DETAILED ACTION
The instant application having Application No. 18/898184 filed on September 26, 2024 is presented for examination by the examiner. Preliminary amendments were submitted on October 22, 2024 to cancel claims 1-20 and submit new claims 21-40.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 .
Internet Communications
Applicant is encouraged to submit a written authorization for Internet communications (PTO/SB/439, found at http:/www.uspto.gov/sites/default/files/documents/sb0439.pdf) in the instant patent application to authorize the examiner to communicate with the applicant via email. The authorization will allow the examiner to better practice compact prosecution. The written authorization can be submitted via one of the following methods only: (1) Central Fax, which can be found in the Conclusion section of this Office action; (2) regular postal mail; (3) EFS WEB; or (4) the service window on the Alexandria campus. EFS web is the recommended way to submit the form since this allows the form to be entered into the file wrapper within the same day (system dependent). Written authorization submitted via other methods, such as direct fax to the examiner or email, will not be accepted. See MPEP § 502.03.
Applicant is also encouraged to contact the Examiner for an Interview, should the Applicant determine that clarifying and further illustrating the distinguishing features of the instant application may further the prosecution.
Oath/Declaration
The applicant’s oath/declaration has been reviewed by the examiner and is found to conform to the requirements prescribed in 37 C.F.R. 1.63.
Information Disclosure Statement
As required by M.P.E.P. 609(C), the applicant’s submission of the Information Disclosure Statement is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. As required by M.P.E.P. 609(C), a copy of the PTOL-1449 initialed and dated by the examiner is attached to the instant office action.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
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 §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12105848. Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn towards deidentifying user data where the Instant Application claims are a broader version of the claims of U.S. Patent No. 12105848.
Claims 21-40 (and more specifically claims 24-25 and 33-34) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/805375 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn towards deidentifying user data or more specifically to deidentifying user email data as shown in claims 24-25 and 33-34 of the Instant Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 21 and 32 recite “receiving data”; however, a data was previously defined in the preamble. Therefore, it is unclear if the received data is the same or different than the data that is defined in the preamble.
Dependent claims 22-31 and 33-40 are rejected for the same reasons as cited above and for being dependent on a previously rejected base claim.
Claims 30 and 39 recite “a user”; however, a user was previously defined in independent claims 21 and 32. Therefore, it is unclear if this user is the same or different than the user that is defined in the independent claims.
The examiner has cited particular examples of 35 U.S.C. 112 rejections above. It is respectfully requested that, in preparing responses, the applicant check the claims for further 35 U.S.C. 112 rejections in the event that it was inadvertently missed by the examiner to advance prosecution.
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.
Claims 21 and 32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 21 and 32 recite receiving data, timestamping the received data, generating insight data, generating a hashed version of the identifier, discarding data, and retaining data.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, is an abstract idea drawn to performing mathematical calculations but for the recitation of generic computer components. That is, other than reciting generic computer functions being performed by a computing system, nothing in the claim element precludes the steps from merely being the performance of mathematical calculations. For example, generating insight data and generating a hashed version of the identifier in the context of the claims encompasses the performance of mathematical calculations. If a claim limitation, under its broadest reasonable interpretation, covers performing the abstract idea of mathematical calculations but for the recitation of generic computer components, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims only recite one additional element – using a computer (claim 21) or computing system (claim 32) to perform the steps. The computer and computing system is recited at a high-level of generality (i.e., as a generic computer performing a generic computer function of receiving data, discarding/deleting data, and retaining/storing data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claims do 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 element of using a computer (claim 21) or computing system (claim 32) to perform the 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. The claim is not patent eligible.
Dependent claims 22-30 and 33-39 are also rejected for the same reason as cited above for not reciting any additional elements that amount to significantly more than the judicial exception. The Examiner would suggest to incorporate the limitations of claims 31 and 40 into the independent claims to show the use of the invention by having a request for deidentified data and providing the deidentified data based on the request to overcome the 35 USC 101 Rejection.
