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
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,182,782 and claims 1-17 of U.S. Patent No. 12,182,805. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims0of the present application are substantially coextensive to the original claims of application 16/078,625 now (U.S. Patent No. 11,182,782). Switching from an item or portion of data to a digital asset.
Allowable Subject Matter
Claims 12-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the issue of double patenting was resolved.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5 and 8-11 is/are rejected under 35 U.S.C. 102(a)(2) as being antedated by United States Patent Application Publication No.: US 2016/0269182 A1 (SRIRAM et al.).
As Per Claim 1: SRIRAM et al. teaches: A blockchain-implemented control method, of embedding data in a block chain transaction, the method comprising:
(SRIRAM et al., Paragraph [0027], “The provenance management system can maintain the public ledger database by interfacing with a distributed consensus system comprising multiple delegation nodes, e.g. computing devices. For example, the public ledger database can be maintained in a distributed manner as a block chain. The block chain keeps track of all confirmed logistic transactions that occur within the logistics platform maintained by the provenance management system. A logistic transaction is an inventory record of quantified goods that occurs within a company or between companies. A logistic transaction can define a quantity of one or more items associated with one or more types of items. The logistic transaction can define a source of the items, such as by referencing one or more previous logistic transactions that source at least a subset of the quantity of items described in the current logistic transaction. The logistic transaction can define a destination address, e.g. an identity address or a popcode address, of where the items are assigned to.”).
- deriving a public-key-private key cryptographic pair for digital asset;
- deriving a signature for the data using the public-key-private key cryptographic pair; and
(SRIRAM et al., Paragraph [0023], “When a first company manufactures a first quantity of goods, a first computing device controlled by the first company can report the ownership of the first quantity of goods via a logistic transaction record to a public ledger database. The public ledger database can store logistic transaction records in a distributed manner. The first computing device can report the logistic transaction record to the public ledger database via the provenance management system. The first computing device can cryptographically sign this logistic transaction with its private cryptographic key.”).
(SRIRAM et al., Paragraph [0024], “When the first company prepares to deliver the first quantity of goods to its various customers, the first computing device can request a proof of provenance code (hereinafter a "popcode") label from the provenance management system or an agent thereof. The popcode label encodes a private popcode key used to cryptographically sign a logistic transaction record. The provenance management system can store a public popcode key corresponding to the private popcode key in its trusted storage, such that it can verify the signature made by the private popcode key, e.g. hence establishing a proof-of-possession.”).
(SRIRAM et al., Paragraph [0031], “SKU can also refer to a unique identifier or code that refers to the particular stock keeping unit. These codes are not regulated nor standardized. Thus, in embodiments of the invention, when one company receives items from another vendor, it has a choice of maintaining the vendor's SKU or creating its own. Other entity tracking methods, with varying regulations, are Universal Product Code (UPC), International Article Number (EAN), Global Trade Item Number (GTIN), and Australian Product Number (APN). Embodiments of the invention disclose the generation of a universal unique, yet deterministic, key-pair for all SKUs, shipping cartons, and items, i.e. for every single SKU, shipping carton and item on the globe.”).
- codifying the data to generate codified metadata for the digital asset.
(SRIRAM et al., Paragraph [0023], “When a first company manufactures a first quantity of goods, a first computing device controlled by the first company can report the ownership of the first quantity of goods via a logistic transaction record to a public ledger database. The public ledger database can store logistic transaction records in a distributed manner. The first computing device can report the logistic transaction record to the public ledger database via the provenance management system. The first computing device can cryptographically sign this logistic transaction with its private cryptographic key.”).
As Per Claim 2: The rejection of claim 1 is incorporated and further SRIRAM et al. teaches:
- the digital asset is tokenised.
(SRIRAM et al., Paragraph [0053], “The 33 byte compressed private key is a private popcode that can be used to cryptographically prove possession. The 160 byte identifier is a unique non-sequential identifier that can be used to look up the provenance and tokens associated with the item.”).
