`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`
`
`
`
`14/295,771
`
`06/04/2014
`
`Satoshi ANDO
`
`734356.427C1
`
`3884
`
`Seed Intellectual Property Law Group PLLC
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`PHAM, QUY C
`
`PAPER NUIVIBER
`
`ART UNIT
`
`2496
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/08/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentinfo @ seedip.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/295,771 AN DO ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`QUY PHAM its“ 2496
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 10/7/2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-14 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-14 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`hit
`:/'I’\WIIW.usnto. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 6/4/2014 is/are: a)lX| accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20151230
`
`

`

`Application/Control Number: 14/295,771
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`Page 2
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`Art Unit: 2496
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`DETAILED ACTION
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`1.
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
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`2.
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`3.
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`This office action is in response to the communication filed on 10/07/2015.
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`New claims 11-14 are added. Claims 1-14 are pending.
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`Means Plus Function
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`Response to Arguments
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`It appears that Applicant misunderstood Examiner’s rationale stated in the
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`Interview Summary dated 09/23/2015 for the reason that there was no reiection on
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`claims 1-5 on the basis of means-plus-function (in response to Applicant’s question
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`during the interview). In short, even though, the limitations of claims 1-5 invoke the 112
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`sixth paragraph, however, because there are corresponding structures for the cited
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`means as shown in the Interview Summary, the claims were not rejected under 112
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`second paragraph, invoking 112 sixth paragraph.
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`Claim Reiections
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`Applicant’s arguments direct to Gerkis’ teachings are fully considered but are
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`moot in view of new ground of rejection using newly discovered reference Aboda et al.
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`(“RFC 3748 - Extensible Authentication Protocol (EAP)”, 6/2004, see attached file), see
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`below.
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`

`

`Application/Control Number: 14/295,771
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`Page 3
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`Art Unit: 2496
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`Claim Rejections - 35 USC § 101
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`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 1-5, 11, 12 are rejected under 35 U.S.C. 101 for directing non-statutory
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`subject matter.
`
`Regarding claims 1 and 5, in light of new amendments (e.g., removing limitation
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`“at least one processor and memory”), the claimed invention is directed to non-statutory
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`subject matter because claims 1 and 5 recite a communication apparatus comprising a
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`receiver and an authentication processor. Using broadest interpretation, these elements
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`can be interpreted as software, thus, resulting the claimed invention directed to merely
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`software, which is non-statutory subject matter.
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`Dependent claims 2-4, 11, 12 do recite any limitation that could overcome the
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`rejection, therefore, claims 2-4, 11, 12 are rejected under 35 U.S.C. 101 for directing
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`non-statutory subject matter with the same rationale as claims 1 and 5.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`

`

`Application/Control Number: 14/295,771
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`Page 4
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`Art Unit: 2496
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`4.
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`Claims 1-6, 9-14 are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Miyata (US 2007/0286217 A1) in view of Aboda et al. (“RFC 3748 -
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`Extensible Authentication Protocol (EAP)”, 6/2004, see attached file).
`
`Regarding claim 1, Miyata teaches A communication apparatus for transmitting an
`
`authentication frame to an authentication apparatus (par.13 of Miyata, a supplicant
`
`transmits EAPOL-Start packet to an authenticator) and receiving a response frame
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`for response to the authentication frame from the authentication apparatus
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`(par.13 of Miyata, the supplicant receives a response packet EAP-Request/ID Request
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`from the authenticator) so that an authentication process is performed for the
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`communication apparatus by the authentication apparatus, (par.101 of Miyata,
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`after receiving the EAP-Request, the supplicant transmits a EAP-Response/ID
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`notification packet to the authenticator to perform the authentication process) the
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`communication apparatus comprising:
`
`at—least—ene—preeesser—and—memer-ye (par.67 of Miyata, a control processor and
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`a memory)
`
`a receiver reeeMng—seetien which receives a communication frame
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`transmitted from another apparatus; and (par.18 of Miyata, receiving a response
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`packet: “the new table entry including a user terminal identifier extracted from the
`
`header of the received packet and status information indicating that a response packet
`
`to the connection initiation request is in a reception waiting state; to judge when a
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`response packet to the connection initiation request packet was received”)
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`

