DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on April 6, 2026 has been entered.
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 .
Acknowledgements
This Office Action is in response to Applicant’s response filed on April 6, 2026.
Claims 1-20 are currently pending and have been examined.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 of the Subject Matter Eligibility Analysis for Products and Processes1 (“SME Analysis”):
Claims 1-20 are directed to one of the statutory categories.
Claims 1-10 are directed to a process.
Claims 11-20 are directed to a system.
Step 2A-Prong 1 of the SME Analysis:
Claim 1 (representative of independent claim(s) 11 and 16) recites/describes the following steps: automatically receiving data for goods and services involved in a purchase or transaction, the data is associated with one or more users; automatically storing the data as secure records, the data is associated with each of the one or more users that made the purchase in the secured records, wherein one or more tokens is uniquely assigned to a corresponding one of the one or more users to enforce data access rights for each of the one or more users; receiving a notification and associated information regarding the legal action associated with the data for the goods and services; automatically searching the secure records of a data platform for the one or more users associated with the legal action utilizing the data and the information; and communicating with the one or more users associated with the legal action one or more legal options that are legally binding in response to determining the one or more users are associated with the legal action, the one or more legal options are communicated and accepted as legally binding through personal execution by the one or more users through a contract, wherein the executed contract is recorded on the ledger as an immutable record of the one or more users election regarding the legal action.
These steps, under its broadest reasonable interpretation, describe or set-forth communicating legal action and recording election regarding legal action in response to records search, which amounts to a fundamental economic principle or practice (including hedging, insurance, mitigating risk); a commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). These limitations therefore fall within the “certain methods of organizing human activity” subject matter grouping of abstract ideas.
Independent claims 11 and 16 recite/describe nearly identical steps (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis.
Each of the depending claims likewise recite/describe these steps (by incorporation - and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims recite an abstract idea under the same analysis. Any elements recited in a dependent claim that are not specifically identified/addressed by the Examiner under step 2A (prong two) or step 2B of this analysis shall be understood to be an additional part of the abstract idea recited by that particular claim.
Thus, the claims recite an abstract idea.
Step 2A-Prong 2 of the SME Analysis
The claims recite the additional elements/limitations of a data platform including a digital ledger (accessible through one or more blockchain tokens, and the secure records are stored in the ledger, as recited in Claim 1), utilizing one or more smart contracts (which amounts to software), utilizing logic, cryptographically “enforce,” electronic devices (Claim 11), data application (Claim 11), processor and memory (Claim 16).
The requirement to execute the claimed steps/functions using the abovementioned hardware components, smart contracts, and logic is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The recited additional elements regarding the “digital ledger” and “to cryptographically enforce” simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). The term “extra-solution activity” is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional elements including the “digital ledger” are “extra-solution” because the while they are included in the claims they are merely a type of storage mechanism for the records. The recited additional element of “to cryptographically enforce” is “extra-solution” because it is recited as intended use (i.e.: post-solution activity) at a high level of generality. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
Furthermore, although the claims recite a specific sequence of computer-implemented functions, and although the specification suggests certain functions may be advantageous for various reasons (e.g., business reasons), the Examiner has determined that the ordered combination of claim elements (i.e., the claims as a whole) are not directed to an improvement to computer functionality/capabilities, an improvement to a computer-related technology or technological environment, and do not amount to a technology-based solution to a technology-based problem.
The dependent claims fail to include any additional elements. In other words, each of the limitations/elements recited in respective dependent claims is further part of the abstract idea as identified by the Examiner for each respective dependent claim (i.e. they are part of the abstract idea recited in each respective claim).
Thus, the additional elements, or combination of additional elements, do not integrate the abstract idea into a practical application.
Accordingly, the claims are directed to an abstract idea.
Step 2B of the SME Analysis:
As discussed above in “Step 2A – Prong 2”, the requirement to execute the claimed steps/functions using the abovementioned hardware elements, smart contracts, and logic is equivalent to adding the words “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer. These limitations therefore do not qualify as “significantly more” (see MPEP 2106.05(f)).
As discussed above in “Step 2A – Prong 2”, the recited additional elements of the “digital ledger” and “to cryptographically enforce” simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). These limitations therefore do not qualify as “significantly more”. (see MPEP 2106.05(d)). This conclusion is based on a factual determination.
In regards to the storage elements of the claims, it is noted that the determination that associating/storing data in a database is well-understood, routine, and conventional is supported by the 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), and MPEP 2106.05(d)(II), which note the well-understood, routine, conventional nature of associating/storing data in a database.
It is noted that the determination that receiving data/messages over a network is well-understood, routine, and conventional is supported by Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014), and MPEP 2106.05(d)(II), which note the well-understood, routine, conventional nature of receiving data/messages over a network.
Viewing the additional limitations in combination also shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
The dependent claims fail to include any additional elements. In other words, each of the limitations/elements recited in respective dependent claims is further part of the abstract idea as identified by the Examiner for each respective dependent claim (i.e. they are part of the abstract idea identified by the Examiner to which each respective claim is directed).
For the reasons stated above, Claims 1-20 as whole do not amount to significantly more than the abstract idea itself.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1-4, 6-11, 13-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2007/0214095 A1)(“Adams”) in view of Sidhu et al. (US 2019/0180266 A1)(“Sidhu”) and further in view of Lenea (US 2018/0218465 A1)(“Lenea”) and further in view of Travizano et al. (US 2020/0058023 A1)(“Travizano”).
As to Claim 1, Adams discloses a method for managing a legal action, comprising:
receiving data for goods and services involved in a purchase or transaction, the data is associated with one or more users (“Data can be entered into the Web form 301 manually. Alternatively, the monitoring module 170 can include a data mining functionality to at least partially automate the process for uploading data meeting the criteria into the database 102.” [0026], “the user specific information can be the goods and services purchased by the user 121 and the time period in which the user 121 made the purchases” [0027], “the user 121 to identify the products and services purchased by the user 121,” [0028]);
automatically storing the data as secure records in a data platform (“it is stored in the database 102,” [0032], [0043] explains the security of the records) the data is associated with each of the one or more users that made the purchase in the secured records (“the user specific information can be the goods and services purchased by the user 121 and the time period in which the user 121 made the purchases” [0027]);
automatically searching the secure records within the database utilizing logic (“The modules 160, 170 can be computer program applications running on the server 101.” [0019]) of the data platform (system 100) for the one or more users associated with the legal action utilizing the data and the information (“In step 501, the notification module 160 compares user specific data to class action data stored in the database 102. The user data serves as criteria that are applied to the class action data.” [0033]); and
communicating with the one or more users associated with the legal action one or more legal options (see “Opt Out” deadlines depicted in Fig.6) that are legally binding (“The first notice is designed generally to inform entities of their membership in a class and ability to ‘opt-out’ or exclude themselves from the class.” [0003]) in response to determining the one or more users are associated with the legal action (“the notification module 160 notifies the user 121 of the class action in step 503,” [0033]).
