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 .
Applicant’s Reply
Applicant's response of 09/15/25 has been entered. The examiner will address applicant's remarks at the end of this office action.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system, a method, and a non-transitory computer readable storage media; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of creating a legal contract.
Using claim 8 as a representative example that is applicable to claims 1 and 15, the abstract idea is defined by the elements of:
receiving a legal document, wherein the legal document is associated with a first party and a second party;
classifying the legal document into one or more classifications
obtaining a first party decentralized identifier (DID) associated with the first party;
obtaining a second party DID associated with the second party;
generating a data model comprising the first party DID, the second party DID, and parameters extracted from the legal document using the one or more classifications;
generating a hybrid legal document, wherein the hybrid legal document comprises a legal prose document and the data model
generating a first signature using a first private key associated with the first party DID, wherein the first signature is cryptographically bound to the first party DID;
generating a second signature using a second private key associated with the second party DID, wherein the second signature is cryptographically bound to the second party DID; and
applying the first signature and the second signature to the hybrid legal document to create a cryptographically-signed, tamper-evident hybrid legal document
The above limitations are reciting a process for creating a legal document such as a contract that is signed by two parties. This represents a certain method of organizing human activities type of abstract idea that falls into the category of being a legal obligation that is the creation of a legal contract. The claim scope includes creating a legal document such as a licensing deal or a contract to purchase an asset, see paragraphs 06-071 of the specification. Before computers and modern technology, people created contracts using their minds and pen and paper. The creation of contracts and signing of contracts is claiming a human activity that is the creation of a contract and entering into the contract. The claimed invention can be practiced with no technology at all because the steps are simply receiving information, classifying a document and using the claimed information to create a hybrid legal document that is cryptographically singed using a private key (i.e. a password, string of data). A person can perform the claimed process manually with no technology at all. The claims are found to be reciting an abstract idea at step 2A.
For claim 1, the additional elements are the claimed system that has one or more processors and storage media, calling the signature a digital signature, and the claimed use of machine learning classification engines (considered to be claiming the use of machine learning in general) that are used to execute the steps that define the abstract idea.
For claim 8, the additional elements are the recitation to use of machine learning classification engines (considered to be claiming the use of machine learning in general) to classify the legal document and calling the signature a digital signature. The majority of the steps to the method of claim 8 are not tied to any technology and can be performed by a person according to the breadth of the claim.
For claim 15 the additional element is the recitation to the computer readable non-transitory storage media that embody instructions that cause the claimed abstract idea to occur and the claimed machine learning classification engines for the classification of the legal document.
For claims 1, 8, and 15, this judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea with a general link to the use of machine learning (also an instruction for one to use a computer and is a general link to a particular technological environment), see MPEP 2106.05(f) and (h). The claim is instructing one to practice the abstract idea by using a generically recited one or more processors and storage media to perform steps that define the abstract idea so that the contract will be digital and by using machine learning to classify a document. This does not amount to more than a mere instruction to implement the abstract idea on a computer and by using machine learning to perform the steps that defines the abstract idea. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited one or more processors and storage media to perform steps that define the abstract idea and a general link to machine learning. This does not render the claims as being eligible. See MPEP 2106.05(f), (h). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard. The additional elements of the claim when considered individually and in combination, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea, and a general link to the use of machine learning (also an instruction for one to use a computer and is a general link to a particular technological environment), see MPEP 2106.05(f) and (h). This does not amount to reciting significantly more.
For claims 2, 9, 16, the claimed types of classifications for the documents is a further embellishment of the abstract idea. The documents, what they contain, and the classification of the documents are elements that serve to define the abstract idea. No further additional elements have been claimed for consideration. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 3, 5, 10, 12, 17, 19, the resolving of the identity of the first party to obtain the DID from a registry is a further recitation to the abstract idea. This is just obtaining an identifier from a registry (a listing of information). A person can perform the claimed function/step. No further additional elements have been claimed for consideration. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 4, 11, 18, reciting that the legal document comprises legal prose and the data model is reciting the content of the contract in terms of what it says or includes. This is part of the abstract idea. The claimed tag of the parameters and population of the parameters that are associated with a name or data type of value, are further elements that define the abstract idea. No further additional elements have been claimed for consideration. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 6, 13, 20, the generation of a journal entry and populating the entry using parameters from the data model are elements that are part of the abstract idea. A person can write data down in a journal to populate it. No further additional elements have been claimed for consideration. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 7, 14, reciting the legal document is associated with an agreement or a license, or a will or a copyright split sheet, etc., are all elements that serve to further define the abstract idea of the claims. Claiming an association is an abstraction itself. No further additional elements have been claimed for consideration. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Therefore, for the above reasons, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Response to arguments
The traversal of the 35 USC 112a rejection is persuasive in view of the amended claims. The 112a rejection has been withdrawn.
