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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim(s) 18-37 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim(s) 1-20 of prior U.S. Patent No. 12249408. This is a statutory double patenting rejection.
Despite differences in statutory categories, claims 18-37 recites the same invention as those of Patent claims 1-20.
Subject Matter Free of Prior Art
Claim(s) 18-37 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 for double patenting set forth in this Office action.
Based on the scope of any potential amendment, it is noted that the claims may be subject to a nonstatutory double patenting rejection, pending further search and material re-consideration of any amended subject matter.
The following is a statement of reasons for the subject matter free of prior art:
Claim(s) 18 distinguish(es) over the prior art for the following reasons.
The primary reason for the indication of subject matter free of prior art is the inclusion of the following limitations in the combination as recited in the abstract concept and not found in the closest available prior art of record:
in response to the detection of the offline network condition, causing the client logic device to prompt a user to create at the client logic device a user-generated passcode identifier for use during the offline network condition to limit or prevent unauthorized access to patient data stored in the client logic device, wherein the patient data is associated with a previously assigned medical record number;
receiving offline patient data from the user;
applying a de-identification function to the offline patient data to strip the patient data of any protected health information (PHI) other than the previously assigned medical record number;
encrypting and storing the offline patient data in a local database;
upon detecting reengagement with the client logic device after placing the client logic device in the sleep mode, causing the client logic device to present a prompt requesting entry of the user-generated passcode identifier;
upon detecting entry of an incorrect user-generated passcode identifier in response to the prompt requesting entry of the user-generated passcode identifier, denying access to the stored de-identified patient data;
upon detecting entry of the correct user-generated passcode identifier in response to the prompt requesting entry of the user-generated passcode identifier, providing access to the stored de-identified patient data.
The closest available prior art of record are as follows:
Douglass (20160147944) discloses authenticating the user’s login credentials to provide access to offline medical records (Figure 3 label 320); however, Douglass does not fairly disclose or suggest prompt[ing] a user to create at the client logic device a user-generated passcode identifier for use during the offline network condition to limit or prevent unauthorized access to patient data stored in the client logic device; applying a de-identification function to the offline patient data to strip the patient data of any protected health information (PHI) other than the previously assigned medical record number; encrypting and storing the offline patient data in a local database; and upon detecting entry of an incorrect user-generated passcode identifier in response to the prompt requesting entry of the user-generated passcode identifier, denying access to the stored de-identified patient data.
In particular, Douglass does not fairly disclose or suggest creating a user-generated passcode identifier when the user’s device is offline.
One Identity (What is Offline Password Reset option used for and how to set it up?, previously mailed on 08 November 2023 in parent application 16387401) discloses prompting the user to create a new password when the user recovers from losing Internet connection (page 4 slide 2, page 5 slide 1); however, One Identity does not fairly disclose or suggest prompt[ing] a user to create at the client logic device a user-generated passcode identifier for use during the offline network condition to limit or prevent unauthorized access to patient data stored in the client logic device; applying a de-identification function to the offline patient data to strip the patient data of any protected health information (PHI) other than the previously assigned medical record number; encrypting and storing the offline patient data in a local database; and upon detecting entry of an incorrect user-generated passcode identifier in response to the prompt requesting entry of the user-generated passcode identifier, denying access to the stored de-identified patient data.
In particular, One Identity does not fairly disclose or suggest creating a user-generated passcode identifier when the user’s device is offline.
Based on the evidence presented above, none of the closest available prior art of record fairly discloses or suggests the claimed invention. For this reason, claim 18 would be found to be subject matter free of prior art.
Claim(s) 19-24, 33: this/these claim(s) would also be found to be subject matter free of prior art for at least the same rationale as applied to parent claim 18 above, and incorporated herein.
Claim(s) 25-32, 34-37: this/these claim(s) would also be found to be subject matter free of prior art for substantially similar rationale as applied to claim(s) 18-24, 33 above, and incorporated herein.
Response to Arguments
In the Remarks filed on 31 December 2025, Applicant makes numerous arguments. Examiner will address these arguments in the order presented.
On page 10-12 Applicant argues that the statutory double patenting rejection is improper.
Specifically, on page 11 Applicant argues that some claims with different statutory categories of invention could be different inventions.
While Applicant’s arguments have been carefully considered, Examiner submits that if: a) instant pending claims 18-37, and b) Patent claims 1-20 of prior U.S. Patent No. 12249408 were presented in the same application, these two sets of claims would not be subject to restriction requirements because they are not patentably distinct from each other.
Based on the evidence presented above, Applicant’s arguments are not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Eteminan (20200244730) discloses maintaining functionality (e.g. managing a clinical trial) when the user is offline (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
Johns (9934393) discloses using an offline key (that could have been created under different conditions) to encrypt patient data (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/T.N.N./ Examiner, Art Unit 3685
/KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685