Adams does not directly disclose
the data is automatically received utilizing one or more smart contracts;
the automatically storing is utilizing the one or more smart contracts;
the secure records are stored in a digital ledger (as opposed to the database 102) of the data platform accessible through one or more blockchain tokens, wherein the one or more blockchain tokens is uniquely assigned to a corresponding one of the one or more users to cryptographically enforce data access rights for each of the one or more users;
receiving a notification and associated information by the data platform regarding the legal action associated with the data for the goods and services; and
the one or more legal options are communicated and accepted as legally binding through personal execution by the one or more users through a smart contract, wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action.
Sidhu teaches wherein the secure records are stored in a digital ledger of a data platform (“the transaction data is validated according to business rules and permissions stored within blockchain database 510, and node 502 generates a block 522 which is then propagated to blockchain,” [0078]) accessible through one or more blockchain tokens (“Use of public and private keys…rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request” [0036], “In step 608, the blockchain database encrypts the compiled transaction data with a private key of the transactional node and, in step” “the collector/committer node decrypts the encrypted envelope (e.g., through permissions granted by the transactional node) prior to adding the sales data to the data block.” [0085], thus the key that opens the envelope is the token) wherein the one or more blockchain tokens is uniquely assigned to a corresponding one of the one or more users (“Use of public and private keys enables enforcement of the DataAdmin role by rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request. In some embodiments, the Data Owner defines the specific levels of data access and relevant semantics.” [0036]) to cryptographically enforce data access rights for each of the one or more users (“sets the access permissions for the candidate node (e.g., utilizing certificates and keys) based on rules or permissions established by the node associated with at least one Data Owner.” [0094]).
One of ordinary skill in the art of field of endeavor before the effective filing date of the invention would have found it obvious to update the database of Adams, and in particular, to replace the database of Adams with the distributed ledger/blockchain accessible through the uniquely assigned blockchain tokens, as found in the Sidhu, in order to gain the commonly understood benefits of such adaptation, such as increased reliability and security, and availability. All this would be accomplished with no unpredictable results.
Lenea teaches
receiving a notification (“push notification,” [0062]) and associated information by a data platform (server) regarding the legal action associated with data (“keywords” [0062])([0061] and “Web crawling, screen scraping, push notifications, and setting news alerts for keywords related to class-action settlements may be used to gather information from these and other sources.” [0062]), and
the one or more legal options are communicated and accepted as legally binding through personal execution by one or more users through computer code (“A user who is determined by the service to likely be eligible for settlement-damages may be asked to provide not only the information necessary to determine eligibility, but also information needed to complete the damages-claim, assuming they are in fact eligible, in the same communication.” [0072], “In embodiments in which a POA is not collected from the user upon enrollment, the service may collect one from a user upon determining that a user is eligible for a settlement for which a signature on the settlement-claim form is required.” [0076], “Upon collecting all information and legal authority necessary to submit a settlement-claim for a user, the service completes and submits the damages-claim to the relevant Settlement Administrator at 635” [0077], “In cases in which a claim for settlement-damages requires a signature on one or more forms, and an electronic signature is allowed, the one or more forms are electronically signed by the attorney-in-fact or on of the attorneys in-fact of the user and then submitted.” [0079]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu combination, the feature of receiving a notification and associated information by the data platform regarding the legal action associated with data (as applied to the data for the goods and services of Adams), because it would facilitate in “the identification of purchases that entitle the purchaser to settlement-damages by virtue of containing a certain component that is eligible for settlement-damages” (Lenea, [0063]); and to include in Adams in the Adams/Sidhu combination, the feature of the one or more legal options are communicated and accepted as legally binding through personal execution by one or more users through computer code, as taught by Lenea, because it reduces the time and effort otherwise required of the user to traditionally enter the legally binding endeavor (Lenea, [0063]).
Travizano teaches data is automatically received and stored utilizing one or more smart contracts (“first method of a first blockchain-based smart contract (e.g., Data Exchange) to create a data order for requested data. After creating the data order, the computing device may access a public address of the data buyer so that the data buyer can see the data sellers who have selected the data order and have agreed to sell their data to the data buyer. If the data buyer selects an identifier(s) of a data seller(s), the computing device receives an indication of this selected identifier (s), and the computing device may receive (e.g., download) the encrypted data of the associated data seller(s) via the buyer's public address” [0017], “The computing device(s) 400 may further store data 418, such as the data 124 and 126 described herein, which may be maintained in any suitable data structure, such as a database or any similar data repository, store, or the like, which may be accessed by the one or more processors 402.” [0098]), and
one or more legal options communicated and accepted as legally binding by one or more users through a smart contract (“causing a set of data orders to be displayed on the computing device, the set of data orders having been created by a corresponding set of data buyers using a first blockchain-based smart contract (e.g., Data Exchange).” [0018], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]), wherein the executed smart contract is recorded on the digital ledger as an immutable record (“smart contract 118 can be deployed to the blockchain (e.g. Ethereum blockchain) and given a public address” [0028]) of the one or more users election regarding the legal action (“On-chain operations (denoted by the dashed lines in FIGS. 1A and 1B, as indicated in the key 116) are performed with respect to smart contracts 118 of the block chain network.” [0029], “A first smart contract 118(1) of the marketplace 100 is also referred to herein as ‘Data Exchange 118(1).’ Data Exchange 118(1) is used by data buyers 102 to create data orders for requested data that the buyers 102 are interested in buying. Thus, Data Exchange 118 provides a querying system for buyers 102 to communicate their data requirements by placing data orders on the blockchain. The use of on-chain operations provides a secure mechanism for exchanging data in the decentralized marketplace 100. Data Exchange 118(1) maintains references to the data orders created by data buyers 102 so that the data orders are accessible to other market participants, such as data sellers 104 and notaries 106.” [0031], “A data order (DO) 122 can be placed on-chain by the data buyer 102, as shown in Step 1 of FIG. 1A. Such a data order 122 can include, without limitation: (i) audience A, (ii) requested data R, (iii) price p, (iv) hash of the terms and conditions of data use: H(tc),…” [0034], “data order 122 may include…additional information…(v) the complete text of the terms and conditions of data use tc” [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the receiving of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it is automatic and utilizes one or more smart contracts as taught by Travizano; to include in the storing of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it utilizes one or more smart contracts as taught by Travizano; and to include in the one or more legal options communicated and accepted as legally binding by one or more users feature of the Adams/Sidhu/Lenea combination, the one or more legal options communicated and accepted as legally binding by one or more users through a smart contract, wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action, as taught by Travizano.
A person having ordinary skill in the art would have been motivated to combine these features because it would help to electronically secure and facilitate a legal agreement.
