DETAILED ACTION
This office action is in response to the application filed on 9/21/2024. Claim(s) 1-27 is/are pending and are examined.
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 .
Priority
This application claims priority to provisional application CIP of 17/516,722 11/02/2021 PAT 12124850, This application is a CIP of 16/442,455 06/15/2019 PAT 11171934, This application is a CIP of 14/953,300 11/28/2015 PAT 10360395, however the claimed priority is deficient. A later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/516,722 filed 11/2/20221, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claims 1-13 and 15-27 contain subject matter which is not supported in the above application and therefore, for the purposes of examination, these claims, each viewed as a whole, will not receive the priority claimed therein. Therefore claims 1-13 and 15-27 receive the claimed priority date of 9/21/2024.
Claim 14 receives the priority date of 11/28/2014.
Examiner’s Note – Patentably Distinct Subject Matter
Claims 1-13 and 15-27 are patentably distinct from the claims in the family applications.
Examiner’s Note – Allowable Subject Matter
Claims 12-13 and 27 overcome the prior art and would otherwise be allowable if incorporated into the base claim along with any intervening claims. Further, the claims must overcome the claim objection below.
Specification
The disclosure is objected to because of the following informalities:
- The abstract of the disclosure is objected to because it is more than 150 words. Correction is required. See MPEP § 608.01(b).
- Reference 36 contains an embedded hyperlink and/or other form of browser-executable code in the Background section of the specification. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code. See MPEP § 608.01. Please remove the hyperlink.
Claim Objections
Claim(s) 12, 16, 22, 23, and 27 is/are objected to because of the following informalities: The examiner suggests the following corrections:
Claims 12 and 27:
Insert “and” between the last two limitations.
Claim 16 and 23:
The claim does not end with a period “.”. Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. Please see MPEP 608.01(m), Fressola v.Manbeck, 36 USPQ2d 1211 (D.D.C. 1995).
Claim 22
The claim has a period in the middle of the claim.
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 claims at issue 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); 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 14 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,360,395. Although the claims at issue are not identical in form, they are not patentably distinct from each other. In particular, the patented claim anticipates the instant claim.
Claim(s) 14 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10,356,061. Although the claims at issue are not identical in form, they are not patentably distinct from each other. In particular, the patented claim anticipates the instant claim.
Claim(s) 14 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 8 and 5 of U.S. Patent No. 11,171,934. Although the claims at issue are not identical in form, they are not patentably distinct from each other.
Claim(s) 14 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,124,850. Although the claims at issue are not identical in form, they are not patentably distinct from each other. The patented claim does not, but in related art, Venkatesan (US 2005/0175180 A1) Fig. 4, element 406, and ¶ 47 Ln. 5-11 teaches synchronization information embedder 406 within code hiding module 404 that chooses secret locations to hide the synchronized information.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Venkatesan and the patented claims to modify the information hiding system of the patented claim to include the mapping system as taught in Venkatesan. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
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(s) 1-3, 5-11, 14-15, and 19-22 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
The analysis is guided by the Supreme Court's two-step framework, described in Mayo and Alice (Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)).Step 1: Is/Are the claim(s) directed to a process, machine, manufacture, or composition of matter?Answer: Yes.Step 2A Prong 1: Is/Are the claim(s) directed to a law of nature, a natural phenomenon, or an abstract idea, i.e., judicially recognized exceptions (both individually and as an ordered combination)?
Answer: Yes, claim 1 is directed to the mental process of stenography “the first party generates a first map; the first party generates random noise; the first party generates a random nonce; the first party derives a second map, based on the first map and the nonce; the first party hides data inside the noise, based on the second map; the first party hides the nonce at bit locations based on the first map” beyond the scope of § 101. Dependent claims 5-9 and 11 further describe the identified mental concept. Similarly, claim 14 recites the mental process, “the first party generates a map; the first party generates random noise; the first party hides a signal inside the noise, based on the map”. Claim 22 recites the mental process, “the first party generates a first map; the first party generates random noise; the first party generates a random nonce; the first party generates a second map, based on the first map and the nonce. the first party hides a signal inside the noise, based on the second map”. Claim 22 recites the mental process, “the first party generates a first map; the first party generates random noise; the first party generates a random nonce; the first party generates a second map, based on the first map and the nonce. the first party hides a signal inside the noise, based on the second map”. Examiner notes that the claims broadly include the use of true randomness and pseudo-randomness.
Step 2A Prong 2: Is/Are the claim(s) implemented into a practical application?
