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 .
Response to Amendment
The amendment filed 10/30/25 has been entered.
Claims amended: claim 1, 4-7.
Claim Status
Claims 1-20 are pending. They comprise of 3 independent groups:
(1) Method1: 1-7, and
(2) System2: 8-16, and
(3) Method2: 17-20.
Claims 8-20 have been withdrawn.
As of 10/30/25, amended method claim 1 is as followed:
1. (Currently Amended) A computer-implemented method, comprising:
[1] receiving a request, at an authentication service, to add an asset to a distributed ledger;
[2] requesting, from a user, authentication information associated with the asset;
[3] receiving, responsive to the requesting, the authentication information associated with the asset, the authentication information including one or more features determined by an authentication process to provide authentication of the asset;
[4] determining, based at least in part on the one or more features of the authentication information and a category of the asset, that the authentication information fails to meet one or more threshold sufficiency factors;
[5] providing, to the user, one or more recommendations to obtain supplemental authentication information associated with the asset;
[6] receiving, the supplemental authentication information associated with the asset, the supplemental authentication information including one or more supplemental features determined by an authentication process to provide authentication of the asset;
[7] determining, based at least in part on the one or more supplemental features of the supplemental authentication information, that the supplemental authentication information together with the authentication information exceeds the one or more threshold sufficiency factors; and
[8] automatically generating, responsive to the determining, an entry in the distributed ledger for the asset, the entry including at least ownership information for the asset and an authentication status of the asset, the authentication status being based, at least in part, on the authentication information and the supplemental authentication information.
Note: for referential purpose, numerals [1]-[8], are added to the beginning of each step.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e.,
(1) process,
(2) machine,
(3) manufacture or product, or
(4) composition of matter.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception, i.e.,
(1) law of nature,
(2) natural phenomenon, and
(3) abstract idea.
and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include:
(i) a method of organizing human activities,
(2i) an idea of itself, or
(3i) a mathematical relationship or formula.
For instance, in Alice Corp. (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)), the Court found that “intermediated settlement” was a fundamental economic practice, which is considered as (i) a certain method of organizing human activities, which is an abstract idea.
Step 1:
In the instant case, with respect to claims 1-7:
Claim category:
Method (process): 1-7,
Analysis:
Method: claims 1-7, are directed to a method for managing an asset and providing an authentication status of the asset, comprising steps of [1] receiving a request, [2] requesting, from a user, authentication information associated with the asset; [3] receiving, responsive to the request, the authentication information;
[4] determining that the authentication information fails to meet one or more threshold sufficiency factors; [5] providing, to the user, one or more recommendations to obtain supplemental authentication information; [6] receiving, supplemental authentication information; [7] determining, based at least in part on one or more features of the supplemental authentication information, that the supplemental authentication information exceeds the one or more threshold sufficiency factors; and [8] generating, for the asset, an entry in a distributed ledger including at least ownership information for the asset and an authentication status of the asset. (Step 1:Yes).
Thus, the claims are generally directed towards one of the four statutory categories under 35 USC § 101.
Step 2A,
(1) Prong One: Does the claim recite a judicial exception?
(2) Prong Two: Are there any additional elements that integrate the judicial exception into a practical application?
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, then proceeds to step 2B.
Step 2B: Are there any additional elements that adds an inventive concept to the claim? Determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
A. Step 2A, Prong One: Does the claim recite a judicial exception?
Claim 1, as exemplary, recites a method for managing an asset and providing an authentication status of the asset, comprising the steps [1]-[8], as shown above, which is considered as (i) a certain method of organizing human activities, which is an abstract idea.
These recited limitations fall within the “Certain Methods of Organizing Human activities” grouping of abstract ideas as it relates to business process for managing an asset and providing an authentication status of the asset. Accordingly, the claim recites an abstract idea.
(ii) commercial or legal interactions (including agreements in the form of contracts; Legal obligations; Advertising, marketing or sales activities or behaviors; business relations);
B. Step 2A, Prong Two: Are there any additional elements that integrate the judicial exception into a practical application?
The judicial exception is not integrated into a practical application because it deals with a method for managing an asset and providing an authentication status of the asset, by carrying out steps of:
The claims recites the additional elements of:
Steps: Types
[1] receive a request (data)… Data gathering, insignificant extra-solution activity (IESA)
[2] request authentication information (data) Data gathering, IESA.
[3] receive authentication information (data) Data gathering, IESA.
[4] determine information fails to meet… Mental/analysis/verifying an identity.
[5] provide recommendation (data) to … Data gathering, IESA.
[6] receive supplemental information (data). Data gathering, IESA.