Additionally, it is noted that it has been held that “broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art” (MPEP 2144.04 § III.) As such, it would have alternatively, been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the receiving of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it is automatic, as taught by Travizano, because “broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art” (MPEP 2144.04 § III.).
As to Claim 2, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Sidhu further teaches wherein the secure records are stored in a digital ledger (“the transaction data is validated according to business rules and permissions stored within blockchain database 510, and node 502 generates a block 522 which is then propagated to blockchain,” [0078]) accessible through one or more cryptocurrency tokens (“Use of public and private keys enables enforcement of the DataAdmin role by rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request” [0036], “…digitally signs encrypted transaction envelope 520 with an encryption key stored within database 512…digital signature may be, include, or otherwise be associated with an address that is generated using the encryption key…” [0079], [0078]).
As to Claim 3, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams does not directly disclose but Lenea teaches requesting additional information from the one or more users (“A user who is determined by the service to likely be eligible for settlement-damages may be asked to provide not only the information necessary to determine eligibility, but also information needed to complete the damages-claim, assuming they are in fact eligible, in the same communication.” [0072]); receiving additional information from the one or more users ([0072]), wherein the additional information includes selections from a user for participating in the legal action ([0072]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu/Lenea combination, the features of requesting additional information from the one or more users, receiving additional information from the one or more users, wherein the additional information includes selections from a user for participating in the legal action, as taught by Lenea. A person having ordinary skill in the art would have been motivated to combine these features because it would help to determine if a user qualifies for a settlement.
As to Claim 4, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams does not directly disclose, but Travizano teaches
creating one or more tokens (“DO,” [0042]) based on the data type and value of data (“The buyer 102 may specify parameters of the data order 122, such as by using a data order (DO) query expressed as DO=(A, R, p, H(tc), VB) in Data Exchange 118(1). The data order (DO) 122 may include parameters such as, without limitation: (i) audience A, (ii) requested data R, (iii) price p, (iv) hash of the terms and conditions of data use: H(tc), (v) public address (e.g., public URL, IP address, etc.) to upload responses and encrypted data from data sellers' 104 via HTTPS POST requests for the data order: U B·” [0042]);
vending the data to one of a plurality of parties utilizing one or more tokens, wherein the user data is accessible from the secure records utilizing an indicator included in the one or more tokens (“public address of the data buyer 102 may be determined from the selected data order 122…seller device 112 sends the encrypted data 124 Cs=EK/Datas) to the public address of the data buyer 102 without sending the cryptographic key Ks to the buyer 102. This is so that the data 124 remains inaccessible to the data buyer 102 until the notary 106 reveals the master key M….” [0051]); and
compensating one or more parties for vending the data (“This triggers the Batch Payments smart contract 118(2) to transfer payments of tokens from the buyer's 102 account into the respective accounts of the data seller(s) 104” [0060]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Travizano and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the features of creating one or more tokens based on the data type and value of data; vending the data to one of a plurality of parties utilizing one or more tokens, wherein the user data is accessible from the secure records utilizing an indicator included in the one or more tokens; and compensating one or more parties for vending the data, as taught by Travizano. A person having ordinary skill in the art would have been motivated to combine these features because it “provides data sellers with the ability to maintain ownership and control of their own data (e.g., personal data) in order to monetize it, if desired” (Travizano, [0011]).
As to Claim 6, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Adams further discloses wherein receiving the data includes receiving one or more data elements initially and verifying the accuracy of one or more data elements (“data from specific locations or in specific fields of the survey can be automatically entered into predetermined fields of a database record…information…can be checked for errors,” [0031]).
As to Claim 7, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Adams does not directly disclose, but Lenea teaches wherein the data is utilized according to a user profile associated with each of the one or more users (“Following enrollment, one or more user accounts, depending on the embodiment and on how many accounts the user elected to provide the service access to, are periodically accessed” [0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the feature of wherein the data is utilized according to a user profile associated with each of the one or more users, as taught by Lenea. A person having ordinary skill in the art would have been motivated to combine these features because it would help to provide privacy options to the user.
As to Claim 8, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Sidhu teaches wherein the transaction data is accessible utilizing an indicator (“block ID,” [0046]) associated with the cryptocurrency tokens (“Use of public and private keys enables enforcement of the DataAdmin role by rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request” [0036], [0046] and [0092]).
As to Claim 9, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams does not directly disclose, but Travizano teaches creating a smart contract controlling utilization of the user data to perform the legal action (“blockchain-based smart contracts,” “Data sellers and notaries can react to…by agreeing to sell the requested data and agreeing to validate the requested data” [0015]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Travizano and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the feature of creating a smart contract controlling utilization of the user data to perform the legal action, as taught by Travizano. A person having ordinary skill in the art would have been motivated to combine these features because it “provides a secure mechanism for exchanging data in the decentralized marketplace.” (Travizano, [0015]).
As to Claim 10, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Adams further discloses managing the legal action utilizing the data platform (“The documents can be selected as desired, and preferably include at least all notices provided in the class action. As the details segment 710 is an interactive user interface, the user 121 can access, view and copy a complete version of each document by selecting the document.” [0045]).
As to Claim 11, Adams discloses a system for managing a legal action, comprising:
a plurality of electronic devices (“system 100 includes at least one data storage device 102, such as a database, and at least one server 101.” [0019]) executing a data application (“a monitoring module 170 and a notification module 160.” [0019]), the data application is configured to capture data associated with transactions and purchases of a user ([0018]-[0019], “For example, the user specific information can be the goods and services purchased by the user 121 and the time period in which the user 121 made the purchases” [0027]); and
a data platform (system 100) accessible by the plurality of electronic devices executing the data application through one or more networks ([0020]), wherein the data platform receives user data for goods and services associated with one or more users including the user (“Data can be entered into the Web form 301 manually,” [0026], “the user specific information can be the goods and services purchased by the user 121 and the time period in which the user 121 made the purchases” [0027], “the user 121 to identify the products and services purchased by the user 121,” [0028]); automatically stores the data associated with the user as secure records in a database of the data platform (“it is stored in the database 102,” [0032], [0043] explains the security of the records); automatically searches the secure records within the database utilizing logic (“The modules 160, 170 can be computer program applications running on the server 101.” [0019]) of the data platform for users associated with the legal action utilizing the data and the information (“In step 501, the notification module 160 compares user specific data to class action data stored in the database 102. The user data serves as criteria that are applied to the class action data.” [0033]); notifying the one or more users of the legal action and one or more legal options (see “Opt Out” deadlines depicted in Fig.6) in response to determining the one or more users are associated with the legal action (“the notification module 160 notifies the user 121 of the class action in step 503,” [0033]), and receiving additional information and selections from the user (“By selecting a notes icon 905 within the notes segment 708 for a class action 901, the use can view, delete or add notes associated with the respective class action.” [0044]).
