CTNF 19/075,304 CTNF 80217 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION 1. This action is responsive to: an original application filed on 10 March 2025 and a preliminary amendment filed 21 May 2025, with acknowledgement that this application is a continuation of application 17/752,326 now patent 12,250,292 filed on 24 May 2022.2. Claims 2-21 are currently pending. Claims 2, 9, and 16, are independent claims. 3. The IDS submitted on 28 May 2025 has been considered. Specification 07-29 AIA 4. The disclosure is objected to because of the following informalities: In the Abstract, the sentence beginning with “Using the properties of” states “FHR scheme”, the Examiner believes this should state “FHE scheme” . Appropriate correction is required. Double Patenting 08-33 AIA 5. 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 statutory obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/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, please refer to - http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp 6. Claims 2-21 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of application 17/752,326 now patent 12,250,292. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the elements/features of claimed system/method/non-transitory medium for returning the summed product for a leaf node exist in the patented application. The difference is the pending application contains less details. The table below is a comparison of the pending claims with the patented claims. PENDING CLAIM 2 PATENT 12,250,292 CLAIM 1 A system comprising: at least one hardware processor; and a non-transitory computer-readable medium storing instructions that, when executed by the at least one hardware processor, perform operations for intersecting a first private data set of a server computing device and a second private data set of a client computing device, the operations comprising: accessing a binary tree data structure representing the first private data set, the binary tree data structure containing nodes having corresponding decision bits; for each leaf node in the binary tree data structure, aggregating the decision bits along a path, using homomorphic multiplication, from a root to the corresponding leaf node of the binary tree data structure and storing the aggregated decision bits with the corresponding leaf node, and performing a homomorphic multiplication of the aggregated decision bits for the corresponding leaf node and a node label for the corresponding leaf node, producing a product for the corresponding leaf node; summing the products for the corresponding leaf node; and for at least one data item in the second private data set, returning the summed product for a leaf node corresponding to the data item as an indication of whether the data item is contained in the first private data set. A system comprising: at least one hardware processor; and a non-transitory computer-readable medium storing instructions that, when executed by the at least one hardware processor, perform operations for intersecting a first private data set of a server computing device and a second private data set of a client computing device, the operations comprising: building a binary tree data structure representing the first private data set, the binary tree data structure representing a plurality of bit strings, each inner node in the binary tree data structure containing a left edge label for a left child node and a right edge label for a right child node; receiving, from the client computing device, a plurality of data items in the second private data set, at least one of the data items having been bitwise encrypted into corresponding ciphertexts using a homomorphic encryption scheme; computing a left decision bit and a right decision bit for a plurality of inner nodes in the binary tree data structure by comparing each of the ciphertexts to the left edge label and the right edge label for each of the plurality of inner nodes in the binary tree data structure; for each leaf node in the binary tree data structure, aggregating the decision bits along a path, using homomorphic multiplication, from a root to the corresponding leaf node of the binary tree data structure and storing the aggregated decision bits with the corresponding leaf node, and performing a homomorphic multiplication of the aggregated decision bits for the corresponding leaf node and the node label for the corresponding leaf node, producing a product for the corresponding leaf node; summing the products for the corresponding leaf node; and for at least one data item in the second private data set, returning the summed product for a leaf node corresponding to the data item as an indication of whether the data item is contained in the first private data set. Claim Rejections – 35 USC § 103 07-20-aia AIA 7. 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 of this title, 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. 07-21-aia AIA 8. Claim s 2-5, 7-12, 14-19, and 21, are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. U.S. Patent Application Publication No. 2016/0156595 (hereinafter Wu) in view of Bacon et al. U.S. Patent Application Publication No. 2017/0063525 (hereinafter ‘525) . As to independent claim 9, “A method for intersecting a first private data set of a server computing device and a second private data set of a client computing device, comprising: accessing a binary tree data structure representing the first private data set, the binary tree data structure containing nodes having corresponding decision bits” is taught in Wu paragraphs 3, 29, 31, and 34-35; “for each leaf node in the binary tree data structure, aggregating the decision bits along a path, using homomorphic multiplication, from a root to the corresponding leaf node of the binary tree data structure and storing the aggregated decision bits with the corresponding leaf node, and performing a homomorphic multiplication of the aggregated decision bits for the corresponding leaf node and a node label for the corresponding leaf node, producing a product for the corresponding leaf node; summing the products for the corresponding leaf node” is taught in Wu paragraphs 21, 26, 53, 58-60, and 64; the following is not explicitly taught in Wu: “and for at least one data item in the second private data set, returning the summed product for a leaf node corresponding to the data item as an indication of whether the data item is contained in the first private data set” however ‘525 teaches searching for desired data within an encrypted set of data using a fully homomorphic encryption (without decrypting) in the Abstract and paragraph 20. