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 1-10 and 16-30 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 “a method for tokenization of a precious physical asset; receiving the precious physical asset by one of an escrow group, a repository, a bank and a financial institution authorized to receive and process precious physical assets; determining after said receiving information regarding the precious physical asset; associating a physical identifier with the precious physical asset, and recording, on a blockchain in association with the precious physical asset, a unique digital identifier corresponding to the physical identifier; generating, by the data platform and after said receiving, one or more blockchain tokens that represent ownership of the precious physical asset; securely storing the precious physical asset at the one of the escrow group, the repository, the bank, and the financial institution for a current owner of the one or more tokens; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract; implementing transactions for the one or more tokens utilizing the smart contract; wherein the smart contract is configured to: receive, from the one of the escrow group, the repository, the bank, and the financial institution, a cryptographic verification confirming continued secure storage of the precious physical asset, reject any transaction for the one or more tokens in absence of a current and verified cryptographic verification, and limit a total quantity of the one or more tokens outstanding representing ownership of the precious physical asset to correspond to the determined quantity of the precious physical asset, such that the smart contract rejects generation or transfer of tokens that would cause the total quantity of tokens outstanding to exceed the determined quantity; responsive to the smart contract not rejecting a transaction, coordinating, by the data platform, with the one of the escrow group, the repository, the bank, and the financial institution to update an owner of record of the precious physical asset and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the claim language “determining after receiving information regarding the precious physical asset; associating the precious physical asset with one or more tokens; associating a physical identifier with the precious physical asset, and recording, on a blockchain in association with the precious physical asset, a unique digital identifier corresponding to the physical identifier; generating, by the data platform and after said receiving, one or more blockchain tokens that represent ownership of the precious physical asset; communicating availability of the one or more tokens associated with the precious physical asset; implementing transactions for the one or more tokens and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” can be performed in the human mind. Any process 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 independent claim 1 does not recite an additional element but the independent claim 16 recites a processor, which does not integrate the abstract idea into a practical application because it is a generic hardware, recited functionally to simply carry out the abstract idea. The examiner further contends that the limitations “wherein the information comprises at least a quantity, a quality, and a location of the precious physical asset, the quantity comprising a measured weight or a measured volume of the precious physical asset and the quality comprising at least one of a grade, a purity, a number of karats, a stone clarity, and a country of origin of the precious physical asset; wherein the one or more tokens are linked to the unique digital identifier; and wherein the cryptographic verification identifies the precious physical asset by reference to the unique digital identifier recorded on the blockchain are recited to further narrow the scope of the abstract idea. Thus, it is determined that the claim 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 is the generically recited “processor.” The specification does not point to sufficient evidence that this component is anything other than well-understood, routine, and conventional hardware or system being used in its ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. 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. More specifically, dependent claims 3-8, 10, 18-30 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claim 2, 9 and 17 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 on 08/18/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims are not directed to an abstract idea, the examiner disagrees. The claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “a method for tokenization of a precious physical asset; receiving the precious physical asset by one of an escrow group, a repository, a bank and a financial institution authorized to receive and process precious physical assets; determining after said receiving information regarding the precious physical asset; associating a physical identifier with the precious physical asset, and recording, on a blockchain in association with the precious physical asset, a unique digital identifier corresponding to the physical identifier; generating, by the data platform and after said receiving, one or more blockchain tokens that represent ownership of the precious physical asset; securely storing the precious physical asset at the one of the escrow group, the repository, the bank, and the financial institution for a current owner of the one or more tokens; communicating availability of the one or more tokens associated with the precious physical asset through a smart contract; implementing transactions for the one or more tokens utilizing the smart contract; wherein the smart contract is configured to: receive, from the one of the escrow group, the repository, the bank, and the financial institution, a cryptographic verification confirming continued secure storage of the precious physical asset, reject any transaction for the one or more tokens in absence of a current and verified cryptographic verification, and limit a total quantity of the one or more tokens outstanding representing ownership of the precious physical asset to correspond to the determined quantity of the precious physical asset, such that the smart contract rejects generation or transfer of tokens that would cause the total quantity of tokens outstanding to exceed the determined quantity; responsive to the smart contract not rejecting a transaction, coordinating, by the data platform, with the one of the escrow group, the repository, the bank, and the financial institution to update an owner of record of the precious physical asset and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the claim language “determining after receiving information regarding the precious physical asset; associating the precious physical asset with one or more tokens; associating a physical identifier with the precious physical asset, and recording, on a blockchain in association with the precious physical asset, a unique digital identifier corresponding to the physical identifier; generating, by the data platform and after said receiving, one or more blockchain tokens that represent ownership of the precious physical asset; communicating availability of the one or more tokens associated with the precious physical asset; implementing transactions for the one or more tokens and distributing monies paid during transactions for the one or more tokens associated with the precious physical asset” can be performed in the human mind. Any process 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.
