DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This is a nonfinal rejection in response to amendments/remarks filed on 11/24/2025.
Claims 1, 3-6, 8-10, and 15-26 are pending.
Claims 1, 3, 16 and 17 are amended.
Claims 19-26 are new.
Claims 2, 7, and 11-14 remain cancelled.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present office action, along with a certificate of availability of the certified patent document numbered JP 2021-016803 with an earliest date of availability of February 5, 2021. Therefore, the claims have the earliest effective filing date of Feb 05, 2021.
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, 3-6, 8-10, 15-18, and 19-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a Process, Machine, Manufacture, or Composition of Matter
The independent claims 1, 16, and 17 are treated as the representative claims for the 2-step analysis. The dependent claims will be reanalyzed after the initial 2-step analysis on the independent claims. The representative claims are directed to:
Claim 1: A system for tracking exchange of energy, the system comprising: an apparatus including: first circuitry; and a memory
Claim 16: A method for tracking exchange of energy in a non-duplicative certification process,
Claim 17: A non-transitory recording medium which, when executed by one or more processors, cause the processors to perform a method for tracking exchange of energy in anon-duplicative certification process.
The claims above are directed to at least one of the potentially eligible subject matter categories, “process, machine, or manufacture” and are therefore to be further analyzed under step 2.
Step 2a Prong 1: Is the claim directed to a Judicial Exception(A Law of Nature, a Natural Phenomenon (Product of Nature), or An Abstract Idea?)
Claim 1, as a representative claim also applicable to claims 16 and 17 which are substantially related to claim 1, recites the following, wherein the abstract idea has been bolded and the additional elements are italicized:
A system for tracking exchange of energy, the system comprising: an apparatus including:
first circuitry: and
a memory that stores energy information generated and recorded in a decentralized ledger maintained by a plurality of nodes in a blockchain network, the energy information indicating a production method used for producing specific energy and an issuance status of a certificate that certifies the production method for the specific energy; and
an information processing apparatus including second circuitry, wherein
the second circuitry is configured to display on a display a screen for input of identification information of a user and period information of trading, and authenticate the user with the identification information,
the first circuitry is configured to execute a non-duplicative certification process by performing operations including:
receiving, from the information processing apparatus, issuance request information requesting issuance of the certificate for the production method of energy consumed by the user, the issuance request information including the identification information and the period information of trade;
reading, from the memory, the energy information traded during the period indicated by the period information and recorded in the decentralized ledger, the energy information corresponding to the energy consumed by the user in the period;
determining, according to the read energy information, the issuance status of the certificate for the production method of the energy consumed by the user;
based on a determination that the issuance status of the certificate indicates unissued as recorded in the energy information within the decentralized ledger:
instructing a new, cryptographically secured transaction reflecting an updated issuance status to be added to the decentralized ledger to update the issuance status in the energy information corresponding to the energy consumed by the user;
generating a production method certificate certifying the production method of the energy consumed by the user, the production method certificate including a cryptographically generated transaction identification image configured to enable verification of the certificate against the new, cryptographically secured transaction added to the decentralized ledger; and
transmitting the generated production method certificate to the information processing apparatus; and
based on a determination that the issuance status of the certificate indicates issued as recorded in the energy information within the decentralized ledger, transmitting, to the information processing apparatus, an issuance completion notification indicating that the certificate has been previously issued, without generating a duplicative certificate, and
the second circuitry is further configured to output the received production method certificate or the issuance completion notification on the display or via a printer of the information processing apparatus.
