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 04/23/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract contains legal phraseology. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities: The examiner suggest amending the limitation “the said specific key” to recite either “the specific key” or “said specific key”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: The examiner suggest amending claim to include “and” before the last limitation of the claim. Appropriate correction is required.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 16 and 19 of U.S. Patent No. 12,301,715. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim of the instant application are anticipated by the claims of the patent.
Instant Application No. 19/204,524
U.S. Patent No. 12,301,715
1. A method for securing communication within a system having at least one server and at least first and second appliances able to communicate with the server and with each other, the method comprising the steps of:
1. A method for securing communication within a system having at least one server and at least first and second appliances able to communicate with the server and with each other, the method comprising the steps of:
the server sending a specific key to the second appliance encrypted by a one-time encryption key used to secure communication between the second appliance and the server, the said specific key not having yet been used, but being already present on the first of the two appliances,
after a one time encryption key is used during a communication between the first and second appliances, another key is sent to the second appliance encrypted by a one-time encryption key used to secure communication between the second appliance and the server, that is not used, but that is already present on the first of the two appliances, after the second appliance has connected to the server,
allowing a secure communication between the at least first and second appliances, taking place in an insecure environment.
allowing a subsequent secure communication between the at least first and second appliances, and the server, a connection between the server and the at least first and second appliances taking place in an insecure environment.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Makela et al. (US Pub No. 2005/0226420) in view of Kariman et al. (US Pub No. 2015/0229621).
Regarding independent claim 1, Makela teaches a method for securing communication within a system having at least one server and at least first and second appliances able to communicate with the server and with each other, the method comprising the steps of: the server sending a specific key to the second appliance encrypted, the said specific key not having yet been used, but being already present on the first of the two appliances (Makela, page 3, paragraphs 0039-0045; server distributed the indexed encryption keys to the terminal equipment A-D; encrypted keys may be encrypted), allowing a secure communication between the at least first and second appliances (Makela, page 4, paragraphs 0054-0057; encryption keys used for communicating encrypted messages), taking place in an insecure environment (Makela, page 8, paragraphs 0100-0102).
Makela teaches the encryption keys are encrypted (Makela, page 3, paragraph 0045) but does not explicitly teach the server sending a specific key to the second appliance encrypted by a one-time encryption key used to secure communication between the second appliance and the server.
Kariman teaches the server sending a specific key to the second appliance encrypted by a one-time encryption key used to secure communication between the second appliance and the server (Kariman, page 2, paragraphs 0022& 0024 and page 3, paragraphs 0029-0030; server us onetime pad key to encrypt one time pad encryption key and send to device).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed to modify Makela with the teachings of Kariman to encrypt the encryption key with an one time key to provide the advantage of improving deciphering capabilities of modern computing systems (Kariman, page 1, paragraphs 0013-0015).
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tofts et al. (US Patent No. 8,250,363).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAQUEAL D WADE whose telephone number is (571)270-0357. The examiner can normally be reached M-F 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at 571-270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHAQUEAL D WADE-WRIGHT/ Primary Examiner, Art Unit 2407
Prosecution Insights