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 .
Claim Rejections - 35 USC § 112
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.
1. Claims 1-20 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.
Regarding Claim 1
Claim 1 recites an apparatus comprising “a distributed ledger and blockchain technology system” as an element of the apparatus. The specification defines such an element as follows (see page 5):
The distributed ledger/Blockchain technology system can be can any suitable or appropriate blockchain and can utilize any suitable or appropriate blockchain technology, blockchain platform, or blockchain system protocol.
Such a description renders the scope of “a distributed ledger and blockchain technology system” indefinite. It is unclear whether such an element comprises software, hardware, or a combination of the two. It is further unclear what manner of blockchain, blockchain technology, blockchain platform, and blockchain system protocol would be considered “suitable or appropriate”, as such standards are not defined or limited by the disclosure. Appropriate correction is required to clarify the scope.
Regarding Claims 2-20
Claims 2-20 are dependent on claim 1 and inherit its deficiencies.
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.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-20 are directed to facilitating a transaction for an asset, which is considered a commercial interaction. Commercial interactions fall within a subject matter grouping of abstract ideas which the Courts have considered ineligible (Certain methods of organizing human activity). The claims do not integrate the abstract idea into a practical application, and do not include additional elements that provide an inventive concept (are sufficient to amount to significantly more than the abstract idea).
Under step 1 of the Alice/Mayo framework, it must be considered whether the claims are directed to one of the four statutory classes of invention. In the instant case, claim 1-20 recite an apparatus comprising a central processing computer comprising a processor, database and transmitter. Therefore, the claims are each directed to one of the four statutory categories of invention (apparatus).
Under step 2A of the Alice/Mayo framework, it must be considered whether the claims are “directed to” an abstract idea. That is, whether the claims recite an abstract idea and fail to integrate the abstract idea into a practical application.
Regarding independent claim 1, the claim sets forth a process in which a transaction for an asset is facilitated, including through the facilitation of establishing a contractual relationship, in the following limitations:
provide, and provides, an exchange or a clearinghouse for a selling, renting, leasing, licensing, or optioning, one or more assets,
facilitates a conference between a user and an owner of an asset of the one or more assets,
receives a search request, wherein the search request contains information regarding a search for an asset of the one or more assets,
processes information contained in the search request and generates a search report containing information regarding the asset,
allow a user to obtain information regarding the asset,
allows the user to communicate…with an owner of the asset or a counterparty, and
creates a transaction matter record for or associated with the asset, records activity in the chat room, and further
The above-recited limitations establish a commercial interaction with a consumer to make a product/service recommendation and between a consumer and business to aid in the determination of the recommendation. This arrangement amounts to both a sales activity or behavior; and business relations. Such concepts have been considered ineligible certain methods of organizing human activity by the Courts (See MPEP 2106.04(a)).
Claim 1 does recite additional elements:
a central processing computer, wherein the central processing computer is specially programmed to using a processor of the computing device,
further wherein the apparatus… video conference call… a user communication device of or associated with a user and a counterparty communication device of or associated with
wherein the central processing computer further comprises:
a processor;
a database, wherein the database stores information regarding the one or more assets; and
a transmitter, and
a distributed ledger and blockchain technology system,
wherein the central processing computer:
transmitted from a user communication device
transmits the search report to the user communication device, wherein the central processing computer processes information to
or the user communication device
from an external computer
via the user communication device
a counterparty communication device of
via a chat room or via a video conference
or records a video recording of the video conference
and further wherein the central processing computer records the video conference call, and further wherein the apparatus stores information regarding the asset, stores information regarding a communication between the user and the owner of the asset, and stores the video conference call, in the database and in the distributed ledger and blockchain technology system.
These additional elements merely amount to the general application of the abstract idea to a technological environment (e.g., “wherein central processing computer”, “from an external computer”; “via the user communication device) and insignificant extra- solution activity (“transmits”, “stores”). The specification makes clear the general-purpose nature of the technological environment. Page 96 indicates that while exemplary general purpose systems may be specific for descriptive purposes, any elements or combinations of elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim.
