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 .
RCE Acknowledgement
Applicant’s Request for Continued Examination (RCE) dated 02/02/2026 under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office Action has been withdrawn pursuant to 37 CFR 1.114, and the Applicant's RCE submission filed on 02 FEBRUARY 2026 has been entered.
Status of Claims
Claims 1-21 are pending in this instant application per RCE claim amendments filed on 02/02/2026, wherein only independent Claims 1, 9, and 19-20 have been amended, and new Claim 21 has been added. Claims 1 and 9 are independent claims reciting system and method. Claims 2-8/19/21 and 10-18/20 are dependent claims.
This Office Action is a non-final rejection in response to RCE claim amendments and the remarks filed by Applicant on 02 FEBRUARY 2026 for its original application of 09 MARCH 2023 that is titled: “Method and Apparatus for Transmitting Transaction Data Using a Public Data Network”.
Accordingly, amended claims 1-21 are now being rejected herein.
Drawing Objections
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “1245 kg CO2d” shown in FIG.17A and in FIG.17B, and Specification does not recite “CO2d” in it. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office Action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Examiner notes that FIG.17C correctly shows it to be “1245 kg CO2e” therein.
The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. 37 CFR 1.83(b) reads as follows:
When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office Action. The objection to the drawings will not be held in abeyance. Examiner notes that in FIG.14, the sum of objects 101+102+103+104 should be ‘100 kg’ (as each is 25kg), and Not “200kg” as shown in FIG.14.
Appropriate correction is required.
NOTE:- Examiner requests the Applicant to correct any such informalities in other FIGs. or Drawings as it becomes aware of them.
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.
(NOTE: Latest ‘amendments to the claims’ filed by the Applicant on 02/02/2026 are shown as bold and underlined additions, and all deletions may not be shown, or may not be underlined when stricken through. Underlined amendments to the claims that are shown below are from previously submitted claim amendments by the Applicant.)
Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more, wherein Claims 1 and 9 are independent system and method claims respectively.
Exemplary Analysis
Claim 9: Ineligible.
The claim recites a series of steps. The claim is directed to a method reciting a series of steps, which is a statutory category of invention (Step 1 -- YES).
The claim is analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of a method of aggregating, gathering, accounting, recording, tracking, and displaying embodied CO2e of a product or service as a report or assignable certificate recorded in a registry, comprised of: allow the user to generate the extensible carbon objects including the use of carbon instruments; tracking carbon instruments, or other related carbon data; and a platform for transacting for carbon instruments; configuring the platform for tracking and assigning extensible carbon objects representing carbon instruments; and configuring a report manager to generate an embodied CO2e life cycle of a product or service as a structured data object report or assignable certificate. In other words, the claim describes a method for a carbon management platform for exchanging carbon credits like transactions (falling under fundamental economic principles or practices), and allow different entities/ corporations to interact for said exchanging of carbon credits (falling under commercial or legal interactions & agreements). These limitations, as drafted, are steps of a method that, under its broadest reasonable interpretation, covers performance of the limitations via a meth od of organizing human activity such as fundamental economic principles or practices (including carbon transactions and hedging, mitigating risk), and/or commercial or legal interactions (including agreements in the form of contracts; legal obligations; marketing or sales activities or behaviors; business relations). Thus, these limitations fall under the “certain methods of organizing human activity” group (Step 2A1 -- YES).
