DETAILED ACTION
Claims 2-21 are presented on 12/10/2024 for examination on merits. Claims 2, 18, and 21 are independent base claims.
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 .
Examiner's Instructions for filing Response to this Office Action
When the Applicant submits amendments regarding to the claims in response the Office Action, the Examiner would appreciate Applicant if a clean copy of the claims is provided to facilitate the prosecution which otherwise requires extra time for editing the marked-up claims from OCR.
Please submit two sets of claims:
Set #1 as in a typical filing which includes indicators for the status of claim and all marked amendments to the claims; and
Set #2 as an appendix to the Arguments/Remarks for a clean version of the claims which has all the markups removed for entry 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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent # 12,081,681 (hereinafter “USPAT681”).
Although the claims at issue are not identical, they are not patentably distinct from each other because they similarly claim the same subject matter.
Regarding claim 2, USPAT 681 anticipates:
A distributed computer system (USPAT 681, CLM. 1: a distributed computer system) comprising:
at least one computing node of a blockchain computer system that includes a plurality of computing nodes, with each of the plurality of computing nodes configured to store a copy, or a portion thereof, of a blockchain (USPAT 681, CLM. 1: at least one computing node of a blockchain computer system that includes a plurality of computing nodes, with each of the plurality of computing nodes configured to store a copy, or a portion thereof), the at least one computing node of a blockchain computer system configured to perform first operations comprising:
running a programmatic structure that resides at a unique blockchain address for accessing the programmatic structure, the programmatic structure including programmatic logic (USPAT 681, CLMs. 1 and 9: execute computer executable instructions; a programmatic structure is associated with a unique identifier within the distributed ledger data structure, the event data is addressed to the unique identifier,);
a computer system that is separate from the blockchain computer system, the computer system including at least one hardware processer configured to perform second operations comprising:
processing match data for each of a plurality of matches, wherein each corresponding match of the plurality of matches is associated with at least a respective first data transaction request and a respective second data transaction request, each of the respective first data transaction request and the respective second data transaction request being linked to a respective account (USPAT 681, CLM. 1: processing match data for each of a plurality of matches between different data transaction requests that are each associated with a respective one of the plurality of accounts);
wherein processing match data for each corresponding match of the plurality of matches (USPAT 681, CLM. 1: wherein the processing of the match data for each corresponding one of the plurality of matches includes) includes:
generating a first new blockchain address based on the account that is associated with the respective first data transaction request from the corresponding match (USPAT 681, CLM. 1: generating a first new distributed ledger identifier based on the respective private key that is associated with the account of the plurality of accounts),
generating a second new blockchain address based on the account that is associated with the respective second data transaction request from the corresponding match (USPAT 681, CLM. 1: generating a second new distributed ledger identifier),
generating a first transaction that is based on at least the generated first new blockchain address and at least one value that is included in the match data of the processed corresponding match (USPAT 681, CLM. 1: generating a first transaction that is from the first new distributed ledger identifier to an intermediary identifier that is associated with the intermediary account) ,
generating a second transaction that is based on at least the second new blockchain address and at least one value that is included in the match data of the processed corresponding match (USPAT 681, CLM. 1: generating a second transaction that is from the intermediary identifier to the second new distributed ledger identifier),
submitting the first and second transactions for incorporation into the blockchain (USPAT 681, CLM. 1: submitting the first and second transactions to the distributed ledger computer system to incorporate the first and second transactions); and
wherein the first operations further comprise:
generating, in connection with incorporation of the first and second transactions into the blockchain, a cryptographic proof that is used to validate the first and second transactions into the blockchain (USPAT 681, CLMs. 1 and 12: generating, in connection with each respective match, a third transaction that is based on the match data);
receiving, at the unique blockchain address for accessing the programmatic structure, event data (USPAT 681, CLM. 1 and 9: generating…. a programmatic structure is associated with a unique identifier within the distributed ledger data structure, the event data is addressed to the unique identifier);
wherein the programmatic logic of the programmatic structure includes:
receiving event data from an authentic source (USPAT 681, CLM. 1: receiving event data); and
based on validated the event data, automatically triggering a further programmatic action or event that is automatically executed, wherein the further programmatic action or event is based on the at least one value included in the first or second transaction from the match data for one of the plurality of matches that has been processed (USPAT 681, CLM. 1: validating the event data as coming from an authentic source; and based on reception of the event data, automatically triggering a further programmatic action or event that is automatically executed, wherein the further programmatic action or event is based on the at least one value included in the first or second transaction for the match data for one of the plurality of matches that has been processed).
