DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 4/3/26.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 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.
Status of Claims
Claims 21-37 are currently pending.
Claims 21-37 are rejected as set forth below.
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 .
Drawings
The drawings were received on 7/8/24. These drawings are accepted.
Response to Arguments
Claim Rejections - 35 U.S.C. § 112(a)
Applicant’s arguments with respect to claim(s) 21, 30 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 112(b)
Applicant’s arguments with respect to claim(s) 21 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claim(s) 21, 30 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant contends Smith fails to teach or suggest a data contract comprised of a plurality of tokens and a data contract that specifies user data that can be submitted to the data contract. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Specifically, Domokos is relied upon to teach a data contract comprised of a plurality of tokens and a data contract that specifies user data that can be submitted to the data contract. See the 35 USC 103 rejection.
Applicant contends Michaels fails to teach or suggest a key that is created for a specific user. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a key that is created for a specific user) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Specifically, the secret exchange key is made available to user, but is not exclusive to the user.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 21, 30, the limitations “receive a proof grant comprising user data from the user”, “validate the user data in the proof grant comprising the user data” fails to comply with the written description requirement. Specifically, the Specification does not disclose the claimed function of receiving a proof grant that includes user data from the user. Instead, the Specification teaches a proof grant that is comprised of a data address and/or a data signature ([0025]). In addition, the Specification does not disclose the claimed function of validating the user data in the proof grant. Instead, the Specification teaches validating information stored in a location on a public database ([0025]). See MPEP 2163.
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 112(b)
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 21-37 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.
As per claims 21, 30, the limitations “receive a proof grant comprising user data from the user”, “validate the user data in the proof grant comprising the user data” render the scope of the claim indefinite because claim is inconsistent with the disclosure of the Specification. In the claim, the user data is stored in the proof grant. However, the Specification discloses a proof grant that is comprised of a data address and/or a data signature, and the data being stored in a public database ([0025]). For purposes of examination, the claim language will be interpreted as receiving a message from the user that points to, or is associated with, a set of user data. See MPEP 2173.03.
By virtue of their dependence, the dependent claims are similarly rejected.
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 21-23, 26-27, 30-31, 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20190228461 to Domokos in view of United States Patent Application Publication No. 20150379510 to Smith and United States Patent No. 8566952 to Michaels.
As per claims 21, 30, Domokos teaches:
A system comprising: at least one computer processor; ([0105], “The exemplary data processing system 200 includes a data processor 202.”)
at least one data contract that specifies user data that can be submitted to the at least one data contract; depositing a plurality of tokens onto a data contract; ([0087], “In various embodiments, a consumer's account may be credited with cryptocurrency units and/or cryptographic tokens when commerce data relating to that consumer is collected from the consumer or from a third party, when a purchase transaction involving that consumer is completed, at a later predetermined or random time, at regular intervals, in response to smart contracts or other rules, when data relating to that consumer is monetized (e.g., when another entity purchases commerce data, data analytics or KPIs that include that consumer's data), and/or at other times.”; [0255], “The appropriate amount, denominated in one or more classic currencies, one or more cryptographic currencies and/or one or more types of cryptographic tokens, could be automatically transferred to the seller to pay for such data, possibly using smart contracts, through the blockchain layer.”)
a user wallet; ([0054], “Examples of cryptocurrency data that may be personal data (or PII) or cryptographic token data that may be personal data (or PII) include information identifying a cryptocurrency wallet of a consumer (e.g., a software program that stores private and public keys and interacts with one or more blockchains to enable users to send and receive digital currency and monitor their balances).”)
wherein the system is configured to record and store an interaction between the user and the system; ([0043]-[0045], “In one embodiment, the data management and analytics layer 120 comprises one or more data frameworks adapted to store, manage, analyze, and communicate to other components the omnichannel commerce platform 100 commerce data. In various embodiments, the API layer 190 may include common and/or dedicated APIs that allow various components of the omnichannel commerce platform 100 to receive data, including commerce data. In various embodiments, the API layer 190 may facilitate commerce data communications between the omnichannel layer 102, the data management and analytics layer 120, a set of merchants 150, a set of payment processors 152, a set of data customers 156, one or more commerce service providers 158, and/or a set of consumers 160.”)
