DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
Status of Claims
• The following is an office action in response to the communication filed 12/15/2025.
• Claims 1-15 have been amended.
• Claims 16-20 have been canceled.
• Claims 1-15 are currently pending and have been examined.
Priority
The examiner acknowledges that the instant application is a continuation of US Patent Application No. 17/513,934, filed 10/129/2021, which is a continuation in part of US Patent No. 11164228 B2, filed 07/12/2016, which claims priority from Provisional Patent Application Serial No. 62/354,672, filed 06/24/2016.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
First, it is determined whether the claims are directed to a statutory category of invention. See MPEP 2106.03(II). In the instant case, claims 1-15 are directed to a process. Therefore, claims 1-15 are directed to statutory subject matter under Step 1 of the Alice/Mayo test (Step 1: YES).
The claims are then analyzed to determine if the claims are directed to a judicial exception. See MPEP 2106.04. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception (Prong 1 of Step 2A), as well as analyzed to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of the judicial exception (Prong 2 of Step 2A). See MPEP 2106.04.
Taking claim 1 as representative, claim 1 recites at least the following limitations that are believed to recite an abstract idea:
continually monitoring a plurality of condition related data points from a plurality of external data sources;
filtering the plurality of condition related data points through a set of condition relevancy factors to produce updated condition data;
providing the updated condition data as a data input to a plurality of contract of a plurality of exchange items, wherein a contract of the plurality of contract is included in a secure transaction of an exchange item of the plurality of exchange items,
wherein the contract includes a set of conditions associated with one or more exchange item rules associated with the exchange item, wherein the contract includes triggering data associated with the set of conditions, wherein the triggering data indicates whether the updated condition data triggers an action associated with a condition of the set of conditions; and
when the updated condition data triggers an modification action:
providing a modification output;
establishing a secure communication to take control of the exchange item, wherein establishing the control includes providing a private key to access the secure transaction;
modifying the exchange item based on the updated condition data to produce a modified exchange item;
generating a new block on the secure transaction to produce an updated secure transaction, wherein the new block includes information pertaining to the modification and the modified exchange item; and
releasing control of the modified exchange item.
The above limitations recite the concept of tracking compliance with rules for an exchange item and updating the record of the exchange item. These limitations, under their broadest reasonable interpretation, fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Specifically, the conditions for the exchange items involve sales because the modification of the exchange item relates to brand sponsored credit for use in purchasing (Spec: page 7, lines 1-5). This is further illustrated in page 1, line 28 of the Specification, describing the invention as regarding gift cards for purchase of goods and services. Accordingly, under Prong One of Step 2A of the MPEP, claim 1 recites an abstract idea (Step 2A, Prong One: YES).
Under Prong Two of Step 2A of the MPEP, claim 1 recites additional elements, such as a marketplace server; an exchange item marketplace system, a plurality of contract blockchains, a contract blockchain, a secure transaction blockchain, an automatic action, an automatic modification action, a digital wallet, a computing device, a block on the secure transaction blockchain; and wherein the computing device stores the updated contract blockchain in the digital wallet. These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Although these additional computer-related elements are recited, claim 1 merely invokes such additional elements as a tool to perform the abstract idea. Implementing an abstract idea on a generic computer is not indicative of integration into a practical application. Similar to the limitations of Alice, claim 1 merely recites a commonplace business method (i.e., tracking compliance with rules for an exchange item and updating record of the exchange item) being applied on a general purpose computer. See MPEP 2106.05(f). Furthermore, claim 1 generally links the use of the abstract idea to a particular technological environment or field of use. The courts have identified various examples of limitations as merely indicating a field of use/technological environment in which to apply the abstract idea, such as specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer (see FairWarning v. Iatric Sys.). Likewise, claim 1 specifying that the abstract idea of tracking compliance with rules for an exchange item is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the MPEP, when considered both individually and as a whole, the limitations of claim 1 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claim 1 recites an abstract idea and fail to integrate the abstract idea into a practical application, claim 1 is “directed to” an abstract idea (Step 2A: YES).
Next, under Step 2B, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract idea. See MPEP 2106.05. The instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for at least the following reasons.
