Detailed Action
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 28, 2025 has been entered.
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the RCE filed on November 28, 2025.
Claims 2, 4, 6, and 19-20 are cancelled.
Claims 1, 3, 5, 7-18, and 21-25 are pending.
Claims 1, 3, 5, 7-18, and 21-25 are examined.
This Office Action is given Paper No. 20260417 for references purposes only.
Claim Objections
Claim 14 is objected to because it recites “the third transaction.” Examiner assumes that Applicant intended “the third transaction record.” Appropriate correction is required.
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, 5, 7-18, and 21-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of receiving and processing data and initiating an operation based upon an analysis of the data, which is a mental process (i.e. concepts performed in the human mind including observations, evaluations, judgments, and opinions).
Claim 1 includes the following limitations:
Receiving a first transaction record comprising first parameters, wherein the first transaction record is generated by a first entity and directed to a second entity;
Determining whether the first parameters are consistent with other parameters utilized by the second entity;
Generating a second transaction record comprising second parameters that correspond to the first parameters;
Initiating one or more operations regarding the second transaction record that comprises the second parameters corresponding to the first parameters, to determine whether the first parameters are consistent with the parameters utilized by the second entity.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
A processing device;
A memory.
These additional elements are not indicative of integration into a practical application because:
They add the words “apply it” (or an equivalent) with the judicial exception, or 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).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional elements of “a processing device” and “a memory” are mere instructions to apply an exception, and do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is mere instructions to apply an exception under step 2A should be re-evaluated at step 2B. Thus, the additional elements of “a processing device” and “a memory” are re-evaluated to determine whether they constitute significantly more. Examiner finds that the additional elements of “a processing device” and “a memory” are simply the use of a computer in its ordinary capacity and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262 and MPEP 2106.05(f). For example, the additional elements only provide a result-oriented solution and lack details as to how the computer performs the modifications, which is equivalent to “apply it”. See Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2357 and MPEP 2106.05(f).
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 3 recites the second parameters are associated with the first parameters based on semantic similarities, which is merely describing data and further defining the abstract idea.
Claim 5 recites the second parameters are associated with third parameters that are associated with entities, which is merely describing data and further defining the abstract idea.
Claim 7 recites initiating a secure transaction based on the second transaction record, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claims 8-11 recite the different types of operations, which is merely describing data and further defining the abstract idea.
Claim 12 recites generating a third transaction record, which is insignificant extra-solution activity (e.g. mere data gathering). See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, and MPEP 2106.05(g).
Claims 13-18 and 21 recite the different types of outcomes from generating a third transaction record, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim 22 recites receiving and processing a query, which is well-understood, routine, and conventional. See Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321 and MPEP 2106.05(d).
Note that claim 23 is represented by claims 1, 12-13, and 18. Claim 25 is represented by claims 1, 13, 18, and 22.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 5, 7-18, and 21-25 are rejected under 35 U.S.C. 103(a) as being unpatentable over Saxena et al. (US 2018/0165586) in view of Biernat et al. (US 2019/0340269).
Claim 1
Saxena discloses:
a processing device (processor, see [0029]); and
that, when executed by the processing device, cause the system to perform operations comprising:
receiving a first transaction record (transaction record 1, see [0136]) comprising one or more first parameters (e.g. financial amount, see [0134-0135]), wherein the first transaction record is generated by a first entity (sender, see [0136]) and directed to a second entity (recipient, see [0136]);
processing the first transaction record to determine whether at least one of the one or more first parameters are consistent with one or more parameters (consistent with smart contract’s terms and conditions, see [0137]) utilized by the second entity;
generating, based on the processing of the first transaction record to determine whether the at least one of the one or more first parameters are consistent with the one or more parameters utilized by the second entity, a second transaction record (transaction record 2, see [0134]) comprising one or more second parameters (e.g. amount spent, see [0139]) that correspond to at least one of the one or more first parameters;
initiating one or more operations (one or more operations, see [0139]) with respect to the second transaction record that comprises the one or more second parameters (e.g. amount spent, see [0139]) corresponding to at least one of the one or more first parameters (e.g. financial amount, see [0134-0135]), as generated based on the processing of the first transaction record to determine whether the at least one of the one or more first parameters (e.g. financial amount, see [0134-0135]) are consistent with the one or more parameters (consistent with smart contract’s terms and conditions, see [0137]) utilized by the second entity.
Saxena does not explicitly disclose:
A memory… instructions.
Biernat teaches:
a memory (memory, see [0064]) coupled to the processing device and storing instructions (instructions, see [0064]).
Saxena discloses a processing device, receiving a first transaction record, processing the first transaction record, generating a second transaction record, and initiating operations with respect to the second transaction record. Saxena does not explicitly disclose a memory storing instructions, but Biernat does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the providing procurement related cognitive insights using blockchains of Saxena with the memory storing instructions of Biernat because 1) a need exists for efficiently processing large quantities of data within tolerable time intervals (see Saxena [0002]); and 2) a need exists for searching industrial blockchains that encode manufacturing data associated with a product (see Biernat [0004]). Having a memory storing instructions can allow for efficient processing of quantities of data.
