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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Abstract is objected to because it exceeds 150 words and includes redundant language.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(t), because the sheets of drawings are not numbered. Specifically, 37 CFR 1.84(t) states:
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
The drawings are objected to as failing to comply with 37 CFR 1.84(u), because the views are identified by numbers and letters in association with inverted commas (e.g. Figs. 3’, 4’, 6’). Further, the drawings include two figures identified as “Fig. 5”.
37 CFR 1.84(u) states:
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 3-7, 8-12 and 14-15 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claims 3-7, 8-12 and 14-15 have not been further treated on the merits.
Claims 1-2, 7 and 13 are objected to for not being in the proper form. Specifically there are multiple occurrences of capitalization in the claims. MPEP 608.01(m) states: “Each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. See: Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995) and MPEP 608.01(m); 37 CFR 1.75(i).” Claims 1-2, 7 and 13 use capital letters other than at the beginning of the claim, and for words that are not proper nouns or abbreviations/acronyms. Further, claims 1, 7 and 13 are missing a period “.” at the end of the claims.
The use of parentheses in the claims is confusing because it raises the question as to which term is required by the claim.
Further, the term "free users" in claim 1 is a relative term which renders the claim indefinite. The term "free" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, it is not clear how free the users would need to be in order to infringe the claimed invention. For the purposes of examination the Examiner understands the term free users as users without subscription. Same rationale applied to terms “long time ago” and “related smart contract functions” in claim 1, and “fast, easy, accurate search” in claim 7.
Claims 1 and 13 are objected to because the claim recites abbreviation “eUICC” without explanation of what it is. The Specification also does not explain this abbreviation. For the purposes of examination the Examiner understands said term as embedded universal integrated circuit card.
Further, claim 7 recites a conditional statement: “(if several regions involved, each region could be priced differently accordingly)”. These conditional statement renders the claim indefinite since it is unclear to the examiner what the scope of the claims is when the conditional statement is false. The applicant should consider rewriting the claim language to avoid the use of conditional statements. For examination purposes, the Examiner will take the broadest reasonable interpretation of the claims and assume that the conditional statements are false. Therefore, the recited limitations in claim 7 will not be considered in the analysis of the claims.
Claim Rejections - 35 USC §112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 7 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In order to satisfy the written description requirement set forth in 35 U.S.C. § 112(a), the specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. For instance, the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve. The level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Information that is well known in the art need not be described in detail in the specification. However, sufficient information must be provided to show that the inventor had possession of the invention as claimed. See MPEP § 2163, subsection II(A)(2).
Claim 1 recites: “a method for controlling said Dealpack path to designated region/country and filtering its contents for rate purpose,” however, the subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention. The Specification lacks disclosure as to what may or may not comprise the “controlling said Dealpack path” and “filtering its contents for rate purpose”, and how said techniques should be implemented in the current invention. The Specification merely references (in the claims) that these techniques may be used without discussion of how the techniques actually perform, and, as such, the Specification does not describe what steps, algorithms, or the like comprise said techniques. An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary (5th ed., 2002). Applicant may “express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682-83. Same rationale applied to the following limitations:
“Assign[ing] values with respective variable(s)”;
Claim 7 recites “Receive, index, tag, sort, classify and curate the Dealpack, insert to right position of listing, via ways of manual and/or automatic, such as artificial intelligence (AI) and machine learning (ML) algorithms, by items' metadata and resulting trained attributes”; however, the subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention. The Specification lacks disclosure as to what may or may not comprise the “artificial intelligence (AI) and machine learning (ML) algorithms,” and how said techniques should be implemented in the current invention. The Specification merely references that these techniques may be used without discussion of how the techniques actually perform. For instance, the Specification discloses [0005]: “The Dealpack shall then be indexed, tagged, classified and curated via ways of manual and/or automatic (such as artificial intelligence (AI) and machine learning (ML) algorithms by items' metadata and resulting trained attributes, and listed on the M/S by genre, category and/or mode of feeling for fast, easy, accurate search, discovery, recommendation, social and traded by the individual renters turned subscribers.” Thus, while the Specification broadly lists examples of techniques that may be used to process the Dealpack, the Specification does not describe what steps, algorithms, or the like comprise said techniques.
