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 .
DETAILED ACTION
This action is in response to the application filed on 03/18/2025, in which claims 1-20 are presented for the examination.
Drawings
The drawings filed on 03/18/2025 are accepted by the examiner.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/26/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 U.S.C. § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
As to claim 1:
Step 1 Analysis: Is the claim to a process, machine, manufacture or composition of matter? See MPEP § 2106.03.
Yes, the claim is to a machine.
Step 2A Prong One Analysis: Does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1).
The claim is directed to the abstract idea of :
Authenticating received data and conditionally performing a task based on the validity of that data. These steps, when considered in their broadest reasonable interpretation, are directed to:
Data verification, and conditional execution of instructions based on verification results; such operations are analogous to fundamental data processing and decision-making steps, mental processes that can be performed by a human using pen and paper.
Accordingly, the claim is directed to an abstract idea.
Step 2A Prong Two Analysis: Does the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d).
The claim additionally recites generic computer components including, a memory, a processing device, a storage device and a blockchain data structure.
However, these elements are recited at a high level of generality and perform their routine and conventional functions: storing data, retrieving data, validating data and executing data. The use of blockchain data block as a data source does not, by itself, amount to a technological improvement to blockchain technology, nor does it improve the functioning of the computer or another technology or technical field.
Rather, the blockchain is used as an information source for authentication, and the processor performs conventional processing of that information.
Therefore, the claim does not integrate the abstract idea into a practical application.
Step 2B Analysis: Does the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05.
The claim does not recite additional elements that amount to significantly more than the abstract idea.
The additional claim elements, considered individually or in combination, are generic computer components performing their well-understood, routine and conventional functions and conventional authentication and execution logic applied to received data.
No technical improvement to computer functionality, network architecture, blockchain operation, or device testing infrastructure is recited.
The claim merely applies the abstract idea using generic computing technology.
For the reasons above, the claim 1 is directed to an abstract idea and does not include additional elements that amount to significantly more than the exception itself. Dependent claims 2-9 are rejected for the same rationale.
As to claim 10:
Step 1 Analysis: Is the claim to a process, machine, manufacture or composition of matter? See MPEP § 2106.03.
Yes, the claim is to a machine.
Step 2A Prong One Analysis: Does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1).
The claim is directed to the abstract idea of :
Authenticating received data and conditionally performing a task based on the validity of that data. These steps, when considered in their broadest reasonable interpretation, are directed to:
Data verification, and conditional execution of instructions based on verification results; such operations are analogous to fundamental data processing and decision-making steps, mental processes that can be performed by a human using pen and paper.
Accordingly, the claim is directed to an abstract idea.
Step 2A Prong Two Analysis: Does the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d).
The claim additionally recites generic computer components including, a memory, a processing device, a storage device and a blockchain data structure.
However, these elements are recited at a high level of generality and perform their routine and conventional functions: storing data, retrieving data, validating data and executing data. The use of blockchain data block as a data source does not, by itself, amount to a technological improvement to blockchain technology, nor does it improve the functioning of the computer or another technology or technical field.
Rather, the blockchain is used as an information source for authentication, and the processor performs conventional processing of that information.
Therefore, the claim does not integrate the abstract idea into a practical application.
Step 2B Analysis: Does the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05.
The claim does not recite additional elements that amount to significantly more than the abstract idea.
The additional claim elements, considered individually or in combination, are generic computer components performing their well-understood, routine and conventional functions and conventional authentication and execution logic applied to received data.
No technical improvement to computer functionality, network architecture, blockchain operation, or device testing infrastructure is recited.
The claim merely applies the abstract idea using generic computing technology.
For the reasons above, the claim is directed to a judicial exception (an abstract idea) and does not include additional elements that amount to significantly more than the exception itself. Dependent claims 11-18 are rejected for the same rationale.
As to claim 19:
Step 1 Analysis: Is the claim to a process, machine, manufacture or composition of matter? See MPEP § 2106.03.
Yes, the claim is to a manufacture or composition of matter.
Step 2A Prong One Analysis: Does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1).
The claim is directed to the abstract idea of :
Authenticating received data and conditionally performing a task based on the validity of that data. These steps, when considered in their broadest reasonable interpretation, are directed to:
Data verification, and conditional execution of instructions based on verification results; such operations are analogous to fundamental data processing and decision-making steps, mental processes that can be performed by a human using pen and paper.
