CTNF 19/011,516 CTNF 79588 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Examiner notes All claims have been reviewed for compliance with 35 USC §112 and 35 USC §101. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-6, 8-13, 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 17-20 of U.S. Patent No. 11,604,898 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent ‘898 include all the limitations of the instant claims . Instant Application U.S. Patent No. 11,604,898 providing a graphical user interface (GUI) for online collaborative editing of a document in association with a first server of a cloud-based storage system, wherein the cloud-based storage system stores, in an encrypted form, a plurality of documents including the document; (Claim 1) providing a graphical user interface (GUI) for online collaborative editing of a document in association with a first server of a cloud-based storage system, wherein the cloud-based storage system stores, in an encrypted form, a plurality of documents including the document; (Claim 17) receiving an edit to a portion of the document via the GUI; (Claim 1) receiving an edit to a portion of the document via the GUI; (Claim 17) encrypting the edit to the portion of the document based on a data encryption key associated with a second server that is independent of the first server; (Claim 1) generating encrypted data representing the edit to the portion of the document, wherein the encrypted data includes the edit to the portion of the document that is encrypted based on a data encryption key, and the data encryption key that is encrypted by a second server based on a key encryption key for transmission to the first server; (Claim 17) generating encrypted data representing the edit to the portion of the document, wherein the encrypted data includes the encrypted edit to the portion of the document; (Claim 1) …wherein the encrypted data includes the edit to the portion of the document that is encrypted based on a data encryption key…(Claim 17) and providing the encrypted data to the first server that is unable to decrypt (i) the document in the encrypted form, and (ii) the encrypted edit to the portion of the document. (Claim 1) and providing the encrypted data to the first server that is unable to decrypt (i) the document in the encrypted form, (ii) the encrypted edit to the portion of the document and (iii) the encrypted data encryption key. (Claim 17) 08-34 AIA Claim s 7, 14, 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 17-20 of U.S. Patent No. 11,604,898, in view of Schmahmann, U.S. Publication No. 2018/0062852 . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent ‘898 include all the limitations of the instant claims except the limitations specific to user accounts . Schmahmann a collaborative document editing system where users having accounts ([0060]-[0061]), which meets the limitation of wherein the online collaborative editing of the document corresponds to a plurality of user accounts of collaborators of the document. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the claims of the ‘898 patent to have accounts in order to provide a means of identifying the source of operations performed in the system as suggested by Schmahmann ([0061]) . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1, 8, 15 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Crosbie, U.S. Publication No. 2014/0115332 (IDS cite No. 5). Referring to claim 1, Crosbie discloses a collaborative document editing system wherein document changes can be made by a user of a client device using a document editor ([0092] & [0063]: document editor is a cloud application downloaded to the client and implemented to edit the document; document editor would therefore be considered the claimed graphical user interface), which meets the limitation of providing a graphical user interface (GUI) for online collaborative editing of a document in association with a first server of a cloud-based storage system. The system includes a cloud document server that stores encrypted documents ([0021] & [0029] & [0036]), which meets the limitation of wherein the cloud-based storage system stores, in an encrypted form, a plurality of documents including the document. The user makes changes to the document using the document editor ([0092]), which meets the limitation of receiving an edit to a portion of the document via the GUI. The document changes can be encrypted using a document token ([0035] & [0112]: document token would be considered the claimed data encryption key), which meets the limitation of encrypting the edit to the portion of the document based on a data encryption key, generating encrypted data representing the edit to the portion of the document, wherein the encrypted data includes the encrypted edit to the portion of the document. Document token is split into a server document token and a sharee document token ([0022] & [0103]) such that the server document token is stored on a key server that is different from the document server ([0104]: document token reads on the claimed data encryption key; a portion of the document token being stored in a key server would be considered an association between the document token and the key server), which meets the limitation of a data encryption key associated with a second server that is independent from the first server. Transmitting the encrypted document changes from client devices to a cloud server that stores encrypted documents ([0021] & [0029] & [0036]), which meets the limitation of providing the encrypted data to the first server. The document server stores the encrypted documents ([0029]: documents are encrypted using the document token [0078]) and the encrypted document changes ([0036]: document changes encrypted using the document token [0078]) such that the document tokens are encrypted using the public keys of each respective sharee and can only be decrypted using a respective private key ([0019] & [0021] & [0031]: complete document token is never stored in the server), which meets the limitation of the first server that is unable to decrypt the document in the encrypted form and the encrypted edit to the portion of the document . Referring to claim 8, Crosbie discloses a collaborative document editing system that includes memory ([0056]) and a processor ([0048]-[0049]), which meets the limitation of a system comprising a memory, and a processing device, coupled to the memory, to perform operations. The collaborative document editing system provides document changes to be made by a user of a client device using a document editor ([0092] & [0063]: document editor is a cloud application downloaded to the client and implemented to edit the document; document editor would therefore be considered the claimed graphical user interface), which meets the limitation of providing a graphical user interface (GUI) for online collaborative editing of a document in association with a first server of a cloud-based storage system. The system includes a cloud document server that stores encrypted documents ([0021] & [0029] & [0036]), which meets the limitation of wherein the cloud-based storage system stores, in an encrypted form, a plurality of documents including the document. The user makes changes to the document using the document editor ([0092]), which meets the limitation of receiving an edit to a portion of the document via the GUI. The document changes can be encrypted using a document token ([0035] & [0112]: document token would be considered the claimed data encryption key), which meets the limitation of encrypting the edit to the portion of the document based on a data encryption key, generating encrypted data representing the edit to the portion of the document, wherein the encrypted data includes the encrypted edit to the portion of the document. Document token is split into a server document token and a sharee document token ([0022] & [0103]) such that the server document token is stored on a key server that is different from the document server ([0104]: document token reads on the claimed data encryption key; a portion of the document token being stored in a key server would be considered an association between the document token and the key server), which meets the limitation of a data encryption key associated with a second server that is independent from the first server. Transmitting the encrypted document changes from client devices to a cloud server that stores encrypted documents ([0021] & [0029] & [0036]), which meets the limitation of providing the encrypted data to the first server. The document server stores the encrypted documents ([0029]: documents are encrypted using the document token [0078]) and the encrypted document changes ([0036]: document changes encrypted using the document token [0078]) such that the document tokens are encrypted using the public keys of each respective sharee and can only be decrypted using a respective private key ([0019] & [0021] & [0031]: complete document token is never stored in the server), which meets the limitation of the first server that is unable to decrypt the document in the encrypted form and the encrypted edit to the portion of the document. Referring to claim 15, Crosbie discloses a collaborative document editing system wherein document changes, to encrypted documents stored in a cloud document server ([0021] & [0029] & [0036]: document server reads on the claimed first server), can be made by a user of a client device using a document editor ([0092] & [0063]: document editor is a cloud application downloaded to the client and implemented to edit the document; client would be considered the first client device; document editor would therefore be considered the claimed graphical user interface), which meets the limitation of providing, at a first client device, a graphical user interface (GUI) for online collaborative editing of a document in association with a first server of a cloud-based storage system. The system includes a cloud document server that stores encrypted documents ([0021] & [0029] & [0036]), which meets the limitation of wherein the cloud-based storage system stores, in an encrypted form, a plurality of documents including the document. A user at a client device makes changes to the document using the document editor ([0092]: editing client reads on the claimed second client device), encrypts the document changes using a document token ([0035] & [0112]: document token reads on the claimed data encryption key), and transmits the encrypted document changes to the client device (Figure 7N, Step 614 & [0115]: receiving client device reads on the claimed first client device), which meets the limitation of receiving, at the first client device, an encrypted edit to a portion of the document via the GUI, wherein the encrypted edit to the portion of the document was encrypted by a second client device using a data encryption key. Document token is split into a server document token and a sharee document token ([0022] & [0103]) such that the server document token is stored on a key server that is different from the document server ([0104]: a portion of the document token being stored in a key server would be considered an association between the document token and the key server), which meets the limitation of a data encryption key associated with a second server that is independent from the first server. The document server stores the encrypted documents ([0029]: documents are