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 .
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.
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Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12314244. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 is anticipated by claim 1 of U.S. Patent No. 12314244.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 10261711 by David Brett Pasirstein (hereafter Pasirstein).
Claim 1:
Pasirstein discloses “accessing an electronically stored data set;”[ accessing an electronically stored data set (portion of data; col. 2 lines 47-59, transaction sent by an application that identifies a portion of the data stored in a data store. The transaction includes an update to the portion of data)]
“generating a checksum of the accessed data set;”[ generating a checksum (hash; col. 2 lines 47-col. 3 line 6, updated reduced representation; col. 2 lines 47-col. 3 line 6 – reduced representation (e.g. hash); fig. 4 hash; the updated reduced representation is a hash of the update for portion of data) of the accessed data set (portion of data; col. 2 lines 47-59, transaction sent by an application that identifies a portion of the data stored in a data store. The transaction includes an update to the portion of data;)]
“creating a payload comprising” [creating a payload (such as row; col. 2 lines 66-67, appended to a distributed ledger; col. 5 lines 23-28, the root hash of the merkle tree may be appended to the distributed ledger. Alternatively a node hash (block), leaf hash (row) or a large portion of the Merkle tree, the whole tree, or some other cryptographically verifiable representation of the data maybe be appended to the distributed ledger; ]
“the generated checksum of the data set; and”[ the generated checksum (hash; col. 2 lines 47-col. 3 line 6, updated reduced representation col. 2 lines 47-col. 3 line 6 – reduced representation (e.g. hash); fig. 4 hash in the row; the updated reduced representation is a hash,) of the data set (col. 2 lines 47-59, transaction sent by an application that identifies a portion of the data stored in a data store. The transaction includes an update to the portion of data; portion of data)]
“an identifier for the data set; and “[an identifier (timestamp; fig. 4 timestamp in the row)for the data set (portion of data; col. 2 lines 47-59, an update to the portion of data]
“committing a transaction comprising the payload to a blockchain.” [committing a transaction comprising the payload to a blockchain (col. 2 lines 47-col. 3 line 6, the updated reduced representation may also be appended to the distributed ledger)]
Response to Arguments
Applicant's arguments filed 6/4/26 have been fully considered but they are not persuasive.
Applicant primarily asserts the following:
That Pasirstein does not disclose “creating a payload comprising: the generated checksum of the data set; and an identifier for the data set.” That this is because the payload does not comprise an identifier.
In response, this is disagreed.
The payload is the appended structure to the distributed ledger. The payload (Pasirstein, appended structure – such as a row in fig. 4 ) comprises the generated checksum of the data set (Pasirstein – updated reduced representation, which is a hash) and an identifier of the data set (Pasirstein – fig. 4 timestamp).
Accordingly, the payload (appended structure, such as row) comprises an identifier (timestamp).
Regarding, the limitations, Pasirstein discloses the asserted “creating a payload comprising” [creating a payload (col. 2 lines 66-67, appended to a distributed ledger; col. 5 lines 23-28, the root hash of the merkle tree may be appended to the distributed ledger. Alternatively a node hash (block), leaf hash (row) or a large portion of the Merkle tree, the whole tree, or some other cryptographically verifiable representation of the data maybe be appended to the distributed ledger; such as appended row)]
“the generated checksum of the data set; and” [ the generated checksum (col. 2 lines 47-col. 3 line 6, updated reduced representation col. 2 lines 47-col. 3 line 6 – reduced representation (e.g. hash); fig. 4 hash in the row; the updated reduced representation is a hash,) of the data set (col. 2 lines 47-59, transaction sent by an application that identifies a portion of the data stored in a data store. The transaction includes an update to the portion of data; portion of data)]
“an identifier for the data set; and “ [an identifier (fig. 4 timestamp in the row)for the data set (col. 2 lines 47-59, an update to the portion of data]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Application Publication 20210176038 by Bortnikov et. al. provides relevance as it discusses adding a new block to a blockchain in figures 7a-7b. In the new block added it comprises having a unique number and hash data.
U.S. 11275859 by Shrinivasan et. al. provides similar relevance as the above in at least figures. 6a-6b.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PHAM whose telephone number is (571)272-3924. The examiner can normally be reached M-F 11-730pm Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kavita Stanley can be reached at 571-272-8352. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL PHAM/Primary Examiner, Art Unit 2153
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