DETAILED ACTION
The present application, filed on 9/14/2022 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 3/10/2026.
a. Claims 1-6, 8, 11-15, 20 are amended
b. Claims 10, 17-19 are withdrawn
c. Claims 21-22 are new
Overall, claims 1-9, 11-16, 20-22 are pending and have been considered below.
Claim Objections
Claims 2-8, 11 and claims 13-16, 20 are objected to for changing their respective dependency to depend from claims that have a higher number, i.e. claim 21 and claim 22 respectively.
When claims are added, they must be numbered starting with the next number following the highest previously presented claim. A claim cannot depend on a higher numbered claim (see MPEP 608/01(J)).
Appropriate correction is requested.
Claim Rejections - 35 USC § 101
35 USC 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 1-9, 11-16, 17-22 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-9, 11, 21 are directed to a computer implemented method, and claims 12-14, 15-16, 17-20 are directed to a system.
Thus, on its face, each such independent claim and the therefrom dependent claims are directed to a statutory category of invention.
Per Step 2A.1. Independent Claim 1, which is representative of claim 12, is rejected under 35 U.S.C. 101 because the claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claims 1, 12 recite an abstract idea, shown in bold here below, as well as additional claim elements (not bolded):
[A] method for managing digitally represented units of data, the method comprising:
[B] providing a blockchain-based transaction network comprising: at least two user devices, a token server comprising a processor and a cache
[C] wherein the cache is for reducing memory latency and access time; and
at least one replacement-token user device;
[D] minting a first plurality of tokens, wherein each token is a digitally represented unit of data;
[E] storing each token on a user device;
[F] transferring at least one token from a first user device to a second user device,
[G] while the token is stored on the second user device, transmitting at predetermined intervals an existence signal from the second user device to the token server,
[H] wherein the existence signal is cryptographically signed by a secure element in the second user device and uniquely associated with the token,
[I] wherein the token server validates the cryptographic signature of the existence signal against a stored public key associated with the secure element before confirming token existence; and
[J] after a predetermined duration during which the token server has not received the existence signal associated with the token, minting a replacement token corresponding with the token,
[K] wherein the replacement token includes a cryptographic link to an identifier of the token to maintain data integrity across the recovery process; and
[L] storing the replacement token on a first replacement-token user device.
Claim 1 recites: minting, i.e. minting (issuing) a plurality of tokens and storing them on a user device ((D), (E)), transferring token(s) from a user device to another user device and transmitting a signal from the latter device to the server ((F), (G)), and minting a replacement token and storing it on a replacement token user device ((J), (L)), which, based on the claim language and in view of the application specification, represents a process aimed at: trading goods and services by utilizing alternative reserves (e.g., replacement tokens).
This is a combination that, under its broadest reasonable interpretation, covers agreements in form of sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity – Commercial or Legal Interactions.
Accordingly, claims 1, 12 recite an abstract idea.
[INDEPENDENT CLAIMS – Additional Elements]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the claim only amount to instructions to apply the judicial exception to a computer, or to a general link to a technological environment (see MPEP 2106.05(h); MPEP 2106.05(f)).
For example, the added elements “blockchain based transaction network,” “user devices,” “token server” and “replacement-token user device” recite computing elements at a high level of generality, generally linking the use of a judicial exception to a particular technological environment (see MPEP 2106.05(h)), or merely using a computer as a tool to perform an abstract idea (MPEP 2106.05(f)). Further, the additional elements “wherein the cache is for reducing memory latency and access time”; “wherein the existence signal is cryptographically signed by a secure element in the second user device and uniquely associated with the token”; “wherein the token server validates the cryptographic signature of the existence signal against a stored public key associated with the secure element before confirming token existence”; “wherein the replacement token includes a cryptographic link to an identifier of the token to maintain data integrity across the recovery process” as applied to computer cache, the existence signal, the token server, and the replacement token, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These additional elements of the independent claims do not preclude from carrying out the identified abstract idea trading goods and services by utilizing alternative reserves (e.g., replacement tokens) and do not serve to integrate the identified abstract idea into a practical application.
The additional steps in the independent claims, shown not bolded above, recite: providing a blockchain-based transaction network ([B]). When considered individually, they amount to nothing more than reception, transmission and/or general computation of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (adding the words “apply it” or an equivalent – MPEP 2106.05(f)), or merely uses a computer as a tool to perform the identified abstract idea.
The modifiers do not preclude from carrying out the identified abstract idea: trading goods and services by utilizing alternative reserves (e.g., replacement tokens).
Therefore, the additional elements of claim 1 (which is representative of claim 12) do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Claim 1 (which is representative of claim 12) does not include further elements that are sufficient to amount to significantly more than the judicial exception because, when the claim is reevaluated as a whole, as a combination under the considerations of Step 2B, the outcome is the same like in Step 2A.2.
