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 .
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, 4-8, 11-15, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,757,640. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘640 patent include all the limitations of the instant claims.
Instant Application
U.S. Patent No. 11,757,640
obtain a cryptographic challenge and a token address from a client device, the cryptographic challenge being signed with a private key associated with the client device; (Claim 1)
receive a cryptographic challenge from a content provider in response to sending an access request to the content provider to access content that requires authentication; sign the cryptographic challenge with the private key; (Claim 3)
receive a token address from the token issuer system... (Claim 1)
identify token data associated with a non-fungible token stored in a distributed ledger based at least in part the token address, the token data comprising a public key; (Claim 1)
the token address corresponding to a location of the non-fungible token on a distributed ledger. (Claim 1)
transmit the public key and the one or more identity credentials to the token issuer system; (Claim 1)
determine that the public key is associated with the private key used to sign the cryptographic challenge; (Claim 1)
generate a key-pair comprising a private key and a public key; (Claim 1)
sign the cryptographic challenge with the private key; (Claim 3)
and authenticate a user in response to determining that the private key is associated with the public key. (Claim 1)
receive access to the content in response to the content provider authenticating the user account based at least in part on the cryptographic challenge and the non-fungible token associated with the token address. (Claim 3)
Claims 2-3, 9-10, 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,757,640, in view of in view of Hamel, U.S. Patent No. 11,539,533 (“Hamel 2”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘640 patent include all the limitations of the instant claims except the verification of a token issuer against a list of approved token issues.
Hamel 2 discloses checking the credential issuers against a list of trusted issuers such that if the credential issuer exists in the list of trusted issuers, a given transaction should proceed (Col. 4, lines 11-48: transaction should proceed when the credential issuer exists in the list of trusted issuers shows to those having ordinary skill in the art that the transaction should not proceed when the credential issuer does not exist in the list of trusted issuers), which meets the limitation of the machine-readable instructions further cause the computing device to at least verify that a token issuer associated a creation of the non-fungible token is included in a list of approved token issuers, authentication of the user being denied in response to the token issuer failing to be included in a list of approved token issuers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the claims of the ‘640 patent to have included limitations that require checking token issuers against a list of trusted issuers in order to provide a means of vetting the credential issuers as suggested by Hamel 2 (Col. 4, lines 11-48).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 7, 8, 14, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hamel, U.S. Publication No. 2019/0319940, in view of Rehm, U.S. Patent No. 11,494,799. Referring to claim 1, Hamel discloses a DCIAMS that includes a processor (Figure 1C, element 1C04) and a memory (Figure 1C, element 1C26) that includes executing application data (Figure 1C, element 1C28), which meets the limitation of a computing device comprising a processor and a memory, and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to. The DCIAMS receives a proof response from an authentication device that includes a signature generated using the identity private key of the DID holder ([0225]: authentication device reads on the claimed client device) that includes a DID ([0227]: DID reads on the claimed token address), which meets the limitation of obtain a cryptographic challenge and a token address from a client device, the cryptographic challenge being signed with a private key associated with the client device. The DID keypair is registered as a DID document in a distributed ledger, and in association with a badge credential ([0223]), such that the DID document is retrieved from the distributed ledger using the target DID and comparing the public key from the DID document with the public key of the badge credential ([0227]), which meets the limitation of identify token data [associated with a non-fungible token] stored in a distributed ledger based at least in part the token address, the token data comprising a public key. If the public key from the decentralized ledger matches a DID in the badge credential, the badge credential is satisfactory to unlock a lock ([0227]: satisfactory credential would be considered a user authentication; public key would be considered to be associated with the private key used to sign to the extent that the public key from the DID document is stored with the private key from the DID document used to sign the proof response [0225]), which meets the limitation of determine that the public key is associated with the private key used to sign the cryptographic challenge, and authenticate a user in response to determining that the private key is associated with the public key.
Hamel does not specify that the badge credential is implemented as an NFT. Rehm discloses badge credentials that can be implemented as NFTs (Col. 6, line 61 – Col. 7, line 18), which meets the limitation of token data associated with a non-fungible token. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the badge credentials of Hamel to have been implemented as an NFT because Rehm discloses that NFTs are one of a finite number of possible implementations for badge credentials that could have been utilized by one of ordinary skill in the art with a reasonable expectation of success (Rehm: Col. 6, lines 61 – Col. 7, line 18).
Referring to claim 7, Hamel discloses that the authentication device provides a request to unlock to the lock system associated with the lock ([0225]) allowing entry to a building ([0215]: access to the building shows that the lock system is providing access to a restricted location), which meets the limitation of obtain an access request to access to a restricted location from the client device, access to the restricted location requiring user authentication. If the public key from the decentralized ledger matches a DID in the badge credential, the badge credential is satisfactory to unlock a lock ([0227]: satisfactory credential would be considered a user authentication) allowing entry to the building ([0215]), which meets the limitation of grant access to the restricted location in response to authenticating the user.
