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 .
1. Instant application is a Continuation of Application No. 18/438147, now U.S. Patent 12,542,660; which is a Continuation of Application No. 18/111669, now U.S. Patent 11,973,864; which is a Continuation of Application No. 17/647812, now U.S. Patent 11,606,204; which is a Continuation of Application No. 16/593561, now U.S. Patent 11,258,595; which is a Continuation of Application No. 16/036506, now U.S. Patent 10,530,575; which is a Continuation of Application No. 15/583968, now U.S. Patent 10,057,059; which is a Continuation of Application No. 15/010905, now U.S. Patent 9,641,327; which is a Continuation of Application No. 14/055606, now U.S. Patent 9,276,740. Claims 1-19 have been examined.
Information Disclosure Statement
2. The information disclosure statements (IDS) submitted on 08/01/2025 and 02/10/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being 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.
3. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12542660. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart I below.
4. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11973864. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart I below.
5. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11606204. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart II below.
6. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11258595. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart II below.
7. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10530575. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart III below.
8. Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10057059. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart III below.
Chart I
Instant Application
12542660
11973864
1. A mobile device for communicating with a wireless network, the mobile device comprising:
a memory configured to store:
a. a first public key associated with the wireless network;
b. an identity associated with the mobile device, wherein the identity comprises a permanent identifier;
c. cryptographic algorithms comprising a symmetric ciphering algorithm, an elliptic curve integrated encryption scheme (ECIES), and a key derivation function using American National Standards Institute standard X-9.63; and
d. a pre-shared secret key;
a random number generator configured to generate a random number for a second private key;
at least one processor connected to the memory configured to:
a. generate a second public key using (i) the cryptographic algorithms and (ii) the second private key;
b. generate a symmetric ciphering key using (i) the ECIES with the first public key and the second private key and (ii) the key derivation function;
c. generate module encrypted data using the symmetric ciphering key and the symmetric ciphering algorithm, wherein the module encrypted data includes the identity; and
d. generate a value for a message digest using at least the pre-shared secret key; and
a radio configured to:
a. transmit, to the wireless network, a first message comprising the module encrypted data and the second public key, wherein a server for the wireless network mutually derives the symmetric ciphering key using at least the second public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the identity;
b. transmit, to the wireless network, a second message comprising the value for the message digest, in order to authenticate the mobile device with the wireless network.
1. A system comprising: …a mobile device comprising: (1) one or more processors; and, (2) a non-transitory computer-readable memory …
(i) storing
a server public key,
a module identity…
wherein the module identity comprises a permanent identifier for the mobile device
cryptographic algorithms…
includes a symmetric ciphering algorithm; (ii) deriving a module private key and a corresponding module public key associated with the mobile device using the cryptographic algorithms; (iii) deriving a symmetric ciphering key using (i) an elliptic curve integrated encryption scheme with the server public key, and the module private key and (ii) an American National Standards Institute standard X-9.63 key derivation function
a pre-shared secret key stored in memory, and
claim 9 – random number generator…
…(ii) deriving a module private key and a corresponding module public key associated with the mobile device using the cryptographic algorithms …
deriving a symmetric ciphering key using (i) an elliptic curve integrated encryption scheme with the server public key and the module private key…
(iv) denerating module encrypted data using the symmetric ciphering key and the symmetric ciphering algorithm, wherein the module encrypted data includes the module identity;
… using a message digest with the pre-shared secret key…
(v) dending a message to the server for the wireless network, the message comprising the module encrypted data and the corresponding module public key, wherein the server mutually derives the symmetric ciphering key using at least the module public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the module identity; and
(vi) authenticating the mobile device with the wireless network using a message digest with the pre-shared secret key.
1. A method comprising:
(i) storing
a server public key…
wherein the module identity comprises a permanent identifier for the mobile device…
the cryptographic algorithms includes a symmetric ciphering algorithm… an elliptic curve integrated encryption scheme with the server public key and the module private key and (ii) an American National Standards Institute standard X-9.63 key derivation function…
a pre-shared secret key stored in memory
claim 9 – random number generator…
…(2) deriving a module private key and a corresponding module public key associated with the mobile device using the cryptographic algorithms…
(3) deriving a symmetric ciphering key using (i) an elliptic curve integrated encryption scheme with the server public key and the module private key …
(4) generating module encrypted data using the symmetric ciphering key and the symmetric ciphering algorithm, wherein the module encrypted data includes the module identity…
… using a message digest with the pre-shared secret key…
(5) sending a message to a server for a wireless network, the message comprising the module encrypted data and the corresponding module public key, wherein the server mutually derives the symmetric ciphering key using at least the module public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the module identity; and
(6) authenticating the mobile device with the wireless network using a message digest with the pre-shared secret key.
