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 .
DETAILED ACTION
This office action is in response to the amendment filed on 01/30/2026. Claims 7, 14 and 20 are canceled and claims 1-6, 8-13 and 15-19 are pending and have been considered below.
2. The non-statutory double patenting rejection is moot pursuant to the filing of the Terminal Disclaimer.
Claim Rejections - 35 USC § 112
3. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 8-13 and 15-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 8 and 15 recite the limitation "the second hash value" in lines 19, 17 and 15, respectively. There is insufficient antecedent basis for this limitation in the claim.
The dependent claims 2-6, 9-13 and 16-19 are also rejected.
Claim Rejections - 35 USC § 101
4. 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 1-6, 8-13 and 15-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1, 8 and 15 recite the limitations
Step 2A – Prong 1: Judicial Exception Recited?
The limitations of “calculate, based on the first set of binary data, an engine hash value; calculate, based on the second set of binary data, a second engine hash value; compare the second engine hash value to the first engine hash value” 2106.04(a)(2)(I)(C) “Mathematical Calculations A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation.
Step 2A – Prong 2: the claims recite additional element The limitations “receive, from a first network device, a first set of binary data associated with an Al engine”; “receive, from a network device associated with a final user, a second set of binary data associated with the Al engine” amount to data-gathering steps which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)).
The limitations “store the first engine hash value on a transaction object, wherein the transaction object is recorded on a distributed ledger”; “based on receiving, from a second network device, an approval of the first set of binary data, update an approval status of the transaction object”;” based on the approval status of the transaction object and based on determining that the second hash value matches the first engine hash value, instruct the network device associated with the final user to allow the final user to launch the AI engine” recite insignificant extra-solution activity such as mere outputting of the result. The mere output does meaningfully limit the abstract idea nor provide integration into a practical application. Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
The limitations “network device and AI engine”, “one or more at least non-transitory, at least one processor; ” are recited at a high level of generality such that they amount to on more than mere instructions to apply the exception using a generic component. (see MPEP 2106.05(f)). These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer (see MPEP 2106.05(h)). Note, the mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application.
Step 2B
No, as discussed with respect to Step 2A, these limitations identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. 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); … 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);" and thus remains insignificant extra-solution activity that does not provide significantly more.
With respect to the "storing …." identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional in displaying information as evidenced by the court cases in MPEP 2106.05(d)(II), " iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93" and "i. … transmitting data over a network, …Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … 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)".
The “network device and AI engine” amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrate by: Relevant court decision: the followings are examples of court decisions demonstrating well-understood, routine and conventional activities, see e.g., MPEP 2106.05(d)(II) and MPEP 2106.05(f)(2): Computer readable storage media comprising instructions to implement a method, e.g., see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
The “one or more non-transitory, at least one processor; " amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrate by: Relevant court decision: the followings are examples of court decisions demonstrating well-understood, routine and conventional activities, see e.g., MPEP 2106.05(d)(II) and MPEP 2106.05(f)(2): Computer readable storage media comprising instructions to implement a method, e.g., see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
Claim 2 recites the additional element “wherein the first network device comprises a user interface and wherein the at least one processor is further configured to receive the first set of binary data associated with the AI engine in response to a user selection by a first user via the user interface” which amounts to data-gathering steps, and which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)). The data-gathering elements are recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d) (II)(i) 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); 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)), therefore, do not amount to significantly more than the abstract idea.
Claim 3 recites the additional element “wherein the network device associated with the final user is the first network device” amounts to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrate by: Relevant court decision: the followings are examples of court decisions demonstrating well-understood, routine and conventional activities, see e.g., MPEP 2106.05(d)(II) and MPEP 2106.05(f)(2). Mere instructions to apply an exception using a generic computer does not amount to significantly more.