Answer: No, the limitations of the claim as drafted, is a process that, under its broadest reasonable interpretation, covers implementation of the mathematical concepts which can be performed by the mind using pencil and paper but for the recitation of generic computer components (i.e., “processing system” and a “memory system”). Claim 2 recites generating random noise with an electronic circuit. Generic computers can create pseudo-random noise. Claim 3 recites non-functional descriptive language. Generic computers have light emitting diodes. Claim 10 recites sending information from a first party to a second. This broadly encapsulates two parties hosted by the same generic computer as in virtual entities. Claim 14 recites generating random noise as described above for claim 2 and non-functional descriptive language for LEDs as described above in claim 3. Claim 14 also recites the generic processor and memory. Claims 15 and 19-21 recite flip flops which are generic computing components and parts of integrated circuits. Claim 22 recites the generic processor and memory.
The claims recite extra solution activity including the ingestion of data and displaying of mathematical results by a generic computer. This judicial exception is not integrated into a practical application. Extra solution activity of ingesting and outputting data on a generic computer amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.Step 2B: Does/Do the claim(s) recite additional elements that when analyzed individually and in ordered combinations amount to significantly more than the judicial exception(s)?
Answer: No, the claim(s) (both individually and as an ordered combinations) does/do not transform the nature of the claim(s) into a patent-eligible application of the abstract idea (i.e., significantly more than the abstract idea implemented using generic computer components). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements to perform the processing steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, claims are not patent eligible.
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 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.
Claim(s) 1-11 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiske (US 2022/0058022 A1), in view of Newton (US 2020/0328886 A1) in view of Peatfield (US 2025/0307437 A1).
Regarding claim 1, Fiske teaches:
“A machine-implemented method comprising: a first party executes a machine having a processor system and a memory system (Fiske, ¶ 44 teaches implementing a method using a processor and a memory); the processor system including one or more processors (Fiske, ¶ 44 teaches implementing a method using a processor and a memory); the first party generates a first map (Fiske, Fig. 1B, ¶ 88 teaches generating a map with a random number generator); the first party generates random noise (Fiske, ¶ 110, generating random noise for use with scatter map);
the first party hides data inside the noise, based on the second map (Fiske, ¶ 244-247 teaches hiding data inside the noise based on the hiding map, which is second to the transformation map)”.
Fiske does not, but in related art, Newton teaches: the first party generates a random nonce (Newton, ¶ 70 and 93 teach generating an nonce using a random number generator);
the first party hides the nonce at bit locations based on the first map (Newton, ¶ 50-53 teaches mapping the nonce using random vectors)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Fiske and Newton, to modify the data hiding system of Fiske to include the nonce mapping system of Newton. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Fiske and Newton do not, but in related art, Peatfield teaches: “the first party derives a second map, based on the first map and the nonce (Peatfield, Figs. 209-210 and ¶ 299 generating a second map based on a first map and the nonce of a key creation process)”. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Fiske, Peatfield and Newton, to modify the data hiding system of Fiske and Newton to include the method of creating a map based on a first map as taught in Peatfield. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding claim 2, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 1 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the random noise is generated from an electronic circuit (Fiske, Fig 9A teaches a non-deterministic generator circuit)”.
Regarding claim 3, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 2 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: wherein the circuit has a light emitting diode (Fiske, Fig 9A teaches a non-deterministic generator circuit with an LED)”.
Regarding claim 4, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 2 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the electronic circuit detects quantum events (Fiske, Fig 9A teaches a non-deterministic generator circuit with a phototransistor which detects photons)”.
Regarding claim 5, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 1 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the bit locations of the nonce are distinct from the bit locations of the hidden data (Fiske, ¶ 317 and 341 teaches hiding information in distinct locations from the noise. Fiske, ¶ 167 teaches hiding multiple pieces of information)”.
Regarding claim 6, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 1 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the hidden data consists of bits of one or more public keys (Fiske, ¶ 18 the hidden data is a public key)”.
Regarding claim 7, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 6 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: wherein the one or more public keys are derived from at least some elliptic curve computations (Fiske, ¶ 96 teaches that the public key is an elliptic curve algorithm)”.
Regarding claim 8, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 7 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: wherein the elliptic curve is a Montgomery curve over a finite field (Fiske, ¶ 277 teaches a Montgomery curve)”.
Regarding claim 9, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 7 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: wherein the elliptic curve is an Edwards curve over a finite field (Fiske, ¶ 276 teaches an Edwards curve)”.
Regarding claim 10, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 1 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the first party transmits the first map to a second party (Peatfield, ¶ 299 teaches sending the map to the second entity)”.
Regarding claim 11, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 1 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the first map is a permutation (Fiske, ¶ 266, 271 teaches a butterfly network as a permutation of bits)”.