Therefore, considered both individually and as an ordered combination, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional limitations are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not effect a transformation or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea. Accordingly, the Examiner concludes that the claim fails to integrate the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
Under step 2B of the Alice/Mayo framework, it must finally be considered whether the claim includes any additional element or combination of elements that provide an inventive concept (i.e., whether the additional element or elements are sufficient to amount to significantly more than the abstract idea). In the instant case, the additional elements (recited above) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Communicating information (i.e., receiving or transmitting data over a network), electronic recordkeeping, and storing and retrieving information in memory have been repeatedly considered well-understood, routine, and conventional activity by the Courts (See MPEP 2106.05(d)). Accordingly, the Examiner asserts that the additional elements, considered both individually, and as an ordered combination, do not provide an inventive concept, and the claim is ineligible for patent.
Regarding Claims 2-12, 17-20
Claims 2-12, 17-20 merely set forth further embellishments to the abstract idea, and do not confer eligibility on the claimed invention.
Regarding Claims 13-16
Claims 13-16 merely apply non-functional labels to the claimed generic technological environment (i.e. “external computer”). Such labels do not transform the claimed technology into a particular machine or manufacture that is integral to the claim, and do not represent significantly more than the abstract idea. Accordingly, claims do not confer eligibility on the claimed invention.
Regarding Claim 21
Claim 21 sets forth additional extra-solution activity that, similar to claim 1, sets forth well-understood, routine, and conventional activity of electronic recordkeeping and storing and retrieving information in memory. Such recitations do not transform the claimed technology into a particular machine or manufacture that is integral to the claim, and do not represent significantly more than the abstract idea. Accordingly, claims do not confer eligibility on the claimed invention.
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 (i.e., changing from AIA to pre-AIA ) 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.
3. Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Isaacson (US 10002398 B1) in view of Aviv et al. (US 11481815 B1, hereinafter Aviv) and Parush Tzur et al. (US 20230029278 A1, hereinafter Parush).
Regarding Claim 1
Isaacson discloses an apparatus, comprising:
a central processing computer, wherein the central processing computer is specially programmed to provide, and provides, an exchange or a clearinghouse for a selling, renting, leasing, licensing, or optioning, of one or more assets, (Isaacson: see at least abstract, col.4: 10-43)
further wherein the apparatus facilitates a video conference call between a user communication device of or associated with a user and a counterparty communication device of or associated with an owner of an asset of the one or more assets, (Isaacson: see at least col. 1: 65 – col. 2: 19; col. 7: 8-9; claims 14, 16, 17)
wherein the central processing computer further comprises:
a processor; (Isaacson: see at least abstract, col.4: 10-43)
a transmitter (Isaacson: see at least abstract, col.4: 10-43: server 10 sends information over the internet, and therefore must have transmitter), and
wherein the central processing computer:
receives a search request transmitted from a user communication device, wherein the search request contains information regarding a search for an asset of the one or more assets, (Isaacson: see at least claim 1, col. 2: 62-67)
processes information contained in the search request and generates a search report containing information regarding the asset, (Isaacson: see at least abstract, claim 1)
transmits the search report to the user communication device, wherein the central processing computer allows a user to obtain, via the user communication device, information regarding the asset from an external computer, and further wherein the central processing computer allows the user, via the user communication device and the owner of the asset, via the counterparty communication device, to engage in video conference call, and further wherein the central processing computer creates a transaction matter record for or associated with the asset, (Isaacson: see at least col. 1: 65 – col. 2: 19; col. 7: 8-9; claims 1, 14, 16)
creates a transaction matter record for or associated with the asset, records activity in the chat room or records a video recording of the video conference, and further (Isaacson: see at least col. 6: 48-51; col. 7: 10-11)
Isaacson does not explicitly disclose, but Aviv teaches in a similar environment:
a database, wherein the database stores information regarding the one or more assets; (Aviv: see at least col. 10: 4-17)
a distributed ledger and blockchain technology system, (Aviv: see at least col. 10: 4-17)
wherein the apparatus stores information regarding the asset, information regarding a communication between the user and the owner or counterparty, or information regarding the information recorded in the chat room or information regarding the video recording, in the database and in the distributed ledger and blockchain technology system. (Aviv: see at least col. 10: 4-17, claim 1)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson, with the database and blockchain storage, as taught by Aviv, since such a modification would have enabled bidding on any number of combinations of assets captured, created, or modified during one or more auctions as well as other related goods and services. (Aviv: see at least col. 4: 6-9)
Isaacson further does not explicitly disclose, but Parush teaches in a similar environment:
further wherein the central processing computer records the video conference call, and further wherein the apparatus, stores information regarding a communication between the user and the owner of the asset, and stores the video conference call (see at least ¶15, 19: video library of sales calls created in database; calls are transcripted and stored in transcript database)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson, with the video storing and transcripting, as taught by Parush, since such a modification would have increased the productivity of an organization (see at least ¶15 of Parush).
