DETAILED ACTION
Amendments submitted on April 22, 2026 for Application No. 18/693056 are presented for examination by the examiner.
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.
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.
Response to Arguments
Applicant’s arguments filed April 22, 2026 have been considered but they are not persuasive. In the remarks applicant argues:
I) On pages 2-8, Applicant argues that the previous Claim Objections, Double Patenting Rejection, 35 USC 112 Rejections, 35 USC 101 Rejection, and the 35 USC 102 and 103 Rejections should be withdrawn.
Applicant’s amendments have overcome these issues and the rejections have been withdrawn. However, the claim amendments have also raised a new 35 USC 112 Rejection as shown below.
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, 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.
Claims 1 and 44 recite “the generated tokens”. The claims recite generating “watermark tokens” and “non-watermark tokens”; however, it is not clear if “the generated tokens” is referring to one of the “watermark tokens” or the “non-watermark tokens” or both or some other set of tokens. Therefore, there is insufficient antecedent basis for this limitation in the claims.
Dependent claims 2-3, 5-6, 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 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 42 recites “1 number of possible watermarked data releases”; however, it is unclear if this should be “a number of possible watermarked data releases”.
Allowable Subject Matter
Claims 1 and 44 are objected to as being allowable when the 35 USC 112 Rejections are overcome. 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, “(a) partitioning an input space corresponding to input data into a non-watermark input subspace and a watermark input subspace, the subspaces being disjoint; (b) deterministically encrypting inputs in the non-watermark input subspace using a first secret key to generate non-watermark tokens; (c) deterministically encrypting inputs in the watermark input subspace using a second secret key to generate watermark tokens; wherein the encryption of each input subspace is achieved independently, and wherein the inputs in the non-watermark input subspace are mapped to non-watermark tokens and the inputs in the watermark input subspace are mapped to watermark tokens, thereby embedding the digital watermark within the generated tokens". 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 2-3, 5-6, 14-19, 23-25, 27-31, 34, 38, and 42 are objected to for the same reasons as cited above and for being dependent on a previously objected to base claim.
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
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 JOHN B KING whose telephone number is (571)270-7310. The examiner can normally be reached on Monday-Friday 10AM-6PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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