Claim 4 recites the additional element “wherein the network device associated with the final user comprises a user interface and wherein the at least one processor is further configured to receive the second set of binary data associated with the AI engine in response to a user selection by the final user via the user interface” which amounts to data-presentation steps, and which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)). The data-presentation elements are recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d)(II)(v) Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93)), and therefore, does not amount to significantly more than the abstract idea.
Claim 5 recites the additional element “wherein the at least one processor is further configured to automatically receive the approval of the first set of binary data in response to a data update at the second network device” which amounts to data-gathering steps, and which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)). The data-gathering elements are recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d) (II)(i) 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); 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)), therefore, do not amount to significantly more than the abstract idea.
Claim 6 recites the additional element “wherein the data update at the second network device comprises an approval initiated by a second user” which amounts to data-gathering steps, and which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)). The data-gathering elements are recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d) (II)(i) 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); 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)), therefore, do not amount to significantly more than the abstract idea.
Claims 8-13 and 15-19 are also rejected under the same rationale.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
6. Claim(s) 1-6, 8-13 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Herrin et al (US 2020/0169408) in view of Weng et al. (US 2020/0193292).
Claim 1. Herrin discloses a system for authentication and monitoring of an artificial intelligence (AI) engine, the system comprising:
at least one non-transitory storage device (item 126, fig. 1); and
at least one processor coupled to the at least one non-transitory storage device (item 120, fig. 1), wherein the at least one processor is configured to:
receive, from a first network device, a first set of binary data associated with an AI engine ([0042]-[0043]);
store the first engine hash value on a transaction object, wherein the transaction object is recorded on a distributed ledger (…sending a verification that the first computational model has been successfully stored in the first distributed ledger) ([0004]) (…storing a copy of the first computational model in the first distributed ledger…) [0045], [0053]);
based on receiving, from a second network device, an approval of the first set of binary data (first computational determination) ([0052]-[0056]); update an approval status of the transaction object (…using a hash of a computational model prior to deployment and again during production, networked computers system 100 can verify and immutably record the exact version of the computational model that was used for each computational determination) ([0056]) [verify the exact version is interpreted as updating];
calculate, based on the second set of binary data, a second engine hash value ([0055], fig. 2, 212);
compare the second engine hash value to the first engine hash value (..blockchain mod 402 will ultimately be used to determine whether the second computational model is the same as the first computational model..) ([0054]);
receive, from a network device associated with a final user, a second set of binary data associated with the AI engine ([0054]); and
based on the approval status of the transaction object (…using a hash of a computational model prior to deployment and again during production, networked computers system 100 can verify and immutably record the exact version of the computational model that was used for each computational determination) ([0056]) [verify the exact version is interpreted as updating] and based on determining that the second hash value matches the engine hash value ([0056], fig. 2, 214) instruct the network device associated with the final user to allow the final user to launch the AI engine (results transmitted to users) ([0052]-[0056]).
Herrin does not expressly disclose calculate, based on the first set of binary data, a first engine hash value prior to storage.
However, Weng discloses calculate, based on the first set of binary data, an engine hash value prior to storage ([0026], [0050]). Therefore, It would have been obvious to one of ordinary skill in the art, at or before the effective filing date of the instant application, to use the encryption of Weng in the system of Herrin. One would have been motivated to preserve auditability and privacy of the models ([0021]).
Claim 2. Herrin and Weng disclose the system of claim 1, Herrin further discloses wherein the first network device comprises a user interface and wherein the at least one processor is further configured to receive the first set of binary data associated with the AI engine in response to a user selection by a first user via the user interface (Display and external devices connect with I/O interface set… notification transmitted based on user input to begin process)([0061]-[0067], fig. 1).
Claim 3. Herrin and Weng disclose the system of claim 1, Herrin further discloses wherein the network device associated with the final user is the first network device (fig. 3, [0061]-[0067]).