[7] determine information exceeds.. Mental/analysis/verifying by comparing values.
[8] generate entry (enter data) ..in a record DL. Business activity/accounting/recording identity of item and its ownership.
Steps [1]-[3] and [5]-[6] are data gathering, data generating, etc., which are considered as insignificant extra-solution activity steps.
Steps [4], [7] and [8] are well known steps mental / business steps for verifying an entity by comparing submitted data to stored data to ensure it passes certain threshold value, finally carrying out a well known accounting step, i.e. recording an item on a record in a well known distributed ledger or a decentralized, digital database shared and synchronize across a network of multiple computers (nodes) allowing for the recording, tracking and sharing of data. See Qiu et al, US 2020/0.034.919, filed 07/26/2019, with Foreign priority of 07/27/2018.
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The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a well known distributed ledger, a decentralized, digital database shared and synchronize across a network of multiple computers (nodes) allowing for the recording, tracking and sharing of data. 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. The claim is directed to an abstract idea for analyzing a request to manage an item in a distributed ledger, provide authentication status of the asset, and record the item, which does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
C. Step 2B: Are there any additional elements that adds an inventive concept to the claim?
The additional elements do not add an inventive element to the claim. The claims recites the additional elements of steps [1]-[8] above.
Steps [1]-[3] and [5]-[6] are data gathering, data generating, etc., which are considered as insignificant extra-solution activity steps.
Steps [4], [7] and [8] are well known steps mental / business steps for verifying an entity by comparing submitted data to stored data to ensure it passes certain threshold value, finally carrying out a well known accounting activity, i.e. recording an item on a record in a well known distributed ledger or a decentralized, digital database shared and synchronize across a network of multiple computers (nodes) allowing for the recording, tracking and sharing of data. See Qiu et al, US 2020/0.034.919, filed 07/26/2019, with Foreign priority of 07/27/2018.
The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a well known distributed ledger, a decentralized, digital database shared and synchronize across a network of multiple computers (nodes) allowing for the recording, tracking and sharing of data. 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. The claim is directed to an abstract idea for analyzing a request to manage an item in a distributed ledger and provide authentication status of the asset, and record the item, which does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above, the additional elements, steps [4], [7]-[8] when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea(s) using a generic computer device. These generic computer components, i.e. a processor, a memory to store a set of instructions. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer network devices, i.e. a software for analyzing a request to manage an item in a distributed ledger and provide authentication status of the asset, and record the item (asset), are claimed at high level of generality to perform their basis functions which amount to no more than generally linking the use of the judicial exception to the particular technological environment of field of use and further see insignificant extra-solution activity MPEP 2106.05 (f), (g) and (h). The Symantec, TLI, and OIP Techs, court decisions cited in MPEP 2106.05(d)(II) indicate that mere receipt or transmission of data over a network, sorting data, analyzing data, and transmitting the data is a well-understood, routine and conventional function when it is claimed in a merely generic manner (as it is here). The claim are basically collect data, analyze data, and provide set of results, which are not patent eligible, see Electric Power Group, LLC. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible.
As for dep. claims 2-3 (part of 1 above), which deal with further details of the recommendation and asset types, these further limit the abstract idea of the analysis of authentication process, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 2-3 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 4-5 (part of 1 above), which deal with further details of the authentication analysis of the collateral assets, these further limit the abstract idea of the analysis of the authentication and smart contract, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 4-5 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 6-7 (part of 1 above), which deal with further details of the authentication analysis of the collateral assets, these further limit the abstract idea of the analysis of the authentication and smart contract, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 6-7 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
Therefore, claims 1-7 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more. step 2B: NO
Claim Rejections - 35 USC § 103
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 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.
On October 10, 2007, the Patent Office issued the "Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.," 73 Fed. Reg. 57,526 (2007) (hereinafter the Examination Guidelines). Section III is entitled "Rationales to support rejections under 35 U.S.C. 103." Within this section is the following quote from the Supreme Court: "rejections on obviousness grounds cannot be sustained by merely conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Under the Examination Guidelines, the following is a list of rationales that may be used to support a finding of obviousness under 35 U.S.C. § 103:
(a) combining prior art elements according to known methods to yield predictable results;
(b) simple substitution of one known element for another to obtain predictable results;
(c) Use of known technique to improve similar devices (methods, or products) in the same way;
(d) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(e) "Obvious to try" choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(f) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and
(g) Some teaching, suggestion, or motivation (TSM) in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Each rationale is resolved using the Graham factual inquiries.