Adams does not directly disclose
the capturing of data and storing of data is utilizing one or more smart contracts;
the secure records are stored in a digital ledger (as opposed to the database 102) of the data platform;
receiving a notification and associated information regarding the legal action based on the data associated with the user; and
wherein the one or more legal options are communicated to the one or more users through a smart contract for personal execution by each of the one or more users through the selections, and wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action.
Sidhu teaches wherein the secure records are stored in a digital ledger of a data platform (“the transaction data is validated according to business rules and permissions stored within blockchain database 510, and node 502 generates a block 522 which is then propagated to blockchain,” [0078]).
One of ordinary skill in the art of field of endeavor before the effective filing date of the invention would have found it obvious to update the database of Adams, and in particular, to replace the database of Adams with the distributed ledger/blockchain, as found in the Sidhu, in order to gain the commonly understood benefits of such adaptation, such as increased reliability and security, and availability. All this would be accomplished with no unpredictable results.
Lenea teaches
receiving a notification (“push notification,” [0062]) and associated information regarding the legal action based on data associated with a user (“keywords” [0062])([0061] and “Web crawling, screen scraping, push notifications, and setting news alerts for keywords related to class-action settlements may be used to gather information from these and other sources.” [0062]), and
wherein the one or more legal options are communicated to the one or more users through computer code for personal execution by each of the one or more users through the selections (“A user who is determined by the service to likely be eligible for settlement-damages may be asked to provide not only the information necessary to determine eligibility, but also information needed to complete the damages-claim, assuming they are in fact eligible, in the same communication.” [0072], “In embodiments in which a POA is not collected from the user upon enrollment, the service may collect one from a user upon determining that a user is eligible for a settlement for which a signature on the settlement-claim form is required.” [0076], “Upon collecting all information and legal authority necessary to submit a settlement-claim for a user, the service completes and submits the damages-claim to the relevant Settlement Administrator at 635” [0077], “In cases in which a claim for settlement-damages requires a signature on one or more forms, and an electronic signature is allowed, the one or more forms are electronically signed by the attorney-in-fact or on of the attorneys in-fact of the user and then submitted.” [0079]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu combination, the feature of receiving a notification and associated information regarding the legal action based on data associated with a user (as applied to the data of Adams), as taught by Lenea, because it would facilitate in “the identification of purchases that entitle the purchaser to settlement-damages by virtue of containing a certain component that is eligible for settlement-damages” (Lenea, [0063]); and to include in Adams in the Adams/Sidhu combination, the feature of the one or more legal options are communicated to the one or more users through computer code for personal execution by each of the one or more users through the selections, as taught by Lenea, because it reduces the time and effort otherwise required of the user to traditionally enter the legally binding endeavor (Lenea, [0063]).
Travizano teaches
data is captured and stored utilizing one or more smart contracts (“first method of a first blockchain-based smart contract (e.g., Data Exchange) to create a data order for requested data. After creating the data order, the computing device may access a public address of the data buyer so that the data buyer can see the data sellers who have selected the data order and have agreed to sell their data to the data buyer. If the data buyer selects an identifier(s) of a data seller(s), the computing device receives an indication of this selected identifier (s), and the computing device may receive (e.g., download) the encrypted data of the associated data seller(s) via the buyer's public address” [0017], “The computing device(s) 400 may further store data 418, such as the data 124 and 126 described herein, which may be maintained in any suitable data structure, such as a database or any similar data repository, store, or the like, which may be accessed by the one or more processors 402.” [0098]); and
one or more legal options are communicated to the one or more users through a smart contract by each of one or more users through the selections (“causing a set of data orders to be displayed on the computing device, the set of data orders having been created by a corresponding set of data buyers using a first blockchain-based smart contract (e.g., Data Exchange).” [0018], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]), and wherein the executed smart contract is recorded on the digital ledger as an immutable record (“smart contract 118 can be deployed to the blockchain (e.g. Ethereum blockchain) and given a public address” [0028]) of the one or more users election regarding the legal action (“On-chain operations (denoted by the dashed lines in FIGS. 1A and 1B, as indicated in the key 116) are performed with respect to smart contracts 118 of the block chain network.” [0029], “A first smart contract 118(1) of the marketplace 100 is also referred to herein as ‘Data Exchange 118(1).’ Data Exchange 118(1) is used by data buyers 102 to create data orders for requested data that the buyers 102 are interested in buying. Thus, Data Exchange 118 provides a querying system for buyers 102 to communicate their data requirements by placing data orders on the blockchain. The use of on-chain operations provides a secure mechanism for exchanging data in the decentralized marketplace 100. Data Exchange 118(1) maintains references to the data orders created by data buyers 102 so that the data orders are accessible to other market participants, such as data sellers 104 and notaries 106.” [0031], “A data order (DO) 122 can be placed on-chain by the data buyer 102, as shown in Step 1 of FIG. 1A. Such a data order 122 can include, without limitation: (i) audience A, (ii) requested data R, (iii) price p, (iv) hash of the terms and conditions of data use: H(tc),” [0034], “data order 122 may include…additional information…(v) the complete text of the terms and conditions of data use tc” [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the capturing and storing of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it utilizes one or more smart contracts as taught by Travizano; and to include in the one or more legal options are communicated to the one or more users through computer code executed by each of one or more users through the selections feature of the Adams/Sidhu/Lenea combination, the one or more legal options are communicated to the one or more users through a smart contract by each of one or more users through the selections and wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action, as taught by Travizano.
A person having ordinary skill in the art would have been motivated to combine these features because it would help to electronically secure and facilitate a legal agreement.
As to Claim 13, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Adams further discloses wherein the legal action is one or more of product recall, mass litigation, or class action lawsuit (“class actions,” [0007]).
As to Claim 14, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Adams further discloses wherein the data platform manages communications with the one or more users regarding the legal action (“If class action data meets the criteria, the notification module 160 notifies the user 121 of the class action in step 503. If class action data does not meet the criteria, in step 502 the user 121 is not notified of the class action.” [0033]).
As to Claim 15, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams does not directly disclose, but Travizano teaches wherein the smart contract controls utilization of the transaction data by the data platform and legal rights of the one or more users with regard to the legal action (“orders 122 that have been created using the Data Exchange smart contract 118(1) in order to look for opportunities where they match the audience A, agree on the requested data R, accept the price p offered by the data buyer 102, accept the terms and conditions of data use tc” [0044], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Travizano and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the feature of wherein a smart contract controls utilization of the transaction data by the data platform and legal rights of the one or more users with regard to the legal action, as taught by Travizano. A person having ordinary skill in the art would have been motivated to combine these features because it “provides…transparency regarding the data use” and place “the seller 104 in control of whether and how his/her data is used, and by whom” (Travizano, [0046]).