Independent claims 18 and 21 are rejected for the same reason as that of claim 2, because they each recite the same limitations as claim 2 in similar language.
Regarding dependent claims 3-17 and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Second:
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,695,578 B2 (hereinafter “the reference patent”) in view of in view of SHPUROV (US-20210184841-A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same subject matter.
Regarding claim 2, the reference patent discloses all elements except: generating a cryptographic proof used for validating the first and second transactions and using the validated event data for triggering a further programmatic action. This aspect of the claim is identified as a further difference.
In a related art, SHPUROV teaches using a cryptographic proof for validating the transactions with improved level of security, see par. 0020, par. 0196-0197, and par. 0215-0216. SHPUROV also discloses based on validated event data, automatically triggering a further programmatic action or event that is automatically executed (par. 0040 and 0083-0086: validate the corresponding request based on, among other things, a verification of the first and second digital signatures and a determination that the corresponding requests is consistent with one or more fraud detection and mitigation processes, or one or more transaction rules, associated with the corresponding request; see par. 0231-0232 for regeneration events)
SHPUROV is analogous art in a similar field of endeavor in improving distributed ledger in blockchain technology. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the reference patent with SHPUROV’s teaching of account related private keys and a cryptographic proof for validating the transactions with improved level of security.
Independent claims 18 and 21 are rejected for the same reason as that of claim 2, because they each recite the same limitations as claim 2 in similar language.
Regarding dependent claims 3-17 and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Third:
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,541,821 B2 (hereinafter “the reference patent”) in view of SHPUROV (US-20210184841-A1).
Regarding claim 2, the reference patent discloses all elements except: generating a cryptographic proof used for validating the first and second transactions and using the validated event data for triggering a further programmatic action. This aspect of the claim is identified as a further difference.
In a related art, SHPUROV teaches using a cryptographic proof for validating the transactions with improved level of security, see par. 0020, par. 0196-0197, and par. 0215-0216. SHPUROV also discloses based on validated event data, automatically triggering a further programmatic action or event that is automatically executed (par. 0040 and 0083-0086: validate the corresponding request based on, among other things, a verification of the first and second digital signatures and a determination that the corresponding requests is consistent with one or more fraud detection and mitigation processes, or one or more transaction rules, associated with the corresponding request; see par. 0231-0232 for regeneration events)
SHPUROV is analogous art in a similar field of endeavor in improving distributed ledger in blockchain technology. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the reference patent with SHPUROV’s teaching of account related private keys and a cryptographic proof for validating the transactions with improved level of security.
Independent claims 18 and 21 are rejected for the same reason as that of claim 2, because they each recite the same limitations as claim 2 in similar language.
Regarding dependent claims 3-17 and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Fourth:
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,095,462 B2 (hereinafter “the reference patent”) in view of SHPUROV (US-20210184841-A1).
Regarding claim 2, the reference patent discloses all elements except: generating a cryptographic proof used for validating the first and second transactions and using the validated event data for triggering a further programmatic action. This aspect of the claim is identified as a further difference.
In a related art, SHPUROV teaches using a cryptographic proof for validating the transactions with improved level of security, see par. 0020, par. 0196-0197, and par. 0215-0216. SHPUROV also discloses based on validated event data, automatically triggering a further programmatic action or event that is automatically executed (par. 0040 and 0083-0086: validate the corresponding request based on, among other things, a verification of the first and second digital signatures and a determination that the corresponding requests is consistent with one or more fraud detection and mitigation processes, or one or more transaction rules, associated with the corresponding request; see par. 0231-0232 for regeneration events)
SHPUROV is analogous art in a similar field of endeavor in improving distributed ledger in blockchain technology. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the reference patent with SHPUROV’s teaching of account related private keys and a cryptographic proof for validating the transactions with improved level of security.
Independent claims 18 and 21 are rejected for the same reason as that of claim 2, because they each recite the same limitations as claim 2 in similar language.
Regarding dependent claims 3-17 and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Fifth:
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10084607 B2 (hereinafter “the reference patent”) in view of SHPUROV (US-20210184841-A1).
Regarding claim 2, the reference patent discloses all elements except: generating a cryptographic proof used for validating the first and second transactions and using the validated event data for triggering a further programmatic action. This aspect of the claim is identified as a further difference.
