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 .
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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the language in claim(s) 1 to illustrate, the limitations of receiving a selection from a user to monetize data associated with the user, the selection included in at least a user profile created for the user; automatically compiling the data associated with the user based on the user profile, wherein the data is compiled from a plurality of sources and normalized; automatically grouping the data associated with the user into a data asset; associating the data asset…wherein the data set is encrypted using a cryptographic key; storing the encrypted data asset and record in distributed ledger; receiving transaction information for the data asset; performing one or more transactions for the data asset based on the transaction information and the user profile, wherein one or more transactions are performed utilizing logic…and documented in the distributed ledger; and providing verification of the one or more transactions for the data asset to the user from the distributed ledger, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interactions, but for the recitation of generic computer components. The claims as a whole recite a method of organizing human activity.
The claimed invention allows for the monetization of user data, compiling the data into a data asset and performing transactions for the data asset which are documented in a distributed ledger which is a commercial interaction.
The mere nominal recitation of a data platform including one or more servers and databases (claim 1), a system comprising a plurality of electronic devices and a data platform accessible by the plurality of wireless devices (claim 11), and a server including a processor for executing a set of instructions and a memory for storing the set of instructions, and a plurality of databases in communication with the servers (claim 15), do not take the claim out of the methods of organizing human activity grouping. Thus, under step 2A, prong one of the Patent Eligibility Guidance (PEG), the claims recite an abstract idea.
Under Step 2A, prong two of the PEG, this judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements— a data platform including one or more servers and databases (claim 1), a system comprising a plurality of electronic devices and a data platform accessible by the plurality of wireless devices (claim 11), and a server including a processor for executing a set of instructions and a memory for storing the set of instructions, and a plurality of databases in communication with the servers (claim 15). The data platform including servers and databases, a plurality of electronic devices, a plurality of wireless devices and a server including a processor for executing a set of instructions, memory storing instructions and a plurality of databases are recited at a high-level of generality (i.e., as a data platform including on or more servers and databases, and as a generic server including a processor executing instructions performing the generic computer functions of receiving a selection from a user to monetize data associated with the user including compiling data associated with user and normalizing data, grouping the data into a data asset, associating the data asset with a data platform, encrypting the data, receiving transaction information for the data asset, performing transactions for the data asset and documenting in a distributed ledger, and providing verification of the one or more transactions for the data asset to the user from a distributed ledger) such that they amount to no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05 (h)).
The claims achieve the result of performing transactions for data that incorporate monetizing data, securing data, authenticating data and verifying data by compiling data encrypting the data asset, storing the encrypted asset in a distributed ledger, authenticating the parties involved in the transaction, and documenting the transactions in the distributed ledger.
Although encryption is used, such use is both generic and conventional. The object of the claims is to perform transactions, and securing the data asset involved in the transaction using encryption. The claims call for generic use of encryption in the manner this technology conventionally operates. Simply reciting a particular technological module or technological environment does not confer eligibility.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under Step 2B of the PEG, the claim(s) does/do 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 elements of using a data platform including one or more servers and databases, a system comprising a plurality of electronic devices and a data platform accessible by the plurality of wireless devices, and a server including a processor for executing a set of instructions and a memory for storing the set of instructions, and a plurality of databases in communication with the servers, amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, the use of encryption technology is well understood, routine and conventional. Here, the Specification does not provide any indication that the data platform, devices and memory are anything other than generic computer components and the following publications demonstrate the well-understood, routine, and conventional nature of the additional elements of encryption technology and storing the encrypted data asset in a distributed ledger when they are claimed in a merely generic manner (as they are here):
US 2019/0173854 (Beck);
US 2019/0237169 (Culver et al.);
US 2017/0103468 (Orsini et al.);
US 2017/0011460 (Molinari et al.).
Accordingly, a conclusion that the encrypting the data assets using the cryptographic key, storing the encrypted data asset in a distributed ledger, documenting transactions on the distributed ledger, and providing verification to the user via the distributed ledger, limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 3. For these reasons, there is no inventive concept.
The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claims 2-9, 12-14, 16-20 simply help to define the abstract idea.