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional elements of: an application programming interface (API) gateway between a logical layer and a representational layer, the API gateway server being configured with an extensible Carbon Reporting Markup Language (<CarML>) configured to interface software with the logical layer, the <CarML> comprising a core set of common data schema and message types including interface objects for extensible carbon objects and third party external systems, the API gateway configured to allow the user to generate the extensible carbon objects representing carbon instruments; configuring the system to represent a real world products and or services provided by a physical process utilizing energy, to change a physical state of the product or service; configuring the distributed immutable ledger or blockchain to record an extensible carbon object digital twin comprising an embodied carbon dioxide equivalent (CO2e) or greenhouse gas (GHG) cradle to gate life cycle inventory (LCI) associated with a real world product or service, based on the energy utilized in providing the product or service, and to change the physical state of the product or service; and has a machine-readable code associated with a Defined Unit, and recorded in the registry, wherein recording the extensible carbon object to the distributed immutable ledger comprises generating a cryptographic hash reference linking the carbon object to at least one parent carbon object, thereby creating a genealogical chain of custody, and wherein the method prevents disaggregation of environmental instrument credits from the carbon object once assigned. These additional elements are considered extra-solution activities. The API gateway server and systems in the steps are recited at a high level of generality, i.e., as generic processors performing generic computer/s functions of processing data. These generic processors are no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. Accordingly, these additional elements do not integrate the abstract idea into a practical application, because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to the abstract idea (Step 2A2 -- NO).
Next, the claim is analyzed to determine if there are additional elements in this claim that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements in the claim amount to no more than mere instructions to apply the exception using generic computer/s and/or computer component/s. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer and/or computer components over a network cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the additional elements of: an application programming interface (API) gateway between a logical layer and a representational layer, the API gateway server being configured with an extensible Carbon Reporting Markup Language (<CarML>) configured to interface software with the logical layer, the <CarML> comprising a core set of common data schema and message types including interface objects for extensible carbon objects and third party external systems, the API gateway configured to allow the user to generate the extensible carbon objects representing carbon instruments; configuring the system to represent a real world products and or services provided by a physical process utilizing energy, to change a physical state of the product or service; configuring the distributed immutable ledger or blockchain to record an extensible carbon object digital twin comprising an embodied carbon dioxide equivalent (CO2e) or greenhouse gas (GHG) cradle to gate life cycle inventory (LCI) associated with a real world product or service, based on the energy utilized in providing the product or service, and to change the physical state of the product or service; and has a machine-readable code associated with a Defined Unit, and recorded in the registry, wherein recording the extensible carbon object to the distributed immutable ledger comprises generating a cryptographic hash reference linking the carbon object to at least one parent carbon object, thereby creating a genealogical chain of custody, and wherein the method prevents disaggregation of environmental instrument credits from the carbon object once assigned; were considered to be extra-solution activities in Step 2A, they are re-evaluated in Step 2B to determine if they are more than what is well-understood, routine and conventional in the field. The disclosure does not provide any indication that these servers and systems (processors) are anything other than generic processors and the Symantec, TLI, and OIP Techs. court decisions (MPEP 2106.05 (d) (II)) indicate that mere collection or receipt of data over a network is a well‐understood, routine, & conventional function when it is claimed in a merely generic manner (as it is here). Also, paras [00258] and [00287]--[00291] of the Applicant’s own Specification (published as US 2023-0196459 on 06/22/2023) describe them as ---
{“[00258] As will be appreciated, a GS1 product barcode and database is an example of a <CarML> integration for a <CarML> environmental product declaration message type. FIG. 37A shows an exemplary <CarML> declaration schema which lays out the taxonomic structure for <CarML> key, value pairs and object metadata. The "Why" for a CO2e declaration can be for a host of reasons, for example, customs reporting, retail packaging, reporting, and so on. Organizations for the <CarML> declaration schema can be the entity making the declaration, and a verifying entity for verifying the authenticity of the carbon declaration. As for what is declared, key value tags can be set for the product and service and the CO2e/kg amounts. Key and value pairs can also be set for how much of product the declaration is for (quantity/ amount), when the declaration was made, when it expires, the origin location of the product or service and their termination points. FIG. 37B and Table 28, show an exemplary <CarML> Root Schema, Taxonomy, and Key Value tagging for declaration data objects. …………………..
