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 .
Response to Amendment
This Action is in response to the Amendment filed March 4, 2026. Claims 1 and 12 have been amended. Claims 1-22 are pending and have been examined in this application.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/306,865 and 63/435,114, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application Nos. 63/306,865 and 63/435,114, at least does not disclose, wherein the neural network algorithm analyzes metadata on the blockchain to determine user queries' popularities with respect to user interest through one or more variables associated with user interactions with front-end applications; generates the economic incentives for the responses as a token allocation that is constricted in a programmatic, time-based manner that factors in network productivity; and outputs the responses to the information queries, wherein the responses are structured as a priority list that improves relevance of the responses to the information queries and provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys.
Therefore, as the present application is a nonprovisional of the prior-filed applications, Application Nos. 63/306,865 and 63/435,114; and the claims are not supported by the disclosure of the application, the current claims, 1-22 of the present application do not receive priority to the filing date of Application No. 63/306,865 nor 63/435,114.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because portions of the drawings are illegible (i.e., Figs. 2B, 8-10). Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance. Also, Fig. 7 has the reference number 710 labelled for two different objects.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1 and 12 recite the limitation “outputs the responses to the information queries, wherein the responses are structured as a priority list that improves relevance of the responses to the information queries and provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys.” The specification does not provide support as to how the function is performed. The specification states that in “the ranking of the most popular query based on its access counter within a matrix of syntax matches to other queries within the knowledge base to generate a priority list of the most relevant queries to the user's input, number of entries visited prior to positive flagging, etc. With optimal endpoints that include but are not limited to: reducing time spent on searching, improving relevance of search results” [0042]. This does not describe how structuring responses as a priority list improves relevance of the responses to the information queries. The claims do not satisfy the written description requirement if sufficient description of how the claimed function is to be performed are not disclosed by the specification, including how to program the disclosed computer to perform the claimed function. See MPEP 2161.01. Claims 2-11 and 13-22 by being dependents of claims 1 and 12 respectively are also rejected.
In claims 1 and 12 the limitation “outputs the responses to the information queries, wherein the responses are structured as a priority list that improves relevance of the responses to the information queries and provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys,” has no support in the original disclosure. The specification states that in the “contents of an entry 405, 405' consist of instructions for accessing any external piece of data and can include but are not limited to: IPFS pointer, a web address, a hosted video/audio/picture file, instructions for accessing private information that can include encryption/decryption keys” [0043]. This does not describe that the responses to the information queries, provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys. Accordingly, the limitation constitutes impermissible new matter. Claims 2-11 and 13-22 by being dependents of claims 1 and 12 respectively are also rejected.
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 1-22 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.
Claims 1-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1-8 are directed toward at least one abstract ideas without significantly more. In accordance with MPEP 2106, the rationale for this determination is explained below.
Representative claim 1 is directed towards a system, claim 12 is directed towards a method which are statutory categories of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim however, appears to be directed toward an abstract idea. The limitations that set forth the abstract idea recites: receive one or more information queries, wherein the information queries are associated with a first set of smart contracts that are comprised of economic incentives, access credentials, and governance roles; receives one or more responses to the information queries, wherein the responses are stored as a second set of smart contracts; requests validation of the responses from interactions with other smart contracts, wherein the validation request is processed using knowledge-community managed smart contracts and economically aligned contracts;
and analyzes user queries for relevance and ranks responses to the information queries uniquely generated from iterative user-system interactions, to determine user queries' popularities with respect to user interest through one or more variables associated with user interactions; and outputs the responses to the information queries, wherein the responses are structured as a priority list that improves relevance of the responses to the information queries. These limitations, entail agreements in the form of contracts and/or commercial interactions including, marketing or sales activities and business relations; as well as managing personal behavior or interactions between people including following rules or instructions. As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II). Additionally, the limitation generates the economic incentives for the responses as a token allocation that is constricted in a programmatic, time-based manner that factors in network productivity, uses mathematical formulas or equation to generate incentives and is thus, directed to the abstract grouping of Mathematical Concepts (see MPEP 2106.04(a)(2) I).