As Per Claim 3: The rejection of claim 1 is incorporated and further SRIRAM et al. teaches:
- the step of deriving one or both of the keys in the cryptographic key from an existing cryptographic key pair, by:
- determining a first entity second private key based on at least a first entity master private key and a generator value;
- determining a second entity second private key based on at least a second entity master private key and the generator value; and
-determining a common secret (CS) at the first entity based on the first entity second private key and a second entity second public key, and
-determining the common secret (CS) at the second entity based on the second entity second private key and a first entity second public key,
-wherein the first entity second public key and the second entity second public key are respectively based on at least the first or second entity master key and the generator value.
(SRIRAM et al., Paragraph [0003], “Public-key cryptography, also known as asymmetric cryptography, is a class of cryptographic algorithms which requires two separate keys, one of which is secret (or private) and one of which is public. Although different, the two parts of this key pair are mathematically linked. The public key is used to encrypt plaintext or to verify a digital signature; whereas the private key is used to decrypt ciphertext or to create a digital signature. The term "asymmetric" stems from the use of different keys to perform these opposite functions, each the inverse of the other--as contrasted with conventional ("symmetric") cryptography which relies on the same key to perform both.”).
(SRIRAM et al., Paragraph [0004], “Public-key algorithms are based on mathematical problems which currently admit no efficient solution that are inherent in certain integer factorization, discrete logarithm, and elliptic curve relationships. It is computationally easy for a user to generate their own public and private key-pair and to use them for encryption and decryption. The strength lies in the fact that it is "impossible" (computationally infeasible) for a properly generated private key to be determined from its corresponding public key. Thus the public key may be published without compromising security, whereas the private key must not be revealed to anyone not authorized to read messages or perform digital signatures. Public key algorithms, unlike symmetric key algorithms, do not require a secure initial exchange of one (or more) secret keys between the parties.”).
(SRIRAM et al., Paragraph [0010], “Every bitcoin transaction requires a valid signature to be included in the blockchain, which can only be generated with valid digital keys; therefore, anyone with a copy of those keys has control of the bitcoin in that account. Keys come in pairs consisting of a private ( secret) key and a public key. The public key is similar to a bank account number and the private key is similar to the secret PIN, or signature on a check that provides control over the account. These digital keys are very rarely seen by the users of bitcoin. For the most part, they are stored inside the wallet file and managed by the bitcoin wallet software.”).
(SRIRAM et al., Paragraph [0047], “In cryptography, a key derivation function (or KDF) derives one or more secret keys from a secret value, such as a master key or other known information, such as a password or passphrase using a pseudo-random function. Key derivation functions are often used in conjunction with non -secret parameters to derive one or more keys from a common secret value, which is sometimes also referred to as key diversification. Such use may prevent an attacker who obtains a derived key from learning useful information about either the input secret value or any of the other derived keys. A KDF may also be used to ensure that derived keys have other desirable properties, such as avoiding weak keys in some specific encryption systems.”).
(SRIRAM et al., Paragraph [0052], “When popcodes are produced by the provider, the provider derives the popcodes through the following process. The provider generates a secret key value. The size of this key value is determined by the choice of hash function. HMACSHA512 would use a 512 bit key. HMAC SHA512 run on the sequential identifier and key produces a 512 bit pseudorandom value. The 256 most significant bits can be extracted in the creation of elliptic curve key pair. By convention, one treats these bits as a 32 byte integer value and solves the curve equation with 32 bytes representing the x value. Now you have Xpriv,Ypriv. (Xpriv,Ypriv*G(the generator point)=(Xpub,Ypub). 0x01.parallel.64 public bytes and hash them with Sha256 and shorten the hash to 160 bytes with RIPE160.”).
(SRIRAM et al., Paragraph [0056], “FIG. 2 is a further flow diagram showing deterministic key generation to derive private popcodes according to the invention. FIG. 2 shows popcode key derivation type 1 that is used to derive private popcodes. This permits prepoduction of popcodes in printed and RFID form. In FIG. 2, the key is a trusted authority secret key. The length of the key is determined by a hash function, i.e. a cryptographic hash function such as SHA 256, SHA 512, BLAKE2, etc. HMAC combines a key, a hash, and contents to produce a deterministic collision resistant value. An elliptic curve is shown, in which the curve equation of a finite field is suitable for cryptography, where the field size is less than or equal to the hash output.”).
