DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the RCE filed on 01/11/2026.
Claims 1-3, 6-8 and 10-19 are currently pending in this application. Claims 1 and 19 are amended. Claim 4 is cancelled.
No new IDS has been filed.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/07/2026 has been entered.
Examiner’s Note
Applicants are suggested to include information (e.g., continuous/real time monitoring …, a predefined inactivity period with the continuous monitoring …) mentioned in par. 13 below in the claims may provide the application in a better position for an allowance.
Response to Arguments
Regarding the previous 112(b) rejections, the applicants, in page 6 of the remarks, argued that “… claims 1 and 19 have been amended to overcome the deficiencies noted by the examiner … these amendments render claims 1-3, 6-8 and 10-17 proper under U.S.C. 112(b) …”. However, the applicants’ amendments cause the new rejections stated in the 112(b) rejections section below.
Regarding the 102 rejections, the applicants amended claim 1 to include the similar limitations of the previous claim 4, “… monitoring, by the server, digital activity of computing device of the owner of the digital asset …”, and have, in page 7 of the remarks, argued that “… none of Waller and Keskar, alone or in combination, teach or suggest monitoring, by the server … the owner of the digital asset … by amended independent claim 1 … Waller describes a system … security attribute of the contained data, such as a classification label, a time of creation, a location of creation, priority marking, etc. …”.
Applicants’ this argument is not persuasive.
As the applicants indicated, Waller teaches that “the data provider’s computer sends the digital container object to a data store for allowing user access to the digital container object. The container object includes security attribute, such as a classification label, a time of creation, a location of creation, priority marking, etc.” – see columns 1 and 2 of Waller. It is clear that creation of the data or the digital container object is an activity of the owner of the data and the server of the data store detect or monitor the activity of the owner of the data. In other words, Waller clearly teaches the amended limitations, “monitoring (e.g., detecting/tracking), by the server (e.g., the data store), digital activity (e.g., creating, priority marking, etc. of the data) of computing device of the owner of the digital asset …”.
The applicants further, in pages 7-8 of the remarks, argued that “… none of Waller and Keskar, alone or in combination, teach or suggest … determining, by the server … wherein the release criteria is based on a predefined inactivity period of the computer device of the owner of the digital asset … Keshar further describes checking whether a predefined transfer condition has been satisfied … Applicants assert that Keskar only describes event-based or credential-based monitoring, that is not based on the monitoring of behaviors in form of digital activity … the server in Keskar does not monitor the owner’s digital activity or inactivity since it merely … determining … before sending the digital asset to the designated receiver. Thus, automatic triggering of digital asset transfer is enabled without any manual input or external validation … Keskar only performs passive condition checking … as is shown in Keskar is not the same thing as … determining, by the server … digital asset …”.
The applicants’ these arguments are not persuasive.
First of all, it is noted that the features upon which applicant argues (e.g., … Keskar only describes event-based or credential-based monitoring, that is not based on the monitoring of behaviors in form of digital activity … the server in Keskar does not monitor the owner’s digital activity or inactivity since it merely … determining … before sending the digital asset to the designated receiver. Thus, automatic triggering of digital asset transfer is enabled without any manual input or external validation … Keskar only performs passive condition checking … as is shown in Keskar …”) are NOT recited in the claims. Although the claims are interpreted in light of the specification, limitations for the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Please note that the examination is performed based on the Broadest Reasonable Interpretation (BRI) of the claim limitations. Including the above-mentioned information in the claims may provide the application in a better position for an allowance.
Moreover, Keskar, in figure 4C and paras. 0065 and 0127, teaches that “… the server arrangement receives, from the first client device of the first party, the information pertaining to the one or more digital assets, the transferal condition, the identification details of the second party … the user selectable menu that allows the first party to provide a permission to the server arrangement to facilitate the transfer of the one or more digital assets from the first party to the second party …”. Therefore, it is obvious that Keshar teaches the claimed/argued limitation, “… the release criteria of the digital asset is based on a predefined inactivity period (e.g., not having updated/changed user input/action for the license agreement of fig. 4C for the agreed period) of the computing device of the owner of the digital asset (e.g., releasing/sharing the digital assets of the contract duration of the agreed period). See the 103 rejections section below for detail.
The applicants’ arguments for dependent claims, 2, 3, 6-8 and 10-19 regarding the above responded limitations are not persuasive and the response for these arguments is similar to the response for the claim 1 stated above.
Thus, the applicants’ arguments are not persuasive. Please see amended rejections below for the amended claims.
Claim Rejections - 35 USC § 112
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.
Claims 1-3, 6-8 and 10-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1 recites “… monitoring, by the server, digital activity of computing device … determining, by the server, that the release criteria is met, wherein the release criteria is based on a predefined inactivity period of the computing device …”; however, it is not clear whether the release criteria is based on a comparison of a monitored inactivity period and the predefined inactivity period or not (note: “the predefined inactivity period” (e.g., one month, etc.) does not provide any condition/criteria for releasing the digital asset).
