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 action is in response to the communication filed on 4/23/26.
Claims 1, 3, 4, 7, 10, 12, 14, 15, 21, 22, 31 – 34, 42, and 43 are pending.
Claims 1, 3, 4, 7, 10, 12, 14, 15, 21, 22, 31 – 34, 42, and 43 are rejected.
Any references to applicant’s specification are made by way of applicant’s U.S. pre-grant printed patent publication.
All objections and rejections not set forth below have been withdrawn.
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.
Claim 43 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claim 43, this claim does not fall within at least one of the four categories of patent eligible subject matter because they are broadly limited to a computer program, i.e. information per se. Computer programs do not fall within any statutory category of invention. Thus, claim 43 is unpatentable.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 4, 7, 10, 12, 14, 15, 21, 22, 31 – 34, 42, and 43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, regarding claims 1 and 4, the applicant’s specification fails to disclose the combined embodiments of “…determining that a sender of the request is a computing module associated with a parent permit and/or a holder of the parent permit by validating a cryptographic signature of the request …” (e.g. claim 1) and “…wherein determining that the sender of the request is the computing module associated with a parent permit or the holder of the parent permit comprises: comparing a permit identifier comprised in the received request and a parent identifier comprised in the first permit data …” (e.g. claim 4).
While, the applicant’s specification does disclose both embodiments (e.g. Specification, par. 15), the applicant fails to teach that the determination of the sender of the request comprises the use of each technique within a single embodiment.
Depending claims are rejected by virtue of dependency.
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 4 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, the recitation, “…wherein determining that the sender of the request is the computing module associated with a parent permit or the holder of the parent permit comprises: comparing a permit identifier comprised in the received request and a parent identifier comprised in the first permit data …” renders the scope of the claims indefinite.
Specifically, antecedent basis already exists for validating the identity of the sender computing module by validating a cryptographic signature (e.g. claim 1), thus it is unclear as to purpose of the secondary identity validation of the sender computer module as recited in claim 4. Furthermore, the applicant’s disclosure fails to ever teach performing the two validations together within a single embodiment.
Claim Rejections - 35 USC § 103
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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.
Claims 1, 3, 4, 7, 10, 12, 14, 15, 21, 22, 31 – 34, 42, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Murdoch et al. (Murdoch), US 2020/0403795 A1 in view of Murdoch et al. (Murdoch-2), US 2021/0273931 A1.
Regarding claim 1, Murdoch discloses:
A computer-implemented method for adding further permissions to a first permit (.e.g. Murdoch, claim 1), comprising the steps:
receiving a request comprising a first permit identifier, wherein the first permit identifier identifies the first permit (e.g. Murdoch, fig. 4:404; par. 104 – request comprising derived decentralized identifier of a DID);
determining that a sender of the request is a computing module associated with a parent permit and/or a holder of the parent permit … (e.g. Murdoch, par. 43, 66, 104 – herein the method verifies the identity of the source, i.e. “parent”, DID owner – a computing module).
Murdoch, teaches a sender’s request for a verified claim(s) to be associated with the sender’s DID, and that the sender should be verified as the owner of the DID. However, Murdoch does not appear to explicitly state that the verification of the sender as owner of the DID is by validating a cryptographic signature of the request.
However, Murdoch-2 teaches that sender’s requests associated with sender’s DID are verified by validated a cryptographic signature of the request, proving the sender is the owner of the DID (e.g. Murdoch-2; par. 127, 130).
It would have been obvious to one of ordinary skill in the art to recognize the teachings of Murdoch-2 within the system of Murdoch, because one of ordinary skill in the art would have been motivated by Murdoch’s teachings that sender’s prove their ownership of DIDs through the use of cryptographic signatures (e.g. Murdoch, par. 48, 51, 52).
Thus, the combination enables:
… by validating a cryptographic signature of the request (e.g. Murdoch, par. 48, 51, 52; Murdoch-2, par. 127, 130; fig. 12).
and obtaining a first permit data based on the first permit identifier (e.g. Murdoch, par. 104) wherein the first permit data comprises data indicative of at least one permission and wherein the at least one permission provides an indication of one or more actions a holder of the first permit can take and/or what the holder of the first permit is allowed to do (e.g. Murdoch, par. 105, 106 – herein claims information, i.e. “permissions”, for the derived DID is obtained).
wherein the request is to add a set of further permissions to the first permit and the request comprises the set of further permissions (e.g. Murdoch, par. 104 – 106 – the request is for the intended use of adding further permissions to the derived DID).
Regarding claim 3, Murdoch does not appear to explicitly state, but Murdoch-2 does disclose:
wherein if the sender of the request is not the parent permit or the holder of the parent permit, the request is not processed (e.g. Murdoch-2, par. 130).