Therefore, when considered as a whole and as an ordered combination, the additional elements in the claim amount to instructions to apply the abstract idea on a computer. Moreover, as noted above, there is nothing about the computing environment or the additional elements, that is significant or meaningful to the underlying abstract idea because the identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)) could have been reasonably performed when provided with the relevant data and/or information.
Therefore, it is concluded that independent claims 1, 12 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claims 2-3, 8-9, which are representative of claims 13-14, 15-16, respectively, further recite:
wherein the physical resource includes deposits of one or more of the following: gold, silver, nickel, platinum, palladium, or copper.
wherein the physical resource is owned by one or more of the following: an equity real estate investment trust ("REIT"), or a statutory trust.
wherein the first plurality of tokens is associated with equitable title to less than all of the assessment.
an occurrence of a triggering event, minting a second plurality of tokens.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements (in this instance – the plurality of resources, the physical resource, the plurality of tokens, the occurrence of a triggering event) and as such, cannot change the nature of the identified abstract idea (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 2-3, 8-9, which are representative of claims 13-14, 15-16 are deemed ineligible.
Dependent claim 4, further recites:
[A] refraining from removing the commodities from the site.
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: trading goods and services by utilizing alternative reserves (e.g., replacement tokens). The further elements in this dependent claim are comparable to reception, transmission and/or general computation of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (adding the words “apply it” or an equivalent – MPEP 2106.05(f)), or merely uses a computer as a tool to perform the identified abstract idea.
The further elements in these dependent claims are similar to the further elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 4 is deemed ineligible.
Dependent claim 5, further recites:
[A] obtaining an insurance instrument that insures the certification.
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
For example, the claim continues to recite the identified abstract idea: trading goods and services by utilizing alternative reserves (e.g., replacement tokens). The further elements in this dependent claim are comparable to reception, transmission and/or general computation of claim elements that serves merely to implement the abstract idea using computing components for performing computer functions (adding the words “apply it” or an equivalent – MPEP 2106.05(f)), or merely uses a computer as a tool to perform the identified abstract idea.
The further elements in these dependent claims are similar to the further elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Thus, it is readily apparent that the claim elements are not directed to any specific improvements of the claims.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 5 is deemed ineligible.
Dependent claim 6, further recites:
[A] deeming each portion of the assessment to have been produced,
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
Therefore, it is concluded that the limitation of claim 6 is part of the identified abstract idea, i.e., “trading alternative reserves of physical commodities.”
The further elements in these dependent claims are similar to the further elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 6 is deemed ineligible.
Dependent claim 7 further recites:
[A] wherein so deeming converts a legal title to the portion from a legal title in realty to a legal title in personality.
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
Therefore, it is concluded that the limitation of claim 7 is part of the identified abstract idea, i.e., “trading alternative reserves of physical commodities.”
The further elements in these dependent claims are similar to the further elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claim 7 is deemed ineligible.
Dependent claim 11, which is representative of claim 20, further recites:
[A] transferring the replacement token from the first replacement-token user device to a second replacement- token user device,
[B] wherein transferring the replacement token effects a transfer of the associated equitable title.
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
Therefore, it is concluded that the limitation of claim 11, which is representative of claim 20, is part of the identified abstract idea, i.e., “trading alternative reserves of physical commodities.”
The further elements in these dependent claims are similar to the further elements analyzed with respect to the independent claims and have the same relationship to the underlying abstract ideas as outlined above.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, claims 11, 20 are deemed ineligible.
Dependent claim 21 further recites:
determining an assessment of a physical resource at the location; and
generating a certification associated with the assessment;
each token is associated with a portion of the assessment;
each token encodes a value corresponding to the associated portion;
each token is a medium of exchange of the associated portion;
transferring the at least one token from the first user device to the second user device updates control of the associated portion to the second user device;
the replacement token is associated with the portion;
the replacement token encodes the value corresponding to the associated portion; and
the replacement token is the medium of exchange of the associated portion.
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
Dependent claim 21 merely elaborates on the abstract idea identified in the independent claim(s). It does not recite any new additional elements for further consideration under Step 2A2 or Step 2B and, therefore, is ineligible for the same reasons that make the independent claim(s) ineligible.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, dependent claim 21 is deemed ineligible.
Dependent claim 22 further recites:
each token is linked to physical resource information at a defined location; the blockchain-based transaction network further comprises a record of a certificated assessment of a physical resource at the location;
the record is stored on the token server;
each token is associated with a portion of the assessment;
each token encodes a value corresponding to the associated portion;
each token is a medium of exchange of the associated portion;
each token is capable of being stored on a user device;
transferring the at least one token from the first user device to the second user device
updates control of the associated portion to the second user device;
the replacement token is associated with the portion;
the replacement token encodes the value corresponding to the associated portion; and
the replacement token is a medium of exchange of the associated portion
When considered individually, these further claim elements further elaborate on the abstract idea identified in the independent claims.