Allowable Subject Matter
Claims 21 and 32 are objected to as being allowable, but would be allowable if the Double Patenting, 35 USC 112 Rejections, and 35 USC 101 Rejections are overcome. The following is an examiner’s statement of reasons for allowance: The primary reason for the allowance of the claims is the inclusion of the limitation, inter alia, “receiving data associated with a user, the data comprising a protected portion and a non-protected portion, wherein the protected portion comprises an identifier that is subject to a data privacy standard; timestamping the received data based on a time of receipt; generating insight data based on the identifier; generating a selectively hashed version of the identifier by: determining a type associated with the identifier, determining a hash function based on the determined type, and applying the hash function to at least a portion of the identifier; discarding, based on the timestamp, the protected portion of the received data; and retaining the insight data and the selectively hashed version of the identifier as deidentified data".
The following is considered to be the closest prior art of record:
Schmeyer (US 2009/0063351) – teaches hashing a user identifier.
Lyman (US 2024/0161035) – teaches performing a hash function corresponding to an identifier type on the identifier as well as identifying identifiers and the type of identifiers from an image.
Eisenberger (US 2006/0155578) – teaches de-identifying patient information such as patient name and social security number in order to publish patient data while providing HIPAA privacy compliant data. Eisenberger also teaches converting local data into a standardized format, but does not specifically teach converting an identifier into a standardized format.
Austin (US 2016/0275309) – teaches converting user health data into a standardized format and then user specific data is removed or de-identified and transformed into a personal identifier hash value. Austin, paragraph 38, specifically teaches converting the date into a standardized format. However, Austin does not specifically teach converting a user identifier into a standardized format.
Sriharsha (US 2021/0117868) – teaches discarding data after a threshold period of time has passed.
Wu (US 2023/0078496) – teaches deleting data when an elapsed time period after a timestamp is greater than a threshold.
LePendu (US 2017/0091391) – teaches de-identification to remove a user’s name, email, phone number, address, social security number, etc… according to HIPAA standards.
Chandrasekaran (US 11366927) – teaches standardizing user information, such as the user’s address, prior to performing the de-identification. Chandrasekaran retains the same city and zip code in order to keep a general geographic area associated with the user data. Chandrasekaran also teaches that the zip code can be changed to a new zip code where the new zip code is selected to have the same resident average income as the original zip code to keep a general income associated with the user data as income and access to healthy food options can be used to diagnose the patient. Therefore, this “insight data” can be determined before and after the de-identification. Additionally, Chandrasekaran does not specifically teach performing the de-identification by selectively hashing the user information. Combining Chandrasekaran with a de-identification by hashing reference (such as Lyman) would result in hashing the user information which would no longer “retain” any insights. Furthermore, Chandrasekaran does not teach timestamping the received data or discarding the protected data based on the timestamp.
Papel (US 2023/0148326) – teaches standardizing user information and performing a de-identification of the user information based on HIPAA standards. Papel also teaches using a hash function to generate a token identifier for a user to allow for the ability to link documents. Papel further teaches deleting the protected data after a period of time and also that certain insights can be gleaned from the data before and after the de-identification. However, Papel does not specifically teach performing the de-identification by selectively hashing the user information. Similar to Chandrasekaran above, combining a de-identification by hashing reference (such as Lyman) would result in hashing the user information which would no longer “retain” any insights.
Lynch (US 2020/0382916) – teaches deleting a message that has been stored for more than a threshold period of time.
Ganesh (US 2016/0055300) – teaches standardizing data, such as names and gender identifiers, coming from different data stores into a standard format.
Matlick (US 2022/0188699) – teaches storing intent data that provides insights into user data. However, it does not specifically teach retaining the insight data after de-identification.
However, the concept of de-identifying protected user data by selectively hashing the protected data while still retaining insight data as claimed cannot be found in the prior art of record.
Claims 22-31 and 33-40 are objected to for the same reasons as cited above and for being dependent on a previously objected to base claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN B KING whose telephone number is (571)270-7310. The examiner can normally be reached on Monday-Friday 10AM-6PM 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, Yin-Chen Shaw can be reached on 5712728878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/John B King/
Primary Examiner, Art Unit 2498