Accordingly, the claim is directed to an abstract idea.
Step 2A Prong Two Analysis: Does the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d).
The claim additionally recites generic computer components including, a processing device, a storage device and a blockchain data structure.
However, these elements are recited at a high level of generality and perform their routine and conventional functions: storing data, retrieving data, validating data and executing data. The use of blockchain data block as a data source does not, by itself, amount to a technological improvement to blockchain technology, nor does it improve the functioning of the computer or another technology or technical field.
Rather, the blockchain is used as an information source for authentication, and the processor performs conventional processing of that information.
Therefore, the claim does not integrate the abstract idea into a practical application.
Step 2B Analysis: Does the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05.
The claim does not recite additional elements that amount to significantly more than the abstract idea.
The additional claim elements, considered individually or in combination, are generic computer components performing their well-understood, routine and conventional functions and conventional authentication and execution logic applied to received data.
No technical improvement to computer functionality, network architecture, blockchain operation, or device testing infrastructure is recited.
The claim merely applies the abstract idea using generic computing technology.
For the reasons above, the claim is directed to a judicial exception (an abstract idea) and does not include additional elements that amount to significantly more than the exception itself. Dependent claim 20 is rejected for the same rationale.
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, 2, 3, 4, 5, 7, 10, 11, 12, 13, 14, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 3, 4, 6, 7, 5, 17, 12, 13, 15, 16, 14 of U.S. Patent No. 12,277,043 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 1, 2, 3, 4, 5, 7, 10, 11, 12, 13, 14, 16 of the instant application falls entirely within the scope of claims 8, 3, 4, 6, 7, 5, 17, 12, 13, 15, 16, 14 of U.S. Patent No. 12,277,043 respectively or in other words, Claims 1, 2, 3, 4, 5, 7, 10, 11, 12, 13, 14, 16 of the instant application anticipated by claims 8, 3, 4, 6, 7, 5, 17, 12, 13, 15, 16, 14 of U.S. Patent No. 12,277,043 respectively.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7-8, 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 7, 8 recite the limitation "the header block”. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the memory”. There is insufficient antecedent basis for this limitation in the claim.
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 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.
(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 1, 9-10, 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al. (US 2019/0251018, referred herein after Jin).
As per claim 1, 10, 19, Jin discloses a system comprising: a memory ([0045], Fig. 1, memory); and a processing device (Fig. 1, processor, [0045]),
receiving, from a storage device, a data block of a blockchain, wherein the data block comprises a data block payload comprising test data of an in-system test to be performed on a target device, which is external with respect to the storage device (Fig.3, test blockchain 304, [0035], [0037], test blocks are included for tests to be performed);
determining whether the data block is valid by authenticating the data block; and ([0018], [0021], block validity is authenticated);
in response to determining that the data block is valid, performing the in-system test on the target device by processing at least a portion of the test data extracted from the data block payload (Fig. 4, step 406, [0043], [0044], test block comprising test data executes the test using extracted test data from the test data block).
As per claim 9, 18, Jin discloses the system of claim 1, wherein the operations further comprise generating the blockchain based on the test data (Fig.3, test blockchain 304, [0035], [0037], test blocks are included for tests to be performed).
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-3, 6, 8, 11-12, 15, 17, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jin in view of Brandeburg et al. (US 2016/0191678, referred hereinafter Brandeburg).
As per claim 2, 11, 20, Jin does not specifically disclose the system of claim 1, wherein authenticating the data block comprises comparing a generated digest of the data block to a received digest of the data block;
However, Brandeburg discloses comparing a generated digest of the data block to a received digest of the data block ([0031], [0032], comparing the extracted hash value with the hash value of the payload of the received network packet);
Therefore it would have been obvious to the one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate teaching of Brandeburg’s method for data integrity of multi-network packet operations into Jin’s testing platform for blockchain networks because one of the ordinary skill in the art would have been motivated to ensure the header’s contents are valid, unaltered, and originate from a trusted source.