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`Application/Control Number: 14/295,771
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`Page 5
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`Art Unit: 2496
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`an authentication processor processing—section which determines whether
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`the received communication frame is a frame of EAP-response (Extensible
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`Authentication Protocol-response) or not, (par.18 of Miyata, “to judge when a
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`response packet to the connection initiation request packet was received”)
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`Miyata does not, however, Aboda teaches
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`wherein the authentication processor—preeessing—seetion discards the
`
`received communication frame if it is determined that the received
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`communication frame is the frame of EAP-response. (top of page 25 of Aboda,
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`section 2.3: “EAP packets received with Code=2 (Response) are demultiplexed by the
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`EAP layer and delivered to the authenticator layer. Therefore, unless a host implements
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`an EAP authenticator layer, these packets will be silently discarded”)
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`the authentication processor does not discard the received communication
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`frame if it is determined that the received communication frame is not the frame
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`of EAP response (top of page 25 of Aboda, section 2.3: “EAP packets received with
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`Code=1 (Request), Code=3 (Success), and Code=4 (Failure) are demultiplexed by the
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`EAP layer and delivered to the peer layer. Therefore, unless a host implements an EAP
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`peer layer, these packets will be silently discarded. Similarly, EAP packets received with
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`Code=2 (Response) are demultiplexed by the EAP layer and delivered to the
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`authenticator layer. Therefore, unless a host implements an EAP authenticator layer,
`
`these packets will be silently discarded”)
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`It would have been obvious to one with ordinary skill in the art at the time of the
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`invention to modify Miyata in view of Aboda to discard the EAP-Response because the
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`

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`Application/Control Number: 14/295,771
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`Page 6
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`Art Unit: 2496
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`communication apparatus is not an EAP authenticator, by not acting (discard) on the
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`received EAP-Resonse that is not meant for the communication apparatus, thus,
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`reducing processing power and improve response speed on other EAP packets.
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`Regarding claim 2, Miyata/Aboda teach The communication apparatus according
`
`to claim 1, wherein the received communication frame includes a header and a
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`payload, and fields of Code, Identifier and Length are defined in the header, and
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`data based on the Code field is stored in the payload. (par.8 of Miyata, the
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`disclosure of Miyata in EAP authentication is according to IEEE 802.1X. See attached
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`NPL "802.1X IEEE Standard for Local and metropolitan area networks", page 38,
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`section “7.7 EAP packet format - informative”: EAP packet format includes fields of
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`Code, Identifier, Length, and Data)
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`Regarding claim 3, Miyata/Aboda teach The communication apparatus according
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`to claim 2, wherein the authentication processor preeessing—seetien determines
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`whether the received communication frame is the frame of EAP-response or not
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`by checking the Code field. (par.58 of Miyata, checking the Code field to see if the
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`received EAP frame is a “Request” frame. One skilled in the art will recognize that to
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`determine whether the received communication frame is a frame of EAP-response or
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`not by checking the Code field)
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`

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`Application/Control Number: 14/295,771
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`Page 7
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`Art Unit: 2496
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`Regarding claim 4, Miyata/Aboda teach The communication apparatus according
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`to claim 3, wherein the authentication processor preeessing—seetien—determines
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`that the received communication frame is the frame of EAP-response if the Code
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`field has a value of 2 that indicates a frame of a response. (par.8 of Miyata, the
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`disclosure of Miyata in EAP authentication is according to IEEE 802.1X. See attached
`
`NPL "802.1X IEEE Standard for Local and metropolitan area networks", page 38,
`
`section “7.7.1 Code”: a value of 2 that indicates a frame is a response. See also page
`
`25 of Aboda)
`
`Regarding claim 5, Miyata teaches A communication apparatus for transmitting an
`
`authentication frame to an authentication apparatus (par.13 of Miyata, a supplicant
`
`transmits EAPOL-Start packet to an authenticator) and receiving a response frame
`
`for response to the authentication frame from the authentication apparatus
`
`(par.13 of Miyata, the supplicant receives a response packet EAP-Request/ID Request
`
`from the authenticator) so that an authentication process is performed for the
`
`communication apparatus by the authentication apparatus, (par.101 of Miyata,
`
`after receiving the EAP-Request, the supplicant transmits a EAP-Response/ID
`
`notification packet to the authenticator to perform the authentication process) the
`
`communication apparatus comprising
`
`at—least—ene—preeesser—and—memew (par.67 of Miyata, a control processor and
`
`a memory)
`
`

`

`Application/Control Number: 14/295,771
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`Page 8
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`Art Unit: 2496
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`a receiver reeeMng—seetion which receives a communication frame
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`transmitted from another apparatus; and (par.18 of Miyata, receiving a response
`
`packet: “the new table entry including a user terminal identifier extracted from the
`
`header of the received packet and status information indicating that a response packet
`
`to the connection initiation request is in a reception waiting state; to judge when a
`
`response packet to the connection initiation request packet was received”)
`
`an authentication processor proeessing—seetion which determines whether
`
`the received communication frame is a frame of EAP-response (Extensible
`
`Authentication Protocol-response) or a frame of EAP-request (Extensible
`
`Authentication Protocol-request), (par.101 of Miyata, EAP-Response/ID notification is
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`not a communication control specified as a monitor target packet like EAP-Request/ID
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`Request. In this paragraph, Miyata discloses that upon receiving EAP-Request/ID
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`Request or EAP-Response/ID notification, different sequential step is performed. This
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`implies a step of determining whether the received frame is a frame of EAP-Response
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`or EAP-Request is performed)
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`...whereas the authentication processor preeessing—seetion recognizes the
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`communication frame as an authentication frame transmitted to the
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`communication apparatus if it is determined that the received communication
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`frame is the frame of EAP-request and not the frame of EAP response. (par.101 of
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`Miyata, the terminal recognizes the received frame is an EAP-Request/ID Request
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`indicating a request for an EAP-Response frame containing the terminal identification
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`information for authentication process)
`
`

