DETAILED ACTION
This office action is in response to the application filed on 01/02/2025. 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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/02/2025, 04/08/2025, 07/24/2025, 11/28/2025 and 03/17/2026 were filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Priority
Applicant’s benefit claim is hereby acknowledged of the U.S patent application No. 18/628,332, filed on 04/05/2024, which papers have been placed on record in the file.
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, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosures of the prior-filed parent application No. 18/203,630 and both prior-filed provisional applications No. 63/457,671 and No. 63/347,389, all fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
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.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of any patents granted on application No. 18/628,332.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both claiming a common subject matter, “issue a notification to an entity corresponding with one or more protection actions related to the entity identity passport.”.
Claim Rejections - 35 USC § 103
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 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was.
Claims 1-2, 4-10, 12-17 and 19-20are rejected under 35 U.S.C. 103 as being unpatentable over Soundararajan et al. (U.S Pub No. 2021/0,314,293 A1, referred to as Soundararajan), in view of Stein et al. (U.S Pub No. 2020/0,186,341 A1, referred to as Stein).
Regarding claims 1, 9 and 17, Soundararajan teaches:
A response system for improving protections across at least one entity, the response system comprising: one or more processing circuits comprising memory and at least one processor (Soundararajan: Fig. 4; ¶ 0083, Fig. 1; ¶ 0012; ¶ 0027- ¶ 0028, “In combination, DLTs and DID management systems enable any entity to create and manage their own identifiers on any number of distributed, independent roots of trust. Entities are identified by DIDs, and can authenticate using proofs (for example, digital signatures, privacy-preserving biometric protocols, and so on). DIDs point to DID documents”), configured to:
generate an identity passport for the at least one entity (Soundararajan: Fig. 1, Item 123; ¶ 0028, “in FIG. 1 the DID 104 can point to a specific DID document that corresponds to that peer (and its DID 104) from among the DID documents 123 (EN: identity passport), maintained by the Blockchain ledger sub-system 112. DID documents can contain a set of service endpoints for interacting with the entity that the DID identifies (that is, the DID subject)”);
attach or embed a plurality of proof of controls to the identity passport of the at least one entity, the plurality of proof of controls corresponding to one or more protection actions implemented by the at least one entity (Soundararajan: Fig. 1, Items 123, 124; ¶ 0028; ¶ 0049, “The Blockchain ledger sub-system 112 is configured to create, validate, and submit a specific type of data on the Blockchain IoT system 100, such as DID documents 123 verifiable claims 124. FIG. 1 illustrates the Blockchain ledger sub-system 112 as storing and managing verifiable claims 124 (or verifiable credentials) (EN: the plurality of proof of controls corresponding to one or more cybersecurity protection actions), allowing the sub-system 112 to control authentication”).
Soundararajan does not explicitly disclose, however Stein teaches:
analyze environmental data of at least one of the at least one entity corresponding with the identity passport (Stein: ¶ 0052, “As shown in FIG. 6, at this point, holder agent 150 can determine that one or more escrow identifiers are included on its escrow identifier list (e.g., an escrow identifier, such as escrow ID (A) and/or escrow ID (B)) and can determine that one or more of the escrow identifiers on its escrow identifier list have been posted to ledger 120 that holder agent 150 is monitoring. For example, holder agent 150 can determine that an escrow identifier has been posted to ledger 120”); and
issue a notification to at least one of the at least one entity corresponding with the one or more protection actions (Stein: ¶ 0053, “In response to these determinations, holder agent 150 can transmit an alert to holder 100 that verifier 110 is accessing data that is being held in escrow at ledger 120. For example, the alert can be presented on holder device 100 using any suitable approach (e.g., a push notification, a notification within the identity application, etc”).
It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Soundararajan by Stein and have a system to transmit an alert to an entity to notify the entity that a verifier is accessing sensitive information such as an escrow identifier. (Stein: ¶ 0052- ¶ 0053).
Regarding claim 17, Soundararajan further teaches:
A non-transitory computer readable medium (CRM) comprising one or more instructions stored thereon and executable by one or more processors (Fig. 4; ¶ 0083, Fig. 1; ¶ 0091- ¶ 0092).
Regarding claims 2 and 10, Soundararajan teaches all the features of claims 1 and 9, as outlined above.
Soundararajan further teaches:
validate the one or more protection actions of each of the at least one entity (¶ 0049 “Additionally, the Blockchain sub-system 112 is configured to perform the techniques used to validate, create, and deployed verifiable claim 124, as disclosed herein.”); and record the validation on the distributed ledger or data source as a new exchange linked to the identity passport (¶ 0049, “In particular, the verifiable claim 124 and information relating to the creation, validation, and deployment of the verifiable claim 124 may be stored as a block in a Blockchain of chronologically ordered, back-linked list of data blocks”).
Regarding claims 4 and 12, Soundararajan teaches all the features of claims 2 and 10, as outlined above.
Soundararajan further teaches:
wherein validating the one or more cybersecurity protections comprise comparing the one or more cybersecurity protection actions to a predefined set of security standards or benchmarks (¶ 0076, “the verifiable claim can be validated. At operation 311, a check is performed to determine whether the verifiable claim is valid. Operation 311 can include comparing the verifiable claim received from the peer entity in prior operation 308 with the verifiable claim obtained from the Blockchain at operation 310.”).
Regarding claims 5 and 13, Soundararajan teaches all the features of claims 1 and 9, as outlined above.
Soundararajan further teaches:
sign the plurality of proof of controls using a digital signature scheme before attaching the plurality of proof of controls to the identity passport (¶ 0028, “Entities are identified by DIDs, and can authenticate using proofs (for example, digital signatures, privacy-preserving biometric protocols, and so on). DIDs point to DID documents.”).
