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 .
Terminal Disclaimer
The Terminal Disclaimer submitted on 04/02/2026 was disapproved due to the wrong form being used. Please use form PTO/AIA /26 and resubmit the Terminal Disclaimer. It is noted that no new fee is required for resubmitting the correct form.
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 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of prior U.S. Patent No. 12,265,498 in view of Chan (US PG Pub 2023/0206150). Claim 1 of Patent No. 12,265,498 discloses an online software platform (OSP) electronically receiving a first data; electronically associating the received first data with an entity; electronically tagging the received first data with an electronic tag uniquely associated with the entity, the electronic tag including an identifier uniquely associated with the entity; electronically storing the received first data such that the received first data is identifiable via the electronic tag; electronically tagging with the electronic tag a second data associated with the entity resulting from an action performed on the stored received first data such that the second data associated with the entity resulting from the action performed on the stored received first data is also identifiable via the electronic tag; electronically storing the tagged second data associated with the entity resulting from the action performed on the stored received first data such that the second data associated with the entity resulting from the action performed on the stored received first data is also identifiable via the electronic tag; and the OSP applying digital rules to a dataset to determine a resource in response to a request (see at least Col. 12, Line 31 – Col. 15, Line 2), but fails to disclose the OSP applying digital rules to a dataset, via applying a certain consequent associated with one or more of the digital rules, to determine a resource in response to a request. However, Chan discloses the OSP applying digital rules to a dataset, via applying a certain consequent associated with one or more of the digital rules, to determine a resource in response to a request in at least [0009], [0030], [0040] and [0041]. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, to combine the digital rules of Patent No. 12,265,498 with the digital rules of Chan to provide conditional statements to help a program check whether a condition is true or false and execute different blocks of code based on the result thereby yielding dynamic adaptability and system performance optimization such that the system stops evaluating conditions once a true statement is found resulting in processing power being saved.
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 1-4, 10, 13-16 and 22 is/are rejected under 35 U.S.C. 103 as being obvious over Carteri et al. (U.S. Patent Application Publication No. 2020/0302082; hereinafter Carteri) in view of Chan (U.S. Patent Application Publication No. 2023/0206150).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 1, Carteri discloses a non-transitory computer-readable medium having computer-executable instructions stored thereon which, when executed by at least one processor cause instructions operations to be performed, the operations including {¶¶ [0041]-[0043] computer-readable storage medium couples to one or more processors}:
an online software platform (OSP) electronically receiving a first data {¶ [0021] system ingesting data};
electronically associating the received first data with an entity {¶¶ [0022]-[0026] catalogues and tags data belonging to a user};
electronically tagging the received first data with an electronic tag uniquely associated with the entity, the electronic tag including an identifier uniquely associated with the entity {¶¶ [0023], [0026] data is tagged with based on the type of data associated with the user which can include identification data of the user via a personal identification number (e.g., such as a unique identifier)};
electronically storing the received first data such that the received first data is identifiable via the electronic tag {¶¶ [0022]-[0026] catalogues and tags data belonging to a user};
electronically tagging with the electronic tag a second data associated with the entity resulting from an action performed on the stored received first data such that the second data associated with the entity resulting from the action performed on the stored received first data is also identifiable via the electronic tag {¶¶ [0026], [0029], [0030] when the user data is transformed or copied, the tag is propagated along with the transformed or copied data (e.g., such as second data)}; and
electronically storing the tagged second data associated with the entity resulting from the action performed on the stored received first data such that the second data associated with the entity resulting from the action performed on the stored received first data is also identifiable via the electronic tag {¶¶ [0029], [0030], [0033] the transformed or copied data is catalogued}.
Carteri fails to disclose, however, Chan discloses the OSP applying digital rules to a dataset, via applying a certain consequent associated with one or more of the digital rules, to determine a resource in response to a request {¶¶ [0009], [0030], [0040], [0041]: receives a query/request for data stored in a set of data objects in which one or more rules are applied to the set of data objects for determining and retrieving a resource based on a consequent}.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Carteri and Chan before him/her, to modify the teachings of Carteri with the teachings of Chan. The motivation for doing so would combine the tagging and storage of data of Carteri with the tagging and storage of data of Chan to provide conditional statements to help a program check whether a condition is true or false and execute different blocks of code based on the result thereby yielding dynamic adaptability and system performance optimization such that the system stops evaluating conditions once a true statement is found resulting in processing power being saved.
