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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 2-6, 8, 11-15, 17, 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Privacy-preserving record linkage in large databases using secure multiparty computation by Laud et al. hereafter Laud.
2. Laud discloses a computer-implemented method comprising:
receiving, from a client device and by a computing system, a digital component request comprising data identifying one or more user groups that include a user of the client device as a member (page 36, algorithm 1, picks the necessary attributes from each record, applies H to them, and uploads the hashes to Sharemind servers in secretshared manner. The Sharemind API readily supports that. At this point, no server learns the exact values of the hashes, since they are all secret-shared. In the end, when the servers have finished the computation, the client queries them for its personal result; send hi to the servers [the computing system receives the value, the value is a request to ensure no duplicates for that value]; see further page 37, upload; [digital component being defined by applicant’s specification paragraph 28 as a discrete unit of digital content or digital information (e.g., a video clip, audio clip, multimedia clip, image, text, or another unit of content]);
for each candidate digital component of a plurality of candidate digital components,
obtaining first vector data representing a contextual-based vector of values for the candidate digital component (page 37, Upload, hashes of clients are stored into an private array [[v]], and the corresponding client identities into a public array s under the same indices.), and
obtaining second vector data representing a user group-based vector of values for the candidate digital component (page 37, Upload, hashes of clients are stored into an private array [[v]], and the corresponding client identities into a public array s under the same indices.; alternatively, algorithm 4, computing encryptions of hashes can also be considered the second vector);
generating, by the computing system, a selection result that identifies, from the plurality of candidate digital components, a given digital component selected from the plurality of candidate digital components based at least on the first vector data and the second vector data for each candidate digital component of the plurality of candidate digital components (pages 37-38, computation of results, the servers could already mark the duplicates with boolean values 1 and the remaining values with 0. After the obtained vector is privately shuffled back, the servers can return the secret shared bits to the clients, so that the i-th clients learns the bits indicating the duplicity of its own records [Boolean values are selection results indicating matches]); and
transmitting, by the computing system and to the client device, the selection result identifying the given digital component (pages 37-38, computation of results, the servers can return the secret shared bits to the clients).
3. Laud discloses the computer-implemented method of claim 2, wherein the contextual-based vector of values for each candidate digital component comprises respective values for a plurality of contextual features (page 36, the first solution: output all results at once in the end, uploaded the hashes of their records).
4. Laud discloses the computer-implemented method of claim 2, wherein the user group-based vector of values for each candidate digital component comprises values selected based at least in part on a respective user group corresponding to the candidate digital component (page 37, Upload, client identities into a public array s).
5. Laud discloses the computer-implemented method of claim 2, wherein generating, by the computing system, the selection result that identifies, from the plurality of candidate digital components, the given digital component selected from the plurality of candidate digital components based at least on the first vector data and the second vector data for each candidate digital component of the plurality of candidate digital components comprises executing a secure multi-party computation (MPC) protocol with one or more additional computing systems (page 35, see figure 1 and corresponding text).
6. Laud discloses the computer-implemented method of claim 5, wherein: the first vector data for each candidate digital component comprises a first secret share of data representing the contextual-based vector of values for the candidate digital component (page 36, first column, hashes of the records); and the second vector data for each candidate digital component comprises a first secret share of data representing the contextual-based vector of values for the candidate digital component (page 37, algorithm 4).
8. Laud discloses the computer-implemented method of claim 2, wherein generating, by the computing system, the selection result that identifies, from the plurality of candidate digital components, the given digital component selected from the plurality of candidate digital components based at least on the first vector data and the second vector data for each candidate digital component of the plurality of candidate digital components comprises: determining, by the computing system, a selection value for each candidate digital component based on the first vector data and the second vector data for the candidate digital component; and selecting the given digital component based on the selection value for each candidate digital component (algorithms 3-5).
Claims 11-15, 17, 20-21 are similar in scope to claims 2-6, 8 and are rejected under similar rationale.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,192,340. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are anticipated by the claims of U.S. Patent No. 12,192,340.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R TURCHEN whose telephone number is (571)270-1378. The examiner can normally be reached Monday-Friday: 7-3.
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/JAMES R TURCHEN/Primary Examiner, Art Unit 2439
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