DETAILED ACTION
Notice of 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 .
Response to Amendment
The amendment filed 2026-07-17 has been entered and fully considered.
Election/Restrictions
Applicant’s election with traverse of Invention I (claims 1-2, 5, 25, and 46) in the reply filed on 2026-07-17 is acknowledged. The traversal is on the grounds that there is a unifying inventive concept among the dependent claims. This is not found persuasive.
Applicant first argues that the linking claims each recite applying a “cryptographic homomorphic hashing function” to generate digital tokens associated with data entities, and that Li discloses (cyclic redundancy check) CRC signatures, which are alleged to be “fundamentally different from homomorphic hashing”, as it allegedly is a “a simple error-detection code that does not possess the algebraic properties of a homomorphic hash, namely the property that the hash of combined data equals the combination of individual hashes”. The Examiner first notes that the linking claims do not each recite applying a “cryptographic homomorphic hashing function” – only claim 1 and its dependents use this language. Claims 25 and 46 use the more generic “homomorphic hashing function”. Further, the Examiner respectfully submits that, as an affine function that outputs a fixed-size result, CRC is naturally homomorphic and a hash function, even if not cryptographic; See Wikipedia “Cyclic redundancy check”.
Applicant then argues that the linking claims recite a “dual storage system” comprising “a dataset of data representing data entities and a dataset of associated digital tokens” and that appending a physical CRC checksum to a block of data written to a NAND flash drive, as in Li, is a standard physical storage operation which allegedly does not constitute a “dual storage system” managing two logically distinct datasets. The Examiner notes, however, that the structure of “dual storage system” is not limited beyond the requirement that it store the two datasets. Since the disclosure in Li is storage of both the “block of data” and “CRC checksum” as acknowledged by Applicant, there is the storage of two logically distinct datasets – the block of data and the appended checksum, for each element of written data.
Based on the above, the Examiner respectfully submits that Li anticipates all of the shared technical features, i.e., there is no shared special technical feature between the identified inventions.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2024-12-20 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 46 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter; specifically, it is directed towards software, per se.
Claim 46 is directed towards software, per se. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO; See In re ZIetz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a “computer program product comprising computer readable executable code” typically covers forms of hardware, software per se, and combinations thereof in view of the ordinary and customary meaning of computer program product, particularly when the specification is silent; See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers software per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter, as software per se does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter). Software is descriptive material that can be considered statutory ONLY if it is both functional and clearly embodied as structural, non-transitory matter; See MPEP § 2106.03(I). Even if the software of the claim is functional, it is not clearly defined as being embodied as structural, non-transitory matter and is therefore not statutory.
Claims 1-2, 5, 25, and 46 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite generating a token for data and determining synchronicity between the data and corresponding token, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as Mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories or could be amended such that they are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of generating a token for data and determining synchronicity between the data and corresponding token, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as Mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that clam features of: generating a token for data and determining synchronicity between the data and corresponding token do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead of a practical application, the claim features of generating a token for data and determining synchronicity between the data and corresponding token merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. computing device) that serves to perform generic computer functions (e.g. establish and maintain interactions, store data, perform cryptographic homomorphic hashing, generate digital tokens, determine synchronicity, ...) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed interactions, dataset of data representing data entities, dataset of associated digital tokens, digital tokens, call, and actioned data entity are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards generating a token for data and determining synchronicity between the data and corresponding token, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, “establish and/or maintain the interactions with the one or more entities” and “receive a call from an entity to perform an action” are merely receiving or transmitting data over a network, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Further, “store the actioned data entity and the generated associated digital token in the respective dataset in the dual storage system” is merely a form of storing and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. Further, “apply a cryptographic homomorphic hashing function to the actioned data entity to generate the associated digital token” and “determine synchronicity” are merely forms of performing repetitive calculations, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Further note that the abstract idea of generating a token for data and determining synchronicity between the data and corresponding token to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. verifying that a person matches their ID.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
35 USC § 112(f)
The following is a quotation of 35 U.S.C. 112(f):
ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “an input/output module configured to manage interactions” and “to receive a call”; “a crypt module comprising secure hardware and software configured to perform cryptographic homomorphic hashing”, “to apply a cryptographic homomorphic hashing function”, and “to determine synchronicity”; and a “backend storage module is configured to perform the action” and “to store the actioned data entity and the generated associated digital token” in claim 1.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification is unclear as to the corresponding structure or acts described in the specification for the 35 U.S.C. 112(f) limitations.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation 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 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.