When evaluating the bolded limitations of the claims under the broadest reasonable interpretation in light of the specification, it is clear that representative claims 1, 16, and 17 recite at least one abstract idea category under “certain methods of organizing human activity.” This abstract idea grouping found in MPEP 2106.04(a)(2)(II) includes concepts related to “fundamental economic principles or practices,” “commercial or legal interactions,” and “managing personal behavior or relationships or interactions between people.” The present invention falls under “commercial or legal interactions” which include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. The claim elements in bold recite steps as part of the process of facilitating the tracking and certification of energy credits. The steps of storing energy information in a ledger maintained by nodes in a network, including the production method and issuance status merely recite the type of data being stored and how it is being stored. The steps of the non-duplicative certification process, including receiving an issuance request, reading the corresponding energy information, determining an issuance status, and instructing a secured transaction updating the issuance status to issued upon determining an “unissued” status merely recite rule based data interactions towards performing the abstract idea. The steps of generating a production method certificate, including a generated transaction identification image to enable verification, transmitting the certificate, and outputting the received production method are merely data output/display steps intended to allows humans to verify the certificate. This is also part of the abstract idea because it merely facilitates the commercial or legal interaction with the end result being a display of data to a user. A “generated transaction identification image” to enable verification merely indicates a QR code, as seen in the present specification Fig. 24, which is also merely part of the abstract idea as it is still a data output/display in a particular format. The steps based on a determination that the status is “issued,” transmitting an issuance completion notification without generating a duplicative certificate, and outputting the issuance completion notification are also merely data processing and data output steps towards facilitating the commercial or legal interaction. Merely indicating that a duplicative certificate is to not be generated is recited so broadly that it encompasses any method that avoids generating a duplicative certificate, not a specific algorithm or set of steps that provides a technical improvement, which will be further discussed below. Therefore, in short, each of the bolded elements represents data collection, processing, and output steps towards performing the “commercial or legal interaction” of certifying energy credits, therefore the claims recite an abstract idea under “certain methods of organizing human activity.
Even when considering the amended limitations, the amended limitations are no more than broad interactions with an individual, in which the interactions consist of basic data collection steps such as, “input of identification information of a user and period information of trading, and authenticate the user with the identification information,” “the issuance request information including the identification information and the period information of trade;” “the energy information traded during the period indicated by the period information” and “the energy information corresponding to the energy consumed by the user in the period;” Therefore, the claims persist in reciting at least one abstract idea and are to be further analyzed under Step 2A Prong 2.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claims 1, 16, and 17 recite the following additional elements:
(a)- a memory in claims 1, 16, & 17
(b)- a plurality of nodes in a blockchain network in claims 1, 16, & 17
(c) cryptographically secured transaction in claims 1, 16, & 17
(d) energy information generated and recorded in a decentralized ledger in claims 1, 16, & 17
(e) cryptographically generated transaction identification image in claims 1, 16, & 17
(f)- an Information processing apparatus in claims 1, 16, & 17
(g)- circuitry in claims 1, 16, & 17
(h)- A non-transitory recording medium in claim 17
(i)- processors in claim 17
(j) on a display in claim 1, 16, & 17
(k) a printer in claim 1, 16, & 17
The additional elements are no more than a recitation of the words “apply it” (or an equivalent) or mere instructions to implement an abstract idea or other exception on a generic computing device. In this case, the abstract idea of energy credit tracking and non-duplicative certification are merely instructed to be performed on generic computers or generic computing components a memory, a plurality of nodes in a blockchain network, information processing apparatus, circuitry, a non-transitory recording medium, processors. In view of Fig. 1, the plurality of nodes are merely generic distributed computers, which are interacting with generic computers performing the abstract idea(certificate issuing server 6 , intermediary server 5 , image processing apparatus 7, etc). There is no improved particular computing infrastructure recited in the claims, or in view of the specification, even when considered the additional elements individually or as a whole. Furthermore, devices such as a display and a printer are merely additional elements operating in their ordinary capacity to perform functions they are known to perform. For example, the display is merely outputting visual data, and the printer is merely outputting physical data.
