DETAILED ACTION
The instant application having Application No. 18/693056 filed on March 18, 2024 is presented for examination by the examiner. Preliminary amendments were also submitted on March 18, 2024.
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.
The Examiner would note that multiple 35 USC 102 prior art references were found that teach the independent claims and some dependent claims. Therefore, there are multiple prior art rejections below using two of the 35 USC 102 prior art references.
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 .
Internet Communications
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, found at http:/www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax, which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Applicant is also encouraged to contact the Examiner for an Interview, should the Applicant determine that clarifying and further illustrating the distinguishing features of the instant application may further the prosecution.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P. 609(C), a copy of the PTOL-1449 initialed and dated by the examiner is attached to the instant office action.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
Priority
As required by M.P.E.P. 201.14(c), acknowledgement is made of applicant’s claim for priority based on applications filed on September 22, 2021 (GB2113485.3).
Claim Objections
Claims 23 and 44 are objected to because of the following informalities:
Claim 23 recites “the data release”, which should be “the watermarked data release”.
Claim 44 recites “the system”, which should be “the computing system”.
Appropriate correction is required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 5-6, 8, 23, 30-31, 34, 38, and 44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 10, 12, 15, 17-18, 26, and 28 of U.S. Patent No. 11681825 and claims 1-3 and 6-9 of U.S. Patent No. 12393730. Although the claims at issue are not identical, they are not patentably distinct from each other because the Instant Application is a broader version of US Patents 11681825 and 12393730 and they are both drawn towards anonymizing/tokenizing data and adding a watermark to the anonymized/tokenized data.
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.
Claims 1-3, 5-6, 8-9, 14-19, 23-25, 27-31, 34, 38, 42, and 44 are 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.
The examiner has cited particular examples of 35 U.S.C. 112 rejections below. It is respectfully requested that, in preparing responses, the applicant check the claims for further 35 U.S.C. 112 rejections in the event that it was inadvertently missed by the examiner to advance prosecution. The claim dependencies were amended in the preliminary amendment which has caused many 35 USC 112 issues. The Examiner has attempted to correct the claim dependencies as shown below to correct some of these issues.
Claims 1 and 44 recite “the set of generated tokens”. The claims recite generating tokens from a set of input data; however, a set of generated tokens is never clearly generated or mentioned in the claims. Therefore, there is insufficient antecedent basis for this limitation in the claims.
Dependent claims 2-3, 5-6, 8-9, 14-19, 23-25, 27-31, 34, 38, and 42 are rejected for the same reasons as above and for being dependent on a previously rejected base claim.
Claim 2 recites “the choice”; however, there is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “the encryption scheme”. It is unclear if this is referring to the “deterministic encryption scheme” as defined in claim 1 or if this is a different encryption scheme. Therefore, there is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites “the inputs”; however, it is unclear if this is referring to the “set of input data” as defined in claim 1 or a different input. Claim 6 also recites “inferring these inputs from a knowledge of the input space and what the input space represents”; however, it is unclear what this means or how the system can infer what inputs should be mapped to watermark tokens.
Claim 8 recites “inputs”; however, it is unclear if this is referring to the “set of input data” as defined in claim 1, “the inputs” as defined in claim 6, or a different input. The Examiner would note that claim 8 was originally dependent on claim 6 and claim 8 appears to further define the identifying of the inputs of claim 6; therefore, claim 8 is interpreted as being dependent on claim 6.
Claim 8 also recites “identifying inputs that are less likely to appear or be encountered”; The term “less likely to appear or be encountered” is a relative term which renders the claim indefinite. The term “less likely to appear or be encountered” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What one person interprets as less likely may be completely different from what another person considers as less likely. Therefore, the term is considered as relative and indefinite. The Examiner will interpret the claim as mapping inputs to watermark tokens.
Claim 9 recites “the inputs”; however, it is unclear if this is referring to the “set of input data” as defined in claim 1 or a different input. Claim 9 also recites “the encryption of each input subspace”; however, this limitation does not have antecedent basis in the claim.
Claim 14 recites “the digital watermark pattern”; however, there is insufficient antecedent basis for this limitation in the claim. Claim 14 also refers to “their” tokens hash; however, it is unclear what “their” is referring to. As shown below, in regards to claim 15, the Examiner will interpret claim 14 as being dependent from claim 9.
