DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Application
This Communication is a Final Office Action in response to the Remarks, Amendments, and Arguments filed on the 12th day of September, 2025. Currently Claims 1-20 are pending. No claims are allowed.
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 judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) with no practical application and without significantly more.
Under MPEP 2106, when considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (step 1). If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (step 2A prong 1), and if so, it must additionally be determined whether the claim is integrated into a practical application (step 2A prong 2). If an abstract idea is present in the claim without integration into a practical application, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself (step 2B).
In the instant case, claims 1-20 are directed to a system, method, and non-transitory computer-readable media. Thus, each of the claims falls within one of the four statutory categories (step 1). However, the claims also fall within the judicial exception of an abstract idea (step 2). While claims 1, 8, and 15, are directed to different categories, the language and scope are substantially the same and have been addressed together below.
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to certain methods of organizing human activity (see MPEP 2106.04(a)(2)(II) and mental processes (see MPEP 2106.04(a)(2)(III).
Examiner notes that Claims 1, 8, and 15 recited a system comprising one or more processors and one or more computer- readable non-transitory storage media coupled to the one or more processors and including instructions that, when executed by the one or more processors, a method, and one or more computer-readable non-transitory storage media comprising: receiving a request for a transaction from a first party, wherein the first party is associated with a first party decentralized identifier (DID); identifying a second party for the transaction, wherein the second party is associated with a second party DID; receiving negotiation data from the first party and from the second party; generating a data model using the first party DID, the second party DID, and the negotiation data; and generating a hybrid legal document using the data model and a legal prose document, and is similar to the abstract idea identified in MPEP 2106.04(a)(2)(II) in grouping “II” in that the claims recite certain methods of organizing human activity such as legal or business interactions, or fundamental economic practices such as contract relationships and transactions between parties. This is merely further embellishments of the abstract idea and does not further limit the claimed invention to render the claims patentable subject matter. The limitations, substantially comprising the body of the claim, recite standard processes found in standard practice in facilitating a transaction between parties wherein the identity of the parties entering into a contract are confirmed to provide adequate proof of the intent to enter into a formal agreement. The system is identifying users that have assets and identifiers, and allowing parties to negotiate for the transfer of those assets using the system. This is common practice when transacting chattel or any other form of collateral using a contract. Because the limitations above closely follow the steps standard in interactions between people and businesses such as business or legal interactions, and fundamental economic practices such as transactions and contractual relationships, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the see MPEP 2106.04(a)(2)(II).
Alternatively, Examiner notes that Claims 1, 8, and 15 recited a system comprising one or more processors and one or more computer- readable non-transitory storage media coupled to the one or more processors and including instructions that, when executed by the one or more processors, a method, and one or more computer-readable non-transitory storage media comprising: receiving a request for a transaction from a first party, wherein the first party is associated with a first party decentralized identifier (DID); identifying a second party for the transaction, wherein the second party is associated with a second party DID; receiving negotiation data from the first party and from the second party; generating a data model using the first party DID, the second party DID, and the negotiation data; and generating a hybrid legal document using the data model and a legal prose document, which is directed to concepts that are performed mentally and a product of human mental work. Because the limitations above closely follow the steps of receiving a request in the form of a transaction request, identify parties that match the parameters of the transaction, and outputting a result of that analysis to enter into a contract with each party through negotiations, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III).
The conclusion that the claim recites an abstract idea within the groupings of the MPEP 2106.04(a)(2) remains grounded in the broadest reasonable interpretation consistent with the description of the invention in the specification. For example, [App. Spec 39], “generating a hybrid legal document using the data model”. Accordingly, the Examiner submits claims 1-20, recite an abstract idea based on the language identified in claims 1, 8, and 15, and the abstract ideas previously identified based on that language that remains consistent with the groupings of Step 2A Prong 1 of the MPEP 2106.04(a)(1).