As for claim 10, the claim recites limitations that further define the abstract idea noted above. In addition, it recites the additional elements of the data platform is a trading platform for performing the one or more transactions, wherein the data platform communicates with a plurality of devices executing a mobile application in communication with the data platform. The trading platform and data platform communicating with a plurality of devices executing a mobile application are recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception using a generic computer component. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-20 is/are ineligible.
Claim Rejections - 35 USC § 103
3. 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.
4. Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Puertolas-Montanes et al. (US 2014/0344015), hereinafter, Puertolas, in view of Soroca (WO 2010/104834 A2) in further view of Molinari et al. (US 2017/0011460).
Re-claim 1. Puertolas disclose:
receiving a selection from the user to monetize data associated with the user, the selection including at least a user profile created for the user (user becomes member of the mnopi system and has agreed to provide authorization granting the mnopi system access to data generated by subscriber -[0037]; [0038]; monetization of data associated with the user- [0012]-[0013]; [0016]; “Because there is an extensive range of information, assets, and other valuable data that may be gathered, managed, valuated, and/or traded as a product comprising an individual’s personal and behavioral profile…”-[0021]);
automatically, compiling the data associated with the user based on the user profile, wherein the data is compiled from a plurality of sources by the data platform (personal data aggregation wherein said personal data comprise diverse content-[0038]; preferred embodiments comprises a mnopi server where high-level data aggregation occurs and system-wide applications reside-[0042]; plurality of sources of personal data-[0049]; “Because there is an extensive range of information, assets, and other valuable data that may be gathered, managed, valuated, and/or traded as a product comprising an individual’s personal and behavioral profile…”-[0021]);
automatically grouping the data associated with the user into a data asset by the data platform (“Not only does a subscriber acquire control over outside actors' access to the relevant data as it arises from the subscriber's activity, but the subscriber also owns the data and its aggregated, analyzed, and transformed composite dataset that is produced and stored by applications and hardware within the centralized administrative component of the mnopi system.”- [0051]; Mnopi Platform [0052]; monetizing the aggregated user data into a data asset- [0053]; personal data asset-[0055]);
associating the data asset with the data platform including at least one or more servers and databases (service provider platform-[0003], servers and databases-[0042 ],[0061], composite dataset that is produced and stored by applications and hardware within the centralized administrative component of the mnopi system.”- [0051]; Fig. 3) ;
receiving transaction information for the data asset at the data platform (composite dataset that is produced and stored by applications and hardware within the centralized administrative component of the mnopi system.”- [0051]; Mnopi platform [0052]; transactions involving individually negotiated monetization terms -[0053]; [0055]);
performing one or more transactions for the data asset based on the transaction information and the user profile, wherein the one or more transactions are performed utilizing logic of the data platform (“The present invention provides an integrated system comprising means for enabling a consumer to control and monetize their personal data.”-[0016]; regulating of the data includes profile data [0019], data traded as an product includes individual’s personal profile-[0021]; monetizing the aggregated user data into a data asset- [0053]; options for capturing said monetary value based on use of personal data-[0054];the monetization of personal data of a consumer is screeded before being sold to interested parties.-[0055]);
and providing verification of the one or more transactions for the data asset (user validates data-[0046]; “dashboard provided to consumer to see and manage their user data and discover monetary value and determine how to allocate the data items and how to capture their value…transactions involving individually negotiated monetization terms”-[0053]).
Puertolas fail to disclose wherein the data is normalized by the data platform.
Soroca however, teaches the profile management platform (PMP) may include a number of modules to normalize the data collected from disparate data sources-[001107], and a user profile creation in the PMP may include data collection, normalization, enrichment, warehousing and analysis.-[001102].