Regarding claims 6 and 14, Soundararajan teaches all the features of claims 1 and 9, as outlined above.
Soundararajan further teaches:
wherein generating the identity passport comprises using a public-private key pair unique to each entity of the at least one entity, the public key recorded on a distributed ledger and the private key remains confidential to the at least one entity (¶ 0024, “In accordance with some aspects of the present disclosure, the decentralized identity may include a public key, a private key, and an attribute corresponding to the Blockchain IoT device 102 issued by the Blockchain network 104 to the Blockchain IoT device 102.”, ¶ 0028, “This design eliminates dependence on centralized registries for identifiers as well as centralized certificate authorities for key management, which is the standard in hierarchical PKI (public key infrastructure). In cases where the DID registry is a distributed ledger 116, each entity can serve as its own root authority. This architecture is referred to as DPKI (decentralized PKI).”; ¶ 0050, “Because DID have an associated public-private key pair, a user having a DID should be able to digitally issue and sign verifiable claims and other documents. As long as the verifier has the DID of the issuer (which in most cases is contained in the credential itself), it is a simple matter to look up the issuer's public key on the Blockchain and verify the signature on the claims.”).
Regarding claims 7 and 15, Soundararajan teaches all the features of claims 1 and 9, as outlined above.
Soundararajan further teaches:
update the identity passport to comprise additional proof of controls based on successful validation of a newly implemented protection actions by the at least one entity (¶ 0028, “DID methods are the mechanism by which a DID and its associated DID document are created, read, updated, and deactivated on a specific distributed ledger or network.”; ¶ 0049 “Additionally, the Blockchain sub-system 112 is configured to perform the techniques used to validate, create, and deployed verifiable claim 124, as disclosed herein.”); and record the validation on the distributed ledger or data source as a new exchange linked to the decentralized identity passport (¶ 0049, “In particular, the verifiable claim 124 and information relating to the creation, validation, and deployment of the verifiable claim 124 may be stored as a block in a Blockchain of chronologically ordered, back-linked list of data blocks”).
Regarding claims 8 and 16, Soundararajan teaches all the features of claims 1 and 9, as outlined above.
Soundararajan further teaches:
wherein the environmental data monitored comprises at least one of network traffic, system performance metrics, software integrity, or security event logs corresponding with the plurality of computing systems (Fig. 1; Fig. 2A; ¶ 0003- ¶ 0004; ¶ 0013).
Regarding claim 19, Soundararajan teaches all the features of claim 17, as outlined above.
Soundararajan further teaches:
sign the plurality of proof of controls using a digital signature scheme before attaching the plurality of proof of controls to the identity passport; and wherein generating the identity passport comprises using a public-private key pair unique to each entity of the at least one entity, the public key recorded on a distributed ledger and the private key remains confidential to the at least one entity. (¶ 0024; ¶ 0028 and ¶ 0050). (EN: claim 19 is rejected and the same reasoning as the combinations of claims 5 and 6 since they recite similar limitations.).
Regarding claim 20, Soundararajan teaches all the features of claim 17, as outlined above.
Soundararajan further teaches:
wherein the one or more instructions stored thereon and executable by the one or more processors further to: update the identity passport to comprise additional proof of controls based on successful validation of a newly implemented protection actions by the at least one entity; and wherein the environmental data monitored comprises at least one of network traffic, system performance metrics, software integrity, or security event logs corresponding with a plurality of computing systems (¶ 0003- ¶ 0004 and ¶ 0013). (EN: claim 20 is rejected and the same reasoning as the combinations of claims 7 and 8 since they recite similar limitations.).
Allowable Subject Matter
Claims 3, 11 and 18 would be allowable if they were rewritten in independent form including all of the limitations of the base claim and any intervening claims, also should applicant overcome the Non-Statutory Double Patenting rejection, set forth in this office action.
The following is an examiner’s statement of reasons for identifying allowable subject matter.
The closest prior arts made of records are, Soundararajan et al. (U.S Pub No. 2021/0314293 A1, referred to as Soundararajan), Callahan et al. (U.S Pat No. 2020/0036707 A1, referred to as Callahan) and Hamel et al. (U.S Pat No. 2019/0319940 A1, referred to as Hamel).
Soundararajan discloses systems and methods enabling network authentication using a Blockchain-based construct of self-sovereign identity are described. The disclosed self-sovereign identity-based network authentication method system and methods allow for a peer to submit a distributed identity (DID) or a verifiable claim as a credential to a TEAP server for authentication within a TEAP framework. Disclosed system and methods integrate Blockchain and TEAP in a manner that does not require overhauling the authentication standard, or creating a completely new authorization framework or new TEAP mechanism.
Callahan discloses secure communications are provided between a user computing device and a server computing device. An enrollment request is received from a user computing device that is configured via a distributed client software application and is processed. The enrollment request is usable to enroll the user computing device in a network and includes an encrypted partial initial biometric vector associated with a user.
Hamel discloses system for credential authentication includes an interface and a processor. The interface is configured to receive a create indication to create a guest credential representing a guest badge associated with a visitor and receive a claim indication from an authentication device to claim the guest credential.
However, regarding claims 3, 11 and 18, the prior art of Soundararajan, Callahan and Hamel when taken in the context of the claim as a whole do not disclose nor suggest, “monitor the environmental data of a plurality of computing systems of the at least one entity with the identity passport; and in response to determining at least one of the at least one entity out of compliance with a parameter, issue an alert to at least one of the at least one entity comprising a recommendation to update the one or more protection actions.”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: See PTO-892.
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/HASSAN SAADOUN/Examiner, Art Unit 2435
/AMIR MEHRMANESH/Supervisory Patent Examiner, Art Unit 2435
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