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 .
The following is a Final Office action in response to communications received on June 30, 2026. Claims 1-3, 9, 13 and 19-21 are pending and addressed below.
Response to Arguments
Applicant’s amendments are sufficient to overcome the claim objections set forth in the previous Office Action.
Applicant’s amendments are sufficient to overcome the 35 U.S.C. 112(b) rejections set forth in the previous Office Action.
Applicant’s amendments are sufficient to overcome the 35 U.S.C. 101 rejections set forth in the previous Office Action.
Applicant’s amendments regarding the rejections under 35 U.S.C. 102/103 have been fully considered but are moot in view of the new grounds of rejection. Applicant has amended the claims in such a way that the scope of the claims has been changed. Accordingly, new art is being used to address the newly added claim limitations. Therefore, Applicant’s arguments are rendered moot. It is additionally noted that although Applicant states that indicated allowable subject matter has been incorporated into the independent claims, the amendments do not capture the complete original allowable subject matter and nor would the allowable subject matter apply to independent claims 19 and 21, as these claims are of a different scope than the originally indicated allowable claims (i.e. independent claims 1 and 20 are of a different scope than independent claims 19 and 21).
Applicant’s amendments/arguments are not sufficient to overcome the nonstatutory double patenting rejections set forth in the previous Office Action. Applicant states in the Remarks at various places that the patents/applications in the nonstatutory double patenting rejections are drawn to different inventions. However, the current claim limitations are still disclosed by the reference patents/applications in the nonstatutory double patenting rejections. As an example, Applicant’s currently amended claim 1 has every limitation recited in some form by independent claim 1 (and corresponding intendent claim 22) and dependent claim 15. Since all of the limitations are covered by the claims of the reference patents/applications, the nonstatutory double patenting rejections will be maintained and repeated herein below. Applicant’s arguments are not persuasive.
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 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,489,925. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-23 of U.S. Patent No. 12,489,925.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 19/097,790 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-21 of copending Application No. 19/097,790.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/260,274 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-18 of copending Application No. 19/260,274.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/301,754 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-18 of copending Application No. 19/301,754.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/301,754 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-18 of copending Application No. 19/301,754.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/258,560 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-15 of copending Application No. 19/258,560.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/382,103 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-20 of copending Application No. 19/382,103.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 19/097,774 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-24 of copending Application No. 19/097,774.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 19/343,314 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all of the limitations of claims 1-21 are disclosed by claims 1-21 of copending Application No. 19/343,314.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(s) 1, 2, 9, 13 and 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gopalakrishna Rao et al. (U.S. Pub. No. 2014/0156997 and hereinafter referred to as Gopalakrishna Rao) in view of Pamucci (U.S. Patent No. 11,770,260).
As to claim 1, Gopalakrishna Rao discloses a decoder for decoding an audio stream from an audio data stream, wherein the decoder comprises one or more processors configured for
decoding, from the audio data stream, a digital signature (paragraphs [0015] and [0028]-[0030], Gopalakrishna Rao teaches a decoder decodes an audio stream and extracts a digital signature) the digital signature by
subjecting a predetermined portion of the audio data stream, or data derived therefrom, to a hash function to acquire a hash value (paragraphs [0015], [0017] and [0028]-[0030], Gopalakrishna Rao teaches generating a hash value from a decodable unit); and
signing the hash value using a private key of an asymmetric cryptography scheme (paragraphs [0015]-[0017] and [0028]-[0030], Gopalakrishna Rao teaches generating a signature from the hash using a private key.). Gopalakrishna Rao does not specifically disclose wherein the one or more processors are configured for deriving an information from the audio data stream, which information comprises a pointer to a location from which a public key of the asymmetric cryptography scheme may be retrieved, or an identifier of the entity having encoded the audio into the audio data stream; and providing the information, the digital signature and the predetermined portion for a check of the audio data stream on trustworthiness as claimed. However, Pamucci does disclose
wherein the one or more processors are configured for deriving an information from the audio data stream, which information comprises a pointer to a location from which a public key of the asymmetric cryptography scheme may be retrieved, or an identifier of the entity having encoded the audio into the audio data stream (21, 40, 43, 50, Pamucci teaches a device receives content containing a recording device identifier and determines the device identifier); and providing the information, the digital signature and the predetermined portion for a check of the audio data stream on trustworthiness (col. 3 lines 37-65, col. 10 lines 7-21, col. 10 lines 48-62, col. 12 line 61 – col. 13 line 22, Pamucci teaches the device that received the content generating an authentication request and including the content, the digital signature and the recording device identifier in the request.).
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 of Gopalakrishna Rao with the teachings of Pamucci for using an identifier of the entity having encoded the audio into the audio data stream because this would further increase security.