Claim 2
Claim 10 - radio
Claim 10 - radio
Claim 3
Claim 1 – server public key
Claim 1 – server public key
Claim 4
Claim 1 – module private key
Claim 1 – module private key
Claim 5
Claim 2
Claim 2
Claim 6
Claim 1 – mutually derives
Claim 1 – mutually derives
Claim 7
Claim 3
Claim 3
Claim 8
Claim 5
Claim 5
Claim 9
Claim 11
Claim 11
Claim 10
Claim 19
Claim 19
Claim 11
Claim 12
Claim 18
Claim 18
Claim 13
Claim 20
Claim 20
Claim 14
Claim 16
Claim 16
Claim 15
Claim 8
Claim 8
Claim 16
Claim 10
Claim 10
Claim 17
Claim 7
Claim 7
Claim 18
Claim 3
Claim 3
Claim 19
Claims 1-20 of U.S. Patent 12542660 contain every element of claims 1-10 and 12-18 of the instant application. It would have been obvious to one of ordinary skill in the art to combine the different embodiments of claims 1-20 of 12542660 to teach claims 1-10 and 12-18 of the instant application because combining prior art elements (i.e. claims of 12542660) according to known methods would yield the predictable results of a server authenticating a mobile device using a pre-shared secret and public/private keys.
For claims 11 and 19, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the secure machine to machine communication method of 12542660 and the various elements of claims 11 and 19 of the instant application. It would have been obvious because combining the secure machine to machine communication of 12542660 and known devices and standards (e.g. 802.11, UDP packets, IMSI, server decrypting a message and using a database of identifiers) would yield the predictable results of using a secure communication method (12542660) with well-known technologies in the art.
Claims 1-20 of U.S. Patent 11973864 contain every element of claims 1-10 and 12-18 of the instant application. It would have been obvious to one of ordinary skill in the art to combine the different embodiments of claims 1-20 of 11973864 to teach claims 1-10 and 12-18 of the instant application because combining prior art elements (i.e. claims of 11973864) according to known methods would yield the predictable results of a server authenticating a mobile device using a pre-shared secret and public/private keys.
For claims 11 and 19, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the secure machine to machine communication method of 11973864 and the various elements of claims 11 and 19 of the instant application. It would have been obvious because combining the secure machine to machine communication of 11973864 and known devices and standards (e.g. 802.11, UDP packets, IMSI, server decrypting a message and using a database of identifiers) would yield the predictable results of using a secure communication method (11973864) with well-known technologies in the art.
Chart II
Instant Application
11606204
11258595
1. A mobile device for communicating with a wireless network, the mobile device comprising:
a memory configured to store:
a. a first public key associated with the wireless network;
b. an identity associated with the mobile device, wherein the identity comprises a permanent identifier;
c. cryptographic algorithms comprising a symmetric ciphering algorithm, an elliptic curve integrated encryption scheme (ECIES), and a key derivation function using American National Standards Institute standard X-9.63; and
d. a pre-shared secret key;
a random number generator configured to generate a random number for a second private key;
at least one processor connected to the memory configured to:
a. generate a second public key using (i) the cryptographic algorithms and (ii) the second private key;
b. generate a symmetric ciphering key using (i) the ECIES with the first public key and the second private key and (ii) the key derivation function;
c. generate module encrypted data using the symmetric ciphering key and the symmetric ciphering algorithm, wherein the module encrypted data includes the identity; and
d. generate a value for a message digest using at least the pre-shared secret key; and
a radio configured to:
a. transmit, to the wireless network, a first message comprising the module encrypted data and the second public key, wherein a server for the wireless network mutually derives the symmetric ciphering key using at least the second public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the identity;
b. transmit, to the wireless network, a second message comprising the value for the message digest, in order to authenticate the mobile device with the wireless network.
1. A mobile device comprising: (a) at least one processor; and (b) at least one computer-readable medium…
(1) storing
a server public key,
a module identity…
wherein the module identity comprises a permanent identifier for the mobile device
cryptographic algorithms…
includes a symmetric ciphering algorithm; (ii) deriving a module private key and a corresponding module public key associated with the mobile device using the cryptographic algorithms; (iii) deriving a symmetric ciphering key using (i) an elliptic curve integrated encryption scheme with the server public key, and the module private key and (ii) an American National Standards Institute standard X-9.63 key derivation function
a pre-shared secret key stored in memory, and
claim 9 – random number generator…
…(2) deriving a module private key and a corresponding module public key associated with the mobile device using the cryptographic algorithms …
deriving a symmetric ciphering key using (i) an elliptic curve integrated encryption scheme with the server public key and the module private key…
(4) generating module encrypted data using the symmetric ciphering key and the symmetric ciphering algorithm, wherein the module encrypted data includes the module identity;
… using a message digest with the pre-shared secret key…
(5) sending a message to the server for the wireless network, the message comprising the module encrypted data and the corresponding module public key, wherein the server mutually derives the symmetric ciphering key using at least the module public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the module identity; and
(6) authenticating the mobile device with the wireless network using a message digest with the pre-shared secret key.