Elements that are essentially a "black box" will not be sufficient to demonstrate that the applicant had possession of the claimed invention. Disclosure of function alone is little more than a wish for possession and it does not satisfy the written description requirement. [See MPEP 2163: II(3)(a)(i), Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406]. Moreover, a specification which does little more than outline goals applicant hopes the claimed invention achieves does not satisfy the written description requirement [see MPEP 2163: II(3)(a)(i), In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)].
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 1-2, 7 and 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 pre-AIA the applicant regards as the invention.
Claims 1-2, 3, 7 and 13 recite limitations describing an apparatus and a method of using said apparatus. A single claim that claims both an apparatus and the method steps of using the apparatus is indefinite. IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005). These claims do not properly apprise the public as to what would constitute infringement (i.e., creation of the claimed system or the act of using it) and accordingly are rejected as vague and indefinite under § 112, second paragraph.
Further, the phrase "etc." in claim 1 renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "etc."), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claims 7 recites the term "such as," which renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
1. Claims 1-2, 7 and 13 are rejected under 35 U.S.C. 101 because each of said claims includes two statutory classes of invention: an apparatus and a process.
It must be clear from the wording of a claim that it is drawn to one or the other of mutually exclusive statutory classes of invention. A process is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus must distinguish in terms of structure. Ex parte Lyell at 1552. Apparatus claims that contain recitations that positively recite the use of recited structure in a method step are not considered statutory because the claim is bridging two distinct statutory classes on invention.
2. Claims 1-2, 7 and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. ____ (2014). Claim 1 is directed to a statutory category, because a series of steps for trading rental digital title satisfies the requirements of a process (a series of acts).
Next, the claim is analyzed to determine whether it is directed to a judicial exception.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more of trading rental digital title, consumption usage and transaction tracking.
The Supreme Court has concluded “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is [patent-ineligible subject matter.” Parker v. Flook, 437 U.S. 584, 595 (1978) (quoting In re Rickman, 563 F.2d 1026, 1030 (CCPA 1977). Additionally, the reviewing court has concluded, absent additional limitations, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Further, “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Further, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea ... to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas).
Here, claim 1 recites:
1. A computer network implemented subscription trading application system and
method for purchased rental digital title data item(s)'idle value sublet rental, and the purchased sublet rental item secure control access, and consumption usage and transaction tracking method and apparatus, the trading system, method, and apparatus comprise:
providing an internet online trading network marketplace, having listed digital titles and their trading app, apps of content brands, books, musics, of VOD, SVOD, AVODs, and live channels etc., free or subscribed by subscribers;
said marketplace provide: a subscription application to conducting trade by its subscribers and free users to do Dealpack Trading;
a plurality of listed items, including database servers inside company facility or network cloud outside to store and listing the digital title items, for one time buyout transaction, short term rental, Dealpack of rental and rent-to-own items, on individual retail trade basis, and/or on collective group wholesale trade basis;
a marketplace operation for processing the ordered digital title data items for secure delivery and access, including employ asymmetric and/or symmetric cryptography key methodology of encoding and decoding, and encryption and decryption of the digital title data items and Dealpack;
a digital right management operation, to record transaction and manage title license permit ticket, and trading log;
a trading app subscriber management operation for authentication, billing, service management;
a blockchain operation supported by the said subscriber management
system/operation and content DRM system/operation for the digital title registration, transaction secure logging and smart contract management;
