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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/11/2025 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 59-78 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3- 4, 6, 10-11, 13-14, 16-17, 19, 25-27, 35, 39, 44, and 51-53 of U.S. Patent No.12063309. Although the claims at issue are not identical, they are not patentably distinct from each other.
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.
Claims 59-78 are rejected under 35 U.S.C. 103 as being unpatentable over
Pub.No.: US 2017/0232300 A1 to Tran et al(hereafter referenced as Tran) in view of Pub.No.: US 2017/0075938 A1 to Black et al(hereafter referenced as Black).
Regarding claim 59, Tran discloses “a computer-implemented method for managing electronic records, comprising: obtaining an electronic record comprising identifying information for an individual or entity”(virtual medical record [par.0261]) ; generating a first data structure comprising said electronic record” (a public key of a client who generates the asset record [par.0319]) , “wherein said identifying information is stored within said first data structure as a first identifying data hash”(cryptographically - safe hash function is used to fingerprint digital assets [par.0318]) ; “hashing said first data structure using a cryptographic hash function”(the algorithm producing the blocks involves a cryptographic hash using a well-designed hashing algorithm [par.0311]), “thereby generating a first data hash; publishing a transaction comprising said first data hash to a distributed blockchain computing network” (the algorithm producing the blocks involves a cryptographic hash using a well-designed hashing algorithm [par.0311]); “obtaining an update to said electronic data record, said update comprising updated identifying information for said individual or said entity”(upon receipt of results of the submitted query , the information locator communicates the results to the user , and updates the knowledge warehouse with responses from the user to the results [par.0333]), “and publishing an updated transaction comprising said second data hash to said distributed blockchain computing network, thereby generating a version history corresponding to said electronic data record”(market history analyzer [Fig.14D/item 415]).
Tran does not explicitly disclose “generating a second data structure corresponding to said update to said electronic data record”; hashing said second data structure using said cryptographic hash function, (g) thereby generating a second data hash.”
However, Black in an analogous art discloses “generating a second data structure corresponding to said update to said electronic data record”; hashing said second data structure using said cryptographic hash function”(the first second hash is hashed with all the data hashes received during the second to form the second data hash, the second data hash is hashed with all the data hashes received during the third second, and so on Black[par.0052]), “thereby generating a second data hash” (the first second hash is hashed with all the data hashes received during the second to form the second data hash, the second data hash is hashed with all the data hashes received during the third second, and so on Black[par.0052]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Tran’s Smart device system comprising cryptographic hash function with Black’s system which utilizes a hash tree in order to provide security. A person of ordinary skill in the art would have been motivated to combine Tran’s smart device system with Blacks hash tree based hashing technique in order to improve data integrity, tamper resistance, and verification efficiency for successive data updates. Blacks hashing approach predictably enhances the security of Trans system by enabling efficient detection of data modification across multiple intervals, while still relying on the same well-known cryptographic hash functions already used by Tran, and both are from the same field of endeavor.
Regarding claim 60 in view of claim 59, the references combined disclose “wherein said distributed blockchain computing network corresponds to one or more blocks of a blockchain”(see blockchain source 1 and blockchain source N Tran[Fig.14i]).
Regarding claim 61 in view of claim 59, the references combined disclose “further comprising selecting said blockchain from a plurality of blockchains on said distributed blockchain computing network” (see blockchain source 1 and blockchain source N Tran[Fig.14i]).
Regarding claim 62 in view of claim 59, the references combined disclose “further comprising sharing said blockchain over a plurality of nodes of said distributed blockchain computing network, wherein participants in said distributed blockchain computing are one or more of: scientists, research teams, pharmaceutical companies, universities, private enterprises, or companies”(blockchain token wallet holds multiple stock items ( such as shares in companies ), the stock market symbol of the company by the same name ) can also be a share used by the peer - to peer network to refer to IBM stock Tran[par.0197]).
Regarding claim 63 in view of claim 59, the references combined disclose “wherein said electronic record comprises one or more of: an electronic lab notebook or entry, electronic health record, structured data, log entry, supplier audit information, electronic file, statement of work, signed legal document, compliance manifest, or a supplier RFI.(records of all transactions conducted in the financial system ( 130 ) are held in the transaction ledger ( 140 ) Tran [par.0148]).
