DETAILED ACTION
This action is response to communication: response to election filed on 06/23/2026.
Claims 2-20 are currently pending in this application. Claims 10-16, 19, and 20 have been withdrawn.
No IDS has been filed for this application.
Election/Restrictions
Applicants have elected Group I (claims 2-9, 17, and 18) with traverse
Claims 10-16, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/23/2026.
Applicant's election with traverse of the restriction requirement in the reply filed on 06/23/2026 is acknowledged. The traversal is on the ground(s) that there is no burden on the Examiner. This is not found persuasive. As seen in the restriction requirement on 05/22/2026, the search required for Group I is not required for Group II and vice versa. Further, the Groups can be classified in different classes. Such differences would cause a serious burden on the Examiner if restriction is not required.
The requirement is still deemed proper and is therefore made FINAL.
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 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 2-9, 17, and 18 of the instant application are rejected on the ground of nonstatutory double patenting as being obvious over claim 1-17 of U.S. Patent No. 12,231,559. Although the claims at issue are not identical, they are not patentably distinct from each other. As per claim 1, as seen below for claim 1 of the instant application, the instant application includes all the limitations of the parent patent. The difference is that the instant application includes a first and second credential of a first device, while the parent patent discusses a plurality of credentials. Other than that difference, the claims are verbatim, and it would have been obvious to one of ordinary skill in the art distinguish between two different credentials as it is well known in the art that users may utilize multiple credentials for authentication. A comparison/chart is displayed below, highlighting the independent claim. The dependent claims are rejected in the same manner as they are almost verbatim.
See the differences in the claims, as highlighted below.
Instant Application
Patent Application #18/234,809 (12231559)
2. A method, including: storing, to a block-level clinical trial structure of a blockchain that maintains an on-chain record of a clinical trial, an on-chain record origin of clinical trial information, wherein the on-chain record origin of the clinical trial information is an encrypted version of an original record of the clinical trial information signed with a first credential of a first custodian; receiving, from a first device having a first off-chain copy of the clinical trial information, a request to access the on-chain record of clinical trial information, from the block-level clinical trial structure stored to the blockchain; permitting the first device to access the on-chain record of the clinical trial information in dependence upon an authorization; receiving, from the first device, a validation of a veracity of the first off-chain copy of the clinical trial information as being unaltered from the on-chain record origin, wherein the validation further includes (i) an encrypted first copy comprising an encrypted version of the first off-chain copy and (ii) a second credential of the first device; and storing, to the blockchain, the validation of the veracity of the first off-chain copy of the clinical trial information.
1. A method of securing information associated with a clinical trial, the method including: storing, to block-level clinical trial structures of a blockchain, an on-chain record origin of clinical trial information received from a first custodian, wherein the on-chain record origin of the clinical trial information is an encrypted version of an original record of the clinical trial information signed with credentials of the first custodian; receiving, from a first user seeking to validate a veracity of a first off-chain copy of the clinical trial information, a request to view the on-chain record of clinical trial information, from the block-level clinical trial structures stored to the blockchain; permitting the first user to access the on-chain record of the clinical trial information in dependence upon an authorization; receiving, from the first user, a validation of the veracity of the first off-chain copy of the clinical trial information as being unaltered from the on-chain record origin, wherein the validation further includes (i) an encrypted version of the first off-chain copy and (ii) credentials of the first user; and storing, to the blockchain, the validation of the veracity of the first off-chain copy of the clinical trial information.
Allowable Subject Matter
Claims 2-9, 17, and 18 would be allowable if rewritten or amended to overcome the double patenting rejection above, or if a terminal disclaimer is filed and approved.
The following is a statement of reasons for the indication of allowable subject matter: Below is the closest prior art the Examiner has found:
Hodgson et al. US Patent No. 9,870,508 teaches blockchain with user seeking to validate a veracity of an off-chain copy of information using an on-chain record as reference (col. 12 lines 45-65 and throughout reference), and further teaches receiving a validation of veracity of the off-chain copy (col. 12 line 65 to col. 13 line 5), but does not teach all the limitations of the claims.
Collins et al. US Patent Application Publication 2018/0218779 teaches utilizing blockchain to store information regarding clinical data (see abstract and throughout), but does not teach all the limitations of the claims.
Bulleit et al. US Patent Application Publication 2018/0060496 teaches encrypting information and including credentials in blockchain (paragraph 87 and throughout), but does not teach all the limitations of the claims.
Although the references cited above teach many limitations of the claimed invention, the invention, as a whole, would not have been obvious over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAI YIN GEE whose telephone number is (571)272-6431. The examiner can normally be reached on Monday-Friday 8:30-5:00 PST Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON K GEE/Primary Examiner, Art Unit 2495
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