DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment filed on February 24, 2026 has been entered. The following has occurred: Claims 14 and 20 have been canceled; and claims 36 and 37 have been added.
Claims 15, 17, 18, and 21-37 are currently pending and have been examined.
Response to Amendment
Previous Claim Objections have been withdrawn in light of the amendment, however new Claim objections have been added.
Previous 35 U.S.C. 112(a) and 112(b) rejections have been withdrawn in light of the amendment, however, new 35 U.S.C. 112(b) rejection has been added.
35 U.S.C. 112(d) rejection has been added in light of the amendment.
35 U.S.C. 101 rejection has been maintained in light of the amendment.
35 U.S.C. 103 rejection has been maintained in light of the amendment.
Priority
The present application claims a National Stage Entry of PCT/IB2020/058253, filed on September 4, 2022, and also claims priority to Foreign Application GB1912738 in United Kingdom of Great Britain and Northern Ireland, filed on September 4, 2019.
Claim Objections
Claim 15, 17, 18, 27-32, and 34-36 are objected to because of the following informalities: Claim 36 recites “A licensee device;” “A first licensor device;” “A second licensor device”; “An electronic commodity”; “At least one first smart contract”; “At least one second smart contract”; should read “a licensee device;” “a first licensor device;” “a second licensor device”; “an electronic commodity”; “at least one first smart contract”; “at least one second smart contract”. Subsection of limitations should begin with lower case letter. Dependent claims 15, 17, 18, 27-32, 34, and 35 inherent the claim objections of the independent claim 36. Appropriate correction is required.
Claims 21-25, 33, and 37 are objected to because of the following informalities: Claim 37 recites “A licensee device;” “A first licensor device;” “A second licensor device”; “An electronic commodity”; “A first smart contract”; “A second smart contract”; should read “a licensee device;” “a first licensor device;” “a second licensor device”; “an electronic commodity”; “a first smart contract”; “a second smart contract”. Subsection of limitations should begin with lower case letter. Dependent claims 21-25 and 33 inherent the claim objections of the independent claim 37. Appropriate correction is required.
Claims 21-25, 33, and 37 are objected to because claim 37 recites a method in the preamble: “automated method for executing usage-based transactions between at least one licensee and at least one licensor, the automated method comprising:” follow by system limitations in body of the claim: “the automated method comprising: A licensee device; A first licensor device; A second licensor device different from the first licensor device; An electronic commodity; comprising a first component and a second component, the first component different from the second component; A first smart contract associated with the first component, the first smart contract comprising first licensing information and terms agreed upon between the licensee device and the first licensor device;” This is mixing of statutory classes (a method and an apparatus) within a single claim. The Examiner suggests amending the claim limitations to remove the individual devices limitations and further recite method steps to be performed by the devices. Dependent claims 21-25 and 33 inherent the claim objections of the independent claim 37. Appropriate correction is required.
Claim 29 is objected to because of the following informalities: “devise” should read “device”. Appropriate correction is required.
Claim 26 is objected to because of the following informalities: Claim 26 recites “automated method of claim 20” should read “automated method of claim 37” (bold emphasis). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15, 21, 22, 31, and 32 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 15 recites “the at least one licensor device” and “the smart contract” which are found to be indefinite. Claim 15 depends on claim 36. In claim 36 recites “a first licensor device,” “a second licensor device different from the first licensor device,” “at least one first smart contract,” and “at least one second smart contract.” It becomes unclear whether if “the at least one licensor device” in claim 15 is referring to the first licensor device, the second licensor device, and/or both. It is also unclear whether if “the smart contract” in claim 15 is referring to the at least one first smart contract, the at least one second smart contract, and/or both. For the purpose of expediting compact prosecution, the Examiner will interpret “the at least one licensor device” and “the smart contract” in claim 15 to be –the at least one first licensor device or at least one second licensor device-- and the first smart contract or the second smart contract--.
Claims 21, 22, 31, and 32 recite “the at least one licensor device” which is found to be indefinite. In claims 36 and 37 recite “a first licensor device” and “a second licensor device different from the first licensor device”. It becomes unclear whether if “the at least one licensor device” in claims 21, 22, 31, and 32 are referring to the first licensor device, the second licensor device, and/or both. For the purpose of expediting compact prosecution, the Examiner will interpret “the at least one licensor device” to be –the at least one first licensor device or at least one second licensor device--.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 21 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 21 recites “wherein the method comprises executing the usage-based transactions between the at least one licensee device and that at least one licensor device” is same step as claim 37 limitation, “a first usage-based transaction of the first component and a second usage-based transaction of the second component are executed to compensate the first licensor device and the second licensor device respectively” The dependent claim 21 does not further narrow the limitations of the independent claim 37.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements
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 15, 17, 18, and 21-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 15, 27-32, and 34-36 are directed to a system (i.e. a machine) and claims 21-25, 33, and 37 are directed to a method (i.e. a process), and claim 26 is directed to a computer program product (i.e. article of manufacture). Thus, the eligibility analysis proceeds to Step 2A.1.