Claim 23
Saxena discloses:
receiving a first transaction record (transaction record 1, see [0136]) comprising one or more first parameters (e.g. financial amount, see [0134-0135]), wherein the first transaction record is generated by a first entity (sender, see [0136]) and directed to a second entity (recipient, see [0136]);
processing the first transaction record to determine whether at least one of the one or more first parameters are consistent with one or more parameters (consistent with smart contract’s terms and conditions, see [0137]) utilized by the second entity;
generating, based on the processing, a second transaction record (transaction record 2, see [0134]) comprising one or more second parameters (e.g. amount spent, see [0139]) that correspond to at least one of the one or more first parameters;
initiating one or more operations (one or more operations, see [0139]) with respect to the second transaction record; and
generating a third transaction record (purchase order, see [0303]) based on one or more associations (e.g. inventory levels, see [0307]) between the first transaction record and the second transaction record and one or more determinations (e.g. minimum inventory maintenance level, current inventory level, minimum quantity of product that needs to be ordered to maintain sufficient stock, see [0293]) computed based on one or more sensor inputs (input signals/data, see [0045, 0173]).
Saxena does not explicitly disclose:
Sensor inputs.
Biernat teaches:
Sensor inputs (input devices, e.g. sensors, see [0075]).
Saxena discloses receiving a first transaction record, processing the first transaction record, generating a second transaction record, initiating one or more operations, and generating a third transaction record. Saxena does not explicitly disclose sensor inputs, but Biernat does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the providing procurement related cognitive insights using blockchains of Saxena with the sensor inputs of Biernat because 1) a need exists for efficiently processing large quantities of data within tolerable time intervals (see Saxena [0002]); and 2) a need exists for searching industrial blockchains that encode manufacturing data associated with a product (see Biernat [0004]). Having sensor inputs can help with processing of large quantities of data.
Claim 25
Saxena discloses:
receiving a first transaction record (transaction record 1, see [0136]) comprising one or more first parameters (e.g. financial amount, see [0134-0135]), wherein the first transaction record is generated by a first entity (sender, see [0136]) and directed to a second entity (recipient, see [0136]);
processing the first transaction record to determine whether at least one of the one or more first parameters are consistent with one or more parameters (consistent with smart contract’s terms and conditions, see [0137]) utilized by the second entity;
generating, based on the processing, a second transaction record (transaction record 2, see [0134]) comprising one or more second parameters (e.g. amount spent, see [0139]) that correspond to at least one of the one or more first parameters;
initiating a secure transaction (one or more operations, e.g. hotel booked and lodging costs paid, see [0139]) with respect to the second transaction record and at least one of the first entity or the second entity;
generating a third transaction record (purchase order, see [0303]) based on (a) one or more associations (e.g. inventory levels, see [0307]) between the first transaction record and the second transaction record and (b) one or more determinations (e.g. minimum inventory maintenance level, current inventory level, minimum quantity of product that needs to be ordered to maintain sufficient stock, see [0293]) computed based on one or more sensor inputs (input signals/data, see [0045, 0173]); and
processing a query (query, see [0034]) within a decentralized network (blockchain, see abstract) based on one or more associations between at least one of the first transaction record, the second transaction record, and the third transaction record.
Saxena does not explicitly disclose:
Sensor inputs.
Biernat teaches:
Sensor input (input devices, e.g. sensors, see [0075]).
Saxena discloses receiving a first transaction record, processing the first transaction record, generating a second transaction record, initiating a secure transaction, generating a third transaction record, and processing a query. Saxena does not explicitly disclose sensor inputs, but Biernat does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the providing procurement related cognitive insights using blockchains of Saxena with the sensor inputs of Biernat because 1) a need exists for efficiently processing large quantities of data within tolerable time intervals (see Saxena [0002]); and 2) a need exists for searching industrial blockchains that encode manufacturing data associated with a product (see Biernat [0004]). Having sensor inputs can help with processing of large quantities of data.
Claim 3
Furthermore, Saxena discloses:
the one or more second parameters are associated with the one or more first parameters based on one or more semantic similarities (text or phrases, NLP, see [0040-0041]).
Claim 5
Furthermore, Saxena discloses:
the one or more second parameters are associated with one or more third parameters (e.g. policy, standard, regulation, or law, see [0139]) that are associated with one or more entities (policy is external to organization, see [0139]) not associated with the first transaction record or the second transaction record.
Claim 7
Furthermore, Saxena discloses:
initiating one or more operations comprises initiating a secure transaction (e.g. transfer of digital currency, see [0135]) based on the second transaction record, and wherein the secure transaction comprises a transaction with respect to at least one of the first entity or the second entity associated with the first transaction record or the second transaction record.
