DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
This action is in reply to the remarks/arguments for Application 19/088,440 filed on 24 March 2025.
Claims 1-20 have been previously canceled.
Claims 21-40 have been added.
Claims 21-40 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statements filed 4 April 2024 and 8 August 2025 have been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL--The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. § 112, first Paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claim 21, the limitation recites “detecting, by one or more authorized nodes of the first shard according to a portion of the information maintained at the first shard, one or more unauthorized nodes participating in a quorum of the second shard”; and “reconfiguring at least the second shard of the distributed ledger responsive to the detecting”. However, there is no discussion or disclosure in the Specification as to the detecting by authorized nodes of a first shard, one or more unauthorized nodes participating in a quorum of a second shard; further wherein the second shard is reconfigured responsive to first detecting.
Therefore, the Specification does not demonstrate possession by indicating and/or describing where the above subject matter may be found. Because the Specification could not convey to one of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date, the claim is rejected as failing to comply with the written description requirement.
Examiner is unable to find where, in the specification, description of an actual reduction to practice which would be evidenced by formulas, flow-charts, programming steps, etc. that are sufficiently detailed can be found to enable the devices recited (e.g., Internet, online portal, network) to perform the steps described. (Lack of algorithm, MPEP 2161.01 I, “In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.”).
There is no description that provides for how one of ordinary skill in the art would practice the instant invention with any known or novel tool. Thus even though some of the claim language is supported in disparate portions of the specification, the claimed invention as a whole is directed to a "black box" that is not supported by any generic or specific examples that show possession thereof nor could the outcomes thereof be predicted or replicated. "Generic claim language appearing in ipsis verbis in the original specification does not satisfy the written description requirement if it fails to support the scope of the genus claimed [see Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) (en banc)]."
The instant specification lacks any description of an actual reduction to practice which would be evidenced by formulas, flow-charts, programming steps, etc. that are sufficiently detailed to show that Applicant was in possession of the claimed invention as a whole. Thus there is no evidence of a complete specific application or embodiment to satisfy the requirement that the description is set forth "in such full, clear, concise, and exact terms" to show possession of the claimed invention. Fields v. Conover, 443 F.2d 1386, 1392, 170 USPQ 276, 280 (CCPA 1971 ).
Claims 28 and 35 recite substantially the same limitations as claim 21. Therefore the same reasoning applies to claims 28 and 35. Dependent claims 22-27, 29-34 and 36-40 are rejected based dependency on rejected base claims 21, 28 and 35.
Appropriate correction is respectfully required. Applicant is respectfully required to provide citation to the original disclosure for any amendments.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper time wise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application 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 Omum, 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 non-statutory double patenting ground provided that the conflicting application or patent is either 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.
Claims 21-40 of the instant application, 19/088,440 (hereinafter application “ ‘440”)are rejected on the ground of non-statutory double patenting over claims 21-40 of U.S. Patent No. 12,288,196 (hereinafter patent “ ‘196”), since the claims, if allowed, would improperly extend the “right to exclude” already in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: Independent claims 1, 28 and 35 of the instant application recite substantial features that can be found in independent claims 1, 28 and 35 alone or in combination, of the ‘196 patent, Additionally, the dependent claims of the instant application recites similar and/or substantial features as the dependent claims of the ‘196 patent.
Additionally, independent claims 1, 28 and 35 of the current application, as best understood by the Examiner, encompasses the same or substantially the same subject matter and scope and also recites substantial features that can be found in the independent claims of the ‘’196 patent.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of the claims of the ‘’196 patent as a general teaching for performing the same function as claimed in the present invention. The instant claims above obviously encompass the claimed invention of the ‘196 patent and/or differs only in terminology.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent.
Claim Rejections – 35 USC § 103
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 21-40 are rejected under U.S.C. 103 as being unpatentable over Merriman et al., US 2013/0290249 A1 (“Merriman”), in view of Creighton, IV et al., US 2017/0278186 A1 (“Creighton”).
