DETAILED ACTION
Claims 1-7 and 16 are presented for examination on the merits.
Notice of Pre-AIA or AIA Status
The present application is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings filed on 10/16/2023 are accepted by the examiner.
Priority
The application is filed on 10/16/2023 and has priority of provisional application
62/854,471 filed on 05/30/2019.
Claim Rejections - 35 USC § 112
1. 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.
2. Claim 7 is 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 pre-AIA the applicant regards as the invention.
3. Regarding claim 7, the claim language recites “which may have been used or referenced to create and/or store the document, or the hash, or which may have been used or referenced to create the time stamp” in which the term “may” renders the claim vague and indefinite as it is not clear if the claimed feature is required or optional. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation.
The claims are examined as best understood at this time. Appropriate corrections are required.
Double Patenting
4. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement, and there is no statutory double patenting rejection applied to other claim/claims of the set. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-4, 5-7, and 16 of instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 2-4, and 4 respectively of Patent No. US 11791985 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because the applications recite an implementation where a written new idea is reduced to a document, such as a patent application, which can be put through a secure hash algorithm to create a hash of the entire document, or at least a portion thereof. A time stamp is applied to the hash by posting the hash to a website and/or using time stamp hardware having an authentication capability..
Claim Rejections - 35 USC § 103
6. 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 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.
7. 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.
8. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
9. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
10. Claims 1-7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fisher et al. (US 20160283920 A1, hereinafter, Fisher) in view of Lamesh Lior (WO 2019159172 A1, hereinafter, Lamesh).
Regarding claim 1, Fisher discloses a method of storing documents comprising: creating a hash of a document (Paragraph 0009: a hash file or), or at least a portion thereof;
applying a time stamp to the hash by posting the hash to a website (Paragraph 0010: performing the tasks of posting a hash file or address in a blockchain and retrieving the hash file to authenticate the original digital file that produced the hash; Fig. 5 and associated texts)
and/or using time stamp hardware having an authentication capability;
[combining the time stamp and the hash to create a time-stamped hash of the document] (Paragraph 0027: one hash could be produced that represents each block of data, and thus 240 blocks of data would produce 240 unique hashes. These hashes could subsequently be combined in a Merkle tree to yield one master hash); and
posting the time-stamped hash of the document on a new blockchain (Paragraph 0033: posting for public viewing as a read only file said at least one said hash file and/or hash blockchain and at least one timestamp; sending at least one transaction confirmation and/or identifier to said user smart device).
Fisher does not explicitly disclose but Lamesh Lior from the same or similar fields of endeavor teaches combining the time stamp and the hash to create a time-stamped hash of the document (Lamesh, Page 26, Paragraph 03, lines 25-35, Page 27, Paragraph 02, lines 8-19: a timestamp of the calendric time in which the hash is added to the blockchain)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combining the time stamp and the hash to create a time-stamped hash of the document as taught by Lamesh in the teachings of Fisher for the advantage of storing and securing cryptocurrency by signing input using the private key (Lamesh, Abstract).
Regarding claim 2; Claim 2 recites similar elements to claim 1, and is therefore rejected under similar rationale (See, additional disclosures in Fisher, Paragraphs 0014, 0021: “create a second and/or other hash file from digital data 58 receiving hash file and timestamp from server 59 compares hash file to second and/or other hash file”).
Regarding claim 3; Claim 3 recites similar elements to claim 1, and is therefore rejected under similar rationale (See, additional disclosures in Fisher, Paragraphs 0014, 0021: “create a second and/or other hash file from digital data 58 receiving hash file and timestamp from server 59 compares hash file to second and/or other hash file”).
Regarding claim 4, the combination of Fisher and Lamesh discloses the method of claim 1, wherein the hash and the time stamp are hashed to create a time- stamped document hash (TSDH) of the document and the time stamp, and the TSDH is posted on the new blockchain (Fisher, Paragraphs 0029-0033, Claims 1 and 3: “posting for public viewing as a read only file said at least one said hash file and/or hash blockchain and at least one timestamp; sending at least one transaction confirmation and/or identifier to said user smart device.. hosting one or more websites and/or browsers, and can be addressed with at least one URL and/or name”).