If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified method of organizing human activity of legal interactions and risk management (i.e., asset transfer) on generically claimed computer structure. For instance, the additional elements or combination of elements other than the abstract idea itself include the elements such as “computer”, “processor”, “database”, “decentralized identifier”, “decentralized public key infrastructure (DPKI)”, “service endpoint”, “bidirectional communications channel” and “model” recited at a high level of generality. These elements do not themselves amount to an improvement to the interface or computer, to a technology or another technical field. This is consistent with Applicant’s disclosure which states that the computing device amounts to “computer-readable non-transitory storage medium or media may include one or more semiconductor-based or other integrated circuits (ICs) (such, as for example, field-programmable gate arrays (FPGAs) or application-specific ICs (ASICs)), hard disk drives (HDDs), hybrid hard drives (HHDs), optical discs, optical disc drives (ODDs), magneto-optical discs, magneto-optical drives, floppy diskettes, floppy disk drives (FDDs), magnetic tapes, solid-state drives (SSDs), RAM-drives, SECURE DIGITAL cards or drives, any other suitable computer-readable non-transitory storage media, or any suitable combination of two or more of these, where appropriate. A computer-readable non-transitory storage medium may be volatile, non-volatile, or a combination of volatile and non-volatile, where appropriate”. (App. Spec. 294).
Accordingly, the claimed “system” read in light of the specification employs any wide range of possible devices comprising a number of components that are “well-known” and included in an indiscriminate “computer”, “processor”, “database”, “decentralized identifier”, “decentralized public key infrastructure (DPKI)”, “service endpoint”, “bidirectional communications channel” and “model” (e.g., processing device, modules). Thus, the claimed structure amounts to appending generic computer elements to abstract idea comprising the body of the claim. The computing elements are only involved at a general, high level, and do not have the particular role within any of the functions but to be an computer-implemented method using a generically claimed “computer”, “processor”, “database”, “decentralized identifier”, “decentralized public key infrastructure (DPKI)”, “service endpoint”, “bidirectional communications channel” and “model” and even basic, generic recitations that imply use of the computer such as storing information via servers would add little if anything to the abstract idea.
Similarly, reciting the abstract idea as software functions used to program a generic computer is not significant or meaningful: generic computers are programmed with software to perform various functions every day. A programmed generic computer is not a particular machine and by itself does not amount to an inventive concept because, as discussed in MPEP 2106.05(a), adding the words “apply it” (or an equivalent) with the judicial exception, or more instructions to implement an abstract idea on a computer, as discussed in Alice, 134 S. Ct. at 2360, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), is not enough to integrate the exception into a practical application. Further, it is not relevant that a human may perform a task differently from a computer. It is necessarily true that a human might apply an abstract idea in a different manner from a computer. What matters is the application, “stating an abstract idea while adding the words ‘apply it with a computer’” will not render an abstract idea non-abstract. Tranxition v. Lenovo, Nos. 2015-1907, -1941, -1958 (Fed. Cir. Nov. 16, 2016), slip op. at 7-8.
Here, the instructions entirely comprise the abstract idea, leaving little if any aspects of the claim for further consideration under Step 2A Prong 2. In short, the role of the generic computing elements recited in claims 1, 8, and 16, is the same as the role of the computer in the claims considered by the Supreme Court in Alice, and the claim as whole amounts merely to an instruction to apply the abstract idea on the generic computerised system. Therefore, the claims have failed to integrate a practical application (2106.04(d)). Under the MPEP 2106.05, this supports the conclusion that the claim is directed to an abstract idea, and the analysis proceeds to Step 2B.
While many considerations in Step 2A need not be reevaluated in Step 2B because the outcome will be the same. Here, on the basis of the additional elements other than the abstract idea, considered individually and in combination as discussed above, the Examiner respectfully submits that the claims 1, 8, and 16, does not contain any additional elements that individually or as an ordered combination amount to an inventive concept and the claims are ineligible.
With respect to the dependent claims do not recite anything that is found to render the abstract idea as being transformed into a patent eligible invention. The dependent claims are merely reciting further embellishments of the abstract idea and do not claim anything that amounts to significantly more than the abstract idea itself.
Claims 2-7, 9-14, and 16-20 are directed to further embellishments of the abstract idea in that they are directed to the central theme of the abstract idea identified above, as well as being directed to data processing and transmission which the courts have recognized as insignificant extra-solution activities (see at least M.P.E.P. 2106.05(g)). Data transmission is one of the most basic and fundamental uses there are for a generic computing device is not sufficient to amount to significantly more. The examiner takes the position that simply appending the judicial exception with such a well understood step of data transmission is not going to amount to significantly more than the abstract idea.