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of secure computer evaluation of decision trees taught in Wu to include a means to determine if a desired data item is contained in the first private data set. One of ordinary skill in the art would have been motivated to perform such a modification to utilize homomorphic encryption schemes to protect data and enable computation on ciphertext, see ‘525 paragraphs 3-4. As to dependent claim 10, “The method of claim 9, wherein each leaf node in the binary tree data structure has a positive node label if a corresponding bit string is contained in the first private data set and a negative node label if the corresponding bit string is not contained in the first private data set” is taught in ‘525 Abstract and paragraph 20. As to dependent claim 11, “The method of claim 9, wherein the client computing device generates a public key, a private key, and an evaluation key and sends the public key and the evaluation key to a server computing device” is shown in Wu Abstract paragraphs 3 and 31. As to dependent claim 12, “The method of claim 9, wherein the accessing the binary tree data structure includes inserting each data item in the first private data set into the binary tree data structure as a leaf node by traversing the binary tree data structure according to each node's left child label and right child label, and collecting the leaf nodes in a leaves queue” is disclosed in Wu Abstract paragraphs 28 and 31. As to dependent claim 14, “The method of claim 12, wherein the traversing comprises marking any untraversed subtrees in the binary tree data structure with a negative label” is taught in Wu paragraphs 34-35. As to dependent claim 15, “The method of claim 9, wherein the method is performed on a server computing device” is shown in Wu paragraph 31. As to independent claim 2, this claim is directed to a system executing the method of claim 9; therefore, it is rejected along similar rationale. As to dependent claims 3-5 and 7-8, these claims contain substantially similar subject matter as claims 10-12 and 14-15; therefore, they are rejected along similar rationale. As to independent claim 16, this claim is directed to a non-transitory machine-readable medium storing instructions executing the method of claim 9; therefore, it is rejected along similar rationale. As to dependent claims 17-19 and 21, these claims contain substantially similar subject matter as claims 10-12 and 14; therefore, they are rejected along similar rationale . 07-21-aia AIA 9. Claim s 6, 13, and 20, are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. U.S. Patent Application Publication No. 2016/0156595 (hereinafter Wu) in view of Bacon et al. U.S. Patent Application Publication No. 2017/0063525 (hereinafter ‘525) in further view of Valdes et al. U.S. Patent Application Publication No. 2023/0186106 (hereinafter ‘106) . As to dependent claim 13, the following is not explicitly taught in Wu and ‘525: “The method of claim 12, wherein the accessing the binary tree data structure further comprises pruning the binary tree data structure by successfully removing a first two elements in the leaves queue and, if they have an identical parent and node label, transforming their parent into a lead node with the same label and adding that transformed parent to an end of the leaves queue” however ‘106 teaches pruning decision trees in paragraphs 36 and 46. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention of secure computer evaluation of decision trees taught in Wu and ‘525 to include a means to prune the binary tree data. One of ordinary skill in the art would have been motivated to perform such a modification to improve upon decision trees, see ‘106 paragraph 2. As to dependent claims 6 and 20, these claims contain substantially similar subject matter as claim 13; therefore, they are rejected along similar rationale. Conclusion 10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ellen Tran whose telephone number is (571) 272-3842. The examiner can normally be reached Monday-Friday. Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Pwu can be reached at (571) 272-6798. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. ____________________________ /ELLEN TRAN/Primary Examiner, Art Unit 2433 12 June 2026 Application/Control Number: 19/075,304 Page 2 Art Unit: 2433 Application/Control Number: 19/075,304 Page 3 Art Unit: 2433 Application/Control Number: 19/075,304 Page 4 Art Unit: 2433 Application/Control Number: 19/075,304 Page 5 Art Unit: 2433 Application/Control Number: 19/075,304 Page 6 Art Unit: 2433 Application/Control Number: 19/075,304 Page 7 Art Unit: 2433 Application/Control Number: 19/075,304 Page 8 Art Unit: 2433 Application/Control Number: 19/075,304 Page 10 Art Unit: 2433 Application/Control Number: 19/075,304 Page 11 Art Unit: 2433 Application/Control Number: 19/075,304 Page 12 Art Unit: 2433 Application/Control Number: 19/075,304 Page 13 Art Unit: 2433
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