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (see MPEP 2106.04(d)), the additional elements provided by the claim amounts to extra-solution activity and merely using a computer as a tool to perform an abstract idea. In particular the claim recites the additional elements: in the blockchain; using a neural network algorithm; with front-end applications, provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys which are recited at a high level of generality and merely uses the computer as a tool to perform the abstract ideas and/or mere instructions to implement the abstract idea on the computer. See MPEP 2106.05(f). While, the limitation, wherein the neural network algorithm analyzes metadata on the blockchain, amounts to insignificant extra-solution activity because such activities are merely tangential data gathering and outputting. See MPEP 2106.05(g). Simply adding insignificant extra-solution activities and applying the abstract idea by a computer system is not a practical application of the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims 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 exception (MPEP 2106.05(e)) Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claim recites the additional limitations of a server, smart contract, blockchain, neural network algorithm, front-end applications, IPFS pointer, a web address, a video/audio/picture file, encryption/decryption keys, which does not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the additional elements amount to no more than merely applying the exception using generic computer system, utilizing known functionalities of a computer. Merely applying an exception using generic computer components cannot provide an inventive concept2. Moreover, using neural network algorithms to analyze metadata on a blockchain is well understood, routine and conventional in the art. See at least, Padmanabhan et al. (US 20210243193 A1); Krishnamurthy et al. (US 20210209688 A1); Bakshi et al. (US 20220358495 A1); Fritz et al.(US 20200167319 A1); Rengarajan et al. (US 20220417613 A1); Lillard et al. (US 11893091 B2); Ajgaonkar (US 20230206634 A1). Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 2-11, likewise, do not recite any limitations that would remedy the deficiencies outlined above. The claims only further add to the abstract idea, with no elements which integrate the abstract idea into a practical application or constitute significantly more. For instance, claims 2-3, 5-7, 9-10, comprise legal and business interactions; claim 4 directed to mathematical calculations; claim 8 directed to managing personal behavior; claim 11 insignificant extra-solution activity. Thus, while they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 12-22 suffer from substantially the same deficiencies as outlined with respect to claims 1-11 and are also rejected accordingly.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant contends in regards to the priority of the claims that provisional application 63/435,114, states “The core of every dedicated knowledge area, Knowledge Base is the proposed module that encapsulates keeping the actual knowledge data references (such as links to questions and answers) along with the metadata that reflects the consensus around the quality and reputation of the knowledge;” and “The mechanism runs every predetermined epoch, taking the latest metadata from the Knowledge Base (such as reputation scores) and producing the incentive factors as the output.” Based on which one of ordinary skill in the art would find sufficient support for the claim limitations: “wherein the neural network algorithm analyzes metadata on the blockchain to determine user queries' popularities with respect to user interest through one or more variables associated with user interactions with front-end applications; and outputs the responses to the information queries, wherein the responses are structured as a priority list that improves relevance of the responses to the information queries and provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys.” The Examiner respectfully disagrees. The cited statements do not disclose, describe or suggest that a neural network algorithm analyzes metadata on the blockchain to determine user queries' popularities with respect to a user’s interest using one or more variables associated with user interactions. Neither that responses are outputted to information queries, structured as a priority list that improves relevance and provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys. Therefore, the instant application does not receive priority to the filing date of Application Nos. 63/306,865 and 63/435,114
B. Applicant asserts regarding the 35 U.S.C. § 112 rejection that the limitation “outputs the responses to the information queries, wherein the responses are structured as a priority list that improves relevance of the responses to the information queries and provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys,” is supported by paragraphs [0042] and [0043] of the specification, and that one of ordinary skill would have found support for the limitation in said paragraphs. The Examiner respectfully disagrees. Paragraph [0043] states that “contents of an entry 405, 405' consist of instructions for accessing any external piece of data and can include but are not limited to: IPFS pointer, a web address, a hosted video/audio/picture file, instructions for accessing private information that can include encryption/decryption keys.” This does not describe that outputted responses to the information queries, provides one or more of: an IPFS pointer, a web address, a hosted video/audio/picture file, or instructions for accessing private information that can include encryption/decryption keys. The content of a user’s entry is not an outputted response structured as a priority. Although, subject matter of a claim need not be described in haec verba. If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. See MPEP § 2163.02.
C. Applicant argues regarding the 35 U.S.C. § 101 rejection that the amended claims, recite limitations that are not Certain Methods of Organizing Human Activity. The Examiner respectfully disagrees. The claims comprise agreements in the form of contracts, commercial interactions including, marketing or sales activities or and business relations; as well as managing personal behavior or interactions between people including following rules or instructions, and are therefore, grouped under the abstract idea of Certain Methods of Organizing Human Activity. Moreover a smart contract is old and well known and dates back to 1994, defined as “a computerized transaction protocol that executes the terms of a contract. The general objectives of smart contract design are to satisfy common contractual conditions (such as payment terms, liens, confidentiality, and even enforcement), minimize exceptions both malicious and accidental, and minimize the need for trusted intermediaries.” See NIST Blockchain Technology Overview, (https://nvlpubs.nist.gov/nistpubs/ir/2018/NIST.IR.8202.pdf). Regardless, if it is a collection of code it is still a contract executing the terms of a contract.