Regarding Claims 2, 3, 5, 10, 11, 17, 20
Isaacson further discloses:
wherein the asset is a real estate asset or a real property asset (Isaacson: see at least abstract)
wherein the asset is a rental or a lease of a real estate asset or a real property asset (Isaacson: see at least col. 4: 1-9)
wherein the asset is a high value asset or a unique asset. (Isaacson: see at least abstract: real estate)
wherein the asset is a rental. (Isaacson: see at least col. 4: 1-9)
wherein the asset is a lease. (Isaacson: see at least col. 4: 1-9)
wherein the information regarding the communication between the user and the owner or counterparty includes an offer price to purchase, to rent, to lease, or to license, the asset. (Isaacson: see at least col.4: 57 – col. 5: 5)
wherein the real estate asset or the real property asset is a residential home. (Isaacson: see at least col. 5: 62-67)
Regarding Claims 6, 8, 9, 12, 19
Isaacson does not explicitly disclose, but Aviv teaches in a similar environment:
wherein the asset is digital art (Aviv: see at least abstract)
wherein the asset is digital memorabilia.
wherein the asset is a non-fungible token (Aviv: see at least abstract)
wherein the asset is an intellectual property asset (Aviv: see at least abstract)
wherein the asset is an option. (Aviv: see at least col. 2: 43-49)
wherein the intellectual property asset is a patent, a trademark, a copyright, or a trade secret (Aviv: see at least abstract)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson, with the assets in Aviv, since such a modification would have merely substituted one known element (assets in Aviv) for another (asset in Isaacson) and would have yielded predictable results.
Regarding Claim 4
Isaacson in view of Aviv does not disclose:
wherein the asset is a non-fungible token of or for the real estate asset.
However, the examiner notes that the limitation is given little patentable weight. The type of asset that is subject of the party-counterparty communication claimed does not change or alter the function of the system and is considered to be non-functional descriptive material that does not distinguish the claimed invention from the prior art in terms of patentability. (In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,404 (Fed Cir. 1983) MPEP 2106 );
The information is not functionally used in the claim in any manner dependent on such an interpretation of the information. As such, the information is no more than arbitrary binary data that is interpretable only within the human mind.
There is no functional relationship between this data and the system recited. Thus, the contents of the data may not distinguish the claims over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). As explained in Miller, "what is significant here is not structural but functional relationship" between the printed matter and the substrate. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (emphasis in original). Also See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson in view of Aviv, to have involved any manner of asset, since such a modification would have merely substituted one known element for another (asset in Isaacson in view of Aviv) and would have yielded predictable results.
Regarding Claims 13-16
Isaacson does not explicitly disclose the particular external computers set forth in claims 13-16. However, the examiner notes that these limitations are given little patentable weight. The label of the external computer involved in the party-counterparty communication claimed does not change or alter the function of the system and is considered to be non-functional descriptive material that does not distinguish the claimed invention from the prior art in terms of patentability. (In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,404 (Fed Cir. 1983) MPEP 2106 );
The information is not functionally used in the claim in any manner dependent on such an interpretation of the information. As such, the information is no more than arbitrary binary data that is interpretable only within the human mind.