It would have been obvious to one having ordinary skill in the art to include in the system and method of enabling a consumer to control and monetize their personal data of Puertolas the ability to normalize the data collected from disparate data sources as taught by Soroca since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Molinari, not Puertolas, disclose:
wherein the data asset is encrypted using a cryptographic key generated by the data platform, storing the encrypted data asset in a secure storage of the data platform and recorded in a distributed ledger accessible by the data platform (Interfaces provided by the cryptographic wallet and/or platform enable the users to perform trade-related functions (e.g., such as viewing investment information, issuing securities, and trading securities)-¶[0020], [0024]. The method further includes the step of storing a cryptographic wallet that includes encryption protocols for securely managing a virtual portfolio of securities. The cryptographic wallet may further include a first set of protocols for issuing securities. The first set of protocols are configured to store issued securities directly on the distributed blockchain ledger itself by utilizing a one-way hashing algorithm to append one or more blocks to the distributed blockchain ledger-[0012]; securities trading platform and blockchain enabled techniques ¶¶[0028-0030]);
wherein the data platform authenticates parties involved in the transaction (Information may be gathered to verify that the parties are eligible to conduct the transaction (e.g., to verify a buyer is an accredited investor and to verify a seller owns the security…) ¶¶[0046]; [0102]); wherein the one or more transactions are …documented in the distributed ledger (The first set of protocols are configured to store issued securities directly on the distributed blockchain ledger itself-¶[0012]); providing verification of the one or more transactions for the data asset to the user from the distributed ledger-(After a transfer contract is successfully confirmed, the cryptographic wallets 125 associated with the users 105 may append an entry to the ledger 175 that indicates completion of the contract and the change in the security's ownership. The entry that is appended to the ledger 175 may reference the blocks in the ledger 175 pertaining to the dataset associated with the security in order to indicate updated ownership of the security and provide a proper audit trail. In response to the ledger 175 being appended, a virtual data token associated with the security may be transferred from the cryptographic wallet 125 of the seller to the cryptographic wallet 125 of the buyer-¶ [0047]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Puertolas to include encrypting data assets using a cryptographic key, storing the encrypted data asset in a distributed ledger maintained by the trading platform, authenticating parties involved in the transaction, documenting the transactions in the distributed ledger, and providing verification of the transactions for the data asset to the user from the distributed ledger as taught by Molinari in order to use Blockchain technology to trade, clear and settle securities transactions.
Re-claim 2. Puertolas disclose wherein the verification of the transaction is sent to the user in response to the data asset including data associated with the user (consumer utilizing the system is informed when any of their activity generates personal data and what monetary value is may have.-[0054]).
Re-claim 3. Puertolas disclose wherein the grouping further comprises associating the data with the user including one or more of an individual, business, entity, or organization (“Any of these elements may further comprise systems and methods for enabling the reflexive management of personal data according to the propositions that (1) an individual's personal control over the content, use, and value of his or her personal data should be maximized, (2) third parties' collection, use and/or control over said data should be made to require the informed consent of the respective individual to the greatest extent practicable, (3) property interests and other value in and of said data should be retained by and/or returned to said individual, (4) the value inherent in said data should be valuated not only by the market's criteria but also by criteria uniquely relevant to said individual, and (5) a company management entity should oversee and provide economies of scale and powerful means for accomplishing the ultimate goals desired by the subscribers across the spectrum of the internet value chain while providing goods and services focused directly towards this end.”-[0035]).
Re-claim 4. Puertolas disclose wherein the receiving is performed in response to an opt in from the plurality of sources. (Subscribers provide prior authorization from the system to access data generated by the subscriber.-[0037].
Re-claim 5. Molinari disclose wherein the one or more transactions are a futures transaction for the data. (futures contracts trading transactions-[0039]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Puertolas to include futures contracts trading transactions as taught by Molinari in order to enable issuance or secondary trading of any type of security. (Molinari, [0039]).
Re-claim 6. Puertolas disclose wherein the one or more transactions are performed utilizing blockchain. (invention may involve use of a platform-specific digital currency, such as cryptocurrency, as the means for monetizing the value of personal data, maintaining blockchain.-[0024]).
Re-claim 7. Puertolas disclose wherein the verification is recorded in a blockchain ledger. (invention may involve use of a platform-specific digital currency, such as cryptocurrency, as the means for monetizing the value of personal data, maintaining blockchain.-[0024]).
Molinari disclose that the one or more transactions are recorded in the distributed ledger in [0012], [0047].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Puertolas to include encrypting data assets using a cryptographic key, storing the encrypted data asset in a distributed ledger maintained by the trading platform, authenticating parties involved in the transaction, documenting the transactions in the distributed ledger, and providing verification of the transactions for the data asset to the user from the distributed ledger as taught by Molinari in order to use Blockchain technology to trade, clear and settle securities transactions.
