DETAILED ACTION
Claims 1-14 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 .
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,354,090. Although the claims at issue are not identical, they are not patentably distinct from each other because the parent claim anticipate those of the instant application. By way of illustration:
Claim 1 of the instant application
Claim 1 of the ‘909 patent
1. A method implemented by an autonomous computing agent, the method comprising:
identifying, by the autonomous computing agent, a transaction on a blockchain;
traversing, by the autonomous computing agent, a transaction history on the blockchain starting from the identified transaction to determine a current unspent transaction output (UTXO) associated with the identified transaction, comprising traversing the blockchain history until a current issuance block, a notification address and a Redeem script are determined for the unspent transaction output (UTXO), wherein the notification address is included in metadata within an unlocking script of the current issuance block;
and sending, by the autonomous computing agent, an electronic notification off the blockchain to the notification address.
1. A method comprising:
traversing a blockchain transaction history to identify a first transaction comprising a current unspent transaction output (UTXO);
reviewing a previous transaction to the first transaction to determine a current owner of an asset associated with the current UTXO, the previous transaction comprising a hash of a redeem script;
generating a distribution transaction for the current UTXO, the distribution transaction based at least in part on the hash of the redeem script of the previous transaction; and
broadcasting the distribution transaction, wherein the distribution transaction can only be signed and completed by the current owner of the asset associated with the current UTXO, wherein the distribution transaction is broadcasted through a broadcast channel separate to the blockchain, and the broadcast channel is established by sending an electronic notification to a notification address which is provided as metadata within an unlocking script of an input of the previous transaction.
As can be seen, all the limitations of the instant claim 1 are found in the parent ‘090 claim, despite a slight difference in verbiage. Thus, any invention that would infringe the ‘090 patent would also infringe the instant application, resulting in two patents on the same invention. Claims 2-14 are likewise similar to claims 2-13 of the ‘090 patent and are rejected for substantially similar reasons as discussed supra.
Allowable Subject Matter
Claims 1-14 are allowable over the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent 11,574,303 (Allen)
U.S. Patent 10,050,779 (Alness)
U.S. Patent Publication 2015/0324789 (Dvorak)
U.S. Patent Publication 2016/0234026 (Wilkins)
U.S. Patent Publication 2016/0292672 (Fay)
U.S. Patent Publication 2016/0342976 (Davis)
U.S. Patent Publication 2016/0342989 (Davis)
U.S. Patent Publication 2016/0342994 (Davis)
U.S. Patent Publication 2016/0350728 (Melika)
U.S. Patent Publication 2016/0350749 (Wilkins)
U.S. Patent Publication 2017/0005804 (Zinder)
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 9/22/26
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