Regarding claim 64 in view of claim 59, the references combined disclose “wherein said blockchain utilizes a blockchain platform comprising one or more of: Ethereum, Zcash, Litecoin, Namecoin, Swiftcoin, Bytecoin, Peercoin, Emercoin, Feathercoin, Gridcoin, Primecoin, Ripple, Auroracoin, Dash, Zetacoin, Monero, Tether, Mazacoin, Vertcoin, or Zcash” (Cryptocurrencies allow digital currency to be transferred between blockchain addresses without an intermediate financial institution or central authority. Exemplary block chain systems include peer-to-peer, decentralized cryptocurrencies such as Ethereum(ETH),Bitcoin, Litecoin and PPCoin, Tran para(0147).
Regarding claim 65 in view of claim 59, the references combined disclose “further comprising verifying said electronic record by: obtaining a copy of said data structure” structure (memory 604 is an example of a computer-readable storage medium and may include volatile and nonvolatile memory and/or removable and non-removable media implemented in any type or technology for storage of information, such as computer-readable instructions, data structures, program modules or other data, Tran Para[0910], Tran Fig.14H);(i) (ii) hashing said data structure to generate a verification hash (transaction 303 includes the recipient's address 324(e.g., a hash value based on the receivers public key),the Blockchain token309(i.e., a stock ID 328 and its position 326), past ownership information 331 (if any), and optional other information 310(e.g., a market order type to indicate whether the transaction is to buy or sell a Blockchain token 329), Tran para[0209], Tran Fig.13G); and comparing said verification hash to said first data hash stored on said (iii) blockchain, wherein said electronic record is verified when said verification hash matches said first data hash. .” (in some embodiments, where the algorithm producing the blocks involves a cryptographic hash using a well-designed hashing algorithm, attempts to avoid the computational work necessary to create the hashes by simply inserting a fraudulent transaction in a previously created block maybe thwarted by the “avalanche effect, “whereby a small alteration of any data within the block chain causes the output of the block chain to change drastically; this means that alterations are readily detectable to any person wishing to validate the hash of the attempted fraudulent block, Tran para[0311]).
Regarding claim 66 in view of claim 59, the references combined disclose “further comprising anonymizing said 66 electronic record” (manufacturers in the middle of the supply chain can securely pass a certificate with full authenticity downstream while keeping their identity private, Tran para[0223]).
Regarding claim 67 in view of claim 66, the references combined disclose “wherein anonymizing said electronic record comprises removing said identifying information while allowing data verification of said electronic record” (manufacturers in the middle of the supply chain can securely pass a certificate with full authenticity downstream while keeping their identity private, Tran para[0223]).
Regarding claim 68, the references combined disclose “wherein anonymizing said first electronic record comprises removing said electronic record from a database while maintaining said data structure, wherein said data structure comprises non-identifying information and said identifying data hash.” (manufacturers in the middle of the supply chain can securely pass a certificate with full authenticity downstream while keeping their identity private, Tran para[0223]).
Regarding claim 69, Tran discloses “ A computing device in communication with a plurality of computing devices, said computing device comprising at least one processor, a memory, and a computer program comprising instructions executable by said at least one processor to perform operations, comprising: obtaining, from a user or authorized third party, an update corresponding to an (a) electronic health record(virtual medical record [par.0261]); generating a data hash corresponding to said update to said electronic health(cryptographically - safe hash function is used to fingerprint digital assets [par.0318]) (b) record using a hash function(the algorithm producing the blocks involves a cryptographic hash using a well-designed hashing algorithm [par.0311]), said new transaction comprising information corresponding to said update to said electronic health record.” ”(upon receipt of results of the submitted query , the information locator communicates the results to the user , and updates the knowledge warehouse with responses from the user to the results [par.0333]),
Tran does not explicitly disclose “and publishing a new transaction comprising said data hash to a distributed (c) blockchain computing network for validation and addition to a blockchain within a new block.”
