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 .
Claims 2-17 and 19-24 have been examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/23/26 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/23/26 is being considered by the examiner.
Response to Arguments
Regarding Double Patenting rejection, Applicant indicated that the Double Patenting rejection is improper based on Amendment filed on 4/23/26. However, the argument is not persuasive because the claims as amended are still obvious in view of the related patent as set forth below.
Regarding 35 U.S.C. 103 rejection, Applicant's arguments filed 4/23/26 have been fully considered but they are not persuasive.
Applicant mainly argues that the prior art of record does not explicitly disclose “receive a second request associated with the network identifier, and determine, based on the association, that the network identifier is associated with the address.” However, the examiner disagrees.
The closest prior art of record, Hari, discloses domain resource registration using blockchain that allows Internet participants to verify core Internet resource ownership, transaction, and usage (Hari: [0031]). The cited portion of Hari reasonably corresponds to the disputed limitation as Internet participants can verify domain resource ownership after it has been transferred. Therefore, Applicant’s argument is not persuasive in light of above explanation.
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 2-17 and 19-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,721,060 and claims 1-16 of U.S. Patent No. 11,621,829. Although the claims at issue are not identical, they are not patentably distinct from each other because present application and related patents all disclose, in essence, steps of receiving, by an authoritative record keeper/registry, a request for a proof relating to an administrative action regarding the association of the network identifier with a blockchain address; providing a response to the request; and perform administrative action when the response is verified using signature associated with the authoritative record keeper/registry. See comparison of exemplary claims.
Instant Application
U.S. Patent No. 10,721,060
2. A computer-implemented method comprising:
receiving, by an authoritative record keeper associated with a network identifier, a request for a proof relating to an administrative action regarding an association of the network identifier with an address associated with a decentralized identifier; and
providing, by the authoritative record keeper in response to receiving the request for the proof, and to a program executing on a blockchain network, a message indicative of a facilitator of record for the network identifier, wherein the message comprises a message body, the network identifier, and a signature by a private key;
wherein the administrative action comprises associating the network identifier with the address associated with the decentralized identifier,
the program is configured to, based on receiving the message, generate the association between the network identifier and the address, and
the blockchain network is configured to receive a second request associated with the network identifier, and determine, based on the association, that the network identifier is associated with the address.
1. A domain name system (DNS) registry facilitated method of assigning a domain name registered to a registrant as a blockchain address in a blockchain network, the method comprising:
obtaining, by the DNS registry for the domain name, a cryptographic asymmetric proof key pair comprising a public key and a private key;
providing, by the DNS registry, the public key and a computer executable registry signature verification program for addition to a block in a blockchain of the blockchain network, wherein the registry signature verification program is configured to use the public key to validate signatures made using the private key;
receiving, by the DNS registry, a request for a proof of registrar of record for the domain name from a registrar, wherein the request comprises the domain name;
confirming, by the DNS registry, that the registrar is a registrar of record for the domain name;
providing, by the DNS registry, a proof of registration message, wherein the proof of registration message comprises a signature by the private key and confirms that the registrar is a registrar of record for the domain name;
whereby the registry signature verification program validates the signature using the public key, and whereby the blockchain network receives and stores in the blockchain an association between the domain name and an existing blockchain address for the registrant.
Instant Application
U.S. Patent No. 11,621,829
2. A computer-implemented method comprising:
receiving, by an authoritative record keeper associated with a network identifier, a request for a proof relating to an administrative action regarding an association of the network identifier with an address associated with a decentralized identifier; and
providing, by the authoritative record keeper in response to receiving the request for the proof, and to a program executing on a blockchain network, a message indicative of a facilitator of record for the network identifier, wherein the message comprises a message body, the network identifier, and a signature by a private key;
wherein the administrative action comprises associating the network identifier with the address associated with the decentralized identifier,
the program is configured to, based on receiving the message, generate the association between the network identifier and the address, and
the blockchain network is configured to receive a second request associated with the network identifier, and determine, based on the association, that the network identifier is associated with the address.
1. A method of administering an association of a network identifier with a blockchain address, the method comprising:
obtaining, by an authoritative record keeper for the network identifier, a request for a proof relating to an administrative action regarding the association of the network identifier with the blockchain address; and
providing, by the authoritative record keeper, in response to the obtaining, a first message indicating a registration facilitator of record for the network identifier, wherein the first message comprises a message body comprising the network identifier, wherein the first message further comprises a signature by a private key on at least the message body;
wherein a top level network identifier corresponding to the network identifier and a blockchain address of an executable program stored on the blockchain is signed to form a second message, wherein the second message is provided to the blockchain for inclusion in the blockchain, wherein the executable program is configured to obtain and verify the signature and implement the administrative action, wherein the registration facilitator comprises a registrar.
The pending claims differ from the patented claims insofar as reciting “receiving a second request associated with the network identifier, and determine, based on the association, that the network identifier is associated with the address. However, verifying data based on immutable nature of blockchain is well known in the art. Therefore, it would have been obvious to one having ordinary skill in the art that the association of network identifier to blockchain address as recited in related patents would also allow subsequent verification of the association.
The dependent claims are also rejected because they recite similar features (i.e. domain name, verifying signature, etc.) as dependent claims of related patents (please refer to related patents).
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 2-17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hari et al. U.S. Pub. No. 2017/0324738 (hereinafter Hari) in view Richardson U.S. Pub. No. 20200145373 (hereinafter Richardson).