Claims 2, 3, 6-8 and 10-19 depend from the claim 1, and are analyzed and rejected accordingly.
Claims 3, 6, 8, 12, 18 and 19 recite “the owner of the digital asset”, and claims 3, 6, 7, 8, 18 and 19 recite “the designated receiver”, however, claim 1 is amended to change from “the owner of the digital asset” to “a computing device of an owner of the digital asset”, and from “the designated receiver” to “a computing device of a designated receiver”. It is not clear whether “the owner of the digital asset” and “the designated receiver” are the same as “a/the computing device of an owner of the digital asset”, and “a/the computing device of a designated receiver” of the amended claim 1 or not.
Claims 14 and 15 recite “… a computing device of an owner of the digital asset …”; however, it is not clear whether it is the same as “a computing device of an owner of the digital asset” of the claim 1 or not. If they are not the same, suggest to use different name, “a second computing device of an owner of the digital asset”.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-3, 6-8 and 10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Waller et al. (US 8,683,602 B2) in view of Keskar (US 2019/0392407 A1).
As per claim 1, Waller teaches a method of digital asset transfer between a computing device of an owner of the digital asset and a computing device of a designated receiver [see abstract; figs. 2, 4], the method comprising:
receiving, by a server, from the computing device of the owner of the digital asset: an encrypted digital asset, wherein the encrypted digital asset is encrypted by a cryptographic key; and a release criteria, upon which the computing device of the owner of the digital asset is to release and transfer the encrypted digital asset [figs. 2-4; col. 8, lines 30-47; col. 9, lines 3-17; col. 11, lines 46-54 of Waller teaches receiving, by a server (e.g., the server 201, 203 or 204 of fig. 2), from the computing device of the owner of the digital asset (e.g., the digital container object or the data): an encrypted digital asset (e.g., the encrypted data), wherein the encrypted digital asset is encrypted by a cryptographic key (e.g., encrypted using key); and a release criteria (e.g., the authorization policies, the clearance required, security attributes of the data, etc.), upon which the computing device of the owner (e.g., the data producer) of the digital asset is to release and transfer the encrypted digital asset];
receiving, by the computing device of the designated receiver, a decryption key to decrypt the encrypted digital asset, wherein the decryption key is received from the computing device of the owner of the digital asset, and wherein the decryption key corresponds to the cryptographic key [figs. 1, 2, 4; col. 2, lines 6-8; col. 6, lines 29-38 of Waller teaches receiving, by the computing device of the designated receiver (e.g., the data consumer or user), a decryption key to decrypt the encrypted digital asset, wherein the decryption key is received from the computing device of the owner (e.g., the data producer) of the digital asset, and wherein the decryption key corresponds to the cryptographic key];
monitoring, by the server, digital activity of the computing device of the owner of the digital asset [col. 1, lines 63-67; col. 2, lines 3-5; col. 4, lines 1-4 of Waller teaches monitoring (e.g., tracking activities related to the data), by the server (e.g., the server or the key distributor), digital activity (e.g., when and where the data is created or monitoring of the time of creation of the data, the created location of the data, etc.) of the computing device of the owner (e.g., the data provider) of the digital asset (e.g., the data)];
determining, by the server, that the release criteria is met; and sending, by the server, the encrypted digital asset to the computing device of the designated receiver [fig. 2; col. 8, lines 38-41; col. 9, lines 18-22; col. 11, lines 46-54 of Waller teaches determining, by the server, that the release criteria is met; and sending, by the server (e.g., the server), the encrypted digital asset to the computing device of the designated receiver].
Although Waller teaches determining/checking whether the release criteria (e.g., the policies, rules or criteria, etc.) is met by the server – see above, and columns. 2, 8, 9, Waller does not explicitly teach, however, Keskar teaches the release criteria is based on a predefined inactivity period of the computing device of the owner of the digital asset [fig. 4C; par. 0007, lines 1-6; par. 0065, lines 1-16; par. 0066, lines 1-6; par. 0127, lines 1-16 of Keskar teaches that the release criteria of the digital asset is based on a predefined inactivity period (e.g., not having updated/changed user input/action for the license agreement of fig. 4C for the agreed period) of the computing device of the owner of the digital asset (e.g., releasing/sharing the digital assets of the contract duration of the agreed period)].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Waller with the teaching of Keskar to include time information in releasing criteria of digital asset because it provides a reliable and secure process that facilitates the transfer of the digital assets from the owner of the digital asset to a receiver - see par. 0007 of Keskar.
