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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted by applicant dated 01/31/2025 has been 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. 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 obviousness-type double patenting as being unpatentable over claims 1-6, 8-13, 15-17 and 19-20 of USPN 12,250,202 (Appl. No: 18/139515). Although the claims at issue are not identical, they are not patentably distinct from each other. (see Claim-Comparison Table below for independent claim 1 of the instant application against Claim 1 of 12,250,202).
Claim
Application#19/042296
Claim
USPN # 12,250,202
1
receive, from a sender computing device and via a blockchain, one or more virtual assets via a blockchain address;
receive, from an authority device, a data element corresponding to the blockchain address;
generate a proof message that comprises the blockchain address and the data element, wherein the proof message is signed by a private key associated with the blockchain address;
send the proof message to the authority device; and
receive, from the sender computing device and based on validation of the proof message by the sender computing device, personal data associated with an owner of the one or more virtual assets, wherein the personal data is encrypted using a public key associated with the recipient computing device.
1
sharing of confidential personal data along with a transfer of virtual assets, the sender computing device comprising: one or more processors; and memory storing instructions that, when executed by one or more processors, cause the sender computing device to:
send, to an authority device, a query comprising a blockchain address used, by the sender computing device and via a blockchain, to send one or more virtual assets to a recipient via the blockchain address, wherein the authority device is configured to store an association between the blockchain address and a proof message, wherein the proof message is signed with a private key associated with the blockchain address, wherein the proof message comprises the blockchain address and a data element corresponding to the blockchain address, and wherein the proof message was generated, by the recipient, and transmitted, by the recipient, to the authority device in response to receipt, by the recipient and from the authority device, of the data element;
receive, from the authority device, the proof message; and
based on decrypting the proof message using a public key associated with the blockchain address to confirm, based on the data element, that the recipient is associated with the blockchain address, send, to the recipient, personal data associated with an owner of the one or more virtual assets, wherein the personal data is encrypted, by the sender computing device, using a public key associated with the recipient.
Claims 2-20 of the instant application is equivalent in scope with Claims 1-6, 8-13, 15-17 and 19-20 of USPN 12,250,202.
Allowable Subject Matter
Claims 1-20 would be allowable if a terminal disclaimer is timely filed to overcome the double patenting rejection, set forth in this Office action.
The closest prior art made of record are:
Aleksander et al. US2021/0099293 teaches systems and methods for secure transferring of information through a network between an origin Virtual Asset Service Provider and a destination Virtual Asset Service Provider, where every entity (party member, network node) must proof its entitlement of the information being exchanged. The method doesn't require other party member/network node or database to secure information transfer. Neither it requires any other trusted entity or server to guarantee or provide proof of ownership of exchange information. The method for communicating securely between electronic devices uses asymmetric key encryption.
Hill et al. US2019/0287175 teaches a system and method for investment fund ownership token. A decentralized investment fund may hold digital assets in the consensus code and distribute profits to the token owners according to each owner's dividend preference. A token owner's dividend preference can include digital assets tracked by a different shared ledger, stabletoken digital assets pegged to the value of a digital asset, and cross-chain digital asset swaps. Token issuance may include a proof of accreditation requirement based on cryptographic proof on a shared ledger. The decentralized investment fund may distribute fund documents to the token holders by encrypting the document, first with a symmetric key common to all token holders, and second with an asymmetric key unique to each token holders and based on the token's holder's known public address on the shared ledger.
Gaither USPN10,282,371 teaches a system and method for utilizing probabilistic data structures to handle interrogations regarding whether or not objects might be stored in an object store of an object storage device are disclosed. The probabilistic data structure has data related to the presence of data in an object store of the object storage device. The control circuitry is configured to receive an interrogation from a computing device for an object; utilize the probabilistic data structure to determine that the object is possibly stored in the object store or definitely not stored in the object store; and in response to a determination that the object is definitely not stored in the object store, respond to the interrogation that the object is not stored in the object store.
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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