1. A method to support secure machine to machine communications comprising:
(a) storing…
…a server public key…
…module identity information comprises a permanent identifier for the at least one module…
…using an Elliptic Curve Diffie-Hellman algorithm based at least on the first module public key and the server private key, wherein the derived shared secret key is derived by the first module using the Elliptic Curve Diffie-Hellman algorithm…
…a pre-shared secret key…
Claim 15 – random number generator…
…
(b) receiving, by the at least one server from a first module, a first module public key derived by the first module, parameters associated with the first module public key, and first module encrypted data, wherein the first module encrypted data comprises data encrypted at the first module…
(c) deriving, by the at least one server, a shared secret key using an Elliptic Curve Diffie-Hellman algorithm based at least on the first module public key and the server private key, wherein the derived shared secret key is derived by the first module using the Elliptic Curve Diffie-Hellman algorithm based at least on a server public key corresponding to the server private key and a first module private key corresponding to the first module public key…
(e) authenticating the first module with the first module identity using the pre-shared secret key and a digest algorithm, wherein the digest algorithm uses a challenge from the at least one server and a hash value from the first module.
Claim 2
Claim 10 - radio
Claim 3
Claim 1 – server public key
Claim 1 – server public key
Claim 4
Claim 1 – module private key
Claim 1 – module private key
Claim 5
Claim 2
Claim 3
Claim 6
Claim 1 – mutually derives
Claim 1 – derives
Claim 7
Claim 3
Claim 1 -shared secret key
Claim 8
Claim 5
Claim 4
Claim 9
Claim 11
Claim 16
Claim 10
Claim 19
Claim 11
Claim 1 - decrypts
Claim 12
Claim 18
Claim 13
Claim 20
Claim 11
Claim 14
Claim 16
Claim 15
Claim 8
Claim 16
Claim 10
Claim 17
Claim 7
Claim 1 - parameters
Claim 18
Claim 3
Claim 19
Claim - storing
Claims 1-20 of U.S. Patent 11606204 contain every element of claims 1-10 and 12-18 of the instant application. It would have been obvious to one of ordinary skill in the art to combine the different embodiments of claims 1-20 of 11606204 to teach claims 1-10 and 12-18 of the instant application because combining prior art elements (i.e. claims of 11606204) according to known methods would yield the predictable results of a server authenticating a mobile device using a pre-shared secret and public/private keys.
For claims 11 and 19, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the secure machine to machine communication method of 11606204 and the various elements of claims 11 and 19 of the instant application. It would have been obvious because combining the secure machine to machine communication of 11606204 and known devices and standards (e.g. 802.11, UDP packets, IMSI, server decrypting a message and using a database of identifiers) would yield the predictable results of using a secure communication method (11606204) with well-known technologies in the art.
Claims 1-18 of U.S. Patent 11258595 contain every element of claims 1, 3-9, 11, 13, 17 and 19 of the instant application. It would have been obvious to one of ordinary skill in the art to combine the different embodiments of claims 1-18 of 11258595 to teach claims 1, 3-9, 11, 13, 17 and 19 of the instant application because combining prior art elements (i.e. claims of 11258595) according to known methods would yield the predictable results of a server authenticating a mobile device using a pre-shared secret and public/private keys.
For claims 2, 10, 12, 14-16 and 18, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the secure machine to machine communication method of 11258595 and the various elements of claims 2, 10, 12, 14-16, 18 and 20 of the instant application. It would have been obvious because combining the secure machine to machine communication of 11258595 and known devices and standards (e.g. 802.11, UDP packets, IMSI, server decrypting a message and using a database of identifiers) would yield the predictable results of using a secure communication method (11258595) with well-known technologies in the art.