Re-claim 8. Puertolas disclose wherein the transaction information includes at least a price for the data asset, the parties bound by the transaction, and an executing date. (Communicating details of transaction with buyers or third parties [0051]; user dashboards provides information about the data asset such as rates for type of personal data parties interested in purchasing the data, and value of data at a particular time [0053]- [0055]).
Re-claim 9. Puertolas disclose communicating the transaction information to parties involved in the one or more transactions or authorized to see the transaction including at least the user before performing the one or more transactions (The Mnopi system allows the user to see what types of data are being saved and permit him/her to block the storage of any data at any time, to allocate that data to different uses, and to evaluate the potential monetized value of said data.-[0059]; [0061]).
Re-claim 10. Puertolas disclose wherein the data platform is a trading platform for performing the one or more transactions, wherein the data platform communicates with a plurality of devices executing a mobile application in communication with the data platform. (Trading system and platform –[0052]; mobile devices [0028], [0059], and Fig. 3).
Claim 11 recites similar limitations found in claim 1 above and is therefore rejected using the same art and rationale. Furthermore, Puertolas disclose a plurality of electronic devices executing a data application, the data application is configured to receive data from a plurality of sources including user; a data platform accessible by the plurality of wireless devices executing the data application through one or more networks, wherein the data platform groups the data received from the plurality of sources-(Trading system and platform –[0052]; mobile devices [0059], client application installed on the computing devices-[0028] and Fig. 3).
Claim 12 has similar limitations found in claim 2 above, and therefore is rejected by the same art and rationale.
Claim 13 has similar limitations found in claim 9 above, and therefore is rejected by the same art and rationale.
Claim 14 has similar limitations found in claims 6 and 7 in combination, as shown above, and therefore is rejected by the same art and rationale.
Claim 15 recites similar limitations found in claim 1 above and is therefore rejected using the same art and rationale. Furthermore, Puertolas disclose a server including a processor for executing a set of instructions and a memory for storing the set of instructions; a plurality of databases in communication with the servers configured to store data –([0037],[0042]).
Claim 16 has similar limitations found in claim 2 above, and therefore is rejected by the same art and rationale.
Claim 17 has similar limitations found in claim 3 above, and therefore is rejected by the same art and rationale.
Claim 18 has similar limitations found in claim 9 above, and therefore is rejected by the same art and rationale.
Claim 19 has similar limitations found in claims 6 and 7 in combination, as shown above, and therefore is rejected by the same art and rationale.
Claim 20 has similar limitations found in claim 8 above, and therefore is rejected by the same art and rationale.
Response to Arguments
5. On pages 8-9 of the Remarks, regarding the rejection under 35 USC 101, Applicants argue that the Office Action improperly characterizes the claims at an impermissibly high level of generality, reducing the claimed invention to generic steps such as "receiving," "compiling," "grouping," "storing," and "performing." This approach is inconsistent with current USPTO guidance and controlling precedent.
The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., a data platform including one or more servers and databases, claim 1 recites abstract ideas in the category of “methods of organizing human activity.” In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., the “receiving,” “automatically compiling,” “automatically grouping,” “associating,” “storing,” “performing,” and “providing”—and explains that they describe the concept of the monetization of user data, compiling the data into a data asset and performing transactions for the data asset which are documented in a distributed ledger which is a commercial interaction, which is a commercial interaction (fundamental economic principal or practice) falling under the Certain Method of Organizing Human Activity. The Examiner' s approach here is consistent with USPTO guidance.
Applicants further argue that “as clarified in the December 5, 2025 update to the MPEP implementing Ex parte Desjardins, Examiners should not evaluate claims at such a high level of generality that meaningful technical limitations are dismissed. The present rejection does precisely that by treating the claims as directed to "future valuation and management of personal data" and dismissing the recited data-platform.”
The argument is not persuasive.
In Desjardins, the claimed process was directed to “a computer-implemented method of training a machine learning model” (emphasis added). The claims, and as supported by the Specification, recited steps specifically directed to training the machine learning models such as including parameters and that the ML model was trained on a first ML tasks using first training data to determine first values of a plurality of parameters and the method comprised: determining for each parameter, respective measure of an importance of the parameter to the first ML task and the claim goes on to specifically and in detail describe how the determining step was performed, and the steps involved in the training of the model to perform ML tasks. Notably, the recited process trained the machine learning model in a particular way using particular information and techniques—an improvement resulting in training the same ML model on multiple tasks. The specification recited that the improvement is to effectively learn new tasks in succession whilst protecting knowledge about previous tasks.”-Spec.§ 21, and the claimed improvement allows for once the model has been trained, the model can be used for each of the multiple tasks with an acceptable level of performance while using less storage capacity and having reduced system complexity.