Returning to independent claim 1, this claims recite additional elements, such as a marketplace server; an exchange item marketplace system, a plurality of contract blockchains, a contract blockchain, a secure transaction blockchain, an automatic action, an automatic modification action, a digital wallet, a computing device, a block on the secure transaction blockchain; and wherein the computing device stores the updated contract blockchain in the digital wallet. As discussed above with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). Moreover, the limitations of claim 1 are manual processes, e.g., receiving information, sending information, etc. The courts have indicated that mere automation of manual processes is not sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)). Furthermore, as discussed above with respect to Prong Two of Step 2A, claim 1 merely recites the additional elements in order to further define the field of use of the abstract idea, therein attempting to generally link the use of the abstract idea to a particular technological environment, such as the Internet or computing networks (see Ultramercial, Inc. v. Hulu, LLC. (Fed. Cir. 2014); Bilski v. Kappos (2010); MPEP 2106.05(h)). Similar to FairWarning v. Iatric Sys., claim 1 specifying that the abstract idea of tracking compliance with rules for an exchange item and updating the record of the exchange item is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claim to the computer field, i.e., to execution on a generic computer.
Even when considered as an ordered combination, the additional elements do not add anything that is not already present when they are considered individually. In Alice Corp., the Court considered the additional elements “as an ordered combination,” and determined that “the computer components…‘[a]dd nothing…that is not already present when the steps are considered separately’ and simply recite intermediated settlement as performed by a generic computer.” Id. (citing Mayo, 566 U.S. at 79, 101 USPQ2d at 1972). Similarly, viewed as a whole, claim 1 simply conveys the abstract idea itself facilitated by generic computing components. Therefore, under Step 2B of the Alice/Mayo test, there are no meaningful limitations in claim 1 that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims 2-15, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. Dependent claims 2-15 further fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, enumerated in the MPEP, in that they recite commercial or legal interactions such as advertising, marketing, or sales activities or behaviors. Dependent claims 2-15 fail to identify additional elements and as such, are not indicative of integration into a practical application. Similar to discussion above the with respect to Prong Two of Step 2A, although additional computer-related elements are recited, the claims merely invoke such additional elements as a tool to perform the abstract idea. See MPEP 2106.05(f). As such, under Step 2A, dependent claims 2-15 are “directed to” an abstract idea. Similar to the discussion above with respect to claim 1, dependent claims 2-15 analyzed individually and as an ordered combination, invoke such additional elements as a tool to perform the abstract idea and merely indicate a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, and therefore, do not amount to significantly more than the abstract idea itself. See MPEP 2106.05(f)(2). Accordingly, under the Alice/Mayo test, claims 1-15 are ineligible.
Subject Matter Allowable over the Prior Art
Claims 1-16 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 101, set forth in this Office action.
Upon review of the evidence at hand, it is hereby concluded that the evidence obtained and made of record, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of applicant’s invention as the noted features amount to more than a predictable use of elements in the prior art.
The most relevant prior art made of record includes previously cited Isaacson et al. (US 20120226604 A1), hereinafter Isaacson, previously cited Lingham et al. (US 20160267474 A1), hereinafter Lingham, previously cited Cohn et al. (US 20170310747 A1), hereinafter Cohn, newly cited Goerlitz (US 20130310153 A1), hereinafter Goerlitz, and previously cited NPL reference U, initially cited in the Office action dated 11/28/2023.
Although individually the references teach concepts such monitoring condition related data points, inputting data to blockchains, and modifying an exchange item, none of the references teach nor render obvious the specific method of monitoring conditions to input into a blockchain, where this triggers an automatic modification action to take control of the exchange item using a private key and to modify the exchange item before releasing control of the exchange item.