Claims 1-2, 5, 25, and 46 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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 at the time the application was filed, had possession of the claimed invention. In particular, claim 1 recites the limitation “determine synchronicity between the data entity dataset and the digital token dataset based at least in part on the homomorphic hashing function”, and the specification does not describe the claimed feature in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing.
It is first noted that original claims lack adequate written description when the claims are generically drafted but the written description fails to support the scope of the genus claimed; See MPEP § 2161.01(I). That is, “generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed” and “the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus”.
In this instance, the claims generally recite determining synchronicity between [datasets] based at least in part on a homomorphic hashing function. The specification does provide antecedent basis for this feature and a specific embodiment of comparing a hash and token (e.g. p. 2, ll. 12-14; p. 16, ll. 7-30); however, the specification does not provide a suitable level of embodiments or species for how to achieve this claim function for any generic application of determining synchronicity between [datasets] based at least in part on a homomorphic hashing function in general, such as claimed. That is, the specification supports neither general homomorphic hashing that avoids requiring comparison of hash and token nor of determining synchronicity using a basis other than such comparison.
The Examiner further notes that the claim uses the expression “determine synchronicity”; however, the Examiner notes that this expression does not make sense within the context it is used (hash comparisons to verify data validity). In particular, the Examiner notes that “synchronicity” is generally defined as the coincidental occurrence of events (especially psychic events such as similar thoughts in widely separated persons or a mental image of an unexpected event before it happens) that seem related but are not explained by conventional mechanisms of causality, whereas the Examiner surmises that Applicant means synchronization – the deliberate alignment of two or more processes, events, or mechanisms in unison.
Thus, based on the two deficiencies above, the Examiner finds that the specification does not provide the necessary written description support for the full breadth of the asserted claims as required by the written description requirement.
Claims 25 and 46 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claims 1-2 and 5 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Specifically, with regard to claim 1, claim elements “an input/output module configured to manage interactions” and “to receive a call”; “a crypt module comprising secure hardware and software configured to perform cryptographic homomorphic hashing”, “to apply a cryptographic homomorphic hashing function”, and “to determine synchronicity”; and a “backend storage module is configured to perform the action” and “to store the actioned data entity and the generated associated digital token” are limitations that invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions. In particular, the Specification does not explicitly disclose what structure performs the claimed functions.
Applicant may:
(a) Amend the claim so that the claim limitations will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the functions recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the functions so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed functions, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed functions and clearly links or associates the structure, material, or acts to the claimed functions, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed functions. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim 5 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, Claim 5 recites the limitation “DLTs”, and the acronym is undefined and ambiguous, thereby rendering unclear what it is referencing.
Claim Rejections - 35 USC § 102 and/or 35 USC § 103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 5, 25, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Unagami (US Pre-Grant Publication No. 20200050774-A1, hereinafter “Unagami”) or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Unagami.
With respect to independent claim 1, Unagami discloses a computing device comprising:
an input/output module configured to manage interactions with one or more entities, wherein the input/output module comprises hardware configured to establish and/or maintain the interactions with the one or more entities {paras. 0039-0042: “home 100, terminal 110, vehicle 120, authentication servers 200a, 200b, and 200c, and data servers 300a, 300b, and 300c … are connected via communication network 400”}.
a backend storage module comprising a dual storage system, wherein the dual storage system comprises at least one data store comprising a dataset of data representing data entities and a dataset of associated digital tokens {paras. 0041, 0055-0056, and 0133-0145: “storage devices 201a, 201b, and 201c (hereinafter also referred to as storage devices 201)”, wherein “authentication servers 200a, 200b, and 200c record the blocks including the transaction data in the distributed ledgers of storage devices 201a, 201b, and 201c” – the transaction data includes “an identifier for identifying the creator of the transaction data” and “first hash value”}.