notify the user that by submitting user data to at least one data contract, the user is eligible to receive an amount of tokens; receive a proof grant comprising user data from the user; validate the user data in the proof grant comprising the user data; transfer the amount of tokens to the user wallet; ([0068], “In various implementations, a blockchain can also provide a framework for processing and tracking smart contracts. A smart contract is a computer protocol or algorithm adapted to facilitate, verify, or enforce the negotiation or performance of a contract or understanding between two or more parties. Smart contracts may facilitate the processing and completion of transactions between two or more parties using a decentralized approach, without a specific pre-designated decisionmaker.”; [0087], “In one embodiment, a consumer 160 is incentivized to allow the omnichannel commerce platform 100 to collect data regarding the consumer (e.g., via a mobile phone or other data processing system used by the consumer) by paying such consumer using a cryptocurrency and/or a cryptographic token. In various embodiments, a consumer's account may be credited with cryptocurrency units and/or cryptographic tokens when commerce data relating to that consumer is collected from the consumer or from a third party, when a purchase transaction involving that consumer is completed, at a later predetermined or random time, at regular intervals, in response to smart contracts or other rules, when data relating to that consumer is monetized (e.g., when another entity purchases commerce data, data analytics or KPIs that include that consumer's data), and/or at other times.”; [0092], “In various embodiments, a consumer 160 is incentivized by the omnichannel commerce platform 100 to perform one or more activities (e.g., via a mobile phone or other data processing system used by the consumer) by paying such consumer using a cryptocurrency and/or a cryptographic token. In various embodiments, such consumer activities may include granting a consent (e.g., consenting to the collection of certain personal data (PII) or other data about the consumer via a mobile app, website or via another data processing system)”, The Examiner notes a user submitting consent to a collection of certain personal data is equivalent to sending a proof grant that corresponds to the user’s data. See the 35 USC 112(b) rejection for claim interpretation analysis.)
Domokos does not explicitly teach, but Smith teaches:
a master data contract; wherein the master data contract comprises at least one data contract, ([0011]-[0012], “With the introduction of the infrastructure for the block chain and Smart Contracts, data can be decentralized and distributed across multiple devices in a peer to peer network, and it can be accessed and processed by the data field. Aggregation of data from multiple data producers can be readily performed by the buyer of the data, so the advantages of large datasets can continue to be realized. The block chain presents the advantage of granularity to the data trading marketplace. The data buyer and the data producer are both enabled to generate and implement contract terms in a climate of informed consent and for fair exchange. Either the data buyer or the data producer can apply existing templates or develop specific templates for context and demographic and other data fields to be implemented by Smart Contracts and encoded into the encryption keys of a DIP posted onto the block chain ledger.”)
One of ordinary skill in the art would have recognized that applying the known technique of Smith to the known invention of Domokos would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such smart contract features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include a master data contract, the master data contract including the at least one data contract, results in an improved invention because applying said technique allows the provider to create and customize a data smart contract based off a predetermined template, thus improving the overall usability of the invention.
Domokos as modified does not explicitly teach, but Michaels teaches:
wherein the system creates a secret exchange key, and makes the secret exchange key available to the user; wherein the system executes an authenticated request by the user for the secret exchange key; wherein the system receives and validates the secret exchange key from the user; (col 8 lines 47-51, “Master key manager 416 receives or generates, for example, when requested by a sufficiently authenticated (using conventional authentication techniques) system administrator, master keys as described above and stores the master keys it receives or generates into key and counter storage 412.”; Fig 4, col 9 lines 45-51, “At any time, a request for data, including a permission object generated as described above (including logging the request by the third party or parties) may be received as described above. When such a request is received, communication interface 448 forwards the request and the source IP address, source port and optionally the protocol to request manager 430.”, The requestor 500 is equivalent to the entity.; col 10 lines 59-63, “In one embodiment, an identifier of the master key is included as part of the request, and request manager 430 provides the identifier of the master key to master key identification manager 440, which attempts to validate only the identified master key as described above.”)
One of ordinary skill in the art would have recognized that applying the known technique of Michaels to the known invention of Domokos as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to allow an entity, such as a user of said user data, to use a secret exchange key for validation purposes results in an improved invention because applying said technique ensures that only authorized entities have access to the data, thus improving the overall security of the invention.
As per claims 22, 31, Michaels teaches:
wherein the system further comprises a private database, and wherein the secret exchange key is stored in the private database. (col 8 lines 47-51)
As per claims 23, Domokos teaches:
wherein the system further comprises a master wallet and a public database. ([0067]-[0068], “A blockchain (sometimes denoted as a blockchain network) is a list of records, called blocks, which are linked and secured using cryptography. A blockchain has certain attributes of a relational database. In various implementations, a blockchain can also provide a framework for processing and tracking smart contracts.”; [0087], The Examiner notes that a cryptocurrency payment by a payer requires that the payer have a cryptocurrency wallet.)
As per claims 26, 34, Domokos teaches:
wherein the plurality of tokens comprise a cryptocurrency; ([0069], “Blockchains also facilitate the deployment of cryptocurrencies (also denoted as “crypto coins” or “coins”) and cryptographic tokens (also denoted as “crypto-tokens” or “tokens”), and the usage of such cryptocurrencies and crypto-tokens as currency or consideration for various transactions, including as consideration for smart contracts. Examples of cryptocurrencies include Bitcoin, Litecoin, Namecoin and Ethereum.”)
