DETAILED ACTION
Applicant’s amendment filed 12/2/2025 has been fully considered.
Claims 1-20 are pending and have been examined.
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 Amendment
The rejections under 35 USC § 112 and under 35 USC § 101 are withdrawn.
Applicant’s arguments with respect to the rejection of claims 1-20 on the ground of non-statutory double patenting have been fully considered but they are not persuasive. In particular, applicant requests that the obviousness-type double patenting rejection be held in abeyance.
Examiner notes, however, that this is not a proper reply. As per MPEP § 804(1)(B)(1) [added in 2015-07], a “complete response to a non-statutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321” and that “such a filing should not be held in abeyance”.
The Examiner therefore maintains the non-statutory double patenting as well as notes the requirements for a proper reply for any future response.
Double Patenting
Claims 1-20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of copending applications 18/642891 and 18/664052. Although the conflicting claims are not identical, they are not patentably distinct from each other because
“A computer-implemented method for generating random noise in response to a request for a secure multiparty computation (MPC) comprising: generating, by a first party having a first processor, a quantity of n random first bits according to a binomial distribution; generating, by the first party, a quantity of n l-bit first strings, wherein each of the quantity of n l-bit first strings is randomly sampled from a set of l-bit strings, and the set of l-bit strings comprises 2l distinct l-bit strings; generating, by the first party and based on the quantity of n l-bit first strings and the quantity of n random first bits, a quantity of n pairs of l-bit input messages; receiving, by the first party, a quantity of n pairs of l-bit second strings; performing, by the first party and in communication with a second party having a second processor, a quantity of n 1-out-of-2 random oblivious transfers (ROTs) of the quantity of n pairs of l-bit input messages from the first party to the second party; generating, by the first party and based on the quantity of n l-bit first strings, a first random number, which corresponds to a first share of a random noise value; and performing, by the first party and based on the first random number, the secure MPC that involves the first party and the second party” (claim 1, instant application) is analogous to
“A method for generating a random noise value comprising: receiving, by a first party participating in a multiparty secure computation (“MPC”) instance, a share of a first n-bit random binary number and a plurality of function table segments computed with respect to the first n-bit random binary number; receiving a computation request by the first party of two or more parties participating in the MPC instance, and in response to receiving the computation request: generating a share of a second n-bit random binary number; calculating a first value based on a comparison between the share of the first n-bit random binary number and the share of the second n-bit random binary number; sending the calculated first value to each other party participating in the MPC instance; receiving a respective second value from each other party participating in the MPC instance; reconstructing an overall value of a comparison between the first n-bit random binary number and the second n-bit random binary number using the calculated first value and the received second values; dividing the reconstructed overall value into sections and use each section to obtain a corresponding value of a Hamming weight corresponding to that section from the plurality of function table segments; and summing the Hamming weight values to determine overall Hamming weight of the second n-bit random binary number, which corresponds to a share of the random noise value” (claim 1, copending application 18/664052) and analogous to
“A computer-implemented method for generating random noise in response to a secure multiparty computation request comprising: generating, by a first party, a quantity of n random first bits; generating, by the first party, a quantity of n l-bit strings, wherein each of the quantity of n l-bit strings is randomly sampled from a set of l-bit strings, and the set of l-bit strings comprises 2l distinct l-bit strings; generating, by the first party and based on the quantity of n l-bit strings and the quantity of n random first bits, a quantity of n pairs of l-bit input messages; performing, by the first party and in communication with a second party, a quantity of n 1-out-of-2 oblivious transfers (OTs) of the quantity of n pairs of l-bit input messages from the first party to the second party; generating, by the first party and based on the quantity of n l-bit strings, a first random number, which corresponds to a first share of a randomnoise value; and performing, by the first party and based on the first random number, secure multiparty computation (MPC) that involves the first party and the second party” (claim 1, copending application 18/642891).
This is a provisional obviousness-type double patenting rejection because the conflicting claims of the instant application have not in fact been patented.
The claims of the conflicting patents and/or applications contain every element of claims 1-20 of the instant application and thus anticipate the claims of the instant application. Claims 1-20 of the instant application therefore are not patently distinct from the copending application claims and as such are unpatentable for obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species with that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
“Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is “anticipated” by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim) 4. This court’s predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic claim. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: the remaining references put forth on the PTO-892 form are directed to random oblivious transfers in the context of multiparty computation and private set intersection schemes.
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David García Cervetti whose telephone number is (571)272-5861. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/David Garcia Cervetti/Primary Examiner, Art Unit 2409