Furthermore, some additional elements are also examples of generally linking the abstract idea to a particular technological environment or field of use as outlined in MPEP 2106.05(h). For example, the claims merely restrict the plurality of nodes to a blockchain network, without meaningfully limiting its use on the claims. Additionally, limiting the transaction to be cryptographically secured, and the transaction identification image to be cryptographically generated without specifically reciting how cryptography is used to secure or generate, is merely a general link to cryptography without meaningfully limiting its use on the claims. Finally, merely limiting the ledger that the energy information generated and recorded is stored on to be a “decentralized ledger” is also a general link a particular technological environment since it merely indicates that data is stored on a decentralized ledger without meaningfully limiting its use. Since generic blockchain/cryptography inherently performs all of the functional limitations stated above, even when considered individually or considered as a combination, nothing in the claims integrates the abstract idea into a practically application. Therefore, the claims are directed to an abstract idea.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Claims 1, 16, and 17 recite the following additional elements:
(a)- a memory in claims 1, 16, & 17
(b)- a plurality of nodes in a blockchain network in claims 1, 16, & 17
(c) cryptographically secured transaction in claims 1, 16, & 17
(d) energy information generated and recorded in a decentralized ledger in claims 1, 16, & 17
(e) cryptographically generated transaction identification image in claims 1, 16, & 17
(f)- an Information processing apparatus in claims 1, 16, & 17
(g)- circuitry in claims 1, 16, & 17
(h)- A non-transitory recording medium in claim 17
(i)- processors in claim 17
(j) on a display in claim 1, 16, & 17
(k) a printer in claim 1, 16, & 17
These additional elements have not been found to include significantly more for the same reasons set forth in the Prong 2 rejection, specifically because the additional elements are generic computing devices being used to carry out the abstract idea, as outlined in MPEP 2106.05(f). Furthermore, no improvements to these computing devices have been purported since they are generic computing components instructed to perform the abstract idea or are generic devices operating in their ordinary capacity. In addition, the abstract idea is generally applied to the technological environment of blockchain as outlined in MPEP 2106.05(h). No improvement in field of blockchain have been purported as well, therefore in accordance with MPEP 2106.05(a), the additional elements, whether considered individually or as a combination, do not provide significantly more.
Dependent Claims 3-6, 8-10, 15, and 18-26 have been analyzed, both individually and in combination with the claims they depend on, under the full 2-step eligibility analysis.
Claims 3-6 merely further limit the abstract idea. For example, Claim 3 merely specifies the “energy information” and “issuance request information,” to include identification information and also updates the issuance status with the specified information. Claim 4 merely further specifies what is included within “issuance request information,” and updates the database with this information. Claim 5 merely provides examples of energy information indicating the “production method” to include categories such as renewable, fossil fuel, and nuclear. Claim 6 merely provides more subcategories for “renewable sources.” These steps still fall within the scope of the abstract idea of “tracking the exchange of energy by storing information, receiving a request for an energy certificate, and determining whether to provide the certificate based on the issuance status” because even when substituting the further specified limitations into the independent claim, the claims are still directed to facilitating energy tracking and certification. It is more of the same abstract because the additional steps are simply an inquiry of the data, specifying a type of data, updating the data, or outputting data. When combined with the claims they depend on, they still fall under the abstract idea subcategory of “commercial or legal interactions” as outlined in MPEP 2106.04(a)(2)(II). The additional elements, circuitry and information processing apparatus are repeated from claim 1 and are still mere instructions to perform the abstract idea on generic computing devices, because inquiring and outputting information are still well within the ordinary capacity of circuitries and information processing apparatuses. Therefore claims 3-6 are directed to an abstract idea without a practical application or significantly more.
Claim 8 further limits “certificate data” to include an identification image which identifies a transaction of energy produced by a certain method. This is still an abstract idea under “commercial or legal interactions” as outlined in MPEP 2106.04(a)(2)(II)(B) as it is similar to a receipt or a confirmation of the certificate that has been granted. Furthermore, an “identification image” could be interpreted as something like a QR code, according to the specification page 37 line 22 which states, “the transaction identification image is, for example, a QR code as illustrated in Fig. 24.” For purposes of compact prosecution, the identification image, when interpreted as a QR code, is simply an additional element that is a general link to the technological field of QR codes. It simply uses QR code in the very nature that they are meant to be used, which is to provide a link to certain data outputs, therefore it is not meaningfully limiting the claims. Please read MPEP 2106.05(h) for more information on general links to technology. Since this is the only additional element, and no additional elements have been repeated, claim 8 has not been integrated into a practical application nor does it provide significantly more.
