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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-19, 37 of prior U.S. Patent No. US 12061720. This is a statutory double patenting rejection.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11080425. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims of patent application contain every element of claims above instant application or vice versa, and as such they anticipate or anticipated by Instant Application. As to Claims 1, 20, of the Pat. *425 anticipates the claims of the instant application. By way of illustration, consider the respective claim 1 from each disclosure:
Claim 1 of the instant application
Claim 1 of the ‘425 Patent
1. A method, comprising:
receiving, with a server system, via a network, a first query from a first computer system of an entity seeking to acquire information about users, wherein the first query comprises criteria specifying a first class of attributes of users; in response to the first query, accessing a first data repository and selecting a first subset of users from a set of users having information in the first data repository, wherein: first subset of users are selected based on the first subset of users having attributes that satisfy the criteria; and the first data repository comprises a plurality of user records each comprising: a respective pseudonymous user identifier, and a respective plurality of attributes of a respective user; receiving, with the server system, via the network, from the first computer system, data specifying a second query, wherein: the second query requests a second class of attributes of users, and the second class of attributes are different from the first class of attributes; based on selecting the first subset of users and receiving the data specifying the second query, sending, with the server system, via the network, to native-client-applications executing on user computing devices of at least some of the first subset of users, a request to obtain responses to the second query; receiving, with the server system, from the native-client-applications of a second subset of users among the first subset of users, approval to obtain responses to the second query; in response to receiving approval, adjusting, with the server system, respective scores associated with the second subset of users and providing responses to the second query to the first computer system, wherein at part of at least some of the responses to the second query are provided, at least in part, by: accessing a tamper-evident data structure that associates pseudonymous user identifiers of respective users with respective addresses of respective ciphertexts and selecting addresses in response to the respective addresses being associated in the tamper-evident data structure with respective pseudonymous user identifiers of at least some users in the second subset of users; retrieving ciphertexts identified by the selected addresses from a decentralized second data repository, the decentralized second data repository being different from the tamper-evident data structure and the first data repository; decrypting, to form plaintext records, respective ciphertexts with respective native-client-application instances executing on user computing devices of users among the second subset of users, wherein: different native-client-application instances have access to different encryption keys of different ones of the respective ciphertexts, and the server system does not have access to the encryption keys; and determining the at least part of the at least some of the responses to the second query with the plaintext records; and storing, with the server system, the adjusted scores in memory.
1. A tangible, non-transitory, machine-readable medium storing instructions that when executed by one or more processors effectuate operations comprising:
receiving, with a server system, via a network, a first query from a first computer system of an entity seeking to acquire information about users, wherein the first query comprises criteria specifying a first class of attributes of users; in response to the first query, accessing a first data repository and selecting a first subset of users from a set of users having information in the first data repository, wherein: first subset of users are selected based on the first subset of users having attributes that satisfy the criteria; and the first data repository comprises a plurality of user records each comprising: a respective pseudonymous user identifier, and a respective plurality of non-personally identifiable attributes of a respective user; receiving, with the server system, via the network, from the first computer system, data specifying a second query, wherein: the second query requests a second class of attributes of users, and the second class of attributes are more personally identifying among the set of users than the first class of attributes; based on selecting the first subset of users and receiving the data specifying the second query, sending, with the server system, via the network, to native-client-applications executing on user computing devices of at least some of the first subset of users, a request to obtain responses to the second query; receiving, with the server system, from the native-client-applications of a second subset of users among the first subset of users, approval to obtain responses to the second query; in response to receiving approval, adjusting, with the server system, respective scores associated with the second subset of users and providing responses to the second query to the first computer system, wherein at part of at least some of the responses to the second query are provided, at least in part, by: accessing a tamper-evident data structure that associates pseudonymous user identifiers of respective users with respective addresses of respective ciphertexts and selecting addresses in response to the respective addresses being associated in the tamper-evident data structure with respective pseudonymous user identifiers of at least some users in the second subset of users; retrieving ciphertexts identified by the selected addresses from a decentralized second data repository, the decentralized second data repository being different from the tamper-evident data structure and the first date repository; decrypting, to form plaintext records, respective ciphertexts with respective native-client-application instances executing on user computing devices of users among the second subset of users, wherein: different native-client-application instances have access to different encryption keys of different ones of the respective ciphertexts, and the server system does not have access to the encryption keys; and determining the at least part of the at least some of the responses to the second query with the plaintext records; and storing, with the server system, the adjusted scores in memory, wherein: the first computer system is not provided access to personally identifiable information of the plurality of users absent both permission from respective users and adjustments to scores of respective users.
