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 .
1. Instant application is a continuation of Application No. 18/428697, now U.S. Patent 12,346,416; which is a continuation of Application No. 17/843,184, now U.S. Patent 11,934,494; which is a continuation of Application No. 16/806,835, now U.S. Patent 11,366,882; which is a continuation of Application No. 16/300,929, now U.S. Patent 10,579,779. Claims 1-17 have been examined.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. Claim 16 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because:
Claim 16 is directed towards “A computer software program comprising machine-readable instructions…” Products that do not have a physical or tangible form, such as "software per se" are not directed to any of the statutory categories of invention (note MPEP 2106.03).
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.
3. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,346,416. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart I below.
4. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,934,494. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart I below.
5. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,366,882. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart II below.
6. Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,579,779. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart II below.
Chart I
Instant Application
12346416
11934494
Claims 1 and 16-17 –
A computer-implemented method of verifying integrity of a computer software for installation using a distributed database and a peer-to-peer distributed ledger, the method comprising:
determining a metadata (M) associated with a transaction record stored on the peer- to-peer distributed ledger;
determining an indication of an entry stored on the distributed database from the metadata (M);
determining a third hash value (H3) based on the computer software;
determining a fourth hash value (H4) from the entry on the distributed database;
comparing the third hash value (H3) and the fourth hash value (H4); and
verifying the integrity of the computer software based on the comparing of the third hash value (H3) and the fourth hash value (H4).
Claims 1 and 19 –
A computer-implemented method of securing computer software for installation and verifying its integrity, using a distributed hash table and a peer-to-peer distributed ledger, the method comprising:…
determining the metadata from the second redeem script stored on the peer-to-peer distributed ledger;
retrieving, from the metadata, an indication of the entry on the distributed hash table from the metadata;
determining a third hash value (H3) based on the computer software;
determining a fourth hash value (H4) from the entry on the distributed hash table;
comparing the third hash value and the fourth hash value; and
verifying the integrity of the computer software based on the comparing of the third hash value and the fourth hash value
Claims 1 and 19-20 –
1. A computer-implemented method for securing computer software for installation and verifying its integrity, using a distributed hash table and a peer-to-peer distributed ledger, the method comprising:…
determining the metadata (M) from the peer-to-peer distributed ledger;
retrieving, from the metadata (M), the second hash value (H2) and an indication of the entry on the distributed hash table from the metadata (M), … determining a third hash value (H3) based on the computer software;
determining a fourth hash value (H4) from the entry on the distributed hash table;
comparing the third hash value (H3) and the fourth hash value (H4); and
verifying the integrity of the computer software based on the comparing of the third hash value (H3) and the fourth hash value (H4).
Claim 2
Claim 8
Claim 17
Claim 3
Claim 9
Claim 8
Claim 4
Claim 10
Claim 9
Claim 5
Claim 1
Claim 1
Claim 6
Claim 11
Claim 2
Claim 7
Claim 12
Claim 18
Claim 8
Claim 13
Claim 3
Claim 9
Claim 14
Claim 4
Claim 10
Claim 15
Claim 18
Claim 11
Claim 11
Claim 12
Claim 12
Claim 13
Claim 13
Claim 14
Claim 14
Claim 15
Claim 15
Claims 1-19 U.S. Patent 12346416 contain every element of claims 1-10 and 16-17 of the instant application and as such anticipate claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
For claims 11-15, Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine 12346416 with known prior art to teach the limitations of claims 11-15. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of verifying a digital resource using a distributed hash table (12346416) where the digital resource is encrypted using a user public key and a common secret.
Claims 1-20 U.S. Patent 11934494 contain every element of claims 1-17 of the instant application and as such anticipate claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Chart II
Instant Application
11366882
10579779
Claims 1 and 16-17 –
A computer-implemented method of verifying integrity of a computer software for installation using a distributed database and a peer-to-peer distributed ledger, the method comprising:
determining a metadata (M) associated with a transaction record stored on the peer- to-peer distributed ledger;
determining an indication of an entry stored on the distributed database from the metadata (M);
determining a third hash value (H3) based on the computer software;
determining a fourth hash value (H4) from the entry on the distributed database;
comparing the third hash value (H3) and the fourth hash value (H4); and
verifying the integrity of the computer software based on the comparing of the third hash value (H3) and the fourth hash value (H4).
