DETAILED ACTION
Claims 1-13 are pending and have been examined.
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
It is noted that no Information Disclosure Statement has been filed.
No IDS has been received for this application. Applicants are reminded of the Duty to Disclose, from section 2001 of the MPEP (emphasis added). MPEP 2001 Duty of Disclosure, Candor, and Good Faith [R-08.2012] 37 C.F.R. 1.56 Duty to disclose information material to patentability.
(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.
Double Patenting
Claims 1-13 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of Patent Nos. 11362824, 12021984, and 12395336. Although the conflicting claims are not identical, they are not patentably distinct from each other because
“A method for managing data performed by a device comprising a processor and a non-transitory computer-readable medium storing instructions that, when executed by the processor, cause the electronic data access management system to perform the method, the method comprising: receiving a request to access encrypted electronic data; sending, to an electronic data service system, an electronic data request message, the electronic data request message comprising a public encryption key of the device and an electronic data identifier associated with the electronic data; receiving, from the electronic data service system, a signed electronic data response message; generating an electronic data access rights request message based, at least in part, on the signed electronic data response message received from the electronic data service system; sending the electronic data access rights request message to an electronic data access management system; receiving, from the electronic data access management system in response to the electronic data access rights request message, an electronic data access rights response message, the electronic data access rights response message comprising an encrypted electronic data access key, the encrypted electronic data access key comprising a plaintext electronic data access key for decrypting the encrypted electronic data encrypted using the public encryption key of the device, wherein the encrypted electronic data access key is generated by the electronic data access management system without exposing the plaintext electronic data access key to the electronic data access management system; and accessing the encrypted electronic data using the encrypted electronic data access key” (claim 1, instant application) is analogous to
“A method for managing protected content performed by a rights management system comprising a processor and a non-transitory computer-readable medium storing instructions that, when executed by the processor, cause the system to perform the method, the method comprising: receiving, from a content service system, a protected reencryption program, an encrypted content key encrypted using a public encryption key of the content service system, and an identifier of a piece of content associated with the encrypted content key, the protected reencryption program comprising a protected private decryption key of the content service system; receiving, from a user device, a license request message, the license request message comprising the identifier of the piece of content and a public encryption key of the user device; generating a reencrypted content key using the protected reencryption program based on the encrypted content key and the public encryption key of the user device, wherein generating the reencrypted content key comprises: decrypting the encrypted content key by the protected reencryption program to generate a content key, and encrypting the content key using the public encryption key of the user device to generate the reencrypted content key, wherein decrypting the encrypted content key to generate the content key and encrypting the content key to generate the reencrypted content key are performed without exposing plaintext of the content key to the rights management system outside the protected reencryption program during execution of the protected reencryption program; generating a content license associated with the piece of content, the content license comprising the reencrypted content key; and transmitting the content license to the user device” (claim 1, patent 11362824) and analogous to
“A method for managing data performed by an electronic data service system comprising a processor and a non-transitory computer-readable medium storing instructions that, when executed by the processor, cause the electronic data access management system to perform the method, the method comprising: receiving, from a user system, a public encryption key of the user system; encrypting a plaintext data access key with a public encryption key of the electronic data service system to generate an encrypted data access key; generating, based on the public encryption key of the user system and a private encryption key of the electronic data service system, a reencryption key; generating a protected reencryption program, the protected reencryption program comprising the reencryption key and being configured to generate a reencrypted data access key using the reencryption key and the encrypted data access key, wherein the reencrypted data access key comprises the plaintext data access key encrypted with the public encryption key of the user system, and wherein the protected reencryption program is configured to generate the reencrypted data access key without exposing the plaintext data access key outside the protected reencryption program during execution of the protected reencryption program; and transmitting the protected reencryption program and the encrypted data access key to an electronic data access management system” (claim 1, patent 12021984) and analogous to
“A method for managing data performed by an electronic data access management system comprising a processor and a non-transitory computer-readable medium storing instructions that, when executed by the processor, cause the electronic data access management system to perform the method, the method comprising: receiving, from an electronic data service system, a protected reencryption program, an encrypted data access key encrypted using a public encryption key of the electronic data service system, and an identifier of electronic data associated with the encrypted data access key, the protected reencryption program comprising a protected private decryption key of the electronic data service system; receiving, from a user device, a data access request message, the data access request message comprising the identifier of the electronic data and a public encryption key of the user device; generating a reencrypted data access key using the protected reencryption program based on the encrypted data access key and the public encryption key of the user device, wherein generating the reencrypted data access key comprises: decrypting the encrypted data access key by the protected reencryption program to generate a data access key, and encrypting the data access key using the public encryption key of the user device to generate the reencrypted data access key, wherein decrypting the encrypted data access key to generate the data access key and encrypting the data access key to generate the reencrypted data access key are performed without exposing plaintext of the data access key to the electronic data access management system outside the protected reencryption program during execution of the protected reencryption program; generating a data access response associated with the electronic data, the data access response comprising the reencrypted data access key; and transmitting the data access response to the user device” (claim 1, patent 12395336)
This is a provisional obviousness-type double patenting rejection because the conflicting claims of the instant application have not in fact been patented.
The claims of the conflicting patents and/or applications contain every element of claims 1-13 of the instant application and thus anticipate the claims of the instant application. Claims 1-13 of the instant application therefore are not patently distinct from the copending application claims and as such are unpatentable for obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
“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 with 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).
“Claim 12 and Claim 13 are generic to the species of invention covered by claim 3 of the patent. Thus, the generic invention is “anticipated” by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim) 4. This court’s predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic claim. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761, 767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal disclaimer, claims 12 and 13 were properly rejected under the doctrine of obviousness-type double patenting.” (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear what the intended metes and bounds of claims 1-13 is. Applicant has failed to establish the intended metes and bounds of these, and thus the claims are indefinite.
Claim 1 begins with “a method for managing data performed by a device” to then switch the entity performing the method to “cause the electronic data access management system to perform the method”, making it indefinite which entity is performing the different steps.
Claim 1 recites the limitation " the electronic data access management system " and then introduces “an electronic data access management system”. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "encrypted electronic data " and then “electronic data” making it indefinite if intended to be the same data. There is insufficient antecedent basis for this limitation in the claim.
This is not intended to be a complete list of such indefiniteness issues.
The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: the remaining references put forth on the PTO-892 form are directed to DRM systems using encrypted keys.
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/David Garcia Cervetti/Primary Examiner, Art Unit 2409