Therefore, since there are no limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. See MPEP 2106.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 3-8, 10-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20200104296 A1 to Hunn et al. (hereinafter Hunn) in view of U.S. Patent Application Publication No. 20210344507 A1 to Peng et al. (hereinafter Peng).
Referring to Claim 1, 8, and 15 (substantially similar in scope and language), Hunn discloses a system comprising one or more processors and one or more computer- readable non-transitory storage media coupled to the one or more processors and including instructions that, when executed by the one or more processors (see at least Hunn: ¶ 175), cause the system to perform operations comprising:
receiving a request for a transaction from a first party (see at least Hunn: ¶ 106 “contract event”; see at least Hunn: ¶ 128-129 “triggering execution of event”; see also Hunn: ¶ 135 “initiating by contracting party”), wherein the first party is associated with a first party decentralized identifier (DID) (see at least Hunn: ¶ 114-116 “private key of contracting party (which may relate to a DID associated with the contract and appended to the contract log of the contracting party”; see also Hunn: ¶ 155: “generate credentials that may then be checked through the logic of a programmable component. Examples of credential methods include: A counterparty or other entity signing a transaction under the control of another party; an asset/token being moved in a specific way (e.g. deposited on a multi-signature on-chain contract); and giving a contract participant certain attributes or permissions, such as giving the contract participant the authority to work in a certain jurisdiction, wherein the participant's state may be verifiable through a “Decentralized Identifier-based system” or other authentication system”; see at least Hunn: ¶ 81, 85, 115, 145, 155, 159, and 172: discussing the use, management, and processing of decentralized identifiers for contract events, transactions, tasks, and parties);
identifying a second party for the transaction, wherein the second party is associated with a second party DID (see at least Hunn: ¶ 114-116 contracting parties being associated with each contracting party; see at least Hunn: ¶ 81, 85, 115, 145, 155, 159, and 172: discussing the use, management, and processing of decentralized identifiers for contract events, transactions, tasks, and parties);
Hunn does not explicitly state:
resolving the first party DID and the second party DID to obtain first decentralized public key infrastructure (DPKI) metadata and second DPKI metadata, respectively;
Hunn specifically discloses the system obtaining party signatures using public key infrastructure (PKI) (see at least Hunn: ¶ 115 “entries to the contract log may be signed using a Public Key Infrastructure (PKI) asymmetric cryptographic key pair used by each contracting party. Keys may be managed in any suitable way. For example, a key management module (as shown in FIG. 8 (8-105) may be used to store and/or manage keys for signing contracts, transactions, and the like. In one embodiment, the system and method may utilize a distributed ledger to manage identities of contracting parties. A key pair may be associated with a Distributed Identifier (DID) and DID Document. The key pair may be a cryptographic key pair. A DID and DID Document may take any suitable form. Each user may have multiple public/private key pairs for a contract. A unique DID may be used for every contract and DIDs may use pairwise-unique public keys and pairwise-unique service endpoints to ensure contracting parties cannot correlate contracts from a given entity on the ledger. Alternatively, subkeys may be used.”).
Hunn does not explicitly state resolving the DID identifiers (further addressed below).
However, Peng, which teaches a data decentralized identifier blockchain network, teaches it is known to resolve decentralized identifiers (see at least Peng: ¶ 201 “Verifying that the id property of the resulting decentralized identifier document matches the decentralized identifier that was resolved. The decentralized identifier document can express cryptographic keys and other verification methods, which can be used to authenticate or authorize interactions with the user 302 or associated parties. The information expressed often includes globally unambiguous identifiers and public key material, which can be used to verify digital signatures.”; see also Peng: ¶ 448 “The resolver services 3222 may include a decentralized identifier resolver 3321 configured to manage decentralized identifiers and decentralized identifier documents stored on the blockchain 3230, and a verifiable claim resolver 3322 configured to manage verifiable claims for decentralized identifiers generated based on the blockchain 3230.”; see also Peng: ¶ 453 “operations associated with decentralized identifiers or verifiable claims performed by one or more user-side systems 3210, one or more resolvers 3222, one or more clouds 3224, or one or more blockchain systems 3230. In some embodiments, a user-side system 3210 may manage one or more decentralized identifiers or one or more verifiable claims by interfacing with a decentralized identifier resolver 3222 and a blockchain 3230 storing decentralized identifiers and decentralized identifier documents”).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the feature of resolving decentralized identifiers within a method and system for controlling authorization of access to data and transactions (as disclosed by Peng) into the system and method for managing an electronic contract that obtains and employs party signatures using public key infrastructure (PKI) and DIDs (as disclosed by Hunn). One of ordinary skill in the art would have been motivated to incorporate the feature of resolving decentralized identifiers within a method and system for controlling authorization of access to data and transactions because it would manage decentralized identifiers and send the transaction to one or more blockchain nodes associated with the blockchain 3230 for execution (see at least Peng: ¶ 470).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the feature of resolving decentralized identifiers within a method and system for controlling authorization of access to data and transactions (as disclosed by Peng) into the system and method for managing an electronic contract that obtains and employs party signatures using public key infrastructure (PKI) and DIDs (as disclosed by Hunn), because the claimed invention is merely a simple arrangement of old elements, with each performing the same function it had been known to perform, yielding no more than one would expect from such arrangement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by adding the well-known feature of resolving decentralized identifiers within a method and system for controlling authorization of access to data and transactions into the system and method for managing an electronic contract that obtains and employs party signatures using public key infrastructure (PKI) and DIDs). See also MPEP § 2143(I)(A).
