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 .
DETAILED ACTION
This is in response to Application #18/670,428 filed on 05/21/2024 in which Claims 1-20 are presented for examination.
Status of Claims
Claims 1-20 are pending, of which Claims 1-20 are rejected under 35 U.S.C. 103.
Applicant’s Most Recent Claim Set of 05/21/2024
Applicant’s most recent claim set of 05/21/2024 is considered to be the latest claim set under consideration by the examiner.
Double Patenting
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim(s) 1-20 (is/are) of the instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-14 of U.S. Patent No. 12,034,853. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application’s Parent Patent No. 12,034,853’s claims 1-14 anticipate claims 1-20 of the instant application
With respect to claim(s) 1-20 of the instant application, please refer to the table below, which illustrates the anticipatory relationship of the claim limitations at issue:
Instant application
U.S. Patent No. 12,034,853
Claim 1
Claim 1
Claim 2
Claim 1
Claim 3
Claim 1
Claim 4
Claim 2
Claim 5
Claim 3
Claim 6
Claim 4
Claim 7
Claim 5
Claim 8
Claim 6
Claim 9
Claim 7
Claim 10
Claim 1
Claim 11
Claim 8
Claim 12
Claim 8
Claim 13
Claim 8
Claim 14
Claim 9
Claim 15
Claim 10
Claim 16
Claim 11
Claim 17
Claim 12
Claim 18
Claim 13
Claim 19
Claim 14
Claim 20
Claim 8
Prior Art Rejections - 35 USC § 102 and/or 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 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.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 2, 4, 5, 6, 11, 12, 14, 15, 16 are rejected under 35 U.S.C. 103 as being unpatentable over “Official Notice and backup prior art reference Schneier” in view of Dunlevy et al US Patent Application Publication #2017/0372300, with the majority of Independent Claim 1’s and Independent Claim 11’s limitations having been either well known in the art for decades or inherently required in order to accomplish a well-known in the art for decades limitation, with Schneier “Applied Cryptography” Second Edition 1996, hereafter Schneier, also utilized as a backup prior art reference to the taking of Official Notice.
Regarding Claim 1, Official Notice and Schneier discloses:
A digital trust architecture comprising: one or more processors configured to [(Official Notice) (Schneier Section 2.5 Par 6 L1-L6, Par 7 L1-L3) where Official Notice and backup prior art Schneier inherently teaches that a computerized PKI operation would eventually need to execute on a hardware processor, even if it was through several layers of virtual machines, in order to retrieve information regarding a sender that would include retrieving the private key of the sender if a transmitted signature of the sender was planned to a recipient, and any electronic data associated with the sender that is planned to be transmitted to the recipient, with the eventually of having to execute the computer instructions on a hardware processor, and the inherency of the processor having to identify or obtain electronic data associated with the sender so that the processor will be able to manipulate that electronic data according to a chosen cryptographic algorithm before transmitting the cryptographically manipulated electronic data to the intended recipient]:
search a public directory for a public key associated with a recipient [(Official Notice) (Schneier Section 2.5 Par 6 L1-L6) where Official Notice and backup prior art Schneier teach the common practice of obtaining a device or user’s public key from a public key director, and the retrieval from a public key directory of the public key for an intended recipient];
encrypt electronic data with the public key associated with the recipient [(Official Notice) (Schneier Section 2.5 Par 6 L1-L6) where Official Notice and backup prior art Schneier teach the common practice of encrypting electronic data intended for a recipient with that recipient’s public key];
receive the electronic data signed using a private key of a sender [(Official Notice) (Schneier Section 2.6, Subsection “Signing Documents with Public-Key Cryptography” Par 2 L2-L3) where Official Notice and backup prior art Schneier teach the common practice of signing electronic data to be sent utilizing the sender’s private key];
convey the electronic data over the network to the recipient [(Official Notice) (Schneier Section 2.6, Subsection “Signing Documents with Public-Key Cryptography” Par 2 L2-L3) where Official Notice and backup prior art Schneier teach the common practice of sending the signed electronic data over a network to the recipient].
Official Notice and Schneier does not appear to explicitly disclose:
transmit a digital token containing contents of the electronic data over a network to one or more blockchains;
However, Dunlevy et al discloses:
transmit a digital token containing contents of the electronic data over a network to one or more blockchains; [(Dunlevy et al Par 21 Lines 1-8; Par 28 Lines 7-15; Par 29 Lines 16-17; Claim 10 Lines 1-9; Fig 1 Items 106, 104) where Dunlevy et al teaches a digital token created from electronic data is transmitted over a network to a blockchain].
Official Notice and Schneier, and Dunlevy et al are analogous art because they are from the “same field of endeavor” and are from the same “problem-solving area”. Namely, they are both from the field of “information security”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Official Notice and Schneier and the teachings of Dunlevy et al by providing a digital token created from electronic data is transmitted over a network to a blockchain as taught by Dunlevy et al in the teaching described by Official Notice and Schneier.