Regarding claim 2, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 1 in which the operations further include:
electronically receiving a request regarding all data associated with the entity that is stored by the OSP {Carteri: ¶¶ [0018], [0035]-[0038] system receives a user request for deletion of all data};
in response to receiving the request, electronically searching, using the electronic tag, for all data associated with the entity that is stored by the OSP {Carteri: ¶¶ [0018], [0035]-[0038] system searches for tagged data based on the request};
electronically identifying, based on the searching, all data stored by the OSP that is tagged with the electronic tag uniquely associated with the entity {Carteri: ¶¶ [0018], [0035]-[0038] system identifies all tagged user data based on the request};
electronically performing an action indicated by the request regarding all the data stored by the OSP that is tagged with the electronic tag uniquely associated with the entity {Carteri: ¶¶ [0018], [0035]-[0038] system deletes all tagged user data based on the request}.
Regarding claim 3, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 2 in which the action indicated by the request is electronic deletion of all the data stored by the OSP that is associated with the entity {Carteri: ¶¶ [0018], [0035]-[0038]}.
Regarding claim 4, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 2 in which the action indicated by the request is electronically sending a report regarding all the data stored by the OSP that is associated with the entity {Carteri: ¶ [0018]}.
Regarding claim 10, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 1 in which the action performed on the stored received first data includes copying, moving or modifying the stored received first data {Carteri: ¶¶ [0026], [0029], [0030]}.
Claims 13-16 and 22 contain corresponding limitations as claims 1-4 and 10 and are therefore rejected for the same rationale.
Claim(s) 5-7, 9, 17-19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carteri et al. (U.S. Patent Application Publication No. 2020/0302082; hereinafter Carteri) in view of Chan (U.S. Patent Application Publication No. 2023/0206150) and further in view of Cholas (U.S. Patent Application Publication No. 2012/0089699).
Regarding claim 5, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 1 in which the electronically tagging with the electronic tag the second data associated with the entity resulting from an action performed on the stored received first data includes: copying the electronic tag along with the stored received first data, or any piece of the stored received first data identified as unique to the entity, whenever the stored received first data, or any piece of the stored received first data identified as unique to the entity, is moved or copied to a different database or electronic document than in which the stored received first data was originally stored {¶¶ [0026], [0029], [0030], [0033]}, but fails to explicitly disclose, however, Cholas discloses according to a first digital rule {¶¶ [0068], [0113], [0124] copying data according to various rules}.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Carteri, Chan and Cholas before him/her, to modify the teachings of Carteri with the teachings of Cholas. The motivation for doing so would combine the copying of data of Carteri with the copying of data of Cholas to provide various rules for content data copying thereby limiting and controlling the transfer of content based on one or more content protection rules as disclosed by Cholas [0013], [0063].
Regarding claim 6, the combination of Carteri, Chan and Cholas discloses the non-transitory computer-readable medium of claim 5 in which the electronically tagging with the electronic tag the second data associated with the entity resulting from an action performed on the stored received first data includes: copying the tag along with the stored received first data, or any piece of the stored received first data identified as unique to the entity, whenever the stored received first data, or any piece of the stored received first data identified as unique to the entity, is modified and then moved or copied to a different database or electronic document than in which the stored received first data was originally stored, according to a second digital rule {Carteri: ¶¶ [0026], [0029], [0030], [0033]; Cholas: ¶¶ [0068], [0113], [0124]}.
Regarding claim 7, the combination of Carteri, Chan and Cholas discloses the non-transitory computer-readable medium of claim 6 in which the electronically tagging with the electronic tag the second data associated with the entity resulting from an action performed on the stored received first data includes: maintaining the electronic tag as associated with the stored received first data, or any piece of the stored received first data identified as unique to the entity, whenever the stored received first data, or any piece of the stored received first data identified as unique to the entity, is modified, according to a third digital rule {Carteri: ¶¶ [0026], [0029], [0030], [0033]; Cholas: ¶¶ [0068], [0113], [0124]}.
Regarding claim 9, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 1 in which the electronically tagging with the electronic tag second data associated with the entity resulting from an action performed on the stored received first data includes: electronically tagging with the electronic tag the second data associated with the entity resulting from an action performed on the stored received first data {¶¶ [0026], [0029], [0030], [0033]}, but fails to explicitly disclose, however, Cholas discloses according to one or more digital rules {¶¶ [0068], [0113], [0124] copying data according to various rules}.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Carteri, Chan and Cholas before him/her, to modify the teachings of Carteri with the teachings of Cholas. The motivation for doing so would combine the copying of data of Carteri with the copying of data of Cholas to provide various rules for content data copying thereby limiting and controlling the transfer of content based on one or more content protection rules as disclosed by Cholas [0013], [0063].
Claims 17-19 and 21 contain corresponding limitations as claims 5-7 and 9 and are therefore rejected for the same rationale.
Claim(s) 8, 12, 20 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carteri et al. (U.S. Patent Application Publication No. 2020/0302082; hereinafter Carteri) in view of Chan (U.S. Patent Application Publication No. 2023/0206150) in view of Cholas (U.S. Patent Application Publication No. 2012/0089699) and further in view of Kreitzer et al. (U.S. Patent Application Publication No. 2019/0188814; hereinafter Kreitzer).