Claims 1-7 (method1) are rejected under 35 pre-AIA U.S.C. 103(a) as being un-patentable over:
Name Publication
(1) SLIWKA ET AL. WO 2021/062.160, and
(2) GALEBACH ET AL. US 2019/0.147.431.
As for independent claim 1, SLIWKA ET A. (WO 2021/062160) discloses a computer-implemented method, comprising:
[1] receiving a request, at an authentication service, to add an asset to a distributed ledger;
{see [0008 … manage an authentication task that is performed by an authenticator to authenticate the collateral item …. That is stored on the distributed ledger…. In response to receiving a request… ]}
[2] requesting, from a user, authentication information associated with the asset;
{see [008…receive an authentication report from an authenticator …authentication report includes an authentication opinions of … collateral item authentic or not authentic…], and [0075] and [0180]}
[3] receiving, responsive to the request, the authentication information;
{see [008…receive an authentication report from an authenticator …authentication report includes an authentication opinions of … collateral item authentic or not authentic…], and [0075] and [0080]}
[4] determining, based at least in part on one or more features of the authentication information and a category of the asset, that the authentication information fails to meet one or more threshold sufficiency factors;
{see [0102…the risk score associated with the potential transaction … risk that the seller will not successfully deliver an item or that the item may be faked or in an unsatisfactory condition transaction…]}
[5] providing, to the user, one or more recommendations to obtain supplemental authentication information;
{see [0103 … risk that the user defaults on a loan, requiring a user to provide secondary authentication information if the user is requesting a loan and has not provided such information, and the like..]}
[6] receiving, the supplemental authentication information associated with the asset, the supplemental authentication information including one or more supplemental features determined by an authentication process to provide authentication of the asset;
{see [008…receive an authentication report from an authenticator …authentication report includes an authentication opinions of … collateral item authentic or not authentic…], and [0075] and [0080],
[0102 … a set of conditions on a user requesting to participate in … and has not provided such information, and the like….]}
[7] determining, based at least in part on one or more features of the supplemental authentication information, that the supplemental authentication information exceeds the one or more threshold sufficiency factors; and
{[102 … that the user deposit … an amount of funds that are equal to or greater than sale price of the items ….. In this way, the platform 100 may issue a refund to a buyer if the user (i.e., seller) does not successfully complete the transaction….]}
[8] automatically generating, for the asset, an entry in a distributed ledger including at least ownership information for the asset.
{see Fig. 16, 1600 “facilitating transactions, 1602, maintaining a ledger,
[0220… a ledger is maintained… store user information….account of user… ownership….] and
[0221… transaction request …ownership… updated to indicate that the transacting user owns the specific token…updating the second chain of blocks with a new block… ownership data ….],and
Fig. 19, 1912 “Updating the distributed ledger”}
As for the feature in step (d) of “exceeds the one or more threshold sufficient factor,” SLIWKA ET A. discloses the phrase “equal to or greater than sale price of the item…” in step [7] which inherently reads over the term “exceeds the one or more threshold sufficient factor,” or it would have been obvious to consider “the sale price of the item” as “threshold sufficient factor” as mere equivalent term or feature for transaction completion parameters if desired.
{[102 … that the user deposit … an amount of funds that are equal to or greater than sale price of the items ….. In this way, the platform 100 may issue a refund to a buyer if the user (i.e., seller) does not successfully complete the transaction….]}
SLIWKA ET A. fairly teaches the claimed invention except for explicitly discloses the feature “generating an entry including the “authentication status” feature in the last step.
GALEBACH ET AL. discloses steps for establishing relationships between the nodes (computers) in a blockchain network using user identifiers such as user ownership and status of authentication, see [0073-0074].
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Therefore, it would have been obvious to a skilled artisan to modify the asset authentication and management service of SLIWKA ET A. to include the status of authentication of an asset along with the ownership of the asset in the distributed ledger as taught by GALEBACH ET AL. for verifying user identifier and tracking relationship of the asset across network of nodes, see [0073-0074].
Regarding dep. claim 2 (part of 1 above) which deals with a feature of the recommendation item, including a list of expert, this is taught in Fig. 20, 2006 “Appraiser” and [00228… appraiser..] which is normally expert in the field.
Regarding dep. claim 3 (part of 1 above) which deals with a feature of the asset, a physical asset, this is taught in [0004 … virtual items .. video games, … weapon, tools..].
Regarding dep. claim 4 (part of 1 above) which deals with authentication of a transaction with stages and status, this is taught in [0003 …purchase via a website..], [0006… smart contract … series of stages, including authentication stage where a collateral item is authenticated, an appraisal stage…, and a safekeeping stage…]. It would have been obvious to provide a stage indicator such as “authentication stage indicator” to manage the workflow stages efficiently.
