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
Claims 1 – 20 are pending.
Any references to applicant’s specification are made by way of applicant’s U.S. pre-grant printed patent publication.
This action is in response to the communication filed on 6/24/24.
Claim Interpretation
The term “computer-readable storage media” is not to be construed as comprising signals per se.
Applicant’s disclosure states the following (emphasis added):
…
[0018] A computer program product embodiment (“CPP embodiment” or “CPP”) is a term used in the present disclosure to describe any set of one, or more, storage media (also called “mediums”) … A computer readable storage medium, as that term is used in the present disclosure, is not to be construed as storage in the form of transitory signals per se, such as radio waves or other freely propagating electromagnetic waves, electromagnetic waves propagating through a waveguide, light pulses passing through a fiber optic cable, electrical signals communicated through a wire, and/or other transmission media. …
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 5 and 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 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.
Specifically, regarding claims 5 and 14, the recitation of “…the operation on the data that is not authorized …” lacks antecedent basis within the claims. For the purpose of examination, the examiner presumes the applicant intended to recite “…an operation on the data that is not authorized …”.
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)(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.
Claims 1, 4 – 10, and 13 – 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Witchey et al. (Witchey), US 2025/0356053 A1.
Regarding claim 1, Witchey discloses:
A computer-implemented method (e.g. Witchey, par. 19) comprising:
receiving, at a token generation service (e.g. Witchey, fig. 1:120), a contract token request from a data non-owner (e.g. Witchey, fig. 1:124), the contract token request indicating a condition of an agreement between the data non-owner and a data owner that owns data stored in a data storage system (e.g. Witchey, fig. 1:126,114; par. 35, 53 – the request includes data fields that a data owner agrees to make available for access);
and generating, by the token generation service, a contract token (e.g. Witchey, fig. 1:150; DAT, data access token, i.e. “contract token”) based on the contract token request (e.g. Witchey, fig. 1:150; par. 35), the contract token including an attribute that defines the condition of the agreement between the data non-owner and the data owner (e.g. Witchey, par. 35, 42 – the DAT includes access rights to the data fields a data owner makes available for access).
wherein the data storage system enables the data owner to execute an operation on the data based at least in part on the contract token (e.g. Witchey, fig. 1:110, par. 12, 42, 92 – the data storage system allows a data owner to sell, lease, transfer stored data based upon the contractual rights within the DAT; see also e.g. Witchey par. 13, 42, 63 – the DAT may be possessed by the data owner or can be transferred to original data owner; see also e.g. Witchey par. 46, 84, 85, 92 – the DAT may give a token owner direct access, thus control or “ownership”, of the data).
Regarding claim 4, Witchey discloses:
wherein the data owner and the data non-owner communicate via a secure communication channel (e.g. Witchey, fig. 1:103, 105; par. 77, 148, 149).
Regarding claim 5, Witchey discloses:
wherein the data storage system prohibits the data owner from executing the operation on the data that is not authorized by the contract token (e.g. Witchey, par. 77).
Regarding claim 6, Witchey discloses:
wherein the attribute is viewable by each of the data owner and the data non-owner, and wherein the attribute is secure from modification (e.g. Witchey, Abstract, par. 4, 13 – the DAT is stored publicly, e.g. on a blockchain, and secured from unauthorized modification; see also e.g. Witchey par. 13, 42, 46, 63, 84, 85, 92).
Regarding claim 7, Witchey discloses:
wherein the data non-owner causes the token generation service to generate the contract token (e.g. Witchey, fig. 1:124; par. 35).
Regarding claim 8, Witchey discloses:
wherein a third party other than the data non-owner and the data owner causes the token generation service to generate the contract token (e.g. Witchey, fig. 1:120; par. 35).
Regarding claim 9, Witchey discloses:
wherein the data non-owner retrieves the contract token (e.g. Witchey, par. 35; fig. 1:105, 150) and the data owner uses the contract token (e.g. Witchey, par. 12, 42, 92 – the data storage system allows a data owner to sell, lease, transfer stored data based upon the contractual rights within the DAT; see also e.g. Witchey par. 13, 42, 63 – the DAT may be possessed by the data owner or can be transferred to original data owner; see also e.g. Witchey par. 46, 84, 85, 92 – the DAT may give a token owner direct access, thus control or “ownership”, of the data).
Regarding claims 10, and 13 - 19, they are system and medium claims essentially corresponding to the above claims and they are rejected, at least, for the same reasons. And furthermore because Witchey discloses a memory, a processor, medium, and instructions (e.g. Witchey, par. 151, 154, 157).
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.
Claims 2, 3, 11, 12, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Witchey et al. (Witchey), US 2025/0356053 A1 in view of Bai, US 2022/0020008 A1.
Regarding claim 2, Witchey teaches a platform or service for generating a smart-contract (i.e. DAT) (e.g. Witchey, fig. 1:120; par. 28, 45). However, Witchey does not appear to explicitly teach that the platform or service digitally signs, i.e. encrypts, the smart-contract with a private key of the platform or service.
However, like Witchey, Bai teaches a platform or service for generating a smart-contract (e.g. Bai, Abstract; par. 5; fig. 1:1) and furthermore teaches that the platform or service digitally signs, i.e. encrypts, the smart-contract with a private key of the platform or service (e.g. Bai, claim 1; par. 37).
It would have been obvious to one of ordinary skill in the art to include the platform/service digital signature teachings of Bai within the smart-contract generation system of Witchey. This would have been obvious because one of ordinary skill in the art would have been motivated by the teachings that encryption with a private key, i.e. digital signature, provides protection to the generated smart-contract (e.g. Bai, par. 3, 5).
Thus, the combination enables:
wherein the token generation service signs the contract token using a private key to encrypt the contract token (e.g. Witchey, fig. 1:120; Bai, par. 3, 37; claim 1).
Regarding claim 3, the combination enables:
wherein the data storage system validates contents of the contract token against alteration using a public key associated with the private key (e.g. Witchey, fig. 1:120; Bai, par. 5, 13, 20, 37; claim 1).
Regarding claims 11, 12, and 20, they are system and medium claims essentially corresponding to the above claims and they are rejected, at least, for the same reasons.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
See Notice of References Cited.
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 on 7:30 am - 4:00 pm.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFERY L WILLIAMS/Primary Examiner, Art Unit 2495