Claim 15 recites “the tokens”; however, it is unclear if this is referring to the generated tokens as defined in claim 1 or the watermark tokens as defined in claim 14. As claim 15 depends from claim 14, the Examiner will interpret “the tokens” to be “the watermark tokens” as defined in claim 14. Additionally, claim 15 mentions the token “subspace” where “a token resides”. However, claim 15 or its parent claims do not mention the token subspace. Claim 9 defines the token subspace. As claim 15 depends from claim 14 and claim 9 defines the token subspace, the Examiner will interpret claim 14 to be dependent from claim 9 to clarify/correct the token subspace issue.
Claim 16 recites “the hash space”; however, there is insufficient antecedent basis for this limitation in the claim. The hash space was defined in claim 14; therefore, the Examiner will interpret claim 16 to be dependent from claim 14 to clarify/correct this issue.
Claim 17 recites “the entire token space”; however, there is insufficient antecedent basis for this limitation in the claim. It is unclear if this is referring to the token subspace as defined in claim 9, the token hash space as defined in claim 14, or a different token space. Therefore, the Examiner believes that claim 17 should be dependent from claim 9 or claim 14 to help clarify this issue.
Claim 18 recites “the token space”; however, there is insufficient antecedent basis for this limitation in the claim. It is unclear if this is referring to the token subspace as defined in claim 9, the token hash space as defined in claim 14, or a different token space. Therefore, the Examiner believes that claim 18 should be dependent from claim 9 or claim 14 to help clarify this issue. As shown below, in regards to claim 19, the Examiner will interpret claim 18 as being dependent from claim 14.
Claim 19 recites “the first token”, “the predefined range”, “the starting index”, and “the final index”; however, there is insufficient antecedent basis for these limitation in the claim. Claim 19 also recites the word “if” which is unclear if the steps are actually performed or not. The Examiner suggests changing the word “if” to “when” to more positively recite the steps. As “the predefined range” was defined in claim 14 and claim 19 depends from claim 18, the Examiner will interpret claim 18 as being dependent from claim 14 to help clarify the predefined range issue.
Claim 23 recites “the parameters”; however, there is insufficient antecedent basis for this limitation in the claim.
Claim 24 recites “the hash space” and “the bin”; however, there is insufficient antecedent basis for these limitation in the claim. As the hash space and the bin are defined in claim 16, the Examiner will interpret claim 24 as being dependent on claim 16 to help clarify this issue.
Claim 25 recites “multiple hash functions have been used” and “each bin”; however, the multiple hash functions and bins have not been defined. The Examiner will interpret claim 25 as being dependent on claim 24 to help clarify these issues.
Claim 29 recites “the reconstruction of the digital watermark”; however, there is insufficient antecedent basis for this limitation in the claim. As the watermark was reconstructed in claim 24, the Examiner will interpret claim 29 as being dependent from claim 24.
Claim 30 recites “the addition or removal”; however, there is insufficient antecedent basis for this limitation in the claim.
Claim 31 recites “the extraction”, “the likelihood”, and “the hash bin”; however, there is insufficient antecedent basis for these limitations in the claim. As the hash bin was defined in claim 24, the Examiner will interpret claim 31 as being dependent from claim 24 to help clarify some of these issues.
Claim 38 recites “the same set of input data”; however, there is insufficient antecedent basis for this limitation in the claim. Additionally, claim 38 also recites “each data release”, but the concept of generating a data release or multiple data releases was not defined in claim 1.
Claim 42 recites “the number of possible watermarked data releases” and “the token space”; however, there is insufficient antecedent basis for these limitations in the claim. It is unclear if “the token space” is referring to the token subspace as defined in claim 9, the token hash space as defined in claim 14, or a different token space.
