Remarks
Claims 1-20 are pending.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/992,022, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 15 is directed to a medium that comprises “one or more instructions that, when executed by one or more processors of a device, cause the device to:” perform a variety of functions. The parent application nowhere discusses any single (i.e. “one .. instruction[]” instruction that could possibly perform everything in claim 15, or dependent claims 16-20.
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.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,425,407. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent includes all subject matter in the current claims with additional subject matter. For example, claim 1 of the patent includes everything in claim 1 of the instant application, plus additional subject matter (e.g., receiving a request to access an application). It would have been obvious to one of ordinary skill in the art at the time the invention was made to omit the additional subject matter of claim 1 of the patent based on the legal precedent that elimination of a step or an element and its function is obvious if the function is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 is directed to a medium that comprises “one or more instructions that, when executed by one or more processors of a device, cause the device to:” perform a variety of functions. However, no programming language discussed in the specification can perform all of these steps with a single instruction. Thus, this appears to be impossible, since the instant application has not described a new programming language including instructions that perform so many functions at once, nor has Applicant cited any programming language capable of such that is being used. None of claims 16-20 fix this issue and they are rejected for the same reasons.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Paczkowski (U.S. Patent 11,395,139) in view of Hamel (U.S. Patent Application Publication 2019/0303600) and Inamdar (U.S. Patent Application Publication 2019/0243980).
Regarding Claim 1,
Paczkowski discloses a method comprising:
Obtaining, by a device and from a first computing system, a credential for an application hosted on a second computing system (Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, line 9 to Column 9, line 18; Column 9, lines 42-67; Column 10, lines 36-61; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 38-52; Column 13, lines 40-51; Column 14, lines 40-45; Column 14, line 64 to Column 15, line 3; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; credential, such as rolling code, PRL, authentication information, etc., for example);
Comparing, by the device, the credential to credential data stored on a distributed ledger to determine whether the credential meets a set of conditions (Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 4, line 31 to Column 5, line 43; Column 8, line 18 to Column 9, line 18; Column 9, line 43 to Column 10, line 17; Column 10, lines 36-61; Column 11, lines 23-48; Column 11, line 60 to Column 12 line 10; Column 12, line 53 to Column 13, line 22; Column 13, line 52 to Column 13, line 3; Column 14, lines 46-55; Column 15, lines 4-16; and associated figures; authenticating authentication credential received from device using authentication information received from server/blockchain, such as rolling code and/or function, for example);
Wherein the credential data comprises a credential schema (Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, line 9 to Column 9, line 18; Column 9, lines 42-67; Column 10, lines 36-61; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 38-52; Column 13, lines 40-51; Column 14, lines 40-45; Column 14, line 64 to Column 15, line 3; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; all credentials have a schema of some kind, which defines what goes into the credentials; in this case, the authentication information, PRL, rolling code, seed, algorithm/function, etc., for example);
Establishing, by the device, based on determining that the credential meets the set of conditions, an authorized communication session between the first computing system and the second computing system (Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-57; Column 6, line 29 to Column 7, line 15; Column 8, lines 18-36; Column 9, line 43 to Column 10, line 17; Column 10, lines 36-61; Column 11, line 23 to Column 12, line 19; Column 13, lines 11-39; Column 13, line 52 to Column 14, line 3; Column 14, line 40 to Column 15, line 16; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; proxying communications to networks, servers, etc., for example);
But does not appear to explicitly disclose that the credential data comprises a first identifier associated with a credential scheme signed with a digital key, a second identifier associated with a credential definition, and an issuer identifier, wherein signing the credential scheme enables the distributed ledger to verify a particular issuer identifier for a particular credential, wherein the first identifier and the second identifier are selected to set up a security policy for the application, generating, by the device and based on a received master secret, a first cryptographic key, wherein the master secret is received from the first computing system, comparing, by the device, the first cryptographic key with a second cryptographic key associated with the credential data, and that establishing is based on the first cryptographic key matching the second cryptographic key.