Regarding claim 5, the combination of Fisher and Lamesh discloses the method of claim 2, wherein at least one of the first hash and the first time stamp are hashed to create a first time-stamped document hash (TSDH) of the first document and the first time stamp, and the first TSDH is posted on the new blockchain (Fisher, Paragraphs 0029-0033, Claims 1 and 3: “posting for public viewing as a read only file said at least one said hash file and/or hash blockchain and at least one timestamp; sending at least one transaction confirmation and/or identifier to said user smart device.. hosting one or more websites and/or browsers, and can be addressed with at least one URL and/or name”).
Regarding claim 6, the combination of Fisher and Lamesh discloses the method of claim 3, wherein at least one of the first hash and the first time stamp are hashed to create a first time-stamped document hash (TSDH) of the first part of the document and the first time stamp, and the first TSDH is posted on the new blockchain (Fisher, Paragraphs 0029-0033, Claims 1 and 3: posting for public viewing as a read only file said at least one said hash file and/or hash blockchain and at least one timestamp; sending at least one transaction confirmation and/or identifier to said user smart device.. hosting one or more websites and/or browsers, and can be addressed with at least one URL and/or name).
Regarding claim 7, the combination of Fisher and Lamesh discloses the method of claim 1, wherein the new blockchain is independent of any other blockchain, which may have been used or referenced to create and/or store the document, or the hash, or which may have been used or referenced to create the time stamp (Fisher, Paragraphs 0029-0033, Claims 1 and 3: posting for public viewing as a read only file said at least one said hash file and/or hash blockchain and at least one timestamp; sending at least one transaction confirmation and/or identifier to said user smart device.. hosting one or more websites and/or browsers, and can be addressed with at least one URL and/or name).
Regarding claim 16, the combination of Fisher and Lamesh discloses the method of claim 1, wherein the document comprises at least one of: data elements; and/or photographs; and/or images, and/or photographs of written notes and/or prototypes, and/or one or more visual representations and or electronic audio representations and/or files (Fisher, Paragraphs 0010, 0019: posting a hash file or address in a blockchain and retrieving the hash file to authenticate the original digital file that produced the hash wherein a digital document and/or digital content produces the same hashed result; Paragraph 0027: a hash can be generated for each second of video).
Examiner Notes
11. Claims that set forth a list of alternatives from which a selection is to be made are typically referred to as optional limitations. In the instance case, the recitation of the conjunction “and/or” in the claim language renders alternatives, and thus, it is understood that the prior art needs to disclose only one limitation, from each of the groupings/alternatives, in order to reject the claims. Accordingly, the Examiner has rejected particular limitations from the list of alternatives in the claims and highlighted the particular limitation with bold fonts in the office action (Claim 1 and 16, for example).
The Applicant is suggested to respond to the rejection specific to the selected limitations/features highlighted in the Office Action with bold fonts (since the other limitations/features in the claims are made optional by the alternative grouping).
Further, the Examiner notes that the limitations/features in independent claims appears to recite different subject matters/embodiment of claimed invention. For example, the subject matter in claim 1, claim 2, and claim 3 are directed to different embodiments as the scope of aforesaid claims are different. In an effort to advance compact prosecution, with respect to any amendments to the claimed invention, the applicant is respectfully requested to incorporate same limitations/features across all independent claims or cancel the claims that are different in scope.
Furthermore, the Examiner notes that incorporating the combined limitations of claims 4 and 7 into independent claim 1 would better clarify the subject matter/embodiment of claimed invention. Similarly, amending independent claims 2 and 3 with aforesaid claim limitations would help advance the prosecution as it would clarify the claimed invention.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jain et al. (US 20200336907 A1) discloses a digital media authentication system comprises a media processing application executed by a mobile electronic device that computes a robust image hash for media data acquired by the mobile electronic device.
Shah (US 20190051390 A1) discloses a system comprising diagnostic devices and diagnostician devices located at different locations in a distributed secured network. The system includes a computer-controlled central blockchain server for storing and processing details obtained from the diagnostic devices and the diagnostician devices..
13. In an effort to advance compact prosecution, with respect to any amendments to the claimed invention, the applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Moreover with respect to advancing compact prosecution, if the applicant intends to make numerous amendments, the examiner respectfully requests that applicant submit a clean copy of the claims in addition to the marked up copy of the claims in order to expedite the examination process by allowing for accurate optical character recognition (OCR) of the claims.
The prior art made of record and not relied upon, if any, is considered pertinent to applicant’s disclosure and would be listed under PTO-Form 892.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHFUZUR RAHMAN whose telephone number is (571)270-7638. The examiner can normally be reached on Monday thru Friday.
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/MAHFUZUR RAHMAN/Primary Examiner, Art Unit 2498