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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 5-10, 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enigma: Decentralized Computation Platform with Guaranteed Privacy in view of Koorella et al. (US 2020/0349261) hereafter Koorella and Frank et al. (US 2019/0259034) hereafter Frank and Dabell et al. (US 2018/0359312) hereafter Dabell.
5. Enigma discloses a secure resource management system, comprising:
a resource record repository configured for storing a resource record for a resource, the resource record comprising information of a resource provider of the resource, information of resource users having a right to obtain the resource, and a resource transaction history (Section 3, Code is executed both on the blockchain (public parts) and on Enigma (private or computationally intensive parts); Section 1, public nature of the blockchain guarantees transparency over how applications work
and leaves an irrefutable record of activities, providing strong incentives for honest behavior. [blockchain provides transaction history, Enigma provides right to obtain resource]; section 6, specifically 6.2.2, Storing and loading data for direct access via the DHT (distributed hash table)); and
a resource verification subsystem configured for:
receiving a request to verify an authorized user of the resource (Section 6, Algorithm 3),
responsive to receiving the request, querying the resource record repository to retrieve the resource record (Section 6, Algorithm 3 – CheckPermission -> Algorithm 2, permissions check against the blockchain),
determining, based on the resource record, a resource user currently having a right to obtain the resource as the authorized user of the resource (Section 6, Algorithm 2), and
transmitting, in response to the request, the verification result identifying the authorized user of the resource, wherein the verification result is useable to grant access to the resource by the authorized user (Section 6, Algorithm 2).
Enigma does not explicitly disclose a verification result to a remote computing device. However, in an analogous art, Koorella discloses database private document sharing with smart contracts for authorization including a verification result to a remote computing device (para 49-53, proposal response 292 is sent back to the client 260 along with an endorsement signature, if approved). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Enigma with the implementation of Koorella in order to overcome the deficiencies of a centralized database such as fault tolerance, increased connectivity, reduced bottlenecks, etc. (para 3).
Enigma and Koorella do not explicitly disclose a remaining unused portion of the resource. However, in an analogous art, Frank discloses an authorization server communicating with an account provider computer and account access system including a remaining unused portion of a resource (para 64). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Enigma and Koorella with the implementation of Frank in order to determining whether or not there is a sufficient amount of resources in the account to satisfy the access request (para 63).
Enigma, Koorella, and Frank do not explicitly disclose predicting the value of the resource within the given time period, the prediction based on at least a determination of an amount of the resource available within the given time period and transmitting the predicted value. However, in an analogous art, Dabell discloses dynamic cloud pricing including predicting the value of the resource within the given time period, the prediction based on at least a determination of an amount of the resource available within the given time period and transmitting the predicted value (para 21). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Enigma, Koorella, and Frank with the implementation of Dabell in order to adjust pricing as a function of supply and demand (para 21).
6. Enigma, Koorella, Frank, and Dabell disclose the secure resource management system of claim 5, wherein the resource record repository is implemented in a secure database (Enigma, Section 3, Storage).
7. Enigma, Koorella, Frank, and Dabell disclose the secure resource management system of claim 5, wherein the resource record repository is implemented in a hybrid blockchain comprising a public blockchain and a private blockchain (Section 3); the public blockchain is configured to store an encrypted version of the resource transaction history contained in the resource record (Koorella, para 45) and the private blockchain is configured to store the resource record (Section 3).
8. Enigma, Koorella, Frank, and Dabell disclose the secure resource management system of claim 5, wherein the resource record repository is implemented in a public blockchain (Enigma, Section 3).
9. Enigma, Koorella, Frank, and Dabell disclose the secure resource management system of claim 5, wherein the resource verification subsystem is further configured for: receiving a resource transaction reporting message; and updating the resource record repository based on the resource transaction reporting message (Enigma, Section 3).
10. Enigma, Koorella, Frank, and Dabell disclose the secure resource management system of claim 9, wherein the resource transaction reporting message comprises data describing a resource distribution or a resource transfer (Enigma, Section 3; Section 1).
Claims 1-2, 14-19 are similar in scope to claims 5-10 and are rejected under similar 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,282,530 in view of Dabell et al. (US 2018/0359312) hereafter Dabell. The US Patent does not explicitly claim predicting the value of the resource within the given time period, the prediction based on at least a determination of an amount of the resource available within the given time period. However, in an analogous art, Dabell discloses dynamic cloud pricing including predicting the value of the resource within the given time period, the prediction based on at least a determination of an amount of the resource available within the given time period and transmitting the predicted value (para 21). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the implementation of Enigma, Koorella, and Frank with the implementation of Dabell in order to adjust pricing as a function of supply and demand (para 21).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R TURCHEN whose telephone number is (571)270-1378. The examiner can normally be reached Monday-Friday: 7-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luu Pham can be reached at 571-270-5002. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R TURCHEN/Primary Examiner, Art Unit 2439
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