Step 2A. 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
While claims 26 (claim 26 is recited as dependent claim of method claim 37), 36, and 37 are directed to different categories. The language and scope of the claims 36 and 37 are substantially the same and have been addressed together below.
The abstract idea recited in claims 36 and 37, is:
receiving a first usage information indicating a first activation of the electronic commodity;
storing the first usage information in the distributed ledger arrangement, the first usage information comprising at least one of the serial number or an identification number;
triggering at least one of the first smart contract and the second smart contract by determination that the electronic commodity has been put to use, identified by the usage information; wherein storage of the first usage information in the distributed ledger arrangement is configured as a proof of fulfilment of a condition required for triggering the at least one of the first smart contract and the second smart contract;
after triggering at least one of the first smart contract and the second smart contract, a first usage-based transaction of the first component and a second usage-based transaction of the second component are executed to compensate the first licensor device and the second licensor device respectively.
The claimed invention is directed to an abstract idea of determining usage-based transaction for licensing fee.
The bolded portions of limitations above recite elements which are directed toward an abstract idea in one or more of the enumerated categories. Specifically, the bolded portions of limitations above recite concepts performable in the human mind including observation, evaluation, and judgement, which falls under “Mental Processes,” one of the abstract idea categories. Under the broadest reasonable interpretation, other than the additional elements of computer components (further considered under Step 2A prong 2), the claims recite processes that are all acts that could be performed by a human, e.g., mentally or manually, without the use of a computer or any other machine. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind for the recitation of a generic processor executing computer code stored in a computer medium, then it falls under the “Mental Processes” category of abstract ideas. For example, a clerk or agent, using pen and paper or via oral communication, has been responsible for receiving, storing, determining, and tracking information of device usage transaction on a paper ledger for licensees and licensors. A person can follow instruction or rules to send and receive usage information regarding to electronic commodity; record and store that information on a paper ledger; trigger/execute the contract based on usage information stored with the determination that the electronic commodity is activated or used; and provide the information related to the usage-based transactions between licensees and the licensors for compensation.
Additionally, the claim recites a fundamental economic practice long prevalent in our system of commerce in the form of advertising, marketing, or sales activity or behaviors for customer engagement of licensing industry. Under the broadest reasonable interpretation, other than the additional elements (further see step 2A prong 2), the functioning steps of the above-mentioned limitations (bolded portions of [A]-[D]) are steps for a clerk or agent to follow instructions to collect, assemble information relating to licensing agreements for the manufacturer (licensee) and licensors to be verified for the purpose of collecting a licensing fee, which can be done manually and is supported by applicant’s specification in pages 1-2, “such licensing markets, typically run by agents, have to manually assemble information relating to licensing agreements for the manufacturer (namely, licensee) with multiple licensors. Essentially, licensees face transaction costs for collecting relevant data (such as, number of units produced, a number of sales, and so forth) to make payments to licensor(s). Such payments to licensor(s) become more challenging in case multiple products, each product having multiple licensors, and each licensor having different agreement of licensing. Similarly, agents have to manually assemble information relating to multiple licensing agreements for a licensor with multiple licensees. In this regard, licensors face challenges to verify licensing fees from multiple licensees based on different agreements of licensing with the multiple licensees. Additionally, verifying correctness of received licensing fees by the licensors, from multiple licensees, is difficult owing to limited insights into relevant data for calculating the licensing fees owing to the often-sensitive nature of such relevant data.” Therefore, the above-mentioned limitations recite a practice of a commercial or legal interaction under the “Certain Methods of Organizing Human Activity” category of the abstract ideas.
Accordingly, the above-mentioned limitations are considered as a single abstract idea, therefore, the claims recite an abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer.