Claims 9 and 10 merely further limit the abstract idea by specifying the data display step. Claim 9 specifies that the apparatus prints the image, and claim 10 specifies that the data is displayed. These steps are simply outputting the data from the claims reciting an abstract idea, therefore it is more of the same abstract idea of “tracking the exchange of energy by storing information, receiving a request for an energy certificate, and determining whether to provide the certificate based on the issuance status.” The additional element “information processing apparatus” is repeated from claim 1. As supported in the specification page 9 line 26 , this apparatus can be/have a printer “such as an MFP (Multifunction Peripheral/Printer/Product), a facsimile machine, a scanner, or a printer.” Therefore, the apparatus including a printer would be performing an ordinary function of a printer therefore it is still merely instructions to perform the abstract idea on electronic devices in their ordinary capacity. The same can be said for claim 10, since generic displays are capable of displaying the information and no improvements have been made to any of the devices. Therefore claims 9, and 10 are directed to an abstract idea without integration into a practical application or significantly more.
Claim 15 merely further limits the abstract idea by specifying energy information as asset information, with the asset being the energy. Whether or not energy is classified as an asset does not change its identification of an abstract idea under “commercial or legal interactions” as outlined in MPEP 2106.04(a)(2)(II)(B). Furthermore, no additional elements have been included therefore the claims have not been integrated into a practical application nor provide significantly more.
Claim 18 merely further limits the abstract idea by broadly stating that the energy information is generated through transaction processing. When considered in the broadest reasonable interpretation in its plain language, without reading any elements from the specification directly into the claims, “transaction processing” is merely a commercial or legal interaction. Therefore, the claim is more of the same abstract idea. Furthermore, no additional elements have been included therefore the claims have not been integrated into a practical application nor provide significantly more.
Claim 19 adds the additional elements of a smart meter, which measures the specific energy produced by a power generator. This is more of the same abstract idea because it is merely a collection and storage of data, whilst performing the same abstract idea under “commercial or legal interactions.” The additional elements of a smart meter is no more than a device used in its ordinary capacity to perform an economic task, which falls under “apply it” in MPEP 2106.05(f). Measuring the specific energy produced by a power generator is merely the information and does not positively recite or require the power generator. Therefore, even when considered individually or in combination with the previously stated additional elements, the additional elements still fail to integrate the abstract idea into a practical application. Even viewed as a whole, nothing in the claims meaningfully limits the abstract idea such that it is significantly more. Therefore, claim 19 remains patent ineligible.
Similarly, claim 20 adds the additional element “intermediary server” but this more of the same abstract idea along with a device used in its ordinary capacity to perform the economic task of intermediating transactions of energy between a supplier of the energy and the user of the energy. Recordation of transactions fall under “commercial or legal interactions” including contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Even when considering the additional element “intermediary server” it is no more than an “apply it” level element, and even in combination with the previously stated additional elements, the additional elements still fail to integrate the abstract idea into a practical application. Even viewed as a whole, nothing in the claims meaningfully limits the abstract idea such that it is significantly more. Therefore, claim 20 remains patent ineligible. These statements also apply to the “certificate issuing server” which is also more of the same abstract idea but with an “apply it” level additional element, therefore claim 21 is also patent ineligible for the same reasons explained for claim 20.
Claim 22 recites more of the same abstract idea as it merely requires a certification type corresponding to the issuing institution and generating a certificate based on a form associated with the certificate type. This still falls under business practices within “certain methods of organizing human activity.” In claim 22 there are no further additional elements to assess therefore, the evaluations under Step 2A Prong 2 and Step 2B still result in an indication that the claims are directed to an abstract idea without integration into a practical application or significantly more. Therefore, Claim 22 is patent ineligible.
Claim 23 merely limits the cryptographically generated transaction identification image is a two-dimensional code. This is more of the same abstract idea because it merely indicates, broadly, the appearance of the image. However, this is still no more than a general link to cryptography because it is not clear how cryptography is involved in generating the specific image, therefore, its use on the abstract idea is not meaningfully limited. Even in combination with the previously stated additional elements, the additional elements still fail to integrate the abstract idea into a practical application. Even viewed as a whole, nothing in the claims meaningfully limits the abstract idea such that it is significantly more. Therefore, claim 23 remains patent ineligible.
Claim 24 adds further additional elements reciting that the information processing apparatus is a “multifunctional peripheral (MFP) comprising the display and the printer.” However, the abstract idea remains unchanged and is still recited by virtue of its dependency on claim. Furthermore, the additional elements are still “apply it” level because they merely describe a generic computer in which the abstract idea is applied on. Even in combination with the previously stated additional elements, the additional elements still fail to integrate the abstract idea into a practical application. Even viewed as a whole, nothing in the claims meaningfully limits the abstract idea such that it is significantly more. Therefore, claim 24 remains patent ineligible.
