DETAILED ACTION
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 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of USPN 12,166,888 (Appl. No: 18/661549). Although the claims at issue are not identical, they are not patentably distinct from each other. (see Claim-Comparison Table below for independent claim 1 of the instant application against Claim 1 of 12,166,888).
Claim
Application#18/932533
Claim
USPN # 12,166,888
1
A data encryption system, comprising: one or more processors communicatively coupled to a storage device, wherein the one or more processors execute instructions that are stored in the storage device to cause the data encryption system to:
receive a request for a delivery token, the request comprising an identifier of a distribution system;
determine the distribution system based on the identifier, wherein the distribution system is associated with a distributor key that decrypts corresponding delivery tokens;
identify an encryption key corresponding to the distribution system, wherein the encryption key encrypts delivery tokens for the distribution system corresponding to the distributor key; generate, using the encryption key, the delivery token comprising a delivery address; and transmit the delivery token to be decrypted by the distributor key.
1
A data encryption system, comprising: one or more processors communicatively coupled to a storage device, wherein the one or more processors execute instructions that are stored in the storage device to cause the data encryption system to:
receive, from an application associated with a provider system, a request for a single-use delivery token, the request comprising an address and an identifier of a distribution system of a plurality of distribution systems, wherein the single-use delivery token expires after a single use;
determine, based on the identifier, a distributor key of a plurality of distributor keys, wherein each distributor key of the plurality of distributor keys decrypts corresponding delivery tokens for each of the plurality of distribution systems; identify an encryption key of a plurality of encryption keys, the encryption key corresponding to the distributor key, wherein each encryption key of the plurality of encryption keys encrypts delivery tokens for a corresponding distribution system;
generate, using the encryption key, the single-use delivery token comprising the address; and
transmit the single-use delivery token to the application associated with the provider system.
Claims 2-20 of the instant application is equivalent in scope with claims 2-20 of USPN 12,166,888.
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.
As per claims 1, 9 and 17, the claims recite “receive a request for a delivery token”. It is unclear who made the request/who the request is received from. Is the request from a purchaser/sender of an item? Is the request from a merchant/merchant site? Is the request from a distributor? Or is the request from some other entity?
Dependent claims 2-8, 10-16 and 18-20 depend on independent claims 1, 9 and 17 and they do not further clarify the issues therefore they are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
As per claims 1, 9 and 17, the claims recite “transmit the delivery token to be decrypted by the distributor key”. It is unclear where/to whom the delivery token is transmitted. Is the delivery token transmitted to the distributor? Is the delivery token transmitted to the requestor of the limitation “receive a request”? Or is the delivery token transmitted to some other entity?
Dependent claims 2-8, 10-16 and 18-20 depend on independent claims 1, 9 and 17 and they do not further clarify the issues therefore they are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Allowable Subject Matter
Claims 1-20 would be allowable if a terminal disclaimer is timely filed, and if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The closest prior art made of record are:
Kobayashi et al. US 2004/0167826 teaches anonymous electronic funds transfer and anonymous shipping. A shopping mall server in an anonymous electronic funds transfer system receive information about a product selected at a client terminal, a storage unit operable to store a monetary amount of a product provided on an online shopping website, and to store a purchase identifier that identifies a purchase of the product selected at the client terminal, a computing unit operable to calculate a payment sum for the product selected at the client terminal based on the monetary amount of the product stored in the storage unit, and, a transmission unit operable to, in response to designation of a credit company, send instructions to connect to a website of the designated credit company to the client terminal, the instructions including the purchase identifier and the payment sum, wherein the purchase identifier comprises a product name formed by encrypting a name of the product selected at the client terminal with a public key that is unique to the online shopping website.
Bayat US 2022/0198036 teaches facilitating gift purchases by a buyer on an e-commerce platform when the buyer does not know a recipient's destination address without revealing the recipient's destination address to the buyer. A computer receives information for a recipient of an online order associated with a merchant for delivery to the recipient. The computer queries a database using the recipient information to obtain the recipient's destination address. The computer generates a token corresponding to the destination address, where the token includes an obfuscated representation of the destination address. The computer transmits the token to a client device for submission of the online order for delivery to the recipient, where the token is adapted to satisfy a requirement to provide the destination address for the online order. When the computer receives the token from a merchant device, the computer presents the destination address to the merchant device.
Chen et al. US 2017/0083802 teaches managing privacy of information on a shipping label associated with a shipment. Receiving information associated with the shipment, generating at least two decryption keys associated with at least two pieces of information from the information, generating encrypted messages by encrypting the at least two pieces of information based on the at least two decryption keys including a first and second encrypted message encrypted based on a first and second decryption key, respectively, generating a machine-readable code including the encrypted messages, generating a shipping label including machine-readable code, and providing the first and second decryption keys based on a first and second status of the shipment, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY TSANG whose telephone number is (571)270-7959. The examiner can normally be reached M-F 9am - 5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached at (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY TSANG/Primary Examiner, Art Unit 2495
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