Regarding claim 22, Fiske teaches:
“A machine-implemented method comprising: a first party executes a machine having a processor system and a memory system (Fiske, ¶ 44 teaches implementing a method using a processor and a memory); the processor system including one or more processors (Fiske, ¶ 44 teaches implementing a method using a processor and a memory); the first party generates a first map (Fiske, Fig. 1B, ¶ 88 teaches generating a map with a random number generator);
the first party generates random noise (Fiske, ¶ 110, generating random noise for use with scatter map); the first party hides a signal inside the noise, based on the second map (Fiske, ¶ 244-247 teaches hiding data inside the noise based on the hiding map, which is second to the transformation map)”.
Fiske does not, but in related art, Newton teaches: the first party generates a random nonce (Newton, ¶ 70 and 93 teach generating an nonce using a random number generator)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Fiske and Newton, to modify the data hiding system of Fiske to include the nonce mapping system of Newton. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Fiske and Newton do not, but in related art, Peatfield teaches: “the first party generates a second map, based on the first map and the nonce (Peatfield, Figs. 209-210 and ¶ 299 generating a second map based on a first map and the nonce of a key creation process)”. Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Fiske, Peatfield and Newton, to modify the data hiding system of Fiske and Newton to include the method of creating a map based on a first map as taught in Peatfield. The motivation to do so constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venkatesan (US 2005/0175180 A1) in view of Qi (US 2012/0045053 A1).
Regarding claim 14, Venkatesan teaches:
“A machine-implemented method comprising: a first party executes a machine having a processor system and a memory system (Venkatesan, ¶ 28 and 84 teaches processor and memory to execute method steps); the processor system including one or more processors (Venkatesan, ¶ 28 and 84 teaches processor and memory to execute method steps); the first party generates a map (Venkatesan, Fig. 4, element 406, and ¶ 47 Ln. 5-11 teaches synchronization information embedder 406 within code hiding module 404 that chooses secret locations to hi the synchronized information); the first party generates random noise (Venkatesan, Fig. 4, element 408, ¶ 48 teaches pseudo random number generator); the first party hides a signal inside the noise, based on the map (Venkatesan, Fig. 4, element 406, and ¶ 47 Ln. 5-11 teaches synchronization information embedder 406 within code hiding module 404 that chooses secret locations to hi the synchronized information)”.
Venkatesan does not, but in related art, Qi teaches: “wherein the noise is generated by an electronic circuit (Qi, ¶ 25 and 109 teaches using light to produce a quantum random number generator); and the electronic circuit has a light emitting diode (Qi, ¶ 109 teaches an LED. Examiner notes: this language is non-functional descriptive language. The LED is not doing anything in the method)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Venkatesan and Qi to modify the information hiding system of Venkatesan to include the LED as taught in Qi. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venkatesan in view of Qi in view of Xu (US 2019/0037183 A1).
Regarding claim 15, Venkatesan in view of Qi teaches:
“The machine-implemented method of 14 (Venkatesan in view of Qi teaches the limitations of the parent claims as discussed above)”.
Venkatesan in view of Qi does not, but in related art, Xu teaches:
“wherein the circuit contains one or more flip-flops (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Venkatesan, Qi, and Xu, to modify the information hiding system of Venkatesan and Qi to include the photodetector, flip flop and laser diode system of Xu. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding claim 16, Venkatesan in view of Qi in view of Xu teaches:
“The machine-implemented method of 15 (Venkatesan in view of Qi in view of Xu teaches the limitations of the parent claims as discussed above) further comprising: the light emitting diode emits photons to a photon detector (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop); the photon detector absorbs one or more photons emitted from the light emitting diode (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop); and the photon detector is connected to one or more flip-flops (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop)”.
Regarding claim 17, Venkatesan in view of Qi in view of Xu teaches:
“The machine-implemented method of 16 (Venkatesan in view of Qi in view of Xu teaches the limitations of the parent claims as discussed above) further comprising: wherein the one or more photons absorbed by the photon detector cause the voltage of one or more of the flip-flops to change (Xu, ¶ 57-58 teaches the voltage changing on the photodetector which is passed along to the flip flop latch)”.
Regarding claim 18, Venkatesan in view of Qi in view of Xu teaches:
“The machine-implemented method of 16 (Venkatesan in view of Qi in view of Xu teaches the limitations of the parent claims as discussed above) further comprising: wherein the one or more photons absorbed by the photon detector cause the state of one or more of the flip-flops to change (Xu, ¶ 57-58, and 68 teaches the voltage changing on the photodetector which is passed along to the flip flop latch changing its state)”.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venkatesan in view of Qi in view of Xu in view of Templier (US 2024/0322100 A1).
Regarding claim 19, Venkatesan in view of Qi in view of Xu teaches:
“The machine-implemented method of 15 (Venkatesan in view of Qi in view of Xu teaches the limitations of the parent claims as discussed above)”.
