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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/12/2025 has been entered. Response to Amendment
Amendment received on 11/12/2025 is acknowledged and entered. Claims 14 and 21-25 have been withdrawn. Claims 1, 15, 27 and 34 have been amended. Claims 1-35 are currently pending in the application.
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 1-13, 15-20 and 26-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In determining whether a claim falls within an excluded category, the Examiner is guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)); Bilski v. Kappos, 561 U.S. 593, 611 (2010); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); the October 2019 Update of the 2019 Revised Guidance (Oct. 17, 2019); 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (July 17, 2024), and the USPTO’s Paten Subject Matter Eligibility Memorandum of August 4, 2025.
Step 1
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. ____ (2014). Claims 1 is directed to a statutory category, because a series of steps for verifying consent to modify the title to a particular property satisfies the requirements of a process (a series of acts). Claim 15 is directed to a statutory category, because a non-transitory computer-readable storage medium comprising computer-readable instructions satisfies the requirements of a product. The broadest reasonable interpretation of claim 27 encompasses a computer system (e.g., hardware such as a processor and memory) that implements the recited functions. If assuming that the system comprises a device or set of devices, then the system is directed to a machine, which is a statutory category of invention. (Step 1: Yes).
Next, the claim is analyzed to determine whether it is directed to a judicial exception.
Step 2A – Prong 1
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more of verifying consent to modify the title to a particular property. The claim recites:
1. A computer-implemented method for verifying consent to modify a title to a particular property on a blockchain, the method comprising:
receiving, by a node of a blockchain network executing an automated agent, a request from a property owner to prepare a contract record for storing executable code and contract data regarding terms of the contract in a blockchain;
dynamically monitoring, by the automated agent, a blockchain distributed ledger for transaction activity related to a real property owned by the property owner to verify and authenticate a real property transfer- related event according to terms of the contract, wherein terms and conditions of the contract includes a protective scheme;
receiving, at a biometric sensor in communication with the computing device and the
automated agent, biometric information of the user to authenticate identity of the user;
generating, by the automated agent, a covenant for recordation against the title of the real property based on the contract, wherein the covenant includes a public key and a protective scheme;
creating a digital signature by signing the covenant with a cryptographic signature private key of the automated agent;
storing, by the automated agent, the data of the contract record and the covenant record in a repository in a blockchain distributed ledger having a plurality of transactions stored in the blockchain formed from blocks of records containing transactions, or stored in the database;
wherein the protective scheme is designed to limit future title transactions of the real property; and
wherein the covenant specifies that a future certificate of compliance must be cryptographically signed by a private key of the automated agent; and
implementing, by the automated agent, a blockchain multiple layer security scheme that adds additional layers of security to prevent fraud from occurring on the blockchain by monitoring, controlling, and verifying each transaction related to the real property recorded on the blockchain, wherein the blockchain multiple layer security scheme includes: (a) a first layer of security that requires biometric authentication; and (b) a second layer of security that requires compliance with the terms and conditions of the protective scheme.
The limitations of receiving a request; monitoring transaction activity; receiving biometric data; authenticating the user; verifying and authenticating a property transfer; generating a covenant; creating a digital signature; storing data in a blockchain ledger, and monitoring, controlling, and verifying each transaction, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, which may be practically performed in the human mind using observation, evaluation, judgment, and opinion (MPEP 2106.04(a)(2), subsection III), and/or certain methods of organizing human activity but for the recitation of generic computer components. (Note: Examiner’s language (e.g. “receiving a request”; “monitoring transaction activity”; etc.) is an abbreviated reference to the detailed claim steps and is not an oversimplification of the claim language; the Examiner employing such shortcuts (that refer to more specific steps) when attempting to explain the rejection). That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind, and/or performed as organized human activity. Aside from the general technological environment (addressed below), it covers purely mental concepts and/or certain methods of organizing human activity processes, and the mere nominal recitation of a generic network appliance (e.g. an interface for inputting or outputting data, or generic network-based storage devices and displays) does not take the claim limitation out of the mental processes and/or certain methods of organizing human activity grouping.