Claim 4. Herrin and Weng disclose the system of claim 1, Herrin further discloses wherein the network device associated with the final user comprises a user interface ([0024]) and wherein the at least one processor is further configured to receive the second set of binary data associated with the AI engine in response to a user selection by the final user via the user interface ([0052]-[0056]).
Claim 5. Herrin and Weng disclose the system of claim 1, Herrin further discloses wherein the at least one processor is further configured to automatically receive the approval of the first set of binary data in response to a data update at the second network device (first computational determination used to update blockchain) ([0052]-[0056).
Claim 6. Herrin and Weng disclose the system of claim 5, Herrin further discloses wherein the data update at the second network device comprises an approval initiated by a second user ([0065]).
Claim 7. Herrin and Weng disclose the system of claim 1, Herrin further discloses wherein the at least one processor is further configured to store the engine hash value on a distributed ledger (model stored on blockchain to create immutable record of model) ([0045]).
Claims 18-20 are similar in scope as claims 1-7; therefore, they are rejected under the same rationale.
Response to Arguments
7. Applicant’s arguments filed 01/30/2026 have been fully considered but they are moot in light of new ground of rejection(s).
35U.S.C. §101
Applicant argues that the recited limitations—(1) storing a first engine hash value on a transaction object recorded on a distributed ledger, (2) updating an approval status of the transaction object based on receiving an approval from a second network device, and (3) instructing a network device to allow a user to launch an AI engine based on matching hash values and approval status provide a specific improvement over conventional AI governance systems and are analogous to the eligible claims of USPTO Subject Matter Eligibility Example 40.
The Examiner respectfully disagrees.
While Example 40 illustrates claims that were found eligible due to their integration of a judicial exception into a specific improvement to computer security, the present claims are materially distinguishable. In Example 40, the claims recited a particular technical solution that improved the functioning of a computer network itself by preventing man-in-the-middle attacks through a specific arrangement of cryptographic techniques tied to network communication. The eligibility determination was based on the claims’ recitation of how the computer system was improved, not merely what conditions were checked before permitting an action.
In contrast, the instant claims recite storing hash values on a distributed ledger, updating an approval status, and conditionally allowing a user to launch an AI engine based on a comparison of stored values. These steps amount to collecting, storing, comparing, and authorizing data based on predefined conditions, which constitute abstract ideas involving data analysis, verification, and control flow. Merely implementing these abstract concepts using a distributed ledger does not, by itself, integrate the judicial exception into a practical application. See MPEP §2106.04(a) and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
Furthermore, the claims do not recite any specific improvement to the operation of the distributed ledger, network device, or AI engine itself. The ledger is used only as a generic data store for recording transaction objects, and the approval logic merely governs whether a user is permitted to launch software. Such conditional authorization based on data matching represents an intended use or result of the abstract idea, rather than a technological improvement to computer functionality. See MPEP §2106.05(f) and Parker v. Flook, 437 U.S. 584 (1978).
Unlike Example 40, the claims here do not specify a particular ledger structure, consensus mechanism, cryptographic protocol, or network architecture that improves system security or performance at a technical level. Instead, the claims broadly invoke distributed ledger technology and hash comparison in a result-oriented manner, which courts have found insufficient to confer eligibility. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (claims using generic computer components to perform data analysis are ineligible).
Accordingly, Applicant’s reliance on Example 40 is misplaced. The present claims do not integrate the abstract idea into a practical application under Step 2A, Prong Two, nor do they recite an inventive concept under Step 2B, as the additional elements merely apply the abstract idea using conventional computing components in their ordinary capacities. Therefore, the rejection under 35 U.S.C. §101 is maintained.
Conclusion
8. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Phenuel S. Salomon whose telephone number is (571) 270-1699. The examiner can normally be reached on Mon-Fri 7:00 A.M. to 4:00 P.M. (Alternate Friday Off) EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Usmaan Saeed can be reached on (571) 272-4046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-3800.
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/PHENUEL S SALOMON/Primary Examiner, Art Unit 2146