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 .
DETAILED ACTION
Priority
Acknowledgment is made of applicant's claim for priority based on U.S. application Ser. No. 18/754,444, filed Jun. 26, 2024”, which in turn claims priority to U.S. Provisional Patent Application No. 63/518,617, filed on Aug. 10, 2023.
Information Disclosure Statement
The examiner reviewed IDS document(s) received on 4/18/25 and 12/3/25, carefully considering the art cited within the document(s).
Claims 1-17 have been examined.
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 1-17 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-16 U.S. Patent No. 12,301,561. Although the conflicting claims are not identical, they either recite a concomitance of the claim features, or they are their obvious modifications. Specifically, the claims are essentially a broader version of the patented claims.
For example, compare claims 1, 8 and 13 of the instant application with claims 1, 8 and 9 of the patent. In order to illustrate, the examiner offers comparison of corresponding claims 1.
Instant Claims
USPN 12,301,567
1. A method for verifying an identity of a user over a network, the method comprising:
at a first computing device, obtaining, from a near-field communication device held by an article, an access request for the first computing device to access a network-based service, wherein the first computing device is separate from the article holding the near-field communication device, and wherein the access request is obtained based on confirming biometric information associated with the access request corresponds to
biometric information of the user previously stored within the near-field communication device;
transmitting the access request from the first computing device, over the network, requesting the first computing device receive access to the network-based service; and
granting, by the network, the first computing device access to the network-based service.
1. A method for verifying an identity of a user over a network, the method comprising:
at a first computing device: obtaining, from a near-field communication device held by an article, an access request for the first computing device to access a network-based service, wherein the first computing device is separate from the article holding the near-field communication device, and wherein the access request is obtained based on confirming biometric information associated with the access request corresponds to
previously stored biometric information of the first user,
said confirming biometric information involves the first user entering biometric information into the article holding the near-field communication device, and by the article holding the near-field communication device confirming the entered biometric information matches the previously stored biometric information, said previously stored biometric information being stored in the near-field communication device held by the article;
transmitting the access request from the first computing device, over the network, requesting the first computing device receive access to the network-based service; and
at a second computing device: obtaining, from the article holding the near-field communication device, a second set of information, wherein the second computing device is separate from the article holding the near-field communication device; transmitting a request from the second computing device, over the network, for the second computing device to access the network-based service, wherein the request from the second computing device comprises the second set of information obtained from the article holding the near-field communication device and a location of the second computing device; and receiving confirmation that the second computing device has been granted access to the network-based service based on the network-based service confirming a location match is present between the first and second computing devices and
confirming the first computing device has been granted access to the network-based service, wherein the confirmation comprises a confirmation of the identity of the first user.
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 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.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 4-5, 8-9, 13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in alternative, under 35 U.S.C. 103(a) unpatentable over Grange (USPUB 20170171755).
As per claim 13, Grange teaches at a first computing device, obtaining, from a near-field communication device held by an article, an access request for the first computing device to access a network-based service, wherein the first computing device is separate from the article holding the near-field communication device (Fig. 2), and wherein the access request is obtained based on confirming biometric information associated with the access request corresponds to previously stored biometric information of the user (see para 139); wherein prior to transmitting the access request, authenticating the first computing device using information from the access request and upon authenticating, transmitting the access request from the first computing device, over the network, requesting the first computing device receive access to the network-based service (see para 136, 139, etc.) and in light of para 141-143 the examiner asserts that the limitation the limitation granting, by the network, the first computing device access to the network-based service, if not inherent, would have been at least implicit.
As per claim 14, Grange further teaches prior to the confirming biometric information associated with the access request corresponds to previously stored biometric information of the user, the near-field communication device is prevented from transmitting the access request to the first computing device (para 67) and as per claims 1, 4 and 8-9, they limitations are substantially similar to claims 13-14 and, as a result, they are similarly rejected.
As per claim 2, the user entering biometric information into the article holding the near-field communication device (para 136) and in light of para 141-143, the limitation of claims 5 and 15, if not inherent, would have been at least implicit.
Claims 7, 10-11 and 16-17 are rejected under 35 U.S.C. 103(a) unpatentable over Grange (USPUB 20170171755).
Grange teaches granting the first computing device access to the network-based service as discussed above.
Although not expressly cited, granting for a pre-determined period of time would have been at least [Official Notice taken] was old and well known variant in the art at the time the application was filed offering the benefit of security and efficiency.
Note even if time limit on access was not entertained, in the alternative interpretation, clearly the access could be granted for as long as the resource offering the service was operational (equated to the pre-determined period).
Lastly, although Grange does not expressly teach a plurality of devices, clearly, such solution, if not inherent, would have been at least implicit. Clearly restricting Grange access to resources to only one device would make no sense. A skilled in the art would readily appreciate that users use a plurality of devices, such as personal computer, tablets and smartphones (as noted by Grange in para 59) for network services and, the examiner asserts that even if Grange did not contemplate such solution, not only such solution (Official Notice is taken) would have been old and well known in the art of computing offering the predictable benefit of usability but also extending Grange’s invention to users using a second (different) device during the operation of the network service would leads to the anticipated success and it would not likely be the product of innovation but of ordinary skill and common sense given the benefit of usability and scalability. Thus, the claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp offering the predictable benefit of usability and scalability.
ALTERNATIVE INTERPRETATION/REJECTION of claims 6-7, 10-11 and 16-17.
Claims 6-7, 10-11 and 16-17 are rejected under 35 U.S.C. 103(a) unpatentable over Grange (USPUB 20170171755) in view of Gibbs (USPUB 20210385659).
As per claims 6-7, 11 and 17, Grange does not teach, but in the related art, Gibbs teaches at a second computing device, obtaining, from the article holding the near-field communication device, a set of information, wherein the second computing device is separate from the article holding the near-field communication device (para 35, 42, etc.); transmitting a request from the second computing device, over the network, for the second computing device to access the network-based service, wherein the request from the second computing device comprises the set of information (the reader sends the received data to a server to verify the authenticated device 110, para 35, 42, etc.); and receiving at the second computing device confirmation that the second computing device has been granted access to the network-based service the server (para 57). Furthermore, Gibbs granting the second computing device access to the network-based service at least based on a location of the first computing device (para 44). It would have been obvious to one of ordinary skill in the art at the time the application was filed to extend Grange’s invention to include Gibbs teaching in order to allow secure interaction with the second parties.
Although not expressly cited, granting for a pre-determined period of time would have been at least [Official Notice taken] was old and well known variant in the art at the time the application was filed offering the benefit of security and efficiency.
Note even if time limit on access was not entertained, in the alternative interpretation, clearly the access could be granted for as long as the resource offering the service was operational (equated to the pre-determined period).
Conclusion
Claim 12 overcame of the art of record but it is a subject to the double patenting rejection (see claim 3 of the corresponding patent, for example).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Poltorak whose telephone number is (571) 272-3840. The examiner can normally be reached Monday through Thursday from 9:00 a.m. to 5:00 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached on (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/PIOTR POLTORAK/ Primary Examiner, Art Unit 2433
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