The traversal of the 35 USC 101 rejection is not persuasive. The applicant argues on page 11 that the claims are not directed to an abstract idea. The applicant argues that the steps of receiving the legal document, classifying the document, generating a hybrid legal document, generating the digital signatures, etc., are elements that are not human activity and involve active steps that are more than data collection and analysis. This is not persuasive. The argued elements are the claim elements that serve to define the abstract idea. The receipt of a legal document, analysis of the document to classifying it, generation of a new legal document (the claimed hybrid legal document), and the signatures for the hybrid legal document is what defines the abstract idea. Creation of legal documents and signing of legal documents is a human activity that is a legal interaction and is a certain method of organizing human activities. As to the argument about the claim reciting active steps and how this makes the claims eligible, the examiner notes that all methods and computer processes involve taking active steps so this argument is not something that is part of the eligibility analysis and would mean that any claimed process is patent eligible because it recites active steps. This is not persuasive. Also, the claims are not similar to Enfish or Trading Techs, etc. as the applicant argues because the claims do not result in any improvement to technology. The result of the claims is the creation of a legal document that is signed by two parties, and that is cryptographically linked (cryptographically bound) to other data (which is a data association/data correlation and is part of the abstract idea). The contract is claimed as allowing others to detect tampering as is defined by the “tamper-evident” recitation. This does not serve to improve technology in any manner because the creation of a signed legal document that allows for tampering to be noted, is not improving technology in any way. The argument on pages 11-12 is not persuasive.
The applicant argues on page 12 of the reply that the examiner has stated the inclusion of an abstract idea in a claim makes it ineligible. This is not persuasive and is not supported by the rejection of record that provides a step 2A, 2nd prong, and step 2B analysis of the additional elements of the claim in combination with the claim as a whole, to determine claim eligibility. For a 101 rejection to be proper, a claim must first recite an abstract idea and then the analysis proceeds to the 2nd prong and step 2B, where after the 2nd prong analysis it is determined if the claim is “directed to” the alleged abstract idea as opposed to merely reciting the abstract idea. The rejection of record sets forth a prime facie case of claim ineligibility and has not alleged that just because the claim recites an abstract idea the claim is not eligible. The argument is not persuasive.
The applicant argues on page 12 of the reply that the claim should be analyzed as a whole. The examiner can confirm for the applicant that the claim was examined as a whole, as the rejection of record also makes clear. The previous rejection and current rejection of record clearly state that “For claims 1, 8, and 15, this judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea, and a general link to the use of machine learning (also an instruction for one to use a computer and is a general link to a particular technological environment), see MPEP 2106.05(f) and (h).”. The claimed invention has been considered as a whole. The argument to the contrary is not persuasive.
On page 12 of the reply the applicant argues that the claimed elements tie any abstract idea to a real world application. The applicant argues that if you use an abstract idea in a real world application then the invention is considered to be eligible. This is not persuasive and has no basis in the eligibility guidance set forth in the MPEP. Many claims recite an abstract idea that can be used in the real world but that are still not eligible. There is no “real world application” test for eligibility as the applicant is more or less arguing. A practical application is not provided by using the invention in the real world, the practical application has to be provided by additional claim elements that when viewed with the claim as a whole, will provide for integration of the abstract idea into a practical application, or that recites significantly more, consistent with the guidance given in MPEP 2106. The fact that the invention can be used in the real world does not equate to claim eligibility. The argument is not persuasive.
The applicant argues that the claims recite significantly more on pages 12-13 of the reply. The applicant argues that the claimed elements are the same kind of elements that the court in Alice was concerned with. This is not persuasive because the applicant is just repeating the claimed elements and alleging that they make the claim eligible and/or amount to reciting significantly more. This is not persuasive.
