DETAILED ACTION
This Office Action is in response to an application filed on June 4, 2025, in which claim 1 is pending, and ready for examination.
Acknowledgement is made of Applicant’s claim for domestic benefit as a Continuation of U.S. Application No. 18/732,988 filed on June 4, 2024, now U.S. Patent No. 12,341,755, which claims benefit as a Continuation of U.S. Application No. 17/062,767 filed on October 5, 2020, now U.S. Patent No. 12,021,837, which claims benefit as a Continuation of U.S. Application No. 16/579,962 filed on September 24, 2019, now U.S. Patent No. 10,834,053.
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 June 4, 2025 was filed before the mailing date of a first Office Action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,834,053. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason(s):
Claim 1 of the instant application is merely a broader recitation of that which is recited in claims 1 of U.S. Patent No. 10,834,053. That is to say, claim 1 of the instant application is anticipated by claim 1 of U.S. Patent No. 10,834,053.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 is rejected as the claimed invention is directed to non-statutory subject matter.
Claim 1 purports to recite a “system”, with said system reciting a single element: “a network arbitration program”. In addition to the system reciting only one component, the foregoing single component is software; claim 1 plainly recites the elements as a program. Thus, the claim recites software per se. A claim that recites no more than software, logic, or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354,1361 (Fed. Cir. 1994). Significantly, "[a]bstract software code is an idea without physical embodiment." Microsoft Corp. v. AT& T Corp., 550 U.S. 437, 449 (2007). Manipulation of data utilizing a computer program (software), no matter its function, is nothing more than the representation of an algorithm or group of algorithms, conceptually no different from a list of steps written down with pencil and paper for execution by a human being. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). The subject matter of claims permitted within 35 U.S.C. 101 must be a machine, a manufacture, a process, or a composition of matter. "[T]he four categories [of §101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful." In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hisada, et al., U.S. Pub. No. 2006/0143702 (hereinafter referred to as Hisada).
With regard to claim 1, Hisada teaches a network arbitration program being operable upon execution by a computer (Hisada, [0019]; disclosed mediating is arbitration) to: generate client data derived at least in part by an algorithm that uniquely identifies the client program, receive server data from the server program over the network (Hisada, [0082]; [0225]), validate the client data against the server data to determine a valid combination of client data and server data (Hisada, [0126]-[0128]; disclosed combination of respective cryptographic keys is combination of client data and server data), and configure a discrete virtual private network connection for the client program and the server program in response to the determination of the valid combination (Hisada, [0016]; [0019]; reference established VPN connection based upon validation of client and server).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. Brant Murphy whose telephone number is (571)272-6433. The examiner can normally be reached Monday - Friday, 8am - 4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at 571-270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. BRANT MURPHY/Primary Examiner, Art Unit 2435
August 8, 2026
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