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 .
This is a non-final office action in response to applicant’s communication filed on 12/23/2025.
Claims 1-20 are pending and being considered.
Priority
This application is a Continuation of 18/013,074 filed 12/27/2022 (now US Patent No. 12395317B2). The instant application is 371 of PCT/US2022/033427 filed 6/14/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/19/2025, 05/19/2026, has been considered. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, initialed and dated copy of Applicant’s IDS form 1449 filed as stated above is attached to the instant Office Action.
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 4, 8 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.
Claim 4 line 4 recites “calculating a reach value …”. Word “reach” appears to be associated with advertising, however, parent claims 1 and 3 do not recite or suggest advertising, leaving “reach” and “reach value” un-defined, rendering the claim indefinite.
Similarly claim 8 line 6 recites “reach value” and “frequency value”, each being un-defined in the claim(s).
Applicant is suggested to clarify the claim language.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 rejected under 35 U.S.C. §101 because the claimed invention is directed to an abstract idea without significantly more.
Eligibility Step 2A Prong One: Claim 1, similarly claim 19, 20, recites “calculating… a first sum associated with a first register of the first plurality of registers based on the encrypted fingerprint value of the first register”, “calculating… a second sum associated with a second register of the second plurality of registers based on the encrypted fingerprint value of the second register”, “determining… a validity bit associated with the collision based on a comparison of the first sum and the second sum”. These would be interpreted, under its broadest reasonable interpretation, covers performance of the limitation in the mind for recitation of a mathematical function and analyzing information in a way that can be performed mentally or human mental work. Nothing in the claim elements preclude the steps from practically being performed on paper. Accordingly, the claim recites the abstract idea.
Eligibility Step 2A Prong Two: Claims 19, 20 recite additional limitations of “processors”, “computer-readable media” to perform the steps of method claim discussed above. The limitations of calculating(s), determining, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “processors”, “computer-readable media”, nothing in the claim element precludes the steps from practically being performed in the mind. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application because the claim only recites the additional limitations of “receiving first encrypted data structure representative of a first plurality of registers, each register in the first plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value”, “receiving second encrypted data structure representative of a second plurality of registers, each register in the second plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value”, which are merely used as generic and well-known terminologies, and they do not amount to significantly more than the abstract idea. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Eligibility Step 2B: The claims do not recite elements which are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computing system to perform the calculating(s), determining steps amounts to no more than mere instructions to apply the exception using generic computing system. Mere instructions to apply an exception using generic computing machines cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2-18, depend on claim 1, and do not recite limitation(s) that are sufficient to amount to significantly more than the judicial exception, therefore, are also rejected for the same reason set forth above.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being anticipated by the corresponding claims of US Patent No. 12,395,317 B2 (hereinafter “’317”).
Claim 1 of ‘317 discloses all of the limitations recited in claim 1 (or claim 19, 20) of the instant application. Dependent claims 2-18 are also rejected. See Claim Comparison table below for details.
Claim Comparison
Instant Application 19/268,505
US Patent No. 12,395,317 B2
Claim 1 (19, 20).
A method for detecting a collision when combining a first encrypted data structure and a second encrypted data structure into a combined encrypted data structure, comprising:
receiving, by a data processing system comprising one or more processors and a memory, the first encrypted data structure representative of a first plurality of registers, each register in the first plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value;
receiving, by the data processing system, the second encrypted data structure representative of a second plurality of registers, each register in the second plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value;
calculating, by the data processing system, a first sum associated with a first register of the first plurality of registers based on the encrypted fingerprint value of the first register;
calculating, by the data processing system, a second sum associated with a second register of the second plurality of registers based on the encrypted fingerprint value of the second register;
and determining, by the data processing system, a validity bit associated with the collision based on a comparison of the first sum and the second sum.
Claim 1.
A method for detecting a collision in secure multi-party computation when combining a first encrypted data structure and a second encrypted data structure into a combined encrypted data structure, comprising:
receiving, by a data processing system comprising one or more processors and a memory, the first encrypted data structure representative of a first plurality of registers, each register in the first plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value;
receiving, by the data processing system, the second encrypted data structure representative of a second plurality of registers, each register in the second plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value;
calculating, by the data processing system, a first sum associated with a first register of the first plurality of registers based on the encrypted fingerprint value of the first register;
calculating, by the data processing system, a second sum associated with a second register of the second plurality of registers based on the encrypted fingerprint value of the second register;
and determining, by the data processing system, a validity bit indicating whether the collision has occurred based on a comparison of the first sum and the second sum, wherein the validity bit is set as true when the encrypted fingerprint value of the first register or the encrypted fingerprint value of the second register when decrypted is indicative of a zero value.
