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 .
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 1-14 of U.S. Patent No. 10,291,395. Although the claims at issue are not identical, they are not patentably distinct from each other because limitations are similar within each set of claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,303,428. Although the claims at issue are not identical, they are not patentably distinct from each other because limitations are similar within each set of claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,335,367. Although the claims at issue are not identical, they are not patentably distinct from each other because limitations are similar within each set of claims.
19/217549
10,291,395
1. A method for providing distributed infrastructure services in a peer-to-peer network, comprising:
receiving, by a first computing device acting as a node of a distributed ledger from a second computing device, an access key and an identification of one or more items of data for storage;
executing, by the first computing device, a smart contract of the distributed ledger using the access key, the smart contract recording an identification of the access key and the identification of the one or more items of data in the distributed ledger; and
storing, by the first computing device via a peer-to-peer network, the one or more items of data responsive to execution of the smart contract.
1. A method for secure storage of data via distributed ledgers, comprising:
encrypting, by a processor of a first device, one or more files in a storage device maintained by the first device using a first key;
generating, by a processor of the first device, an access key;
transmitting, by the first device to a second device operating as a full node for a distributed immutable ledger, the encrypted one or more files and the access key, receipt of the encrypted one or more files and the access key causing the second device to append the encrypted one or more files to the distributed immutable ledger at an address corresponding to the access key; and
providing, by the first device to a third device, the access key and the first key, the third device configured to: retrieve the encrypted one or more files from the distributed immutable ledger via the access key, decrypt the one or more files using the first key, compare the decrypted one or more files to a second one or more files stored in memory of the third device, and responsive to a difference between the decrypted one or more files and the second one or more files, identify the third device as compromised or corrupted.
11,303,428
12,335,367
1. A method for secure storage of data via distributed ledgers, comprising:
encrypting, by a processor of a first device, one or more files in a storage device maintained by the first device using a first key;
generating, by a processor of the first device, an access key;
transmitting, by the first device to a second device operating as a full node for a distributed immutable ledger, the encrypted one or more files and the access key, receipt of the encrypted one or more files and the access key causing the second device to append the encrypted one or more files to the distributed immutable ledger at an address corresponding to the access key; and
providing, by the first device to a third device, the access key and the first key, the third device configured to retrieve the encrypted one or more files from the distributed immutable ledger via the access key, and decrypt the one or more files using the first key;
wherein providing the access key and the first key to the third device causes the third device to: retrieve the encrypted one or more files from the distributed immutable ledger via the access key, decrypt the one or more files using the first key, compare the decrypted one or more files to a second one or more files stored in memory of the third device, and responsive to the decrypted one or more files matching the second one or more files, identify the third device as not compromised or corrupted.
1. A method for secure storage of data via distributed ledgers, comprising:
encrypting, by one or more processors of a first device, one or more files in a storage device maintained by the first device using a first key;
generating, by the one or more processors of the first device, an access key;
transmitting, by the first device to a second device operating as a full node for a distributed immutable ledger, the encrypted one or more files and the access key, receipt of the encrypted one or more files and the access key causing the second device to append the encrypted one or more files to the distributed immutable ledger at an address corresponding to the access key; and
providing, by the first device to a third device, the access key and the first key, the third device configured to retrieve the encrypted one or more files from the distributed immutable ledger via the access key, and decrypt the one or more files using the first key;
wherein providing the access key and the first key to the third device causes the third device to: retrieve the encrypted one or more files from the distributed immutable ledger via the access key, decrypt the one or more files using the first key, compare the decrypted one or more files to a second one or more files stored in memory of the third device, and responsive to the decrypted one or more files matching the second one or more files, identify the third device as not compromised or corrupted.
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 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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chapman et al., (US Patent No. 9,992,022), hereinafter “Chapman”, and further in view of Milazzo et al., (US Publication No. 2017/0279783), hereinafter “Milazzo”.
Regarding claims 1, 10, 19 Chapman discloses
receiving, by a first computing device acting as a node of a distributed ledger from a second computing device, Chapman, column 2, lines 47-67, column 15, line 63-column 16, line 15, figures 3-4];
executing, by the first computing device,
a smart contract of the distributed ledger
the smart contract recording
the identification of the one or more items of data in the distributed ledger [Chapman, column 2, lines 47-67, column 15, line 63-column 16, line 15, figures 3-4]; and
storing, by the first computing device via a peer-to-peer network, the one or more items of data responsive to execution of the smart contract [Chapman, column 2, lines 47-67, column 15, line 63-column 16, line 15, figures 3-4].
Chapman does not specifically disclose, however Milazzo teaches
an access key [Milazzo, paragraphs 33, 40, figures 1, 3];
using the access key [Milazzo, paragraphs 33, 40, figures 1, 3];
the smart contract recording an identification of the access key [Milazzo, paragraphs 25, 33, 40, 72-73, figures 1, 3-4].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include the use of a key to access the content in order to protect the data from unauthorized use. It would have been obvious to combine Milazzo’s key with Chapman’s Smart Contract so as to allow the key to be associated with the data when needed.
Regarding claims 2, 11, Chapman-Milazzo further discloses
wherein the access key comprises a user identifier, device identifier, or a public key [Milazzo, paragraphs 40, 52, 72-73, figures 1, 3-4].
Regarding claims 3, 12, Chapman-Milazzo further discloses
wherein the access key comprises an address for storing and retrieving the one or more items of data [Milazzo, paragraphs 40, 52, 72-73, figures 1, 3-4].
Regarding claims 4, 13, 20, Chapman-Milazzo further discloses
wherein the smart contract maintains an array associating the access key with the identification of the one or more items of data [Milazzo, paragraphs 25, 33, 40, 52, 72-73, figures 1, 3-4].
Regarding claims 5, 14, Chapman-Milazzo further discloses
wherein the array is stored in the distributed ledger [Milazzo, paragraphs 25, 33, 40, 52, 72-73, figures 1, 3-4].
Regarding claims 6, 15, Chapman-Milazzo further discloses
wherein the access key is generated by the second computing device [Milazzo, paragraphs 25, 33, 40, 52, 72-73, figures 1, 3-4].
Regarding claims 7, 16, Chapman-Milazzo further discloses
wherein storing the one or more items of data via the peer-to-peer network further comprises distributing the one or more items of data to a plurality of nodes in the peer-to-peer network [Milazzo, paragraphs 36, 40, 52, 61, figures 1, 3-4].
Regarding claims 8, 17, Chapman-Milazzo further discloses
wherein the peer-to-peer network is separate from the distributed ledger system [Milazzo, paragraphs 25, 33, 40, 52, 72-73, figures 1, 3-4].
Regarding claims 9, 18, Chapman-Milazzo further discloses
wherein storing the one or more items of data via the peer-to-peer network further comprises collecting the one or more items of data, by the first device, from one or more additional devices [Chapman, column 2, lines 47-67, column 15, line 63-column 16, line 15, figures 1, 3-4].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J GOODCHILD whose telephone number is (571)270-1589. The examiner can normally be reached M-F 8am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeff Pwu can be reached at 571-272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/William J. Goodchild/Primary Examiner, Art Unit 2433