Applicant argues that the claims are patent-eligible because they improve the functioning of a computer or other technology or technological field. The Examiner respectfully disagrees. The claims are directed to abstract ideas with no additional elements that integrate the abstract idea into a practical application, as would an improvement to a technology/technological field. That the claims are specifically designed to improve data sharing in a computer network, is an abstract idea in and of itself, and at most insignificant extra-solution activity as sharing data is well known, routine and conventional in the art, see MPEP 2106.05(d).
Applicant submits that the amended claim is analogous to Example 47, claim 3, of the July 2024, USPTO additional guidance on subject matter eligibility, because it recites an improvement to computer technology and the claim is inextricably tied to the computer environment. The Examiner respectfully disagrees. The instant claimed invention and Example 47 have different claim sets, different fact patterns, and are directed to different abstract eligibility, and therefore the two are not analogous. Example 47, claim 3 was deemed eligible because it trained a machine learning model to generate an artificial neural network that was used to detect anomalies in network traffic, which was a technical improvement. Contrary to Example 47, the instant claimed invention, is directed towards the abstract grouping of Certain Methods of Organizing Human Activity and Mathematical Concepts (see 101 analysis above) and does not provide a technological solution to a technical problem. Also, there is no technical support/technical description in Applicant’s Specification that the claimed invention, when implemented, improves the functioning of a neural network, the computing device itself, a smart contract, or that of another technology/technical field. That the amended claim generates economic incentives for the responses as a token allocation that is constricted in a programmatic, time-based manner that factors in network productivity, is using mathematical; equations or formulas, as described in Applicant’s specification, to produce fundamental economic principles, i.e. providing economic incentives. This is directed to abstract ideas and not an improvement to a technology. Furthermore, being inextricably tied to a computer environment without more is simply limiting the abstract idea to a particular technological environment. See MPEP 2106.05(h).
Applicant states that that “there is no analysis in the Office Action demonstrating that each of the claim limitations, as drafted, are so well known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” As such, Applicant is stating that the specification has not provided sufficient written description as to how any of the independent claim’s limitations are performed and should therefore invoke 112(a) rejections. The claim proffers steps of: receiving information queries, associated with a set of smart contracts that are comprised of economic incentives, access credentials, and governance roles; receiving responses to the information queries, stored as a second set of smart contracts; requesting validation of the responses from interactions with other smart contracts, wherein the validation request is processed using knowledge-community managed smart contracts and economically aligned contracts; analyzing user queries for relevance and ranks responses to the information queries using a neural network uniquely generated from iterative user-system interactions; and outputting the responses to the information queries. These steps of receiving, requesting, analyzing and outputting are not unconventional and are not novel to the extent that Applicant’s specification does not describe how they are performed. Indeed, Applicant argues that one of ordinary skill in the art could infer sufficient support for the claim limitations. Notwithstanding, even if the combination of the limitations were not well-understood, unconventional and nonroutine, they are still directed to abstract ideas, and would not be eligible. As even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Parker v. Flook, 437 U.S. 584, 591-92, 198 USPQ 193, 198 (1978), the laws of nature in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 73-74, 101 USPQ2d 1961, 1968 (2012), and the isolated DNA in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116, 106 USPQ2d 1972, 1978 (2013) were all novel, but were considered by the Supreme Court to be judicial exceptions.
Furthermore, the additional elements provided by the claim amounts to insignificant extra-solution activity, and the mere use of the computer as a tool to apply the abstract ideas. Merely applying an exception using generic computer components cannot provide an inventive concept. See 101 analysis above, see also, TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept).
Applicant’s argument that there was not an analysis for the dependent claims and they cannot be dismissed as unpatentable without providing an explanation. The Examiner respectfully disagrees. There is no requirement, either by statute or case law, that the Examiner details in writing an element by element analysis of the dependent claims in order to establish that the claim is directed to an abstract idea. The dependent claims have been examined individually and in combination with the preceding claims, however they do not cure the deficiencies of claim 1. Where all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.” Content Extraction & Transmission LLC v. Wells Fargo Bank, N A, 776 F.3d 1343, 1348 (Fed. Cir. 2014). Applicant has been invited to point out the specific limitations in the dependent claims that are directed towards patent eligible subject matter. However, Applicant still has not identified any dependent claim(s) alleged to be directed towards patent eligible subject matter and/or add significantly more to the judicial exception of the independent claim.
As such, the claims, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the current 35 U.S.C. § 101 rejection has not been overcome by the Applicant.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Errol CARVALHO whose telephone number is (571)272-9987. The Examiner can normally be reached on M-F 9:30-7:00 Alt Fri
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571- 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).
2 See, TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept)
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