As to Claim 16, Adams discloses a data platform, comprising:
a processor (“system 100 includes at least one data storage device 102, such as a database, and at least one server 101.” [0019]) for executing a set of instructions (“a monitoring module 170 and a notification module 160.” [0019]);
a memory (memory in “system 100 includes at least one data storage device 102, such as a database, and at least one server 101.” [0019]) for storing the set of instructions, wherein the set of instructions are executed to:
receive data for goods and services associated with one or more users (“Data can be entered into the Web form 301 manually,” [0026], “the user specific information can be the goods and services purchased by the user 121 and the time period in which the user 121 made the purchases” [0027], “the user 121 to identify the products and services purchased by the user 121,” [0028]); automatically store the data associated with ethe one or more users as secure records in a database (database 102) of the data platform (system 100)(“it is stored in the database 102,” [0032], [0043] explains the security of the records); automatically search the secure records within the database of the data platform for the one or more users associated with the legal action utilizing the information and the data (“In step 501, the notification module 160 compares user specific data to class action data stored in the database 102. The user data serves as criteria that are applied to the class action data.” [0033]); communicate with the user of the legal action and one or more legal options (see “Opt Out” deadlines depicted in Fig.6) in response to determining the one or more users are associated with the legal action (“the notification module 160 notifies the user 121 of the class action in step 503,” [0033]), and receive additional information from the one or more users (“By selecting a notes icon 905 within the notes segment 708 for a class action 901, the use can view, delete or add notes associated with the respective class action.” [0044]).
Adams does not directly disclose
the receiving of data is automatic;
the secure records are stored in a digital ledger (as opposed to the database 102) of the data platform;
receive a notification and associated information regarding the legal action based on the data for the goods and services; and
wherein the additional information from the one or more users includes at least a legal selection of the one or more legal options that is legally binding as executed by the one or more users through a smart contract, and wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action
Sidhu teaches wherein the secure records are stored in a digital ledger of a data platform (“the transaction data is validated according to business rules and permissions stored within blockchain database 510, and node 502 generates a block 522 which is then propagated to blockchain,” [0078]).
One of ordinary skill in the art of field of endeavor before the effective filing date of the invention would have found it obvious to update the database of Adams, and in particular, to replace the database of Adams with the distributed ledger/blockchain, as found in the Sidhu, in order to gain the commonly understood benefits of such adaptation, such as increased reliability and security, and availability. All this would be accomplished with no unpredictable results.
Lenea teaches
automatically receiving data (“Next, purchase data within the account is located, at 610.” [0043], “Purchase data located in a user account is extracted at 615.” [0047]), and receiving a notification (“push notification,” [0062]) and associated information regarding a legal action based on data (“keywords” [0062])([0061] and “Web crawling, screen scraping, push notifications, and setting news alerts for keywords related to class-action settlements may be used to gather information from these and other sources.” [0062]); and
additional information from the one or more users includes at least a legal selection of the one or more legal options that is legally binding as executed by the one or more users through computer code (“A user who is determined by the service to likely be eligible for settlement-damages may be asked to provide not only the information necessary to determine eligibility, but also information needed to complete the damages-claim, assuming they are in fact eligible, in the same communication.” [0072], “In embodiments in which a POA is not collected from the user upon enrollment, the service may collect one from a user upon determining that a user is eligible for a settlement for which a signature on the settlement-claim form is required.” [0076], “Upon collecting all information and legal authority necessary to submit a settlement-claim for a user, the service completes and submits the damages-claim to the relevant Settlement Administrator at 635” [0077], “In cases in which a claim for settlement-damages requires a signature on one or more forms, and an electronic signature is allowed, the one or more forms are electronically signed by the attorney-in-fact or on of the attorneys in-fact of the user and then submitted.” [0079]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Adams in the Adams/Sidhu combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu combination, the feature that the receiving of data is automatic as taught by Lenea, and to include in Adams in the Adams/Sidhu combination the feature of receiving a notification and associated information regarding the legal action based on data (as applied to the data for the goods and services of Adams), as taught by Lenea, because it would facilitate in “the identification of purchases that entitle the purchaser to settlement-damages by virtue of containing a certain component that is eligible for settlement-damages” (Lenea, [0063]); and to include in Adams in the Adams/Sidhu combination, the feature of the additional information from the one or more users includes at least a legal selection of the one or more legal options that is legally binding as executed by the one or more users through computer code, as taught by Lenea, because it reduces the time and effort otherwise required of the user to traditionally enter the legally binding endeavor (Lenea, [0063]).
Travizano teaches additional information from the one or more users includes at least a legal selection of one or more legal options that is legally binding by the one or more users through a smart contract (“causing a set of data orders to be displayed on the computing device, the set of data orders having been created by a corresponding set of data buyers using a first blockchain-based smart contract (e.g., Data Exchange).” [0018], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]), and wherein the executed smart contract is recorded on the digital ledger as an immutable record (“smart contract 118 can be deployed to the blockchain (e.g. Ethereum blockchain) and given a public address” [0028]) of the one or more users election regarding the legal action (“On-chain operations (denoted by the dashed lines in FIGS. 1A and 1B, as indicated in the key 116) are performed with respect to smart contracts 118 of the block chain network.” [0029], “A first smart contract 118(1) of the marketplace 100 is also referred to herein as ‘Data Exchange 118(1).’ Data Exchange 118(1) is used by data buyers 102 to create data orders for requested data that the buyers 102 are interested in buying. Thus, Data Exchange 118 provides a querying system for buyers 102 to communicate their data requirements by placing data orders on the blockchain. The use of on-chain operations provides a secure mechanism for exchanging data in the decentralized marketplace 100. Data Exchange 118(1) maintains references to the data orders created by data buyers 102 so that the data orders are accessible to other market participants, such as data sellers 104 and notaries 106.” [0031], “A data order (DO) 122 can be placed on-chain by the data buyer 102, as shown in Step 1 of FIG. 1A. Such a data order 122 can include, without limitation: (i) audience A, (ii) requested data R, (iii) price p, (iv) hash of the terms and conditions of data use: H(tc),” [0034], “data order 122 may include…additional information…(v) the complete text of the terms and conditions of data use tc” [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the additional information of the Adams/Sidhu/Lenea combination, additional information from the one or more users includes at least a legal selection of one or more legal options that is legally binding by the one or more users through a smart contract, and wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action, as taught by Travizano.
A person having ordinary skill in the art would have been motivated to combine these features because it would help to electronically secure and facilitate a legal agreement.
As to Claim 18, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Adams further discloses wherein the data platform manages communications with the one or more users regarding the legal action (“If class action data meets the criteria, the notification module 160 notifies the user 121 of the class action in step 503. If class action data does not meet the criteria, in step 502 the user 121 is not notified of the class action.” [0033]).