The combination of Hunn and Peng teaches:
identifying, using the first DPKI metadata and the second DPKI metadata, a first service endpoint and a second service endpoint, respectively;
Hunn specifically discloses identifying service endpoints utilized in a distributed ledger to manage identities of contracting parties ((see at least Hunn: ¶ 115 “entries to the contract log may be signed using a Public Key Infrastructure (PKI) asymmetric cryptographic key pair used by each contracting party. Keys may be managed in any suitable way. For example, a key management module (as shown in FIG. 8 (8-105) may be used to store and/or manage keys for signing contracts, transactions, and the like. In one embodiment, the system and method may utilize a distributed ledger to manage identities of contracting parties. A key pair may be associated with a Distributed Identifier (DID) and DID Document. The key pair may be a cryptographic key pair. A DID and DID Document may take any suitable form. Each user may have multiple public/private key pairs for a contract. A unique DID may be used for every contract and DIDs may use pairwise-unique public keys and pairwise-unique service endpoints to ensure contracting parties cannot correlate contracts from a given entity on the ledger. Alternatively, subkeys may be used.”).
Hunn does not explicitly state a first service endpoint and a second service endpoint (further addressed below).
However, Peng teaches identifying a plurality of service endpoints using public key infrastructure and metadata to authorize various nodes within the decentralized system (see at least Peng: ¶ 147 “The decentralized identifier document can include various properties such as contexts, decentralized identifier subject, public keys, authentication, authorization and delegation, service endpoints, generation, updates, proof, and extensibility”; see also Peng: ¶ 453 “The user-side system 3210 may also interface with one or more service endpoints for storing verifiable claims, one or more service endpoints for storing status information for verifiable claims, one or more service endpoints for authentication of decentralized identifiers, other suitable systems, or any combination of the above.”; see also Peng: ¶ 459 “The decentralized identifier document may include information associated with the decentralized identifier such as the public key associated with the decentralized identifier, authentication information associated with the decentralized identifier (e.g., one or more authentication methods), authorization information associated with the decentralized identifier (e.g., a decentralized identifier associated with a controller), delegation information associated with the decentralized identifier (e.g., one or more delegation methods), one or more services associated with the decentralized identifier (e.g., one or more types of services such as credential repository service and agent service), one or more service endpoints associated with the decentralized identifier (e.g., URI for each of one or more service endpoints), other suitable information, or any combination thereof.”; see also Peng: ¶ 464 “The identity management application 3433 may add information associated with one or more service endpoints (e.g., information associated with an authentication service endpoint, information associated with a verifiable claim repository) to the decentralized identifier document.”; see also Peng: ¶ 465 “The owner may provide a network location (e.g., identified by a URL) of the decentralized identifier authentication services as a service endpoint for authentication of the decentralized identifier. The location identifier of the decentralized identifier authentication services may be included in a “service” field of the decentralized identifier document associated with the decentralized identifier.”; see also Peng: ¶ 466 “the verifier 3432 may obtain information associated with the authentication service endpoint for the decentralized identifier from the decentralized identifier document.”).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the feature of identifying a plurality of service endpoints using public key infrastructure and metadata to authorize various nodes within the decentralized system (as disclosed by Peng) into the system and method for managing an electronic contract that obtains and employs party signatures using public key infrastructure (PKI) and DIDs (as disclosed by Hunn). One of ordinary skill in the art would have been motivated to incorporate the feature of identifying a plurality of service endpoints using public key infrastructure and metadata to authorize various nodes within the decentralized system within a method and system for controlling authorization of access to prove that the user providing the decentralized identifier is the owner of the decentralized identifier (see at least Peng: ¶ 467).