Referring to claim 8, Hamel discloses a DCIAMS that receives a proof response from an authentication device that includes a signature generated using the identity private key of the DID holder ([0225]: authentication device reads on the claimed client device) that includes a DID ([0227]: DID reads on the claimed token address), which meets the limitation of obtaining a cryptographic challenge and a token address from a client device, the cryptographic challenge being signed with a private key associated with the client device. The DID keypair is registered as a DID document in a distributed ledger, and in association with a badge credential ([0223]), such that the DID document is retrieved from the distributed ledger using the target DID and comparing the public key from the DID document with the public key of the badge credential ([0227]), which meets the limitation of identifying token data [associated with a non-fungible token] stored in a distributed ledger based at least in part the token address, the token data comprising a public key. If the public key from the decentralized ledger matches a DID in the badge credential, the badge credential is satisfactory to unlock a lock ([0227]: satisfactory credential would be considered a user authentication; public key would be considered to be associated with the private key used to sign to the extent that the public key from the DID document is stored with the private key from the DID document used to sign the proof response [0225]), which meets the limitation of determining that the public key is associated with the private key used to sign the cryptographic challenge, and authenticating a user in response to determining that the private key is associated with the public key.
Hamel does not specify that the badge credential is implemented as an NFT. Rehm discloses badge credentials that can be implemented as NFTs (Col. 6, line 61 – Col. 7, line 18), which meets the limitation of token data associated with a non-fungible token. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the badge credentials of Hamel to have been implemented as an NFT because Rehm discloses that NFTs are one of a finite number of possible implementations for badge credentials that could have been utilized by one of ordinary skill in the art with a reasonable expectation of success (Rehm: Col. 6, lines 61 – Col. 7, line 18).
Referring to claim 14, Hamel discloses that the authentication device provides a request to unlock to the lock system associated with the lock ([0225]) allowing entry to a building ([0215]: access to the building shows that the lock system is providing access to a restricted location), which meets the limitation of obtaining an access request to access to a restricted location from the client device, access to the restricted location requiring user authentication. If the public key from the decentralized ledger matches a DID in the badge credential, the badge credential is satisfactory to unlock a lock ([0227]: satisfactory credential would be considered a user authentication) allowing entry to the building ([0215]), which meets the limitation of granting access to the restricted location in response to authenticating the user.
Referring to claim 15, Hamel discloses a DCIAMS that receives a proof response from an authentication device that includes a signature generated using the identity private key of the DID holder ([0225]: authentication device reads on the claimed client device) that includes a DID ([0227]: DID reads on the claimed token address), which meets the limitation of obtain a cryptographic challenge and a token address from a client device, the cryptographic challenge being signed with a private key associated with the client device. The DID keypair is registered as a DID document in a distributed ledger, and in association with a badge credential ([0223]), such that the DID document is retrieved from the distributed ledger using the target DID and comparing the public key from the DID document with the public key of the badge credential ([0227]), which meets the limitation of identify token data [associated with a non-fungible token] stored in a distributed ledger based at least in part the token address, the token data comprising a public key. If the public key from the decentralized ledger matches a DID in the badge credential, the badge credential is satisfactory to unlock a lock ([0227]: satisfactory credential would be considered a user authentication; public key would be considered to be associated with the private key used to sign to the extent that the public key from the DID document is stored with the private key from the DID document used to sign the proof response [0225]), which meets the limitation of determine that the public key is associated with the private key used to sign the cryptographic challenge, and authenticate a user in response to determining that the private key is associated with the public key.
Hamel does not specify that the badge credential is implemented as an NFT. Rehm discloses badge credentials that can be implemented as NFTs (Col. 6, line 61 – Col. 7, line 18), which meets the limitation of token data associated with a non-fungible token. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the badge credentials of Hamel to have been implemented as an NFT because Rehm discloses that NFTs are one of a finite number of possible implementations for badge credentials that could have been utilized by one of ordinary skill in the art with a reasonable expectation of success (Rehm: Col. 6, lines 61 – Col. 7, line 18).
Claims 2, 3, 9, 10, 16, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hamel, U.S. Publication No. 2019/0319940, in view of Rehm, U.S. Patent No. 11,494,799, and further in view of Hamel, U.S. Patent No. 11,539,533 (“Hamel 2”). Referring to claim 2, Hamel discloses that the badge credential is issued by an issuer ([0223]). Hamel does not specify that the checking the badge credential issuer against a list of approved issues.
Hamel 2 discloses checking the credential issuers against a list of trusted issuers such that if the credential issuer exists in the list of trusted issuers, a given transaction should proceed (Col. 4, lines 11-48: transaction should proceed when the credential issuer exists in the list of trusted issuers shows to those having ordinary skill in the art that the transaction should not proceed when the credential issuer does not exist in the list of trusted issuers), which meets the limitation of the machine-readable instructions further cause the computing device to at least verify that a token issuer associated a creation of the non-fungible token is included in a list of approved token issuers, authentication of the user being denied in response to the token issuer failing to be included in a list of approved token issuers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the badge credential issuer of Hamel to have been checked against a list of trusted issuers in order to provide a means of vetting the credential issuers as suggested by Hamel 2 (Col. 4, lines 11-48).
