DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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.
Claims 16-35 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2 and 5-15 of USPN 12,244,719 (Appl. No: 18/815573). Although the claims at issue are not identical, they are not patentably distinct from each other. (see Claim-Comparison Table below for independent claim 16 of the instant application against Claim 10 of 12,244,719).
Claim
Application#19/034136
Claim
USPN # 12,244,719
16
One or more non-transitory computer-readable media having stored thereon computer-executable instructions for causing a computer system, when programmed thereby, to perform operations comprising:
enrolling a user in a computer-implemented authentication platform, wherein the enrolling the user comprises establishing a user profile of the user, the enrolling further comprising:
receiving identity information of the user;
digitally encrypting the identity information of the user to provide digitally encrypted identity information;
storing the digitally encrypted identity information of the user in a blockchain as part of the user profile of the user;
generating, using the digitally encrypted identity information of the user, an identifier of the user; and
storing the identifier of the user in the blockchain as part of the user profile of the user; and
authenticating the user in the computer-implemented authentication platform, wherein the authenticating the user comprises:
receiving the identifier of the user;
retrieving the digitally encrypted identity information of the user from the blockchain, including using the identifier of the user to retrieve the digitally encrypted identity information of the user;
decrypting the digitally encrypted identity information of the user using a decryption token to provide decrypted identity information of the user; and
using the decrypted identity information of the user to authenticate the user.
10
One or more non-transitory computer-readable media having stored thereon computer-executable instructions for causing a computer system, when programmed thereby, to perform operations comprising:
enrolling a user in a computer-implemented authentication platform, wherein the enrolling the user comprises establishing a user profile of the user, the enrolling further comprising:
receiving identity information of the user; digitally encrypting the identity information of the user to provide digitally encrypted identity information;
storing the digitally encrypted identity information of the user in a blockchain as part of the user profile of the user; generating, using the digitally encrypted identity information of the user, an identifier of the user; and
storing the identifier of the user in the blockchain as part of the user profile of the user; and
authenticating the user in the computer-implemented authentication platform, wherein the authenticating the user comprises:
receiving the identifier of the user; generating first authentication data; transmitting the first authentication data to a mobile device of the user;
receiving a first indication that the first authentication data has been provided to a verification agent computing device, the first indication including the first authentication data;
verifying that the first authentication data from the first indication matches the first authentication data generated and transmitted to the mobile device of the user;
in response to the verifying that the first indication matches the first authentication data, retrieving the digitally encrypted identity information of the user from the blockchain, including using the identifier of the user to retrieve the digitally encrypted identity information of the user;
decrypting the digitally encrypted identity information of the user using a decryption token to provide decrypted identity information of the user;
transmitting the decrypted identity information of the user to the verification agent computing device;
receiving input confirming that the decrypted identity information of the user matches identity information of a person in the presence of the verification agent; generating second authentication data; transmitting the second authentication data to the mobile device of the user; receiving a second indication that the second authentication data has been provided to the verification agent computing device, the second indication including the second authentication data; and
verifying that the second authentication data from the second indication matches the second authentication data generated and transmitted to the mobile device of the user.
Claims 17-35 of the instant application is equivalent in scope with Claims 1-2 and 5-15 of USPN 12,244,719.
Claim Rejections - 35 USC § 102
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.
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 –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16, 19, 23-24, 27 and 31-32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ebrahimi US 2016/0330027.
As per claim 16, Ebrahimi teaches one or more non-transitory computer-readable media having stored thereon computer-executable instructions for causing a computer system, when programmed thereby, to perform operations comprising: enrolling a user in a computer-implemented authentication platform, wherein the enrolling the user comprises establishing a user profile of the user, the enrolling further comprising: receiving identity information of the user (Ebrahimi paragraph [0019], [0021], [0034], [0036], receive user identity information);
digitally encrypting the identity information of the user to provide digitally encrypted identity information (Ebrahimi paragraph [0024], [0039], hashing the information and signing the hash);
storing the digitally encrypted identity information of the user in a blockchain as part of the user profile of the user (Ebrahimi paragraph [0025]-[0026], [0040]-[0041], storing the signed hash in a blockchain);
generating, using the digitally encrypted identity information of the user, an identifier of the user (Ebrahimi paragraph [0025]-[0027], [0040]-[0042], generating and storing a transaction number for the stored data); and
storing the identifier of the user in the blockchain as part of the user profile of the user (Ebrahimi paragraph [0025]-[0027], [0040]-[0042], generating and storing a transaction number for the stored data); and
authenticating the user in the computer-implemented authentication platform, wherein the authenticating the user comprises: receiving the identifier of the user (Ebrahimi paragraph [0028], [0043]-[0044], receiving transaction number);
retrieving the digitally encrypted identity information of the user from the blockchain, including using the identifier of the user to retrieve the digitally encrypted identity information of the user (Ebrahimi paragraph [0028], [0044], retrieving the stored signed hash using the transaction number);
decrypting the digitally encrypted identity information of the user using a decryption token to provide decrypted identity information of the user (Ebrahimi paragraph [0044], [0046]-[0047], decrypt the signed hash and compare with the generated hash to authenticate the user); and
using the decrypted identity information of the user to authenticate the user (Ebrahimi paragraph [0044], [0046]-[0047], decrypt the signed hash and compare with the generated hash to authenticate the user).