As to Claim 19, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above. Sidhu further teaches wherein the secure data is accessible through a cryptocurrency token ([0046], “Use of public and private keys enables enforcement of the DataAdmin role by rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request” [0036] and [0092]).
As to Claim 20, the Adams/Sidhu/Lenea combination discloses as discussed above.
Adams does not directly disclose, but Travizano teaches wherein the smart contract controls utilization of the transaction data by the data platform and legal rights of the one or more users with regard to the legal action (“orders 122 that have been created using the Data Exchange smart contract 118(1) in order to look for opportunities where they match the audience A, agree on the requested data R, accept the price p offered by the data buyer 102, accept the terms and conditions of data use tc” [0044], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the feature of Travizano and in particular to include in Adams in the Adams/Sidhu/Lenea combination, the feature of wherein a smart contract controls utilization of the transaction data by the data platform and legal rights of the one or more users with regard to the legal action, as taught by Travizano. A person having ordinary skill in the art would have been motivated to combine these features because it “provides…transparency regarding the data use” and place “the seller 104 in control of whether and how his/her data is used, and by whom” (Travizano, [0046]).
Claim 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Adams in view of Sidhu in view of Lenea in view of Travizano and further in view of Le et al. (US 2013/0124427 A1)(“Le”).
As to Claim 5, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams further discloses wherein the one or more users are an individual, family, group, corporation, or entity (user 121, [0018]).
Adams does not directly disclose adding or removing users from the legal action based on the secure records and the information.
Le teaches adding or removing users from legal action based on records (“the webserver 50 can maintain a database that stores recipient information for a plurality of recipients.” [0024], wherein the “database” is the records) and the information (“the recipient may review, add, change or submit data related to the recipient and the legal proceeding. For example, the GUI can allow a potential class member to join a class action lawsuit,” [0023], wherein the “data” is the information).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Le and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the feature of adding or removing users from the legal action based on the records (as applied to the secure records of Adams) and the information, as taught by Le.
A person having ordinary skill in the art would have been motivated to combine these features since “members of a class may be required to file claims, and may need to affirm or modify information regarding the member with respect to the proceeding” (Le, [0004]) and this would provide a means to do so.
As to Claim 12, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams does not directly disclose wherein the data and the legal action are managed for each of the one or more users according to user preferences set by each of the one or more users.
Le teaches the data and the legal action are managed for each of the one or more users according to user preferences set by each of the one or more users (“the recipient may review, add, change or submit data related to the recipient and the legal proceeding. For example, the GUI can allow a potential class member to join a class action lawsuit, to provide requested information, and/or cast a ballot in a litigation settlement administration or bankruptcy case” [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Le, and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the feature of wherein the data and the legal action are managed for each of the one or more users according to user preferences set by each of the one or more users, as taught by Le.
A person having ordinary skill in the art would have been motivated to combine these features since “members of a class may be required to file claims, and may need to affirm or modify information regarding the member with respect to the proceeding” (Le, [0004]) and this would provide a means to do so.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Adams in view of Sidhu in view of Lenea in view of Travizano and further in view of Le et al. (US 2013/0124427 A1)(“Le”).
As to Claim 17, the Adams/Sidhu/Lenea/Travizano combination discloses as discussed above.
Adams does not directly disclose wherein the data and the legal action are managed for each of the one or more users according to user preferences set by each of the one or more users.
Le teaches the data and the legal action are managed for each of the one or more users according to user preferences set by each of the one or more users (“the recipient may review, add, change or submit data related to the recipient and the legal proceeding. For example, the GUI can allow a potential class member to join a class action lawsuit, to provide requested information, and/or cast a ballot in a litigation settlement administration or bankruptcy case” [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea/Travizano combination by the feature of Le, and in particular to include in Adams in the Adams/Sidhu/Lenea/Travizano combination, the feature of wherein the data and the legal action are managed for each of the one or more users according to user preferences set by each of the one or more users, as taught by Le.
A person having ordinary skill in the art would have been motivated to combine these features since “members of a class may be required to file claims, and may need to affirm or modify information regarding the member with respect to the proceeding” (Le, [0004]) and this would provide a means to do so.
Response to Arguments
Applicant’s arguments filed on April 6, 2026 have been fully considered and addressed below.
On pages 9-10, Applicant argues the 35 U.S.C. §101 rejections. Applicant argues that the digital ledger and the cryptographically enforcing of access rights amount to “technological improvement to secure distributed data management rather than a mere abstract recordkeeping activity.” The Examiner respectfully disagrees. As discussed in the respective rejection, the recited additional elements regarding the “digital ledger” and “to cryptographically enforce” simply append insignificant extra-solution activity to the judicial exception, (e.g., mere pre-solution activity, such as data gathering, in conjunction with an abstract idea; mere post-solution activity in conjunction with an abstract idea). The term “extra-solution activity” is understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. The recited additional elements including the “digital ledger” are “extra-solution” because the while they are included in the claims they are merely a type of storage mechanism for the records. The recited additional element of “to cryptographically enforce” is “extra-solution” because it is recited as intended use at a high level of generality. These limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(h)).
On page 10, Applicant argues that the ordered combination of the claim elements integrates the abstract idea into a practical application. The Examiner respectfully disagrees. Viewing the additional limitations in combination shows that they fail to ensure the claims amount to significantly more than the abstract idea. When considered as an ordered combination, the additional components of the claims add nothing that is not already present when considered separately, and thus simply append the abstract idea with words equivalent to “apply it” on a generic computer and/or mere instructions to implement the abstract idea on a generic computer.
On pages 10-11, Applicant argues that “the additional elements recited in the claims amount to significantly more than the alleged abstract idea, as they require a particular technological framework involving distributed ledgers, blockchain tokens uniquely assigned to users to enforce access rights, and immutable smart contract execution.” The Examiner respectfully disagrees. Applying the abstract idea of communicating legal action and recording election regarding legal action in response to records search to blockchains using smart contracts is akin to applying the abstract idea on a generic computer and/or mere instructions to implement the abstract idea on a generic computer, and/or limiting the use of the abstract idea to the field of blockchain technology. As such, it does not impose any meaningful limits on practicing the abstract idea.
