DETAILED ACTION
This office action is in response to the correspondence filed on 12/23/2024. Claims 1-20 are pending and are examined.
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 .
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 12/23/2024, 01/05/2025, and 04/10/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 3, 8, 11, and 15-16 are objected to because of the following informalities:
Claims 1, 8, and 15, “QR” should be defined in each claim group before it is used.
Claims 1, 8, and 15, “URL” should be defined in each claim group before it is used.
Claims 3, 11, and 16, “PIN” should be defined in each claim group before it is used.
Appropriate correction is required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12174980 B2 (App. No. 17720773). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are anticipated by the patented claims. The claims in the instant application are essentially the same while adding additional details that is implied in the issued patent. The instant application has the basic elements of generating and embedding a QR code in a digital document; generating a shortened URL corresponding to the URL encoded in the QR code; and transmitting the shortened URL to a second user node detailed in both claims while the issued patent has the additional details about accumulating visits as seen in the example below in claim 1 of the instant application and claim 1 of the issued patent.
Instant Application
U.S. Patent No. 12174980 B2
1. A system for protecting access to digital documents, comprising:
a blockchain network;
a stamp generation node connected to the blockchain network, the stamp generation node comprising:
a processor; and
a memory storing instructions that, when executed by the processor, cause the processor to:
receive, from a first user node, a digital document and access parameters for the digital document;
generate a unique identifier for the digital document;
record the unique identifier and access parameters on the blockchain network;
generate a QR code encoding a URL for accessing the digital document;
embed the QR code in the digital document;
generate a shortened URL corresponding to the URL encoded in the QR code; and
transmit the shortened URL to a second user node; wherein the shortened URL, when accessed by the second user node, causes the stamp generation node to:
verify the access parameters recorded on the blockchain network; and
grant or deny access to the digital document based on the verification.
1. A system, comprising:
a processor of a stamp generation node connected to at least first user node and to a second user node over a blockchain network;
a memory on which are stored machine-readable instructions that when executed by the processor, cause the processor to:
receive a digital document from the first user node designated to the second user node; and
execute a smart contract to:
generate a Uniform Resource Locator (URL) referencing a Quick-Response (OR) code and a unique tiny URL represented by the QR code,
embed the QR code onto the document, wherein the document is accessible at the URL,
accumulate visits to the tiny URL by the second user node, and
provide the tiny URL to the second user node for accessing the protected digital document based on the accumulated visits.
Allowable Subject Matter
Claims 1-20 contain allowable subject matter but remain rejected under nonstatutory double patenting rejections.
The following is an examiner’s statement of reasons for allowance:
Carpentier et al. (US Pub No. 20200322429 A1), discloses content centric sharing of digital objects. While Carpentier discloses unique identifiers are generated for a page, unique URL for each of these pages is created in order to facilitate uploading and downloading of content by an original user or by other users; a QR code (which embeds a page URL), is created and displayed on a computing device in order to allow another device to access objects, it fails to disclose recording a unique identifier of a digital document and access parameters on a blockchain network; generating a shortened URL corresponding to a URL encoded in a QR code; and transmit the shortened URL to a second user node; wherein the shortened URL, when accessed by the second user node, verify the access parameters recorded on the blockchain network; and grant or deny access to the digital document based on the verification as described in the claims.
McCullough et al. (US Pub. No. 20230245137 A1) discloses blockchain methods for protecting brands, operators and consumers against counterfeiting. While McCullough discloses a unique ID comprising a signature concatenated to a unique URL is stored inside of a scannable code, such as QR code, it fails to disclose recording a unique identifier of a digital document and access parameters on a blockchain network; generating a shortened URL corresponding to a URL encoded in a QR code; and transmit the shortened URL to a second user node; wherein the shortened URL, when accessed by the second user node, verify the access parameters recorded on the blockchain network; and grant or deny access to the digital document based on the verification as described in the claims.
Pal et al. (NPL – “QR code based smart document implementation”) discloses smart document implementation using blockchain and digital signature. While Pal discloses a framework for A creation of a Smart Document with a use of a digital signature that is embedded in a Quick Response (QR) code for verification of the document; a hash of the document along with transactional details is stored in a blockchain that provides a shared, immutable, and transparent history of document without depending upon any third party, it fails to disclose recording a unique identifier of a digital document and access parameters on a blockchain network; generating a shortened URL corresponding to a URL encoded in a QR code; and transmit the shortened URL to a second user node; wherein the shortened URL, when accessed by the second user node, verify the access parameters recorded on the blockchain network; and grant or deny access to the digital document based on the verification as described in the claims.
Therefore, the pending claims are allowable as the prior art of record does not disclose all the combination of features as described in the claims; nor would it have been obvious to one of ordinary skill in the art to further modify the prior art to include all of the deficient features, as set forth in the allowable claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Venkataraman; Mohan et al. US-PGPUB US 20230075433 A1 Blockchain Based Document and Data Sharing
JARRY-LACOMBE; LUC et al. US-PGPUB US 20200099511 A1 Methods of document certification and publication with blockchain
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KA SHAN CHOY whose telephone number is (571) 272-1569. The examiner can normally be reached on MON - FRI: 9AM-5:30PM EST Alternate Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at (571) 270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KA SHAN CHOY/Primary Examiner, Art Unit 2435
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