As per claim 2, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches verifying that the decryption key is capable of decrypting the encrypted digital asset to retrieve the digital asset [fig. 4; col. 4, lines 46-51, 64-67; col. 11, lines 60-67; col. 12, lines 1-5 of Waller teaches verifying that the decryption key is capable of decrypting (e.g., the appropriate decryption key) the encrypted digital asset (e.g., the encrypted data) to retrieve the digital asset (e.g., the data)].
As per claim 3, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches wherein the decryption key is received via a second serve associated with the designated receiver, and wherein the decryption key is not accessible to the owner of the digital asset [figs. 1, 2; col. 4, lines 46-51, 64-67; col. 5, lines 28-50 of Waller teaches wherein the decryption key is received via a second serve (e.g., the server, key distributor or the customer/user broker) associated with the designated receiver (e.g., the data consumer or the user), and wherein the decryption key is not accessible to the owner (e.g., the data producer) of the digital asset (e.g., the data)].
As per claim 6, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches wherein the server authenticates the identity of each of the owner of the digital asset and the designated receiver [col. 1, lines 63-67; col. 2, lines 3-20; col. 4, lines 1-4 of Waller teaches wherein the server (e.g., the server or the key distributor) authenticates the identity of each of the owner of the digital asset and the designated receiver (e.g., the identities of the users)].
As per claim 7, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches wherein the server monitors digital activity of the computing device of the designated receiver [col. 9, lines 64-67; col. 10, lines 1-6 of Waller teaches wherein the server monitors digital activity (e.g., sending of the checksum, etc.) of the computing device of the designated receiver (e.g., the user)].
As per claim 8, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches wherein the owner of the digital asset selects an address of the designated receiver for designation of the digital asset to the designated receiver [col. 2, lines 44-56 of Waller teaches wherein the owner (e.g., the data provider who creates the container object) of the digital asset selects an address of the designated receiver for designation of the digital asset (e.g., specifying network location, physical location etc. of the user) to the designated receiver (e.g., the user)].
As per claim 10, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches wherein the digital asset is different cryptographic key for a second digital asset [col. 1, lines 45-62; col. 2, lines 6-36; col. 4, lines 39-42 of Waller teaches the digital asset (e.g., the content or the key information) is different cryptographic key (e.g., the key information itself is the encryption key) for second digital asset (e.g., generating different keys for different documents or distributing one or more decryption keys to an authorized user)].
As per claim 11, Waller in view of Keskar teaches the method of claim 10.
Waller further teaches wherein the encryption of the digital asset is generated in a two-party threshold signatures setup [col. 2, lines 21-36, 66-67; col. 3, lines 1-24 of Waller teaches wherein the encryption of the digital asset is generated in a two-party threshold signatures setup (e.g., the Diffie-Hellman key exchange protocol)].
As per claim 12, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches revoking, by the server, the encrypted digital asset upon instructions from the owner of the digital asset to delete the encrypted digital asset [col. 3, lines 60-67; col. 5, lines 35-41; col. 10, lines 18-37 of Waller teaches revoking, by the server (e.g., the server performing the authorization), the encrypted digital asset upon instructions from the owner of the digital asset (e.g., based on the rules provided from the data provider, presenting the message saying that decryption was not possible if the user does not have the appropriate rights) to delete the encrypted digital asset (e.g., to modify the encrypted form) – see also rejections to the claim 1].
As per claim 13, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches enforcing transfer of the digital asset upon determination that the release criteria is met [col. 2, lines 44-56 of Waller teaches enforcing transfer of the digital asset (e.g., enforcing to transfer encrypted data to the decrypted data using the valid decryption key) upon determination that the release criteria (e.g., the authorization policies, the clearance required, security attributes of the data, etc.) is met – see also rejections to the claim 1].
As per claim 14, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches generating, by a computing device of the owner of the digital asset, a first share of the cryptographic key, based on a multi-party computation (MPC) protocol; generating, by the server, a corresponding second share of the cryptographic key, based on the MPC protocol, wherein the cryptographic key corresponds to a public key and private key pair, and wherein the private key is configured to decrypt shares of the cryptographic key that are encrypted by the public key; signing, by the computing device, the encrypted digital asset with the first share; receiving, by the server, the encrypted digital asset signed with the first share; and signing, by the server, the encrypted digital asset signed with the first share, with the second share [fig. 5; col. 1, lines 47-53; col. 2, lines 21-36, 66-67; col. 3, lines 1-24; col. 4, lines 21-38 of Waller teaches generating, by a computing device of the owner of the digital asset, a first share of the cryptographic key, based on a multi-party computation (MPC) protocol (e.g., the Diffie-Hellman protocol); generating, by the server, a corresponding second share of the cryptographic key, based on the MPC protocol (e.g., the Diffie-Hellman protocol), wherein the cryptographic key corresponds to a public key and private key pair, and wherein the private key is configured to decrypt shares of the cryptographic key (e.g., sharing the key information between the data owner and the authorization server) that are encrypted by the public key; signing, by the computing device, the encrypted digital asset with the first share; receiving, by the server, the encrypted digital asset signed with the first share; and signing, by the server, the encrypted digital asset signed with the first share, with the second share (e.g., using the digital signature to check the integrity of the digital container)].
