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 .
This Office Action is in response to the Applicant’s Request for Continued Examination filed December 9, 2025. Claims 1-20 are pending in this case. We note that, in the instant case, Applicant requests that arguments made in the Reply Brief filed December 10, 2024, be addressed.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on December 9, 2025, has been entered.
Response to Arguments
Applicant's arguments filed December 9, 2025, and December 10, 2024, have been fully considered but they are not persuasive.
Applicant argues, regarding the claims, in their current version, recite statutory subject matter.
Examiner respectfully disagrees.
Applicant argues, more specifically, that the claims, when analyzed as whole, do not recite an abstract idea.
Examiner respectfully disagrees.
The steps in claim 1 result in managing commercial sales by exchanging sales merchandise based on verification signature authentication absent any technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 3 recites receiving data. Limitations 1, 2, and 4-6 recite generic and conventional generating, updating, analyzing, receiving, and transmitting of sales-related data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for exchanging sales merchandise based on verification signature authentication. To advocate exchanging sales merchandise based on verification signature authentication is conceptual advice for results desired and not technological operations.
Further, the Specification describes the invention as relating to an exchange item marketplace network. (Spec. 1:25-26). Thus, all this intrinsic evidence shows that claim 1 recites managing commercial sales.
Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed in terms of results, devoid of implementation details. Each step recites little more than a conceptual idea.
Step 1 generates a block in a blockchain. This is a generic conventional operation. A blockchain is a highly protected, but generic ledger. Step 1 recites this is done in accordance with a secure custody protocol, but such protocol is a black box with no technological implementation details. Step 1 recites three items of data included in the block, but putting data in a ledger is the very purpose of a ledger. The labels attached to the data items will not confer eligibility. SAP Am., Inc. V. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). One of the three items is a public key associated with a computing device. The claim does not recite the manner, degree, or implementation of such association, or whether the association is implicit or explicit.
Step 1 further recites signing some portion of the block with a private key. This is generic and conventional; no technological implementation details are recited. This limitation does not recite whether this occurs by signing the block as a whole or some data item entered into the block, which is generic. Such a data item would become a portion of the block by virtue of its containment.
Step 2 determines that an acquisition process requires verification of the merchant server. No technological implementation details are recited. The nature and character of the process is also not recited.
Step 3 receives data representing a verification signature. Such representation is itself an abstraction both as an abstract representation and as the features being conceptual ideas. Step 3 recites the verification signature is generated by signing a portion of the information regarding the exchange item data file. Applying digital signatures to data files is generic and conventional.
Step 4 generates a comparative verification signature. No technological implementation details are recited. Step 4 recites doing so by signing a portion of the information regarding the exchange item data file.
Step 5 determines signature authenticity. No technological implementation details are recited. Step 5 recites doing so by comparative verification signature. Using comparison operations to ascertain authenticity is generic and conventional.
Step 6 facilitates the ultimate exchange. No technological implementation details are recited and the scope of such facilitation is not narrowed or characterized. Step 6 does not recite the manner, degree, or implementation of such facilitation. Printing instructions would be within its scope.
In summary, step 3 is a pure data gathering step. Limitations describing the nature of the data do not alter this. Step 6 is insignificant post solution activity, such as storing, transmitting, or displaying the results.
Steps 1, 2, 4, and 5 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results.
Viewed as a whole, claim 1 simply recites the concept of managing commercial sales by exchanging sales merchandise based on verification signature authentication as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The Specification only spells out different generic equipment (Spec. 6:28-31) and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing commercial sales by exchanging sales merchandise based on verification signature authentication under different scenarios. It does not describe any particular improvement in the manner a computer functions.
Rather, claim 1 amounts to nothing significantly more than an instruction to apply managing commercial sales by exchanging sales merchandise based on verification signature authentication using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, apply or use a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement a judicial exception with, or use a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Therefore, claim 1 is directed to achieving the result of managing commercial sales by advising one to exchange sales merchandise based on verification signature authentication, as distinguished from a technological improvement for achieving or applying that result. This amounts to commercial or legal interactions, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-20 are directed toward a method. Therefore, the claims fall within the four statutory categories of invention.
The claims recite verifying a transaction.
Specifically, the claim recites determining whether the acquisition process requires verification of the merchant, and verifying the merchant, which is an abstract idea. The claims recite a commercial transaction which is grouped within the certain methods of organizing human activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)) because they involve approving a signature for a transaction.
Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional elements of the claims such as the merchant server, marketplace server, and computerized device merely implement the abstract idea. The use of a merchant and marketplace servers as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using servers to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of verifying transactions. As discussed above, taking the claim elements separately, the payment device and service provider perform the steps or functions of initiating an acquisition process, determining whether the process requires verification of the merchant server, and verifying the merchant server. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of keeping records of transactions.
Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims, 2-20 further describe the abstract idea of verifying transactions. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Cristina Owen Sherr/ Examiner, Art Unit 3697
/JOHN W HAYES/ Supervisory Patent Examiner, Art Unit 3697