The Examiner has noted significant issues supra as to the pending claims under 35 U.S.C. 112. Presently, the pending claims do not adequately reflect what the disclosed invention is. The following prior art rejections are based upon the examiner’s best interpretation of the claims. In light of the precedence set forth in In re Steele, 305 F.2d 859, 862 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970), the Examiner applies cited art in accordance with a position as best understood in the context of the claims and the invention as a whole to expedite compact prosecution. Such interpretations of the claims versus the cited art cannot be used as a basis for overcoming the objections or rejections set forth supra. Any claim not objected or rejected in view of art does not ascribe allowable subject matter, but remains pending and rejected under their respective titles supra.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 44 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites generating tokens and embedding a watermark in the tokens.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, is an abstract idea drawn to performing mathematical calculations but for the recitation of generic computer components. That is, other than reciting “a computer implemented process” (in claim 1) and “a processor” (in claim 44) to perform the steps, nothing in the claim element precludes the steps from merely being the performance of mathematical calculations. For example, but for the “computer implemented process” and “processor” language, generating tokens and embedding a watermark in the tokens in the context of the claims encompasses the performance of mathematical calculations. If a claim limitation, under its broadest reasonable interpretation, covers performing the abstract idea of mathematical calculations but for the recitation of generic computer components, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a computer or a processor to perform the steps. The computer and processor in the claims are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of generating tokens and embedding a watermark in the tokens) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2-3, 5-6, 8-9, 14-19, 23-25, 27-31, 34, 38, and 42 are also rejected for the same reason as cited above for not reciting any additional elements that amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 23, 30, 38, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McFall (US 2020/0327252). McFall was previously published as WO2017187207 on November 2, 2017.
As per claims 1 and 44, McFall discloses Computer implemented process for embedding a digital watermark within tokenised data, the process comprising the steps of:
(a) generating tokens from a set of input data (McFall, paragraph 356-359, teaches masking and tokenizing large datasets. McFall, paragraphs 370-374, teaches generating the tokens consistently or inconsistently. McFall, paragraphs 375-379, teaches storing the generated tokens in a token vault.), in which tokens are generated using a deterministic encryption scheme (McFall, paragraph 379, teaches encrypting the inputs that are stored as a token, which is deterministic as the same input will always result in the same output.); and
(b) embedding the digital watermark within the set of generated tokens (McFall, paragraphs 321, 328, 350-355, teaches that a file contains a publisher watermark that can be used to identify a job run along with other features of the file. McFall, paragraphs 796, 804-805, 891, and 905, teaches including watermarks in the anonymized token data as part of the tokenization process.)
As per claim 3, McFall discloses The process of claim 1, in which the digital watermark can be reconstructed without prior knowledge of the encryption scheme, or any other processing used on the set of input data (McFall, paragraphs 350-355, teaches obtaining the watermark to reveal the job run as well as other attributes of the file. As the watermark is applied to the already generated tokens knowledge of the encryption scheme would not be needed to obtain the watermark.)
As per claim 23, McFall discloses The process of claim 1, in which the process includes the step of generating a watermarked data release, and in which the digital watermark is chosen or selected based on the parameters of the data release (McFall, paragraphs 321, 328, 350-355, teaches that a file contains a publisher watermark that can be used to identify a job run along with other features of the file. McFall, paragraphs 796, 804-805, 891, and 905, teaches including watermarks in the anonymized token data as part of the tokenization process. McFall, paragraph 808, teaches adding the watermark using a known probability distribution of numbers of IDs. Therefore, the watermark is chosen to identify a particular job run for that file/data release.)
As per claim 30, McFall discloses The process of claim 1, in which the process is able to handle noise, including the addition or removal of rows of a watermarked data release (McFall, paragraphs 321, 328, 350-355, teaches that a file contains a publisher watermark that can be used to identify a job run along with other features of the file. McFall, paragraphs 796, 804-805, 891, and 905, teaches including watermarks in the anonymized token data as part of the tokenization process. McFall, paragraph 808, teaches adding the watermark using a known probability distribution of numbers of IDs. Therefore, the watermark is added to any file/data release regardless of the addition or removal of data or tokens.)
As per claim 38, McFall discloses The process of claim 1, in which each data release corresponding to the same set of input data that has been tokenised includes a different digital watermark (McFall, paragraphs 321, 328, 350-355, teaches that a file contains a publisher watermark that can be used to identify a job run along with other features of the file. McFall, paragraphs 796, 804-805, 891, and 905, teaches including watermarks in the anonymized token data as part of the tokenization process. McFall, paragraph 808, teaches adding the watermark using a known probability distribution of numbers of IDs. Therefore, the watermark is chosen to identify a particular job run for that file/data release. So each data release or set of input data would have a different watermark based on the job run.)