On page 12, Applicant argues that Sidhu “does not disclose or suggest blockchain tokens that are uniquely assigned to individual users for the purpose of cryptographically enforcing user-specific access rights to legal action records” and “[t]he claims therefore provides a distinct technical architecture in which blockchain tokens function as user-level enforcement mechanisms controlling access to secure records stored on the digital ledger, rather than merely serving as identifiers or general permission keys.” To the extent that Applicant’s argued language matches the claims, the Examiner respectfully disagrees. As discussed in the respective rejection, Sidhu teaches wherein the secure records are stored in a digital ledger of a data platform (“the transaction data is validated according to business rules and permissions stored within blockchain database 510, and node 502 generates a block 522 which is then propagated to blockchain,” [0078]) accessible through one or more blockchain tokens (“Use of public and private keys…rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request” [0036], “In step 608, the blockchain database encrypts the compiled transaction data with a private key of the transactional node and, in step” “the collector/committer node decrypts the encrypted envelope (e.g., through permissions granted by the transactional node) prior to adding the sales data to the data block.” [0085], thus the key that opens the envelope is the token) wherein the one or more blockchain tokens is uniquely assigned to a corresponding one of the one or more users (“Use of public and private keys enables enforcement of the DataAdmin role by rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request. In some embodiments, the Data Owner defines the specific levels of data access and relevant semantics.” [0036]) to cryptographically enforce data access rights for each of the one or more users (“sets the access permissions for the candidate node (e.g., utilizing certificates and keys) based on rules or permissions established by the node associated with at least one Data Owner.” [0094]). Furthermore, the Examiner notes that nothing in the claim language excludes the use of cryptographic keys. Therefore, the argument is unpersuasive.
On page 12, Applicant argues that “[n]either Adams, Sidhu, Lenea, nor Travizano teaches or suggests” the “communicating…legal action…through a smart contract…legal action” limitation. In particular, Applicant argues that “Adams merely discloses notifying users of class actions and providing opt-out information. Lenea discusses collecting user information and submitting claims, but does not disclose or suggest that a smart contract is personally executed by users to accept legally binding legal options, nor that such execution is recorded on a digital ledger as an immutable record of the user’s election. Travizano describes blockchain-based data exchanges, but its smart contracts relate to data marketplace transactions and not to the execution of legally binding participation in a legal action recorded immutably on a blockchain ledger as required by the claim.” However, it is first noted that the limitation is rejected based on a combination of references. In particular, the respective rejection notes that
Adams discloses communicating with the one or more users associated with the legal action one or more legal options (see “Opt Out” deadlines depicted in Fig.6) that are legally binding (“The first notice is designed generally to inform entities of their membership in a class and ability to ‘opt-out’ or exclude themselves from the class.” [0003]) in response to determining the one or more users are associated with the legal action (“the notification module 160 notifies the user 121 of the class action in step 503,” [0033]).
Lenea teaches the one or more legal options are communicated and accepted as legally binding through personal execution by one or more users through computer code (“A user who is determined by the service to likely be eligible for settlement-damages may be asked to provide not only the information necessary to determine eligibility, but also information needed to complete the damages-claim, assuming they are in fact eligible, in the same communication.” [0072], “In embodiments in which a POA is not collected from the user upon enrollment, the service may collect one from a user upon determining that a user is eligible for a settlement for which a signature on the settlement-claim form is required.” [0076], “Upon collecting all information and legal authority necessary to submit a settlement-claim for a user, the service completes and submits the damages-claim to the relevant Settlement Administrator at 635” [0077], “In cases in which a claim for settlement-damages requires a signature on one or more forms, and an electronic signature is allowed, the one or more forms are electronically signed by the attorney-in-fact or on of the attorneys in-fact of the user and then submitted.” [0079]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu combination, the feature of the one or more legal options are communicated and accepted as legally binding through personal execution by one or more users through computer code, as taught by Lenea, because it reduces the time and effort otherwise required of the user to traditionally enter the legally binding endeavor (Lenea, [0063]).
Travizano teaches one or more legal options communicated and accepted as legally binding by one or more users through a smart contract (“causing a set of data orders to be displayed on the computing device, the set of data orders having been created by a corresponding set of data buyers using a first blockchain-based smart contract (e.g., Data Exchange).” [0018], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]), wherein the executed smart contract is recorded on the digital ledger as an immutable record (“smart contract 118 can be deployed to the blockchain (e.g. Ethereum blockchain) and given a public address” [0028]) of the one or more users election regarding the legal action (“On-chain operations (denoted by the dashed lines in FIGS. 1A and 1B, as indicated in the key 116) are performed with respect to smart contracts 118 of the block chain network.” [0029], “A first smart contract 118(1) of the marketplace 100 is also referred to herein as ‘Data Exchange 118(1).’ Data Exchange 118(1) is used by data buyers 102 to create data orders for requested data that the buyers 102 are interested in buying. Thus, Data Exchange 118 provides a querying system for buyers 102 to communicate their data requirements by placing data orders on the blockchain. The use of on-chain operations provides a secure mechanism for exchanging data in the decentralized marketplace 100. Data Exchange 118(1) maintains references to the data orders created by data buyers 102 so that the data orders are accessible to other market participants, such as data sellers 104 and notaries 106.” [0031], “A data order (DO) 122 can be placed on-chain by the data buyer 102, as shown in Step 1 of FIG. 1A. Such a data order 122 can include, without limitation: (i) audience A, (ii) requested data R, (iii) price p, (iv) hash of the terms and conditions of data use: H(tc),…” [0034], “data order 122 may include…additional information…(v) the complete text of the terms and conditions of data use tc” [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the one or more legal options communicated and accepted as legally binding by one or more users feature of the Adams/Sidhu/Lenea combination, the one or more legal options communicated and accepted as legally binding by one or more users through a smart contract, wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action, as taught by Travizano.
A person having ordinary skill in the art would have been motivated to combine these features because it would help to electronically secure and facilitate a legal agreement.
As such, the Examiner finds Applicant’s argument unpersuasive.
On page 13, Applicant argues that “[t]he Examiner’s proposed combination therefore relies on disparate teachings that address different technological problems. The cited art fails to provide any teaching, suggestion, or motivation that would lead one of ordinary skill in the art to modify the class action notification system of Adams to incorporate (1) blockchain tokens uniquely assigned to individual users to cryptographically enforce access rights to litigation records, and (2) user-executed smart contracts recorded on a digital ledger as immutable records of legally binding participation decisions.” The Examiner respectfully disagrees since as discussed above and as outlined in the respective obviousness rejections, the claims are rejected on a combination of references with respective supporting rationales.
In particular, as stated in the rejections,
Sidhu teaches wherein the secure records are stored in a digital ledger of a data platform (“the transaction data is validated according to business rules and permissions stored within blockchain database 510, and node 502 generates a block 522 which is then propagated to blockchain,” [0078]) accessible through one or more blockchain tokens (“Use of public and private keys…rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request” [0036], “In step 608, the blockchain database encrypts the compiled transaction data with a private key of the transactional node and, in step” “the collector/committer node decrypts the encrypted envelope (e.g., through permissions granted by the transactional node) prior to adding the sales data to the data block.” [0085], thus the key that opens the envelope is the token) wherein the one or more blockchain tokens is uniquely assigned to a corresponding one of the one or more users (“Use of public and private keys enables enforcement of the DataAdmin role by rendering certain data/transaction envelopes accessible only for the specific keys provided with the envelope or access request. In some embodiments, the Data Owner defines the specific levels of data access and relevant semantics.” [0036]) to cryptographically enforce data access rights for each of the one or more users (“sets the access permissions for the candidate node (e.g., utilizing certificates and keys) based on rules or permissions established by the node associated with at least one Data Owner.” [0094]).