Specifically, the utilizing statistical tools to process data and to output the estimated values - said functions could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas (e.g., mental comparison regarding a sample or test subject to a control or target data in Ambry, Myriad CAFC, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams)). In Grams, the recited functions require obtaining data or patient information (from sensors), and analyze that data to ascertain the existence and identity of an abnormality or estimated responses, and possible causes thereof. And the step of utilizing blockchain protocols to verify and record a transaction represents a well-known proof-of-work algorithm to record a public history of transactions, which is similar to the algorithm for converting binary-coded decimal numerals into pure binary form in Benson (Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972). While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972). Moreover, the Federal Circuit has held, “without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Further, “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Thus, claim 1 combines a routine, conventional activity of maintaining real estate transaction with a well-known blockchain algorithm for protecting the transaction data. However, “Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable.” Id., at ___, ___ (slip op., at 16, 15). Also, “[T]he prohibition against patenting abstract ideas‘ cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity’” (quoting Diehr, supra, at 191–192).
It is similar to other abstract ideas held to be non-statutory by the courts. See, also, In re Chorna 656 Fed. Appx. 1016 (Fed Cir. 2016) - hindsight allocation instrument for tracking financial instruments; buySAFE, Inc. v. Google, Inc. 765 F.3d 1350, 112 U.S.P.Q.2d 1093 (Fed. Cir. 2014) - safe transaction guaranty; Fort Properties, Inc. v. American Master Lease LLC - methods and investment instruments for performing tax-deferred real estate exchanges, 671 F.3d 1317, 101 U.S.P.Q.2d 1785 (Fed. Cir. 2012); In re Villena - property Information development, distribution & display, 669 Fed. Appx. 573 (Fed. Cir. 2016), CAFC Appeal No. 16-1062; Intellectual Ventures I LLC v. Erie Indemnity Co. 850 F.3d 1315, 121 U.S.P.Q.2d 1928 (Fed Cir. 2017) - mobile interface for accessing remotely stored documents, and retrieving data from a database using an index of XML tags and metafiles.
As per receiving, storing and outputting data limitations, it has been held that “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted); see also In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020) (claims to collecting, organizing, grouping, and storing data using techniques such as conducting a survey or crowdsourcing recited a method of organizing human activity, which is a hallmark of abstract ideas).
All these cases describe the significant aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
Therefore, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” and/or “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. (Step 2A – Prong 1: Yes).
Step 2A – Prong 2
In Prong Two, the Examiner determines whether claim 1, as a whole, recites additional elements that integrate the judicial exception into a practical application of the exception, i.e., whether the additional elements 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 no more than a drafting effort designed to monopolize the judicial exception. See Guidance, 84 Fed. Reg. at 54-55. If the additional elements do not integrate the judicial exception into a practical application, then the claim is directed to the judicial exception. See id., 84 Fed. Reg. at 54. “An additional element [that] reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” is indicative of integrating a judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 55.
The Examiner determined that this judicial exception is not integrated into a practical application, because there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claim recites additional elements – using a processor to perform the steps of receiving a request; monitoring transaction activity; receiving biometric data; authenticating the user; verifying and authenticating a property transfer; generating a covenant; creating a digital signature; storing data in a blockchain ledger, and monitoring, controlling, and verifying each transaction. However, the processor in each step is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, including receiving, storing, comparing, and outputting data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f). The processor that performs the recited steps merely automates these steps which can be done mentally or manually. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claim only manipulates abstract data elements into another form, and does not set forth improvements to another technological field or the functioning of the computer itself and, instead, uses computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above.
Further, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually; there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, - their collective functions merely provide conventional computer implementation. None of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Also, maintaining a continuously growing list of ordered records that are securely linked together using cryptography does not improve the technology, cause a particular treatment, or implement the abstract idea into a particular machine.
The recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require receiving, comparing, storing and outputting data.