Claim 25 recites more of the same abstract idea as it includes steps reciting the business process of changing the owner of the energy from a supplier to a user. This is more of the same abstract idea as it is a business interaction under “commercial or legal interactions.” Furthermore, there are no further additional elements to assess therefore, the evaluations under Step 2A Prong 2 and Step 2B still result in an indication that the claims are directed to an abstract idea without integration into a practical application or significantly more. Therefore, Claim 25 is patent ineligible.
Claim 26 further includes more information under “energy information” including the transaction valid date and status indicating whether the energy information has been transferred. Even with such information, the claims recite more of the same abstract idea since this information is still exchanged within a “commercial or legal interaction.” Furthermore, there are no further additional elements to assess therefore, the evaluations under Step 2A Prong 2 and Step 2B still result in an indication that the claims are directed to an abstract idea without integration into a practical application or significantly more. Therefore, Claim 26 is patent ineligible.
Subject Matter Free Of Prior Art
Claims 1, 3-6, 8-10, and 15-26 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action. The reasons for indicating allowable subject matter are that, in view of the amended claims, the prior art of record previously relied upon, including Polizzotto and Naumov, do not disclose or would have rendered obvious each and every claim limitation:
A system for tracking exchange of energy, the system comprising: an apparatus including:
first circuitry: and
a memory that stores energy information generated and recorded in a decentralized ledger maintained by a plurality of nodes in a blockchain network, the energy information indicating a production method used for producing specific energy and an issuance status of a certificate that certifies the production method for the specific energy; and
an information processing apparatus including second circuitry, wherein
the second circuitry is configured to display on a display a screen for input of identification information of a user and period information of trading, and authenticate the user with the identification information,
the first circuitry is configured to execute a non-duplicative certification process by performing operations including:
receiving, from the information processing apparatus, issuance request information requesting issuance of the certificate for the production method of energy consumed by the user, the issuance request information including the identification information and the period information of trade;
reading, from the memory, the energy information traded during the period indicated by the period information and recorded in the decentralized ledger, the energy information corresponding to the energy consumed by the user in the period;
determining, according to the read energy information, the issuance status of the certificate for the production method of the energy consumed by the user;
based on a determination that the issuance status of the certificate indicates unissued as recorded in the energy information within the decentralized ledger:
instructing a new, cryptographically secured transaction reflecting an updated issuance status to be added to the decentralized ledger to update the issuance status in the energy information corresponding to the energy consumed by the user;
generating a production method certificate certifying the production method of the energy consumed by the user, the production method certificate including a cryptographically generated transaction identification image configured to enable verification of the certificate against the new, cryptographically secured transaction added to the decentralized ledger; and
transmitting the generated production method certificate to the information processing apparatus; and
based on a determination that the issuance status of the certificate indicates issued as recorded in the energy information within the decentralized ledger, transmitting, to the information processing apparatus, an issuance completion notification indicating that the certificate has been previously issued, without generating a duplicative certificate, and
the second circuitry is further configured to output the received production method certificate or the issuance completion notification on the display or via a printer of the information processing apparatus.
More specifically, while the examiner stands by the previous rejection in view of Polizotto and Naumov of the previous claim 1, the amended claims recite a specified set of steps that require such detail in a particular order that the prior art of record has not taught or suggested. Specifically, the steps of “instructing a new, cryptographically secured transaction reflecting an updated issuance status to be added to the decentralized ledger to update the issuance status in the energy information corresponding to the energy consumed by the user; generating a production method certificate certifying the production method of the energy consumed by the user, the production method certificate including a cryptographically generated transaction identification image configured to enable verification of the certificate against the new, cryptographically secured transaction added to the decentralized ledger; and transmitting the generated production method certificate to the information processing apparatus; and based on a determination that the issuance status of the certificate indicates issued as recorded in the energy information within the decentralized ledger, transmitting, to the information processing apparatus, an issuance completion notification indicating that the certificate has been previously issued, without generating a duplicative certificate, and the second circuitry is configured to output the received production method certificate or the issuance completion notification on a display or a printer of the information processing apparatus” are not taught in such detail in the prior art.