Claim 2
Claim 1 above
Claim 3
Claim 2
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 5
Claim 7
Claim 6
Claim 8
Claim 7
Claim 9
Claim 8
Claim 10
Claim 9
Claim 11
Claim 10
Claim 12
Claim 11
Claim 13
Claim 12
Claim 14
Claim 13
Claim 15
Claim 14
Claim 16
Claim 15
Claim 17
Claim 16
Claim 18
Claim 17
Examiner Notes
Examiner cites particular paragraphs, columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nicholls (US20200084191A1-IDS, hereinafter, "Nicholls"), in view of Asharov et al (US20210174441A1-IDS, hereinafter, “Asharov”), further in view of Wagner et al (US20200267144A1-IDS, hereinafter, “Wagner”).
Regarding Claim 1, similarly claim 19, claim 20, Nicholls teaches:
A method/A computing device/One or more non-transitory computer-readable media comprising instructions for detecting a collision when combining a first encrypted data structure and a second encrypted data structure into a combined encrypted data structure, (Nicholls, discloses method of securely comparing information between a first party and a second party without revealing the actual information for sharing information securely, in particular an asymmetric method of secure computation that relies on the private-key/public key paradigm with homomorphic encryption, see [Abstract]) comprising:
receiving, by a data processing system comprising one or more processors and a memory, the first encrypted data structure representative of a first plurality of registers, each register in the first plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value (e.g., Fig. 5A, [0125] In FIG. 5A, Party1 and Party2 are entering into a secure transaction. The parties' respective confidential information is expressed as Fingerprint1 (505) and Fingerprint2 (506). And [0126] Meanwhile, in phase 2 (530) Party1 and Party2 generate (501), (502) respective RSA Keys1 (515) and RSA Keys2 (516), which are different from one another. The respective keys are used to encrypt the parties' L1's as follows: Party1 encrypts (511) L1-1 (509) using Keys1 (515) to produce an encrypted L1-1 (514) that is sent (517) to Party2. Correspondingly, Party2 encrypts (512) L1-2 (510) using Keys2 (516) and sends (518) encrypted L1-2 (513) to Party1. See Fig. 8A for encrypted fingerprint, and Fig. 8B for sending encrypted fingerprint to Registry. Also see Fig. 9, computer system 900, and [0169]-[0172] for processor and memory. Examiner notes, the claim recites register (registers) without indicating what the register(s) is/are, therefore the register(s) is interpreted as any data related to registry. Examiner further notes the claim recites encrypted fingerprint value and register identifier value, the teachings of encrypted fingerprint value of Nicholls can be similarly applied to the encrypted register identifier value);
receiving, by the data processing system, the second encrypted data structure representative of a second plurality of registers, each register in the second plurality of registers having an encrypted fingerprint value, and an encrypted register identifier value (also refer to Fig. 5A, Nicholls’ teaching for receiving the first encrypted data structure (representative) above also apply to the second encrypted data structure (representative));
While Nicholls teaches securely comparing information related to fingerprint between two or multiple parties for transaction without compromising either party’s data, but does not specifically teach following limitations, in the same field of endeavor Asharov teaches:
calculating, by the data processing system, a first sum associated with a first register of the first plurality of registers based on the encrypted fingerprint value of the first register; calculating, by the data processing system, a second sum associated with a second register of the second plurality of registers based on the encrypted fingerprint value of the second register (Asharov, discloses systems and methods for privacy preserving inventory matching, see [Abstract] a method for inventory matching may include: (1) receiving, from each of a plurality of clients, a masked submission comprising an identification of at least one security to buy or sell and a desired quantity to buy or sell; (2) aggregating the masked submissions resulting in a sum of the desired quantities to buy or sell; (3) matching at least two of the clients to conduct a transaction based on aggregation and their respective masked submissions … And [0011] a secure Multi-Party Computation (MPC) cryptographic protocol may be used to implement a matching algorithm. And [0052] step 215 may include additive homomorphic encryption. In this case, all the clients may submit their encrypted orders using a public key based on a (threshold) additive homomorphic encryption scheme. Then, all the Sell and all the Buy orders are aggregated by adding the encrypted orders (without decrypting them) (i.e., sum) using the additive homomorphic property of the encryption scheme);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed the teachings of Asharov in the secure comparison of information of Nicholls by adding encrypted orders using the additive homomorphic property of the encryption scheme for matching trades. This would have been obvious because the person having ordinary skill in the art would have been motivated for matching transaction for multiple clients based on aggregation for conducting transaction with privacy preserving (Asharov, [Abstract]).