The additional elements considered include:
Claim 36: “automated system for executing usage-based transactions between at least one licensee and at least one licensor, the automated system comprising: A licensee device; A first licensor device; A second licensor device different from the first licensor device; An electronic commodity comprising a first component and a second component, the first component different from the second component; At least one first smart contract associated with the first component, the first smart contract comprising first licensing information and terms agreed upon between the licensee device and the first licensor device; At least one second smart contract associated with the second component, the second smart contract comprising second licensing information and terms agreed upon between the licensee device and the second licensor device; wherein the first licensing information and terms and the second licensing information and terms are registered into a distributed ledger arrangement that is communicably coupled to a server arrangement; wherein the server arrangement is configured to:”
Claim 37: “A licensee device; A first licensor device; A second licensor device different from the first licensor device; An electronic commodity; comprising a first component and a second component, the first component different from the second component; A first smart contract associated with the first component, the first smart contract comprising first licensing information and terms agreed upon between the licensee device and the first licensor device; A second smart contract associated with the second component, the second smart contract comprising second licensing information and terms agreed upon between the licensee device and the second licensor device; wherein the first licensing information and terms and the second licensing information and terms are registered into a distributed ledger arrangement that is communicably coupled to a server arrangement; wherein the server arrangement is configured to:”
The above-mentioned additional element of a system comprising generic computer elements are found to recite mere instructions to apply a generic computer and technology to execute the method in the recited claim limitations, as merely using a computer to transmit, manipulate, and display information is not an improvement to a technology or technical field. The additional elements merely recite computer elements to receive, store, trigger, determine, and provide information. The additional element is recited at a high-level of generality (i.e., as a generic computer component performing a generic computer function; See applicant’s specification at least at page 19 describing “the licensee and the at least one licensor have computing devices (such as, a cellular phone)” to be generic computing devices; In pages 13 and 18 providing generic computer components of computing devices, memory, and processor. In pages 12-13, 17, 21-22 and fig. 1 describing the generic function of smart contract, distributed ledger arrangement, and sever system communication) such that it amounts to no more than mere instructions to apply the exception using a generic computer component, i.e. these generic computing elements are merely being used to perform the tasks of the abstract idea, see MPEP 2106.05(f). The functions of limitations [A]-[E] are steps of adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer. 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 the practicing the abstract idea. The claims are directed to an abstract idea and the analysis proceeds to Step 2B.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the above-mentioned limitations of receive, store, trigger, determine, and provide information in [A]-[D] amount to no more than mere instructions to apply the function of the limitations to the exception using generic computer component, as discussed in MPEP 2106.05(f). The claim as a whole merely describes how to generally “apply” the concept for determining usage-based transaction for licensing fee in a computer environment. Thus, viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. For these reasons there is no inventive concept in the claims and thus are ineligible.
As for dependent claims 15 and 21, these claims recite limitations that further define the abstract idea noted in claims 14 and 20. In addition, the claims recite the same additional element of using the server and computing devices at a high level of generality (i.e. as a generic computer system performing generic computer functions of executing/processing and storing information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Further, the dependent claims merely provide additional descriptive regarding the distributed ledger arrangement, which do not change the abstract idea of the independent claims. There is no additional element added to integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claim 22, the claim recites limitations that further define the abstract idea noted in claim 20. In addition, the claim recites the same additional element of using the server and computing devices at a high level of generality (i.e. as a generic computer system performing generic computer functions of storing information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claim is ineligible.
As for dependent claims 17, 23, 27, 28, and 33 these claims recite limitations that further define the abstract idea noted in claims 14 and 20. The dependent claims merely provide additional descriptive regarding the electronic commodity, which do not change the abstract idea of the independent claims. There is no additional element added to integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claims 18 and 24, these claims recite limitations that further define the abstract idea noted in claims 14, 17, 20, and 23. In addition, the claims recite the same additional element of using the server and computing devices at a high level of generality (i.e. as a generic computer system performing generic computer functions of receiving information) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claim 25, the claim recites limitations that further define the abstract idea noted in claim 20. The dependent claim merely provides additional descriptive regarding the distributed ledger arrangement, which does not change the abstract idea of the independent claims. There is no additional element added to integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claim is ineligible.
As for dependent claim 26, the claim recites additional descriptive information regarding the use of computer program product as part of the process, which is a generic component of the computer processing function. Therefore, the reciting of computer program product for storing computer-readable instructions do not integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claim is ineligible.
As for dependent claims 29-32, these claims recite limitations that further define the abstract idea noted in claims 14 and 20. The dependent claims merely provide additional descriptive regarding the distributed ledger arrangement, which do not change the abstract idea of the independent claims. There is no additional element added to integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claim 34, the claim recites limitations that further define the abstract idea noted in claim 14. The dependent claim merely provides additional descriptive regarding the electronic commodity is being used, which does not change the abstract idea of the independent claims. There is no additional element added to integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claim is ineligible.
As for dependent claim 35, the claim recites limitations that further define the abstract idea noted in claim 14. The dependent claim merely provides additional descriptive of result-based limitation regarding the usage-based transaction provides compensation to the at least one licensor, has traceability with a timestamp, and results in updating of an oracle, upon a plurality of computer nodes reaching a threshold number of a consensus to implement a change, the threshold number being one over one half of the plurality of the computer nodes, which does not change the abstract idea of the independent claims. There is no additional element added to integrate the abstract idea into a practical application and does not amount to significantly more than the abstract idea itself. The claim is ineligible.
In summary, the dependent claims considered both individually and as ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 15, 17, 18, and 21-37 are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 15, 17, 18, 21-26, 28-34, 36 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Mintz et al. (US 20180314809 A1), hereinafter “Mintz,” in view of Xu et al. (US 20200134585 A1), hereinafter “Xu.”