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`Application/Control Number: 14/295,771
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`Page 9
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`Art Unit: 2496
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`Miyata does not, however, Aboda teaches
`
`wherein the authentication processor preeessing—seetien discards the
`
`received communication frame if it is determined that the received
`
`communication frame is the frame of EAP-response, (top of page 25 of Aboda,
`
`section 2.3: “EAP packets received with Code=2 (Response) are demultiplexed by the
`
`EAP layer and delivered to the authenticator layer. Therefore, unless a host implements
`
`an EAP authenticator layer, these packets will be silently discarded”) It would have
`
`been obvious to one with ordinary skill in the art at the time of the invention to modify
`
`Miyata in view of Aboda to discard the EAP-Response because the communication
`
`apparatus is not an EAP authenticator, by not acting (discard) on the received EAP-
`
`Resonse that is not meant for the communication apparatus, thus, reducing processing
`
`power and improve response speed on other EAP packets.
`
`Regarding claim 6, Miyata/Aboda teach An authentication system, comprising:
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`a plurality of communication apparatuses including the communication
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`apparatus as defined in claim 1; (fig.2 of Miyata, a plurality of terminals)
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`a hub connected to the plurality of communication apparatuses; (fig.2 of
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`Miyata, GW selector)
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`and an authentication apparatus connected to the hub. (fig.2 of Miyata, at
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`least one authenticator connected to the GW Selector)
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`

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`Application/Control Number: 14/295,771
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`Page 10
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`Art Unit: 2496
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`The limitations of claims 9 and 10 are substantially similar to the limitations of claims
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`1 and 5. Therefore, claims 9 and 10 are similarly rejected.
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`Regarding claim 11, Miyata/Aboda teach wherein the authentication processor
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`performs the authentication process if it is determined that the received
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`communication frame is not the frame of EAP response but a frame of EAP
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`request. (par.101 of Miyata, the terminal recognizes the received frame is an EAP-
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`Request/ID Request indicating a request for an EAP-Response frame containing the
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`terminal identification information for authentication process)
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`The limitations of claims 12-14 are substantially similar to the limitations of claim 11.
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`Therefore, claims 12-14 are similarly rejected.
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`5.
`
`Claim 7 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Miyata (US 2007/0286217 A1) in view of Aboda et al. (“RFC 3748 - Extensible
`
`Authentication Protocol (EAP)”, 6/2004, see attached file) further in view of Uh et al. (US
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`2006/0112269 A1)
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`Regarding claim 7, Miyata/Aboda do not, however, Uh teaches The communication
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`apparatus according to claim 1, wherein the communication apparatus is a
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`network camera. (par.70 and fig.6 of Uh, the communication apparatus can be a
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`camera that is able to exchange EAP authentication frame with Access Point 62 in a
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`

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`Application/Control Number: 14/295,771
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`Page 11
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`Art Unit: 2496
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`network) It would have been obvious to one with ordinary skill in the art at the time of
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`the invention to modify Miyata/Aboda in view of Uh to enable a camera to wirelessly
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`authenticate via EAP authentication procedure and communicate with other devices in a
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`network so that to securely share content within a network.
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`6.
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`Claim 8 is rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable over
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`Miyata (US 2007/0286217 A1) in view of Aboda et al. (“RFC 3748 - Extensible
`
`Authentication Protocol (EAP)”, 6/2004, see attached file) further in view of Rohilla et al.
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`(US 2008/0101240 A1)
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`Regarding claim 8, Miyata/Aboda do not, however, Rohilla teaches The
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`communication apparatus according to claim 1, wherein the communication
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`apparatus is an IP phone. (par.35 and fig.ZB-2C of Rohilla, the communication
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`apparatus can be an IP Phone) It would have been obvious to one with ordinary skill in
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`the art at the time of the invention to modify Miyata/Aboda in view of Uh to enable a
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`telephone to wirelessly authenticate via EAP authentication procedure and
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`communicate with other devices in a network so that to protect user’s privacy and to
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`reduce network traffic of traditional telephone network.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`

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`Application/Control Number: 14/295,771
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`Page 12
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`Art Unit: 2496
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(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
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to OUY PHAM whose telephone number is (571 )272—3823.
`
`The examiner can normally be reached on Monday-Friday from 8AM-5PM EST
`
`(Alternate Friday Off).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Andrew Nalven can be reached on (571) 272-3839. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
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`

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`Application/Control Number: 14/295,771
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`Page 13
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`Art Unit: 2496
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`
`/Q. P./
`
`Examiner, Art Unit 2496
`
`/AMIR MEHRMANESH/
`
`Primary Examiner, Art Unit 2496
`
`