There is no functional relationship between this data and the system recited. Thus, the contents of the data may not distinguish the claims over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). As explained in Miller, "what is significant here is not structural but functional relationship" between the printed matter and the substrate. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (emphasis in original). Also See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson, to have involved an external computer labeled in any manner, since such a modification would have merely substituted one known element for another and would have yielded predictable results.
Regarding Claim 18
Isaacson does not explicitly disclose wherein the information regarding the communication between the user and the owner or counterparty includes a warranty or a representation regarding the asset. However, the examiner notes that this limitation is given little patentable weight. The information involved in the party-counterparty communication claimed does not change or alter the function of the system and is considered to be non-functional descriptive material that does not distinguish the claimed invention from the prior art in terms of patentability. (In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,404 (Fed Cir. 1983) MPEP 2106 );
The information is not functionally used in the claim in any manner dependent on such an interpretation of the information. As such, the information is no more than arbitrary binary data that is interpretable only within the human mind.
There is no functional relationship between this data and the system recited. Thus, the contents of the data may not distinguish the claims over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). As explained in Miller, "what is significant here is not structural but functional relationship" between the printed matter and the substrate. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (emphasis in original). Also See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)).
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson, to have involved any information regarding communication, since such a modification would have merely substituted one known element for another and would have yielded predictable results.
Regarding Claim 21
Isaacson does not explicitly disclose, but Parush teaches in a similar environment:
wherein the central processing computer provides a written transcript of the videoconference call, or wherein the central processing computer provides a written transcript of the videoconference call which is digitally signed by a participant of the videoconference call (see at least ¶15, 19: video library of sales calls created in database; calls are transcripted and stored in transcript database)
It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the invention of Isaacson, with the video storing and transcripting, as taught by Parush, since such a modification would have increased the productivity of an organization (see at least ¶15 of Parush).
Response to Arguments
Applicant’s arguments with respect to the rejection under 35 USC 112(b) have been fully considered, but they are not persuasive. Applicant submits that:
Applicant respectfully submits that the Specification provides more that ample support describing the technology which can serve as the "distributed ledger and blockchain technology system" of independent Claim 1….Applicant further respectfully submits that persons having ordinary skill in the art would know and understand the meaning of, how to implement, and the manner of, blockchain, blockchain technology, blockchain platform, and blockchain system protocol, that would be considered "suitable or appropriate", from the teachings of the disclosure of the present application.
The Examiner respectfully disagrees. As noted in MPEP 2173.04, while breadth is not indefiniteness, “a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear”. Here, the specification sets forth such a wide array of technologies, protocols, and structures that can be used to implement a “distributed ledger and blockchain technology system” as to cover an entire technological field (i.e., that of blockchain/distributed ledger technology). The Examiner respectfully asserts that a limitation covering what is effectively an entire field of technology does not clearly delineate the boundaries of protected subject matter and is unclear in scope. Accordingly, the rejection is maintained.
Applicant’s arguments with respect to the rejection under 35 USC 101 have been fully considered, but they are not persuasive. Applicant asserts that the amended claims articulate further technological improvements that render the claims eligible. The Examiner respectfully disagrees. As noted in the rejection above, the video conference call functionality represents the application of an abstract commercial interaction (i.e., facilitating a conference between a buyer and an owner of an asset) to a generic technological environment (i.e., video conferencing technology), coupled without well-understood, routine, and conventional activities (e.g., electronic recordkeeping, storing and retrieving information in memory). Accordingly, the Examiner asserts that the present amendments do not render the claims eligible, and the rejection is maintained.
Applicant’s arguments with respect to the 35 USC 103 rejection have been full considered, but they are not persuasive. Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Khalib et al. (US 20200099530 A1) disclose a deal room platform using blockchain, including facilitating transactions by using blockchain technology as a storage and attestation medium.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A MISIASZEK whose telephone number is (571)272-6961. The examiner can normally be reached Monday-Thursday. 8:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Smith can be reached at 571272-6763. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL MISIASZEK/Primary Examiner, Art Unit 3688