Hamel, however, discloses that the credential data comprises a first identifier associated with a credential scheme signed with a digital key, a second identifier associated with a credential definition, and an issuer identifier (Exemplary Citations: for example, Paragraphs 106, 112, 115-128, 130, 131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 273, and associated figures; scheme, credential fields, credential definition, signature, etc., for example, schema designation, blockchain block ID, hash, DID, etc. definition designation, block ID, hash, DID, etc., as examples. It is also noted that, as the Examiner explained in the parent application, signing data to be placed on a blockchain is how blockchains work);
Wherein signing the credential scheme enables the distributed ledger to verify a particular issuer identifier for a particular credential (Exemplary Citations: for example, Paragraphs 106, 112, 115-131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 272, 273, and associated figures; signature in blockchain allows for verifying everything therein, as well as signer(s), for example); and
Wherein the first identifier and the second identifier are selected to set up a security policy for the application (Exemplary Citations: for example, Paragraphs 106, 112, 115-131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 272, 273, and associated figures; schemas, policies, rules, and the identifiers described above being stored, for example). It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention, which is before any effective filing date of the claimed invention, to incorporate the credentialing techniques of Hamel into the authentication system of Paczkowski in order to allow the system to revoke and verify revocation status of credentials, to provide for explicitly noted schema/definitions to be identified with the credentials themselves, to provide additional credential types, to allow users to store credentials securely in digital wallets, and/or to increase security in the system.
Inamdar, however, discloses generating, by the device and based on a received master secret, a first cryptographic key, wherein the master secret is received from the first computing system (Exemplary Citations: for example, Paragraphs 35-39 and associated figures; receiving master secret from client and generating a key there from, for example);
Comparing, by the device, the first cryptographic key with a second cryptographic key associated with the credential data (Exemplary Citations: for example, Paragraphs 35-39 and associated figures; compare keys, for example); and
Establishing the authorized communication session is based on the first cryptographic key matching the second cryptographic key (Exemplary Citations: for example, Paragraphs 35-39 and associated figures; upon success, communicate, for example). It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention, which is before any effective filing date of the claimed invention, to incorporate the secure communication techniques of Inamdar into the authentication system of Paczkowski as modified by Hamel in order to allow entities to better authenticate each other, reduce the number of handshake messages in the setting up of a secure connection, increase setup speed, remove complexity involved in setting up a secure connection, improving the operation of a processor setting up connections, and/or to increase security in the system.
Regarding Claim 8,
Claim 8 is a device claim that corresponds to method claim 1 and is rejected for the same reasons.
Regarding Claim 15,
Claim 15 is a medium claim that corresponds to method claim 1 and is rejected for the same reasons.
Regarding Claim 2,
Paczkowski as modified by Hamel and Inamdar discloses the method of claim 1, in addition, Hamel discloses that the credential definition is generated based on the credential scheme being signed with the digital key and added to the distributed ledger (Exemplary Citations: for example, Paragraphs 106, 112, 115-131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 272, 273, and associated figures; credential definition, signature, etc., for example).
Regarding Claim 9,
Claim 9 is a device claim that corresponds to method claim 2 and is rejected for the same reasons.
Regarding Claim 16,
Claim 16 is a medium claim that corresponds to method claim 2 and is rejected for the same reasons.
Regarding Claim 3,
Paczkowski as modified by Hamel and Inamdar discloses the method of claim 1, in addition, Paczkowski as modified by Hamel and Inamdar discloses that the device is associated with a gateway computing system (Paczkowski: Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, lines 37-56; Column 9, lines 31-42; Column 10, lines 18-35; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 26-37; Column 13, lines 40-51; Column 14, lines 4-22; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; gateway, for example);
Wherein the credential definition is generated based on the credential schema being signed with the digital key and added to the distributed ledger that is in communication with the device and an issuing entity for the credential (Hamel: Exemplary Citations: for example, Paragraphs 106, 112, 115-128, 130, 131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 273, and associated figures; scheme, credential fields, credential definition, signature, etc., for example, schema designation, blockchain block ID, hash, DID, etc. definition designation, block ID, hash, DID, etc., as examples);
Wherein the issuing entity is in communication with the first computing system (Paczkowski: Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, line 9 to Column 9, line 18; Column 9, lines 42-67; Column 10, lines 36-61; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 38-52; Column 13, lines 40-51; Column 14, lines 40-45; Column 14, line 64 to Column 15, line 3; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; credential, such as rolling code, PRL, authentication information, etc., from entity that issues such, for example); and
Wherein the device is in communication with the first computing system and the second computing system (Paczkowski: Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, lines 37-56; Column 9, lines 31-42; Column 10, lines 18-35; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 26-37; Column 13, lines 40-51; Column 14, lines 4-22; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; request from device to gateway that is performed to access a server application, such as a cloud application, virtualization software, web page application on server, RAN applications, roaming applications, home applications, etc., for example).
Regarding Claim 10,
Claim 10 is a device claim that corresponds to method claim 3 and is rejected for the same reasons.
Regarding Claim 17,
Claim 17 is a medium claim that corresponds to method claim 3 and is rejected for the same reasons.
