DETAILED ACTION
Office Action Summary
Claims 1-13, 16-18, 20 and 22-24 are pending in the instant application.
Claims 1-13, 16-18, 20 and 22-24 are rejected under 35 USC § 101/112/102.
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 .
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.
Claim Rejections - 35 USC § 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 1-13, 16-18, 20 and 22-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-13, 16-18, 20 and 22-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1 and 16 recite receiving a counter, evaluating a function, incrementing, making a determination and outputting a proof.
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, is an abstract idea drawn to performing mathematical calculations but for the recitation of generic computer components. That is, other than reciting “a processor” to perform the steps, nothing in the claim element precludes the steps from merely being the performance of mathematical calculations. If a claim limitation, under its broadest reasonable interpretation, covers performing the abstract idea of mathematical calculations but for the recitation of generic computer components, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element – using a processor to perform the steps. The processor in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of obtaining a key, receiving an identifier, and generating a secret key) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2-13, 17-18, 20 and 22-24 are also rejected for the same reason as cited above for not reciting any additional elements that amount to significantly more than the judicial exception.
Claim Analysis – 35 USC § 112 (f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “nodes configured to” in claims 1 and “apparatus configured to” in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.. Please also see the 112, 2nd paragraph, rejection below for further details.
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.
Claims 2-13, 17-18, 20 and 22-24 are rejected under 35 USC § 112 b.
Claim limitation “executing a series of nodes” in claim 1 is unclear as a node is defined as hardware including a process in the spec and it is not clear how hardware is executed.
Claim limitations “nodes configured to” in claims 1 and “apparatus configured to” in claim 16 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
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.
Claims 2-13, 17-18, 20 and 22-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kiraz et al. (WO 2022/137173 A1) (Art furnished in IDS 4/14/2025) hereinafter referred to as Kiraz.
As per claim 1, Kiraz teaches A computer-implemented method for generating a zero-knowledge proof for proving knowledge of a pre-image value (zkSNARK for proofing knowledge of a preimage also referred to as an input message) (fig. 5, 6a-d, 7; p.29, I.16-p-43, .15),
the method comprising: obtaining a series of pre-image blocks which, when combined, form the pre- image value (the input message is padded, called RealContentPad which is split into a plurality of messages blocks, called RealContent)) (fig. 6a-d, steps S606, S608-yes branch, S622); and
executing a series of nodes, wherein each node of the series of nodes is configured to (plurality of blockchain nodes):
receive a respective current state (state; the blockchain transaction has a state)
and a respective current iteration counter (value i) (fig. 6c, step S624);
evaluate an instance of a predefined compression function, based on the respective current state, to compute a respective next state (fig. 6c-d, steps S624-S642);
increment the respective current iteration counter to generate a respective next iteration counter (fig. 6d, step S646);
determine, based on a respective next pre-image block of the series of pre- image blocks, that the predefined compression function instance has been evaluated correctly (fig. 6d, step S640 and fig. 10a-b, step S1024);
and output a proof, wherein the proof attests to the predefined compression function instance being evaluated correctly (fig. 6d, step S640 and fig. 10a-b, step S1010-1026);
wherein the proof generated by a final node of the series of nodes proves knowledge of the pre-image value (fig. 6d, step S640 and fig. 10a-b, step S1010-1026);.
Claim 16 is the system claim that corresponds to the method claim 1 and is rejected using the same rational.
Claims 2, 17: Kiraz, fig. 6, step S624, the process 600 uses a predetermined public initialization vector Xo, p.43, 1.8-9
Claims 3, 18: Kiraz, fig. 6a-d, steps S604-S608, then depending on the two cases claimed here: A or B with respective subsequent computing
Claim 4: Kiraz, fig. 5, the pre-image is a hash, fig. 6a, step S604-S606
Claim 5: Kiraz, fig. 6d, step S644, fig. 10a-b for the verification Claims 6, 20: obvious from Kiraz, fig. 6a, steps S604-S606 and the compression function of SHA256, p.31, I.11-p.32, I.18
Claim 7: Kiraz fig. 10a-b, fig. 7
Claims 8, 22: Kiraz, obvious from the recursive nature of the proof
Claim 9: Kiraz, hash function SHA256 is used
Claims 10, 11: Kiraz, fig. 6a-d, p.43, I.20-30, fig. 10b for the verifying key, p.39, I.4-14
Claims 12, 13, 23, 24: using a pattern bit array is an obvious implementation detail in fig. 6a-d and the respective verification fig. 10a-b
Other Art of Record
Keuffer et al. (US 2018/0159689 A1) abstract teaches “The present invention relates to a method for generating an electronic signature of a document associated with a condensate obtained by a given hash function comprising performing by data-processing means (11b) of a server (10b) of steps of: (a) Receiving said condensate and a zero-knowledge proof of the fact that said condensate is indeed the result of application of said given hash function to said document; (b) Verifying that said zero-knowledge proof is valid; (c) Generating an electronic signature of the document from said condensate.”
Larmuseau (US 2022/255761 A1) abstract teaches “Some embodiments are directed to a device (101) for determining a summary of a genomic data entry describing one or more genomic sequences. The summary is for offering the genomic data entry to one or more other parties. The device obtains the genomic data entry and analyse the genomic data entry to verify whether it satisfies one or more predefined properties. The device computes a cryptographic commitment to the genomic data entry. For each satisfied property of the one or more predefined properties, the device constructs a non-interactive zero-knowledge proof (NIZK) proving that the cryptographic commitment commits to a genomic data entry satisfying the satisfied property. The device associates the NIZKs with the cryptographic commitment to obtain a summary of the genomic data entry.”
Zamani et al. (US 2021/157790 A1) abstract teaches “A method comprises a client device receiving a verification request comprising an interaction identifier and generating a random sampling of a number of block headers. The random sampling according to a random distribution generated based on a probability density function. The client device can query two or more full nodes for random samplings of block headers. The client device can receive the random samplings of block headers from the two or more full nodes and compare samplings of block headers received from two or more full nodes. The samplings of block headers are the random samplings of block headers. The client device can verify at least one block header of the samplings of block headers, then determine that a blockchain maintained by at least one of the two or more full nodes is valid in response to verifying the at least one block header of the samplings of block headers.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMON P KANAAN whose telephone number is (571)270-3906. The examiner can normally be reached on M-F (7AM-4PM).
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/SIMON P KANAAN/Primary Examiner, Art Unit 2407
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