encrypted using the document token [0078]) and the encrypted document changes ([0036]: document changes encrypted using the document token [0078]) such that the document tokens are encrypted using the public keys of each respective sharee and can only be decrypted using a respective private key ([0019] & [0021] & [0031]: complete document token is never stored in the server), which meets the limitation of wherein the first server that is unable to decrypt the document in the encrypted form and the encrypted edit to the portion of the document. The receiving client decrypts the encrypted document changes (Figure 7O & [0116]), which meets the limitation of decrypting, at the first client device, the encrypted edit to the portion of the document. The receiving client merges the decrypted document changes with the document to render an updated document (Figure 7P & [0116]) in a manner that displays the document through the document editor of the client ([0092]: allowing the user to make changes to the document in the document editor shows that the document has been presented through the document editor), which meets the limitation of presenting, at the GUI on the first client device, the document comprising the decrypted edit . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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 made. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-21-aia AIA Claim s 7, 14, 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Crosbie, U.S. Publication No. 2014/0115332, in view of Schmahmann, U.S. Publication No. 2018/0062852. Referring to claims 7, 14, Crosbie does not specify that the users of the collaborative document editing system have accounts. Schmahmann a collaborative document editing system where users having accounts ([0060]-[0061]), which meets the limitation of wherein the online collaborative editing of the document corresponds to a plurality of user accounts of collaborators of the document. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the collaborative document editing system users of Crosbie to have accounts in order to provide a means of identifying the source of operations performed in the system as suggested by Schmahmann ([0061]) . Referring to claim 19, Crosbie does not specify that the users of the collaborative document editing system have accounts. Schmahmann a collaborative document editing system where users having accounts ([0060]-[0061]), which meets the limitation of wherein the online collaborative editing of the document corresponds to a plurality of user accounts of collaborators of the document, the plurality of user accounts comprises a first user account of a first user of the first client device and a second user account of a second user of the second client device. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the collaborative document editing system users of Crosbie to have accounts in order to provide a means of identifying the source of operations performed in the system as suggested by Schmahmann ([0061]). Referring to claim 20, Crosbie discloses transmitting the encrypted document changes from client devices to a cloud server that stores encrypted documents ([0021] & [0029] & [0036]) in a manner that allows for collaborative editing ([0032]), which meets the limitation of wherein the second user [account] is configured to coordinate with the first server for the collaborative editing of the document. Crosbie does not specify that the users of the collaborative document editing system have accounts. Schmahmann a collaborative document editing system where users having accounts ([0060]-[0061]), which meets the limitation of the second user account. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the collaborative document editing system users of Crosbie to have accounts in order to provide a means of identifying the source of operations performed in the system as suggested by Schmahmann ([0061]) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 2-6, 9-13, 16-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN E LANIER whose telephone number is (571)272-3805. The examiner can normally be reached M-Th: 5:30-4:00. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached at 5712705143. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BENJAMIN E LANIER/ Primary Examiner, Art Unit 2437 Application/Control Number: 19/011,516 Page 2 Art Unit: 2437 Application/Control Number: 19/011,516 Page 3 Art Unit: 2437 Application/Control Number: 19/011,516 Page 4 Art Unit: 2437 Application/Control Number: 19/011,516 Page 5 Art Unit: 2437 Application/Control Number: 19/011,516 Page 6 Art Unit: 2437 Application/Control Number: 19/011,516 Page 7 Art Unit: 2437 Application/Control Number: 19/011,516 Page 8 Art Unit: 2437 Application/Control Number: 19/011,516 Page 9 Art Unit: 2437 Application/Control Number: 19/011,516 Page 10 Art Unit: 2437 Application/Control Number: 19/011,516 Page 11 Art Unit: 2437 Application/Control Number: 19/011,516 Page 12 Art Unit: 2437 Application/Control Number: 19/011,516 Page 13 Art Unit: 2437 Application/Control Number: 19/011,516 Page 14 Art Unit: 2437 Application/Control Number: 19/011,516 Page 15 Art Unit: 2437 Application/Control Number: 19/011,516 Page 16 Art Unit: 2437 Application/Control Number: 19/011,516 Page 17 Art Unit: 2437 Application/Control Number: 19/011,516 Page 18 Art Unit: 2437 Application/Control Number: 19/011,516 Page 19 Art Unit: 2437 Application/Control Number: 19/011,516 Page 20 Art Unit: 2437 Application/Control Number: 19/011,516 Page 21 Art Unit: 2437 Application/Control Number: 19/011,516 Page 22 Art Unit: 2437 Application/Control Number: 19/011,516 Page 23 Art Unit: 2437
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