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 .
This Office Action is responsive to application 18/937,431 that the Applicant filed on November 5, 2024 and presented 20 claims. Original claims 1-20 remain pending in the application.
Election/Restrictions
Independent claims 1 and 8, and thus dependent claims 2-3 and 9, are allowable (assuming the minor § 112(b) rejection for claims 1 and 8 is overcome, which the Examiner views as a formality). The restriction requirement between Groups I, II, III, and IV, as set forth in the Office action mailed on March 13, 2026, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of March 13, 2026 is partially withdrawn. Previously withdrawn claims 4-7 are no longer withdrawn from consideration because the claims require all the limitations of the allowable independent claim 1. However, claims 11-20 remain withdrawn from consideration because they do not require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 1 is objected to because of the following informalities: the clause “verifying said order number with the plurality of servers” is followed by a period instead of a comma or semicolon. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “publisher” in claims 1 and 8, “subscriber” in claims 1, 6, and 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 and 8 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 2-3 and 9, which are the remaining dependent claims not withdrawn and open for examination, are similarly rejected under § 112(b) because they depend upon the rejected independent claims and fail to remedy the issue of indefiniteness.
Claim limitation “publisher” and “subscriber” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Within the disclosure, the specification states, “In some embodiments, publishers 412 and subscribers 414 are a subset of clients 310…,” see Specification at ¶ [0062], see also id. at ¶ [0097]. Because the publishers and subscribers need not be clients in other embodiments, it is unclear what structure within a system claim the recited publishers and subscribers may take. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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 following conventions apply to the mapping of the prior art to the claims:
Italicized text – claim language.
Parenthetical plain text – Examiner’s citation and explanation.
Citation without an explanation – an explanation has been previously provided for the respective limitation(s).
Quotation marks – language quoted from a prior art reference.
Underlining – language quoted from a claim.
Brackets – material altered from either a prior art reference or a claim, which includes the Examiner’s explanation that relates a claim limitation to the quoted material of a reference.
Braces – a limitation taught by another reference, but the limitation is presented with the mapping of the instant reference for context.
Numbered superscript – a first phrase to be moved upwards to the primary reference analysis.
Lettered superscript – a second phrase to be moved after the movement of the first phrase from which it was lifted, or more succinctly, move numbered material first, lettered material last.
A. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 2019/0044976, “Smith”) in view of Smith et al. (US 2019/0349426, “Smith II”).
Regarding Claim 10
Smith discloses
A method for…1 distributing publications (abstract, “Methods, apparatus, systems and articles of manufacture are disclosed to facilitate information [publication] exchange using publish-subscribe with blockchain.”), the method comprising the steps:
registering by a client from a plurality of clients with the system (¶ [0118], “Networks [system] of IoT devices [clients]…”),
said registration including sharing with the system an attribute and corresponding proof of validity of the attribute (¶ [0045], “In certain examples, a ‘registration’ message (also referred to as a SUBSCRIBE) includes additional context that describes how to securely connect back to the registrant and/or intended recipient(s) (e.g., at the time asynchronous messages are ready to be sent). The registrant/subscriber [client] supplies additional data such as: 1) a device identifier (ID) [attribute] associated with the recipient(s); 2) a credential trust anchor(s) [proof of validity] used by the recipient(s) to validate connection requests; and 3) an acknowledgement of the device ID a registrar/publisher is to use when attempting an asynchronous reply.”);
2 …;
sending by the server a response to the client, said response signaling the success of registration (¶ [0045], “In certain examples, a ‘registration’ message (also referred to as a SUBSCRIBE) includes additional context that describes how to securely connect back [respond] to the registrant [client] and/or intended recipient(s) (e.g., at the time asynchronous messages [that signal the success of registration] are ready to be sent).”); and
3 ….
Smith doesn’t disclose
1 …selectively…
2 receiving by a server from a plurality of servers from the client the attribute and subsequently verifying the attribute;
3 receiving by the client a threshold number of matching replies from the server.
Smith II, however, discloses
1 …selectively… (¶ [3111], “The method for implementing a publish subscribe content distribution model using bloom filters includes receiving a registration of a subscriber bloom filter including a hash code of a [selected] topic, calculating a content intercept of the subscriber bloom filter with a publisher bloom filter including a plurality of hash codes of topics, and [selectively] providing content to a subscriber for the hash code if the content intercept indicates a bit match between set bits in the subscriber bloom filter and set bits in the publisher bloom filter.”)
2 receiving by a {server (Smith ¶ [0045], “…3) an acknowledgement of the device ID a registrar/publisher… [server]”)} from a plurality of servers from the client the attribute and subsequently verifying the attribute (¶ [2755], “In example 874, joining the permissions guide includes providing [received by a server], from the device [client], attributes of the device to the permissions guide for an attribute filter to validate [verifies] that the attributes of the device is allowed in the first network.”);
3 receiving by the client a threshold number of matching replies from the server (¶ [1702], “In this approach, a subscriber [client] 24408 may construct a bloom filter containing overwritten hash codes for all [a threshold number] of the topics to which it wishes to subscribe. The subscriber 24408 may then register the bloom filter with the router fabric. A publisher [server] 24406 may also supply a bloom filter containing overlapping hash codes for all of the topics for which it can provide content [replies]. As an example, if there are multiple formatting methods corresponding to the same semantic topic, the bloom filter may match one or more satisfying [the threshold number] the routing requirements.”).
Regarding the combination of Smith and Smith II, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify pub/sub system of Smith to arrive at the claimed invention. KSR establishes that a rationale for obviousness is proven by showing a “use of [a] known technique to improve similar devices in the same way.” See MPEP § 2143(I)(C).
To substantiate the conclusion of obviousness under this KSR rationale, the Examiner finds pursuant to MPEP § 2143(I)(C):
1) the prior art contained a base system, namely the pub/sub system of smith, upon which the claimed invention can be seen as an “improvement” through the use of a topic registration feature;
2) the prior art contained a “comparable” system, namely the pub/sub system of Smith II, that has been improved in the same way as the claimed invention through the topic registration feature; and
3) one of ordinary skill in the art could have applied the known improvement technique of applying the topic registration feature to the base pub/sub system of Smith II, and the results would have been predictable to one of ordinary skill in the art.
Allowable Subject Matter
Claims 1-3 and 8-9 are allowed (assuming the § 112(b) rejection is overcome).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D'ARCY WINSTON STRAUB whose telephone number is (303)297-4405. The examiner can normally be reached Monday-Friday 9:00-5:00 Mountain Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, WILLIAM KORZUCH can be reached at (571)272-7589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D'Arcy Winston Straub/Primary Examiner, Art Unit 2491
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