As per receiving, storing and/or outputting data limitations, these recitations amount to mere data gathering and/or outputting, is insignificant post-solution or extra-solution component and represents nominal recitation of technology. Insignificant "post-solution” or “extra-solution" activity means activity that is not central to the purpose of the method invented by the applicant. However, “(c) Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility”. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)). Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited. See Bilski, 130 S. Ct. at 3230.
Therefore, the method as a whole, outputs only data structure, - everything remains in the form of a code stored in the computer memory. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea. (Step 2A – Prong 2: No).
Step 2B
If a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The Examiner determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps of receiving a request; monitoring transaction activity; receiving biometric data; authenticating the user; verifying and authenticating a property transfer; generating a covenant; creating a digital signature; storing data in a blockchain ledger, and monitoring, controlling, and verifying each transaction amount to no more than mere instructions to apply the exception using a generic computer component. The claim is now re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
The method would require a processor and memory in order to perform basic computer functions of receiving information, storing the information in a database, retrieving information from the database, comparing data, and outputting said information. These components are not explicitly recited and therefore must be construed at the highest level of generality. Based on the Specification, the invention utilizes conventional communication networks, sensors and generic processors, which can be found in mobile devices or desktop computers, conventional memory and display devices, and the functions performed by said generic computer elements are basic functions of a computer - performing a mathematical operation, receiving, storing, comparing and outputting data - have recognized by the courts as routine and conventional activity. Thus, the background of the current application does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Also, the claim does not involve a non-conventional and non-generic arrangement of known, conventional pieces, as asserted, by receiving information from an external source of data. The receiving of data from an external source over a network, such as via the Internet, can fairly be characterized as insignificant extra-solution activity that does not receive patentable weight. See Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity).
Further, the use of the blockchain protocol for verifying and recording a transaction is merely using a well-known proof-of-work algorithm for encrypting and storing data. The blockchain algorithm is already “well known in the art”, given that Satoshi Nakamoto published a paper via the Cryptography Mailing List titled “Bitcoin: A Peer-to-Peer Electronic Cash System” in October 31, 2008. In it, he describes blockchain as “[a] purely peer-to-peer version of electronic cash [that] would allow online payments to be sent directly from one party to another without going through a financial institution.” Among the eight references cited in the paper, the oldest dates back to 1957 and references algorithms. And there is no indication in the claims or Specification regarding any improvement in blockchain technology, there is no indication of improvement of a machine or operation of the machine; the claims merely utilize an existing well-known blockchain technology for verifying and recording data. The Court recognized that “‘a novel and useful structure created with the aid of knowledge of scientific truth’” might be patentable. Id., at 67 (quoting Mackay Radio, 306 U. S., at 94). But it held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had “no substantial practical application except in connection with a digital computer.” Benson, supra, at 71.
Furthermore, regarding the use of public-key cryptography, digital signatures and digital certificates, Applicant’s Specification [0056]; [0069] refers to the well-known nature of said technology: [0056] “Applied Cryptography, Second Edition: Protocols,
Algorithms, and Source Code in C, by Bruce Schneier, published by John Wiley & Sons, Inc. in 1996, and ICSA Guide to Cryptography, by Randall K. Nichols, published by McGraw-Hill in 1999…”
Thus, the background of the current application does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the recited steps are well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Further, similar to Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016) (Power Group), claim’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. Claim 1 does not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices. Nothing in the claim, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. Analogous to Power Group, claim 1 does not even require a new source or type of information, or new techniques for analyzing it. As a result, the claim does not require an arguably inventive set of components or methods, such as measurement devices or techniques that would generate new data. The claim does not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information - to provide a “humanly comprehensible” amount of information useful for users - by itself does not transform the otherwise-abstract processes of information collection and analysis into patent eligible subject matter. Merely obtaining and selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. Therefore, the recited steps represent implementing the abstract idea on a generic computer, or “reciting a commonplace business method aimed at processing business information despite being applied on a general purpose computer” Versata, p. 53; Ultramerical, pp. 11-12.
