DETAILED ACTION
Claims 1-18 are presented for examination.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/26/25 has been considered by the Examiner.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,316,614. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the parent case anticipate those of the instant application. To wit:
Claim 1 of the instant application
Claim 1 of the ‘614 patent
A process comprising:
a) receiving a request at an assistant computing device over a network from a requesting computing device to query a dataset located on a remote computing device, the remote computing device residing in a secured data center;
b) communicating encrypted access credentials to the requesting computing device, the encrypted access credentials configured to allow the requesting computing device to access the remote computing device;
c) receiving at least one set of encrypted results from the requesting computing device;
d) decrypting the encrypted results to obtain results; and
e) communicating the results to the requesting computing device.
A process comprising:
a) making a request from a requesting computing device to an assistant computing device to query a dataset in communication with a remote computing device, the remote computing device residing in a secured data center;
b) receiving encrypted access credentials at the requesting computing device from the assistant computing device, the encrypted access credentials configured to allow the requesting computing device to access the remote computing device;
c) decrypting, at the requesting computing device, the encrypted access credentials to obtain access credentials;
d) accessing, at the requesting computing device, the remote computing device using the access credentials;
e) receiving query results, at the requesting computing device from the remote computing device, the query results generated by the remote computing device;
f) generating, at the requesting computing device, encrypted query results by encrypting the query results; and
g) communicating the encrypted query results from the requesting computing device to the assistant computing device.
As can be seen, all the limitations of the instant claim 1 are present in claim 1 of the ‘614 patent, albeit written from the perspective of the assistant computing device rather than the requesting device as in the parent ‘614 patent. Accordingly, anything that would infringe claim 1 of the ‘614 patent would also necessarily infringe the instant application, resulting in two patents on the same invention. Dependent claims 2-18 of the instant application are likewise parallel to dependent claims 2-19 of the ‘614 patent and are rejected for substantially similar reasons as discussed supra.
Allowable Subject Matter
Claims 1-18 are allowable over the prior art, for the reasons as previously set forth in the Notice of Allowance for related application 15/097,577 (now matured into U.S. Patent 10,397,192), originally mailed 4/12/19 (see pages 4-5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Gyorfi whose telephone number is (571)272-3849. The examiner can normally be reached 10:00am - 6:30pm.
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THOMAS A. GYORFI
Examiner
Art Unit 2435
/THOMAS A GYORFI/Examiner, Art Unit 2435 7/23/2026
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