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 .
Applicant is advised that the Notice of Allowance mailed on 01/26/2026 is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.
Prosecution on the merits of this application is reopened on claims 1-4, 6-17 and 22-24 considered unpatentable for the reasons indicated below:
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-17 and 22-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 14 recite “execute a hashing operation of the salt value against a set of possible patients to determine which patient is associated with a given identification string" and "execute the hashing operation repeatedly until a hash value is obtained matching the given identification string" and "when the hash value matching the given identification string is obtained, identify a patient correlated to the given identification string”. See Examiner’s amendment.
The Applicant’s specification on pages 10-11 recite “If salt values are retained, then it is possible to execute the hashing operation against a set of possible patients in order to determine which patient is associated with a given identification string 310. For example, in some embodiments, a system can be configured to later use known salt values and a list of possible patients (such as might be attainable from a medical records system) and then execute the hashing operation repeatedly until a hash value is obtained matching a given identification string 310. Referring now to FIG. 9, a schematic view of operations 900 is shown in accordance with various embodiments herein. Inputs can include a set of possible patients 902 along with a set of stored salt values 904. Then, the system can execute hashing operations 308 using different possible patients 902 and different salt values 904 to obtain hashed outputs that might be the same as a given identification string 310 from stored records 312 which can be determined in a matching operation 910. If a match is found, then the system can identify the patient 912 correlated to the given identification string 310”.
However, Applicant’s original disclosure does not describe the exact methodology that is applied to achieve the intended result described. There are a multitude of hashing algorithms and methodologies for utilizing a hashing salt to reverse engineer calculate a hash value that was generated with said salt. It is also unclear what constitutes "...a list of possible patients..." or "...a set of possible patients..." with respect to what kind of data that is for feeding into the hashing algorithm and how that works. Without specifics as to how and which methodology/methodologies applicants are utilizing for accomplishing their intended result, applicants fail to meet requirements under 35 U.S.C. 112(a) written description as having been in possession of their claimed invention. One of ordinary skill in the art at the time of filing of the invention would not have been conveyed the necessary details to be shown that applicants were in possession of their invention as applicants' specification does not capture how applicants accomplish their intent. Therefore, previously allowed claims 1-4, 6-17 and 22-24 have been withdrawn and rejected under 35 U.S.C. 112(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERHANU SHITAYEWOLDETSADIK whose telephone number is (571)270-7142. The examiner can normally be reached M-F.
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/BERHANU SHITAYEWOLDETSADIK/Primary Examiner, Art Unit 2455
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