Claims 36 and 37, Mintz discloses an automated method and system for executing usage-based transactions between at least one licensee and at least one licensor (abstract, para. [0001], [0020], disclosing entitlement management systems and methods including the use of blockchain and smart contract for licensing), the automated system comprising:
A licensee device (para. [0028] disclosing remote devices which is representative of licensee devices using the licensed component 104. Para. [0059] disclosing entities may include remote device; See Fig. 1, administrative terminal and Fig. 2, participating entity 204);
A first licensor device (para. [0129] disclosing vendor device which is representative of licensor; See Fig. 1, vender terminal. Para. [0049] and [0117[ disclosing administrative terminal 124 that interacts with the system to create licenses and products, which serves the role of a licensor device);
An electronic commodity (Para. [0028], “licensed component 104 may include software, hardware, or a combination of software and hardware in which access, usage rights, ownership, and/or permissions corresponding to the licensed component 104 are governed by an agreement” “the licensed component 104 may include hardware that is connected with the remote device 102. Non-limiting examples of the licensed component 104 include, for example, a mobile application, an operating system, a web-page, and/or a suite of programs, a USB device, a Bluetooth device, a networking device, or any other type of device and/or software. Alternatively or in addition, the licensed component 104 may include software and/or hardware that is configured outside of the remote device 102 and accessed by the remote device 102” The licensed component 104 is a hardware such as a networking device, outside and connected to the remote device 102. The licensed component 104 is representative of electronic commodity) comprising a first component (para. [0038], [0039], [0073], [0086]-[0088], [0129], and [0131] specifically discloses the license smart contract comprises license information and terms relating to the usage and access of the commodity. For example, para. [0086]-[0087] Mintz discloses a license smart contract 408 which contains licensing logic 409);
At least one first smart contract associated with the first component, the first smart contract comprising first licensing information and terms agreed upon between the licensee device and the first licensor device (para. [0038], [0039], [0073], [0086]-[0088], [0129], and [0131] specifically discloses the license smart contract comprises license information and terms relating to the usage and access of the commodity. For example, para. [0086]-[0087] Mintz discloses a license smart contract 408 which contains licensing logic 409. This logic provides an indication of whether the license is valid, active, and/or usable based on current constraints and may determine whether to grant access to the licensed component 104, which describes a smart contract with licensing terms);
wherein the first licensing information and terms and the second licensing information and terms are registered into a distributed ledger arrangement that is communicably coupled to a server arrangement (para. [0034], [0036], and [0100]-[0101] discloses server node that manages a blockchain 114. The server generates a license smart contract 408 containing licensing logic 409 and appends a datablock containing smart contract to the blockchain);
wherein the server arrangement (para. [0020] and [0033]-[0036] disclosing a decentralized server) is configured to:
receive a first usage information indicating a first activation of the electronic commodity (para. [0028]-[0031] disclosing the collect and/or communicate usage information related to the licensed component associated with the remote device. Para. [0042], “the token manager 118 may provide an interface for sending and receiving usage information related to one or more licensed components that are licensed according to one or more of the self-executing tokens 116.” Para. [0104], [0108] and [0113] and Fig. 8 disclosing the obtaining/receiving of usage information corresponding to a licensed component);
storing the first usage information in the distributed ledger arrangement (para. [0053], [0101], and [0111]),
trigger at least one of the at least one first smart contract and the at least one second smart contract by determination that the electronic commodity has been put to use, identified by the usage information (Fig. 8 and para. [0112] disclosing the triggering event corresponding to the license component. In para. [0104] disclosing the triggering or activation of the licensed component);
wherein storage of the first usage information in the distributed ledger arrangement is configured as a proof of fulfilment of a condition required for triggering the at least one of the at least first smart contract, and the at least one second smart contract ((Fig. 8 and para. [0112], “token manager 118 may detect a triggering event corresponding to the licensed component (806). The triggering event may include detection of or receipt of the access event, as described herein. Alternatively or in addition, the triggering event may include any event which causes an evaluation of the access rights to the licensed component 104. For example, the triggering event may include the receipt of the usage information.” In para. [0104], “The token manager 118 may detect an access event corresponding to the licensed component 104 (702). For example, the token manager 118 may receive an access message from the remote device 102, the permission service 106, the licensed component 104, and/or any other component configured to monitor access to the licensed component 104. As previously described, the access message may include a message or API call that includes information, such as an access event, indicative of the licensed component, or any feature provided by the licensed component 104, being accessed, controlled, toggled, activated, installed, uninstalled, and/or communicated with. Alternatively or in addition, the access message may be indicative of a request to access control, toggle, activate, install, uninstall, and/or communicated with the licensed component 104.” Further in para. [0107] and claim 24, upon detecting an access event, the token manager 118 may execute the licensing logic of the license smart contract 708 to determine, based on the usage information, that the access to the licensed component is granted or denied. This is the triggering and executing of the smart contract, which based on the specification page 17, the storing of the first usage information itself is a proof of fulfilment that acts as a trigger);
However, Mintz fails to disclose:
A second licensor device different from the first licensor device;
a second component, the first component different from the second component;
At least one second smart contract associated with the second component, the second smart contract comprising second licensing information and terms agreed upon between the licensee device and the second licensor device;
the first usage information comprising at least one of the serial number or an identification number;
after triggering at least one of the at least one first smart contract and the at least one second smart contract, a first usage-based transaction of the first component and a second usage-based transaction of the second component are executed to compensate the first licensor device and the second licensor device respectively.