a crypt module comprising secure hardware and software configured to perform cryptographic homomorphic hashing to generate one or more digital tokens associated with respective data entities {paras. 0133-0145: “data servers 300a to 300c perform hash value calculation processing through secure computation on the encrypted history information which is the encrypted data received, so as to calculate a hash value (hereinafter referred to as a second hash value)”; although Unagami is silent as to the particular hashing algorithm used, use of a specific cryptographic homomorphic hashing such as LtHash is at once envisaged, especially for large blockchain datasets such as Unagami; See MPEP § 2131.02(III); additionally, if not anticipated by envisaging, than at the least, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Unagami before him or her, to employ cryptographic homomorphic hashing such as LtHash for the hashing algorithm, as it provides increased security and processing efficiency and is commonly used for large blockchain datasets such as Unagami}; and wherein
the input/output module is further configured to receive a call from an entity to perform an action in respect of a data entity {paras. 0133-0160: “controller 101 of home 100 transmits, to authentication server 200a, the transaction data including the first hash value, generated in Step S103” and/or “authentication server 200a transmits, to data servers 300a to 300c, the first transaction data generated in Step S202 and indicating the data verification request”}.
the backend storage module is configured to perform the action to the data entity {paras. 0103-0105 and 0133-0160: “When the validity of the transaction data is verified successfully by transaction data verifier 211, block generator 212 executes a consensus algorithm related to the transaction data among a plurality of authentication servers”, i.e. records/executes the transaction}.
the crypt module is configured to apply a cryptographic homomorphic hashing function to the actioned data entity to generate the associated digital token {paras. 0133-0160: “data servers 300a to 300c perform hash value calculation processing through secure computation on the encrypted history information which is the encrypted data received, so as to calculate a hash value (hereinafter referred to as a second hash value)” and/or “authentication server 200a obtains, from data server 300a, the fourth hash value computed by performing computation processing on the encrypted history information”}.
the backend storage module is further configured to store the actioned data entity and the generated associated digital token in the respective dataset in the dual storage system {paras. 0133-0160: “authentication servers 200a, 200b, and 200c record the blocks including the transaction data in the distributed ledgers of storage devices 201a, 201b, and 201c, respectively”; note that “the transaction data including the first hash value”, i.e. both transaction and hash are stored}.
the crypt module is further configured to determine synchronicity between the data entity dataset and the digital token dataset based at least in part on the homomorphic hashing function {paras. 0133-0160: “authentication server 200a records the transaction data in the distributed ledger in synchronization with authentication servers 200b and 200c, that is, authentication servers 200 excluding authentication server 200a, when the validity of the transaction data received from home 100 is verified and the first hash value and the second hash value match” and/or “authentication server 200a records the second transaction data in the distributed ledger in synchronization with authentication servers 200b and 200c, that is, authentication servers 200 excluding authentication server 200a, when the third hash value and the fourth hash value do not match”}.
With respect to dependent claim 2, Unagami discloses in which the dual storage system is associated with one or more external data management entities, wherein one or more of the external data management entities store corresponding data entities and/or associated digital tokens {para. 0145: “authentication servers 200a, 200b, and 200c record the blocks including the transaction data in the distributed ledgers of storage devices 201a, 201b, and 201c, respectively”}.
With respect to dependent claim 5, Unagami discloses in which the one or more of the external data management entities include one or more of external DLTs, external legacy systems, other computing devices, external databases, and/or external servers {para. 0145: “authentication servers 200a, 200b, and 200c record the blocks including the transaction data in the distributed ledgers of storage devices 201a, 201b, and 201c, respectively”}.
With respect to claims 25 and 46, a corresponding reasoning as given earlier in this section with respect to claim 1 applies, mutatis mutandis, to the subject matter of claims 25 and 46; therefore, claims 25 and 46 are rejected, for similar reasons, under the grounds as set forth for claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
The reference Ragnoli et al. (US Pre-Grant Publication No. 20230239153-A1) also anticipates the claimed invention by disclosing a data management module that manages datasets, wherein the data manager performs a homomorphic hash technique on execution results and stores the result and hash.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491
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