establishing at least one secure, bidirectional communications channel between the first service endpoint and the second service endpoint, respectively;
Hunn discloses the system including communication channels for the execution engine which includes “environment such as public, dedicated, or private cloud environment, on a private or shared server, on a peer-to-peer, distributed or decentralized network (e.g., within a node/client on a BDL network or without a BDL component), or other appropriate execution environment…the system and method are distributed through a peer-to-peer system. Peers may be: contract participants, with some interest or involvement in the contract execution; other parties, other computing systems, and/or any other suitable entity. In some variations, the system and method may be implemented within a private computing system or other suitable computing architecture, such as a cloud-based environment” (see at least Hunn: ¶ 97-98).
Peng further teaches the distributed ledger system which includes a consensus networks made of a plurality of nodes (peer-to-peer nodes) to securely and immutably conduct transactions and store data (see at least Peng: ¶ 120).
receiving negotiation data from the first party and from the second party via the at least one secure, bidirectional communications channel (see at least Hunn: ¶ 70-72 discussing the system incorporating a data model using variables such as negotiation terms and parameters; see at least Hunn: ¶ 148-151 contract stipulations);
generating a data model using the first party DID, the second party DID, and the negotiation data (see at least Hunn: ¶ 70-72 discussing the system incorporating a data model using variables such as negotiation terms and parameters; see also Hunn: ¶ 114-116 “contracting parties associated to DIDs”; see also Hunn: ¶ 128-129 “triggering execution”; see at least Hunn: ¶ 81, 85, 115, 145, 155, 159, and 172: discussing the use, management, and processing of decentralized identifiers for contract events, transactions, tasks, and parties; see at least Hunn: ¶ 148-151 contract stipulations); and
generating a hybrid legal document using the data model and a legal prose document (see at least Hunn: ¶ 60 providing a hybrid execution of a contract; see also Hunn: ¶ 86: managing on and off chain transactions; see also Hunn: ¶ 99, 138-140: discussing hybrid execution of transactions; see at least Hunn: ¶ 56 and 59 discussing legal prose or prose; see also Hunn: ¶ 81 “task management such as on-chain transactions”).
Referring to Claim 3, 10, and 17 (substantially similar in scope and language), the combination of Hunn and Peng teaches the system of Claim 1, the method of claim 8, and the computer storage media of claim 15, including the operations further comprising: generating a journal entry using data model parameters of the hybrid legal document; populating the journal entry with fee values derived from the data model parameters; and populating the journal entry with financial settlement information (see at least Hunn: ¶ 59 discussing contract log; see also Hunn: ¶ 68 “The system may additionally include: contract events 130 generated by the runtime, a contract log 140, and a task management component 150. The system may include other services and/or functions as desired. The system functions to enable execution of the logic (i.e. programmable components) within the electronic contract both on a local server and on external resources 110, particularly on a blockchain and/or distributed ledger (BDL). Additionally, the system may function to enable interactions with external resources 110 that modify details of the electronic contract, modify execution of the electronic contract, and enable generation of events in relation to the execution(s) of the electronic contract. In variations including a contract log 140, the system may additionally enable upkeep of an audit log that stores state changes of the electronic contract that may in turn be used to generate new instantiations of the electronic contract on external resources”; see also Hunn: ¶ 74, 78, 99, 112-117, 126-127, 133, 135, 158-159: discussing audit trails and contract logs functioning the same way wherein each transaction is stored within the contract management system; see at least Hunn: ¶ 60 “providing a hybrid execution of a contract”; see also Hunn: ¶ 86: managing on and off chain transactions; see also Hunn: ¶ 99, 138-140: discussing hybrid execution of transactions).
