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 .
The following is a Non-Final Office Action in response to communications received on November 11, 2024 and December 13, 2024. Claims 21-40 are pending and addressed below.
Specification
For the record, Examiner acknowledges that the Specification submitted on November 11, 2024 has been accepted.
Drawings
For the record, Examiner acknowledges that the Drawings submitted on November 11, 2024 have been accepted.
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 35-40 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 35 recites the limitation “the digital file.” There is insufficient antecedent basis for this limitation. Dependent claims 36-40 are rejected for containing the same indefinite language as parent claim 35 without further remedying the indefinite language.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,159,321. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claims 21-40 are taught by claims 1-20 of U.S. Patent No. 11,159,321.
Allowable Subject Matter
Claims 21-34 would be allowable if rewritten or amended to overcome the rejection(s) under nonstatutory double patenting set forth in this Office action.
Claims 35-40 would be allowable 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, and nonstatutory double patenting set forth in this Office action.
Claim 35 recites, inter alia, “generate a data structure that includes a cryptographic signature associated with the person, the data structure including an attestation of the identity of the person; cryptographically sign the digital item using the data structure”.
The closest prior art made of record are:
Raduchel (U.S. Pub. No. 2015/0026478) which discloses verifying a user identity and storing a signature and a document of the verified user (paragraphs [0057]-[0061])
Beaudoin et al. (U.S. Patent No. 10,873,457) which discloses storing a copy of a document in a blockchain (col. 2 line 31 – col. 3 line 7 and col. 9 line 55 – col. 10 line 2)
Jacobs (U.S. Patent No. 8,769,290) which discloses generally creating a signature using a data structure (col. 3 lines 45-53)
While the prior art does generally disclose identity attestation stored in a blockchain, the prior art was not found to disclose the cited limitations of the claims. Therefore, claim 35 is considered to recite allowable subject matter over the prior art. Claim(s) 21 and 28 is/are considered to recite allowable subject matter over the prior art for similar reasons to claim 35. Dependent claims 22-27, 29-34 and 36-40 are considered to recite allowable subject matter over the prior art based on their dependency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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/THADDEUS J PLECHA/Examiner, Art Unit 2438