Furthermore, the recited functions do not improve the functioning of computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer; Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, comparing and transmitting data—see the Specification as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually; there is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. “However, it is not apparent how appellant’s programmed digital computer can produce any synergistic result. Instead, the computer will simply do the job it is instructed to do. Where is there any surprising or unexpected result? The unlikelihood of any such result is merely one more reason why patents should not be granted in situations where the only novelty is in the programming of general purpose digital computers”. See Sakraida v. Ag. Pro, Inc., 425 U.S. 273 [ 96 S.Ct. 1532, 47 L.Ed.2d 784], 189 USPQ 449 (1976) and A P Tea Co. V. Supermarket Corp., 340 U.S. 147 [ 71 S.Ct. 127, 95 L.Ed. 162], 87 USPQ 303 (1950).
Moreover, there is no transformation recited in the claim as understood in view of 35 USC 101. The steps of receiving a request; monitoring transaction activity; verifying and authenticating a property transfer; generating a covenant; creating a digital signature; and storing data in a blockchain ledger merely represent abstract ideas which cannot meet the transformation test because they are not physical objects or substances. Bilski, 545 F.3d at 963. Said steps are nothing more than mere manipulation or reorganization of data, which does not satisfy the transformation prong. It is further noted that the underlying idea of the recited steps could be performed via pen and paper or in a person's mind. Moreover, “We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.” and “Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test”. CyberSource, 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
Therefore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because, when considered separately and in combination, the claim elements do not add significantly more to the exception. Considered separately and as an ordered combination, the claim elements do not provide an improvement to another technology or technical field; do not provide an improvement to the functioning of the computer itself; do not apply the judicial exception by use of a particular machine; do not effect a transformation or reduce a particular article to a different state or thing; and do not add a specific limitation other than what is well-understood, routine and conventional in the operation of a generic computer. None of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). As per “storing, by the automated agent, the data … in a blockchain distributed ledger” recitations, these limitations do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Limiting the claims to the particular technological environment of electronic commerce is, without more, insufficient to transform the claim into patent-eligible applications of the abstract idea at their core.
Accordingly, claim 1 is not directed to significantly more than the exception itself, and is not eligible subject matter under § 101. (Step 2B: No).
Further, although the Examiner takes the steps recited in the independent claim as exemplary, the Examiner points out that limitations recited in dependent claims 2-13 and 26 further narrow the abstract idea but do not make the claims any less abstract. Dependent claims 2-13 and 26 each merely add further details of the abstract steps recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. These claims "add nothing of practical significance to the underlying idea," and thus do not transform the claimed abstract idea into patentable subject matter. Ultramercial, 772 F.3d at 716. Therefore, dependent claims 2-13 and 26 are also directed to non-statutory subject matter.
Because Applicant’s computer-readable storage medium claims 15-20, and apparatus claims 27-35 add nothing of substance to the underlying abstract idea, they too are patent ineligi-ble under §101.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Applicant argues that claim 1 is replete with specific technological elements, e.g. a computing device, a biometric sensor, etc., and recite activities that cannot be performed with the human mind, e.g. implementing a blockchain multiple layer security scheme that adds additional layers of security to prevent fraud ... by monitoring, controlling, and verifying each transaction” on the blockchain.