Previously cited Isaacson discloses an exchange item method (Isaacson: [0150]). A virtual gift card is provided and can be triggered by a recipient earning straight As on his or her report card. Such data can be defined by a social network or other general data source. The system can monitor the appropriate information source for fulfillment of the trigger (Isaacson: [0150]). An external event to trigger the gift card may include weather reports showing that a storm is coming (Isaacson: [0165]). Additionally, an example offering could be that any giver who went to a professional basketball game this year will get an extra $3 added to any gift card given in the next month. The system can obtain any such data about the giver or recipient through social networking, personal input to a website, tracking financial transactions, third party entry of data, or any other database, the offering may be if the Yankees win the World Series, then all gift card givers will have an extra $2 applied for all New York restaurant gift cards for the week after the game to celebrate (Isaacson: [0163]). The gift card information is stored with various data fields. The exact names, types, sizes, and order of data fields in the packet are exemplary. The packet can be implemented in any variation thereof, including any combination or permutation of these and/or other data elements. These example fields include a security header 472, information about the giver 476, information about the recipient 478, a currency amount 480, a time associated with the virtual gift card 484, a location or geographic limitation associated with the virtual gift card 486 and another optional field 488 or fields (Isaacson: [0120] and Fig. 4C). Yet Isaacson does not explicitly disclose all of the limitations pertaining to the continual monitoring and the contract blockchain.
Previously cited Lingham teaches a gift card method (Lingham: [0004]). Lingham further teaches a public ledger includes all such transactions that have ever been executed. The blockchain is constantly growing as ‘completed’ blocks are added with a new set of recordings. The blocks are added to the blockchain in a linear, chronological order, like a chain (Lingham: [0027]). Lingham additionally teaches the wallet service provider server validates the token, and if the token is valid, and assets are available at the token's corresponding address or addresses, and these assets are accepted by the merchant, the wallet service prepares a public ledger transaction and signs it with the cardholder's private key. The issuance service provider is then notified of the new transaction, and the issuance service provider validates the transaction's compliance with regulations and cardholder services (Lingham: [0055] and Fig. 9). Lingham further teaches that authorization of transactions occurs through use of ‘2 of 3 signatures.’ For each digital gift card on the secure ledger there is what is known as a 2 of 3 address holding the merchant-issued value. Funds transfer out of the 2 of 3 address are only accepted by the secure public ledger if 2 of the 3 private keys of the respective 2 of the 3 addresses used to generate the 2 of 3 addresses are present…one of the 3 addresses used is controlled by a private key belonging to the digital gift cardholder and held in the cardholder's wallet service…the gift card holder and the gift card issuance service both sign the transaction (Lingham: [0056-0061] and Fig. 10). However, Lingham does not explicitly teach all of the limitations regarding the conditions and the exchange item.
Previously cited Cohn teaches a method of transactions (Cohn: [0017]). Cohn further teaches a wallet that can store blockchains and contracts with devices identified on blockchains and marketplace transactions (Cohn: [0033]). Cohn further teaches that ADEPT peer can be used for more complex blockchain transactions (e.g., blockchain mining/verification, crypto-currency exchange, where examples of data and/or transactions can comprise blockchain creation/updates/consensus, code updates, reports, diagnostics and service history (Cohn: [0019]; [0044]). However, Cohn does not teach the limitations regarding the conditions and the exchange item.
Newly cited Goerlitz teaches a promotion method (Goerlitz: [0028]). Goerlitz further teaches data (e.g. stock price or sports score) that is determinative of the outcome may be obtained by querying a data source with the necessary data. Where part of game creation may include specifying conditions for winning the games, conditions for winning are based on objectively verifiable information from a data feed, the data feed being data provided by a trusted system, which may be a participant system or a third-party system. For example, a game may ask participants to decide whether the value of a stock will be higher or lower than a certain value at closing on a particular day. An information source that provides closing stock prices may be utilized to determine who the winners and losers are, one game may be created to ask users whether the total points scored in a football game will be above or below a certain value. The winning and losing team scores may be obtained from a trusted source of sports scores and added together to determine winners and losers of the game, winners of games may be determined based at least in part on objectively verifiable information from trusted data sources, when writing bets, a publisher may specify the data source (Goerlitz: [0037]; [0034-0035]). However, Goerlitz does not explicitly teach all of the limitations regarding the conditions and the exchange item.
Previously cited NPL reference U, initially cited in the Office action dated 11/28/2023, teaches promotional gift cards. Gift card balances may be maintained in a database and updated according to use. Gift cards may be associated with expirations. However, U does not teach all of the limitations regarding the conditions and exchange items.