Claims 1 and 15-16 –
A computer-implemented method of encrypting an executable of a computer software for installation using a storage location and a peer-to-peer distributed ledger, the method comprising:…
(claim 6)
determining a metadata (M) associated with a transaction record stored on a peer-to-peer distributed ledger;
determining an indication of an entry stored on the storage location from the metadata (M);
determining a third hash value (H3) based on the computer software;
determining a fourth hash value (H4) from the entry on the storage location;
comparing the third hash value (H3) and the fourth hash value (H4); and
verifying the integrity of the computer software based on the comparing of the third hash value (H3) and the fourth hash value (H4).
Claims 1 and 16-17 –
A computer-implemented method of verifying integrity of a computer software for installation using a distributed hash table and a peer-to-peer distributed ledger, the method comprising:
determining a metadata (M) associated with a transaction record stored on the peer-to-peer distributed ledger;
determining an indication of an entry stored on the distributed hash table from the metadata (M);
determining a third hash value (H3) based on the computer software;
determining a fourth hash value (H4) from the entry on the distributed hash table;
comparing the third hash value (H3) and the fourth hash value (H4); and
verifying the integrity of the computer software based on the comparing of the third hash value (H3) and the fourth hash value (H4).
Claim 2
Claim 7
Claim 2
Claim 3
Claim 8
Claim 3
Claim 4
Claim 9
Claim 4
Claim 5
Claim 10
Claim 5
Claim 6
Claim 11
Claim 6
Claim 7
Claim 12
Claim 7
Claim 8
Claim 13
Claim 8
Claim 9
Claim 14
Claim 9
Claim 10
Claim 1
Claim 10
Claim 11
Claim 1
Claim 11
Claim 12
Claim 1
Claim 12
Claim 13
Claim 2
Claim 13
Claim 14
Claim 4
Claim 14
Claim 15
Claim 4
Claim 15
For claims 1-17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the different embodiments of claims 1-16 of 11366882 to teach the claimed limitations. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of verifying a digital resource using a distributed hash table.
Claims 1-17 U.S. Patent 10579779 contain every element of claims 1-17 of the instant application and as such anticipate claim of the instant application.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Allowable Subject Matter
7. Claims 1-15 and 17 would be allowable with a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the nonstatutory double patenting rejections, set forth in this Office action.
Claim 16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the nonstatutory double patenting rejection, set forth in this Office action.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Feeney (U.S. Patent Application Publication 2016/0098723) teaches the verification of goods using a signature and a blockchain that includes a peer to peer storage which may be a distributed hash table (note Abstract, and paragraphs [0034] and [0059]).
Akerwall (U.S. Patent Application Publication 2016/0292396) teaches authenticating digital content using a hash that is published on a blockchain (note paragraph [0037]).
Fisher et al. (U.S. Patent Application Publication 2016/0283920) teaches authenticating digital content using a hash stored on the blockchain (note Abstract).
Cuende (U.S. Patent 9,679,276) teaches certifying the integrity and ownership or file by publishing hashes on a blockchain (note Abstract).
Uhr et al. (U.S. Patent Application Publication 2018/0300507) teaches validating a file using a hash value, a server and a blockchain database (note paragraphs [0033] and [0044]-[0054]).
Trent et al. (U.S. Patent Application Publication 2012/0284794) teaches a file integrity checking system that uses a DHT to store the file signature data (note paragraph [0020]).
Park (U.S. Patent Application Publication 2015/0098567) teaches verifying the validity of a software program for installation using a stored reference hash value (note Fig. 6 and paragraph [0014]).
Zyskind et al. – “Decentralizing Privacy: Using a Blockchain to Protect Personal Data” teaches a blockchain that points to an off-blockchain key-value store implemented in a DHT (note page 181, III. Proposed Solution).
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
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, Catherine Thiaw can be reached at (571)270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/Primary Examiner, Art Unit 2407
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