Dependent claim 22 merely elaborates on the abstract idea identified in the independent claim(s). It does not recite any new additional elements for further consideration under Step 2A2 or Step 2B and, therefore, is ineligible for the same reasons that make the independent claim(s) ineligible.
Moreover, when considered as a whole, as a combination, the dependent claim elaborates on the previously identified abstract idea (trading goods and services by utilizing alternative reserves (e.g., replacement tokens)). It does not practically or significantly alter how the identified abstract idea would be performed.
Therefore, dependent claim 22 is deemed ineligible.
In addition, the claims in the instant application do not constitute significantly more also because the computing claim elements only serve to implement the abstract idea on a computing environment (see Enfish, see MPEP 2106.05(a)). For this purpose, the computing system encompasses general purpose hardware and software modules, as disclosed in the application specification in fig3-fig5 and [pages 16-19], including among others: server; user device.
When the dependent claims are considered as a whole, as a combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense, i.e. a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. Overall, the further elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more. (see MPEP 2106.05)
In sum, claims 1-9, 11-16, 20-22 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20190080392 A1 Youb; Christopher et al. METHOD FOR CREATING COMMODITY ASSETS FROM UNREFINED COMMODITY RESERVES UTILIZING BLOCKCHAIN AND DISTRIBUTED LEDGER TECHNOLOGY - A method for creating an asset-backed distributed ledger token representing a smart contract, the token being backed by a pledge of an illiquid form of a precursor or means of production of a commodity asset, comprising receiving a pledge of unrefined or pre-commodity asset, digitizing the unrefined commodity asset into fractional representations of the commodity asset using smart contracts on a distributed ledger network, and allowing account holders access to the perform transactions on the distributed ledger network to trade the fractional representations under the terms of the smart contract.
US 20190380094 A1 Wentink; Maarten Menzo et al. TOKEN WAKEUP SIGNALING - Methods, systems, and devices for wireless communications are described. A wireless device may receive, via a management frame, a set of wakeup tokens for activating a main radio of the wireless device. The wakeup tokens may be unique to the wireless device and may be transmitted over a secure connection. An access point (AP) wishing to activate a main radio (e.g., for high throughput communications) may transmit a wakeup radio (WUR) frame, including a wakeup token from the set of wakeup tokens, to a secondary radio of the wireless device. The wireless device may, upon reception of the WUR frame, activate the main radio and transmit a wakeup acknowledgement (ACK) to the AP. The AP may then communicate with the wireless device via the main radio.
US 20180350232 A1 PIETROBON; Davide et al. METHOD AND APPARATUS FOR NEXT TOKEN PREDICTION BASED ON PREVIOUSLY OBSERVED TOKENS - An approach is provided for next token prediction based on previously observed tokens. The approach involves receiving an observed time series of tokens, wherein each of the tokens represents an observed data pattern. The approach also involves adding a most recent token from the observed time series of tokens into a variable token set. The approach further involves processing a historical token set to determine a historical token sequence comprising the variable token set followed by a next token. The approach further involves recursively adding a next most recent token from the observed time series of tokens into the variable token set for processing until the next token following the variable token set in the determined historical token sequence is unique or meets a target number of possible predictions. The approach further involves presenting the next token as a predicted next token of the observed time series of tokens.
US 20230069098 A1 Berry; Anna Kristen Pingel et al. APPARATUS AND PASSWORDS FOR PROVIDING DOUBLE-SIDED ESTATE PASSWORD AUTHENTICATION VIA PHYSICAL TOKENS AND A DISTRIBUTED LEDGER - Systems and methods for providing a double-sided estate authentication via a distributed ledger are set forth herein. A method may include periodically generating, for display by a first physical token, a first random password. The generating may be in response to periodic receipt of a biometric signal from a first human. The method may also include periodically generating, for display by a second physical token, a second random password. The method further includes receiving and storing the first random password at a distributed ledger and receiving and storing the second random password at the distributed ledger. Following a cessation of the periodic receipt of the biometric signal, the first physical token may stop generating the first random password, and the second physical token may start generating the first random password. The first random password and the second random password together may form a dual-knowledge password.
US 20220164251 A1 He; Yuan et al. APPARATUS WITH LATCH CORRECTION MECHANISM AND METHODS FOR OPERATING THE SAME - Methods, apparatuses, and systems related to an apparatus are described. The apparatus may include (1) a fuse array configured to provide non-volatile storage of fuse data and (2) local latches configured to store the fuse data during runtime of the apparatus. The apparatus may further include an error processing circuit configured to determine error detection-correction data for the fuse data. The apparatus may subsequently broadcast data stored in the local latches to the error processing circuit to determine, using the error detection-correction data, whether the locally latched data has been corrupted. The error processing circuit may generate corrected data to replace the locally latched data based on determining corruption in the locally latched data.