Applicant's citation of Enfish is unpersuasive because the claims at issue in Enfish are readily distinguishable over the instant claims. In Enfish the claims were held to be patent-eligible because the claimed solution was directed to improvements in computer technology with database software designed as a "self-referential" table. The patent claims here do not address improvements in computer technology with database software designed as a "self-referential" table, so Enfish is not applicable. In contrast, the instant claims also provide a generically computer-implemented solution to a communication/business-related or economic problem.
In response to applicant argument, citing DDR, that the claims integrate the alleged abstract idea into a practical application, the examiner disagrees. The examiner contends that independent claim 1 does not recite an additional element but the independent claim 16 recites a processor, which does not integrate the abstract idea into a practical application because it is a generic hardware, recited functionally to simply carry out the abstract idea. The examiner further contends that the limitations “wherein the information comprises at least a quantity, a quality, and a location of the precious physical asset, the quantity comprising a measured weight or a measured volume of the precious physical asset and the quality comprising at least one of a grade, a purity, a number of karats, a stone clarity, and a country of origin of the precious physical asset; wherein the one or more tokens are linked to the unique digital identifier; and wherein the cryptographic verification identifies the precious physical asset by reference to the unique digital identifier recorded on the blockchain are recited to further narrow the scope of the abstract idea. Thus, it is determined that the claim 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.
Applicant's citation of DDR is unpersuasive because the claims at issue in DDR are readily distinguishable over the instant claims. The examiner contends that patent claims in DDR Holdings, as described by the Court, involve conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. “[T]he claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” However, this is just not the case with the claimed subject matter.
Applicant's citation of McRo is unpersuasive because the claims at issue in McRo are readily distinguishable over the instant claims. The examiner contents that the claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. Id. at 1313. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed electronic device with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here - they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it. In McRo, the claimed rules transform a traditionally subjective process performed by humans into a mathematically automated process executed on computers. The human process and computer process in McRO produced a similar result but do so in fundamentally different ways. It is the incorporation of the claimed rules, not the use of the computer that improves the existing technological process by allowing the automation of further tasks. In contrast, the present claims do not provide improved rules and “merely implement an old practice in a new environment.
The examiner contends that the alleged advantages/improvements that applicant touts do not concern an improvement to computer capabilities but instead relate to an alleged improvement in computer-based process; a process in which a computer is used as a tool in its ordinary capacity which is to process data.
In response to applicant’s argument that the claims recite significantly more than any alleged 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 is the generically recited “processor.” The specification does not point to sufficient evidence that this component is anything other than well-understood, routine, and conventional hardware or system being used in its ordinary manner. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. 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.
Applicant's citation of Bascom is unpersuasive, as the claims at issue in Bascom are readily distinguishable over the instant claims. In Bascom the claims were held to be patent-eligible because the claimed solution focused upon the specific asserted improvement in filtering technology by providing individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks. The invention in Bascom was a technological solution to a technological problem, using an improved filtering technology rather than using conventional filtering technology. In contrast, again, the instant claims provide a generically computer-implemented solution to a business-related or economic problem, and are incomparable to the claims at issue in Bascom.
Regarding the argument that the final office action violates Berkheimer, the examiner did not rely upon 2106.05(d) considerations. Instead the examiner stated the additional elements of the claim were mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
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
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