Regarding dep. claim 5 (part of 1 above) which deals interactive communication of the smart contract, these are taught in [0006… smart contract … series of stages, including authentication stage where a collateral item is authenticated, an appraisal stage…, and a safekeeping stage…]. It would have been obvious to provide notification request of collateral assets for the appropriate stage.
Regarding dep. claim 6 (part of 1 above) which deals interactive communication of the smart contract, these are taught in [0006… smart contract … series of stages, including authentication stage where a collateral item is authenticated, an appraisal stage…, and a safekeeping stage… The dilemmas result in … lower loan amounts and higher interest rates/loan costs…].
Regarding dep. claim 7 (part of 1 above) which deals interactive communication of the smart contract, these are taught in [0006… smart contract … series of stages, including authentication stage where a collateral item is authenticated, an appraisal stage…, and a safekeeping stage…] and [0221… transaction request …ownership… updated to indicate that the transacting user owns the specific token…updating the second chain of blocks with a new block… ownership data ….], Fig. 19, 1912 “Updating the distributed ledger”}
No claims are allowed.
Response to Arguments
1) 101 Rejection:
(1) Applicant’s comments on pages 7-11 with respect to “Step 2A, Prong One” are noted but not found to be persuasive. The main argument is that claim 1 can’t be practice in human minds, this is not found to be persuasive for the following reasons:
Steps: Types
[1] receive a request (data)… Data gathering, insignificant extra-solution activity (IESA)
[2] request authentication information (data) Data gathering, IESA.
[3] receive authentication information (data) Data gathering, IESA.
[4] determine information fails to meet… Mental/analysis/verifying an identity.
[5] provide recommendation (data) to … Data gathering, IESA.
[6] receive supplemental information (data). Data gathering, IESA.
[7] determine information exceeds.. Mental/analysis/verifying by comparing values.
[8] generate entry (enter data) ..in a record DL. Business activity/accounting/recording identity of item and its ownership.
Steps [1]-[3] and [5]-[6] are data gathering, data generating, etc., which are considered as insignificant extra-solution activity steps.
Steps [4], [7] and [8] are well known steps mental / business steps for verifying an entity by comparing submitted data to stored data to ensure it passes certain threshold value, finally carrying out a well known accounting step, i.e. recording an item on a record in a well known distributed ledger or a decentralized, digital database shared and synchronize across a network of multiple computers (nodes) allowing for the recording, tracking and sharing of data. See Qiu et al, US 2020/0.034.919, filed 07/26/2019, with Foreign priority of 07/27/2018.
(2) Applicant’s comments on pages 11-13 with respect to “Step 2A, Prong 2” are noted but not found to be persuasive. The improvement of the claims appear to be due to the use of the distributed ledger with well known benefits in the field. The claims appear to be merely “applying the authentication process” on a distributed ledger.
(3) Merely applying AI or Distributed Ledger or a computer to an abstract idea does not make it patentable. Claims must show a specific, technical improvement, such as improving computer functionality or a technical process.
(4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
As shown in the applicant’s comment below, the improvement of the claims appear to be dealt with improving authenticity services. This is not a specific, technical improvement, such as improving computer functionality or a technical process.
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(2) Applicant’s comments on pages 13-15 with respect to “Step 2B” are noted but not found to be persuasive. As shown in the applicant’s comment above, the improvement of the claims appear to be dealt with improving authenticity services. This is not a specific, technical improvement, such as improving computer functionality or a technical process. The improvement of the claims is due to the use of the distributed ledger with well known benefits in the field. The claims appear to be merely “applying the authentication process” on a distributed ledger.
(3) Merely applying AI or Distributed Ledger or a computer to an abstract idea does not make it patentable. Claims must show a specific, technical improvement, such as improving computer functionality or a technical process.
(4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
2) 103 Rejection:
Applicant’s comment that Sliwka fails to teach the amended feature of the last step “entry including the (a) ownership information, and (b) authentication information of the asset including the status, is noted. New citation has been cited to address the (b) feature.
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.
Citations of Pertinent Prior Art
1) SKALA et al, US 11,164,251 discloses a digital asset exchange in a distributed ledger wherein the database storage contain asset information such as (1) ownership, and (2) authentication data associated with each respective registered user of the digital asset exchange, see claim 1 below. This is similar to the teaching of GALEBACH ET AL.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tan "Dean" D NGUYEN whose telephone number is (571)272-6806. The examiner can normally be reached on M-F: 6;30-4:30 PM ET.
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/TAN D NGUYEN/Primary Examiner, Art Unit 3689