DETAILED ACTION
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 . This office action is in response to the application filed on 05/14/2025. Claims 1-20 are cancelled. Claims 21-40 newly added. Claims 21-40 are pending.
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.
Double Patenting
Claim 21-40 of this application is patentably indistinct from claim 1-14 of Application No. 12323527. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Allowable Subject Matter
Claims 21-40 are rejected as there is no standing prior art rejection, However, these claims would be allowable if they overcome the current issued statutory type of double patent rejection.
The following is an examiner’s statement of reasons for allowance:
The invention relates to a system allows a user to store his personally identifiable information (PII) on a personal device. When a third party wants to access the user’s PII (e.g., to update the PII or to retrieve the PII), a notification will be presented to the user on the personal device seeking consent to the access. The notification may inform the user as to what information is being requested and which entity is requesting the access. The requested access will be denied unless the user consents to the access. In this manner, the user is given control over the dissemination of his PII. Additionally, the system alters or adjusts the PII that is stored in third-party servers so that even if these servers are breached, the user’s actual PII is not exposed.
Regarding claims 21, 28 and 35, although the prior art of record teaches generate a public encryption key of the first hardware device ;generate a private encryption key of the first hardware device; receive, from a user, personally identifiable information of the user; a second hardware device ; a hardware processor separate from the first hardware device, the hardware processor configured to generate, based on the public encryption key of the first hardware device alone, a public encryption key and a private encryption key of the hardware processor; wherein the first hardware device is further configured to encrypt the personally identifiable information to produce first encrypted personally identifiable information using the public encryption key of the hardware processor; wherein the hardware processor is further configured to: receive the first encrypted personally identifiable information from the first hardware device; decrypt the first encrypted personally identifiable information using the private encryption key of the hardware processor to produce the personally identifiable information; generate a token representing the personally identifiable information.
None of the prior art, alone or in combination teaches receive, from the second hardware device, a salted passphrase associated with the first hardware device; receive, from the second hardware device, a public encryption key of the second hardware device; generate a second public encryption key of the hardware processor based on the public encryption key of the second hardware device; and link the second hardware device to the first hardware device using the salted passphrase, wherein the second hardware device is configured to download the personally identifiable information after the second hardware device is linked to the first hardware device in view of the other limitations of claims 21, 28 and 35. Therefore the claims are allowable over the cited prior arts.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAHRIAR ZARRINEH whose telephone number is (571)272-1207. The examiner can normally be reached Monday-Friday, 8:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jorge Ortiz-Criado can be reached on 571-272-7624. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAHRIAR ZARRINEH/Primary Examiner, Art Unit 2496
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