As per claim 2, 10 and 17, Hari discloses a computer-implemented method/system/media for implementing steps comprising:
receiving, by an authoritative record keeper associated with a network identifier, a request for a proof relating to an administrative action regarding an association of the network identifier with an address associated with a decentralized identifier (Hari: [0041] and [0064]: Internet registry/authoritative record keeper creates genesis block to record allocation/request to associate network identifier/domain to another identifier associated with registrant); and
providing, by the authoritative record keeper in response to receiving the request for the proof, a message indicative of a facilitator of record for the network identifier, wherein the message comprises a message body, the network identifier, and a signature by a private key (Hari: [0055]-[0056]: message indicating that the domain/network identifier has been allocated from first registry to another registry; [0064]: verifying the transaction requires verification of the digital signature based on private key of the firs Internet participant, i.e. Internet registry/authoritative record keeper);
wherein the administrative action comprises associating the network identifier with the address associated with the decentralized identifier (Hari: [0055]-[0056]: allocate/associate the domain/network identifier with address associated with the second participant by its blockchain address);
receive a second request associated with the network identifier, and determine based on the association, that the network identifier is associated with the address (Hari: [0031]: allow Internet participants to verify core Internet resource ownership, transaction, and usage).
Hari further suggests that registry provides blockchain transaction to allocate domain or IP address to another node, usually in response to registrant/registrar request, and the transaction indicates message indicating domain to be allocated/assigned and the parties involved, wherein the transaction is secured by signature of the registry using private key of the registry (Hari: [0055]-[0056]). Hari does not explicitly disclose the program is configured to, based on receiving the message, generate the association between the network identifier and the address, and the blockchain network is configured to process a transaction addressed to the network identifier based on the association. However, Richardson disclose transferring/recording domain ownership via blockchain network by associating domain information to blockchain address of new owner (Richardson: [0046]-[0048]; [0065]-[0067]). It would have been obvious to one having ordinary skill in the art to facilitate recording of DNS record to blockchain by associating network address with blockchain address, i.e. wallet/blockchain public key, because Hari and Richardson are analogous art. The motivation to combine would be that is well known in the art to associate media/content ownership information with blockchain wallet ID/public key.
As per claim 3, 11 and 18, Hari as modified discloses the limitations of claims 2, 10 and 17 respectively. Hari further discloses wherein the network identifier comprises a domain name (Hari: Figs. 6A and 6B; [0054]-[0056]: domain name allocation).
As per claim 4, 12 and 19, Hari as modified discloses the limitations of claims 2, 10 and 17 respectively. Hari further discloses wherein the request for the proof comprises the network identifier and the decentralized identifier (Hari: [0054]-[0056]: domain name and blockchain address are included in the blockchain transactions).
As per claim 5, 13 and 20, Hari as modified discloses the limitations of claims 2, 10 and 17 respectively. Hari further discloses wherein the administrative action is signed by the decentralized identifier, the method further comprising: verifying the signature using a public key associated with the decentralized identifier (Hari: [0039]: verify digital signature using public key of Internet Participant referencing blockchain address of respective parties for the transaction).
As per claim 6 and 14, Hari as modified discloses the limitations of claims 2 and 10 respectively. Hari further discloses wherein the message represents the proof identifying a particular facilitator as the facilitator of record (Hari: [0059]).
As per claim 7, 15 and 21, Hari as modified discloses the limitations of claims 2, 10 and 17 respectively. Hari further disclose wherein the message is configured to be input to a signature verification program that is configured to verify the administrative action associated with the decentralized identifier (Hari: [0039]).
As per claim 8, Hari as modified discloses the limitations of claim 7. Hari further discloses wherein the signature verification program is further configured to implement the administrative action associated with the decentralized identifier (Hari: [0039] and [0055]-[0056]: perform domain name allocation).
As per claim 9 and 16, Hari as modified discloses the limitations of claims 2 and 10 respectively. Hari further discloses wherein the network identifier is associated with the decentralized identifier and stored in a database (Hari: [0024]-[0027]).
As per claim 22, Hari as modified discloses the method of claim 2. Hari as modified further discloses wherein the program is configured to, prior to generating the association, validate the message using a public key associated with the authoritative record keeper (Hari: [0039]).
As per claim 23, Hari as modified discloses the computer-implemented method of claim 2. Hari as modified further discloses wherein the blockchain network is further configured to facilitate an interaction on the blockchain network in response to determining that the network identifier is associated with the address (Hari: [0031]: Internet resource transaction of the Internet blockchain may be a transaction for transferring ownership or control of one or more Internet resources from one or more source Internet participants to one or more recipient Internet participants).
As per claim 24, Hari as modified discloses the computer-implemented method of claim 23. Hari as modified further discloses wherein the interaction is associated with a cryptocurrency transfer (Richardson: [0031]: transfer bitcoin for moving ownership from one user to another). It would have been obvious to one having ordinary skill in the art to transfer bitcoin for performing blockchain transactions as well known in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Soundararajan et al. U.S. 11,582,040 discloses permissions from entities to access information stored on blockchain, including domain resources.
Li et al. U.S. 2019/0166085 discloses blockchain-based domain name resolution system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIN HON (ERIC) CHEN whose telephone number is (571)272-3789. The examiner can normally be reached Monday to Thursday 9am- 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can be reached at 571-272-2092. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIN-HON (ERIC) CHEN/ Primary Examiner, Art Unit 2431
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