One of ordinary skill in the art of field of endeavor before the effective filing date of the invention would have found it obvious to update the database of Adams, and in particular, to replace the database of Adams with the distributed ledger/blockchain accessible through the uniquely assigned blockchain tokens, as found in the Sidhu, in order to gain the commonly understood benefits of such adaptation, such as increased reliability and security, and availability. All this would be accomplished with no unpredictable results.
Lenea teaches
receiving a notification (“push notification,” [0062]) and associated information by a data platform (server) regarding the legal action associated with data (“keywords” [0062])([0061] and “Web crawling, screen scraping, push notifications, and setting news alerts for keywords related to class-action settlements may be used to gather information from these and other sources.” [0062]), and
the one or more legal options are communicated and accepted as legally binding through personal execution by one or more users through computer code (“A user who is determined by the service to likely be eligible for settlement-damages may be asked to provide not only the information necessary to determine eligibility, but also information needed to complete the damages-claim, assuming they are in fact eligible, in the same communication.” [0072], “In embodiments in which a POA is not collected from the user upon enrollment, the service may collect one from a user upon determining that a user is eligible for a settlement for which a signature on the settlement-claim form is required.” [0076], “Upon collecting all information and legal authority necessary to submit a settlement-claim for a user, the service completes and submits the damages-claim to the relevant Settlement Administrator at 635” [0077], “In cases in which a claim for settlement-damages requires a signature on one or more forms, and an electronic signature is allowed, the one or more forms are electronically signed by the attorney-in-fact or on of the attorneys in-fact of the user and then submitted.” [0079]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu combination by the feature of Lenea and in particular to include in Adams in the Adams/Sidhu combination, the feature of receiving a notification and associated information by the data platform regarding the legal action associated with data (as applied to the data for the goods and services of Adams), because it would facilitate in “the identification of purchases that entitle the purchaser to settlement-damages by virtue of containing a certain component that is eligible for settlement-damages” (Lenea, [0063]); and to include in Adams in the Adams/Sidhu combination, the feature of the one or more legal options are communicated and accepted as legally binding through personal execution by one or more users through computer code, as taught by Lenea, because it reduces the time and effort otherwise required of the user to traditionally enter the legally binding endeavor (Lenea, [0063]).
Travizano teaches data is automatically received and stored utilizing one or more smart contracts (“first method of a first blockchain-based smart contract (e.g., Data Exchange) to create a data order for requested data. After creating the data order, the computing device may access a public address of the data buyer so that the data buyer can see the data sellers who have selected the data order and have agreed to sell their data to the data buyer. If the data buyer selects an identifier(s) of a data seller(s), the computing device receives an indication of this selected identifier (s), and the computing device may receive (e.g., download) the encrypted data of the associated data seller(s) via the buyer's public address” [0017], “The computing device(s) 400 may further store data 418, such as the data 124 and 126 described herein, which may be maintained in any suitable data structure, such as a database or any similar data repository, store, or the like, which may be accessed by the one or more processors 402.” [0098]), and
one or more legal options communicated and accepted as legally binding by one or more users through a smart contract (“causing a set of data orders to be displayed on the computing device, the set of data orders having been created by a corresponding set of data buyers using a first blockchain-based smart contract (e.g., Data Exchange).” [0018], “data seller 104 can indicate his/her acceptance of the terms and conditions 214 and his/her agreement to sell his/her data to the data buyer 102 who created the data order 122(1), thereby placing the seller 104 in control of whether and how his/her data is used, and by whom” [0046]), wherein the executed smart contract is recorded on the digital ledger as an immutable record (“smart contract 118 can be deployed to the blockchain (e.g. Ethereum blockchain) and given a public address” [0028]) of the one or more users election regarding the legal action (“On-chain operations (denoted by the dashed lines in FIGS. 1A and 1B, as indicated in the key 116) are performed with respect to smart contracts 118 of the block chain network.” [0029], “A first smart contract 118(1) of the marketplace 100 is also referred to herein as ‘Data Exchange 118(1).’ Data Exchange 118(1) is used by data buyers 102 to create data orders for requested data that the buyers 102 are interested in buying. Thus, Data Exchange 118 provides a querying system for buyers 102 to communicate their data requirements by placing data orders on the blockchain. The use of on-chain operations provides a secure mechanism for exchanging data in the decentralized marketplace 100. Data Exchange 118(1) maintains references to the data orders created by data buyers 102 so that the data orders are accessible to other market participants, such as data sellers 104 and notaries 106.” [0031], “A data order (DO) 122 can be placed on-chain by the data buyer 102, as shown in Step 1 of FIG. 1A. Such a data order 122 can include, without limitation: (i) audience A, (ii) requested data R, (iii) price p, (iv) hash of the terms and conditions of data use: H(tc),…” [0034], “data order 122 may include…additional information…(v) the complete text of the terms and conditions of data use tc” [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the receiving of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it is automatic and utilizes one or more smart contracts as taught by Travizano; to include in the storing of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it utilizes one or more smart contracts as taught by Travizano; and to include in the one or more legal options communicated and accepted as legally binding by one or more users feature of the Adams/Sidhu/Lenea combination, the one or more legal options communicated and accepted as legally binding by one or more users through a smart contract, wherein the executed smart contract is recorded on the digital ledger as an immutable record of the one or more users election regarding the legal action, as taught by Travizano.
A person having ordinary skill in the art would have been motivated to combine these features because it would help to electronically secure and facilitate a legal agreement.
Additionally, it is noted that it has been held that “broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art” (MPEP 2144.04 § III.) As such, it would have alternatively, been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Adams/Sidhu/Lenea combination by the features of Travizano, and in particular to include in the receiving of data of Adams in the Adams/Sidhu/Lenea combination, the feature that it is automatic, as taught by Travizano, because “broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art” (MPEP 2144.04 § III.).
Therefore, the argument is found unpersuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
Schmidt (US 2012/0246130 A1) which teaches “[s]oftware for managing legal holds on objects identifies a target object to associate with a particular legal hold. The example software is further operable to automatically communicate with a lookup table to verify a hold record associated with the target object. In another example, the software for managing legal holds on objects can receive a legal hold status request for a target object associated with a business application. The software can automatically communicate with a lookup table to determine a hold record identifying a legal hold associated with the target object.” (Abstract)
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/M.A.M/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
1 See Subject Matter Eligibility Analysis for Products and Processes in MPEP §2106 III.
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