The Examiner respectfully disagrees and maintains that mental processes, e.g., receiving a request; monitoring transaction activity; receiving biometric data; authenticating the user; verifying and authenticating a property transfer; generating a covenant; creating a digital signature; storing data in a blockchain ledger, and monitoring, controlling, and verifying each transaction, as recited in claim 1, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource Corp. at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”). In Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, Nos. 13-1588,-1589, 14-1112, -1687 (Fed. Cir. Dec. 23, 2014) the Federal Circuit affirmed that such limitations (e.g. parsing and extracting data) were generally directed to “the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” The Court explained that ”[t]he concept of data collection, recognition, and storage is undisputedly well-known,” and noted that “humans have always performed these functions.” Id. The Court then rejected CET’s argument that the claims were patent eligible because they required hardware to perform functions that humans cannot, such as processing and recognizing the stream of bits output by the scanner. Comparing the asserted claims to “the computer-implemented claims in Alice,” the Court concluded that the claims were “drawn to the basic concept of data recognition and storage,” even though they recited a scanner. Id. at 8. Mental processes, e.g., parsing and extracting data, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource Corp. at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Further, regarding “specific technological elements”, it also is insufficient, without
more, to establish patent eligibility that “[t]he human mind is not equipped to execute the claimed method”. Although “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101,” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not automatically follow that methods requiring physical components, i.e., methods that arguably cannot be performed entirely in the human mind, are, therefore, not directed to abstract ideas. See, e.g., In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”); FairWarning IP, LLC v. Latric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“[T]he inability for the human mind to perform each claim step does not alone confer patentability.”).
Applicant agues that claim 1 recite a practical application, by improving the technical field of blockchain transaction security, e.g. by inclusion of a biometric authentication layer.
Examiner respectfully disagrees and maintains that there is no technical improvement recited in the claims. The recited functions do not improve the functioning of computers itself, including of the processor(s), the network elements or biological sensors. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer; Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither.
The focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. For example, the Specification teaches that the benefits achieved by the current invention are not technological, and the problem the invention is dealing is high cost of trust fraud prevention:
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The current invention provides the following solution for said high-cost management of fraud prevention:
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Thus, the current application’ solution to the problem of high-cost management of fraud prevention is not technological, but “business solution”, or “entrepreneurial.” Claim 1 does not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. The use of existing blockchain techniques utilizing personal data and data obtained by a generic biometric sensor for fraud prevention does not provide specific improvements in computer capabilities or in blockchain technology. Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, comparing and transmitting data—see the Specification as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Therefore, the claims at issue are ineligible. Storing verified property titles utilizing a distributed ledger does not represent a technological improvement.
Applicant submits that claim 1 recite an “inventive concept”, and argues that “While it is true that blockchain and cryptographic technologies are known in general, the specific arrangement and use of these technologies in the claims is far from routine”. Applicant further argues that claim 1 is patent eligible, because is analogous to DDR Holdings (noted above, solving an Internet-specific problem), Amdocs Lid. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (finding an inventive concept in a distributed architecture that preserved network efficiency), and Ancora and CosmoKey (improvements in authentication and security). The present case is analogous in that it introduces a distributed architecture element (the agent and covenant) specifically to enhance security in a networked environment.
The Examiner respectfully disagrees. It follows from Alice, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “‘a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an “inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added) (citation omitted)).
Here, the only additional elements recited in claim 1 beyond the abstract idea, i.e., “a computing device”, “a biometric sensor”; “a distributed ledger”; and “a communication network,” are generic computer components. Appellant cannot reasonably maintain that there is insufficient evidence of record to support a determination that the operation of these components is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the steps recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. The Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer, 890 F.3d at 1373 Further, in comparison to the decision in DDR, the claims at issue remain ineligible. In DDR, the claim includes additional elements of "1) stor[ing] 'visually perceptible elements' corresponding to numerous host Web sites in a database, with each of the host Web sites displaying at least one link associated with a product or service of a third-party merchant, 2) on activation of this link by a Web site visitor, automatically identif[ying] the host, and 3) instruct[ing] an Internet web server of an 'outsource provider' to construct and serve to the visitor a new, hybrid Web page that merges content associated with the products of the third-party merchant with the stored 'visually perceptible elements' from the identified host Web site." The court held that, unlike in Ultramercial, the claim does not generically recite "use the Internet" to perform a business practice, but instead recites a specific way to automate the creation of a composite Web page by an outsource provider that incorporates elements from multiple sources in order to solve a problem faced by Web sites on the Internet.