As Per Claim 4: The rejection of claim 1 is incorporated and further SRIRAM et al. teaches:
- transmitting the codified metadata to the blockchain.
(SRIRAM et al., Paragraph [0027], “The provenance management system can maintain the public ledger database by interfacing with a distributed consensus system comprising multiple delegation nodes, e.g. computing devices. For example, the public ledger database can be maintained in a distributed manner as a block chain. The block chain keeps track of all confirmed logistic transactions that occur within the logistics platform maintained by the provenance management system. A logistic transaction is an inventory record of quantified goods that occurs within a company or between companies. A logistic transaction can define a quantity of one or more items associated with one or more types of items. The logistic transaction can define a source of the items, such as by referencing one or more previous logistic transactions that source at least a subset of the quantity of items described in the current logistic transaction. The logistic transaction can define a destination address, e.g. an identity address or a popcode address, of where the items are assigned to.”).
As Per Claim 5: The rejection of claim 1 is incorporated and further SRIRAM et al. teaches:
- receiving a signature and a script from at least one user to enable access to the embedded data.
(SRIRAM et al., Paragraph [0010], “Every bitcoin transaction requires a valid signature to be included in the blockchain, which can only be generated with valid digital keys; therefore, anyone with a copy of those keys has control of the bitcoin in that account. Keys come in pairs consisting of a private ( secret) key and a public key. The public key is similar to a bank account number and the private key is similar to the secret PIN, or signature on a check that provides control over the account. These digital keys are very rarely seen by the users of bitcoin. For the most part, they are stored inside the wallet file and managed by the bitcoin wallet software.”).
(SRIRAM et al., Paragraph [0011], “In the payment portion of a bitcoin transaction, the recipient's public key is represented by its digital fingerprint, called a bitcoin address, which is used in the same way as the beneficiary name on a check, i.e. "Pay to the order of." In most cases, a bitcoin address is generated from, and corresponds to, a public key. However, not all bitcoin addresses represent public keys; they can also represent other beneficiaries such as scripts. This way, bitcoin addresses abstract the recipient of funds, making transaction destinations flexible, similar to paper checks: a single payment instrument that can be used to pay into people's accounts, pay into company accounts, pay for bills, or pay to cash. The bitcoin address is the only representation of the keys that users routinely see, because this is the part they need to share with the world.”).
As Per Claim 8: The rejection of claim 5 is incorporated and further SRIRAM et al. teaches:
- the script comprises a public key of a signatory.
(SRIRAM et al., Paragraph [0010], “Every bitcoin transaction requires a valid signature to be included in the blockchain, which can only be generated with valid digital keys; therefore, anyone with a copy of those keys has control of the bitcoin in that account. Keys come in pairs consisting of a private ( secret) key and a public key. The public key is similar to a bank account number and the private key is similar to the secret PIN, or signature on a check that provides control over the account. These digital keys are very rarely seen by the users of bitcoin. For the most part, they are stored inside the wallet file and managed by the bitcoin wallet software.”).
(SRIRAM et al., Paragraph [0011], “In the payment portion of a bitcoin transaction, the recipient's public key is represented by its digital fingerprint, called a bitcoin address, which is used in the same way as the beneficiary name on a check, i.e. "Pay to the order of." In most cases, a bitcoin address is generated from, and corresponds to, a public key. However, not all bitcoin addresses represent public keys; they can also represent other beneficiaries such as scripts. This way, bitcoin addresses abstract the recipient of funds, making transaction destinations flexible, similar to paper checks: a single payment instrument that can be used to pay into people's accounts, pay into company accounts, pay for bills, or pay to cash. The bitcoin address is the only representation of the keys that users routinely see, because this is the part they need to share with the world.”).
As Per Claim 9: The rejection of claim 1 is incorporated and further SRIRAM et al. teaches:
- the metadata comprises a hash of the data.