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[00287] Distributed immutable ledger server computers include virtually any network computer capable of sharing a ledger across a network and configured as a distributed immutable ledger node, including client computers and network computers as described herein. Distributed immutable ledger server computers are distributed across one or more distinct network computers in a peer-to-peer architecture. Other configurations, and architectures are also envisaged. …………………………………………………………………………….
[00288] In an embodiment, a distributed immutable ledger network can be private to the parties concerned, permissioned so only authorized parties are allowed to join, and can be secure using cryptographic technology to ensure that participants only see what they are allowed to see. The shared ledger is replicated and distributed across the networked computers. Transactions are immutable (unchangeable) and final. Computers that may be arranged to operate as distributed immutable ledger server computers include various network computers, including, but not limited to personal computers, desktop computers, multi-processor systems, microprocessor-based or programmable consumer electronics, network PCs, server computers, network appliances, and the like. ……………………………………………………..
[00289] One of ordinary skill in the art will appreciate that the architecture of system 200 is a non-limiting example that is illustrative of at least a portion of an embodiment. As such, more or less components can be employed and/or arranged differently without departing from the scope of the innovations described herein. System 200 is sufficient for disclosing at least the innovations claimed herein. …………………………………………………………………………………………..
[00290] The operation of certain embodiments has described with respect to FIGS. 1- 40. In at least one of various embodiments, processes described in conjunction with FIGS. 1-40, respectively, can be implemented by and/or executed on a single computer. In other embodiments, these processes or portions of these processes can be implemented by and/or executed on a plurality of computers. Embodiments are not limited, and various combinations of network computers, client computers, virtual machines, hardware devices or the like can be utilized. …………………………………………………………………………………………………………………………
[00291] It will be understood that each block of the flowchart illustrations, and combinations of blocks in the flowchart illustrations, can be implemented by computer program instructions. These program instructions can be provided to a processor to produce a machine, so that the instructions, which execute on the processor, create means for implementing the actions specified in the flowchart block or blocks. The computer program instructions can be executed by a processor to cause a series of operational steps to be performed by the processor to produce a computer-implemented process such that the instructions, which execute on the processor to provide steps for implementing the actions specified in the flowchart block or blocks. The computer program instructions can also cause at least some of the operational steps shown in the blocks of the flowchart to be performed in parallel. Moreover, some steps can also be performed across more than one processor, such as might arise in a multi-processor computer system or even a group of multiple computer systems. In addition, one or more blocks or combinations of blocks in the flowchart illustration can also be performed concurrently with other blocks or combinations of blocks, or even in a different sequence than illustrated without departing from the scope or spirit of the present innovations.”} ---
and indicate that the concept described by the extra-solution additional elements is conventional. Accordingly, a conclusion that the aforementioned extra-solution additional elements are well-understood, routine and conventional activity is supported under Berkheimer options 2 and 3, respectively.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional elements do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea (Step 2B -- NO), and the claim is not patent eligible.
The analysis above applies to all statutory categories of the invention including independent system Claim 1, which performs the steps similar to those of independent method Claim 9. Furthermore, the limitations of dependent method Claims 10-18/20, further narrow the independent method Claim 9 with additional steps and limitations (e.g., record an extensible carbon object digital twin comprising a CO2e life cycle inventory (LCI); record the carbon offset to generate a lower CO2e LCI object; configuring the Defined Unit Inventory to inventory a Defined Unit for a tenant member user entity as a digital twin of a real world product or service; configuring the Defined Unit to deplete as an input; a Process Library comprising a user interface to an external client; a Reference Unit Library comprising an extensible absolute unit reference manager to instantiate and store a Reference Unit object, the Reference Unit object comprising a unit of CO2e emission associated datum, the Reference Unit Library comprising a conversion algorithm; configuring the LCI library database to store an environmental embodied CO2e record for the cradle to gate life cycle of an item or process, based on the process inputs and outputs of the Reference Units and the Defined Units; wherein the physical process utilizing energy, to change a physical state of the product or service, is selected from a group; etc.), and do not resolve the issues raised in rejection of the independent method Claim 9. Similarly, dependent system Claims 2-8/19/21 also further narrow the independent system Claim 1, which are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Therefore, amended Claims 1-21 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
The instant claims are rejected under 35 USC 101 in view of the decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. §101.
