, this claim defines a computer-readable medium storing instructions corresponding to system claim 6 and does not define beyond limitations of claim 6. Therefore, claim 15 is rejected with the same rational as in the rejection of claim 6.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kaur in view of Cohen and further in view of KERR; MICHAEL A. et al. US 20160054865 (hereinafter Kerr).
As per claim 8, the rejection of claim 6 is incorporated herein. The combination of Kaur and Cohen does not explicitly teach; however, Kerr discloses: determining whether the wireless device is no longer connected to the second network (“a decryption key may be communicated to the wireless device, when the wireless device is within the geofence associated with the networked client device, e.g. the slot machine. Additionally, the decryption key is removed from the wireless device, when the wireless device is outside the indoor geofence which is defined as described above.” Kerr: para. 241);
in response to determining that the wireless device is no longer connected to the second network, removing the second key from memory of the system (Kerr: para. 241).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Kaur and Cohen with the teachings of Kerr to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to manage device’s access permission.
As per claim 16, this claim defines a computer-readable medium storing instructions corresponding to system claim 8 and does not define beyond limitations of claim 8. Therefore, claim 16 is rejected with the same rational as in the rejection of claim 8.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kaur in view of Cohen and further in view of Nagarajamoorthy; Karthick et al. US 20180167812 (hereinafter Nagarajamoorthy).
As per claim 9, the rejection of claim 2 is incorporated herein. The combination of Kaur and Cohen does not explicitly teach; however, Nagarajamoorthy discloses: receiving, from another device that is a different device than the wireless device and via
the second network, a request for the wireless device to connect to the second network, wherein:
determining whether the wireless device disconnected from the first network and
requested access to connect to the second network is based on receiving the request (Nagarajamoorthy: Abs.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Kaur and Cohen with the teachings of Nagarajamoorthy to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to add new devices to the network.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaur in view of Cohen and further in view of Yamagishi; Yasuaki et al. US 20140298020 (hereinafter Yamagishi).
As per claim 10, the rejection of claim 2 is incorporated herein. The combination of Kaur and Cohen does not explicitly teach; however, Yamagishi discloses: generating an instruction that instructs the wireless device to use only encrypted communication using the second key while connected to the second network (The information processing system further includes a second information processing device that generates a first secret key for encrypting communication performed between the plurality of reception devices connected to the internal network, the reception unit receives a first secret key, which is transmitted from the broadcasting device over the broadcast network on a regular basis and is generated by the second information processing device, and the communication unit encrypts communication with another reception device connected to the internal network, using the received first secret key. Yamagishi: para. 29); and
storing, in memory, data that indicates that the wireless device is encrypting communications with the second key while connected to the second network, wherein: transmitting the acceptance message comprises transmitting the acceptance message that includes the instruction (the common device key is stored in a predetermined area of the memory 48 of the reception device 13 at the time of manufacturing in a factory. Yamagishi: para. 98).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Kaur and Cohen with the teachings of Yamagishi to meet the preceding limitations. One of ordinary skill in the art would have been motivated to make such modification since such techniques were known at the time of the instant invention and would have been applied to secure device communication within the network.
Conclusion
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/GHODRAT JAMSHIDI/ Primary Examiner, Art Unit 2493
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