As per claim 15, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches communicating with an external server to retrieve authentication data for recovery for at least one of the server and a computing device of the owner of the digital asset [fig. 2; col. 8, lines 30-41; col. 9, lines 18-58; col. 10, lines 7-17 of Waller teaches communicating with an external server (e.g., the external authorization broker 201) to retrieve authentication data for recovery for at least one of the server and a computing device (e.g., the internal authorization device) of the owner of the digital asset].
As per claim 16, Waller in view of Keskar teaches the method of claim 15.
Waller further teaches storing the decryption key at the external server; detecting that the server is offline; sending the decryption key to the computing device; and authenticating the decryption key by the computing device [fig. 2; col. 8, lines 30-41; col. 9, lines 18-58; col. 10, lines 7-17 of Waller teaches storing the decryption key at the external server (e.g., generating and releasing the decryption key at the external authorization); detecting that the server is offline; sending the decryption key to the computing device; and authenticating the decryption key by the computing device (e.g., the internal authorization device)].
As per claim 17, Waller in view of Keskar teaches the method of claim 15.
Waller further teaches storing the encrypted digital asset and release criteria at the external server; detecting that the computing device is offline; sending the encrypted digital asset and release criteria to the server; and authenticating the encrypted digital asset and release criteria by the server [fig. 2; col. 8, lines 30-41; col. 9, lines 18-58; col. 10, lines 7-17 of Waller teaches storing the encrypted digital asset and release criteria at the external server (e.g., generating and releasing the decryption key at the external authorization); detecting that the computing device is offline; sending the encrypted digital asset and release criteria to the server; and authenticating the encrypted digital asset and release criteria (e.g., the information derived from the authorization policies and security attributes) by the server – see also the rejections to the claim 1].
As per claim 18, Waller in view of Keskar teaches the method of claim 1.
Although Waller teaches revoking the receiver to receive the encrypted digital asset based on rules provided from the data provider – see col. 3, 5, 10, Waller does not explicitly teach, however, Keskar teaches revoking, by the server, designation of the designated receiver upon instructions from the owner of the digital asset to delete the encrypted digital asset [fig. 4C; par. 0007, lines 1-6; par. 0127, lines 1-16 of Keskar teaches revoking, by the server, designation of the designated receiver upon instructions from the owner of the digital asset to delete the encrypted digital asset (e.g., deletion of the encrypted digital asset of the contract post upon instructions from the owner)].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Waller with the teaching of Keskar to include deleting information in releasing criteria of digital asset because it provides a reliable and secure process that facilitates the transfer of the digital assets from the owner of the digital asset to a receiver - see par. 0007 of Keskar.
As per claim 19, Waller in view of Keskar teaches the method of claim 1.
Waller further teaches generating a new account for the owner of the digital asset, by a dedicated application on the computing device of the owner, wherein the new account is shared with the designated receiver, by the dedicated application on the computing device of the designated receiver; generating, by the server, a secret for each new account of the dedicated application, wherein the generated secret is selected from the group consisting of at least one of: a symmetric key generation, a private-public cryptographic key generation, and a Threshold Signature Scheme (TSS) key generation that is performed between the computing device of the owner and the server; and sharing the decryption key with the computing device of the owner and the computing device of the designated receiver [fig. 5; col. 1, lines 47-53; col. 2, lines 21-36, 57-67; col. 3, lines 1-29; col. 4, lines 1-38 of Waller teaches generating a new account for the owner of the digital asset, by a dedicated application on the computing device of the owner (e.g., generating a key share of the data provider using the Diffe-Hellman cryptographic techniques application), wherein the new account is shared with the designated receiver, by the dedicated application on the computing device of the designated receiver (e.g., generating a decryption key for the encrypted data using cryptographic techniques application); generating, by the server, a secret for each new account of the dedicated application, wherein the generated secret is selected from the group consisting of at least one of: a symmetric key generation (e.g., using a symmetric type of encryption), a private-public cryptographic key generation (e.g., using an asymmetric type of encryption), and a Threshold Signature Scheme (TSS) key generation (e.g., using the Diffe-Hellman cryptographic techniques with shared keys) that is performed between the computing device of the owner and the server; and sharing the decryption key with the computing device of the owner and the computing device of the designated receiver (e.g., using key sharing protocol)]. See also rejections to the claim 14.
Conclusion
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/MAUNG T LWIN/Primary Examiner, Art Unit 2495