Neither Naumov, nor the previously cited prior art of record, both relied upon and not relied upon, nor the art yielded in an updated search remedy the deficiencies of Polizzotto. Nor do the prior art of record teach or suggest each and every limitation of representative claim 1 in an obvious combination.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered. Objections to claims 7, 12 and 14 are withdrawn due to the cancellation of the claims.
Arguments over rejections under 35 USC 101 are fully considered but are not persuasive for the following reasons. The applicant asserts that “following the precedential Appeals Review Panel decision in Ex Parte Desjardins, Appeal No. 2024-000567 (Sept. 26, 2025), amended Claim 1 recites patent-eligible subject matter that reflects technical improvements to distributed certification systems. However, the examiner respectfully disagrees. The examiner acknowledges pages 11-12 of the remarks, which highlight the main points of the Desjardins decision, which reiterated that Claims reflecting technical improvements are patent-eligible, claims must not be evaluated at too high a level of Generality, and Sections 102,103, and 112 Are the Proper Examination Tools. The applicant’s argument’s in section titled, “II. Step 2A Prong 1: Claim is not directed to an abstract idea,” are fully considered in view of the Desjardins decision. The applicant alleges that the present Office action improperly equates any energy-related certification with unpatentable “commercial interactions.” However, this argument is not persuasive because the present office action does not “evaluate the claims at too high a level of generality without adequate explanation,” in fact, the office action presents a detailed explanation on why each and every limitation in bold recite steps towards performing a commercial or legal interaction. This differs from the Desjardins case which was solely directed to an improvement to training a machine learning model, which recited an improvement to machine learning technology that was significantly more than the abstract idea (mathematical concepts). In the Memo titled “Advanced notice of change to the MPEP in light of Ex Parte Desjardins,” the following examples are appended to the list of examples that may show an improvement in computer functionality,
“xiii. An improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks; Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential); and
xiv. Improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams; Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential)”
In view of applicant’s arguments regarding “improvements to distributed certification technology” in pages 12-13, the applicant asserts that the specification identifies a unique problem of “preventing duplicate certificate issuance while maintaining verifiable, tamper-resistant records across distributed nodes.” The applicant presents the following arguments as technical improvements, (a) distributed ledger state verification, (b) Conditional two-path processing based on distributed state, and (c) Cryptographic verification linkage. In response to (a), the applicant alleges that the improvement is reflected in the claim limitations “determining, according to the read energy information, the issuance status of the certificate” where the energy information is “recorded in the decentralized ledger.” However, this is argument is not persuasive because in view of the broadest reasonable interpretation of the limitation in view of the scope, these steps merely require the determination of a status based energy information recorded in a blockchain ledger. This is a mere indication of a particular type or source for the data, wherein the source of data is merely a technical field in which the abstract idea is being applied (blockchain technology). As stated in the rejection, this is a general link because it fails to meaningfully limit the use of blockchain technology on the claims, and it does not provide an improvement to blockchain technology or to any other technological environment or field of use. In response to the applicant’s arguments on (b), the applicant’s arguments are not persuasive because the two-path conditional processing is recited a high level of generality such that it is no more than rule-based data processing steps. As stated in the rejection above, the steps of instructing a cryptographically secured transaction to update ledger is broad enough to encompass any use of generic blockchain and cryptography. Generating and transmitting a certificate enabling verification against the ledger transaction is merely a step of “commercial or legal interactions” recited at a high-level of generality such that it is no more than a display of the certification information. Furthermore, Path 2 (issued), merely transmits issuance completion notification “without generating a duplicative certificate” however the steps do not provide a new technological method of avoiding duplication, as it merely claims the outcome of avoiding duplication in a rule-based manner. The examiner notes that MPEP 2106.05(a)(2)(II)(C) states that certain rules or instructions which fall under managing personal behavior, interactions, or relationships between individuals are merely a recitation of an abstract idea. In regards to the “cryptographically generated transaction identification image” which is argued in both (b), and (c), the applicant argues that the