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 .
Status of Claims
Claims 1-19, as originally filed 12/09/2024, are pending and have been examined on the merits (Claims 1, 8, and 16 being independent). The instant application is a CON of application number, 18/487,449 that is a CON of 17/014,943 (Patent No. US 11,854,005 B2) which were issued respectively on 10/30/2024 and 09/26/2023.
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 time wise 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 claims at issue 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); and 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 provision a I 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.lll(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 Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim Rejections - Double Patenting (Obviousness-type)
Claims 1-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,854,005 B2. With respect to independent claim 1 of the instant application, independent claim 1 of the instant application, and independent claim 1 of the '005 patent both recite substantially similar limitations for the method and system which (1) receive transaction data from a user through a user interface; (2) generate marker data to be associated with the transaction data, wherein the generated marker data comprises: a publicly visible marker definition portion that is searchable to allow the marker data to be retrieved within a block chain distributed ledger without revealing the transaction data; (3) a marker ID portion comprising non-searchable information that routes the marker data to the transaction data; (4) store the marker data along with the received data in the block chain distributed ledger such that the marker data and the received data cannot be altered once stored in the block chain distributed ledger, wherein the received data is stored secretly such that only authorized users may be able to view the received data in the block chain distributed ledger, while the marker definition portion of the marker data may be viewed publicly. The ‘005 patent is narrower in that claim 1 of ‘005 patent have limitations directed towards (1) access the block chain distributed ledger; receive transaction data from a user through the user interface; (2) generate marker data to be associated with the received data, wherein the generated marker data comprises: a marker definition portion comprising a publicly visible meta tag associated with the transaction data, wherein the meta tag is searchable to allow the marker data to be retrieved within the block chain distributed ledger without revealing the transaction data; (3) a marker ID portion comprising a unique alpha numeric file number assigned to the generated marker data, wherein the marker ID portion comprises non-searchable information that routes the marker data to the underlying transactional data, wherein the marker data provides a unique reference to the received data; (4) store the marker data along with the received data in the block chain distributed ledger such that the marker data and the received data cannot be altered once stored in the block chain distributed ledger; (5) wherein the received data is stored secretly such that only authorized users may be able to view the received data in the block chain distributed ledger, while the associated marker definition portion of the marker data may be viewed publicly; wherein the EDT-X engine is further configured to decode the marker data off of the block chain distributed ledger, and wherein the decoded marker data indicates what information in the anonymously stored in the data marker identification database belongs to a record being audited; wherein the publicly visible meta tag of the marker definition portion enables real-time visibility and the marker ID portion collectively enables monitoring of the transaction, without exposing the transaction data. That is, the claim under examination is anticipated by the reference claims of the ‘005 patent (i.e., the entire scope of the reference claim falls within the scope of the claim under examination). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the ‘005 patent and is covered by the ‘005 patent since the ‘005 patent and the instant application are claiming common subject matter.
With respect to independent claims 1, 8, and 16 of the instant application, claims 1, 8, and 16 recite substantially similar limitations to claims 1, 6, and 12 of the ‘005 patent, and therefore is rejected under the same rational.
With respect to the dependent claims, claims 2-7, 9-15 and 17-19 of the instant application recite substantially similar limitations to those found in claims 3-6, 8-12 and 15-17 of the ‘005 patent and are therefore anticipated.
No Prior Art Rejection
As shown in the art and the parent patent, while some individual features of claims 1-19 may be shown in the prior art of record, one of ordinary skill in the art would not be motivated to modify the teachings of the prior art to provide the method and system which perform the operations claimed in the independent claims.
The closest art of record, US Publication Number 2020/0226233 A1 to Penugonda et al., discloses “the digital marker may comprise an indication of the unique identifier of the user device. A distributed ledger record entry comprising an indication of the content asset and the unique identifier of the user device may be caused to be stored on a distributed ledger.
The closest art of record, WO 2019/186156 A1 to David Michael, discloses “marker information indicative of a marker to be searched for in one or more data fields contained in the stored transaction data is received from one of the one or more merchants, and the data management server searches for the marker in said one or more data fields, for each one of the plurality of transactions.”
The closest art of record, US Patent Number 11062042 B1 to Mckervey et al., discloses “authenticating a chunk of data identified in a query received by a data intake and query system. The data intake and query system receives a query that identifies a set of data and manner for processing the set of data, and identifies a chunk of data that is part of the set of data. The system generates a content identifier, such as a hash, of the chunk of data.”
Patent Eligibility- 35 USC § 101
The 101 Alice rejection is not applicable. The 101 rejection is not applicable because even though the claims recite an abstract idea, the limitations when considered in ordered combination are indicative of integration into a practical application because as a specific combination of steps, the claims are directed to a particular method and system involve processing transactions when viewed as a whole, they represent improvements that are technical in nature as improving upon conventional transactional infrastructures, making it efficiently, securely, and anonymously store information associated with each transaction.
These are meaningful limitations that are more than generally linking the use of the abstract idea to a particular technological environment or field of use and are indicative of a practical application, and, as an ordered combination, the claims are also not well-understood, routine or conventional.
For the reasons stated above, claims 8-19 have been deemed to be patent eligible under 35 U.S.C. 101.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter) because these claims are directed at merely software per se. In other words, within the broadest reasonable interpretation of the claims, there exists an interpretation where the claims are merely directed to software, absent of any hardware, which not a judicially recognized class of invention. This is because claim 1 and it’s children are directed to “an embedded Data Transaction Exchange (EDT-X) engine” that have interpretations which include merely software.
Conclusion
The prior art made of record but not relied upon herein but pertinent to Applicant’s disclosure is listed in the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONG S PARK whose telephone number is (571)272-8349. The examiner can normally be reached on M-F 9:00-5:00 PM, EST.
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/YONGSIK PARK/Examiner, Art Unit 3694 April 27, 2026
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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