The combination of Nicholls-Asharov does not specifically teach the following limitation(s), in the similar field of endeavor Wagner teaches:
and determining, by the data processing system, a validity bit associated with the collision based on a comparison of the first [sum] and the second [sum] (Wagner, discloses biometric matching process using access device and location determination, see [Abstract]. And, in particular, Wagner teaches performing privacy preserving comparison protocol. And [0077] the comparing step 312 may include performing privacy preserving comparison protocol such as secure multi-party computation, homomorphic encryption, or fuzzy extractor techniques. Note, that such processes can be performed even through the enrollment templates stored in a database or memory are obscured (e.g., encrypted …). For example, homomorphic encryption process is a form of encryption that involves a computation on ciphertexts, and generating an encrypted result which, when decrypted, matches the result of the operations as if they had been performed on the plaintext. This, two encrypted values may be computed to determine a match result (i.e., validity bit from match, i.e., validity bit associated with collision), and the server computer (or another device may determine if a match occurred). See Asharov for the sum). Examiner notes, collision can be interpreted as comparison result as matching or not matching, since the claim does not specifically define collision. Examiner further notes, validity bit is interpreted as a matching result value, such as match or not match. The claim does not indicate or suggest what “validity” is referring to.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed the teachings of Wagner in the secure comparison of information of Nicholls-Asharov by performing privacy preserving comparison. This would have been obvious because the person having ordinary skill in the art would have been motivated for performing privacy preserving comparison of template data from user devices without decrypting enrollment template for privacy preserving (Wagner, [Abstract]).
Regarding Claim 9, Nicholls-Asharov-Wagner combination teaches the method of claim 1,
Wagner further teaches: wherein the validity bit is set as true when the encrypted fingerprint value of the first register matches the encrypted fingerprint value of the second register (Wagner, [0043] For example, a first computing module (e.g., a device, an application) may determine an authentication function. The authentication function may implement a matching algorithm that can be configured to compare two templates (e.g., a biometric enrollment template and a biometric authentication template) and output an authentication result (e.g., match/no match, 90% likelihood of match, etc.) based on the comparison). Same motivation as presented in claim 1 would apply.
Regarding Claim 12, Nicholls-Asharov-Wagner combination teaches the method of claim 1,
Asharov further teaches: wherein the first encrypted data structure has an additively homomorphic encryption, and wherein the data processing system calculates the first sum without having to decrypt the encrypted count value of the first register and the encrypted fingerprint value of the first register (Asharov, [0052] In one embodiment, step 215 may include additive homomorphic encryption. In this case, all the clients may submit their encrypted orders using a public key based on a (threshold) additive homomorphic encryption scheme. Then, all the Sell and all the Buy orders are aggregated by adding the encrypted orders (without decrypting them) using the additive homomorphic property of the encryption scheme). Same motivation as presented in claim 1 would apply.
Regarding Claim 13, Nicholls-Asharov-Wagner combination teaches the method of claim 1,
Nicholls further teaches: wherein the first plurality of registers is received from a first publishing computing device, and wherein the second plurality of registers is received from a second publishing computing device (Nicholls, see Fig. 5A, Party1 can be interpreted as first publishing computing device and Party2 can be interpreted as second publishing computing device).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nicholls-Asharov-Wagner as applied to claim 1, further in view of Schneider et al (US20190097787A1, hereinafter, “Schneider”).
Regarding Claim 3, Nicholls-Asharov-Wagner combination teaches the method of claim 1,
The combination of Nicholls-Asharov-Wagner does not specifically teach the following limitation(s), in the same field of endeavor Schneider teaches:
wherein the first register includes an encrypted first count value and the second register includes an encrypted second count value, and wherein the first sum is further calculated based on the encrypted first count value, and wherein the second sum is further calculated based on the encrypted second count value (Schneider, discloses a method for aggregation of a performance indicator of a device based on aggregated encrypted performance indicator with additive homomorphic encryption, see [Abstract]. And [0046] Preferably, the computation cluster is configured to compute the aggregate value by further performing at least one of the following functions: …, and computing the weighted sums of the encrypted concatenated second data items. In this context, the average of the encrypted concatenated second data items preferably refers to a pair, i.e., the sum and a count).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed the teachings of Schneider in the secure comparison of information of Nicholls-Asharov-Wagner by aggregating performance indicator in encrypted date form. This would have been obvious because the person having ordinary skill in the art would have been motivated to protect privacy, confidentiality and integrity of customers (Schneider, [Abstract], [0002]).
