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 .
DETAILED ACTION
This is in response to the communication filed on 01/10/2025. Claims 1-20 are pending in the application. Claims 1-20 are rejected.
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) submitted on 03/31/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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. See 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(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 of the instant application are rejected under the judicially created doctrine of obviousness type double patenting as being unpatentable over claims 1-16 of commonly owned patent No. 12,225,114 B2.
In particular, claims 1 and 14 of the instant application are being unpatentable over claims 1 and 11 of commonly owned patent No. 12,225,114 B2; claims 2-7 and 15-18 of the instant application are being unpatentable over claims 1-3, 8-9 and 12-13 of commonly owned patent No. 12,225,114 B2; and claims 8-13 and 19-20 of the instant application are being unpatentable over claims 4-10 and 14-16 of commonly owned patent No. 12,225,114 B2.
Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-16 of commonly owned patent No. 12,225,114 B2 contains every element of claims 1-20 of the instant application and thus anticipate the claim(s) of the instant application. Both the conflicting claim sets of the instant application and the commonly owned patent are directed to a method of encrypting health data and securely transmitting a copy of it to a remote server. Claims 1-20 of the instant application therefore is not patently distinct from the conflicting claim set of the commonly owned patent and as such is unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
This is an obviousness type double patenting rejection.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended (or if a terminal disclaimer is filed) to overcome the obviousness type double patenting rejections, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Landi et al., US 2005/0165623 A1 teaches a method/ system for protecting individual privacy (e.g., patient privacy) when individual data records (e.g., patient data records) are shared between various entities (e.g., healthcare entities). In one aspect, systems and methods are provided which implement secured key encryption for de-identifying patient data to ensure patient privacy, while allowing only the owners of the patient data and/or legally empowered entities to re-identify subject patients associated with de-identified patient data records (See Landi et al., Abstract)
Sinderbrand et al., US 2014/0164784 A1 teaches a system/ method for storing and analyzing patient data sets. A processor in communication with a database may generate a plurality of patient data sets, each of the patient data sets being associated with one of a plurality of patients and comprising an attribute. The processor may de-identify each of the patient data sets so that they are not associated with the patients. The processor may encrypt each of the de-identified data sets to generate a plurality of encrypted data sets and store the encrypted data sets in the database (See Sinderbrand et al., Abstract)
Youngblood et al., US 2020/0227160 A1 teaches a method/ system for securely exchanging health data. A health data exchange platform includes health data from a plurality of data sources. The health data exchange platform preferably utilizes blockchain technology. The health data exchange platform includes both buyers of health data and suppliers of health data. The health data exchange platform includes a phenotype network system including at least one remote server, a user profile database, a report database, a permissions database, a geographic incident database, and a medical community database (See Youngblood et al., Abstract)
A shortened statutory period for response to this action is set to expire in 3 (Three) months and 0 (Zero) days from the mailing date of this letter. Failure to respond within the period for response will result in ABANDOMENT of the application (see 35 U.S.C 133, M.P.E.P 710.02(b)). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANTO ABEDIN whose telephone number is 571-272-3551. The examiner can normally be reached on M-F from 8:30 AM to 6:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jung (Jay) Kim, can be reached on 571-272-3804. The RightFax number for faxing directly to the examiner is 571-273-3551.
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.
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/SHANTO ABEDIN/ Primary Examiner, Art Unit 2494
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