Response to Declaration under CFR 37 1.132
In response to the Applicant’s declaration filed as part of RCE arguments of 02/02/2026 against the rejection under 35 USC 101, Examiner respectfully disagrees with arguments that the instant application is eligible under SMED (Subject Matter Eligibility Declarations) memo of PTO Director Squires of December 2025. Examiner acknowledges that the Applicant has submitted a declaration in its RCE of 02/02/2026, and at first quick review, said declaration does not provide evidence of which of the six examples of SMED memo of December 2025 does the instant application follow. Said declaration contains many legal conclusions and opinions by the inventor, which are not afforded much weight. Said declaration does not discuss the underlying technology as of the filing date nor does it discuss specific technical features a person having ordinary skill in the art (PHOSITA) would understand. The declaration under 37 CFR 1.132 filed on 02/02/2026 is insufficient to overcome the rejection of claims 1-21 based upon lack of utility and/or inoperativeness under 35 U.S.C. 101 as set forth in the last Office Action because: In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness. In further response about the declaration, Examiner notes the following for item 10 arguments ---
BRI rule does not require SHA-256 hashing, as argued in the declaration.
The rejection did not rely upon mental process, as argued in the declaration.
The specification is not to be read into the claims, as argued in the declaration.
Examiner further notes that the inventor is just arguing based on the specification, and thus does not establish any facts about eligibility of claims.
Response to Arguments
Applicant's RCE remarks (pages 12-15) and claim amendments dated 02 FEBRUARY 2026 with respect to the rejection of amended Claims 1-21 have been carefully considered, but they are not persuasive and do not put these amended claims in a condition ready for Allowance. Thus, the rejection of amended Claims 1-21 has been maintained as described above. Additionally, Examiner notes that the previous Claim Rejections under 35 USC 112(b) have now been withdrawn, based on RCE claim amendments. Thus, the rejection of amended Claims 1-21, as described above, is being maintained herein with some modifications in this Office Action, with 35 USC 101 rejection, to reflect the filed claim amendments.
In response to the Applicant’s RCE arguments of 02/02/2026 against the rejection under 35 USC 101, Examiner respectfully disagrees with arguments that the instant application is similar to Ex Parte Desjardins argued by Applicant as -- {“the In re Desjardins standard for improvements to data structures that change how computers operate”}. Examiner notes that in Ex Parte Desjardins, it was found --- {“The Appeals Review Panel (ARP) overall credited benefits including reduced storage, reduced system complexity and streamlining, and preservation of performance attributes associated with earlier tasks during subsequent computational tasks as technological improvements that were disclosed in the patent application specification.”}. However, the instant application’s Specification does not recite nor support limitations of “reduced storage” and/or “reduced system complexity” and/or “reduced system streamlining” nor “system complexity” nor “system streamlining”, which are the few phrases from the Ex Parte Desjardins findings. It is noted by Examiner that the Applicant has not claimed these phrases in its RCE claims listing of 02/02/2026 either.
In response to the Applicant’s arguments of 08/14/2025 about 101 rejection, Examiner respectfully disagrees with Applicant’s arguments about traversing Step One of the 101 rejection analysis. In response, Examiner notes that the exemplary claim’s limitations, as drafted, are steps of a method that, under its broadest reasonable interpretation, covers performance of the limitations via a method of organizing human activity such as fundamental economic principles or practices (including carbon transactions and “be compensated by users” (in para [00286]), plus hedging, mitigating risk), and/or commercial or legal interactions (including Service Level Agreement (SLA) in para [00274], or agreements in the form of contracts; legal obligations; marketing or sales activities or behaviors; business relations), and/or managing behavior or relationships or interactions between people (including “the system records and encodes allocation rules for the emissions distribution.“ in paras [00232] and [00235], plus social activities and following rules or instructions). Accordingly, it is clear that exemplary independent method Claim 9 recites fundamental economic practices and/or commercial transactions that, under the Revised Guidance, fall under the category of abstract ideas related to “certain methods of organizing human activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, exemplary independent method Claim 9 recites an abstract idea.
