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 .
Response to Amendments
This communication is in response to the amendments filed on 6 November 2025:
Claims 1 and 6 are amended.
Claims 1-6 are pending.
Response to Arguments
In response to Applicant’s remarks filed on 6 November 2025:
a. Applicant’s arguments regarding the previous 35 U.S.C. 112(b) rejection on claim 6 has been fully considered and is deemed fully persuasive in view of the amendments. The previous 35 U.S.C. 112(b) rejection on claim 6 has been withdrawn. However, a new 35 U.S.C. 112(b) issue has become apparent with the amendments to claim 6.
b. Applicant’s arguments that neither of the references teach the amended limitation of “applying an electronic signature using an identity token stored in a signature verification system” has been fully considered but is deemed moot in view of the new grounds of rejection presented in this Office Action.
Claim Objections
Claim 1 is objected to because of the following informalities:
In Claim 1, Step f), “a user applying an electronic signature using an idientity token stored in a signature verification system” should read “a user applying an electronic signature using an identity token stored in a signature verification system”
Appropriate correction is required.
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.
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.
Claim 6 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 application regards as the invention.
Regarding claim 6, it is unclear due to the lack of antecedent basis for “the permanent document
envelope” in step k), as to whether the permanent document envelope is the same as the permanent document envelope file established in step a). The claim is therefore rendered indefinite.
Appropriate correction(s) is/are required.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over NAKAMURA (U.S. PGPub. 2022/0283987), hereinafter Nakamura, in view of Jakobsson (U.S. PGPub. 2021/0058395), in further view of Caldera et al. (U.S. PGPub. 2019/0222567), hereinafter Caldera.
Regarding claim 1, Nakamura teaches A method for generating a self-authenticating permanent document comprising the steps of:
generating a PDE using a PDE generation tool (Nakamura, FIG. 6, see “ORIGINAL DOCUMENT”, which is being read as a PDE (local identifiable file that can be shared and distributed);
generating a PDE hash (Nakamura, FIG. 6, see “HASH VALUE 1”, which is being read as generating a PDE hash);
adding a document to the PDE (Nakamura, FIG. 6, see “UPDATE 1”, which is being read as adding a document to the PDE);
generating a document hash (Nakamura, FIG. 6, see “HASH VALUE 2”, which is being read as generating a document hash);
adding the document hash to the PDE (Nakamura, FIG. 6, see “HASH VALUE 2”, which is being read as the document hash, which is added to the PDE);
repeating steps b through e for a plurality of documents (Nakamura, FIG. 6, see “HASH VALUE 1, HASH VALUE 2, HASH VALUE 3, etc.”, which is being read as repeating steps b through e for a plurality of documents);
generating a permanent document comprising (Nakamura, FIG. 6, see “IMAGE OF DOCUMENT FILE STORED IN BLOCK OF BLOCKCHAIN NETWORK”, which illustrates generating a permanent document comprising all the document hashes).
Nakamura does not teach the following limitation(s) as taught by Jakobsson: encrypting the
plurality of documents into an encrypted file (Jakobsson, Paragraph [0338], see “…the zipfile, whether encrypted or not, may contain multiple documents, some of which are individually encrypted…”, where plurality of documents are encrypted into an encrypted file (zipfile)).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the techniques disclosed of Nakamura, by implementing techniques of encrypting the plurality of documents into an encrypted file, disclosed of Jakobsson.
One of ordinary skill in the art would have been motivated to make this modification in order to implement techniques for a secure, self-authenticating document verification system, comprising of encrypting the plurality of documents into an encrypted file. This allows for better security management by safeguarding sensitive documents from unauthorized access. Jakobsson is deemed as analogous art due to the art disclosing techniques of encrypting the plurality of documents into an encrypted file (Jakobsson, Paragraph [0338]).
