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
1. 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.
2. Claims 1-17, 21, 26-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “method of enabling a receiving entity to determine whether a blockchain transaction output of a proposed transaction has been assigned by a previous blockchain transaction; retrieving a first plurality of spent blockchain transactions outputs available to the transmitting entity; applying a hash function to each of the first plurality of spent blockchain transaction outputs to generate a respective identifier of each of a plurality of spent blockchain transaction outputs…; enabling the receiving entity to interact with the probabilistic filter data structure to determine double spend condition of the proposed transaction without requiring the receiving entity to communicate with one or several blockchain nodes to determine the double spend condition” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Also, the claim language “retrieving a first plurality of spent blockchain transactions outputs available to the transmitting entity; applying a hash function to each of the first plurality of spent blockchain transaction outputs to generate a respective identifier of each of a plurality of spent blockchain transaction outputs…; generating a first probabilistic filter, and making the first probabilistic filter available to a receiving entity” can be performed in the human mind. Any action that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including "making the first probabilistic filter data structure available to a receiving entity by one of transmitting the probabilistic filter data structure directly to the receiving entity, publishing the probabilistic filter data structure, or broadcasting the probabilistic filter data structure and the probabilistic filter data structure is configured to test whether a new element added to the set is already present in the set." These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of outputting/transmitting data using a generic computer system. The recited "probabilistic data structure," with its already available basic function, is simply being applied to the abstract idea and being used as a tool in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting patent- ineligible insignificant extra-solution and post-solution activities. For instance, the step "the probabilistic filter data structure is configured to test whether a new element added to the set is already present in the set" is a patent-ineligible insignificant extra-solution because it is merely reciting an inherent feature of the probabilistic filter data structure. Also, the limitations "making the first probabilistic filter data structure available to a receiving entity by one of transmitting the
probabilistic filter data structure directly to the receiving entity, publishing the probabilistic filter
data structure, or broadcasting the probabilistic filter data structure," when considered as a
whole, are directed to insignificant post-solution activities of sending/outputting data from one
system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016).
Further, the limitations "wherein the first probabilistic filter encodes a respective identifier of
each of a first plurality of spent blockchain transaction outputs as elements of a set and the
probabilistic filter data structure is incapable of a false negative result when testing an element
added to the set" are recited to further narrow the scope of the abstract idea. In all, these recited
steps merely describe an intangible property of the data that does not affect the examiner's
characterization of the additional limitations as insignificant extra-solution activities and the
automation of mental tasks. Thus, it is determined that claim 1 is not directed to a specific
asserted improvement in computer technology or otherwise integrated into a practical application
and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 is the generically recited “computer.” The specification does not point to sufficient evidence that this component is anything other than well-understood, routine, and conventional hardware component or system being used in its ordinary manner. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. For instance, while independent claims 26 and 27 recite similar limitations to independent claim 1 and thus rejected using the same rationale as in claim 1, claim 16 recites additional limitations “ obtaining a first probabilistic filter from a transmitting entity…; obtaining an indication of one or more blockchain transaction outputs and determining whether the one or more previous block transactions based on whether a respective identifier of the one or more blockchain transaction outputs is present in the first probabilistic filter” which can be performed in the human mind using pen and paper, and fall under the category of a mental process, an abstract idea. Further, dependent claims 2-7, 13-15, do not recite additional elements but merely further narrow the scope of the abstract idea. Also, dependent claims 8-12, 17, 21 recite additional elements, but these additional elements are nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
Response to Arguments
Applicant's arguments filed 12/08/25 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claim is not directed to an abstract idea, the examiner disagrees. It is determined the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “method of enabling a receiving entity to determine whether a blockchain transaction output of a proposed transaction has been assigned by a previous blockchain transaction; retrieving a first plurality of spent blockchain transactions outputs available to the transmitting entity; applying a hash function to each of the first plurality of spent blockchain transaction outputs to generate a respective identifier of each of a plurality of spent blockchain transaction outputs…; enabling the receiving entity to interact with the probabilistic filter data structure to determine double spend condition of the proposed transaction without requiring the receiving entity to communicate with one or several blockchain nodes to determine the double spend condition” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Also, the claim language “retrieving a first plurality of spent blockchain transactions outputs available to the transmitting entity; applying a hash function to each of the first plurality of spent blockchain transaction outputs to generate a respective identifier of each of a plurality of spent blockchain transaction outputs…; generating a first probabilistic filter, and making the first probabilistic filter available to a receiving entity” can be performed in the human mind. Any action that can be performed in the human mind falls into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
In response to applicant’s argument that generating identifiers by applying a hash function and generating a probabilistic filter data structure cannot be done in the human mind, the examiner disagrees. The examiner contends that the human mind is capable of performing simple, structured calculations, which can be adapted into a hashing process. For instance, the Human Computable Machine Unbreakable outlines a system where a person can compute a hash function mentally.
In response to applicant’s argument that the additional elements integrate the judicial exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including "making the first probabilistic filter data structure available to a receiving entity by one of transmitting the probabilistic filter data structure directly to the receiving entity, publishing the probabilistic filter data structure, or broadcasting the probabilistic filter data structure and the probabilistic filter data structure is configured to test whether a new element added to the set is already present in the set." These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of outputting/transmitting data using a generic computer system. The recited "probabilistic data structure," with its already available basic function, is simply being applied to the abstract idea and being used as a tool in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting patent- ineligible insignificant extra-solution and post-solution activities. For instance, the step "the probabilistic filter data structure is configured to test whether a new element added to the set is already present in the set" is a patent-ineligible insignificant extra-solution because it is merely reciting an inherent feature of the probabilistic filter data structure. Also, the limitations "making the first probabilistic filter data structure available to a receiving entity by one of transmitting the probabilistic filter data structure directly to the receiving entity, publishing the probabilistic filter
data structure, or broadcasting the probabilistic filter data structure," when considered as a
whole, are directed to insignificant post-solution activities of sending/outputting data from one
system to another (see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241-42 (Fed. Cir. 2016).
Further, the limitations "wherein the first probabilistic filter encodes a respective identifier of
each of a first plurality of spent blockchain transaction outputs as elements of a set and the
probabilistic filter data structure is incapable of a false negative result when testing an element
added to the set" are recited to further narrow the scope of the abstract idea. In all, these recited
steps merely describe an intangible property of the data that does not affect the examiner's
characterization of the additional limitations as insignificant extra-solution activities and the
automation of mental tasks. Thus, it is determined that claim 1 is not directed to a specific
asserted improvement in computer technology or otherwise integrated into a practical application
and thus is directed to a judicial exception.
The examiner further contends that claims seem to be in the field of transaction processing and not in the field of encryption. Thus, the solution being provided is a business solution and not a technical solution.
In response to applicant’s argument that the additional elements amount to significantly more than the abstract idea, the examiner disagrees. It is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 is the generically recited “computer.” The specification does not point to sufficient evidence that this component is anything other than well-understood, routine, and conventional hardware component or system being used in its ordinary manner. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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, Christine Behncke can be reached at 571-272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695