DETAILED ACTION
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 .
Status of Claims
Claims 1-15 are pending in this application.
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.
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Claims 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,149,604. Although the claims at issue are not identical, they are not patentably distinct from each other (see table below).
Instant Application
U.S. Patent No. 12,149,604
Claim 1: A method for processing homomorphic ciphertexts, the method comprising: receiving an input of an instruction for sorting regarding a plurality of homomorphic ciphertexts; sorting the plurality of homomorphic ciphertexts by using a sorter which can sort 3 more homomorphic ciphertexts in a single stage; and outputting the sorting result, wherein the sorter performs sorting by using a comparison function that selectively outputs a bigger value or a smaller value between two input values.
Claim 1: A method for processing homomorphic ciphertexts, the method comprising: receiving an input of an instruction for sorting a plurality of homomorphic ciphertexts; sorting the ciphertexts by using a 5-way sorter which can sort five homomorphic ciphertexts in a single stage; and outputting the sorted homomorphic wherein the 5-way sorter is configured to: based on a first homomorphic ciphertext, a second homomorphic ciphertext, and a third homomorphic ciphertext being input, and using a comparison function between two input values, calculate a larger value and a smaller value between the first homomorphic ciphertext and the second homomorphic ciphertext, input the larger value and the third homomorphic ciphertext into the comparison function and output a first output value, input the smaller value and the third homomorphic ciphertext into the comparison function and output a third output value, and calculate a second output value by subtracting the first output value and the third output value from a summed-up value of the first to third homomorphic ciphertexts and output the second output value.
Although the conflicting claims are not identical, they are not patentably distinct from each other because both are directed to a method for processing homomorphic ciphertexts and is substantively-similar independent claims 8,15 said claims are merely a broader version of claim 1 of U.S. Patent No. 12,149,604 contains at least all of the limitations (or obvious equivalents) recited in claim 1 of the instant application.
With regard to claims of the 2-7,9-14, each depending from one of independent claims 1,8 and 15, said claims are rejected on the grounds of nonstatutory double patenting as being unpatentable over U.S. Patent No.12,149,604 in view the foregoing nonstatutory double patenting rejection of claim 1.
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 1-15 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.
Claims 1,8,15 recites the limitation “a sorter which can sort 3 more homomorphic ciphertexts in a single stage”. Claim is vague and lacks specificity. It is unclear what specific structure, function or algorithm constitutes a sorter which can sort 3 more homomorphic ciphertexts in a single stage.
Claims 1 recites the limitation "the sorting result". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-7,9-14, dependent on one of claims 1,8 or 15.
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/HOSUK SONG/ Primary Examiner, Art Unit 2435
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