DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is response to communication: response to original application filed on 06/10/2024.
Claims 1-16 are currently pending in this application.
The IDS filed on 06/10/224 and 07/09/2025 have been accepted.
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 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,034,861. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the current application are found in the parent patent. An example of Claim 1 of the parent patent is found below. The items in bold are all the limitations of claim 1 of the present application.
Claim 1. A method for distributing event data for smart contracts executed on a blockchain to subscribing systems, comprising: monitoring, by a processor of a blockchain node in a blockchain network, an execution of a smart contract to detect execution of an emit function; collecting, by the processor of the blockchain node, a set of event data specified by the emit function and emitted by the smart contract executed on a blockchain associated with the blockchain network, wherein the smart contract specifies a predetermined period of time that stipulates when the event data is to be distributed; identifying, by the processor of the blockchain node, communication data for one or more subscriber computing systems that are external to the blockchain network; and after expiration of the predetermined period of time specified in the smart contract, transmitting, by a transmitter of the blockchain node, the collected event data to each of the one or more subscriber computing systems using the communication data.
The dependent claims of the present claims mirror the dependent claims of the parent patent in the same manner. For example, claims 2-5 of the current limitation mirror claims 2 and 4-6, respectively. In addition, claims 6-16 of the parent application mirror claims 7, 8, 10-12, 1, 2, 4, 7, 8, and 10.
Claim Rejections - 35 USC § 102
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 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)(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.
Claim(s) 1, 3, 5, 6, 8, 10, 11, 13, 14, and 16 are rejected under 35 U.S.C. 102a2 as being unpatentable over Salkinzis US Patent Application Publicatoin 2023/0156455 (Salkinzis).
As per claim 1, Salkinzis teaches a method for distributing event ta for smart contracts executed on a blockchain to subscribing systems, comprising: monitoring, by a processor of a blockchain node in a blockchain network, an execution of a smart contract to detect execution of an emit function (paragarphs 71-72 with monitoring for messages/events in the smart contract; also see Fig 6a; performed by processor which is part of blockchain apparatus as seen in paragraph 66 and Figure 3; see also Figure 2 for blockchain node); collecting, by the processor of the blockchain node, a first set of event data specified by the emit function and emitted by the smart contract executed on a blockchain associated with the blockchain network (paragraph 72 and throughout with collecting messages; see also Figure 6a with collecting messages/offers from mobile networks); identifying, by the processor of the blockchain node, a communication data for one or more subscriber computing systems that are external to the blockchain network (Figure 6A and throughout with sending collected offers back to first address; see also paragraph 73; see paragraph 40 with device owner; see Figure 2 with owner/UE not part of blockchain); after expiration of a predetermined period of time, transmitting, by a transmitter of the blockchain node, the collected first set of event data to each of the one or more subscriber computing systems using the communication data (Figure 6A; paragraph 73 with sending offers to owner/address/ue).
As per claim 3, Salkinzis teaches collecting, by the processor of the blockchain onde, a second set of event data emitted by a second smart contract exected on the blockchain, wherein the collected second set of event data is tramsitted to each of the one or more subscriber computing systems if collected prior to expiration of the predetermined time (see paragraphs 71-73 and Figure 6A with collecting multipole offers; if collected before the timeframe expiration, all are aggregated and sent after expiration time).
As per claim 5, Salkinzis teaches wherein each of the one or more subscriber computing systems are not blockchain nodes in the blockchain network (see Figure 1 with remote unit/owner not part of blockchain)
Claim 6 is rejected using the same basis of arguments used to reject claim 1 above.
Claim 8 is rejected using the same basis of arguments used to reject claim 3 above.
Claim 10 is rejected using the same basis of arguments used to reject claim 5 above.
As per claim 11, Salkinzis teaches a method for distributing event ta for smart contracts executed on a blockchain to subscribing systems, comprising: collecting, by a processor of the blockchain node, a first set of event data specified by the emit function and emitted by the smart contract executed on a blockchain associated with the blockchain network (paragraph 72 and throughout with collecting messages; see also Figure 6a with collecting messages/offers from mobile networks; also see Fig 6a; performed by processor which is part of blockchain apparatus as seen in paragraph 66 and Figure 3; see also Figure 2 for blockchain node); wherein the smart contract specifies a predetermined period of time that stipulates when the event data is to be distributed (paragraph 73 with offer timeframe parameter in the smart contract; see als Figure 6A with collecting offers until expiration time); identifying, by the processor of the blockchain node, a communication data for one or more subscriber computing systems that are external to the blockchain network (Figure 6A and throughout with sending collected offers back to first address; see also paragraph 73; see paragraph 40 with device owner; see Figure 2 with owner/UE not part of blockchain); after expiration of a predetermined period of time specified int eh smart contract, transmitting, by a transmitter of the blockchain node, the collected first set of event data to each of the one or more subscriber computing systems using the communication data (Figure 6A; paragraph 73 with sending offers to owner/address/ue after expiration of time).
Claim 13 is rejected using the same basis of arguments used to reject claim 3 above.
Claim 14 is rejected using the same basis of arguments used to reject claim 11 above.
Claim 16 is rejected using the same basis of arguments used to reject claim 3 above.
Claim Rejections - 35 USC § 103
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.
Claim(s) 2, 7, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Salkinzis as applied above, in view of Narang et al. US Patent Application Publication 2021/0012248 (Narang).
As per claim 2, Salkinzis does not explicitly teach wherein receiving, by a receiver of the blockchain node, a new block for the blockchain, wherein the smart contract self-executes after receipt of the new block. However, this would have been obvious. For example, see Narang paragraph 26-29; see paragraph 26 with reservation request being added to new block in blockchain; see paragraphs 26-29 wherein after all terms/conditions are satisfied in smart contract, smart contract self-executes)
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Salkinzis with Narang. One of ordinary skill in the art would have been motivated to perform such an addition to efficiently have a safe but open system to improve reservations (paragraphs 3-4).
Claim 7 is rejected using the same basis of arguments used to reject claim 2 above.
Claim 12 is rejected using the same basis of arguments used to reject claim 2 above.
Claim 15 is rejected using the same basis of arguments used to reject claim 2 above.
Claim(s) 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Salkinzis as applied above, in view of Liu et al. US Patent Application Publication 2019/0066079 (Liu)
As per claim 4, the Habic combination does not explicitly teach wherein the blockchain node does not store the collected event data in the blockchain node or storage media accessible by the blockchain node. However, storing event data offsite is merely a design choice and notoriously well known in the art. For a further showing of obviousness, see Liu (paragraph 57 wherein event data is stored on the cloud).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Habic combination with Liu. One of ordinary skill in the art would have been motivated to perform such an addition to increase security and authenticity (paragraph 57 of Liu).
Claim 9 is rejected using the same basis of arguments used to reject claim 4 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAI YIN GEE whose telephone number is (571)272-6431. The examiner can normally be reached on Monday-Friday 8:30-5:00 PST Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on (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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/JASON K GEE/Primary Examiner, Art Unit 2495