Re Claims 1-20: (Canceled)
Re Claim 21: (New) Merriman discloses a computer implemented method, comprising:
maintaining, on a plurality of computing devices individually comprising at least one processor and a memory and collectively configured to participate as a plurality of nodes in a distributed ledger system, information regarding one or more transactions of a distributed ledger, the distributed ledger comprising a plurality of ledger shards including at least a first shard and a second shard; (Abstract: “managing asynchronous replication in a distributed database environment …”; [0013] “… method further comprises an act of applying any transactions from the database hosted on the new primary node to the database hosted on the original primary node …”; [0009] “According to another aspect, a distributed database system comprises a plurality of nodes that host database instances, where each node is intended to host a copy of a database”; [0021] “In one example, database partitions are configured as shards. Each database shard can be accessed as an instantiation of the database for the data within a given partition, for example, by a routing process. The database shard can be configured to handle reads, writes, and updates to the data within the given partition. The term shard can be used to refer to the data within a given partition …”)
Regarding the limitation(s) comprising:
detecting, by one or more authorized nodes of the first shard according to a portion of the information maintained at the first shard, one or more unauthorized nodes participating in a quorum of the second shard;
reconfiguring at least the second shard of the distributed ledger responsive to the detecting.
Creighton makes these teachings in a related endeavor ([0035] “To repair errors on the ledger new data is added which reverses the erroneous data …”; [0076] “Non-matching signatures at one node will not propagate to other nodes and the consensus of the primary ledger ignores the erroneous node until that node is repaired”; [0071] “… error checking worker … applies a transaction to the transaction log to reverse an invalid transaction”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Creighton with the invention of Merriman as disclosed above for the motivation of improve the rate of processing for cryptographic ledgers.
Re Claim 22: (New) Merriman in view of Creighton discloses the computer implemented method of claim 21. Regarding the limitation comprising:
wherein the information comprises an unforgeable summary of a present state of the second shard, and wherein the unforgeable summary comprises a cryptographic hash of a previous transaction included in the second shard.
Creighton makes these teachings in a related endeavor ([0005] “ Each data block in the primary ledger contains a unique cryptographic hash. The hashes can be made available to all authorized parties”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Creighton with the invention of Merriman as disclosed above for the motivation of improve the rate of processing for cryptographic ledgers.
Re Claim 23: (New) Merriman in view of Creighton discloses the computer implemented method of claim 22. Merriman further discloses:
wherein the shard transaction is sent to a leader verifier of the one or more authorized nodes; and
wherein the computer-implemented method further comprises proposing, by the leader verifier, the shard transaction to a set of verifier processes active on the first shard according to a consensus protocol.
([0009] “Primary nodes are elected from within the plurality of nodes. In one example, a primary node is elected using a consensus protocol. A consensus protocol can include querying
the plurality of nodes to determine the node with the freshest data. Once a majority of nodes agree on the best node, consensus exists and the node is elected primary”; [0029] “According to one embodiment, the configuration component is further configured to verify split occurred properly. According to one embodiment, the configuration component is further configured to verify migration occurred properly.”)
Re Claim 24: (New) Merriman in view of Creighton discloses the computer implemented method of claim 22. Merriman further discloses:
wherein the unforgeable summary comprises information regarding verifier processes of the second shard. ([0029] “According to one embodiment, the configuration component is further configured to verify split occurred properly. According to one embodiment, the configuration component is further configured to verify migration occurred properly.”; [0311] “configuration servers can include a verification component that is configured to verify a new chunk copy is consistent. In some embodiments, the functions for verifying and versioning can be handled concurrently, separately, serially, and can be controlled by one, the other, or both of the verification and/or versioning components”)
Re Claim 25: (New) Merriman in view of Creighton discloses the computer implemented method of claim 22. Merriman further discloses:
wherein the unforgeable summary comprises a count of transactions included in the second shard. ([0122] “In some embodiments, the consistent state represents the state of the database corresponding to committed transactions replicated from the former master”; [0314] “According to one embodiment, monitoring the shard cluster at 1702 includes determining a chunk count for each shard server in the shard cluster”)
Re Claim 26: (New) Merriman in view of Creighton discloses the computer implemented method of claim 22. Merriman further discloses:
receiving, at a dispatcher of the distributed ledger system, a transaction request directed to the first shard;
sending, by the dispatcher, a shard transaction comprising the received transaction request and the unforgeable summary, to the one or more authorized nodes of the first shard to perform the transaction request; and
maintaining, at the first shard, the unforgeable summary at the first shard responsive to successful completion of the shard transaction.