US 20020180271 A1 Taniguchi, Yoshikazu et al. Wire harness system - A wire harness system is constructed by node connectors including multiplex communication controllers. A token reception controller for receiving a token through a timing bit set that is issued for each predetermined time period is provided for the multiplex communication controllers of the node connectors. A controller including a CPU is provided only for a specific node connector, and the multiplex communication controllers permit multiple node connectors to use, in common, data that is stored in this controller.
US 20200117914 A1 SELL; Martin et al. Algorithm Triggered Sensor Data Acquisition - A computer system comprising a sensor system and a processor is provided, wherein the sampling rate of the sensor system is not predetermined, and instead depends on the acquisition rate of the algorithm acquiring the data stream provided by the sensor system. A corresponding method is also provided.
US 20200104062 A1 CHO; Sung Yeob MEMORY SYSTEM AND OPERATING METHOD THEREOF - A memory system includes a plurality of memory devices storing data, a processor generating commands at a request of a host, and a flash interface layer transferring the commands to the plurality of memory devices based on power consumptions of the plurality of memory devices, and delaying execution or transfer of commands one or more of the plurality of memory devices when a total peak power of the plurality of memory devices is expected to exceed a limit level.
US 20210255862 A1 Volkovs; Maksims et al. Initialization of Parameters for Machine-Learned Transformer Neural Network Architectures - An online system trains a transformer architecture by an initialization method which allows the transformer architecture to be trained without normalization layers of learning rate warmup, resulting in significant improvements in computational efficiency for transformer architectures. Specifically, an attention block included in an encoder or a decoder of the transformer architecture generates the set of attention representations by applying a key matrix to the input key, a query matrix to the input query, a value matrix to the input value to generate an output, and applying an output matrix to the output to generate the set of attention representations. The initialization method may be performed by scaling the parameters of the value matrix and the output matrix with a factor that is inverse to a number of the set of encoders or a number of the set of decoders.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions.
Examiner respectfully disagrees.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “These limitations define a specific technical mechanism for cryptographic validation and automated token recovery that cannot be performed as a mental process or through conventional commercial interactions. The claims are directed to a specific technical solution-cryptographically secured automated token recovery in distributed networks that solves technical problems of data persistence, security, and network reliability in distributed systems.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Based on the claim language (“minting a first plurality of tokens, wherein each token is a digitally represented unit of data; storing each token on a user device; transferring at least one token from a first user device to a second user device, minting a replacement token corresponding with the token, storing the replacement token on a first replacement-token user device.) and in light of the application description (“… trading alternative reserves”), the independent claims are undoubtedly directed to trading goods and services by utilizing alternative reserves (e.g., replacement tokens). This is a combination that, under its broadest reasonable interpretation, covers agreements in form of sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity – Commercial or Legal Interactions.
Thus, the rejection is proper and has been maintained.
Applicant submits “Even if the claims were found to recite an abstract idea (which Applicant does not concede), under Step 2A, Prong 2, the amended claims integrate any such idea into a practical application by providing a specific technical solution to a technical problem.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
A “specific technical solution to a technical problem” is not an eligibility criterion (see MPEP 2106.04-07).
Thus, the rejection is proper and has been maintained.
Applicant submits “A claim reciting a judicial exception is not directed to the judicial exception if it improves the functioning of a computer or improves another technology or technical field.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It appears that applicant alludes at the provisions of MPEP 2106.05(a).
First, MPEP 2106.05(a) discloses that the additional claim elements bring about “improvements to the functioning of a computer, or any other technology or technical field.” Titling and trading alternative reserves is a pure BUSINESS problem, rather than a technology or technical field problem. As such, the limitations which have not been deemed as being part of the identified abstract idea, i.e., the “additional elements,” do not integrate the identified abstract idea into a practical application, as disclosed by MPEP 2106.05(a).
Second, MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first 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 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 .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “Under Step 2B of the Alice/Mayo framework, Claim 1 clearly provides multiple improvements to functionality over existing methods for managing digitally represented units of data that amount to significantly more than any alleged abstract idea.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant office action concludes at Step 2B:
Per Step 2B. Claim 1 (which is representative of claim 12) does not include further elements that are sufficient to amount to significantly more than the judicial exception because, when the claim is reevaluated as a whole, as a combination under the considerations of Step 2B, the outcome is the same like in Step 2A.2.
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 112(b).
The rejection is withdrawn, as a result of the amendments.
Examiner has reviewed and considered all of Applicant’s remarks. The rejection is maintained, necessitated by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Conclusion
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 extension fee 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.
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/Radu Andrei/
Primary Examiner, AU 3698