The motivation for doing so would be to increase the usability and flexibility of Official Notice and Schneier by providing a digital token created from electronic data is transmitted over a network to a blockchain as taught by Dunlevy et al in the teaching described by Official Notice and Schneier so as to provide industry standard token capability to a blockchain.
Regarding Claim 2, the combination of Official Notice and Schneier, and Dunlevy et al discloses:
The digital trust architecture of claim 1, wherein the one or more processors are configured to sign the encrypted electronic data is configured using the private key of the sender [(Official Notice) (Schneier Section 2.6, Subsection “Signing Documents with Public-Key Cryptography” Par 2 L2-L3) where Official Notice and backup prior art Schneier teach the common practice of signing electronic data to be sent utilizing the sender’s private key].
Regarding Claim 4, the combination of Official Notice and Schneier, and Dunlevy et al discloses:
The digital trust architecture of claim 1, wherein the encrypted electronic data is decryptable by a private key of the recipient [(Official Notice) (Schneier Section 2.5 Par 6 L1-L6) where Official Notice and backup prior art Schneier teach the common practice of encrypting electronic data intended for a recipient with that recipient’s public key, with the recipient then decrypting that encrypted electronic data with the recipient’s private key upon receipt].
Regarding Claim 5, the combination of Official Notice and Schneier, and Dunlevy et al discloses:
The digital trust architecture of claim 1, wherein the encrypted electronic data is decryptable using a public key of a sender and wherein successful decryption of the electronic data using the public key of the sender verifies that the electronic data is from the sender [(Official Notice) (Schneier Section 1.1 Subsection Public Key Algorithms Par 4 L1-L2) where Official Notice and backup prior art Schneier teach the common practice of encrypting electronic data intended for a recipient with that senders private key, then the recipient decrypting that encrypted electronic data with the sender’s public key upon receipt, this is known to only prove that the transmitted electronic data is from the sender, like it would be with a digital signature, no data is protected].
Regarding Claim 6, the combination of Official Notice and Schneier, and Dunlevy et al discloses:
The digital trust architecture of claim 1, wherein the public directory includes digital certificates for recipients and senders, the digital certificates comprising public keys for the recipients and senders [(Official Notice) (Schneier Section 8.12 Public-Key Management Subsection Public-key Certificates Par 1 L1-L2) where Official Notice and backup prior art Schneier teach the common practice of having a public directory or database that stores public key digital certificates containing public keys for users or recipients and senders which are made publicly accessible].
Regarding Claim 11:
It is a method claim corresponding to the system claim of claim 1. Therefore, claim 11 is rejected with the same rationale as applied against claim 1 above.
Regarding Claim 12:
It is a method claim corresponding to the system claim of claim 2. Therefore, claim 12 is rejected with the same rationale as applied against claim 2 above.
Regarding Claim 14:
It is a method claim corresponding to the system claim of claim 4. Therefore, claim 14 is rejected with the same rationale as applied against claim 4 above.
Regarding Claim 15:
It is a method claim corresponding to the system claim of claim 5. Therefore, claim 15 is rejected with the same rationale as applied against claim 5 above.
Regarding Claim 16:
It is a method claim corresponding to the system claim of claim 6. Therefore, claim 16 is rejected with the same rationale as applied against claim 6 above.
Claim(s) 3,10, 13,20 are rejected under 35 U.S.C. 103 as being unpatentable over “Official Notice and backup prior art reference Schneier” in view of Dunlevy et al US Patent Application Publication #2017/0372300 and further in view of Bailey et al US Patent Application Publication #2007/0186105.
Regarding Claim 3, the combination of Official Notice and Schneier, and Dunlevy et al discloses:
The digital trust architecture of claim 1,
Official Notice and Schneier, and Dunlevy et al does not appear to explicitly disclose:
wherein the one or more processors are further configured create the digital token based on the contents of the signed electronic data
However, Bailey et al discloses:
wherein the one or more processors are further configured create the digital token based on the contents of the signed electronic data [(Bailey et al Par 219 Lines 12-14) where Bailey et al teaches a digital token is created for and based on the contents of signed electronic data].
Official Notice and Schneier and Dunlevy et al, and Bailey et al are analogous art because they are from the “same field of endeavor” and are from the same “problem-solving area”. Namely, they are both from the field of “information security”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Official Notice and Schneier and Dunlevy et al and the teachings of Bailey et al by providing a digital token that is created for and based on the contents of signed electronic data as taught by Bailey et al in the teaching described by Official Notice and Schneier and Dunlevy et al
The motivation for doing so would be to increase the usability and flexibility of Official Notice and Schneier and Dunlevy et al by providing a digital token that is created for and based on the contents of signed electronic data as taught by Bailey et al in the teaching described by Official Notice and Schneier and Dunlevy et al so as to provide a digital token that is based on the contents of signed electronic data and therefore can function as a shorthand or replacement for that data].
