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 .
Specification
The specification filed on July 01, 2025 is accepted.
Drawings
The drawings filed on July 01, 2025 are accepted.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/01/2025 and 09/26/2025 was filed after the mailing date of the application no. 18/770587. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No.12348641. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of instant application are effectively subset of the claims of the U.S. Patent No.12348641, the later claims is/are obvious over, or anticipated by the earlier claims. In re Longi, 759 F.2d at 896,225 USPQ at 651 (affirming a holding 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 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 VBARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ONPETITION FOR REHEARING EN BANC(DECIDED: May 30, 2001).
Claim Rejections - 35 USC § 103
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over BENINII (US 20200252203) in view of Mathieu (US 20200252217).
Regarding claim 1 BENINII teaches a method, comprising: (BENINI on [0094] teaches a method of enrolling a contributor to a blockchain transaction, the method comprising);
identifying a first instance of a first secret; (BENINI on [0097-099] teaches obtaining first biometric sample, generating a first set of biometric features from first biometric sample. i.e., biometric sample obtained during enrolment phase is first instance of a first secret see Fig 1 and text [0046-0050]);
receiving and hashing a first instance of first data from a first source to generate a first instance of first hashed data, wherein the first instance of the first data from the first source is discarded (BENINI Fig 1 block 105 and text on [0050] teaches receiving supplemental data such as PIN or password and hashing it using one-way function shown in Fig 5A and 5B i.e., PIN or password received during enrolment is first instance of first data);
computing a first mapping function between the first instance of the first hashed data and the first instance of the first secret (BENINI on [0051] teaches a pseudonymous identifier encoder (hereinafter “PIE”) 105 may be used to derive a PI 110 and generate auxiliary data (hereinafter “AD” i.e., mapping function) 111 from the biometric features 108, the private key 103 and optionally the SD 113. During enrolment, the PIE 105 may receive as input the biometric features 108, the private key 103, and optionally the SD 113. As illustrated in FIG. 5A, the PIE 105 utilizes an embed function 501 to combine the inputs 108, 103, and optionally 113. The output of the embed function 501 is then transformed through a cryptographic one-way function 502 which outputs the pseudonymous identifier 110 as well as the auxiliary data 111);
wherein the first mapping function is stored (BENINI on [0052] teaches the biometric sample 106, features 108 and optionally the private key 103 may be securely stored or destroyed 109. The PI 110 and AD 111 and optionally the private key 103 may be stored in a secure storage system 112. See on [0060] teaches the biometric sample 211 and features 214 used in the verification process may be discarded and destroyed with a secure file deletion system 212 for security purposes.);
receiving and hashing a second instance of the first data from the first source to generate a second instance of the first hashed data (BENINI Fig 2 block 218 and text on [0055-0056] teaches during verification phase, receiving biometric sample and supplemental data (Pin or Password) and hashing using one-way function shown in Fig 5A-5B i.e., second instance of first data);
applying the first mapping function to the second instance of the first hashed data to generate a second instance of the first secret (BENINI Fig 5b and text on [0058] teaches in order to verify the biometric features 214 obtained during the verification process—auxiliary data 203 (i.e., mapping function) associated with the PI 202 is obtained from the secure data storage subsystem 201 and encoded with the biometric features 214 and optionally supplemental data (i.e., second instance of data obtained during verification) 218 with a Pseudonymous Identifier Recoder (hereinafter “PIR”) Subsystem 204. The PIR 204 uses the AD 203, the biometric features 214, and optionally SD 218 to create a pseudonymous identifier prime (hereinafter “PI′”) 205. i.e., second instance of first secret);
and generating a key using the second instance of the first secret (BENINI on [0061 and 0101] teaches after obtaining the PI′ 205, a pseudonymous identifier comparator (PIC) 206 may be used to compare PI 202 and PI′ 205. With a match, the private key 207 is revealed, thus verifying the donor of the biometric sample 211. Successful release of private key 207 encoded in PI 202 indicates that the source of biometric sample 211 verified is the same as the one used to enroll).
BENINII fails to explicitly teach the first instance of the first hashed data is discarded, however Mathieu from analogous art teaches wherein the first instance of the first data from the first source is discarded (Mathieu on [claim 24] teaches deleting the private key, the stable code, and the hashed version of the stable code after the generation of the public key);
(Mathieu on [claim 24] teaches deleting the private key, the stable code, and the hashed version of the stable code after the generation of the public key).
Thus, it would have been obvious to one ordinary skill in the art before the effective filing date to implement the teaching of Mathieu into the teaching of BENINII by discarding the hashed data. One would be motivated to do so in order to enable increased security and privacy for biometric information by deleting the secure hashed after use thereby preventing the biometric information from unauthorized access (Mathieu on [0002]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pizano et al (US 9160532) is directed towards a seed and key generation systems for encryption methods. More particularly, the invention relates to a seed and a key generation system for non-deterministic biometric indicia. The system does not store all necessary information for regenerating an encryption seed or generation an encryption key. Instead, the system destroys the seed and key and requires a live biometric sample to recreate the seed/key.
Golic et al (US 20100017618) is directed towards enrolling a user based on user's biometric samples to generate user's reference data; and authenticating the user based on a user's live biometric sample and the user's reference data; wherein enrolling a user includes acquiring the user's biometric samples; extracting an enrollment feature vector from each user's biometric sample; computing a biometric reference template vector as a mean vector based on the enrollment feature vectors; computing a variation vector based on the enrollment feature vectors and the mean vector.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOEEN KHAN whose telephone number is (571)272-3522. The examiner can normally be reached 7AM-5PM EST M-TH Alternate Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shewaye Gelagay can be reached on (571)272-4219. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOEEN KHAN/Primary Examiner, Art Unit 2436
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