Contrary to DDR, claim 1 is drawn to the application of principles outside of the scientific realm -- such as principles related to commercial or business interaction. While the claim is set within an electronic commerce environment, claim 1 addreses a business challenge of preventing fraud in recording property titles. As stated in the Specification:
[0020] The present invention protects homeowners against Harm by solving at least three problems better than existing solutions do: (1) It provides homeowners with a trustworthy and affordable party who can maintain vigilance over their ability to make property-related decisions and to protect them if they become vulnerable or are victimized; (2) It prevents subsequent purchasers of any fraudulently obtained interests in their properties from raising bona fide purchaser or holder in due course defenses to their recovery efforts. (3) It allows legitimate future title holders to prove, from only the documents in the records, without contacting prior owners, that their title was obtained without Harm and that the requirements of the protective covenant were followed. The invention leverages technology to keep costs low and provide trustee-like services at an affordable price.
Thus, the current application’ solution to the problem of provide trustee-like services at an affordable price is not a problem unique to computer technologies, and said claims are drawn to the application of principles outside of the scientific realm -- such as principles related to commercial or business interaction. Unlike the situation in DDR Holdings, Applicant does not identify any problem particular to computer networks and/or the Internet that claim 1 overcomes. Instead, based on the Specification, claim 1 uses a conventional, general purpose computer to perform generic computer functions, i.e., accessing memory, receiving and storing data, processing to transform data, and outputting said data.
Regarding Amdocs argument, the Examiner notes that in Amdocs the “enhancement”, or “in a distributed fashion” and the “close to the source” of network information requirements is realized due to the distributed, remote enhancement that provided an unconventional result—reduced data flows and the possibility of smaller databases, - “An architecture providing a technological solution to a technological problem (massive data flows requiring huge databases).”
Contrary to Amdocs, the claims at issue do not provide a technological solution to a technological problem. As stated in the Specification [0020], the claimed invention provides benefit of (1) providing a trustworthy and affordable party who can protect customers; (2) preventing purchasers of fraudulently obtained interests in their properties; (3) proving that their title was obtained without Harm. Thus, the current application’ solution to the problem of provide trustee-like services at an affordable price is not technological, but “business solution”, or entrepreneurial. Therefore, claim 1 does not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. "Provide trustee-like services at an affordable price” does not constitute providing a technological solution to a technological problem.
Regarding Ancora argument, the Examiner notes that the Ancora’s claimed invention moves a software-verification structure to a BIOS location not previously used for this computer-security purpose and alters how the function is performed (in that the BIOS memory used for verification now interacts with distinct computer memory to perform a software-verification function), yielding a tangible technological benefit (by making the claimed system less susceptible to hacking), and as such provides an improvement in computer functionality.
Contrary to Ancora, claim 1 does not recite any improvement to computer functionality, nor does the claimed method provide advantages with respect to computer function, nor claim 1 solves any problem associated with secure computer operation, and as such does not identify a sufficient inventive concept under Alice to transform the claimed abstract idea into something patentable. "Provide trustee-like services at an affordable price” does not constitute providing a technological solution to a technological problem, and does not provide an inventive concept.
Regarding CosmoKey argument, claim 1 in CosmoKey recites an improved method for overcoming hacking by ensuring that the authentication function is normally inactive, activating only for a transaction, communicating the activation within a certain time window, and thereafter ensuring that the authentication function is automatically deactivated. The patent specification describes how the particular arrangement of steps in claim 1 provides a technical improvement over conventional authentication methods, e.g. "the complexity of the authentication function can be reduced significantly" because "the only activity that is required from the user for authentication purposes is to activate the authentication function at a suitable timing for the transaction," and performing user authentication with fewer resources, less user interaction, and simpler devices.
Contrary to CosmoKey, claim 1 of the Applicant’s application does not recite any improvement to computer functionality, nor does provide advantages with respect to computer function, and does not reduce the complexity of the authentication function. On the contrary, claim 1 requires monitoring a blockchain distributed ledger and user interaction with a biometric sensor, which is in stark contrast with CosmoKey achievements, namely “performing user authentication with fewer resources, less user interaction, and simpler devices.” Thus, claim 1, similar to Universal Secure, is directed to the abstract idea of “combining multiple conventional, long-standing authenticat