As per claim 3, 12, Jin does not specifically disclose the system of claim 1, wherein the operations further comprise generating, for each data block of a subset of the blockchain, a respective digest to authenticate a next data block of the blockchain;
However, Brandeburg discloses the hash of the new block may be used as the seeding for the next set ([0017], [0038], [0040]);
Therefore it would have been obvious to the one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate teaching of Brandeburg’s method for data integrity of multi-network packet operations into Jin’s testing platform for blockchain networks because one of the ordinary skill in the art would have been motivated to ensure the header’s contents are valid, unaltered, and originate from a trusted source.
As per claim 6, 15, Jin does not specifically disclose the system of claim 1, wherein the blockchain further comprises a header block comprising a header block payload, and wherein the operations further comprise authenticating the header block based on the header block payload;
However, Brandeburg discloses a header block comprising a header block payload, and wherein the operations further comprise authenticating the header block based on the header block payload (Fig. 6, step 606, [0041], Fig. 6, step 620, [0043], [0044]);
Therefore it would have been obvious to the one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate teaching of Brandeburg’s method for data integrity of multi-network packet operations into Jin’s testing platform for blockchain networks because one of the ordinary skill in the art would have been motivated to ensure the header’s contents are valid, unaltered, and originate from a trusted source.
As per claim 8, 17, Jin does not specifically disclose the system of claim 4, wherein the header block further comprises a digest of an initial data block of the blockchain;
However, Brandeburg discloses the header block further comprises a digest of an initial data block of the blockchain Fig. 6, step 606, [0041], Fig. 6, step 620, [0043], [0044]);
Therefore it would have been obvious to the one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate teaching of Brandeburg’s method for data integrity of multi-network packet operations into Jin’s testing platform for blockchain networks because one of the ordinary skill in the art would have been motivated to ensure the header’s contents are valid, unaltered, and originate from a trusted source.
Claims 4, 5, 7, 13-14, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Jin in view of Wilke et al. (US 2020/0287707, referred hereinafter Wilke).
As per claim 4, 13, Jin discloses the system of claim 1, wherein the operations further comprise:
receiving a final data block of the blockchain, wherein the final data block comprises a predefined data pattern and a final data block payload, and wherein the predefined data pattern indicates that the final data block is a final block of the blockchain;
determining whether the final data block is valid by authenticating the final data block based on a digest of the final data block, wherein the digest of the final data block is comprised within a penultimate data block of the blockchain; and in response to determining that the final data block is valid, processing the final data block payload;
However, Wilke discloses receiving a final data block of the blockchain, wherein the final data block comprises a predefined data pattern and a final data block payload, and wherein the predefined data pattern indicates that the final data block is a final block of the blockchain ([0062], [0073], [0112]);
determining whether the final data block is valid by authenticating the final data block based on a digest of the final data block, wherein the digest of the final data block is comprised within a penultimate data block of the blockchain [0007]; and in response to determining that the final data block is valid, processing the final data block payload ([0017], [0038], [0040]);
Therefore it would have been obvious to the one of ordinary skill in the art before the
effective filing date of the claimed invention to incorporate teaching of Wilke's method of
linking data blocks and checking integrity of blockchain structure into Jin’s testing platform for blockchain networks because one of the ordinary skill in the art would have been motivated to provide integrity of the data blocks of block chain structure.
As per claim 5, 14, Wilke discloses the system of claim 4, wherein the operations further comprise, in response to processing the final data block payload, purging at least one of the predefined data pattern or the final data block payload from the memory ([0006], [0014], [0075], "the check values are written into the following data blocks, it is noticeable if a previous data block has been manipulated, but it is conceivable that the last data block of the blockchain generated in this way can be removed or manipulated).
As per claim 7, 16, Wilke discloses the system of claim 4, wherein the operations further comprise, in response to determining that the header block is valid, purging the header block payload from the memory ([0006], [0014], [0075]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form 892.
Moran teaches a method for operating a content sending apparatus attachable to a network.
Kaartinen teaches a method for updating software on a device, which may verify the digest of a subsequently received software update matches the digest in the manifest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAMINI B PATEL whose telephone number is (571)270-3902. The examiner can normally be reached on M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashish Thomas can be reached on 571-272-0631. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KAMINI B PATEL/Primary Examiner, Art Unit 2114
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