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. 18/745,490 filed on June 17, 2024, now U.S. Patent 12,488,336 (“Parent Application”), which is a continuation application of U.S. application no. 18/156,765 filed on January 19, 2023, now U.S. Patent 12,033,143, which is a continuation application of U.S. application no. 17/480,718 filed on September 21, 2021, now U.S. Patent 11,562,352 (“Parent Application”). 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).
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on November 3, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 14 is objected to because of the following informalities: Claim 14 is present as the language of the claim is within the claims however no claim number is showing. Appropriate correction is required.
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 merely removes limitations from issued claim 1 of the patent and is therefore anticipated by claim 1 of the issued patent.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 merely removes limitations from issued claim 7 of the patent and is therefore anticipated by claim 7 of the issued patent.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 3 merely removes limitations from issued claim 8 of the patent and is therefore anticipated by claim 8 of the issued patent.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 4 merely removes limitations from issued claim 9 of the patent and is therefore anticipated by claim 9 of the issued patent.
Claims 2-6 are also rejected as being dependent upon claim 1.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 7 merely removes limitations from issued claim 5 of the patent and is therefore anticipated by claim 5 of the issued patent.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 9 merely removes limitations from issued claim 7 of the patent and is therefore anticipated by claim 7 of the issued patent.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 10 merely removes limitations from issued claim 5 of the patent and is therefore anticipated by claim 5 of the issued patent.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 11 merely removes limitations from issued claim 3 of the patent and is therefore anticipated by claim 3 of the issued patent.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 12 merely removes limitations from issued claim 4 of the patent and is therefore anticipated by claim 4 of the issued patent.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 13 merely removes limitations from issued claim 5 of the patent and is therefore anticipated by claim 5 of the issued patent.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 14 merely removes limitations from issued claim 5 of the patent and is therefore anticipated by claim 7 of the issued patent.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 15 merely removes limitations from issued claim 1 of the patent and is therefore anticipated by claim 1 of the issued patent.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 16 merely removes limitations from issued claim 6 of the patent and is therefore anticipated by claim 6 of the issued patent.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 14 merely removes limitations from issued claim 7 of the patent and is therefore anticipated by claim 7 of the issued patent.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 18 merely removes limitations from issued claim 8 of the patent and is therefore anticipated by claim 8 of the issued patent.
Claims 8-18 are also rejected as being dependent upon claim 7.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,562,352. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 19 merely removes limitations from issued claim 5 of the patent and is therefore anticipated by claim 5 of the issued patent.
Claim 20 is also rejected as being dependent upon claim 19.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent 12,033,143 in view of U.S. Patent 11,562,352. Although the claims are not identical, they are not patentably distinct from each other because the combination of the two U.S. Patents teaches all of the limitations recited in the instant claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent 12,488,336 in view of U.S. Patent 11,562,352. Although the claims are not identical, they are not patentably distinct from each other because the combination of the two U.S. Patents teaches all of the limitations recited in the instant claims.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is Singh et al. (U.S. Patent Publication 2020/03839313, hereinafter referred to as Singh) which discloses the generation of new blocks in a blockchain (0093) including a reference header. In reviewing the disclosure Examiner deems that Singh could be viewed as a having a reference to the preceding block in the form of a hash that includes a hash formed based on every block that preceded the formation of the new block in the chain (Figure 6B in element 640 “previous hash” which per paragraph 0100 of Singh is a “hash of a previous block’s header”) the data hash in element 640 does not fairly read on the second reference data portion of the claim as the data hash in Singh is the hash of the block data 650. In Examiner’s view for the data hash to read on the second reference data portion the data hash would have to be a hash of the block header 640, not the block data 650 and such a hash would then be the “previous hash” of a subsequently generated block. Therefore Examiner does not see that Singh fairly teaches or suggests each and every element of the claim as there is no field in the blockchain of Singh that would clearly read on the second reference data portion which per paragraph 0022 of the written disclosure “…is configured to correspond (e.g., identify) a block subsequent to block 100” and the unique arrangement of the claimed invention allows for pruning blocks or changing the configuration of blocks that is not within the capabilities of the existing prior art. Padmanabhan et al. (U.S. Patent Publication 2020/0250683, hereinafter referred to as Padmanabhan) discloses the ability to change the configuration of a blockchain through a forking process however as the claim clearly references the same blockchain as part of the reconfiguration Padmanabhan does not clearly perform a reconfiguration in the original blockchain but instead creates a second blockchain with a new configuration and therefore does not meet the claim as recited. Closest NPL prior art, Palm et al., “Selective Blockchain Transaction Pruning and State Derivability,” 2018 Crypto Valley Conference on Blockchain Technology November 5, 2018, pp. 31-40 discloses a selective pruning algorithm. For example III C page 34, Column 2, discloses a pruning algorithm comprising preparation, marking and sweeping, where transactions are marked for pending removal if a predicate function T returns true. (page 35, Col. 1, Paragraphs 1-3). However, while the discussion and associated Figure 2 disclose modifying a validity portion of a transaction of different blocks, there is no specific disclosure that the subsequent sweeping/pruning procedure allows for reconfiguration of the blockchain as claimed or that the fields within the blockchain fairly read on the claimed fields of the claimed invention. Therefore as no prior art alone or in combination fairly teaches or suggests each and every one of the aspects of the claimed invention claims 1-20 are held as being allowable over the prior art.
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 5 AM to 2 PM Monday through Thursday.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699
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