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 .
DETAILED ACTION
1. Claims 1 - 18 are pending. Claims 1, 11 are independent. File date on 9-16-2024.
Allowable Subject Matter
2. Claims 1 - 18 are allowable.
Claim Rejections - 35 USC § 101
3. 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.
4. Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. The claim(s) does/do fall within at least one of the four categories of patent eligible subject matter because Claim 9 is directed to software per se. Claim 9 is to be construed as a computer system of "software per se", unless the claim makes clear "server" includes at least one hardware inclusive component.
Double Patenting
5. 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 obviousness-type 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 Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
6. Initially it should be noted that the present application is a continuation application of application 17/932,912, now patent 12,120,218 having the same inventive entity. The entire disclosures of the instant application and the patent are identical.
Claims 1 - 18 are rejected under the judicially created doctrine of nonstatutory type double patenting as being unpatentable over Claims 1 - 14 of U.S. Patent No. 12,120,218. Although the conflicting claims are not identical, they are not patentably distinct from each other.
Claims 1, 11 of the instant application (18/886357) are almost the same as Patent (12,120,218) Claim 1. Claim 1 of the 12,120,218 Patent as shown in the table below contains every element of Claim 1 of the instant application and as such the difference is not enough to distinguish the two claims. Claims 1, 11 of the instant application therefore are not patently distinct from the earlier patent claims and as such are unpatentable over nonstatutory-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim, if the later claim is unpatentable over the earlier claim.
Application 18/886,357
Claim 1
Patent (12,120,218)
Claim 1
“generating, by an enclave, an enclave public key”
“generating, by the enclave, the enclave public key”
“transmitting, by the enclave, the enclave public key to an Application Programming Interface (API), wherein the enclave public key is stored in an encrypted memory of the enclave along with a corresponding enclave private key”
“returning, by the confidential enclave, the enclave public key to the API” and “wherein the enclave public key is stored in an encrypted memory of the enclave along with a corresponding enclave private key”
“receiving, by the enclave from the API, one or more encrypted files and a client public key”
“sending, by the API, the one or more encrypted file and the client public key to the enclave”
“decrypting, by the enclave, the one or more encrypted files, using the enclave private key”
“decrypting, by the enclave, the one or more encrypted files, using the enclave private key”
“storing the decrypted one or more files in the encrypted memory of the enclave”
“wherein the decrypted one or more files are kept in the encrypted memory of the confidential enclave”
“processing, by the enclave, the decrypted one or more files to produce one or more result files”
“processing, by the enclave, the one or more files to produce one or more result files”
“encrypting, by the enclave, the one or more result files using the client public key”
“encrypting, by the enclave, the one or more result files using the client public key”
“sending, by the enclave, the one or more result files to the API for decryption by a downstream entity”
“sending by the enclave, the one or more result files to the API” and “sending by the API, the one or more audio files to the client computer” and “decrypting, by the client computer, one or more result files using a client private key”
Dependent Claims 2, 12 are rejected based upon rejected dependent Claim 2 of continuation application 17/932912 now patent 12,120,218.
Dependent Claims 3, 13 are rejected based upon rejected dependent Claim 3 of continuation application 17/932912 now patent 12,120,218.
Dependent Claims 4, 14 are rejected based upon rejected dependent Claim 4 of continuation application 17/932912 now patent 12,120,218.
Dependent Claims 5, 15 are rejected based upon rejected dependent Claim 7 of continuation application 17/932912 now patent 12,120,218.
Dependent Claims 6, 16 are rejected based upon rejected dependent Claim 8 of continuation application 17/932912 now patent 12,120,218.
Dependent Claim 7 is rejected based upon rejected dependent Claim 9 of continuation application 17/932912 now patent 12,120,218.
Dependent Claims 8, 9 are rejected based upon rejected dependent Claim 1 of continuation application 17/932912 now patent 12,120,218.
Dependent Claim 10 is rejected based upon rejected dependent Claim 10 of continuation application 17/932912 now patent 12,120,218.
Dependent Claims 17, 18 are rejected based upon rejected dependent Claim 10 of continuation application 17/932912 now patent 12,120,218.
35 USC § 112(f) Analysis
7. The following is a quotation of 35 U.S.C. 112(f):
(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.
8. 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Such claim limitations are in claim 8.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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 shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitations. The specification in paragraphs [0030], [0039] discloses the following:
[0030] In the case that the enclave is one of a plurality of enclaves, following the step of Requesting, by a client computer, an enclave public key from an Application Programming Interface, API, the method may include: Requesting, by the API, one or more of a total file size, security level and speed.
[0039] The API may be configured to provide one or more data processing services. In this case, following the step of Requesting, by a client computer, an enclave public key from an Application Programming Interface, API, the method may include: Requesting, by the API, a selection of data processing service. The API may provide an interface for the user to select from the one or more data processing services. Following Requesting, by the API, a selection of data processing service, the method will further include returning, by the client computer, the selection of data processing service. In response to receiving the selection of data processing service, the API moves onto the step of requesting the enclave public key from the enclave. The API may have access to a plurality of enclaves, each enclave set up to process data according to one of the one or more data processing services, in this case, the API will request the enclave public key from the enclave that is set up to process data in the way that the client computer selected.
The Applicant has defined the means for performing the indicated steps as computing software executing by a computing system (i.e. a computing system comprising a CPU or processor executing a sequence of instructions or software via an API; software implementation). The specification has disclosed sufficient structure and steps to perform the indicated “means for” functions.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (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) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyung H Shin whose telephone number is (571)272-3920. The examiner can normally be reached M - F: 12pm - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joon H Hwang can be reached at 571-272-4036. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG H SHIN/ 3-18-2026Primary Examiner, Art Unit 2447
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