Unlike in Desjardins, the recited data platform, at least one or more servers and databases, secure storage (claim 1), a system comprising a plurality of electronic devices and a data platform accessible by the plurality of wireless devices (claim 11), and a server including a processor for executing a set of instructions and a memory for storing the set of instructions, and a plurality of databases in communication with the servers (claim 15), do not amount to improvements in training a machine learning model. The Desjardins court indicated that the claimed invention resulted in an improvement to how the machine learning model itself is trained and operates. In contrast, Applicants' claims address personal data management, more specifically, system, method, apparatus, and platform for futures valuation and management of personal data-See Specification, page 1, Field of Disclosure. The claims in Desjardins were directed to an improvement in training and operating a machine learning model, rather than applying a computer to perform generic data manipulation steps, as in the claims of the instant application.
The claimed “data platform” is recited at a high level of generality in the claims and this conclusion is amply supported by the Specification-see p, 17 lines 15-19, “The data platform 120 may include one or more devices networked to manage the cloud network and system 114. For example, the data platform 120 may include any number of servers, routers, switches, or advanced intelligent network devices. For example, the data platform 120 may represent one or more web servers that performs the processes and methods herein described.”
On pages 9-10 of the Remarks, Applicants contend that under Step 2A, prong two, the claims integrate any alleged abstract idea into a practical application because “the claims are directed to “a specific, ordered technological pipeline that transforms heterogeneous user data into a cryptographically secured, ledger-anchored data asset and executes authenticated transactions against that asset. In particular, the claims require automatically compiling data from a plurality of sources and normalizing the data by the data platform, automatically grouping the normalized data into a data asset, encrypting the data asset using a cryptographic key generated by the data platform, storing the encrypted data asset in secure platform storage and recording it in a distributed ledger, authenticating transaction participants using platform logic, performing one or more transactions utilizing that logic, documenting the transactions in the distributed ledger, and providing verification of the transactions from the distributed ledger to the user.” Applicants further contend that this is not a mere recitation of a business objective, but rather a concrete implementation of a data-processing architecture that cannot be performed mentally or manually. The arguments are not persuasive.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea or those that generally link the use of the judicial exception to a particular technological environment or field of use.-see MPEP 2106.05(f) &(h).
On page 10 of the Remarks, Applicants argue that the claims are improve the functioning of a data-platform system by enabling the system to integrate heterogeneous data sources through normalization, create a unified and addressable data asset, apply asset level cryptographic protection using platform-generated keys anchor that asset to a distributed ledger for tamper-evident tracking, and verify transactions using ledger derived records. The argument is not persuasive because the claims recite generic computer components, i.e., a data platform including at least one or more servers and databases, and secure storage implementing the claimed invention. The computer components are used in their ordinary capacity to implement the claimed invention. The improvement here is in a business process and the claims do not recite an improvement in the functioning of the computer or an improvement to any other technology or field of use. Although encryption is used, such use is both generic and conventional.
The object of the claims is to perform transactions, and securing the data asset involved in the transaction using encryption. The claims call for generic use of encryption in the manner this technology conventionally operates. Simply reciting a particular technological module or technological environment does not confer eligibility. See the 35 USC 101 rejection above and supporting publications cited regarding the well-understood, routine and conventional nature of encryption technology.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Merely confining the abstract idea to a particular technological environment does not establish a practical application. See Guidance, 84 Fed. Reg. at 54. “A claim does not cease to be abstract for section 101 purposes simply because the claims confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.” In re Mohaptra, 842 F. APP' x 635, 638 (Fed. Cir. 2021).
On page 11, applicants argue that although the claims involve transactions, they do not recite human behavior such as negotiation, pricing and contractual relationships, and that the focus of the claims is on how the system technically enables, secures and verifies transactions involving data assets. The argument is not convincing because the claimed invention is directed to the monetization of user data and performing transactions such as futures transactions, and the data platform is a trading platform that performs one or more transactions-see claims 5, 8, and 10. The claims are directed to certain methods of organizing human activity, in particular, commercial or legal interactions, but for the recitation of generic computer components .