Xu is directed to similar licensing system and method for utilizing aspects of distributed ledger technologies to facilitate trusted and verifiable licensing transactions, which specifically teaches,
A second licensor device different from the first licensor device; a second component, the first component different from the second component; At least one second smart contract associated with the second component, the second smart contract comprising second licensing information and terms agreed upon between the licensee device and the second licensor device (Xu, Abstract, teaches system is configured to fairly disperse calculated portions of received payment transactions to licensor of the new creative work and to another licensor of the incorporated selected asset. In para. [0025] further teaches that a license fee paid for a composite work is divided up and dispersed accordingly based on a ratio of contribution determined for each licensable asset incorpated into a licensable asset. In para. [0033] and claim 1 teaches new asset or creative work is the claimed electronic commodity. The new asset is an asset that incorporates anoy portion of another licensable asset. This teaches a composite commodity comprising at least two different components of new work and incorporated asset);
the first usage information comprising at least one of the serial number or an identification number (Claim 2, para. [0034], [0054] teaches smart contract includes asset identifier. In abstract and para. [0024] teaches the usage information is the license payment transaction which is recorded on the distributed ledger);
after triggering at least one of the at least one first smart contract and the at least one second smart contract, a first usage-based transaction of the first component and a second usage-based transaction of the second component are executed to compensate the first licensor device and the second licensor device respectively (para. [0024] teaches trigger is a payment transaction to license the asset. Upon trigger, the smart contract executes. In para. [0041] teaches a smart contract for a composite asset that includes operations to disperse a portion of the paid license fee to a licensor of the licensable asset, and other portion(s) of the paid license fee to other licensor(s) of incorporated licensable asset(s). This explicitly teaches the executing separate transactions to compensate different licensors for their respective components, all triggered by a single payment event for the composite product).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system and method of determining usage-based transaction using smart contract in distributed ledger arrangement of Mintz to include the feature for multi-licensor royalty splitting from smart contract execution as taught by Xu for the motivation of creating a more comprehensive and commercially versatile licensing system for handling composite works of single product with multiple licensable components from different licensors for more commercial success in receiving more license royalty. Further, the claimed invention is merely a combination of old elements in a similar distributed ledger arrangement field of endeavor. In such combination each element merely would have performed the same distributed ledger arrangement related function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements, the results of the combination were predictable and desirable improvement (See MPEP 2143 A).
Claim 15, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses,
wherein the server arrangement executes the usage-based transactions between the at least one licensee device and the at least one licensor device (Para. [0042]-[0043] disclosing the accessing of the licensed component between remote device, decentralized server and any device or component configured to monitor the access to the licensed component. The access to the licensed component may include installation of the licensed component, which is representative of executing the usage-based transactions on the licensee device and licensor device. Further in para. [0045] and [0051]-[0052] disclosing the self-executing token may be transferred between owner to licensees (i.e. devices) and adding the datablock to the blockchain of the transfer information, which is also representation of server arrangement executes the usage-based transactions between the licensee device and at least one licensor device), wherein the smart contract is stored in the distributed ledger arrangement upon receiving approval, relating to licensing information and terms, from the at least one licensee and the at least one licensor (Para. [0032], [0077]-[0083], [0116], and [0139]-[0140] disclosing the granting/approving relating to the licensing information and terms between licensee and licensor then storing the granted permission on a blockchain database), wherein the distributed ledger arrangement is a private distributed ledger arrangement (Para. [0024], “This enterprise software transaction service may also allow centralized electronic transactions. As described below, this may be accomplished by deploying a private/hybrid blockchain, providing APIs to overarching applications for each entity involved, and administrative web applications for managing licenses.” Which the use of private blockchain is representative of private distributed ledger arrangement).
Claim 17, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses,
wherein the electronic commodity is any kind of electronic device that can directly or indirectly connect to the distributed ledger arrangement (para. [0028] disclosing “The remote device 102 may include an electronic computing device. For example, the remote device 102 may include a server, a mobile device, a personal computer, a workstation, circuitry and/or any other type of one or more computing devices. The remote device 102 may store, execute, control, or communicate with a licensed component 104… The licensed component 104 may include hardware that is connected with the remote device 102. Non-limiting examples of the licensed component 104 include, for example, a mobile application, an operating system, a web-page, and/or a suite of programs, a USB device, a Bluetooth device, a networking device, or any other type of device and/or software.” For example networking device is an electronic device that can directly connect to the distributed ledger arrangement).
Claim 18, the combination of Mintz and Xu make obvious of the automated system of claim 17. Mintz further discloses,
wherein the server arrangement is operable to receive usage information of one or more components of the electronic device upon use thereof and execute a secondary smart contract relating to the one or more components (para. [0061] and [0063] disclosing the datablocks of the blockchain are sequentially created and are linked into a chain. In Fig. 14 and para. [0138]-[0140] disclosing the receiving of usage of one or more smart contracts and storing the usage information in a blockchain of one or more datablocks).