Referring to Claim 4, 11, and 18 (substantially similar in scope and language), the combination of Hunn and Peng teaches the system of Claim 1, the method of claim 8, and the computer storage media of claim 15, including the operations further comprising: determining that the hybrid legal document transfers ownership of an asset from the second party to the first party, wherein the asset is associated with an asset DID; populating the first party as a new controller of the asset DID; and removing the second party as a controller of the asset DID (see at least Hunn: ¶ 60 “providing a hybrid execution of a contract”; see also Hunn: ¶ 86: managing on and off chain transactions; see also Hunn: ¶ 99, 138-140: discussing hybrid execution of transactions; see also Hunn: ¶ 62: discussing the transfer of assets; see also Hunn: ¶ 66 discussing transfers of assets, rights, and interests; see at least Hunn: ¶ 81 transferring assets to counterparty of agreements; see also Hunn: ¶ 102-105 and 133; see at least Hunn: ¶ 81, 85, 115, 145, 155, 159, and 172: discussing the use, management, and processing of decentralized identifiers for contract events, transactions, tasks, and parties).
Referring to Claim 5, 12, and 19 (substantially similar in scope and language), the combination of Hunn and Peng teaches the system of Claim 1, the method of claim 8, and the computer storage media of claim 15, including the operations further comprising: identifying a subject DID for a subject of the transaction, wherein the subject of the transaction is associated with an asset, a person, an entity, or a service provider; and generating the data model using the subject DID (see at least Hunn: ¶ 70-72 “data model” “variables”; see also Hunn: ¶ 114-116 “contracting parties associated to DIDs”; see also Hunn: ¶ 128-129 “triggering execution”; see at least Hunn: ¶ 81, 85, 115, 145, 155, 159, and 172: discussing the use, management, and processing of decentralized identifiers for contract events, transactions, tasks, and parties).
Referring to Claim 6, 13, and 20 (substantially similar in scope and language), the combination of Hunn and Peng teaches the system of Claim 1, the method of claim 8, and the computer storage media of claim 15, including the operations further comprising: identifying a subject of the transaction; determining, based on the data model, capabilities associated with the subject of the transaction, wherein the capabilities comprise ownership, administration, or authorization capabilities; and generating a credential graph, wherein the credential graph comprises a claim defining the capabilities associated with the subject of the transaction (see at least Hunn: ¶ 131 “Tasks may be scoped to the user-level and organization level of the CMS. For example, tasks may be permissioned (e.g. only users on the CMS with certain credentials/authorization may view and/or execute) or assigned to users within the scope of an account, such as an organization, based upon rules (e.g. parameters in the programmable components meet certain rules such as a price not exceeding a stipulated value).”; see also Hunn ¶ 159 “graph data” “audit trail”; see also Hunn: ¶ 125; discussing how the system stores an audit trail including meta data such as account scopes; see also Hunn: ¶ 133-134, 157-159).
Referring to Claim 7, and 14 (substantially similar in scope and language), the combination of Hunn and Peng teaches the system of Claim 1, and the method of claim 8, including wherein the hybrid legal document is associated with one of the following: an asset purchase agreement; a copyright license; a lease of real estate property; a lease of mineral rights; an employment agreement; a corporate governance document; a copyright split sheet; a will; or a service provider document (see at least Hunn: ¶ 152 “types of transactions”; see also Hunn: ¶ 37-40 Figs. 30-33; see also Hunn: ¶ 57, 66, 81, 103-105, and 132).
Claim(s) 2, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20200104296 A1 to Hunn et al. (hereinafter Hunn) in view of U.S. Patent Application Publication No. 20210344507 A1 to Peng et al. (hereinafter Peng) in view of U.S. Patent Application Publication No. 20210084039 A1 to Murdoch et al. (hereinafter Murdoch).
Referring to Claim 2, 9, and 16 (substantially similar in scope and language), the combination of Hunn and Peng teaches the system of Claim 1, the method of claim 8, and the computer storage media of claim 15; The combination fails to state wherein the request for the transaction is associated with one of the following: a direct search for a subject of the transaction, wherein the subject of the transaction is an asset, a person, or a service or service provider; a search for the subject of the transaction based on one or more search parameters; or a query requesting submissions of potential subjects of the transaction based on one or more search parameters.