Claims 1-3, 6, 23, 30, 34, 38, and 44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McFall 2 (WO 2017/093736).
As per claims 1 and 44, McFall 2 discloses Computer implemented process for embedding a digital watermark within tokenised data, the process comprising the steps of:
(a) generating tokens from a set of input data (McFall 2, abstract and pages 3-5, teaches adding a digital watermark to anonymized data where the anonymizing includes tokenizing the data.), in which tokens are generated using a deterministic encryption scheme (McFall 2, page 13, teaches tokenizing fields by encrypting them with an encryption key, which is deterministic as the same input will always result in the same output.); and
(b) embedding the digital watermark within the set of generated tokens (McFall 2, abstract and pages 3-5 and 9-10, teaches adding a digital watermark to anonymized data where the anonymizing includes tokenizing the data.)
As per claim 2, McFall 2 discloses The process of claim 1, in which the digital watermark includes a pattern that is probabilistically embedded through the choice of tokens within the set of generated tokens, and not in metadata or redundant data (McFall 2, pages 3-4, claim 10 and claim 16, teaches watermarking by choosing which records to include and which records to suppress. McFall 2, abstract, pages 3 and 9, teaches that the watermark is included on a probabilistic basis. McFall 2, page 3, teaches watermarking by including patterns. McFall 2, pages 2-3, teaches watermarking in a file that does not contain metadata or redundant data or including the watermark in raw data that has been anonymized and not in the metadata or redundant data.)
As per claim 3, McFall 2 discloses The process of claim 1, in which the digital watermark can be reconstructed without prior knowledge of the encryption scheme, or any other processing used on the set of input data (McFall 2, pages 4-5, teaches reconstructing the watermark without any knowledge of an encryption scheme.)
As per claim 6, McFall 2 discloses The process claim 1, in which the process includes the step of determining or identifying the inputs that should be mapped to watermark tokens by scanning or observing an input space that corresponds to the set of input data or by inferring these inputs from a knowledge of the input space and what the input space represents (McFall 2, claim 18, teaches encoding a watermark into the anonymized data as a number and storing the number in a watermark registry that mapped to another number. McFall 2, page 3, teaches watermarking by tokenization by selecting replacement values according to a key or pattern. McFall 2, pages 5-6, teaches the watermark contains N watermark digits that can be used to exclude certain output tokens and N is set based on the number of input values that require tokenization.)
As per claim 8, McFall 2 discloses The process of claim 1, in which the process includes the steps of determining or identifying inputs that are less likely to appear or be encountered and mapping these inputs to watermark tokens (McFall 2, claim 18, teaches encoding a watermark into the anonymized data as a number and storing the number in a watermark registry that mapped to another number. McFall 2, page 3, teaches watermarking by tokenization by selecting replacement values according to a key or pattern. McFall 2, pages 5-6, teaches the watermark contains N watermark digits that can be used to exclude certain output tokens and N is set based on the number of input values that require tokenization.)
As per claim 23, McFall 2 discloses The process of claim 1, in which the process includes the step of generating a watermarked data release, and in which the digital watermark is chosen or selected based on the parameters of the data release (McFall 2, page 4, teaches the number to be watermarked is related to a random number, an email address, a unique ID of a person, or a unique text string.)
As per claim 30, McFall 2 discloses The process of claim 1, in which the process is able to handle noise, including the addition or removal of rows of a watermarked data release (McFall 2, page 5, teaches encoding the watermark into each row of a file so that removal or addition of rows has a negligible effect of watermarking the file or reconstructing the watermark.)
As per claim 34, McFall 2 discloses The process of claim 1, in which the process includes the step of generating a data release, and in which the digital watermark is chosen or selected based on the parameters of the data release, and in which the parameters of the data release include: the data release recipient(s), the data release intended use, a date by which the data release must be deleted, the type of input data that has been tokenised, or the deterministic encryption scheme used (McFall 2, page 4, teaches the number to be watermarked is related to a random number, an email address, a unique ID of a person, or a unique text string. McFall 2, pages 1 and 4 and claim 24, teaches the watermark can include the intended use of the data.)
