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 .
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.
This action is in response to the election filed 03/05/2026.
Claims 8-27 are presented for examination.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 8-20, in the reply filed on 03/05/2026 is acknowledged.
Claims 1-7 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/05/2026.
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 8-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,050,716. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 8, 17 and 21 of the present application are anticipated by each of the limitations of claims 1, 11 and 13 of U.S. Patent No. 12,050,716.
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.
Claims 8, 17 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20170180928 A1 to Sharma et al. (hereinafter Sharma) (Applicant’s IDS).
As to claims 8, 17 and 21, Sharma teaches a method for privacy-preserving attribution, the method including: receiving, by a mobile device, a viewshed (paragraph 29, received POI data including specific locations) including a unique cryptographic identifier (paragraphs 29, 31 and 36, wherein Individual POIs may be organized in POI data, for example in categories, types, or according to some type of common relation, for example the POI data is of a particular category, “coffee shop” instead of the actual name, read as a cryptographic identifier); determining, by the mobile device, exposure to a first object based on a travel path of the mobile device and the viewshed for the first object (paragraphs 33 and 46, determining whether the device has satisfied a location based rule of being within a particular threshold distance of a POI); determining, by the mobile device, a visit to a first location associated with the first object and after the exposure, the visit determined based on the travel path (paragraphs 33 and 46, determining whether the device has satisfied a location based rule of the amount of time within or near a POI); and generating a cryptographic attribution of the visit to the exposure to the first object, the cryptographic attribution cryptographically indicating a validity of the exposure (paragraph 47, attribution event generated and stored).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of US 20210399877 A1 to Ohashi et al. (hereinafter Ohashi).
As to claims 9 and 22, Sharma does not explicitly teach the unique cryptographic identifier includes a checksum of the viewshed.
However, Ohashi teaches a unique cryptographic identifier including a hash value (paragraph 140).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Sharma to include the hash value as taught by Ohashi in order to confirm the viewsheds are the same, thus ensuring accuracy while preserving the privacy of the user.
Claims 10, 18 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of US 20220337392 A1 to Schauer (Applicant’s IDS).
As to claims 10, 18 and 23, Sharma does not explicitly teach wherein the unique cryptographic identifier includes a non-fungible token.
However, Schauer teaches a method of using non-fungible tokens with digital assets or content (paragraph 2).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Sharma to include the non-fungible token as taught by Schauer in order to authenticate and verify the source of the viewshed, thus optimizing the security and integrity of the system.
Claims 11 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of US 10643002 B1 to Veselov et al. (hereinafter Veselov).
As to claims 11 and 24, Sharma teaches including logging the exposure to the first object locally (paragraph 47, attribution event generated and stored). Sharma does not explicitly teach wherein the logged exposure includes an expiration date.
However, Veselov teaches data including an expiration date (Col 26, lines 7-10).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Sharma to include the expiration date as taught by Veselov in order to prevent the unauthorized use or leakage of the data after a specific date.
Claims 13, 15, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma in view of US 20210226800 A1 to Cao et al. (hereinafter Cao) (Applicant’s IDS).
As to claims 13 and 26, Sharma does not explicitly teach wherein the cryptographic attribution cryptographically indicates, via a digital signature, the validity of the exposure.
However, Cao teaches using a signature included in a message for validity (paragraphs 136 and 137).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Sharma to include the digital signature as taught by Cao in order to verify the sender or source of the data, thus preventing the use of spoofed data or data received from an impersonator.
As to claims 15 and 27, Cao teaches wherein the cryptographic attribution includes a zero knowledge proof (paragraph 85, transmitted communication including zero-knowledge proof).
Allowable Subject Matter
Claims 12, 14, 16, 19, 20 and 25 would be allowable if rewritten to overcome the nonstatutory double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Dependent claims 12, 19 and 25 are allowable over the prior art of record, including Sharma, Ohashi and the references cited by the Examiner and the Applicant’s IDS, taken individually or in combination, because the prior art of record fails to particularly disclose, fairly suggest or render obvious determining that the travel path is of a threshold length and sending a job request for one or more regions in which the travel path occurred, in view of the other limitations of their respective independent claims 8, 17 and 21, as to claims 12, 19 and 25;
Dependent claim 14 is allowable over the prior art of record, including Sharma, Ohashi and the references cited by the Examiner and the Applicant’s IDS, taken individually or in combination, because the prior art of record fails to particularly disclose, fairly suggest or render obvious tracking, by the mobile device, a position of the mobile device based on an allow list and/or a deny list of one or more geographical areas created by a user of the mobile device, in view of the other limitations of independent claim 8;
Dependent claims 16 and 20 are allowable over the prior art of record, including Sharma, Ohashi and the references cited by the Examiner and the Applicant’s IDS, taken individually or in combination, because the prior art of record fails to particularly disclose, fairly suggest or render obvious pausing, in response to no change in position of the mobile device over a period of time, the tracking of the position of the mobile device, creating, in response to no change in position of the mobile device over the period of time, a geofence and resuming tracking the position of the mobile device when the mobile device crosses the geofence, in view of the other limitations of their respective independent claims 8 and 17, as to claims 16 and 20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALCOLM CRIBBS whose telephone number is (571)270-1566. The examiner can normally be reached Monday-Friday 930a-330p; 430p-630p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eleni Shiferaw can be reached at (571)272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MALCOLM . CRIBBS
Examiner
Art Unit 2497
/MALCOLM CRIBBS/Primary Examiner, Art Unit 2497
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