a plurality of regional marketplaces focus on regional market with localized
digital title data items operation associated with the master marketplace; having plurality of network operators connecting to the marketplaces for doing trade for their respective free users and paid subscribers;
providing support and controlled access for said free users and paid subscribers to employ devices, including front-end client side computer, mobile phone, tablet,
notebook, PC, TV (analog/digital TV set) and online connecting devices, including STB[set-top-box], SMP[streaming media player], streaming dangle/sticks, game-console, and browsers or native UI of those devices, etc., to connect to the marketplace for Dealpack trading;
connected with from the back-end or server side of cable/satellite head-ends, computer network nodes at the edge, or gateway-hub/container-cloud-clusters, for text, graphics, sound/voice, touch/click data input/output and data processing, storing and
caching at front, and data controlled routing/relay/distribution/delivery, to and from container based cloud clusters connected via wan and/or lan (wire routed and wireless networked with access point of Wi-fi gateway/hub and/or cellular connection), and peer to peer network that are connected at the edge with terminal client devices;
a subscriber digital title data item selection process, wherein to set-up, select digital title item(s) by an array of variables to at least include time a, content b, and price c, language d from a content collection pool A(a, b, c, d, . . . n) with range/threshold property,
configured to comprise step of: put the desired to view title data item(s)
selected group as B (a, b, c, d, . . . n) with range/threshold property value and assigned to respective variable(s);
put the remaining un-selected title data items as group C (a, b, c, d, . . . n) items with range/threshold property value;
determine from among C( ) group items, the group D(a, b, c, d, . . . n) that watched long time ago and don't want to watch, in reference the variables limitation, and assign values with respective variable(s); and
Determine from group B( ) and C( ) the desired to sublet item(s) as group E( ),
and assign value to respective variables, and block the rest items of the A( );
assign Dealpack ID to Dealpack(A( ), D( )) and hold those item variables in
memory as for-not-use, for-trade data items listening for-trade call to send out as output; a listing process to list the Dealpack listing data to the M/S, including variables of at least title(s)'/channel(s)' and their assigned Dealpack ID, manifest file, metadata, seller-sub ID, . . . n;
a packaging process to encode and decode, encrypt and decrypt the purchased Dealpack for its protection and buyer-sub secure access;
a control accessing DRM management process in real, delayed or relayed time by selling-subscriber and buying-subscribers multiple devices via the said trading app and M/S operation, and/or a blockchain, and/or a eUICC management system for Dealpack protection and secure access of it;
a method for packaging and encrypt and decrypt the listing data and physical data of the Dealpack for secure deliver to and play for the buyer-sub;
an apparatus for secure access the Dealpack by the buyer-sub, include employ a secret key that is burned-in into a chip physical memory permanently by manufacturer, where the chip is identified as eUICC, etc., and the key is utilized by the Dealpack trading application as a root key for the said access control process;
a method to use blockchain to register Dealpack and recording its transaction and related smart contract functions, where the communication between the blockchain and/or smart contract with the trading app operation and DRM operation involving employ asymmetric and/or symmetric key operation in association with Dealpack transaction(s);
a method for controlling said Dealpack path to designated region/country and filtering its contents for rate purpose,
The limitations of subscribing a trading application; accessing a marketplace; listing digital title items for sale; selecting particular items based on certain values; encrypting and decrypting the items utilizing blockchain operations; and recording and tracking transactions, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, mathematical concepts and certain methods of organizing human activity but for the recitation of generic computer components. (Note: the Examiner’s language (e.g. “subscribing”, “accessing”, etc.) is an abbreviated reference to the rather detailed claim steps and is not an oversimplification of the claim language; the Examiner employing such shortcuts (that refer to more specific steps) when attempting to explain the rejection). That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind, and/or performed as organized human activity.