Claim 20 recites substantially similar subject matter to claim 1 and is therefore, rejected for similar reasons to claim 1 above.
As to claim 2, the combination of teachings between Gopalakrishna Rao and Pamucci disclose the decoder according to claim 1, wherein the digital signature is transmitted in a supplemental information message of the audio data stream (paragraphs [0015]-[0017] and [0028]-[0030], Gopalakrishna Rao teaches embedding the digital signature into supplemental enhancement information (SEI).).
As to claim 9, the combination of teachings between Gopalakrishna Rao and Pamucci disclose the decoder according to claim 1, configured for deriving an overview supplemental information message from the audio data stream, the overview supplemental information message indicating one or more substreams of the audio data stream with respect to each of which the checking the audio data stream on trustworthiness is possible based on one or more portions in the respective substream (paragraphs [0015], [0017] and [0028]-[0030], Gopalakrishna Rao teaches generating a hash value from a decodable unit.).
As to claim 13, the combination of teachings between Gopalakrishna Rao and Pamucci disclose the decoder according to claim 1, wherein the digital signature is fitted to by a predetermined value in case of an equality of the predetermined value with a check value acquired by decrypting the digital signature, or a predetermined portion of the check value associated with the predetermined value, or an equality with the check value in a further hashed domain, reached by a further hash function applied onto the predetermined value or a concatenation of value comprising the predetermined value (paragraphs [0015], [0017] and [0028]-[0030], Gopalakrishna Rao teaches generating a signature from the hash and comparing the generated hash to a hash extracted from the audio stream where a received signature may be decrypted.).
As to claim 19, Gopalakrishna Rao discloses an apparatus for rendering an audio data stream having an audio stream encoded thereinto checkable on trustworthiness, wherein the apparatus comprises one or more processors configured for
subjecting a predetermined portion of the audio data stream, or data derived therefrom, to a hash function to acquire a hash value (paragraphs [0015]-[0017] and [0028]-[0030], Gopalakrishna Rao teaches generating a hash for a decodable unit of an audio stream);
computing a digital signature based on the hash value so as to digitally sign the hash function using a private key of an asymmetric cryptography scheme (paragraphs [0015]-[0017] and [0028]-[0030], Gopalakrishna Rao teaches generating a signature from the hash using a private key); and
inserting the digital signature into the audio data stream, thereby allowing determining whether the audio data stream is trustworthy by checking whether the hash value fits to the digital signature (paragraphs [0015]-[0017] and [0028]-[0030], Gopalakrishna Rao teaches inserting the digital signature into the audio stream.). Gopalakrishna Rao does not specifically disclose inserting an information into the audio data stream, which information comprises a pointer to a location from which a public key of the asymmetric cryptography scheme may be retrieved, or an identifier of the entity having encoded the audio into the audio data stream as claimed. However, Pamucci does disclose
inserting an information into the audio data stream, which information comprises a pointer to a location from which a public key of the asymmetric cryptography scheme may be retrieved, or an identifier of the entity having encoded the audio into the audio data stream (col. 3 lines 37-65, col. 10 lines 7-21, col. 10 lines 48-62, col. 12 line 61 – col. 13 line 22, Pamucci teaches inserting a recording device identifier into audio/video data.).
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 of Gopalakrishna Rao with the teachings of Pamucci for using an identifier of the entity having encoded the audio into the audio data stream because this would further increase security.
Claim 21 recites substantially similar subject matter to claim 19 and is therefore, rejected for similar reasons to claim 19 above. (Note: Claim 21 recites the additional limitation of a non-transitory digital storage medium which is disclosed by Gopalakrishna Rao at, for example, paragraph [0034])
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gopalakrishna Rao and Pamucci as applied to claim 1 above, and further in view of Baltes et al. (U.S. Pub. No. 2013/0111212 and hereinafter referred to as Baltes).
As to claim 3, the combination of teachings between Gopalakrishna Rao and Pamucci disclose the decoder according to claim 1. The combination of teachings between Gopalakrishna Rao and Pamucci does not specifically disclose wherein the check of the audio data stream on trustworthiness comprises decrypting the digital signature to acquire a check value; and checking whether the hash value matches the check value as claimed. However, Baltes does disclose
wherein the check of the audio data stream on trustworthiness comprises decrypting the digital signature to acquire a check value; and checking whether the hash value matches the check value (paragraph [0007], Baltes teaches decrypting digital signatures and comparing hash values.).
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 modified invention of Gopalakrishna Rao with the teachings of Baltes for decrypting the digital signature to acquire a check value because this would improve security.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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, Taghi Arani can be reached at 571-272-3787. 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.
/THADDEUS J PLECHA/Examiner, Art Unit 2438
Prosecution Insights