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. 18/399582, now U.S. Patent 12,373,829; which is a continuation of Application No. 18/064814, now U.S. Patent 11,893,584; which is a continuation of Application No. 16/615802, now U.S. Patent 11,528,145. Claims 1-14 have been examined.
Claim Objections
2. Claim 3 is objected to because of the following informalities:
Claim 3 recites, “…validating that the signature is associated with a public cryptographic key of the asymmetric key pair.” However, claim 1 already introduced “a public cryptographic key of the asymmetric key pair”. The “validating” step of claim 3 appears to be redundant because of the “validating” step of claim 1.
Appropriate correction is required.
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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3. Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,528,145. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart below.
4. Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,373,829. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart below.
Instant Application
12,373,829
11,528,145
Claim 1 - A method comprising:
receiving, at a node in a blockchain network, a first transaction to validate, the first transaction including a first script that at least:
includes a set of field values of the first transaction; and
as a result of being executed, causes the node to obtain the set of field values; and
obtaining a second transaction, the second transaction having been validated and including a second script that, as a result of being executed, causes the node to at least generate a signature based at least in part on the set of field values supplied as a result of execution of the first script; and
validating the first transaction by validating that the signature is associated with a public cryptographic key of the asymmetric key pair.
Claim 1 - A method comprising:
receiving, at a node in a blockchain network, a first transaction to validate, the first transaction including a first script that at least:
includes a set of field values of the first transaction; and
causes, as a result of being executed, causes the node to obtain the set of field values;
obtaining a second transaction, the second transaction having been validated and including a second script that, as a result of being executed, causes the node to at least generate a signature based at least in part on a…(claim 4) the first script further specifies a signature hash type; and the set of field values is based at least in part on the signature hash type… (claim 5), wherein the signature hash type is a value that indicates which field values of the set of field values of the first transaction are to be included in the signature
private cryptographic key and a mask number; and
validating the first transaction…(claim 3)
validating the first transaction further includes validating that the signature is associated with a public cryptographic key of the asymmetric key pair…
by executing the first script and the second script.
Claim 1 - A method comprising:
receiving, at a node in a blockchain network, a first transaction to validate, the first transaction including a first script that at least:
includes a set of field values of the first transaction; and
as a result of being executed, causes the node to obtain the set of field values;
obtaining a second transaction, the second transaction having been validated and including a second script that, as a result of being executed, causes the node to at least generate a signature based at least in part on the set of field values supplied as a result of execution of the first script; and
validating the first transaction by… (claim 3)
validating the first transaction further includes validating that the signature is associated with a public cryptographic key of the asymmetric key pair…
executing the first script and the second script.
Claim 2
Claim 1 + Claim 3
Claim 3
Claim 3
Claim 4
Claim 4
Claim 4
Claim 5
Claim 5
Claim 5
Claim 6
Claim 6
Claim 6
Claim 7
Claim 7
Claim 7
Claim 8
Claim 8
Claim 8
Claim 9
Claim 9
Claim 9
Claim 10
Claim 10
Claim 10
Claim 11
Claim 11
Claim 11
Claim 12
Claim 12
Claim 12
Claim 13
Claim 13
Claim 13
Claim 14
Claim 14
Claim 14
Claim 15
Claim 15
Claims 1 and 3 of U.S. Patent No. 11,528,145 contain every element of claims 1 and 3 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 2 and 4-14, 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 U.S. Patent No. 11,528,145 to include the elements of claim 3. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of validating a transaction by executing a script that generates a signature based on a private key and a mask number.
For claims 1-14, 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 U.S. Patent No. 12,373,829 to include the elements of claims 3-5. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of validating a transaction by executing a script that generates a signature based on a private key and a mask number.
Allowable Subject Matter
5. Claims 1-14 would be allowable with:
1) Appropriate correction of the objection to claim 3;
2) 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.
The following is a statement of reasons for the indication of allowable subject matter:
For independent claim 1, the prior art of record, alone or in combination, fails to teach the following limitations in conjunction with the rest of the claimed limitations:
obtaining a second transaction, the second transaction having been validated and including a second script that, as a result of being executed, causes the node to at least generate a signature based at least in part on the set of field values supplied as a result of execution of the first script
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Brown (U.S. Patent Application Publication 2011/0213982) discloses generating a digital signature on a message using a private key that is masked with a value (note Abstract and paragraph [0035]).
Maim (U.S. Patent Application Publication 2017/0091750) discloses transactions in a peer to peer distributed architecture which includes means for connecting an input of a downstream transaction to an output of an upstream transaction (note Abstract).
Brown et al. (U.S. Patent Application Publication 2017/0301047) teaches a transaction validation (note paragraphs [0140]-[0141]) where validation downloads dependent transactions (note paragraph [0111]) including contract code (note paragraph [0099]).
Yan et al. (U.S. Patent Application Publication 2021/0182433) teaches validating a transaction based on an executable code rule set (note paragraphs [0045]-[0044]).
7. 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.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/Primary Examiner, Art Unit 2407
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