As per claims 27, 35, Domokos teaches:
wherein the plurality of tokens comprise a cryptocurrency on the Ethereum blockchain. ([0069])
Claims 24-25, 28-29, 32-33, 36-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20190228461 to Domokos in view of United States Patent Application Publication No. 20150379510 to Smith and United States Patent No. 8566952 to Michaels, and further in view of United States Patent Application Publication No. 20180343114 to Ben-Ari.
As per claims 24, 32, Domokos teaches:
a master wallet; (see rejection of claim 23)
Domokos as modified does not explicitly teach, but Ben-Ari teaches:
encrypt user data from the proof grant comprising user data and wherein the encrypted user data from the proof grant comprising user data is stored in the public database. ([0085]-[0087], “Encryption of the private data is performed using a shared secret and symmetric cryptographic algorithm such as Digital Encryption Standard (DES). Shared secret is encrypted using the smart contract privacy public keys and are stored into the smart contract, using public key (asymmetric) cryptographic algorithm such as RSA encryption. One of the features of a blockchain smart contract is the ability to generate an event. The event is effectively a write to a local log file that occurs alongside every instance of the blockchain in a network. The listening client application can monitor the eventlog and trigger an event when an event occurs. The present invention proposes to create an in-memory data cache alongside every instance of the blockchain. Every time a smart contract is updated by any of the accounts on any of the blockchain instances in the network, an event is generated, triggering the cache to load the new state of that particular smart contract into its local cache store. The cache should be a secure private cache as it includes privacy data that may be decrypted by the receiving party using their private key.”)
One of ordinary skill in the art would have recognized that applying the known technique of Ben-Ari to the known invention of Domokos as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the master wallet to include the step of encrypting user data from the completed third-party data contract and storing the encrypted user data from the completed third- party data contract on the public database results in an improved invention because applying said technique ensures that only authorized entities have access to the user data, thus improving the overall security of the invention.
As per claims 25, 33, Domokos teaches:
a master wallet; (see rejection of claim 23)
Domokos as modified does not explicitly teach, but Ben-Ari teaches:
the master wallet is configured to receive a data address associated with the encrypted user data from the proof grant comprising user data and wherein the data address is stored in the private database. ([0085]-[0087])
One of ordinary skill in the art would have recognized that applying the known technique of Ben-Ari to the known invention of Domokos as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the master wallet to include the step of after storing the encrypted user data from the completed third-party data contract on the public database, receiving a data address associated with the encrypted user data from the completed third-party data contract and storing the data address on the private database results in an improved invention because applying said technique ensures that only authorized entities have access to the user data, thus improving the overall security of the invention.
As per claims 28, 36, Domokos as modified does not explicitly teach, but Ben-Ari teaches:
wherein the system is configured to permit the user to unpublish user data from the system; ([0102]-[0103], “There are situations where a user wishes to have their data removed from storage systems. Blockchain smart contracts maintain historical state indefinitely, and are therefore able to provide a capability for physically removing historical user data. The solution for implementing the Right to be Forgotten in a blockchain smart contract is for data to be encrypted and decrypted by the sender using an additional intermediary public key. When data is shared with other users, those user's ability to decrypt the data must be dependent on the intermediary private key that is hidden from them off-chain and is controlled only by the user sharing their data. An off-chain service will be provided by the sender to decrypt the data using the intermediary private key. When they wish to be forgotten, they simply disable the off-chain decryption service and destroy the intermediary private key.”)
One of ordinary skill in the art would have recognized that applying the known technique of Ben-Ari to the known invention of Domokos as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to permit the user to unpublish the user data to make the user data unavailable for future access, such as a future purchase, by another entity, such as a purchaser, results in an improved invention because applying said technique ensures that the user has the right to remove their data for privacy purposes, thus improving the overall security of the invention (Ben-Ari, [0103]).
As per claims 29, 37, Domokos as modified does not explicitly teach, but Ben-Ari teaches:
wherein the system is configured to permit the user to delete user data from the system; ([0102]-[0103])
One of ordinary skill in the art would have recognized that applying the known technique of Ben-Ari to the known invention of Domokos as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such cryptography features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to permit the user to unpublish the user data to make the user data unavailable for future access, such as a future purchase, by another entity, such as a purchaser, results in an improved invention because applying said technique ensures that the user has the right to remove their data for privacy purposes, thus improving the overall security of the invention (Ben-Ari, [0103]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20190237169 to Culver discloses a system for maintaining accurate health data and for providing rewards to data market participants. A marketplace platform based on Blockchain technology leverages smart contracts to provide rewards to sellers of data assets that provide corrections or updates to medical data, such as provider demographics. A URL API is provided to a buyer of the data with an encrypted password that is used to access the data from the URL API.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619
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