As per claim 38, McFall 2 discloses The process of claim 1, in which each data release corresponding to the same set of input data that has been tokenised includes a different digital watermark (McFall 2, page 3, teaches that each data release is watermarked with a unique value for each data release.)
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over McFall in view of Aalto (US 2021/0319647).
As per claim 5, McFall discloses The process of claim 1, in which the deterministic encryption scheme … (McFall, paragraph 379, teaches encrypting the inputs that are stored as a token, which is deterministic as the same input will always result in the same output.)
However, McFall does not specifically teach a pseudorandom permutation scheme based on a format preserving encryption cipher.
Aalto discloses a pseudorandom permutation scheme based on a format preserving encryption cipher (Aalto, paragraph 59, teaches a pseudorandom permutation that is performed using a format preserving encryption algorithm.)
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Aalto with the teachings of McFall. McFall teaches encrypting the data. Aalto teaches encrypting the data using a pseudorandom permutation that is performed using a format preserving encryption algorithm. Therefore, it would have been obvious to have encrypted the data using a pseudorandom permutation that is performed using a format preserving encryption algorithm as this would have been a simple substitution of one known form of encryption for another to yield the predictable results of encrypting the data.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over McFall 2 in view of Aalto (US 2021/0319647).
As per claim 5, McFall 2 discloses The process of claim 1, in which the deterministic encryption scheme … (McFall 2, page 13, teaches tokenizing fields by encrypting them with an encryption key, which is deterministic as the same input will always result in the same output.)
However, McFall does not specifically teach a pseudorandom permutation scheme based on a format preserving encryption cipher.
Aalto discloses a pseudorandom permutation scheme based on a format preserving encryption cipher (Aalto, paragraph 59, teaches a pseudorandom permutation that is performed using a format preserving encryption algorithm.)
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Aalto with the teachings of McFall 2. McFall 2 teaches encrypting the data. Aalto teaches encrypting the data using a pseudorandom permutation that is performed using a format preserving encryption algorithm. Therefore, it would have been obvious to have encrypted the data using a pseudorandom permutation that is performed using a format preserving encryption algorithm as this would have been a simple substitution of one known form of encryption for another to yield the predictable results of encrypting the data.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims as well as overcoming the Double Patenting Rejection, the 35 USC 112 Rejections, and the 35 USC 101 Rejection. The following is an examiner’s statement of reasons for allowance: The primary reason for the allowance of the claims is the inclusion of the limitation, inter alia, in which the process includes the step of dividing an input space into two disjoint subspaces, a 'non-watermark input subspace' and a 'watermark input subspace', in which the inputs of the non-watermark input subspace are mapped to non-watermark tokens, and the inputs of the watermark input subspace are mapped to watermark tokens and in which the encryption of each input subspace is achieved independently with each based on a secret key". The closest prior art of record includes:
McFall (US 2020/0327252) – teaches masking and tokenizing large datasets, encrypting the inputs to store the inputs as tokens, and including watermarks in the anonymized tokens. McFall was previously published as WO2017187207 on November 2, 2017.
McFall 2 (WO 2017/093736) – teaches adding a digital watermark to anonymized data where the anonymizing includes tokenizing the data.
Aalto (US 2021/0319647) – teaches a pseudorandom permutation that is performed using a format preserving encryption algorithm.
Hwang (US 2007/0025590) – teaches a watermark subspace.
Celik (US 2009/0013188) – teaches a watermark subspace.
However, the combination of limitations as currently claimed cannot be found in the cited prior art of record.
Claims 14-19, 24-25, 27-29, 31, and 42 are objected to for the same reasons as cited above and for being dependent on a previously objected to base claim. The Examiner would note that some of these dependent claims are objected to as being allowable based on the Examiner interpretation of the claim dependencies based on the 35 USC 112 rejections as shown in further detail above.
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes:
Celik (WO 2007/086029) – teaches a watermark subspace.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B KING whose telephone number is (571)270-7310. The examiner can normally be reached on Monday-Friday 10AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yin-Chen Shaw can be reached on 5712728878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John B King/
Primary Examiner, Art Unit 2498