It would have been obvious to recognize Murdoch-2’s teachings for not processing invalid requests within the system of Murdoch for validating sender requests. This would have been obvious because one of ordinary skill in the art would have been motivated by the need to prevent fraudulent activity by preventing invalid actors from performing actions on behalf of valid users.
Regarding claim 4, as best understood in view of the above noted deficiencies of clarity, the combination enables:
wherein determining that the sender of the request is the computing module associated with the parent permit or the holder of the parent permit further comprises:
comparing a permit identifier comprised in the received request and a parent identifier comprised in the first permit data (e.g. Murdoch, par. 43, 66, 104); and confirming the sender of the request is the computing module associated with parent permit or the holder of the parent permit based on the comparing (e.g. Murdoch, par. 43, 66, 104).
Regarding claim 7, the combination enables:
further comprising the step of continuing processing the request based on a determination of whether the first permit has been revoked (e.g. Murdoch, par. 75, 78, 87; Murdoch-2, 130 – Herein, the sender cannot be validated if the DID has been revoked).
Regarding claim 10, the combination enables:
determining a maximum number of sets of permissions would not be exceeded with an addition of the set of further permissions and continuing processing the request based on the determination (e.g. Murdoch, par. 100, 103, 105 – only sets of claims that are permitted by the owner are allowed to be included).
Regarding claim 12, the combination enables:
wherein the request comprises a string to identify the set of further permissions (e.g. Murdoch, par. 47).
Regarding claim 14, the combination enables:
further comprising the step of adding the set of further permissions to the permit (e.g. Murdoch, par. 105, 106).
Regarding claim 15, the combination enables:
wherein data indicative of the at least one permission is an object comprising at least one name-value pair (e.g. Murdoch, fig. 5).
Regarding claim 21, the combination enables:
wherein the first permit is part of a hierarchy of permits (e.g. Murdoch, par. 96 – 98 – indexed hierarchy).
Regarding claim 22, the combination enables:
wherein the first permit data comprises at least one or more of:
an indication as to whether further permits may be generated that are children of the first permit;
at least one namespace, wherein each namespace defines part of a permission a child of the first permit can have (e.g. Murdoch, fig. 2:210; fig. 5);
an indication as to a maximum depth of descendants that the first permit can have;
a maximum number of children permits that the first permit can have;
an array to indicate a maximum number of descendant permits that the first permit can have at different depths;
or a time that indicates when the first permit is valid from or until (e.g. Murdoch, 87; fig. 5 - expiration).
Regarding claim 31, the combination enables:
wherein the first permit identifier obliviates the identity of the holder of the first permit (e.g. Murdoch, par. 47, 67).
Regarding claim 32, the combination enables:
wherein the first permit identifier is a pseudo-randomly generated string of characters (e.g. Murdoch, par. 47, 67, 93 – pseudo random generation is the generation of random numbers via a derivation process).
Regarding claim 33, the combination enables:
transmitting data indicative of the request for storage in a log (e.g. Murdoch, par. 5, 22, 59 – 62; 69, 71 – herein data that results from the verified claim creation request, i.e. “data indicative of the request”, may be transmitted to a ledger, i.e. “a log”).
Regarding claim 34, the combination enables:
transmitting data indicative of the request for inclusion on a blockchain (e.g. Murdoch, par. 5, 22, 59 – 62; 69, 71 – herein data that results from the verified claim creation request, i.e. “data indicative of the request”, may be transmitted to a ledger, wherein the ledger may be a blockchain).
Regarding claims 42 and 43, they are program and program with medium claims essentially corresponding to the claims above, and they are rejected, at least, for the same reasons, and furthermore because Murdoch discloses a program and medium (e.g. Murdoch, claim 1).
Response to Arguments
Applicant's arguments filed 4/23/26 have been fully considered but they are not persuasive.
Applicant argues or alleges essentially that:
…
… For at least the same reasons as set forth above, it is respectfully submitted that the independent claims 42 and 43 reference claim 1 and recite patent eligible subject matter under 35 U.S.C. § 101 for similar reasons.
…
(Remarks, pg. 10)
Examiner respectfully responds:
The examiner respectfully notes that claim 43 comprises only computer code, and thus while it may reference claim 1, it still fails to fall within any statutory category of invention.
Applicant’s arguments with respect to the prior art rejection of the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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 JEFFERY L WILLIAMS whose telephone number is (571)272-7965. The examiner can normally be reached 7:30 am - 4:00 pm.
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, Farid Homayounmehr can be reached at 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFERY L WILLIAMS/Primary Examiner, Art Unit 2495
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