However, Black in an analogous art discloses “and publishing a new transaction comprising said data hash to a distributed (c) blockchain computing network for validation and addition to a blockchain within a new block.” (the first second hash is hashed with all the data hashes received during the second to form the second data hash, the second data hash is hashed with all the data hashes received during the third second, and so on Black[par.0052]), “
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify Tran’s Smart device system comprising cryptographic hash function with Black’s system which utilizes a hash tree in order to provide security. A person of ordinary skill in the art would have been motivated to combine Tran’s smart device system with Blacks hash tree based hashing technique in order to improve data integrity, tamper resistance, and verification efficiency for successive data updates. Blacks hashing approach predictably enhances the security of Trans system by enabling efficient detection of data modification across multiple intervals, while still relying on the same well-known cryptographic hash functions already used by Tran, and both are from the same field of endeavor.
Regarding claim 70 in view of claim 69, the references combined disclose “wherein said new transaction further comprises (i) a digital signature of said data hash created using a private key of a cryptographic key pair, and (ii) a public key of said cryptographic key pair”(service or service or item provider stores the private key in association with an entity credential in the database Tran[Fig.13D/item 28]).
Regarding claim 71 in view of claim 69, the references combined disclose “wherein said computing device is in communication with said plurality of computing devices based on a peer-to-peer protocol.”(blockchain token ownership is an immediately transferred to a new owner after authentication and verification , which are based on network ledgers within peer - to - peer network , guaranteeing nearly instantaneous execution and settlement Tran[par.0119]).
Regarding claim 72 in view of claim 69, the references combined disclose “wherein said blockchain comprises information corresponding to said electronic health record.” (records of all transactions conducted in the financial system ( 130 ) are held in the transaction ledger ( 140 ) Tran [par.0148]).
Regarding claim 73 in view of claim 72, the references combined disclose “wherein publishing said new transaction at (c) thereby generates a version history corresponding to said electronic data record. (market history analyzer Tran[Fig.14D/item 415]).
Regarding claim 74 in view of claim 73, the references combined disclose “wherein said blockchain comprises information corresponding to said version history.” (market history analyzer Tran[Fig.14D/item 415]).
Regarding claim 75 in view of claim 69, the references combined disclose “wherein said instructions executable by said at least one processor perform operations, further comprising selecting said blockchain from a plurality of blockchains on said distributed blockchain computing network” (the algorithm producing the blocks involves a cryptographic hash using a well-designed hashing algorithm [par.0311]).
Regarding claim 76 in view of claim 69, the references combined disclose “wherein said instructions executable by said at least one processor perform operations, further comprising sharing said blockchain over a plurality of nodes of said distributed blockchain computing network, wherein participants in said distributed blockchain computing are one or more of: scientists, research teams, pharmaceutical companies, universities, private enterprises, or companies” (blockchain token wallet holds multiple stock items ( such as shares in companies ), the stock market symbol of the company by the same name ) can also be a share used by the peer - to peer network to refer to IBM stock Tran[par.0197]).
Regarding claim 77 in view of claim 69, the references combined disclose “ wherein said blockchain utilizes a blockchain platform comprising one or more of: Ethereum, Zcash, Litecoin, Namecoin, Swiftcoin, Bytecoin, Peercoin, Emercoin, Feathercoin, Gridcoin, Primecoin, Ripple, Auroracoin, Dash, Zetacoin, Monero, Tether, Mazacoin, Vertcoin, or Zcash” (Cryptocurrencies allow digital currency to be transferred between blockchain addresses without an intermediate financial institution or central authority. Exemplary block chain systems include peer-to-peer, decentralized cryptocurrencies such as Ethereum(ETH),Bitcoin, Litecoin and PPCoin, Tran para(0147).
Regarding claim 78 in view of claim 69, the references combined disclose “wherein said hash function comprises a cryptographic hash function” (the algorithm producing the blocks involves a cryptographic hash using a well-designed hashing algorithm Tran[par.0311]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL D ANDERSON whose telephone number is (571)270-5159. The examiner can normally be reached Mon-Fri 9am-6pm.
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Pwu can be reached at (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL D ANDERSON/ Examiner, Art Unit 2433
/JEFFREY C PWU/ Supervisory Patent Examiner, Art Unit 2433