Claim 21, the combination of Mintz and Xu make obvious of the automated method of claim 37. Mintz further discloses, wherein the method comprises executing the usage-based transactions between the at least one licensee device and the at least one licensor device (Para. [0042]-[0043] disclosing the accessing of the licensed component between remote device, decentralized server and any device or component configured to monitor the access to the licensed component. The access to the licensed component may include installation of the licensed component, which is representative of executing the usage-based transactions on the licensee device and licensor device. Further in para. [0045] and [0051]-[0052] disclosing the self-executing token may be transferred between owner to licensees (i.e. devices) and adding the datablock to the blockchain of the transfer information, which is also representation of server arrangement executes the usage-based transactions between the licensee device and at least one licensor device).
Claim 22, the combination of Mintz and Xu make obvious of the automated method of claim 37. Mintz further discloses, wherein the method comprises storing the at least one smart contract in the distributed ledger arrangement upon receiving approval, relating to licensing information and terms, from the at least one licensee device and the at least one licensor device (Para. [0032], [0077]-[0083], [0116], and [0139]-[0140] disclosing the granting/approving relating to the licensing information and terms between licensee and licensor then storing the granted permission on a blockchain database).
Claim 23, the combination of Mintz and Xu make obvious of the automated method of claim 20. Claim 21 is rejected under the same rejection analysis of claim 17, mutatis mutandis respectively,
Claim 24, the combination of Mintz and Xu make obvious of the automated method of claim 23. Claim 21 is rejected under the same rejection analysis of claim 18, mutatis mutandis respectively,
Claim 25, the combination of Mintz and Xu make obvious of the automated method of claim 37. Mintz further discloses, wherein the distributed ledger arrangement is a private distributed ledger arrangement (Para. [0024], “This enterprise software transaction service may also allow centralized electronic transactions. As described below, this may be accomplished by deploying a private/hybrid blockchain, providing APIs to overarching applications for each entity involved, and administrative web applications for managing licenses.” Which the use of private blockchain is representative of private distributed ledger arrangement).
Claim 26, Mintz discloses a computer program product comprising non-transitory computer-readable storage media having computer-readable instructions stored thereon, the computer-readable instructions being executable by a computerized device comprising processing hardware to execute an automated method of claim 20 (para. [0151]-[0154] disclosing the logic implemented as computer executable instructions stored in a non-transitory computer readable medium executed by computer processor. The same rejection analysis of claim 37 is applied respectively, mutatis mutandis).
Claims 28 and 33, the combination of Mintz and Xu make obvious of the automated system of claim 36 and the automated method of claim 37. Mintz further discloses, wherein the at least one electronic commodity is a network connected internet-of-things sensor, cellular phone, personal digital assistant, handheld device, wireless modem, laptop computer, personal computer, network printer, or connected household appliance (Para. [0028], “licensed component 104 include, for example, a mobile application, an operating system, a web-page, and/or a suite of programs, a USB device, a Bluetooth device, a networking device, or any other type of device and/or software”)
Claim 29, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses, wherein the at least one licensee device is a mobile device (para. [0045] and [0047] disclosing licensee end user device; [0059] disclosing entities may include remote device; In para. [0028] disclosing remote device may be mobile device. See Fig. 1, administrative terminal and Fig. 2, participating entity 204);
Claim 30, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses, wherein the at least one licensee device is a computing device (para. [0045] and [0047] disclosing licensee end user device; [0059] disclosing entities may include remote device; In para. [0028] disclosing remote device may be mobile device or personal computer. See Fig. 1, administrative terminal and Fig. 2, participating entity 204);
Claim 31, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses, wherein the at least one licensor device is a mobile device (para. [0129] disclosing vendor device which is representative of licensor; See Fig. 1, vender terminal; Fig. 2 and para. [0059] disclosing participating entity 204 including remove devices which in para. [0028] disclosing remote device may be mobile device or personal computer).
Claim 32, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses, wherein the at least one licensor device is a computing device (para. [0129] disclosing vendor device which is representative of licensor; See Fig. 1, vender terminal; Fig. 2 and para. [0059] disclosing participating entity 204 including remove devices which in para. [0028] disclosing remote device may be mobile device or personal computer).
Claim 34, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses, wherein the at least one electronic commodity is being used (para. [0028] disclosing the licensed component which is the electronic commodity that is software and/or hardware that is configured outside of the remote device and accessed by the remote device, which is representative of the electronic commodity is being used. Para. [0031] disclosing the usage information includes the description of timestamp, amount of time, and location of which the licensed component is used).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Mintz et al. (US 20180314809 A1), hereinafter “Mintz,” in view of Xu et al. (US 20200134585 A1), hereinafter “Xu,” and further in view of Galindo et al. (EP 3706383 A1), hereinafter “Galindo.”
Claim 35, the combination of Mintz and Xu make obvious of the automated system of claim 36. Mintz further discloses, wherein the usage-based transaction provides compensation to the at least one licensor (Para. [0077] disclosing the fee for subscription for the permit/grant access), has traceability with a timestamp (para. [0031], [0043] disclosing the usage information stored includes the time at which the licensed component is used and the amount of time the licensed component is used), and results in updating of an oracle (para. [0040], [0090], [0093]-[0097]).