Specifically, as per utilizing mathematical or statistical tools to process the data and to output the estimated values - said functions could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas (e.g., mental comparison regarding a sample or test subject to a control or target data in Ambry, Myriad CAFC, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams)). In Grams, the recited functions require obtaining data or patient information (from sensors), and analyze that data to ascertain the existence and identity of an abnormality or estimated responses, and possible causes thereof. While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972). Moreover, the Federal Circuit has held, “without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Here, the claimed subject matter is directed to the abstract idea of manipulating existing information (e.g., “measured response variables”) to generate additional information (e.g., “estimated values”). See id.
Further, the steps of utilizing blockchain protocols to verify and record transactions represents a well-known proof-of-work algorithm to record a public history of transactions, which is similar to the algorithm for converting binary-coded decimal numerals into pure binary form in Benson (Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972)(“While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem."), and which is similar to the mathematical formula for computing “alarm limits” in a catalytic conversion process in Flook. (Parker v. Flook, 437 U.S. 584, 595 (1978)(“if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is [patent-ineligible subject matter].” (quoting In re Rickman, 563 F.2d 1026, 1030 (CCPA 1977).”). Additionally, the reviewing court has concluded, absent additional limitations, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Also, “The utilizing statistical tools to process the data and to output the estimated values - said functions could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas” (e.g., mental comparison regarding a sample or test subject to a control or target data in Ambry, Myriad CAFC). The Examiner further notes that the algorithm behind the blockchain technology is already “well known in the art,” which will be addressed in Step 2B below.
Accordingly, aside from the general technological environment (addressed below), the claim covers purely mental and/or certain methods of organizing human activity processes. And the mere nominal recitation of a generic network appliance (e.g. an interface for inputting or outputting data, or generic network-based storage devices and displays) does not take the claim limitation out of the mental processes and/or certain methods of organizing human activity grouping.
It is similar to other abstract ideas held to be non-statutory by the courts (see: diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989)(Grams); optimizing drug therapeutic efficacy for treatment of immune-mediated gastrointestinal disorders in Mayo Collaborative Svcs. v. Prometheus Labs. 566 U.S._, 132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012) (Mayo); assessing the risk of a major adverse cardiac event in patients in Cleveland Clinic Foundation. See, also, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)—tailoring sales information presented to a user based on, e.g., user data and time data; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)—creating a contractual relationship). All these cases describe the significant aspects of the claimed invention, albeit at another level of abstraction. ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
Therefore, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” and “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, claim 1 recites an abstract idea. (Step 2A – Prong 1: Yes).
Further, the Examiner determined that this judicial exception is not integrated into a practical application, because there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claim recites an additional elements – using a processor to perform the subscribing; accessing; listing; selecting; encrypting; decrypting; recording and tracking steps. However, the processor in each step is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, including receiving, storing, comparing, and outputting data. This generic processor limitations is nor more than mere instructions to apply the exception using a generic computer component. The processor that performs the subscribing; accessing; listing; selecting; encrypting; decrypting; recording and tracking steps merely automates these steps which can be done mentally. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Also, maintaining a continuously growing list of ordered records that are securely linked together using cryptography does not improve the technology, cause a particular treatment, or implement the abstract idea into a particular machine.
Therefore, none of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Therefore, none of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
Additionally, as per accessing a database, recording, transmitting or outputting data limitations, these recitations amounts to mere data gathering and/or outputting, are insignificant post-solution or extra-solution components, they represent nominal recitation of technology. (See: printing menus in Apple v. Ameranth 842 F.3d 1229, 120 U.S.P.Q.2d 1844 (Fed. Cir. 2016)). Insignificant "post-solution” or “extra-solution" activity means activity that is not central to the purpose of the method invented by the applicant. However, “(c) Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility”. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)). Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited. See Bilski, 130 S. Ct. at 3230. Accordingly, even in combination, 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. Therefore, the claim is directed to an abstract idea. (Step 2A – Prong 2: No).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a non-abstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities.
