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 .
1. Claims 1-10 have been examined.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 06/13/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
3. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
4. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “reception unit”, “verification unit”, “conversion unit” and “transmission unit” in claims 1 and 4-8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
5. Claims 2-7 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.
Claim 2 recites, “the trace concealed” and “the concealment”. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites, “the trace hashed” and “the hashing”. There is insufficient antecedent basis for this limitation in the claim.
Claims 4-6 recite the limitation “the proof”. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the converted secret value" and “the secret value” in liens 6-7. There is insufficient antecedent basis for this limitation in the claim.
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.
6. Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because:
Claim 10 is directed towards “A computer program product …” One of ordinary skill would recognize the broadest, reasonable interpretation of “a computer program product” would include products that do not have a physical form, i.e. “data per se”, a computer program, i.e. “software per se”, or transitory forms of signal transmission, i.e. “signals per se”. Therefore, the claim has embodiments which are directed towards non-statutory subject matter. Note MPEP 2106.03.
Examiner recommends amending the claims to either recite “A non-transitory computer readable medium including a non-transitory computer readable medium storing an information processing program..." to eliminate all non-statutory embodiments of the claims.
7. 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.
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.
8. Claims 1, 4 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Banerjee et al. (“Blockchain Enabled Data Trading with User Consent”; hereafter “Banerjee”).
For claims 1 and 9-10, Banerjee teaches an information processing device, method and computer program product (note page 269, 5. Implementation and Performance Analysis – computer executing code) comprising:
a reception unit that receives a request regarding provision of user information that is information collected from a user (note page 267, Algorithm 3 – Phase 2, 1. and page 268, Phase 2: Collector-Buyer Phase, collector receives a request for owner data from a buyer), the request being for a plurality of pieces of user information collected from a plurality of users (note page 268, Phase 2: Collector-Buyer Phase, data set D1, D2,…Dn comes from owners O1, O2,…On); and
a verification unit that verifies consents of the plurality of users by executing a procedure for collectively proving that a consent has been obtained from each user who is a collection source of the plurality of pieces of user information (note page 267, Algorithm 3 – Phase 2, 2. and page 268, Phase 2: Collector-Buyer Phase, collector generates a Merkle tree over Di verifying only data from consenting owners will be included in the data being sold) on a blockchain in which a trace indicating that the user has consented in advance to provision of the user information to a third party is registered in a case where the request is received by the reception unit (note page 267 Algorithm 2: Owner Phase 1: 3, 5 and page 267 Phase 1: Owner-Collector Phase and page 268 4.4 Security, Consent, owner consent CD made from key commit, i.e. trace, is stored on the blockchain as part of a Transact smart contract execution).
For claim 4, Banerjee teaches claim 1, wherein the verification unit verifies the consents of the plurality of users by verifying that the trace is registered on the blockchain using a smart contract that verifies the proof on the blockchain (note page 268 4.4 Security, Consent, owner consent registered on the blockchain aux is verified by a smart contract executing correctly).
For claim 8, Banerjee teaches claim 1, further comprising:
a transmission unit that in a case where the verification unit verifies the consents of the plurality of users, transmits the user information related to the users whose consents have been verified to request sources of the plurality of pieces of user information (note page 267, Algorithm 1 – Reveal; Algorithm 3, Algorithm 4, Phase 2 – Transact and page 268, Phase 2: Collector-Buyer Phase, both collector and buyer use Transact to trade the data in the case that Merkle tree with data from consenting owners is verified).
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, 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.
9. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Banerjee as applied to claim 1 above, and further in view of Lavine et al. (U.S. Patent Application Publication 2021/0390196; hereafter “Lavine”).
For claim 7. Banerjee differs from the claimed invention in that they fail to teach:
a conversion unit that converts a trace to be concealed when writing the trace in the blockchain, the trace indicating that the user has consented in advance to provide the user information to a third party, acquires the converted secret value, and writes a public value to be paired with the secret value to the blockchain, wherein the verification unit verifies the consents of the plurality of users by using the secret value acquired by the conversion unit and the public value to be paired with the secret value.
Lavine teaches:
a conversion unit that converts a trace to be concealed when writing the trace in the blockchain, the trace indicating that the user has consented in advance to provide the user information to a third party (note paragraph [0051], consent token is encrypted with company’s public key), acquires the converted secret value, and writes a public value to be paired with the secret value to the blockchain (note paragraph [0129], consent token is linked to a consent smart contract), wherein the verification unit verifies the consents of the plurality of users by using the secret value acquired by the conversion unit and the public value to be paired with the secret value (note paragraph [0084] and [0142]-[0143], smart contract is invalidated if properties have changed, i.e. consent has expired or been revoked).
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 data trading with user consent of Banerjee and the user consent tokens with public key encryption and digital signatures of Lavine. One of ordinary skill would have been motivated to combine Banerjee and Lavine because digital signatures would add an extra layer of security to the integrity of the consent tokens (note paragraph [0051] of Lavine).
Allowable Subject Matter
10. Claims 2-3 and 5-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Lavine discloses the concealment of a trace (note public/private keys encrypting consent token above), but the prior art of record fails to disclose the proving a secret value used in the conversion processing for the concealment has been acquired. Banerjee discloses proof of consent (note owner consent CD made from key commit, i.e. trace, is stored on the blockchain as part of a Transact smart contract execution above), but fails to disclose creating the proof by collating or totaling the secret values of users.
The prior art of record, alone or in combination, fails to teach the following limitations in conjunction with the rest of the claimed limitations:
Claim 2 – “the verification unit verifies the consents of the plurality of users by executing a procedure for proving that a secret value used in conversion processing for the concealment has been acquired.”
Claim 3 – “the verification unit verifies the consents of the plurality of users by executing a procedure for proving that a secret value used in conversion processing for the hashing has been acquired.”
Claim 5 – “creating the proof by collating a value obtained by collecting the acquired secret values of the plurality of users with a value obtained by collecting public values written by the plurality of users in the blockchain, and verifying the proof on the blockchain.”
Claim 6 – “verifies the consents of the plurality of users by creating the proof by collating a total value of the secret values acquired from the plurality of users with a total value of the public values written by the plurality of users in the blockchain, and verifying the proof on the blockchain.”
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pestana et al. (U.S. Patent Application Publication 2021/0342894) discloses proofs committed to a blockchain in a batch (note paragraphs [0042]-[0043]) and [0083]).
Karia et al. (U.S. Patent Application Publication 2020/0364358) discloses managing user consent to access of user data using chaincode on a blockchain (note paragraphs [0082]-[0083] and [0090]).
Kenyon et al. (U.S. Patent Application Publication 2020/0034553) discloses registering multi-party consent for data access using a consent tree on a blockchain (note paragraphs [0067], [0079] and [0092]-[0093]).
Piao et al. (“A Data Sharing Scheme for GDPR-Compliance Based on Consortium Blockchain”) discloses a blockchain based data sharing scheme for GDPR using a zero-knowledge proof (note Abstract).
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at (571)270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/ Primary Examiner, Art Unit 2407
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