Allowable Subject Matter
Claims 2, 4-8, 10-11, 14-18 are objected to as being dependent upon a rejected base claim(s), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims as well as resolving of any outstanding informalities, 35 USC 112(b) and 35 USC 101 rejections presented in this office action.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 depends on claim 1, further specifies “wherein the validity bit is set as true when the encrypted fingerprint value of the first register when decrypted is indicative of a zero value, and wherein the validity bit is set as true when the encrypted fingerprint value of the second register when decrypted is indicative of a zero value”.
Claim 4 depends on claim 3 which depends on claim 1, further recites “generating a third register in the combined encrypted data structure by concatenating the first register and the second register when the validity bit is set as true; and calculating a reach value associated with the third register based on a summation of the encrypted first count value and the encrypted second count value”.
Claim 5 depends on claim 1, further specifies “wherein the first encrypted data structure is transmitted using a dense protocol, and wherein the encrypted fingerprint value of the first register prior to being encrypted is indicative of a zero value for one or more registers in the first plurality of registers”.
Claim 6 depends on claim 1, further specifies “generating a combined encrypted data structure by concatenating the first encrypted data structure with the second encrypted data structure, the combined encrypted data structure representative of a third plurality of registers, a third register in the third plurality of registers having an encrypted count value, an encrypted fingerprint value, an encrypted register identifier value, and the validity bit”.
Claim 7 depends on claim 6, further specifies “wherein the validity bit is encrypted by the data processing system prior to being transmitted to a worker computing device”.
Claim 8 depends on claim 7, further specifies “transmitting, by the data processing system, the combined encrypted data structure to the worker computing device, each register in the third plurality of registers having an encrypted count value, an encrypted fingerprint value, an encrypted register identifier value, and an encrypted validity bit; and wherein a reach value and a frequency value is calculated based on the encrypted count value and the encrypted validity bit”.
Claim 10 depends on claim 1, further specifies “wherein the validity bit is set as false when the encrypted fingerprint value of the first register does not match the encrypted fingerprint value of the second register, and neither the encrypted fingerprint value of the first register nor the encrypted fingerprint value of the second register when decrypted is indicative of a zero value”.
Claim 11 depends on claim 1, further specifies “wherein the encrypted register identifier value of the first register is equal to the encrypted register identifier value of the second register”.
Claim 14 depends on claim 1, further specifies “wherein calculating the first sum associated with the first register includes: generating a plurality of vectors based on the encrypted count value and the encrypted fingerprint value associated with the first plurality of registers; and wherein the first sum is calculated by summing each vector in the plurality of vectors”.
Claim 15 depends on claim 14, further specify “wherein a first vector in the plurality of vectors is generated by adding together encrypted count values in the first plurality of registers”.
Claim 16 depends on claim 14, further specify “wherein the plurality of vectors is further based on a first random number and a second random number”.
Claim 17 depends on claim 16, further specify “where a second vector in the plurality of vectors is generated by: multiplying the encrypted fingerprint values in the first plurality of registers with the first random number”.
Claim 18 depends on claim 16, further specify “where a third vector in the plurality of vectors is generated by: multiplying the encrypted fingerprint values in the first plurality of registers with the second random number”.
The prior arts, Nicholls, Asharov, Wagner, Schneider, either singularly or in combination fails to anticipate or render obvious the claimed limitations of claims 2, 4-8, 10-11, 14-18 shown above.
Citation of References
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are cited but not been replied upon for this office action:
Poorebrahim Gilkalaye et al (US20230244650A1) discloses systems and methods for comparing private sets of data.
Streit (US20180330179A1) discloses systems and methods for matching encrypted biometric input record with stored encrypted biometric record.
Zheng et al ("Efficient privacy-preserving data merging and skyline computation over multi-source encrypted data." Information Sciences 498 (2019): 91-105) discloses comparing encrypted and outsourced data under a single cloud server instead of two non-colluding cloud servers.
Kuzu et al ("Efficient similarity search over encrypted data." In 2012 IEEE 28th International Conference on Data Engineering, pp. 1156-1167. IEEE, 2012.) discloses a state-of-the-art algorithm for fast near neighbor search in high dimensional spaces called locality sensitive hashing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL M LEE whose telephone number is (571)272-1975. The examiner can normally be reached on M-F: 8:30AM - 5:30PM.
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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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/MICHAEL M LEE/Primary Examiner, Art Unit 2436
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