DETAILED ACTION
Claims 1-20 are presented on 04/29/2025 for examination on merits. Claims 1, 11, and 19 are independent base claims.
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 .
Examiner's Instructions for filing Response to this Office Action
When the Applicant submits amendments regarding to the claims in response the Office Action, the Examiner would appreciate Applicant if a clean copy of the claims is provided to facilitate the prosecution which otherwise requires extra time for editing the marked-up claims from OCR.
Please submit two sets of claims:
Set #1 as in a typical filing which includes indicators for the status of claim and all marked amendments to the claims; and
Set #2 as an appendix to the Arguments/Remarks for a clean version of the claims which has all the markups removed for entry 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.
First,
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Patent No. US 12,316,670 B2 (USPAT 670).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent contain every element of the claims of the instant
application and as such anticipate the claims of the instant application.
USPAT 670 anticipates claim 1:
A method for secure communication (USPAT 670, CLM. 1: A method for securing one or more devices in a network), the method comprising:
receiving, by malware detection logic executed by a secured device residing in a home network, a message from an unsecured device of a first network, the message intended for a destination device in the home network (USPAT 670, CLM. 1: receiving, at a secured device on a home network, a message from an unsecured device, wherein the message is intended for a destination device);
establishing, by the malware detection logic, a secure communication channel with the unsecured device in view of a security level associated with the malware detection logic (USPAT 670, CLM. 1: establishing, by malware detection logic of the secured device, a secure communication channel between the malware detection logic of the secured device and the security client of the destination device);
receiving, by the malware detection logic, an indication that the security level associated with the malware detection logic has changed (USPAT 670, CLM. 1: the malware detection logic… to determining that the message includes the malware… and notifying the security client of the destination device that the message);
discontinuing a session associated with the secure communication channel in view of the indication (USPAT 670, CLM. 1: the message [that] includes the malware … will not be transmitted, meaning discontinuing a session associated with the secure communication channel in view of the indication of malware); and
preventing an application of the destination device from processing the message (USPAT 670, CLM. 1: responsive to determining that the message includes the malware, informing one or more other devices of the home network to re-route messages through the malware detection logic. Note that re-routing is for preventing an application of the destination device from processing the message).
Independent claims 11 and 19 are rejected for the same reason as claim 1, because they each recites the same limitations as claim 1 in similar language.
Regarding dependent claims of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Secondly,
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Patent No. US 10,728,278 B2 (hereinafter “USPAT 278”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent contain every element of the claims of the instant
application and as such anticipate the claims of the instant application.
USPAT 278 anticipates claim 1:
A method for secure communication, the method comprising:
receiving, by malware detection logic executed by a secured device residing in a home network, a message from an unsecured device of a first network, the message intended for a destination device in the home network (USPAT 278, CLM. 1: identifying and processing a message by the second device; see also CLMS. 13-14: receiving a message from an unsecured device);
establishing, by the malware detection logic, a secure communication channel with the unsecured device in view of a security level associated with the malware detection logic (USPAT 278, CLMS. 1 and 5: detect, by the detection logic, whether the message includes malware, wherein the network to which the second device is connected is a second network that is different from the first network);
receiving, by the malware detection logic, an indication that the security level associated with the malware detection logic has changed (USPAT 278, CLM. 13: conducting…one or more validation tests … to determining that the message includes the malware… and notifying the security client of the destination device that the message);
discontinuing a session associated with the secure communication channel in view of the indication (USPAT 278, CLM. 1: the message [that] includes the malware … will not be processed, thus meaning any session associated with it discontinued); and
preventing an application of the destination device from processing the message (USPAT 278, CLM. 15: prevent the message including malware from being processed by the second device).
Independent claims 11 and 19 are rejected for the same reason as claim 1, because they each recites the same limitations as claim 1 in similar language.
Regarding dependent claims of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Allowable Subject Matter
Claims 1-20 are allowable over prior art for the following reasons:
Independent claims 1, 11, and 19 each repeat a substantial portion of the allowable subject matter of the parent case Application No. 18/495956, filed 10/27/2023, now U.S. Patent # 12,316,670. The cited features, in combination with the other limitations in the claim(s), are not anticipated by, nor made obvious over the prior art of record.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the prior art additionally discloses certain parts of the claim features (See “PTO-892 Notice of Reference Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON ZHAO whose telephone number is (571)272.9953. The examiner can normally be reached on Monday to Friday, 7:30 A.M to 5:00 P.M EST.
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/Don G Zhao/Primary Examiner, Art Unit 2493 06/10/2026
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