Chart III
Instant Application
10530575
10057059
1. A mobile device for communicating with a wireless network, the mobile device comprising:
a memory configured to store:
a. a first public key associated with the wireless network;
b. an identity associated with the mobile device, wherein the identity comprises a permanent identifier;
c. cryptographic algorithms comprising a symmetric ciphering algorithm, an elliptic curve integrated encryption scheme (ECIES), and a key derivation function using American National Standards Institute standard X-9.63; and
d. a pre-shared secret key;
a random number generator configured to generate a random number for a second private key;
at least one processor connected to the memory configured to:
a. generate a second public key using (i) the cryptographic algorithms and (ii) the second private key;
b. generate a symmetric ciphering key using (i) the ECIES with the first public key and the second private key and (ii) the key derivation function;
c. generate module encrypted data using the symmetric ciphering key and the symmetric ciphering algorithm, wherein the module encrypted data includes the identity; and
d. generate a value for a message digest using at least the pre-shared secret key; and
a radio configured to:
a. transmit, to the wireless network, a first message comprising the module encrypted data and the second public key, wherein a server for the wireless network mutually derives the symmetric ciphering key using at least the second public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the identity;
b. transmit, to the wireless network, a second message comprising the value for the message digest, in order to authenticate the mobile device with the wireless network.
Claim 1
(2)…memory…
(b) server private key…
derived shared secret key…module identity
(a) receiving…
(a) (ii) …temporary module private key
(b) generating…
(c) receiving….
(c) receiving…
(d) authenticating…
Claim 1
(b) server public key…
(a)…module identity…
(c) derived shared secret key…
(a) receiving…
(a) (ii) …temporary module private key
(c) generating derived secret key…
.
(c) receiving….
(c) receiving….
(e) authenticating…
Claim 2
Claim 3
Claim 1 – server public key
Claim 1 – server public key
Claim 4
Claim 1 – module private key
Claim 1 – module private key
Claim 5
Claim 6
Claim 1 – common derived
Claim 1 – common derived
Claim 7
Claim 8
Claim 9
Claim 10
Claim 11
Claim 1 - decrypting
Claim 1 - decrypting
Claim 12
Claim 13
Claim 14
Claim 15
Claim 16
Claim 17
Claim 6
Claim 6
Claim 18
Claim 19
Claims 1-9 of U.S. Patent 10530575 contain every element of claims 1, 3-4, 6, 11 and 17 of the instant application. It would have been obvious to one of ordinary skill in the art to combine the different embodiments of claims 1-9 of 10530575 to teach claims 1, 3-4, 6, 11 and 17 of the instant application because combining prior art elements (i.e. claims of 10530575) according to known methods would yield the predictable results of a server authenticating a mobile device using a pre-shared secret and public/private keys.
For claims 2, 5, 7-10, 12-16, 18 and 19, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the secure machine to machine communication method of 10530575 and the various elements of claims 2, 5, 7-10, 12-16, 18 and 19 of the instant application. It would have been obvious because combining the secure machine to machine communication of 10530575 and known devices and standards (e.g. 802.11, UDP packets, IMSI, server decrypting a message and using a database of identifiers) would yield the predictable results of using a secure communication method (10530575) with well-known technologies in the art.
Claims 1-9 of U.S. Patent 10057059 contain every element of claims 1, 3-4, 6, 11 and 17 of the instant application. It would have been obvious to one of ordinary skill in the art to combine the different embodiments of claims 1-9 of 10057059 to teach claims 1, 3-4, 6, 11 and 17 of the instant application because combining prior art elements (i.e. claims of 10057059) according to known methods would yield the predictable results of a server authenticating a mobile device using a pre-shared secret and public/private keys.
For claims 2, 5, 7-10, 12-16, 18 and 19, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the secure machine to machine communication method of 10057059 and the various elements of claims 2, 5, 7-10, 12-16, 18 and 19 of the instant application. It would have been obvious because combining the secure machine to machine communication of 10057059 and known devices and standards (e.g. 802.11, UDP packets, IMSI, server decrypting a message and using a database of identifiers) would yield the predictable results of using a secure communication method (10057059) with well-known technologies in the art.
Allowable Subject Matter
9. Claims 1-19 would be allowable with timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the nonstatutory double patenting rejection(s), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
For independent claim 1, the prior art of record, alone or in combination, fails to teach the following limitations in conjunction with the rest of the claimed limitations:
a memory configured to store:
a. a first public key associated with the wireless network; b. an identity associated with the mobile device, wherein the identity comprises a permanent identifier; c. cryptographic algorithms comprising a symmetric ciphering algorithm, an elliptic curve integrated encryption scheme (ECIES), and a key derivation function using American National Standards Institute standard X-9.63; and d. a pre-shared secret key; …:a. transmit, to the wireless network, a first message comprising the module encrypted data and the second public key, wherein a server for the wireless network mutually derives the symmetric ciphering key using at least the second public key, and wherein the wireless network selects the pre-shared secret key for the mobile device using the identity; b. transmit, to the wireless network, a second message comprising the value for the message digest, in order to authenticate the mobile device with the wireless network
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
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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.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/Primary Examiner, Art Unit 2407
Prosecution Insights