DETAILED ACTION
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 .
Priority
CONTINUATION
This application is a continuation application of U.S. application no. 18/747,420, filed on June 18, 2024, now U.S. Patent 12,354,082 (“Parent Application”), which is a continuation application of U.S. application no. 17/993,973 filed on November 24, 2022, now U.S. Patent 12,020,238, which is a continuation application of U.S. application no. 16/789,441 filed on February 13, 2020, now U.S. Patent 11,544,701 which is a continuation of U.S. application no. 16/361,256 filed on March 22, 2019, now U.S. Patent 10,600,050. See MPEP §201.07. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the ledger key generation engine in claim 16, the possession key engine in claim 16, the private key encryption module in claim 16, the token evolution engine in claim 17, the transfer engine in claim 17 and the validation engine in claim 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 15 of U.S. Patent No. 10,600,050.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when claims 6 and 15 (where claim 6 depends on each of claims 1-5 and claim 15 depends on each of claims 7-14) are viewed against instant claims 1 and 8 all of the limitations of then instant claims are present such that any infringement of instant claims 1 and 8 would necessarily also infringe issued claims 6 and 15 of the issued patent and as such claims 6 and 15 of the issued patent anticipate instant claims 1 and 8. Therefore claims 1 and 8 are rejected on the ground of nonstatutory double patenting.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 10,600,050.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when claim 20 (which is dependent on claims 18 and 19) is viewed against instant claim 16 all of the limitations of then instant claims are present such that any infringement of instant claim 16 would necessarily also infringe issued claim 20 of the issued patent and as such claim 20 of the issued patent anticipates instant claim 16. Therefore claim 16 is rejected on the ground of nonstatutory double patenting.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,544,701.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when claims 1 and 8 are viewed against instant claims 1 and 8 all of the limitations of the instant claims are present such that any infringement of instant claims 1 and 8 would necessarily also infringe issued claims 1 and 8 of the issued patent and as such claims 1 and 8 of the issued patent anticipate instant claims 1 and 8. Therefore claims 1 and 8 are rejected on the ground of nonstatutory double patenting.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,544,701.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when issued claim 16 is viewed against instant claim 16 all of the limitations of the instant claims are present such that any infringement of instant claim16 would necessarily also infringe issued claim 16 of the issued patent and as such claim 16 of the issued patent anticipate instant claim 16. Therefore claim 16 is rejected on the ground of nonstatutory double patenting.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,020,238.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when claims 1 and 8 are viewed against instant claims 1 and 8 all of the limitations of the instant claims are present such that any infringement of instant claims 1 and 8 would necessarily also infringe issued claims 1 and 8 of the issued patent and as such claims 1 and 8 of the issued patent anticipate instant claims 1 and 8. Therefore claims 1 and 8 are rejected on the ground of nonstatutory double patenting.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,020,238.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when issued claim 16 is viewed against instant claim 16 all of the limitations of the instant claims are present such that any infringement of instant claim16 would necessarily also infringe issued claim 16 of the issued patent and as such claim 16 of the issued patent anticipate instant claim 16. Therefore claim 16 is rejected on the ground of nonstatutory double patenting.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,354,082.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when claims 1 and 8 are viewed against instant claims 1 and 8 all of the limitations of the instant claims are present such that any infringement of instant claims 1 and 8 would necessarily also infringe issued claims 1 and 8 of the issued patent and as such claims 1 and 8 of the issued patent anticipate instant claims 1 and 8. Therefore claims 1 and 8 are rejected on the ground of nonstatutory double patenting.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,354,082.
Although the claims at issue are not identical, they are not patentably distinct from each other because the operations are rearranged and different descriptive material is present but when issued claim 16 is viewed against instant claim 16 all of the limitations of the instant claims are present such that any infringement of instant claim16 would necessarily also infringe issued claim 16 of the issued patent and as such claim 16 of the issued patent anticipate instant claim 16. Therefore claim 16 is rejected on the ground of nonstatutory double patenting.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Winklevoss et al. (U.S. Patent 10,269,009, hereinafter referred to as Winklevoss) and Poornachandran et al. (U.S. Patent Publication 2017/0178072, hereinafter referred to as Poornachandran) are the closest prior patent arts of record. Winklevoss discloses generating a first public-private key pair comprising a public key usable as a public address of a ledger token of a distributed ledger network and a private key usable to transfer the ledger token of the distributed ledger network from a public address to a different public address (16:12-32, 19:55-20:13, 36:3-6). Winklevoss discloses storing a private key (14:38-46). Winklevoss also discloses verifying a ledger transaction that a ledger transaction occurred on the distributed ledger network for at least one of (i) an asset associated with the public address and (ii) the asset transferred to the public address (23:38-56). However Winklevoss does not explicitly disclose generating a possession token storable in physical memory and having a state of the possession token indicated by a state indicator, wherein the state of the possession token evolves upon transfer between two computing devices over a network. Poornachandran teaches generating a possession token storable in physical memory and having a state of the possession token indicated by a state indicator, wherein the state of the possession token evolves upon transfer between two computing devices over a network (0018, 0046-0050, 0063). What is not taught by Poornachandran is the associating of the ledger token and the possession token through incorporation of the public address into data generating the state indicator of the state of the possession token. Poornachandran does teach a form of title where the public key of the new owner of the apparatus described in Poornachandran is incorporated into the title. However this public key is not used for associating or transferring an asset but is simply used as a substitute for the name of the owner and does not fairly read on the ledger token as defined in the claim and the written disclosure. No prior art was found in Examiner’s search that fairly corrected this deficiency of a potential combination of Winklevoss and Poornachandran. The closest non-patent literature Examiner was able to find was Kolan “Moving Target Mechanism using Infinite Hash Chain in Hierarchical Peer-to-Peer Cloud”, JNTU University, July 2014, 67 pages, which is directed towards storing objects in a P2P cloud.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 6:00 to 9:45 and 10:30 to 2:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699
Prosecution Insights