On page 11, in response to applicant's argument, it is noted that the features upon which applicant relies (i.e., ‘end-to-end pipeline’) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Nevertheless, as best understood by the Examiner, Applicants contend that “the office action does not identify any evidence that this ‘end-to-end pipeline’ is well understood routine and conventional.” The claim elements considered well understood routine and conventional have been addressed in the 101 rejection above including supporting publications per the Berkheimer Memo.
Applicants argue that even if the claims involve an abstract idea, the recite significantly more under Step 2B and are similar to the claims in Bascom. The Examiner respectfully disagrees.
In Bascom, the court found that the claims were directed to an abstract idea under step one. Id. at 1347-49. Under step two, the court found that the limitation of the claims, taken individually, recited a generic computer, network, and Internet components which were not inventive themselves. Id. at 1349-52. However, the court found that the ordered combination of these limitations provided the requisite inventive concept. Id. The claimed and described inventive concept was the “installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. at 1350. The design permitted the filtering tool to have “both the benefits of a filter on a local computer and the benefits of a filter on the [Internet Service Provider] server.” Id. This was not customary or generic, and the claims did not preempt all ways of filtering content on the Internet—instead, the patent claimed and explained how a particular arrangement of elements was a “technical improvement over prior art ways of filtering such content.” Id. The court thus distinguished ineligible “abstract-idea-based solutions[s] implemented with generic technical components in a conventional way” from the eligible “technology-based solution” and software based invention[] that improve[s] the performance of the computer system itself.”” Id. at 1351 (citation omitted). The claims in the instant application do not require an arguably inventive distribution of functionality within a network.
The claims in this application specify monetizing data, securing data, authenticating data and verifying data by compiling data encrypting the data asset, storing the encrypted asset in a distributed ledger, authenticating the parties involved in the transaction, and documenting the transactions in the distributed ledger but they do not include any requirement for performing the claimed functions of gathering, analyzing and transmitting data by use of anything but entirely conventional, generic technology.
On page 12, Applicants argue that the Examiner’s reliance on cited references to establish conventionality does not satisfy the evidentiary requirements under Berkheimer regarding the well-understood routine and conventional nature of encryption technology and storing the encrypted data asset in a distributed ledger. The Examiner respectfully disagrees.
Although encryption is used, such use is both generic and conventional. The object of the claims is to monetize user data, perform transactions, and securing the data asset involved in the transaction using encryption. The claims call for generic use of encryption in the manner this technology conventionally operates. Simply reciting a particular technological module or technological environment does not confer eligibility. As indicated in the 35 USC 101 rejection above, encryption technology and storing the encrypted data asset in a distributed ledger when they are claimed in a merely generic manner (as they are here). The Examiner has provided support under Berkheimer Option 3 by listing publications in the rejection above.
Mere instructions to apply an exception using generic computer components, generally linking the use of the judicial exception to a particular technological environment or field of use, and well-understood, routine and conventional activity cannot provide an inventive concept. The claims are not patent eligible under 35 USC 101.
On page 13 of the Remarks, regarding the rejection under 35 USC 103, Applicants contend that the Office Action has not established a prima facie case of obviousness because the cited references fail to teach or suggest the claimed language, and the Office Action does not provide an articulated rationale with rational underpinning sufficient to support the proposed combination. A person of ordinary skill in the art would not look to a securities-trading blockchain system to modify a personal-data monetization platform absent impermissible hindsight, and that the office action's rationale therefore lacks the required rational underpinning and is based on hindsight reconstruction of the claimed invention. The argument is not persuasive, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicants argue that Molinari is directed to securities trading system including cryptographic wallets, blockchain ownership records, and verification of accredited investors in connection with issuance and transfer of securities and should not be combined with Puertolas which is directed to monetization of personal and behavioral data within a data aggregation platform and does not involve securities, does not require broker-dealer infrastructure and does not involve clearing or settlement mechanisms for financial instruments. The argument is not convincing because Puertolas does in fact disclose that the range of information, assets and other valuable data that is gathered, managed and valuated, and or traded as a product comprises an individual’s personal and behavioral data.-[0021]; monetization of the data-[0046]; commoditizing and marketing the data-[0010],[0035] and use of a platform-specific digital currency, such as crypto as the means for monetizing the value of the personal data, maintaining a blockchain in a cryptocurrency protocol-[0024].