However, the combination does not expressly teach, upon a plurality of computing nodes reaching a threshold number for a consensus to implement a change, the threshold number being one over one half of the plurality of the computing nodes.
Nonetheless, Galindo is in the analogous field of system and method for implementing consensus in distributed ledger arrangement, which specifically teaches,
upon a plurality of computing nodes reaching a threshold number for a consensus to implement a change, the threshold number being one over one half of the plurality of the computing nodes (para. [0059] “the entry is recorded (namely, added) in the distributed ledger in an immutable form when at least a threshold number of data processing nodes from the plurality of data processing nodes reach a consensus that the entry is valid. In other words, recording of the entry is denied when the threshold number of data processing nodes cannot reach a consensus regarding the validity of the entry. In an example, the threshold number of data processing nodes to reach a consensus may be fifty-one per cent (51%) of the plurality of data processing nodes. Optionally, information in the distributed ledger is stored securely using cryptographic techniques. Beneficially, the distributed ledger allows reliable and transparent recordal of the entries, in that the data transactions (for example, exchange of a technical resource over a network) are permanently recorded and may not be capable of alterations. Thus, the distributed ledger provides greater transparency, enhanced security, improved traceability, increased efficiency and speed of operations.” Galindo teaches the above-mentioned limitation. The disclosure provided in Galindo is near identical to the applicant’s publication para. [0053], “the entry is recorded (namely, added) in the distributed ledger arrangement in an immutable form when at least a threshold number of computing nodes from the plurality of computing nodes reach a consensus that the entry is valid. Alternatively, recording of the entry is denied when the threshold number of computing nodes reach a consensus that the entry is invalid. In an example, the threshold number of computing nodes to reach a consensus may be fifty per cent plus one (50%+1) of the plurality of computing nodes. Optionally, information in the distributed ledger arrangement is stored securely using cryptography techniques. Beneficially, the distributed ledger arrangement allows reliable and transparent recordal of the entries, in that the operation records (for example, exchange of a technical resource over the data communication network) are permanently recorded and may not be capable of alterations. Thus, the distributed ledger arrangement provides greater transparency, enhanced security, improved traceability, increased efficiency and speed of operations.”)
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system of determining usage-based transaction using smart contract in distributed ledger arrangement of Mintz to include the feature of upon a plurality of computing nodes reaching a threshold number for a consensus to implement a change, the threshold number being one over one half of the plurality of the computing nodes, as taught by Galindo, for the motivation and advantages of “the distributed ledger arrangement provides greater transparency, enhanced security, improved traceability, increased efficiency and speed of operations.” (Para. [0053]).
Further, the claimed invention is merely a combination of old elements in a similar distributed ledger arrangement field of endeavor. In such combination each element merely would have performed the same distributed ledger arrangement related function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements as evidenced by Galindo, the results of the combination were predictable (See MPEP 2143 A).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Mintz et al. (US 20180314809 A1), hereinafter “Mintz,” in view of Xu et al. (US 20200134585 A1), hereinafter “Xu,” and further in view of Tran et al. (US 20170232300 A1), hereinafter “Tran.”
Claim 27, the combination of Mintz and Xu make obvious of the automated system of claim 36.
However, the combination fails to disclose wherein the at least one electronic commodity is a thermostat, light, lock, appliance, IP camera, drone, or voice controller.
Nonetheless, Tran is directed to similar field of blockchain smart contract used with device to facilitate secure operation, which specifically teaches wherein the at least one electronic commodity is a thermostat, light, lock, appliance, IP camera, drone, or voice controller (para. [0084], “a smart system may collect from smart devices state change events of a smart system in operation 601. That is, the smart system of FIG. 4 collects information on each of the group of devices, the smart devices, the smart appliances, the security devices, the lighting devices, the energy devices, and the like. The state change events indicate when there is a change in the state of the device or the surrounding environment. The state change events are stored by the smart system.” teaching electronic commodity may be lighting devices and change event is stored on smart system. Para. [0783] teaching smart electronic locks with using blockchain smart contract.
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system of determining usage-based transaction using blockchain smart contract in Mintz to include the feature of wherein the at least electronic commodity that can be smart lighting device or smart lock, as taught by Tran, for the motivation and advantages of utilizing blockchain enable service provider system and method for better accuracy - Automated transactions are not only faster but less prone to manual error; Lower execution risk - The decentralized process of execution virtually eliminates the risk of manipulation, nonperformance, or errors, since execution is managed automatically by the network rather than an individual party; Fewer intermediaries - Smart contracts can reduce or eliminate reliance on third-party intermediaries that provide “trust” services such as escrow between counterparties; Lower cost - New processes enabled by smart contracts require less human intervention and fewer intermediaries and will therefore reduce costs.