claim is not directed to an abstract certification, but rather a specific technical protocol for coordinating certification generation with distributed ledger state management to prevent duplication while maintaining cryptographic verifiability. However, this argument is not persuasive because the claims given their broadest reasonable interpretation do not limit how the “cryptographically generated transaction identification image” has been generated, and is merely recited to broadly “enable verification of the certificate against the new, cryptographically secured transaction...” Therefore, the fact that the image is “cryptographically generated” is no more than a general link to the particular technological environment of “cryptography.” The fact that the image enables verification is recited broadly such that it includes instructions to an individual to manually compare the image to the transaction in the record. Therefore, the applicant’s argument that the claim recites a specific technical protocol for coordinate certificate generation with distributed ledger state management to prevent duplication while maintaining cryptographic verifiability is not persuasive, because even when considering the combination of additional elements, the integration of blockchain and cryptographic technology is not recited with enough specificity to meaningfully limit the claims such that they are significantly more than the abstract idea. In response to the applicant’s comparison to Enfish, the applicant’s argument that like Enfish’s self-referential table was not merely “storing data” in the abstract, Claim 1 is not merely “certifying” in the abstract, the examiner respectfully disagrees. Enfish recited a specific type of data structure designed to improve the way a computer stores and retrieves data in memory, however, the present claims merely generally link generic blockchain and cryptographic features to the abstract idea without meaningfully limiting the use of such fields. Unlike Enfish, there is no improved data structure improving the way a computer stores and retrieves data, since the recited abstract steps are all capable within the normal functions of a generic computer.
In response to applicant’s arguments under “C. The claim addresses a computer-centric problem,” the examiner disagrees that the prevention of duplicate certificate issuance in a distributed system with multiple nodes is a computer-centric problem. The applicant’s argument that “preventing duplicate certificate issuance while maintaining distributed state consistency is particular to distributed computing systems” is not persuasive for two reasons. Firstly, because duplicate certificate issuance is an problem in non-technological environments as well, for example, the issue of “double-dipping” in regards to tax energy credits is a problem that persists in manual accounting systems as well. Two accountants recording energy credits simultaneously may incidentally double count the same instance, therefore, the problem itself is not “particular to distributed computing systems.”
Secondly, assuming arguendo that the problem is “computer-centric” as alleged by the applicant, the claims do not implement an improvement to computer functionality, or any technological environment or field (cryptography, blockchain) in order to provide the solution. Therefore, the applicant’s arguments are not persuasive.
In regards to the applicant’s arguments under III. Step 2A Prong 2, the applicant alleges that Claim 1 recites specific coordinate operations that improve how distributed certification systems function. However, the examiner respectfully disagrees. The applicant argues that claim 1 requires determining issuance status from the decentralized ledger, preventing duplicate certificate generation by ensuring all certification operations check and update consistent distributed state. The applicant further argues that such a protocol prevents race conditions where multiple concurrent requests could result in duplicate certificates. However, the examiner notes that the “protocol” itself is merely a business decision of updating the information before transmitting a certificate. Therefore, even if there were an improvement, it would be an improvement to the abstract idea and not to computer functionality or a technological environment. MPEP 2106.05(a) states, “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology.” Therefore at the level of generality in which the claims are recited, the claims are, at best, an improvement to a business practice merely implemented on generic computers, or merely being applied to a particular technological environment (blockchain or cryptography). Furthermore, the applicant repeats the argument regarding cryptographic verification linkage, which remains unpersuasive for the same reasons stated previously. Specifically, the claims given their BRI do not limit how the “cryptographically generated transaction identification image” has been generated, and is merely recited to broadly “enable verification of the certificate against the new, cryptographically secured transaction...” Therefore, the fact that the image is “cryptographically generated” is no more than a general link to the particular technological environment of “cryptography.” The fact that the image enables verification is recited broadly such that it includes instructions to an individual to manually compare the image to the transaction in the record.