While these references arguably teach the claimed limitations using a piecemeal analysis, these references would only be combined and deemed obvious based on knowledge gleaned from the applicant's disclosure. Such a reconstruction is improper (i.e., hindsight reasoning). See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, claim 1, taken as a whole, are indicated to be allowable over the cited prior art. The examiner emphasizes that it is the interrelationship of the limitations that renders these claims allowable over the prior art/additional art. Claims 2-15 depend from claim 1, and therefore the dependent claims are also indicated as containing allowable subject matter.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, filed 12/15/2025, have been fully considered.
35 U.S.C. § 101
Applicant argues the claims are integrated into a practical application because the claims “the present invention improves a technology or technological field” and the claims are similar to Ex parte Steven Charles Davis (Remarks pages 7-8). The examiner disagrees. The MPEP provides guidance on how to evaluate whether claims recite an improvement in the functioning of a computer or an improvement to other technology or technical field. For example, the MPEP states “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” The MPEP further states that “[t]he specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art,” and that, “conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…the examiner should not determine the claim improves technology” (see MPEP 2106.04). That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. Looking to the specification is a standard that the courts have employed when analyzing claims as it relates to improvements in technology. For example, in Enfish, the specification provided teaching that the claimed invention achieves benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Additionally, in Core Wireless the specification noted deficiencies in prior art interfaces relating to efficient functioning of the computer. Core Wireless Licensing v. LG Elecs. Inc., 880 F.3d 1356 (Fed Cir. 2018). With respect to McRO, the claimed improvement, as confirmed by the originally filed specification, was “…allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters…’” and it was “…the incorporation of the claimed rules, not the use of the computer, that “improved [the] existing technological process” by allowing the automation of further tasks”. McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, (Fed. Cir. 2016).
While the examiner acknowledges that improvements to the functioning of a computer or to any other technology or technical field may constitute integration into a practical application (see MPEP 2106.05(a)), the instant claims do not provide a technical improvement. Rather, the claims provide an improvement to the abstract idea of tracking compliance with rules for an exchange item and updating the record of the exchange item. With respect to Applicant’s argument that the claimed limitations are similar to those in Ex parte Steven Charles Davis, the examiner notes that the claims merely describe the additional elements at a high level and are silent regarding any sort of improvements to blockchain technology. The invention at issue in Ex parte Steven Charles Davis improved security of payment processing systems, and the current invention provides no similar improvement to payment processing systems. Thus, the cases are not similar.
Although the claims include computer technology such as a marketplace server; an exchange item marketplace system, a plurality of contract blockchains, a contract blockchain, a secure transaction blockchain, an automatic action, an automatic modification action, a digital wallet, a computing device, a block on the secure transaction blockchain; and wherein the computing device stores the updated contract blockchain in the digital wallet, such elements are merely peripherally incorporated in order to implement the abstract idea. Put another way, these additional elements are merely used to apply the abstract idea of tracking compliance with rules for an exchange item and updating the record of the exchange item in a technological environment without effectuating any improvement or change to the functioning of the additional elements or other technology. This is unlike the improvements recognized by the courts in cases such as Enfish, Core Wireless, and McRO. Unlike precedential cases, neither the specification nor the claims of the instant invention identify such a specific improvement to computer capabilities. The instant claims are not directed to technological improvements but are directed to improving the business method of tracking compliance with rules for an exchange item and updating the record of the exchange item. The claimed process, while arguably resulting in a more accurate process for tracking compliance with rules for an exchange item and updating the record of the exchange item, is not providing any improvement to another technology or technical field as the claimed process is not, for example, improving the server and/or computer components that operate the system. Rather, the claimed process is utilizing data sets related to transactions while still employing the same server and/or computer components used in conventional systems to improve tracking compliance with rules for an exchange item and updating the record of the exchange item, e.g. a business method, and therefore is merely applying the abstract idea using generic computing components. As such, the claims do not overcome the 101 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA MAE MITROS whose telephone number is (571)272-3969. The examiner can normally be reached Monday-Friday from 9:30-6.
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/ANNA MAE MITROS/Examiner, Art Unit 3689