The claim does not include additional elements that 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 a processor to perform subscribing; accessing; listing; selecting; encrypting; decrypting; recording and tracking functions amounts to no more than mere instructions to apply the exception using a generic computer component. The accessing a database, recording, transmitting or outputting steps were considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The system would require a processor and memory in order to perform basic computer functions of accepting user input, storing information in a database, retrieving information from a database, and outputting said information. These components are not explicitly recited and therefore must be construed at the highest level of generality. The background of the invention does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Specifically, regarding subscribing; accessing; listing; selecting; encrypting; decrypting; recording and tracking functions, MPEP 2106.05(d)(II) defines said functions as routine and conventional, or as insignificant extra-solution activity:
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”); collecting and comparing known information in Classen 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Further, the use of the blockchain protocol for verifying and recording a transaction is merely using a well-known proof-of-work algorithm for encrypting and storing data. The blockchain algorithm is already “well known in the art” given that Satoshi Nakamoto published a paper via the Cryptography Mailing List titled “Bitcoin: A Peer-to-Peer Electronic Cash System” in October 31, 2008. In it, he describes blockchain as “[a] purely peer-to-peer version of electronic cash [that] would allow online payments to be sent directly from one party to another without going through a financial institution.” Among the eight references cited in the paper, the oldest dates back to 1957 and references algorithms. And there is no indication in the claims or Specification regarding any improvement in blockchain technology, there is no indication of improvement of a machine or operation of the machine; the claims merely utilize an existing well-known blockchain protocol for verifying and recording data. The Court recognized that “‘a novel and useful structure created with the aid of knowledge of scientific truth’” might be patentable. Id., at 67 (quoting Mackay Radio, 306 U. S., at 94). But it held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had “no substantial practical application except in connection with a digital computer.” Benson, supra, at 71.
Accordingly, a conclusion that the recited steps is well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Similar to In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams), the recited functions require receiving data or patient information, and look up user’s medical history or contact information (the received prescription), and based on said information prescribe a drug. While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972).”
Also, similar to Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016) (Power Group), claim’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. Claim 1 does not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed subscribing; accessing; listing; selecting; encrypting; decrypting; recording and tracking functions on a set of generic computer components and display devices. Nothing in the claim, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. Analogous to Power Group, claim 1 does not even require a new source or type of information, or new techniques for analyzing it. As a result, the claim does not require an arguably inventive set of components or methods, such as diagnostic devices or diagnostic techniques that would generate new data. The claim does not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information - to provide a “humanly comprehensible” amount of information useful for users - by itself does not transform the otherwise-abstract processes of information collection and analysis into patent eligible subject matter. Merely obtaining and selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. Therefore, the recited steps represent implementing the abstract idea on a generic computer, or “reciting a commonplace business method aimed at processing business information despite being applied on a general purpose computer” Versata, p. 53; Ultramerical, pp. 11-12.
Further, the recited functions do not improve the functioning computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer. Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, comparing and transmitting data—see the Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
For example, in comparison to the decision in Enfish, LLC v. Microsoft Corporation, et al. (Enfish), claim 1 of the current application does not provide specific improvements in computer capabilities. In Enfish, Court found that claims are directed to a specific improvement to the way computers operate, - a particular database technique - in how computers could carry out one of their basic functions of storage and retrieval of data. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. There is no technological improvement described in the current application; the steps of subscribing; accessing; listing; selecting; encrypting; decrypting; recording and tracking do not improve the functioning computers itself, including of the processor(s) or the network elements; there are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. The claimed invention merely utilizes conventional computing and network elements for transmitting and storing data. The conclusion that the claim 1 of the instant invention is not directed to an improvement of an existing technology is bolstered by the Specification teachings that the claimed invention achieves other benefits, such as “will enable the digital title data item content owners to sell those items directly via rentals at once and sell them via a new way by those renters, the customers, who have rented those items, via Dealpack Trading, to sublet those rentals to generate additional revenue for the items” (Specification, [0004]).
Thus, the current application’ solution to the problem of selling digital items directly via rentals for a profit is not technological, but “busin