Regarding Claim 4,
Paczkowski as modified by Hamel and Inamdar discloses the method of claim 1, in addition, Paczkowski discloses receiving, by the device, a request to access the application (Exemplary Citations: for example, Abstract, Figure 9 and associated written description; Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, lines 37-56; Column 9, lines 31-42; Column 10, lines 18-35; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 26-37; Column 13, lines 40-51; Column 14, lines 4-22; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; network connectivity devices and processor are intermediaries between the code running on the private gateway and the device, for example. Both will forward received network communications to and from the software processing them, for example);
Wherein the device is in communication with the second computing system (Exemplary Citations: for example, Abstract, Figure 9 and associated written description; Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, lines 37-56; Column 9, lines 31-42; Column 10, lines 18-35; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 26-37; Column 13, lines 40-51; Column 14, lines 4-22; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures); and
Wherein the device is a gateway computing system (Exemplary Citations: for example, Abstract, Figure 9 and associated written description; Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, lines 37-56; Column 9, lines 31-42; Column 10, lines 18-35; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 26-37; Column 13, lines 40-51; Column 14, lines 4-22; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures).
Regarding Claim 11,
Claim 11 is a device claim that corresponds to method claim 4 and is rejected for the same reasons.
Regarding Claim 18,
Claim 18 is a medium claim that corresponds to method claim 4 and is rejected for the same reasons.
Regarding Claim 5,
Paczkowski as modified by Hamel and Inamdar discloses the method of claim 1, in addition, Paczkowski as modified by Hamel and Inamdar discloses that the credential scheme is associated with a template that includes a plurality of selected data fields related to an authentication process (Paczkowski: Exemplary Citations: for example, Abstract, Column 1, line 45 to Column 2, line 30; Column 3, lines 16-29; Column 4, line 49 to Column 5, line 43; Column 6, line 60 to Column 7, line 15; Column 8, line 9 to Column 9, line 18; Column 9, lines 42-67; Column 10, lines 36-61; Column 11, lines 7-22; Column 11, lines 49-59; Column 12, lines 38-52; Column 13, lines 40-51; Column 14, lines 40-45; Column 14, line 64 to Column 15, line 3; Column 15, lines 17-54; Column 16, lines 28-50; Column 18, line 65 to Column 19, line 20; Column 19, lines 32-58; and associated figures; all credentials have a schema of some kind, which defines what goes into the credentials; in this case, the authentication information, PRL, rolling code, seed, algorithm/function, etc., for example; Hamel: Exemplary Citations: for example, Paragraphs 106, 112, 115-128, 130, 131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 273, and associated figures; scheme, credential fields, etc., for example; Inamdar: Exemplary Citations: for example, Paragraphs 18, 19, 21, 31-33, 35-39 and associated figures; fields for authentication, for example).
Regarding Claim 12,
Claim 12 is a device claim that corresponds to method claim 5 and is rejected for the same reasons.
Regarding Claim 19,
Claim 19 is a medium claim that corresponds to method claim 5 and is rejected for the same reasons.
Regarding Claim 6,
Paczkowski as modified by Hamel and Inamdar discloses the method of claim 5, in addition, Hamel that the plurality of selected data fields is selected by an issuing entity for the credential (Exemplary Citations: for example, Paragraphs 106, 112, 115-128, 130, 131, 138, 155, 172, 183, 201, 222, 237, 241, 252, 269, 273, and associated figures; scheme, credential fields, etc., for example).
Regarding Claim 13,
Claim 13 is a device claim that corresponds to method claim 6 and is rejected for the same reasons.
Regarding Claim 20,
Claim 20 is a medium claim that corresponds to method claim 6 and is rejected for the same reasons.
Regarding Claim 7,
Paczkowski as modified by Hamel and Inamdar discloses the method of claim 1, in addition, Hamel discloses that the credential is stored in a digital wallet that is not accessible by an entity without permission from a user associated with the first computing system (Exemplary Citations: for example, Paragraphs 154, 160, 166, 192, 208, 219, 234, 249, 266, and associated figures; storing credentials in a wallet, for example).
Regarding Claim 14,
Claim 14 is a device claim that corresponds to method claim 7 and is rejected for the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey D Popham whose telephone number is (571)272-7215. The examiner can normally be reached Monday through Friday 9:00-5:30.
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, Jeffrey Nickerson can be reached at (469) 295-9235. 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.
/Jeffrey D. Popham/Primary Examiner, Art Unit 2432
Prosecution Insights