The applicant argues Ex Parte Steven Charles Davis from the PTAB is not persuasive. The applicant has only provided a one sentence statement that is alleging the decision is relevant to the claimed invention. This is taken as a general allegation that is not setting forth a credible nexus to the Davis decision that is instructive to the eligibility of the pending claims. The characterization from the applicant on the Davis decision does not appear to be commensurate with the decision itself. The examiner notes that the Davis decision is not an informative decision and it is not a precedential PTAB decision. As a general rule, examiners are not supposed to comment on decisions that are not in the MPEP where the examining corps has not been provided with guidance as to how to interpret a given case. With that being said, there is no apparent credible nexus between the pending claims and the claims at issue in Davis.
The claims at issue in Davis were:
1. A method for linking blockchain transactions to privately verified identities, comprising:[A] storing, in an account database of a computer system, a plurality of account profiles, wherein each account profile includes data related to a transaction account including at least an account identifier and account data;[B] receiving, by a receiver of the computer system, a transaction message via a payment network, wherein the transaction message is formatted based on one or more standards and includes a plurality of data elements including at least a first data element configured to store a personal account number, a second data element configured to store a merchant identifier, and a third data element configured to store at least a blockchain network identifier and where the third data element or a fourth data element is configured to store a digital signature;[C] identifying, by a processor of the computer system, a first account profile stored in the account database where the included account identifier corresponds to the personal account number stored in the first data element included in the received transaction message, and wherein the first account profile includes a public key;[D] identifying, by the processor of the computer system, a second account profile stored in the account database where the included account identifier corresponds to the merchant identifier stored in the second data element included in the received transaction message;[E] receiving, by the receiver of the computer system, a transaction notification, wherein the transaction notification indicates a transaction processed using a blockchain network associated with the blockchain network identifier stored in the third data element included in the received transaction message and includes at least a transaction identifier and an address identifier associated with one of the first account profile and the second account profile, and where the address identifier is generated using the public key;[F] verifying, by the processor of the computer system, the digital signature using the public key included in the first account profile; and[G] storing, by the processor of the computer system upon verification of the digital signature, a linkage between the transaction identifier included in the received transaction notification and at least one of: the address identifier, the personal account number, and the merchant identifier.
The pending claims do no more than to recite that a digital signature is applied to a legal document where the signature is digital and is cryptographically bound to a first or second party. This is not claiming a system and method of verifying an identify of a user such that technology is being improved as was the case in Davis according to the PTAB. In Davis, the PTAB found that blockchain technology was being improved due to improved security for payment processing transactions with privately verified identifies. The same cannot be said of the pending claims that are creating a legal document and signing it digitally. Technology is not being improved. The reliance upon Davis is not persuasive.
Applicant should also note that the field of cryptography and the use of a key is something that dates back thousands of years (codes and ciphers). The claimed invention can be practiced without technology because nothing is claimed that is computer centric or that is only something that can be done by a computer. The field of cryptograph using a computer is not improved by signing a legal document with a digital signature that is itself linked to other data (the cryptographically bound limitation). Technology is not being improved and the claims are not reciting a new way to perform cryptography that is eligible.
The applicant argues paragraphs 057-058 as teaching an improvement to technology. Paragraph 057 discusses contracts and how they contain content about legal relationships. Paragraph 057 discloses the creation of a data model that contains party identifiers (the DIDs) and the fact that the DID can be used to resolve the identify of the subject of a DID. Nothing is disclosed about an improvement to technology that is a result of the claimed invention. Paragraph 058 discloses that legal data can be mapped to a schema of a verifiable credential and allows for the use of cryptography in digital form. Disclosed is the use of a credential to confirm facts about a legal relationship and the status of a contract itself. No mention of an improvement to technology is made in paragraph 058 and the claims do not recite anything about verifying a credential of a user. The argument that the claims improve technology is not persuasive. The claims are not rooted in computer technology because creation of legal contracts and signing of contracts (the abstract idea elements) is not technological in nature, and because the invention has nothing to do with computer networks and improvements to technology by using a computer network. The argument is not persuasive that the claims recite significantly more. The rejection under 35 USC 101 is being maintained.
The request for evidentiary support if the examiner maintains any given rejection is noted, but is not persuasive or relevant to anything found in the rejections of record. No official notice of any kind has been taken. The argument/comment is moot.
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 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 DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/Primary Examiner, Art Unit 3626