Venkatesan in view of Qi in view of Xu does not, but in related art, Templier teaches:
“wherein at least one of the flip-flops is a D flip-flop (Templier, ¶ 119 teaches a photodetector connected to a D flip flop)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Venkatesan, Qi, Templier, and Xu, to modify the information hiding system of Venkatesan, Xu and Qi to include the photodetector with a D flip flop and laser diode system of Templier. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Venkatesan in view of Qi in view of Xu in view of Ito (US 2025/0102636 A1).
Regarding claim 20, Venkatesan in view of Qi in view of Xu teaches:
“The machine-implemented method of 15 (Venkatesan in view of Qi in view of Xu teaches the limitations of the parent claims as discussed above)”.
Venkatesan in view of Qi in view of Xu does not, but in related art, Ito teaches:
“wherein at least one of the flip-flops is a T flip-flop (Ito, ¶ 43 teaches a photodetector connected to a T flip flops which are used as counters and given the nature of the light they receive would create randomized bit streams)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Venkatesan, Qi, Ito, and Xu, to modify the information hiding system of Venkatesan, Xu and Qi to include the photodetector with a T flip flop counters system of Ito. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding claim 21, Venkatesan in view of Qi in view of Xu in view of Ito teaches:
“The machine-implemented method of 20 (Venkatesan in view of Qi in view of Xu in view of Ito teaches the limitations of the parent claims as discussed above) further comprising: wherein the circuit contains two or more T flip-flops (Ito, ¶ 43 teaches a photodetector connected to a T flip flops which are used as counters and given the nature of the light they receive would create randomized bit streams); wherein two or more of the T flip-flops make up a counter that stores one or more random bits (Ito, ¶ 43 teaches a photodetector connected to a T flip flops which are used as counters and given the nature of the light they receive would create randomized bit streams)”.
Claim(s) 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiske in view of Newton in view of Peatfield view of Xu.
Regarding claim 23, Fiske in view of Newton in view of Peatfield teaches:
“The machine-implemented method of 22 (Fiske in view of Newton in view of Peatfield teaches the limitations of the parent claims as discussed above) further comprising: the noise and the nonce are generated by an electronic circuit (Fiske, Fig 9A teaches a non-deterministic generator circuit)”.
Fiske in view of Newton in view of Peatfield does not, but in related art, Xu teaches:
“the electronic circuit has one or more flip-flops and a light emitting diode (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop); the light emitting diode emits one or more photons to a photon detector (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop); the photon detector absorbs one or more photons (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop); and the photon detector is connected to one or more of the flip-flops (Xu, ¶ 35 teaches a laser diode emits light which is captured by photodetector and then latches a flip flop)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Fiske in view of Newton in view of Peatfield and Xu, to modify the information hiding system of Fiske in view of Newton in view of Peatfield to include the photodetector, flip flop and laser diode system of Xu. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Regarding claim 24, Fiske in view of Newton in view of Peatfield and Xu teaches:
“The machine-implemented method of 23 (Fiske in view of Newton in view of Peatfield and Xu teach the parent claims as discussed above) further comprising: wherein the one or more photons absorbed by the photon detector cause the state of one or more of the flip-flops to change (Xu, ¶ 57-58, and 68 teaches the voltage changing on the photodetector which is passed along to the flip flop latch changing its state)”.
Regarding claim 25, Fiske in view of Newton in view of Peatfield and Xu teaches:
“The machine-implemented method of 23 (Fiske in view of Newton in view of Peatfield and Xu teach the parent claims as discussed above) further comprising: wherein the one or more photons absorbed by the photon detector cause the voltage of one or more of the flip-flops to change (Xu, ¶ 57-58 teaches the voltage changing on the photodetector which is passed along to the flip flop latch)”.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiske in view of Newton in view of Peatfield view of Xu in view of Ito.
Regarding claim 26, Fiske in view of Newton in view of Peatfield and Xu teaches:
“The machine-implemented method of 24 (Fiske in view of Newton in view of Peatfield and Xu teach the parent claims as discussed above)”.
Fiske in view of Newton in view of Peatfield in view of Xu does not, but in related art, Ito teaches:
“some of the one or more flip-flops act as a counter (Ito, ¶ 43 teaches a photodetector connected to a T flip flops which are used as counters and given the nature of the light they receive would create randomized bit streams)”.
Before applicant’s earliest effective filing it would have been obvious to one of ordinary skill in the art, having the teachings of Fiske in view of Newton in view of Peatfield, Ito and Xu, to modify the information hiding system of Fiske in view of Newton in view of Peatfield in view of Xu to include the photodetector with a T flip flop counters system of Ito. The motivation to do constitutes applying a known technique to known devices and/or methods ready for improvement to yield predictable results.
Conclusion
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen T Gundry whose telephone number is (571) 270-0507. The examiner can normally be reached Monday-Friday 9AM-5PM (EST).
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, Joseph Hirl can be reached on (571) 272-3685. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435
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