In a related art, SHPUROV teaches using a cryptographic proof for validating the transactions with improved level of security, see par. 0020, par. 0196-0197, and par. 0215-0216. SHPUROV also discloses based on validated event data, automatically triggering a further programmatic action or event that is automatically executed (par. 0040 and 0083-0086: validate the corresponding request based on, among other things, a verification of the first and second digital signatures and a determination that the corresponding requests is consistent with one or more fraud detection and mitigation processes, or one or more transaction rules, associated with the corresponding request; see par. 0231-0232 for regeneration events)
SHPUROV is analogous art in a similar field of endeavor in improving distributed ledger in blockchain technology. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the reference patent with SHPUROV’s teaching of account related private keys and a cryptographic proof for validating the transactions with improved level of security.
Independent claims 18 and 21 are rejected for the same reason as that of claim 2, because they each recite the same limitations as claim 2 in similar language.
Regarding dependent claims 3-17 and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
Sixth:
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 9794074 B2 (hereinafter “the reference patent”) in view of SHPUROV (US-20210184841-A1).
Regarding claim 2, the reference patent discloses all elements except: generating a cryptographic proof used for validating the first and second transactions and using the validated event data for triggering a further programmatic action. This aspect of the claim is identified as a further difference.
In a related art, SHPUROV teaches using a cryptographic proof for validating the transactions with improved level of security, see par. 0020, par. 0196-0197, and par. 0215-0216. SHPUROV also discloses based on validated event data, automatically triggering a further programmatic action or event that is automatically executed (par. 0040 and 0083-0086: validate the corresponding request based on, among other things, a verification of the first and second digital signatures and a determination that the corresponding requests is consistent with one or more fraud detection and mitigation processes, or one or more transaction rules, associated with the corresponding request; see par. 0231-0232 for regeneration events)
SHPUROV is analogous art in a similar field of endeavor in improving distributed ledger in blockchain technology. Thus, it would have been obvious to one of ordinary in the art, before the effective filing date of the claimed invention, to modify the reference patent with SHPUROV’s teaching of account related private keys and a cryptographic proof for validating the transactions with improved level of security.
Independent claims 18 and 21 are rejected for the same reason as that of claim 2, because they each recite the same limitations as claim 2 in similar language.
Regarding dependent claims 3-17 and 19-20 of the present application, they are obvious variants of the same subject matter as found in the reference application, and thereby rejected under the judicially created doctrine of obviousness-type double patenting.
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 2-17 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 pre-AIA the applicant regards as the invention.
The rejection(s) under 35 U.S.C. 112(b) is/are determined by the following reasons:
Claim 2 recites two instances of “a blockchain computer system” in the first paragraph of the claim unclearly or causing an issue of insufficient antecedent basis in the claim.
Claims 3-17 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, because they depend from the rejected base claim 2.
Allowable Subject Matter
Claims 2-21 are allowable over prior art for the following reasons:
Independent claims 2, 18, and 21 each repeat a substantial portion of the allowable subject matter of the parent cases, and thus allowable over the prior art of record.
It is noted that the instant application is a Continuation of 18320698, filed 05/19/2023, now U.S. Patent # 12081681. 18320698 is a Continuation of 17374752, filed 07/13/2021, now U.S. Patent # 11695578. 17374752 is a Continuation of 16709254, filed 12/10/2019, now U.S. Patent # 11095462. 16709254 is a Continuation of 16115849, filed 08/29/2018, now U.S. Patent # 10541821. 16115849 is a Continuation of 15704633, filed 09/14/2017, now U.S. Patent # 10084607. 15704633 is a Continuation of 15423668, filed 02/03/2017, now U.S. Patent # 9794074. Furthermore, Application # 15423668 Claims Priority from Provisional Application 62291507, filed 02/04/2016
Dependent claims 3-17 and 19-20 are allowed by virtue of their dependencies on claims 2 and 18, as they further limit the scope of the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure as the prior art additionally discloses certain parts of the claim features (See “PTO-892 Notice of Reference Cited”).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON ZHAO whose telephone number is (571)272.9953. The examiner can normally be reached on Monday to Friday, 7:30 A.M to 5:00 P.M EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl G Colin can be reached on 571.272.3862. 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.
/Don G Zhao/Primary Examiner, Art Unit 2493 01/08/2026