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
This action is in response to the communication filed on 5/1/2025.
Claims 1-20 are examined and rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/27/2025.
Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The non-statutory 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 non-statutory 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) as explained below. 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 non-statutory 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.
Double Patent Analysis of Instant application 19,195,866 and US Patent 12,445,854.
Claims 1-20 of instant application are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent 12,445,854. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is covered by the U.S. Patent 12,445,854.
This is a non-statutory double patenting rejection. The assignee of the application and the patent is the same.
Exemplary claim 1 with the substantive differences between the conflicting claim 1 identified in bold / underlined is outlined below in the following comparison table.
Claim Comparison Table
Instant Application
19,195,866
US Patent
12,445,854
1. A method comprising:
receiving a request, the request generated based on a mobile communication device attempting to establish a wireless communication link via a first wireless network supported by a first wireless access point;
determining that a user operating the mobile communication device subscribes to use of a second wireless network supported by the first wireless access point; and
based on the determination that the user of the mobile communication device subscribes to use of the second wireless network, producing an access control decision associated with the mobile communication device establishing the wireless communication link via the first wireless network.
1. A method comprising:
receiving communications from a first wireless access point supporting a guest wireless network and a private wireless network, the guest wireless network providing wireless access to non-subscribers, the private wireless network providing wireless access to subscribers, the communications indicating an identity of the first wireless access point and an attempt by a user of a mobile communication device to establish a wireless communication link with the first wireless access point via the quest wireless network, the user being a subscriber to the private wireless network;
in response to receiving the communications, obtaining wireless access point identity information associated with the user of the mobile communication device attempting to establish the wireless communication link with the first wireless access point; and
based on the wireless access point identity information, producing a control decision associated with establishing the wireless communication link.
Claim 1 and independent claim(s) of the instant application is broader in all respects than conflicting claim 1 and independent claim(s) of Patent No. U.S. Patent 12,445,854. It is clear that all the elements of independent claims of the instant application are to be found in the patent of independent claims. The difference between the instant application claims and claims of patent claims lies in the fact that the patented claim includes more elements and is thus more specific.
For example, in the instant application claim 1 recites “ user subscribing to use of second wireless network supported by the first wireless access point; and based on the determination that the user of the mobile communication device subscribes to use of the second wireless network, producing an access control decision associated with the mobile communication device establishing the wireless .. along with other steps’ ‘. Thus, independent claim(s) of instant application are broader than US Patent ‘854 claim 1.
This is non-statutory obvious type double patenting rejection since the conflicting claims have been patented.
A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or 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 prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of 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).
This is non-statutory obvious type double patenting rejection.
Claim Rejections - 35 USC § 103
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable by U.S. Publication 2021/0112488 to Meredith et al. (hereinafter known as "Meredith”) and U.S. Publication 2023/0007050 to Henry et al. (hereinafter known as "Henry”).
As per claim 1 Meredith teaches, a method comprising: receiving a request, the request generated based on a mobile communication device attempting to establish a wireless communication link via a first wireless network supported by a first wireless access point (Meredith para 26-27 FIG. 2 teaches Access point AP 130 receives an access request from a UE 110 for a networking service eg., a wireless network 120);
determining that a user operating the mobile communication device subscribes to use of a second wireless network supported by the first wireless access point (Meredith para 28-29 teaches the wireless network 120 may set different service levels for users who are authenticated with different identity providers 140 such as multiple wireless networks, Wi-Fi and other types); and
based on the determination that the user of the mobile communication device subscribes to use of the second wireless network, producing an access control decision associated with the mobile communication device establishing the wireless communication link via the first wireless network (Meredith para 32-34 teaches authenticating users for WiFi-based wireless network with baseline access level and restricted access list with different type of service levels with multiple type of networks).
Meredith teaches association of device with access point. Henry further teaches differentiated services in federation-based access network with atleast two different service levels and networks (Henry - Abstract – Fig 1 and para 16-21 teaches network environment 100 that supports differentiated service in a federation-based access network such as wireless network 120 or cellular or Wi-Fi based wireless network offered to users in a public or private venue).
Accordingly, 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 invention taught by Meredith of secure association of device in wireless access point network with the invention of Henry’s teaching of multiple networks access (Henry abstract). The motivation for doing so would be to enhance secure access to multiple networks by user (Henry para 1-2).
As per claim 2 combination of Meredith-Henry teaches, the method as in claim 1, wherein producing the access control decision includes:
producing the access control decision to deny the mobile communication device from establishing the wireless communication link with the first wireless network in response to detecting that the user of the mobile communication device subscribes to use of the second wireless network; and
communicating the access control decision to the mobile communication device (Meredith para 42-45 teaches including credentials, such as a username and/or password of the non-3GPP access point 204 that allow the mobile device 206 to log in or otherwise attach to the non-3GPP access point 204).