The applicant’s arguments regarding “B. The Office Action’s “generic components” analysis lacks adequate explanation” center around the assertion that “no explanation for the specific coordination of distributed ledger state querying, condition certificate generation based on ledger state, atomic state updates synchronized with certificate issuance, and cryptographic verification linking certificates to distributed ledgers constitutes merely “generic” blockchain use.” However, the examiner reiterates that querying a ledger, generating a certificate based on ledger state, updating the ledger, and linking certificates to distributed ledgers are still part of the abstract idea because they recite data operations tied to the commercial or legal interactions. All of the steps are recited broadly enough to include mere rule-based interactions or instructions to an individual to perform the steps. Therefore, other than including the words “cryptographic,” or “cryptographically,” or “decentralized” nothing in the claims meaningfully limits the use of cryptography or blockchain technology (distributed ledgers) such that they recite significantly more than the abstract idea. Therefore, the applicant’s arguments are not persuasive.
In view of the applicant’s arguments under C. The Claims Are Not Merely Field-of-Use Limitations, the applicant asserts that “distributed ledger and cryptographic elements are not mere tools for performing abstract certification, but rather they are the mechanism by which the technical improvement is achieved.” However, this argument is still not persuasive for the same reasons above, most importantly that blockchain and cryptography are merely implemented in a manner than implements their generic functions in order to carry out the abstract idea. No improvement to the technical fields themselves would be apparent to a person of ordinary skill in the art as reflected in the present scope of the claims. Even when evaluating the additional elements in combination, the examiner does not find outcome of the MPEP 2106.05(a) evaluation along with overlapping MPEP 2106.05(f), and MPEP 2106.05(h) favorable towards patentability. The claims are not recited with enough specificity to be significantly more than a generic implementation of blockchain technology and cryptography on a generic computer in order to carry out the abstract idea. Therefore, the applicant’s arguments that the two-path processing based on ledger state, atomic state updates, and cryptographic verification linkage are all integral components of the improved certification protocol is not persuasive even viewing the claim as a whole.
In view of the applicant’s arguments in IV. Step 2B (Significantly more), the applicant asserts that the absence of prior art indicates non-conventional subject matter. However, in line with the MPEP 2106.05(I), “As made clear by the courts, 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... Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).” Therefore, the applicant’s argument is neither persuasive nor relevant. Furthermore, in response to B. The Claimed Coordination is Non-Conventional, and C. The examiner has not provided factual basis for “Well-Understood, Routine, Conventional” the applicant’s arguments are not persuasive because the rejection above does not rely on assertion or an indication regarding the “well-understood, routine, or conventional” nature of the claims. No burden of prima facie evidence or factual support is required because contrary to the applicant’s assertions, the examiner has not asserted that any portion of the claims recites “well-understood, routine, or conventional” activity.
Regarding section V. Response to specific arguments in the office action, the applicant asserts that A. The “apply it” characterization is incorrect, B. The Claims Recite more Than Generic Blockchain Use, C. The Transaction Identification Image Provides Technical Functionality. In response to A., the applicant repeats the same Enfish related argument which has already been addressed above, specifically that the claims do not necessarily recite a computer-centric solution to a computer-centric solution, therefore A. is not persuasive. In response to B, the applicant’s argument is not persuasive because the claims do not specify an improvement to blockchain than enables/improves the success of preventing duplicate certificate issuance but merely recites a business decision protocol in which the sequence of events avoids duplication (an improvement to an abstract idea), and merely applies this on blockchain technology, cryptography, and a generic computer. Finally, C. is not persuasive because it is merely an output of data, without specifically limiting how cryptography is used to generate the image. It is recited with such generality that is no more than a general link to cryptography, without meaningfully limiting its use on the abstract idea.
Therefore, in summary, the applicant’s arguments have been addressed and still do not favor eligibility. Therefore, the rejection of claims under 35 U.S.C. 101 is upheld, and the claims remain patent-ineligible under 35 U.S.C. 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Berbach et al. (US 20220414772 A1) discloses a renewable energy certificate generating, verifying, and issuing system but does not recite a particular protocol ensuring non-duplication of the certificate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICO LAUREN PADUA whose telephone number is (703)756-1978. The examiner can normally be reached Mon to Fri: 8:30 to 5:00pm.
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, Jessica Lemieux can be reached at (571) 270-3445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICO L PADUA/Junior Patent Examiner, Art Unit 3626
/SANGEETA BAHL/Primary Examiner, Art Unit 3626