DETAILED ACTION
The instant application having Application No. 18/901,614 filed on 09/30/2024 is presented for examination by the Examiner.
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 .
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 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in part the limitation “storing data, wherein the data contains personal information of one or more individuals and is subject to privacy requirements;” It is unclear if this data being stored will also be expunged like the encrypted data. Because if only the encrypted data is expunged but the data is still stored in plaintext form, then it defeats the purpose of the invention for satisfying both obligations-retaining private data necessary to satisfy audit and retention obligations while protecting the private data from privacy attack. Clarification is requested.
Independent claims 9, 17 and all dependent claims 2-8, 10-16 and 18-20 are rejected for the same rationale as claim 1 above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 9 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,507,687, and claims 1, 12 and 18 of Patent 12,135,817. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Instant Application is a broader version of claims 1, 12, and 18 in the Patents as exemplifies below.
Instant Application
Patent 11,507,687
Claim 1:
A method comprising:
storing data, wherein the data contains personal information of one or more individuals and is subject to privacy requirements;
encrypting the data to generate encrypted data, wherein only a secure enclave can decrypt the encrypted data using a first decryption key;
generating, by the secure enclave, a report based on the encrypted data and a first set of added noise, wherein the report is subject to audit requirements and satisfies a differential privacy guarantee;
storing the encrypted data for a first period of time; aggregating, after the first period of time and by the secure enclave, the encrypted data and a second set of added noise to generate a private synopsis that satisfies the differential privacy guarantee;
encrypting the private synopsis to generate an encrypted private synopsis, wherein only the secure enclave can decrypt the encrypted private synopsis using a second decryption key;
expunging the encrypted data; and
retaining the encrypted private synopsis for a second period of time.
Claim 1:
A method comprising:
receiving data, wherein the data comprises personal information of one or more individuals and is subject to privacy requirements;
encrypting the data to generate encrypted data, wherein only a secure enclave can decrypt the encrypted data;
storing the encrypted data in memory;
generating, by the secure enclave, a private synopsis, wherein the generating the private synopsis comprises:
adding, by the secure enclave, noise to the encrypted data; and
aggregating, by the secure enclave, the encrypted data and the noise to create a first summary of the data, wherein the private synopsis comprises the first summary of the data, the first summary of the data satisfies a differential privacy guarantee, and the differential privacy guarantee satisfies the privacy requirements;
generating a report from the private synopsis, wherein the report is subject to audit requirements and includes a second summary of the first summary and wherein the second summary is aggregated at a higher level than the first summary;
expunging the encrypted data; and
retaining, after expunging the encrypted data, the private synopsis, wherein the private synopsis, without the encrypted data, satisfies the audit requirements, wherein the audit requirements comprise an obligation to provide means for an independent auditor to verify a process used to generate the report, and wherein the obligation lasts for a defined length of time specified by the audit requirements.
Instant Application
Patent 12,135,817
Claim 1:
A method comprising:
storing data, wherein the data contains personal information of one or more individuals and is subject to privacy requirements;
encrypting the data to generate encrypted data, wherein only a secure enclave can decrypt the encrypted data using a first decryption key;
generating, by the secure enclave, a report based on the encrypted data and a first set of added noise, wherein the report is subject to audit requirements and satisfies a differential privacy guarantee;
storing the encrypted data for a first period of time; aggregating, after the first period of time and by the secure enclave, the encrypted data and a second set of added noise to generate a private synopsis that satisfies the differential privacy guarantee;
encrypting the private synopsis to generate an encrypted private synopsis, wherein only the secure enclave can decrypt the encrypted private synopsis using a second decryption key;
expunging the encrypted data; and
retaining the encrypted private synopsis for a second period of time.
Claim 1:
A method comprising:
receiving data, wherein the data comprises personal information of one or more individuals and is subject to privacy requirements;
loading code into a secure enclave, wherein the code includes aggregation code and noise code;
generating, by the secure enclave, an encryption key and a decryption key, wherein the decryption key is tied to the secure enclave and the code;
encrypting the data using the encryption key to generate encrypted data; decrypting, by the secure enclave, a copy of the encrypted data using the decryption key to generate decrypted data;
adding, by executing the noise code, noise to the decrypted data;
generating, by executing the aggregation code, a report based on the decrypted data and the noise, wherein the report aggregates the decrypted data, satisfies a differential privacy guarantee based on the privacy requirements, and is subject to audit requirements; and
retaining the encrypted data for a period of time based on the audit requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHY ANH TRAN VU whose telephone number is (571)270-7317. The examiner can normally be reached Monday-Friday 7 am-1 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Taghi T Arani can be reached at (571) 272-3787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHY ANH T VU/Primary Examiner, Art Unit 2438