DETAILED ACTION
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 .
Acknowledgements
This is a first office action on the merits in response to the application filed June 6, 2024.
Claims 1-14 are pending in the application.
Claims 1-14 are examined below.
Based on a comparison of the PGPub US 2024/0403871 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Priority
This application is a continuation application. See MPEP § 201.07. In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the examiner has reviewed and considered the prior art cited in the prior-filed application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the prior-filed application(s) are now considered cited or ‘of record’ in this application. Additionally, applicant is reminded that a listing of the information cited or ‘of record’ in the prior-filed application need not be resubmitted in this application unless applicant desires the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, applicant is reminded that the prosecution history of the prior-filed application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on June 6, 2024 are objected to under 37 CFR 1.83(a) and 1.84. These drawings have rendered poorly upon conversion from PDF to TIFF (see Figs. 1(b), 1(c), 3(a), 3(b), 3(d), 4(b), and 4(d) via PatentCenter or PGPub). This may be due to applicant's drawings including color or grayscale images. See PDF Guidelines for Patent Center.1 See also MPEP 608.02.VII regarding photographs and grayscale drawings. See also MPEP 608.02.VIII regarding color drawings or photographs.
The drawings filed on June 6, 2024 are objected to under 37 CFR 1.84(u), because the different views are not numbered in consecutive numerals.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 3 is objected to because of the following informalities: where applicant recites “the user for authorizing the user to engage in the transaction and” (line 3), it appears that applicant intends to recite “the user, for authorizing the user to engage in the transaction, and” or similar.
Claim 7 is objected to because of the following informalities: where applicant recites “10T devices” (last line), it appears that applicant intends to recite “Internet of things (IOT) devices” or similar.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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 1-14 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1, applicant’s recitation “A digital identity apparatus, a verification of at least one qualification of a user being used to generate a credential associated with a digital identity account maintained with an identity provider for authorizing the user to engage pseudonymously in a transaction with a provider, and a pseudonymous identifier associated with the credential being configured to enable identifying information about the user to be correlated to the transaction, the digital identity apparatus comprising:” would have been unclear to a person having ordinary skill in the art at the time of the invention. This recitation does not make sense, grammatically.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,008,561. Although the claims at issue are not identical, they are not patentably distinct from each other because they differ merely in terminology. nonfunctional descriptive material, and intended use.
Allowable Subject Matter
Claims 1-14 are not obvious or anticipated by the prior art of record and would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest art of record, the combination of Sebastian / Costa Faidella, discloses as previously discussed in prior-filed application 16/389,918. However, Sebastian / Costa Faidella does not teach at least "a due process rules engine comprising a processor and software configured to: automatically process information in an access request associated with a third party for identifying information about the user correlated to the pseudonymized transaction record using a set of due process rules; determine whether the third party is authorized to receive the identifying information stored in the custodial escrow memory based on the processed information; correlate the identifying information for the user with the transaction using the pseudonymous identifier to create a combined record of the transaction; and perform an action associated with the combined record based on the determination under the due process rules.” Moreover, the missing claimed elements from Sebastian / Costa Faidella are not found in a reasonable number of references.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
1 https://www.uspto.gov/patents/apply/applying-online/efs-web-pdf-guidelines