DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments filed 07/22/2026 have been fully considered but they are not persuasive. Applicant argues with respect to claim 1 that the applied reference fails to teach a compiled queue of tokenized data. In Col 12, Lines 16-60 teaches a process of generating the token, cataloguing the tokens and sending the catalogued tokens. During a de-tokenization process, Griffin teaches in Col 14, Lines 28-50, that it is dependent on the same technique used for the tokenization with the tokens in the same way as they have been catalogued. Applicant’s disclosure of a queue only points to the list of tokens and given a broad reasonable interpretation, the reference clearly teaches the token list and detokenization based on the same process and technique as tokenization. Considering the explanation rendered, the rejection is maintained.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,216,790. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to using a schema to identify portions of a file containing tokenized data, extracting the tokenized data, sending the token data for decryption, and de-tokenizing the data set by replacing the tokenized data with the decrypted data.
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)(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.
Claims 1-20 are rejected under 35 U.S.C. 102[a][1] as being anticipated by Griffin et al. (USPAT-10,114,963).
a. Referring to claims 1, 8, 9, 16 and 17:
Regarding claims 1, 8, 9, 16 and 17, Griffin teaches a method comprising: receiving, by a computing device, a file comprising tokenized data and a schema identifying portions of the file containing tokenized data (Col 12, line 16-31…. file comprising tokenized data and manifest having a schema); extracting, from the file and based on the schema, the tokenized data (Col 12, line 54-57…. extracting the tokens based on the manifest); sending a compiled queue of the tokenized data (Col 12, line 58-59…. transmitting the catalogued tokens); receiving, from a decryption system, decrypted data; and replacing, based on an order that the compiled queue of tokenized data was queued, the tokenized data, from the file, with corresponding decrypted data to generate a de-tokenized data set (Col 14, line 28-42…. decrypted data based on the encryption and detokenization based on the tokenization process/technique and tokens).
a. Referring to claims 2, 12 and 20:
Regarding claims 2, 12 and 20, Griffin teaches the method of claim 1, further comprising determining the schema by at least one of converting, decompressing, or parsing the file associated with the tokenized data (Col 1, line 59-61…. manifest comprising the schema).
a. Referring to claims 3 and 13:
Regarding claims 3 and 13, Griffin teaches the method of claim 1, further comprising determining the schema by comparing a querying record and a historic record (Col 4, line 9-20…. schema of manifest from queried directory record or database historic record).
a. Referring to claims 4 and 14:
Regarding claims 4 and 14, Griffin teaches the method of claim 1, further comprising receiving a request to extract the tokenized data from portions of the file, wherein the extracting is further based on receiving the request (Col 6, line 3-8…. de-tokenization request to extract the tokenized data).
a. Referring to claim 5:
Regarding claim 5, Griffin teaches the method of claim 1, wherein the decryption system is remote from the computing device (Col 19, line 11-17…. remote location of system).
a. Referring to claims 6 and 15:
Regarding claims 6 and 15, Griffin teaches the method of claim 1, further comprising validating tokenized data values of the extracted tokenized data at varying frequencies (Col 8, line 31-33…. hash of the tokenized data validated at varying relying parties).
a. Referring to claim 7:
Regarding claim 7, Griffin teaches the method of claim 1, further comprising generating, based on a mismatch between a format of the extracted tokenized data and a known tokenized data format, an error message. (Col 9, line 34-50… authentication information comparison, if mis-match failed/deny access request).
a. Referring to claims 10 and 18:
Regarding claims 10 and 18, Griffin teaches the method of claim 8, further comprising receiving, from a tokenized data storage, the file comprising the tokenized data (Col 12, line 16-31…. file comprising tokenized data).
a. Referring to claims 11 and 19:
Regarding claims 11 and 19, Griffin teaches the method of claim 8, further comprising receiving, from a tokenized data storage, the schema identifying portions of the file containing tokenized data (Col 12, line 16-31…. file comprising tokenized data and manifest having a schema).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IZUNNA OKEKE whose telephone number is (571)270-3854. The examiner can normally be reached Mon - Fri 8 - 4 EST.
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/IZUNNA OKEKE/Primary Examiner, Art Unit 2497
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