Claim 8
Furthermore, Saxena discloses:
initiating one or more operations comprises validating a transaction (affirmative response from user to issue purchase order, see [0303]).
Claim 9
Furthermore, Saxena discloses:
initiating one or more operations comprises generating an associated transaction validation (reducing order levels for the first set of products, see [0306]).
Claim 10
Furthermore, Saxena discloses:
initiating one or more operations comprises selecting a transaction execution account (transfer of digital funds from the customer to the vendor, see [0297]).
Claim 11
Furthermore, Saxena discloses:
initiating one or more operations comprises initiating the one or more operations based on one or more sensor inputs (electronic proof of delivery, e.g. digitized signature of a recipient from a freight transport company, see [0297]).
Claim 12
Furthermore, Saxena discloses:
generating a third transaction record (purchase order, see [0303]).
Claim 13
Furthermore, Saxena discloses:
generating a third transaction record comprises generating the third transaction record based on one or more associations (e.g. inventory levels, see [0307]) between the first transaction record and the second transaction record.
Claim 14
Furthermore, Saxena discloses:
generating the third transaction comprises injecting at least one of the one or more first parameters into the second transaction record (e.g. quantity, see [0293]).
Claim 15
Furthermore, Saxena discloses:
generating a third transaction record comprises generating the third transaction record based on one or more inventory determinations (inventory levels, see [0293]).
Claim 16
Furthermore, Saxena discloses:
generating a third transaction record comprises adjusting the third transaction record (adjust quantity based on current stock depletion rate, see [0293]).
Claim 17
Furthermore, Saxena discloses:
generating a third transaction record comprises adjusting the third transaction record based on one or more inventory determinations (e.g. minimum inventory maintenance level, current inventory level, minimum quantity of product that needs to be ordered to maintain sufficient stock, see [0293]).
Claim 18
Furthermore, Saxena discloses:
generating a third transaction record comprises generating the third transaction record based on one or more determinations (e.g. minimum inventory maintenance level, current inventory level, minimum quantity of product that needs to be ordered to maintain sufficient stock, see [0293]), and wherein the one or more determinations are computed based on one or more sensor inputs (input signals/data, see [0045, 0173]).
Claim 21
Furthermore, Saxena discloses:
generating a third transaction record further comprises reconciling one or more aspects of the third transaction record based on one or more sensor inputs (inventory levels, see [0293]).
Claims 22, 24
Furthermore, Saxena discloses:
receiving a query (query, see [0034]); and
processing the query within a decentralized network (blockchain, see abstract) based on one or more associations between at least one of the first transaction record, second transaction record, or the third transaction record.
Response to Arguments
101 arguments
Applicant argues that the claimed invention integrates into a practical application, and recites a particular machine that is integral to the claim.
Examiner disagrees. Applicant has made a general statement about the claimed invention integrating into a practical application, but offers no further explanation or reasoning to justify the initial statement. The 101 rejection is revised in light of the amendments. As shown above, the additional elements do not integrate the claimed invention into a practical application because they are merely instructions to implement the abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea.
103 arguments
Applicant argues that the prior art does not teach initiating one or more operations with respect to the second transaction record that comprises second parameters corresponding to at least one of the first parameters, to determine whether the first parameters are consistent with the one or more parameters utilized by the second entity.
Note that the contested claim language is intended use (i.e. “to determine whether the at least one of the one or more first parameters are consistent with the one or more parameters utilized by the second entity”) in a system claim. Regardless, please see revised rejection. Saxena discloses initiating one or more operations (one or more operations, see [0139]) with respect to the second transaction record that comprises the one or more second parameters (e.g. amount spent, see [0139]) corresponding to at least one of the one or more first parameters (e.g. financial amount, see [0134-0135]), as generated based on the processing of the first transaction record to determine whether the at least one of the one or more first parameters (e.g. financial amount, see [0134-0135]) are consistent with the one or more parameters (consistent with smart contract’s terms and conditions, see [0137]) utilized by the second entity.
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Veale et al. (US 2019/0306235) discloses private blockchain with decentralized external gateway.
Applicant is reminded that functional recitation(s) using the word and/or phrases “for”, “adapted to”, or other functional language (e.g. see claim 1 which recites “to determine whether the at least one of the one or more first parameters are consistent with the one or more parameters utilized by the second entity.”) have been considered but are given little patentable weight because they fail to add any structural limitations and are thereby regarded as intended use language. To be especially clear, all limitations have been considered. However, a recitation of the intended use of the claimed product must result in a structural difference between the claimed product and the prior art in order to patentably distinguish the claimed product from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such a machine is to be utilized is not germane to the issue of patentability of the machine itself.”); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP §§ 2106 II (C.), 2114 and 2115. Unless expressly noted otherwise by Examiner, the claim interpretation principles in the paragraph apply to all examined claims currently pending.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
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/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699
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