(SRIRAM et al., Paragraph [0005], “Message authentication involves processing a message with a private key to produce a digital signature. Thereafter anyone can verify this signature by processing the signature value with the signer's corresponding public key and comparing that result with the message. Success confirms the message is unmodified since it was signed, and--presuming the signer's private key has remained secret to the signer--that the signer, and no one else, intentionally performed the signature operation. In practice, typically only a hash or digest of the message, and not the message itself, is encrypted as the signature.”).
(SRIRAM et al., Paragraph [0044], “Deterministic wallets do not require such frequent backups, and elliptic curve mathematics permit schemes where one can calculate the public keys without revealing the private keys. This permits for example a webshop business to let its webserver generate fresh addresses (public key hashes) for each order or for each customer, without giving the webserver access to the corresponding private keys (which are required for spending the received funds).”).
(SRIRAM et al., Paragraph [0052], “When popcodes are produced by the provider, the provider derives the popcodes through the following process. The provider generates a secret key value. The size of this key value is determined by the choice of hash function. HMACSHA512 would use a 512 bit key. HMAC SHA512 run on the sequential identifier and key produces a 512 bit pseudorandom value. The 256 most significant bits can be extracted in the creation of elliptic curve key pair. By convention, one treats these bits as a 32 byte integer value and solves the curve equation with 32 bytes representing the x value. Now you have Xpriv,Ypriv. (Xpriv,Ypriv*G(the generator point)=(Xpub,Ypub). 0x01.parallel.64 public bytes and hash them with Sha256 and shorten the hash to 160 bytes with RIPE160.”).
As Per Claim 10: The rejection of claim 5 is incorporated and further SRIRAM et al. teaches:
- the hash is used as a primary key in a lookup table where the data is stored.
(SRIRAM et al., Paragraph [0052], “When popcodes are produced by the provider, the provider derives the popcodes through the following process. The provider generates a secret key value. The size of this key value is determined by the choice of hash function. HMACSHA512 would use a 512 bit key. HMAC SHA512 run on the sequential identifier and key produces a 512 bit pseudorandom value. The 256 most significant bits can be extracted in the creation of elliptic curve key pair. By convention, one treats these bits as a 32 byte integer value and solves the curve equation with 32 bytes representing the x value. Now you have Xpriv,Ypriv. (Xpriv,Ypriv*G(the generator point)=(Xpub,Ypub). 0x01.parallel.64 public bytes and hash them with Sha256 and shorten the hash to 160 bytes with RIPE160.”).
(SRIRAM et al., Paragraph [0053], “The 33 byte compressed private key is a private popcode that can be used to cryptographically prove possession. The 160 byte identifier is a unique non-sequential identifier that can be used to look up the provenance and tokens associated with the item.”).
As Per Claim 11: The rejection of claim 1 is incorporated and further SRIRAM et al. teaches:
- the metadata comprises a pointer to the data.
(SRIRAM et al., Paragraphs [0087]-[0089], “Thus, embodiments of the invention provide:
1. A unique cryptographic address that is deterministically generated; and
2. A sequence number that provides a pointer to the deterministic path on a cryptographic chain when associated with the original master seed and entropy used.
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.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No.: US 2016/0269182 A1 (SRIRAM et al.).
As Per Claims 6 and 7: The rejection of claim 5 is incorporated and further SRIRAM et al. does not expressly state:
- the at least one user is a human user.
or
- the at least one user is a computer-implemented resource or agent.
However, Examiner is giving Official Notice that this would be an obvious interchangeable variation readily implemented with expectations of success by one of ordinary skill in the art before the effective filing date of the claimed invention. The user interchangeably referring to a human operator or to a computer interactive element is obvious to the point of being a common-sense understanding.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN A KAPLAN whose telephone number is (571)270-3170. The examiner can normally be reached on 9:00 a.m. - 5:00 p.m..
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, Ali Shayanfar can be reached on (571)272-3811. The fax phone number for the organization where this application or proceeding is assigned is 571-270-1050.
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 https://ppair-my.uspto.gov/pair/PrivatePair. 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.
/BENJAMIN A KAPLAN/Examiner, Art Unit 2434
Prosecution Insights