Regarding Claim 10, the combination of Official Notice and Schneier and Dunlevy et al, and Bailey et al discloses:
The digital trust architecture of claim 1, wherein the one or more processors are further configured to create a digital token for the signed electronic data [(Bailey et al Par 219 Lines 12-14) where Bailey et al teaches a digital token is created based on the contents of signed electronic data with this signed electronic data actually being retained on the digital token.
Regarding Claim 13:
It is a method claim corresponding to the system claim of claim 3. Therefore, claim 13 is rejected with the same rationale as applied against claim 3 above.
Regarding Claim 20:
It is a method claim corresponding to the system claim of claim 10. Therefore, claim 20 is rejected with the same rationale as applied against claim 10 above.
Claim(s) 7, 8, 9, 17, 18, 19 are rejected under 35 U.S.C. 103 as being unpatentable over “Official Notice and backup prior art reference Schneier” in view of Dunlevy et al US Patent Application Publication #2017/0372300 and further in view of Toh et al US Patent Application Publication #2002/0129238.
Regarding Claim 7, the combination of Official Notice and Schneier, and Dunlevy et al discloses:
The digital trust architecture of claim 6,
Official Notice and Schneier, and Dunlevy et al does not appear to explicitly disclose:
wherein the public directory comprises recipient and sender accounts for the recipients and senders and the digital certificates, and wherein the recipient and sender accounts are configurable to selectively searchable by the one or more processors.
However, Toh et al discloses:
wherein the public directory comprises recipient and sender accounts for the recipients and senders and the digital certificates, and wherein the recipient and sender accounts are configurable to selectively searchable by the one or more processors [(Toh et al Par 56 Lines 1-20) where Toh et al teaches a public certificate directory accessible by the general public containing both user or recipient and sender accounts and their digital certificates which are processor selectively searchable by search items like registered email address, account name, and/or account number].
Official Notice and Schneier and Dunlevy et al and Toh et al are analogous art because they are from the “same field of endeavor” and are from the same “problem-solving area”. Namely, they are both from the field of “information security”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Official Notice and Schneier and Dunlevy et al and the teachings of Toh et al by providing a public certificate directory accessible by the general public containing both user or recipient and sender accounts and their digital certificates which are processor selectively searchable by search items like registered email address, account name, and/or account number as taught by Toh et al in the teaching described by Official Notice and Schneier and Dunlevy et al
The motivation for doing so would be to increase the usability and flexibility of Official Notice and Schneier and Dunlevy et al by providing a public certificate directory accessible by the general public containing both user or recipient and sender accounts and their digital certificates which are processor selectively searchable by search items like registered email address, account name, and/or account number as taught by Toh et al in the teaching described by Official Notice and Schneier and Dunlevy et al so as to provide an easy way for user or recipient and sender accounts to share their public key certificates with the public.
Regarding Claim 8, the combination of Official Notice and Schneier, and Dunlevy et al, and Toh et al discloses:
The digital trust architecture of claim 1, wherein the one or more processors are configured to search the public directory using a recipient identifier. [(Toh et al Par 56 Lines 1-20) where Toh et al teaches a public certificate directory accessible by the general public containing both user or recipient and sender accounts and their digital certificates which are processor selectively searchable by search items like registered email address, account name, and/or account number, in which the registered email address, account name, and account number can all be viewed as a recipient identifier that is processor searchable]..
Regarding Claim 9, the combination of Official Notice and Schneier, and Dunlevy et al, and Toh et al discloses:
The digital trust architecture of claim 8, wherein the recipient identifier comprises a recipient email address (Toh et al Par 56 Lines 1-20) where Toh et al teaches a public certificate directory accessible by the general public containing both user or recipient and sender accounts and their digital certificates which are processor selectively searchable by search items like registered email address, account name, and/or account number, in which the registered email address, account name, and account number can all be viewed as a recipient identifier that is processor searchable].
Regarding Claim 17:
It is a method claim corresponding to the system claim of claim 7. Therefore, claim 17 is rejected with the same rationale as applied against claim 7 above.
Regarding Claim 18:
It is a method claim corresponding to the system claim of claim 8. Therefore, claim 18 is rejected with the same rationale as applied against claim 8 above.
Regarding Claim 19:
It is a method claim corresponding to the system claim of claim 9. Therefore, claim 19 is rejected with the same rationale as applied against claim 9 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sandhu et al - US_20020078346 - Sandhu et al teaches the protection of personal user information in a secure communications network.
MacMilllan - US_20040260698 - MacMilllan teaches the protection of personal user information in a private database.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY HOLDER whose telephone number is 571-270-3789. The examiner can normally be reached on Monday-Friday 10:00AM-7:00PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linglan Edwards, can be reached on (571) 270-5440. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY W HOLDER/
Primary Examiner, Art Unit 2408