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 .
The IDS, filed June 25, 2025, has been considered.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claims 1-20, filed June 25, 2025, are examined on the merits.
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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Claims 1, 8 and 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11 and 16 of U.S. Patent No. 12367224 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the allowed claims are directed to specie of the instant genus claims.
19249172
US 12367224 B2
1. A system, comprising: one or more memories; and one or more processors, communicatively coupled to the one or more memories, configured to:
obtain, via a data interlocutor, a data value, wherein the data interlocutor is particular to a data type corresponding to the data value;
obtain, via the data interlocutor, security metadata associated with the data value;
generate, via the data interlocutor, a data entity based on the data value and the security metadata, the data entity comprising authorization information associated with the data value; and
output, via the data interlocutor, the data entity.
A system for transforming data into data entities, the system comprising: one or more memories; and one or more processors, communicatively coupled to the one or more memories, configured to:
obtain, via a data interlocutor, a set of data intended for inclusion in a database, wherein the set of data is associated with at least one data type, wherein the set of data comprises at least one data value, and wherein the data interlocutor is particular to the at least one data type;
obtain, via the data interlocutor, a set of security metadata associated with the set of data, the set of security metadata comprising at least one subset of metadata associated with the at least one data value;
generate, via the data interlocutor, a set of data entities based on the set of data and the set of security metadata, wherein the set of data entities comprises a data entity associated with a data value of the at least one data value, the data entity comprising transaction authorization information associated with the data value; and
output, via the data interlocutor, the set of data entities for inclusion in the database.
Claims 8 & 15 recite a non-transitory computer-readable medium and a method for implementing the above system.
Claims 11 & 16 recite a non-transitory computer-readable medium and a method for implementing the above system.
BASIS FOR DOUBLE PATENTING
The instant claim 1 is genus claim of the invention allowed in US 12367224 B2. However, the instant claimed invention does not explicitly recite “a set of data intended for inclusion in a database, wherein the set of data is associated with at least one data type, wherein the set of data comprises at least one data value”, “a set of security metadata associated with the set of data”, ” a set of data entities based on the set of data and the set of security metadata, wherein the set of data entities comprises a data entity associated with a data value of the at least one data value”, and “the set of data entities for inclusion in the database” as in the allowed claim. The allowed claim 1 is directed to a specie that falls within the scope of the broader instant claim 1. Therefore, the allowed claim reasonably anticipates the genus claim of the instant invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 6, 8, 13, 15, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Garreau et al. (Garreau, hereafter, WO 2013144335 A1).
Claim 1, Garreau discloses a system, comprising: one or more memories; and
one or more processors, communicatively coupled to the one or more memories (page 5, line 20, e.g. server 14 is a computer and includes a microprocessor), configured to:
obtain, via a data interlocutor, a data value, wherein the data interlocutor is particular to a data type corresponding to the data value (page 5, lines 30-32, e.g. user credentials to be supplied automatically by a server application interlocutor, like the PC 16 or the token 18. Such a user authentication allows preventing access to an unauthorized person(people));
obtain, via the data interlocutor, security metadata associated with the data value; generate, via the data interlocutor, a data entity based on the data value and the security metadata, the data entity comprising authorization information associated with the data value (page 6, lines 10-14, e.g. server memory may register at least one key to be used, for encrypting and/or decrypting data to be exchanged with each server interlocutor, so as to prevent disclosure of the data thus exchanged. The server 14 is therefore able to protect data exchanged with its interlocutor. The registered key may be a public key related to either a PC 16 or a token 18 coupled to the PC 16, as server interlocutor); and
output, via the data interlocutor, the data entity (page 13, lines 28-33, e.g. interlocutor, i.e. an entity supporting an application to be accessed, decrypts corresponding encrypted data by using predetermined decryption algorithm and key that are both stored within a memory accessible from the entity supporting the application to be accessed. The decryption key is preferably a public key relating to the token 18 that has been generated from the token private key. According to one embodiment, the encryption key and the decryption key constitute one and the same key, as a key shared between the token 18 and its interlocutor, an entity supporting the application requested by the user).
Claim 6, Garreau discloses the data interlocutor is configured to encrypt the data value prior to outputting the data value in response to a request for the data value (page 6, lines 10-14, e.g. server memory may register at least one key to be used, for encrypting and/or decrypting data to be exchanged with each server interlocutor, so as to prevent disclosure of the data thus exchanged. The server 14 is therefore able to protect data exchanged with its interlocutor. The registered key may be a public key related to either a PC 16 or a token 18 coupled to the PC 16, as server interlocutor).
Claims 8, 13, 15, and 20, Garreau discloses a computer-readable medium and method comprising the same steps as the above cited system. Claims 8, 13, 15, and 20 are rejected for the same citations and rationale.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 5, 7, 12, 14, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Garreau et al. (Garreau, hereafter, WO 2013144335 A1), as applied to claims 1, 6, 8, 13, 15, and 20 above, in further view of Kurrasch et al. (Kurrasch hereafter, US 11943259 B2).
Claim 5, Garreau discloses the claimed invention except for the data entity to be included in a database. Kurrasch discloses a system for security management is used to screen for merchant data previously stored in a database operated by a bank (column 5, lines 10-12).
Kurrasch discloses an invention to improve the function of computing systems used for security management of application information of a first entity and of a plurality of invalid interactions (column 3, lines 13-16). One of ordinary skill in the art at the time before the effective filing date of the claimed invention would have been motivated by Kurrasch improve the system of Garreau. Therefore, it would have been obvious for one of ordinary skill in the art to use system of Garreau with the database of Kurrasch. The benefit would be to make improve the function of computing systems used for security management of application information of a first entity and of a plurality of invalid interactions.
Claim 7, Garreau as modified discloses the data interlocutor is a computing entity that manages transactions associated with the data type (column 5, lines 40-46, e.g. a system for security management is used to monitor and evaluate the processing of credit card transactions by the bank in order to identify and thwart any attempts by an entity to conduct a scam or other unauthorized business activity against bank clients. For example, a first merchant may be conducting illegitimate transactions with a plurality of customers).
Claims 12, 14, and 19, Garreau discloses a computer-readable medium and method comprising the same steps as the above cited system. Claims 12, 14, and 19 are rejected for the same citations and rationale.
RELATED PRIOR ART
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vitek et al. (Coordinating processes with secure spaces, 2003) discloses process will set up a secure channel by first executing the establish protocol, where x is the channel identifier, ab is the interlocutor’s public key, cd is the initiator’s public key and dc the corresponding private key (page 179).
Allowable Subject Matter
Claims 2-4, 9-11, and 16-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
CONCLUSION
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/Cheyne D Ly/
Primary Examiner, Art Unit 2152
8/7/2026
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