Nakamura as modified by Jakobsson do not teach the following limitation(s) as taught by Caldera: a user applying an electronic signature using an idientity token stored in a signature verification system (Caldera, Paragraph [0064], see “By associating a particular access token and/or a device identity with a known user identity (e.g., represented by his or her electronic signature), the controller can determine whether or not the access token used in a particular instance of access is known to belong to the current user who is presenting the access token”) (Caldera, Paragraph [0072], see “…The contextual data for the access is transmitted to the site and/or the controller in connection with the use of the access token and stored as part of the activity records that is specific for the access from the device”, where “contextual data…in connection with the use of the access token” is analogous as comprising the identity token stored in a signature verification system).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the techniques disclosed of Nakamura, and techniques disclosed of Jakobsson, by implementing techniques of a user applying an electronic signature using an identity token stored in a signature verification system, disclosed of Caldera.
One of ordinary skill in the art would have been motivated to make this modification in order to implement techniques for a secure, self-authenticating document verification system, comprising of a user applying an electronic signature using an identity token stored in a signature verification system. This allows for better security management by determining whether or not the token used in a particular instance is known to belong to the current user who is presenting the access token. Caldera is deemed as analogous art due to the art disclosing techniques of a user applying an electronic signature using an identity token stored in a signature verification system (Caldera, Paragraph [0064]).
Regarding claim 2, Nakamura as modified by Jakobsson and further modified by Caldera teaches The method of claim 1 wherein the step of generating a document hash is generated by a public blockchain ledger for a block to which metadata from the document has been added (Nakamura, FIG. 6, see “IMAGE OF DOCUMENT FILE STORED IN BLOCK OF BLOCKCHAIN NETWORK”, which is being read as the document hashes being generated by a blockchain ledger for a block to which metadata (file size, version information) from the document has been added).
Regarding claim 3, Nakamura as modified by Jakobsson and further modified by Caldera teaches The method of claim 1 wherein the step of generating a document hash is generated by a public blockchain ledger for a block to which metadata from the document, metadata from any previously added documents, and metadata from the PDE have been added (Nakamura, FIG. 6, see “ORIGINAL DOCUMENT”, “IMAGE OF DOCUMENT FILE STORED IN BLOCK OF BLOCKCHAIN NETWORK”, “HASH VALUE 1”, “FILE SIZE, VERSION INFORMATION,” where “ORIGINAL DOCUMENT” is being read as the PDE, where “HASH VALUE 1” is considered metadata from the PDE, see “IMAGE OF DOCUMENT FILE STORED IN BLOCK OF BLOCKCHAIN NETWORK,” which comprises “FILE SIZE” and “VERSION INFORMATION” (metadata) of documents and any previously added documents in the public blockchain ledger).
Regarding claim 4, Nakamura as modified by Jakobsson and further modified by Caldera teaches The method of claim 1 wherein the step of generating a document hash is generated by a public blockchain ledger for a block to which metadata from the document and metadata from the PDE have been added (Nakamura, FIG. 6, see “FILE SIZE, VERSION INFORMATION” and “HASH VALUE 1”, where “FILE SIZE, VERSION INFORMATION” is being read as metadata from the document and where “HASH VALUE 1”, is being read as metadata from the PDE, which are added to the block by a blockchain ledger).
Regarding claim 5, Nakamura as modified by Jakobsson and further modified by Caldera teaches The method of claim 1 wherein the step of generating a document hash is performed for all documents added to the PDE over a predetermined time period (Nakamura, FIG. 6, see “HASH VALUE 2”, “HASH VALUE 3”, which are all generated for all documents added to the PDE over a predetermined time period, or in other words, whenever the document gets updated over time).
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(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 TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODMAN ALEXANDER MAHMOUDI whose telephone number is (571)272-8747. The examiner can normally be reached on M-F 11:00am – 7:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Chea can be reached on (571) 272-3951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RODMAN ALEXANDER MAHMOUDI/Examiner, Art Unit 2499