Independent claims 1, 19, 20 of the instant application are substantially similar to independent claims 1, 20, of the Pat. *425 and are rejected for substantially similar reasons as discussed supra. Likewise, dependent claims 2-18 of the instant application are substantially similar to dependent claims 2-19 (respectively) of the Pat. *425 and are rejected for substantially similar reasons as discussed supra.
Examiner’s note
Claims 1-20 are not rejected under prior art(s).
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 1-20 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.
Claims 1, 19 recite “…in response to the first query, accessing a first data repository and selecting a first subset of users from a set of users having information in the first data repository, wherein: first subset of users are selected based on the first subset of users having attributes that satisfy the criteria…”. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests changing “first subset of users” to “the first subset of users”. Appropriate correction is required.
Claims 6-9 recites “…whether determining the value indicative of whether the given user is a human presenting their real identity comprises…”. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests changing “a human presenting” to “the human presenting”. Appropriate correction is required.
Claim 20 recites “…after receiving approval, adjusting, with the server system, respective scores associated with the second subset of users and providing responses to the second query to the entity, wherein at part of at least some of the responses to the second query are provided, at least in part, by: accessing a tamper-evident data structure that associates pseudonymous user identifiers of respective users with respective addresses of respective ciphertexts and selecting addresses in response to the respective addresses being associated in the tamper-evident data structure with respective pseudonymous user identifiers of at least some users in the second subset of users; retrieving ciphertexts identified by the selected addresses from a decentralized second data repository, the decentralized second data repository being different from the tamper-evident data structure and the first data repository; decrypting, to form plaintext records, respective ciphertexts with respective native-client-application instances executing on user computing devices of users among the second subset of users, wherein: different native-client-application instances have access to different encryption keys of different ones of the respective ciphertexts, and the server system does not have access to the encryption keys; and determining the at least part of the at least some of the responses to the second query with the plaintext records; and storing, with the server system, the adjusted scores in memory”. There is insufficient antecedent basis for this limitation in the claim. Examiner suggests changing “the server system” to “the computer system”. Appropriate correction is required.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see PTO-form 892).
The following Patents and Papers are cited to further show the state of the art at the time of Applicant’s invention with respect to distributed computing applications…to staged information exchange facilitated by content addressable records indexed to pseudonymous identifiers of users by a tamper-evident data structure.
Bar-El et al (Pub. No. US 2018/0293387); “System, Device, and Method of Managing Trustworthiness of Electronic Devices”;
-Teaches a threat database able to store data about known threats and/or vulnerabilities to devices…see par. 35.
Ford et al (Pat. No. US 10318729); “Privacy Protection During Insider Threat Monitoring”;
-Teaches a risk-adaptive environment for obfuscating and conditionally accessing a user’s sensitive personal information…see col.21 lines 33-40.
Agrawal (Pub. No. US 2012/0291087); “Preventing Inappropriate Data Transfers Based on Reputation Scores”;
-Teaches detecting violations of data loss prevention policies based on reputation scores…see par. 5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GHAZAL B SHEHNI whose telephone number is (571)270-7479. The examiner can normally be reached Mon-Fri 9am-5pm PCT.
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/GHAZAL B SHEHNI/Primary Examiner, Art Unit 2499