Regarding claim 8, the combination of Carteri, Chan and Cholas discloses the non-transitory computer-readable medium of claim 7 in which each piece of the stored received first data identified as unique to the entity is identified as unique to the entity via the electronic tag also being associated, with the piece of the stored received first data identified as unique to the entity {Carteri: ¶¶ [0023], [0026]}, but fails to explicitly disclose according to a fourth digital rule.
However, Kreitzer discloses each piece of the stored received first data identified as unique to the entity is identified as unique to the entity via the electronic tag also being associated, according to a fourth digital rule, with the piece of the stored received first data identified as unique to the entity {¶¶ [0001], [0108] personally identifiable information is tagged with an identifier based on rules}.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Carteri, Chan, Cholas and Kreitzer before him/her, to modify the teachings of Carteri with the teachings of Kreitzer. The motivation for doing so would combine the tagging of personally identifiable information of Carteri with the tagging of personally identifiable information of Kreitzer to provide various rules for screening of personally identifiable data thereby reducing usage of processing overhead when determining how to store and/or process such data as disclosed by Kreitzer [0219].
Regarding claim 12, the combination of Carteri, Chan, Cholas and Kreitzer discloses the non-transitory computer-readable medium of claim 8 in which the stored received first data includes one or more of: an electronic document associated with the entity; one or more content items associated with the entity; a category of data associated with the entity; a dataset associated with the entity; a collection of data associated with the entity; a name of the entity; an address of the entity; sales data of the entity; a location of the entity; a social security number of the entity; a tax identifier of the entity; identifying number or code of the entity; a telephone number of the entity, an email address of the entity; contact information for the entity; business data of the entity; user name of the entity; login credentials of the entity; electronic documents of the entity; financial information of the entity; personal information of the entity; confidential information of the entity and personal identifiable information of the entity {Carteri: ¶¶ [0018], [0021], [0023]}.
Claims 20 and 24 contain corresponding limitations as claims 8 and 12 and are therefore rejected for the same rationale.
Claim(s) 11 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carteri et al. (U.S. Patent Application Publication No. 2020/0302082; hereinafter Carteri) in view of Chan (U.S. Patent Application Publication No. 2023/0206150) and further in view of Das et al. (U.S. Patent Application Publication No. 2020/0119906; hereinafter Das).
Regarding claim 11, the combination of Carteri and Chan discloses the non-transitory computer-readable medium of claim 1 in which: the electronically tagging the received data includes electronically recording an association of the electronic tag {Carteri: ¶¶ [0022]-[0026]}, but fails to disclose, however, Das discloses with the received data as a transaction on a blockchain, the transaction on the blockchain associated with the electronic tag and with the received data; and the electronically tagging with the electronic tag the second data associated with the entity resulting from an action performed on the stored received first data includes electronically recording the action performed on the stored received first data as an additional transaction on the blockchain, the additional transaction on the block chain associated with the electronic tag and with the second data associated with the entity resulting from the action performed on the stored received first data {¶¶ [0040], [0113]-[117], [0147] user data is tagged and stored as blockchain transactional data at a first block; modified data may be transferred based on the first block of the blockchain and stored at a second block of the blockchain}.
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Carteri, Chan and Das before him/her, to modify the teachings of Carteri with the teachings of Das. The motivation for doing so would combine the modifying of data of Carteri with the modifying of data of Das to provide storage/recording of data/transactions within a blockchain in an immutable, efficient and verifiable manner as disclosed by Das [0040].
Claim 23 contains corresponding limitations as claim 11 and is therefore rejected for the same rationale.
Support for Amendments and Newly Added Claims
Applicants are respectfully requested, in the event of an amendment to claims or submission of new claims, that such claims and their limitations be directly mapped to the specification, which provides support for the subject matter. This will assist in expediting compact prosecution and reducing potential 35 USC § 112(a) or 35 USC § 112, 1st paragraph issues that can arise when claims are amended. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.121(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as “Applicants believe no new matter has been introduced” may be deemed insufficient. The examiner thanks the Applicant in advance for providing support for any amendments or newly added claims.
Examiner cites particular columns and line numbers or paragraphs in the references as applied to claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may be applied as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Response to Arguments
Applicant’s arguments with respect to claims 1-24 have been considered and the applicant’s arguments are persuasive. The examiner presents a new grounds of rejection based upon the applicant's amendments to the claims. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The preceding rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DIEDRA M MCQUITERY whose telephone number is (571)272-9607. The examiner can normally be reached Monday - Thursday, 8 am - 6 pm (C.S.T.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sanjiv Shah can be reached at (571)272-4098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Diedra McQuitery/Primary Examiner, Art Unit 2166
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