Furthermore, it is noted that the applicants argue that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., broker-dealer infrastructure, clearing or settlement mechanisms for financial instruments) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
On pages 13-14 of the Remarks, Applicants argue that claim 1 recites a specific, ordered technological pipeline and that the Soroca references although teaches a general disclosure of data normalization, Soroca does not teach normalization as part of a pipeline that results in discrete encrypted data asset recorded on a distributed ledger. As an initial matter, it is noted that a “technological pipeline or pipeline” is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Nevertheless, Soroca teaches a data monetization platform including a number of modules to normalize the data collected from disparate data sources-[001107], and a user profile creation in the PMP may include data collection, normalization, enrichment, warehousing and analysis.-[001102]. The combination of Puertolas, Molinari and Soroca teaches the recited claim limitations.
Applicants argue that Puertolas fails to disclose automatically grouping user data into a data asset by the data platform. The argument is not persuasive. Puertolas discloses generation of personal data assets in [0055]; aggregation of the personal asset data-[0044]; assets and other valuable data may be gathered, managed, valuated and/or traded as a product comprising an individual’s personal and behavioral profile-[0021].
Applicants argue that the claimed “data asset” is not merely aggregated data but a structured and addressable unit. It is noted that the data asset being a structured addressable unit is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argue that Puertolas does not disclose associating the asset with a platform generated cryptographic key. Molinari discloses using blockchain technology to store datasets associated with a security and that the entry in the blockchain [distributed ledger] corresponding to the security may include a key that enables the data to be unlocked and retrieved-see [0022].
Applicants argue that Molinari does not encrypt user generated data assets. The Examiner respectfully disagrees. Molinari encrypts data associated with a transaction in the blockchain including using a cryptographic key-[0024].
On page 15 of the Remarks, applicants contend that Molinari does not disclose authentication of parties involved in the transaction. The applicants’ attention is directed to [0046] of Molinari, wherein Molinari teaches “Information may be gathered to verify that the parties are eligible to conduct the transaction (e.g., to verify a buyer is an accredited investor and to verify a seller owns the security which is the subject of the transaction.”) -¶[0046], see also ¶¶[0048]; [0102].
On page 15, in response to applicant's argument that the combination again relies on hindsight to selectively import isolated features of Molinari without a sufficient explanation as to why such features would be incorporated into Puertolas, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On page 16 of the Remarks, Applicants argue that Molinari does not disclose providing verification of the one or more transactions for the data asset to the user from the distributed ledger. The Examiner respectfully disagrees.
Molinari discloses that after a transfer contract is successfully confirmed, the cryptographic wallets 125 associated with the users 105 may append an entry to the ledger 175 that indicates completion of the contract and the change in the security's ownership. The entry that is appended to the ledger 175 may reference the blocks in the ledger 175 pertaining to the dataset associated with the security in order to indicate updated ownership of the security and provide a proper audit trail-¶ [0047] and “Utilize the blockchain ledger to verify transfer transactions..”- Fig. 5 item 550, “The cryptographic wallets enable the users to access a distributed, peer-to-peer network that utilizes blockchain technology in various ways to facilitate security transactions. Interfaces provided by the cryptographic wallet and/or platform enable the users to perform trade-related functions (e.g., such as viewing investment information, issuing securities, and trading securities).-[0020]; the network utilizes a private, permission-based blockchain that is available to users who have downloaded cryptographic wallets and registered with the platform. When an issuer or other user creates a new security, the security and its associated data are stored directly on the ledger itself and are represented as one or more entries (or “blocks”) on the blockchain.-[0021]; [0022].
The user in Molinari is given access to the information stored on the blockchain including providing verification of transactions for a data asset to the user. Molinari describes a private permission-based blockchain that is available to the user and data stored on the blockchain can be viewed and therefore verified by the user.
Conclusion
6. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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/ELDA G MILEF/ Primary Examiner, Art Unit 3694
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