([0320] “the balancer process can execute operations against the individual shard servers … The shard cluster can be configured to insure the activity of balancing is transparent to any querying/updating activity that occurs across the database” [0210] “… The former primary node can retrieve any new operations from 0the primary, execute the new operations …”; [0198] “… secondary nodes are configured to provide reporting on status, and in some examples, can be configured to track status information on other nodes”)
Re Claim 27: (New) Merriman in view of Creighton discloses the computer implemented method of claim 23. Merriman further discloses:
wherein detecting the one or more unauthorized nodes comprises detecting a revision to the previous transaction included in the second shard, comprising: reading an altered summary of the present state from the second shard; and verifying that the altered summary does not match the maintained unforgeable summary.
([0013] “the act of restoring includes an act of reversing transactions for the database hosted on the original primary node to reach the consistent state”; [0029] “According to one embodiment, the configuration component is further configured to verify split occurred properly. According to one embodiment, the configuration component is further configured to verify migration occurred properly.”; [0311] “configuration servers can include a verification component that is configured to verify a new chunk copy is consistent. In some embodiments, the functions for verifying and versioning can be handled concurrently, separately, serially, and can be controlled by one, the other, or both of the verification and/or versioning components”; [0170] “… having multiple writable nodes for the same data may introduce inconsistency that requires complex resolution logic to reconcile conflicting transactions”)
Re Claim 28: (New) Claim 28, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 21. Accordingly, claim 28 is rejected in the same or substantially the same manner as claim 21.
Re Claim 29: (New) Claim 29, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 22. Accordingly, claim 29 is rejected in the same or substantially the same manner as claim 22.
Re Claim 30: (New) Claim 30 as best understood by the Examiner, encompasses the same or substantially the same scope as claim 23. Accordingly, claim 30 is rejected in the same or substantially the same manner as claim 23.
Re Claim 31: (New) Claim 31, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 24. Accordingly, claim 31 is rejected in the same or substantially the same manner as claim 24.
Re Claim 32: (New) Claim 32, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 25. Accordingly, claim 32 is rejected in the same or substantially the same manner as claim 25.
Re Claim 33: (New) Claim 33, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 26. Accordingly, claim 33 is rejected in the same or substantially the same manner as claim 26.
Re Claim 34: (New) Claim 34, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 27. Accordingly, claim 34 is rejected in the same or substantially the same manner as claim 27.
Re Claim 35: (New) Claim 35, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 21. Accordingly, claim 35 is rejected in the same or substantially the same manner as claim 21.
Re Claim 36: (New) Claim 36, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 22. Accordingly, claim 36 is rejected in the same or substantially the same manner as claim 22.
Re Claim 37: (New) Claim 37, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 23. Accordingly, claim 37 is rejected in the same or substantially the same manner as claim 23.
Re Claim 38: (New) Claim 38, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 24. Accordingly, claim 38 is rejected in the same or substantially the same manner as claim 24.
Re Claim 39: (New) Claim 39, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 25. Accordingly, claim 39 is rejected in the same or substantially the same manner as claim 25.
Re Claim 40: (New) Claim 40 as best understood by the Examiner, encompasses the same or substantially the same scope as claims 26 & 27. Accordingly, claim 40 is rejected in the same or substantially the same manner as claims 26 & 27.
Conclusion
The prior art(s) made of record and not relied upon is/are considered pertinent to applicant's disclosure.
Finlow-Bates, (US 2017/0075941 A1) discloses a consensus system and method for adding data to a blockchain. A method and apparatus is presented for reaching consensus on adding data to a distributed ledger system in which no central trusted authority is available, comprising sending an
announcement message by a network connected device to a plurality of network connected devices over a peer-to-peer network, said message providing an identification of the network connected device using a public key of a public/private key pair, a unique address identifier, and a hash. Subsequently, after a waiting period measured in, for example, time or blocks of data, the network connected device may submit data for inclusion in the distributed ledger. If the announcement message and preceding data in the distributed ledger satisfy a predetermined condition, the plurality of network connected devices may include the data in the distributed ledger. If the network connected device fails to submit the data when the predetermined condition is satisfied, the announcement message may be canceled.
Claims 21-40 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon, can be reached at 571-272-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692