In further response to the Applicant’s arguments of 08/14/2025 about 101 rejection, Examiner respectfully disagrees with Applicant’s arguments that there is no need to even go to Step Two of the 101 rejection analysis. Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea --- see MPEP 2106.05(f).
NOTE: Examiner notes that the previous Responses to Arguments from more than one last Office Action/s are incorporated herein as described below, some of which may be similar to and repeated as arguments on 08/14/2025.
In response to the Applicant’s arguments of 12/12/2024 about 101 rejection, (originally filed on 11/15/2024 as part of their AFCP 2.0 request), Examiner respectfully disagrees with the Applicant’s assertions that the instant application offers “Technical Advantages”. In response, Examiner notes that carbon credits were introduced in 1997 with adoption of Kyoto protocol, as noted in two papers attached as Appendices and titled (a) “when did caron credits start”—google search (5 pages) starting in 1997, and (b) “carbon credits and offsets” per Wikipedia (22 pages) starting in 1977. Furthermore, Examiner notes that three/3 additional papers are attached as Appendices to refute the Applicant’s RCE arguments of 12/12 that are titled as ---- (c) “Timeline – the 60-year history of carbon offsets” (22 pages) starting in 1960/1975; (d) “when was nano-credit created and by whom”—google search (4 pages) with oldest start of nano-credit in 2008 by the Institute of Nano-finance, India; and (e) “when was ghg protocol established”---google search (4 pages) with GHG protocol started in 1990.
Examiner respectfully disagrees. Examiner notes that under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea --- see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and transmitted does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
Examiner relies on what the courts have recognized, or those of ordinary skill in the art would recognize, as elements that describe well-understood, routine, and conventional activity in particular fields (like Co2e/carbon-dioxide equivalent and LCA/life cycle analysis/assessments that are the same as claimed LCI/life cycle indicators). For example, receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) (“Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” (emphasis added)). In this case, the use of devices and networks is described at a high level of generality, or as an insignificant extra-solution activity that cannot be considered as an improvement to network/computer technology.
Examiner notes that the focus of the claimed invention in the present is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
Examiner notes that the processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a server/device performing its generic computer functions does not make the claims less abstract.
Examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two paras : “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
The prior art made of record and not relied upon, listed in Form 892, that is considered pertinent to the Applicant's disclosure and review for not traversing already issued patents and/or claimed inventions by the claims of the current invention of the Applicant. Examiner notes that Form 892 contains more references than those cited in the rejection above under 35 USC 103, and that all the references cited on said Form 892 are relevant to this application and form a part of the body of prior art.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Sanjeev Malhotra whose telephone number is (571) 272-7292. The Examiner can normally be reached during Monday-Friday between 8:30-17:00 hours on a Flexible schedule.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, the Applicant is encouraged to contact the Examiner directly.
If attempts to reach the Examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached on (571) 270-1836. The facsimile/fax phone number for the organization, where this application or proceeding is assigned, is 571-273-8300.
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Electronic Communications
Prior to initiating the first e-mail correspondence with an Examiner, Applicant is responsible for filing a written statement with the USPTO in accordance with MPEP §502.03(II). All received e-mail messages including e-mail attachments shall be placed into this application’s record. The Examiner’s e-mail address is provided below at the end of this Office Action.
/S.M./
PSA Examiner, Art Unit 3691
sanjeev.malhotra@uspto.gov
/SANJEEV MALHOTRA/Examiner, Art Unit 3691
Prosecution Insights