However, Murdoch, which talks about a method and system for management and authentication of users, transactions, and devices using DIDs, teaches it is known to provide a system that allows users to search the ledger based on parameters associated to the DID associated to a document, person, or entity (see at least Murdoch: ¶ 83 and : “The DID resolver 450 may be a service, application, or module that is configured in operation to search the distributed ledger 220 for DID documents associated with DIDs”).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of searching a distributed, decentralized ledger based on parameters associated to the DID associated to a document, person, or entity (as disclosed by Murdoch) to the known method and system for managing and executing transactions using decentralized identifiers wherein parties can negotiate terms of agreements (as disclosed by the combination of Hunn and Peng) to manage the issued identities, their authentication, authorization, roles and privileges. One of ordinary skill in the art would have been motivated to apply the known technique of searching a distributed, decentralized ledger based on parameters associated to the DID associated to a document, person, or entity because it would manage the issued identities, their authentication, authorization, roles and privileges (see Murdoch ¶ 1).
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of searching a distributed, decentralized ledger based on parameters associated to the DID associated to a document, person, or entity (as disclosed by Murdoch) to the known method and system for managing and executing transactions using decentralized identifiers wherein parties can negotiate terms of agreements (as disclosed by the combination of Hunn and Peng) to manage the issued identities, their authentication, authorization, roles and privileges, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of searching a distributed, decentralized ledger based on parameters associated to the DID associated to a document, person, or entity to the known method and system for managing and executing transactions using decentralized identifiers wherein parties can negotiate terms of agreements to manage the issued identities, their authentication, authorization, roles and privileges). See also MPEP § 2143(I)(D).
Response to Arguments
Applicant's arguments filed with respect to the claims being rejected under 35 USC 101 have been fully considered but they are not persuasive.
Examiner notes that the Applicant has submitted that the argues that the claims do no generally link the abstract idea to the technological environment of computer networks. Examiner respectfully disagrees.
Examiner notes that the claimed invention is directed to an abstract idea in the form of a judicial exception and employ computer elements as a tool to implement the abstract idea of managing transactions between parties of a legal document. Nothing is presented as to how “computer networks” are improved.
Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.
An example of a case identifying a mental process performed on a generic computer as an abstract idea is Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed. Cir. 2018). In this case, the Federal Circuit relied upon the specification in explaining that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are "human cognitive actions" that humans have performed for hundreds of years. The claims therefore recited an abstract idea, despite the fact that the claimed voting steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504. Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
Both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes. For example, in Mortgage Grader, the patentee claimed a computer-implemented system and a method for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The Federal Circuit determined that both the computer-implemented system and method claims were directed to "anonymous loan shopping", which was an abstract idea because it could be "performed by humans without a computer." 811 F.3d. at 1318, 1324-25, 117 USPQ2d at 1695, 1699-1700. See also FairWarning IP, 839 F.3d at 1092, 120 USPQ2d at 1294 (identifying both system and process claims for detecting improper access of a patient's protected health information in a health-care system computer environment as directed to abstract idea of detecting fraud); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1345, 113 USPQ2d 1354, 1356 (Fed. Cir. 2014) (system and method claims of inputting information from a hard copy document into a computer program). Accordingly, the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim.
Examples of product claims reciting mental processes include: An application program interface for extracting and processing information from a diversity of types of hard copy documents – Content Extraction, 776 F.3d at 1345, 113 USPQ2d at 1356; and A computer readable medium containing program instructions for detecting fraud – CyberSource, 654 F.3d at 1368 n. 1, 99 USPQ2d at 1692 n.1.
Examiner notes that the claimed in invention is similar to the Voter Verified, Inc., FairWarning, Mortgage Grader, Berkheimer, Content Extraction and CyberSource applications wherein the court identified computer system or “computer”, “processor”, “database”, “decentralized identifier”, “decentralized public key infrastructure (DPKI)”, “service endpoint”, “bidirectional communications channel” and “model” is merely serving as a generic computer, computing environment, or tool to perform the mental process.
The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).
Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims ‘must be considered as a whole.’" Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was "far from routine and conventional" and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional).
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)); and Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016), iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential); vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018).
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
Examples that the courts have indicated may not be sufficient to show an improvement to technology include: i. A commonplace business method being applied on a general purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
The claims stand rejected.
Applicant’s arguments with respect to claim(s) 1-20 being rejected under 35 USC 102/103 have been considered but are moot because of the new rejection applied necessitated by the amended claim language.
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.
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/Michael Young/Examiner, Art Unit 3626