As per claim 3 combination of Meredith-Henry teaches, the method as in claim 2, wherein the first wireless network supported by the first wireless access point is a publicly available wireless network; and
wherein the second wireless network supported by the first wireless access point is a private wireless network requiring a subscription (Meredith para 37 teaches private networks for managing subscriber access and for supporting other network functions).
As per claim 4 combination of Meredith-Henry teaches, the method as in claim 1, wherein determining that the user operating the mobile communication device subscribes to use of the second wireless network includes:
communicating a query to a communication management resource operative to produce the access control decision, the query including an identity of the first wireless access point and an identity of the mobile communication device (Meredith para 26-27 teaches subscriber equipment to a 3GPP and non-3GPP wireless access point based on an identity of the subscriber equipment and a utilization of a 3GPP radio providing coverage that overlaps wireless access point).
As per claim 5 combination of Meredith-Henry teaches, the method as in claim 4 further comprising:
in response to communicating the query to the communication management resource, receiving the access control decision from the communication management resource; and
wherein the access control decision indicates to deny the establishing of the wireless communication link in response to detecting that the user of the mobile communication device subscribes to use of the second wireless network (Meredith para 39-41 teaches core network 207 with subscriber database to identify subscribers, subscriber equipment and/or other subscription information, such as subscribed services, levels of services for granting or denying access).
As per claim 6 combination of Meredith-Henry teaches, the method as in claim 5 further comprising:
communicating the access control decision from the first wireless access point to the mobile communication device, the access control decision prompting the mobile communication device to establish the wireless communication link with the first wireless access point via the second wireless network instead of the first wireless network (Meredith para 38-40 teaches wireless local area network in accordance with 3GPP wireless coverage area 203 and non-3GPP access point 204, e.g., WiFi access point, provides non-3GPP service, in a corresponding non-3GPP wireless coverage area 205).
As per claim 7 combination of Meredith-Henry teaches, the method as in claim 1, wherein determining that the user operating the mobile communication device subscribes to use of the second wireless network includes:
mapping an identity of the mobile communication device to an identity value indicative of an identity of the first wireless access point (Meredith para 39-41 teaches core network 207 with subscriber database to identify subscribers, subscriber equipment and/or other subscription information, such as subscribed services, levels of services for granting or denying access).
As per claim 8 combination of Meredith-Henry teaches, the method as in claim 7 further comprising: producing the access control decision to deny the mobile communication device establishing the wireless communication link with the first wireless network in response to detecting that the identity value indicates the identity of the first wireless access point (Meredith para 42-44 teaches the non-3GPP access point 204 may identify the mobile device, e.g., according to a unique identifier identifying a mobile device and/or subscriber for the purpose of subscribed services, levels of services for granting or denying access).
As per claim 9 combination of Meredith-Henry teaches, the method as in claim 1, wherein the request includes an identity of the mobile communication device and an identity of the first wireless network (Meredith para 42-44 teaches identify the mobile device, e.g., according to a unique identifier identifying a mobile device and/or subscriber along with subscriber identity, the non-3GPP access point 204 may identify an associated mobile service provider).
As per claim 10 combination of Meredith-Henry teaches, the method as in claim 9, wherein determining that the user operating mobile communication device subscribes to use of the second wireless network includes:
deriving a wireless access point identity value based on an identity of the mobile communication device; and
detecting that the wireless access point identity value indicates an identity of the first wireless access point (Meredith para 42-45 teaches the mobile device 206 may discover the non-3GPP access point 204 when within the non-3GPP wireless coverage area 205 and identify the mobile device, e.g., according to a unique identifier identifying a mobile device and/or subscriber, such as an international mobile subscriber identity (IMSI) value obtained from the mobile device 206. Along with subscriber identity).
Claim 11,
Claim 11 is rejected in accordance with claim 1.
Claim 12,
Claim 12 is rejected in accordance with claim 2.
Claim 13,
Claim 13 is rejected in accordance with claim 3.
Claim 14,
Claim 14 is rejected in accordance with claim 4.
Claim 15,
Claim 15 is rejected in accordance with claim 5.
Claim 16,
Claim 16 is rejected in accordance with claim 6.
Claim 17,
Claim 17 is rejected in accordance with claim 7.
Claim 18,
Claim 18 is rejected in accordance with claim 8.
Claim 19,
Claim 19 is rejected in accordance with claim 9.
Claim 20,
Claim 20 is rejected in accordance with claim 10.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Meredith et al US Publication 20210112488
Henry et al US Publication 20230007050
Andrews et al US Publication 20220124486
Zhu et al US Patent 11178125
Manroa et al US Patent 11706823
Salkini et al US Patent 11057771
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRAL S LAKHIA whose telephone number is (571)270-3363. The examiner can normally be reached on 8 am - 6 pm.
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/VIRAL S LAKHIA/Primary Examiner, Art Unit 2431
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