Further, the claimed invention is merely a combination of old elements in a similar smart contract field of endeavor. In such combination each element merely would have performed the same smart contract related function as it did separately, and one of ordinary skill in the art would have recognized that, given the existing technical ability to combine the elements as evidenced by Tran, the results of the combination were predictable (See MPEP 2143 A).
Response to Remarks
35 U.S.C. 101 Rejections:
The Applicant’s remarks are fully considered, however, it is found to be unpersuasive.
Per remarks on pages 7-8, the Applicant asserts the amended claims provide a practical application to fulfil the requirements of Alice.
The Examiner respectfully disagrees.
As reflected in Enfish and Mentone Solutions, there is a fundamental difference between computer functionality improvements (improvement of the technology or technical field), on the one hand, and uses of existing computers as tools to perform a particular task (collecting, storing, analyzing, and presenting/displaying information), on the other. The alleged advantages that the applicant touts do not concern an improvement to computer capabilities or any machinery but instead relate to an alleged improvement in receiving and identifying information for a desirable result, which a computer is used as a mere tool in its ordinary capacity, see MPEP 2106.05(f). As point out by the applicant from para. [0046] and [0050] of the published US2022032755A1, the use of the computer devices and system would bring benefits for more accurate and secure determination of usage-based transactions, but the claims do not recite the method or system for how technology on the determination of usage-based transaction is improved in technological capability. To further clarify, the applicant reflected a business need of the abstract idea for the determining usage-based transaction for licensing fee due to the benefits that computing devices provided. The computer system itself or specific technology is not improved in anyway other than being applied as a tool/instrument for the judicial exception (i.e. abstract idea). The claims do not reflect an improvement to the technology of the computer functionalities other than, by using the additional elements of the computer system, servers, and devices, for a desirable result to be accomplished without a doubt nor concern to technological details for how it is done or improved.
(Page 8)
At Alice step one, we determine whether the claims are directed to an abstract idea. Alice, 573 U.S. at 217. In cases involving software, step one often “turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies [as] an abstract idea for which computers are invoked merely as a tool.” Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1306–07 (Fed. Cir. 2020) (citing Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020)). “We have routinely held software claims patent eligible under Alice step one when they are directed to improvements to the functionality of a computer or network platform itself.” Id. at 1307 (collecting cases).
(Page 11)
This case is nothing like the claims we held ineligible in Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017). There, the claims recited a method of transmitting packets of information over a communications network comprising: converting information into streams of digital packets; routing the streams to users; controlling the routing; and monitoring the reception of packets by the users. Id. at 1334. We held the claims ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,” “monitoring,” and “accumulating records”) using “result-based functional language” without the means for achieving any purported technological improvement. Id. at 1337. Here, there is no functional claiming, nor are there abstract steps.
In numerous court decisions found the use of computer to perform computer process in a convenience (e.g., more efficient, faster, and etc.) has been held not be an “inventive concept” or specific improvement, see MPEP 2106.05(f)(2), “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016).
Considering the additional elements of generic computing components of licensee device, licensor device, processor, memory, network adapter with client-server network of distributed ledger arrangement, consensus mechanism, software module for translation, the claim limitations are recited at a high-level of abstraction without any details as to how they are performed but purely functional and result-oriented limitations, in ordered combination, these elements do not integrate the judicial exception into a practical application or amount to significantly more than the abstract idea.
Thus, the 101 rejection is maintained.
35 U.S.C. 103 Rejections:
The Examiner asserts that the Applicant’s arguments are directed towards amended claim limitations and are, therefore, considered moot. However, the examiner has responded to the amended amendments, which the arguments are directed to, in the rejection above, thereby addressing the applicant’s arguments. New reference Xu has been introduced to teach the amended claim limitations.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. The additional cited art, including but not limited to the excerpts below, further establishes the state of the art at the time of Applicant’s invention and shows the following was known:
Sakaitani et al. (US 20200226702 A1) is directed to a transaction management method, a method of exploitation right management, a communication terminal, and a program, in particular to a technique for managing distribution and use of works using a blockchain.
Holland et al. (US 20190384892 A1) is directed to a method for electronically documenting license information via the granting of a license and the use of said license in a network of several electronic data processing devices, the license information is added with a new transaction block to a decentralized transaction database and is managed using blockchain technology. When a license is granted to a licensee, a licensor generates new license information with a licensing input, the licensing input contains at least one license identification, and before, during or after use of the license granted by the licensor the licensee generates new license information with a license use input, and the license use input contains at least the license identification of the licensing input and a use identification. The licensing input can contain a license key encrypted with a public key of the licensee, with which the licensor and the licensee can generate and decrypt encrypted information.
D. Patel, Y. Panchal, R. Wankadia and K. Samdani, "A Study of Blockchain’s Architecture and it’s Applications," 2018 IEEE Punecon, Pune, India, 2018, pp. 1-11, doi: 10.1109/PUNECON.2018.8745381 which teaches the protection and distribution of electronic content between licensor and licensee over blockchain (Fig. 6).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/WENREN CHEN/Primary Examiner, Art Unit 3626