As per claim 19, Ebrahimi teaches the one or more computer-readable media of claim 16, wherein the identity information is an image of the user (Ebrahimi paragraph [0019], [0021], [0034], [0036], photo of the user).
As per claim 23, Ebrahimi teaches the one or more computer-readable media of claim 16, wherein the using the decrypted identity information of the user to authenticate the user comprises: transmitting the decrypted identity information of the user to a verification agent computing device; and receiving input confirming that the decrypted identity information of the user matches identity information of a person in the presence of a verification agent (Ebrahimi paragraph [0046], receiving from verification logic that the hash values matches).
As per claims 24, 27 and 31-32, the claims claim a system and a method essentially corresponding to the non-transitory computer readable medium claims 16, 19 and 23 above, and they are rejected, at least for the same reasons.
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 (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.
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.
Claims 18 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Ebrahimi, in view of Seger, II et al. USPN 9,397,985 (hereinafter Seger).
As per claim 18, Ebrahimi teaches the one or more computer-readable media of claim 16.
Ebrahimi does not explicitly disclose wherein blockchain is permissioned blockchain.
Seger teaches wherein blockchain is permissioned blockchain (Seger col 5 lines 40-45, private distributed ledger).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Ebrahimi of storing data in a blockchain with the teachings of Seger to include a private distributed ledger because the resulted would have been predictable and resulted in having a private blockchain and storing the data in a private blockchain.
As per claim 26, the claim claims a system essentially corresponding to the non-transitory computer readable medium claim 18 above, and is rejected, at least for the same reasons.
Claims 20, 28 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Ebrahimi, in view of Phan et al. US 2015/0269570 (hereinafter Phan).
As per claim 20, Ebrahimi teaches the one or more computer-readable media of claim 16.
Ebrahimi does not explicitly disclose wherein authenticating user further comprises: requesting decryption token from an encryption service; and receiving, from the encryption service, the decryption token.
Phan teaches wherein authenticating user further comprises: requesting decryption token from an encryption service; and receiving, from the encryption service, the decryption token (Phan paragraph [0024], [0054], requesting and receiving a public key for verifying signature).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the storing and retrieval of the public key of the invention of Ebrahimi with the teachings of Phan of storing and retrieving the public key from a separate public database because the results would have been predictable and resulted in storing and retrieving the public key from a separate public database for signature verification.
As per claims 28 and 34, the claims claim a system and a method essentially corresponding to the non-transitory computer readable medium claim 20 above, and they are rejected, at least for the same reasons.
Claims 21-22, 29-30 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Ebrahimi, in view of Headley US 2013/0047223.
As per claim 21, Ebrahimi teaches the one or more computer-readable media of claim 16.
Ebrahimi does not explicitly disclose wherein authenticating user further comprises: generating authentication data;
transmitting the authentication data to a mobile device of the user;
receiving an indication that the authentication data has been provided to a verification agent computing device; and
verifying that the indication matches the authentication data.
Headley teaches wherein authenticating user further comprises: generating authentication data (Headley paragraph [0033], generate otp);
transmitting the authentication data to a mobile device of the user (Headley paragraph [0033], send otp via SMS);
receiving an indication that the authentication data has been provided to a verification agent computing device (Headley paragraph [0034]-[0035], receive and compare otp); and
verifying that the indication matches the authentication data (Headley paragraph [0034]-[0035], receive and compare otp).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Ebrahimi of authenticating a user based on stored data from a blockchain with the teachings of Headley to include OTP generation and verification in order to provide multifactor authentication of the user via OTP.
As per claim 22, Ebrahimi in view of Headley teaches the one or more computer-readable media of claim 21, wherein the authentication data is an authentication token (Headley paragraph [0033], otp).
As per claims 29-30 and 35, the claims claim a system and a method essentially corresponding to the non-transitory computer readable medium claims 21-22 above, and they are rejected, at least for the same reasons.
Allowable Subject Matter
Claims 17, 25 and 33 would be allowable if a terminal disclaimer is timely filed to overcome the double patenting rejection(s), set forth in this Office action and to include 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 HENRY TSANG whose telephone number is (571)270-7959. The examiner can normally be reached M-F 9am - 5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached at (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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/HENRY TSANG/ Primary Examiner, Art Unit 2495
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