Referring to claim 3, Hamel discloses that the DID document is retrieved from the distributed ledger using the target DID and comparing the public key from the DID document with the public key of the badge credential ([0227]) that was created by an issuer ([0223]), which meets the limitation of wherein the token address is associated with the token issuer.
Referring to claim 9, Hamel discloses that the badge credential is issued by an issuer ([0223]). Hamel does not specify that the checking the badge credential issuer against a list of approved issues.
Hamel 2 discloses checking the credential issuers against a list of trusted issuers such that if the credential issuer exists in the list of trusted issuers, a given transaction should proceed (Col. 4, lines 11-48: transaction should proceed when the credential issuer exists in the list of trusted issuers shows to those having ordinary skill in the art that the transaction should not proceed when the credential issuer does not exist in the list of trusted issuers), which meets the limitation of verifying that a token issuer associated a creation of the non-fungible token is included in a list of approved token issuers, authentication of the user being denied in response to the token issuer failing to be included in a list of approved token issuers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the badge credential issuer of Hamel to have been checked against a list of trusted issuers in order to provide a means of vetting the credential issuers as suggested by Hamel 2 (Col. 4, lines 11-48).
Referring to claim 10, Hamel discloses that the DID document is retrieved from the distributed ledger using the target DID and comparing the public key from the DID document with the public key of the badge credential ([0227]) that was created by an issuer ([0223]), which meets the limitation of wherein the token address is associated with the token issuer.
Referring to claim 16, Hamel discloses that the badge credential is issued by an issuer ([0223]). Hamel does not specify that the checking the badge credential issuer against a list of approved issues.
Hamel 2 discloses checking the credential issuers against a list of trusted issuers such that if the credential issuer exists in the list of trusted issuers, a given transaction should proceed (Col. 4, lines 11-48: transaction should proceed when the credential issuer exists in the list of trusted issuers shows to those having ordinary skill in the art that the transaction should not proceed when the credential issuer does not exist in the list of trusted issuers), which meets the limitation of the machine-readable instructions, when executed by the processor, further cause the computing device to at least verify that a token issuer associated a creation of the non-fungible token is included in a list of approved token issuers, authentication of the user being denied in response to the token issuer failing to be included in a list of approved token issuers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the badge credential issuer of Hamel to have been checked against a list of trusted issuers in order to provide a means of vetting the credential issuers as suggested by Hamel 2 (Col. 4, lines 11-48).
Referring to claim 17, Hamel discloses that the DID document is retrieved from the distributed ledger using the target DID and comparing the public key from the DID document with the public key of the badge credential ([0227]) that was created by an issuer ([0223]), which meets the limitation of wherein the token address is associated with the token issuer.
Claims 4, 11, 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hamel, U.S. Publication No. 2019/0319940, in view of Rehm, U.S. Patent No. 11,494,799, and further in view of Kim, U.S. Publication No. 2015/0113275. Referring to claim 4, Hamel discloses that the system can provide access to a requested database application, from an application system, if authorization is verified ([0216]: credential authentication is performed), which meets the limitation of obtain an access request to access content [from the client device], access to the content requiring user authentication, and grant access to the content in response to authenticating the user.
Hamel does not disclose that the application system is part of the authentication device. Kim discloses combining authentication servers with application servers ([0026]), which meets the limitation of from the client device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the application system of Hamel to have been combined with the authorization device to create a single device because Kim describes such a combination as one of a finite number of possible embodiments for application systems and authorization devices that could have been implemented by one of ordinary skill in the art with a reasonable expectation of success.
Referring to claim 11, Hamel discloses that the system can provide access to a requested database application, from an application system, if authorization is verified ([0216]: credential authentication is performed), which meets the limitation of obtaining an access request to access content [from the client device], access to the content requiring user authentication, and granting access to the content in response to authenticating the user.
Hamel does not disclose that the application system is part of the authentication device. Kim discloses combining authentication servers with application servers ([0026]), which meets the limitation of from the client device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the application system of Hamel to have been combined with the authorization device to create a single device because Kim describes such a combination as one of a finite number of possible embodiments for application systems and authorization devices that could have been implemented by one of ordinary skill in the art with a reasonable expectation of success.
Referring to claim 18, Hamel discloses that the system can provide access to a requested database application, from an application system, if authorization is verified ([0216]: credential authentication is performed), which meets the limitation of obtain an access request to access content [from the client device], access to the content requiring user authentication, and grant access to the content in response to authenticating the user.
Hamel does not disclose that the application system is part of the authentication device. Kim discloses combining authentication servers with application servers ([0026]), which meets the limitation of from the client device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the application system of Hamel to have been combined with the authorization device to create a single device because Kim describes such a combination as one of a finite number of possible embodiments for application systems and authorization devices that could have been implemented by one of ordinary skill in the art with a reasonable expectation of success.
Allowable Subject Matter
Claims 5-6, 12-13, 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Foster, U.S. Patent No. 11,308,487, discloses a transaction system that utilizes NFT and a blockchain network.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN E LANIER whose telephone number is (571)272-3805. The examiner can normally be reached M-Th: 5:30-4:00.
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, Alexander Lagor can be reached at 5712705143. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BENJAMIN E LANIER/ Primary Examiner, Art Unit 2437
Prosecution Insights