DETAILED ACTION
1. The present application, filed on or after March 13, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2.. An RCE was filed with accompanying amendment on November 3, 2025 (hereinafter “Amendment”) and the Amendment has been entered into the record and fully considered. The Amendment was filed in response to a Final Rejection dated June 2, 2025.
Despite the Amendment to the Claims and Applicant’s remarks, the Rejections set forth in the Non-Final Rejection are hereby maintained; although, the Rejection under §103 is on NEW GROUNDS ARGUABLY NECESSITATED BY THE AMENDMENT.
The Office acknowledges the interview held on October 23, 2025, which was helpful in clarifying the issues under §101. However, it is noted that the suggestions made by the Examiner do not appear to be reflected in the Amendment. Accordingly,
the Examiner requests a follow up interview to discuss the issues under §101 and well as §103. Please use the AIR form found in the Conclusion section of this Action.
An explanation of the maintained Rejections and a response to Applicant’s arguments are set forth below. Please see the “Conclusion” section of this Action below for important information regarding responding to this Action.
An Appendix section is found at the end of this Action wherein the previous Actions in this Application are repeated for completeness of the record.
Status of the Claims:
Claims 1 – 8, 10 – 18, 20, and 22 – 24 are pending in this Application. Claim 24 is new.
Claims 9, 19, and 21 have been cancelled.
Only one independent Claim – Claim 1 - is pending in this action.
The pending dependent Claims were not amended or only amended in a minor, non-substantive manner.
Therefore, the following explanation of the maintained rejections with regard to Claim 1 is considered explanatory of the Rejection as a whole.
New Claim 24 is also addressed below.
With regard to the Amendment:
Claim 1 was amended as follows:
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Summary of the Amendment and Broadest Reasonable Interpretation:
Claim terminology is to be given its plain and ordinary meaning to a person of ordinary skill in the art, consistent with the specification. This is true, unless the terms are given a special meaning. See MPEP §2111.01
Here, no special meaning is detected. As noted in the Amendment, the
changes to Claim 1 relate generally to:
The testing of data that is possibly going to be sold or exchanged on a data marketplace.
The testing generates a metric for the purpose of measuring the vulnerability that the data violates rules pertaining to privacy
Steps are taken to remove or otherwise modify the data to improve the vulnerability score so that the data can be transferred, i.e. access to the data can be transferred.
These terms appear – subject to further consideration – to be defined in the specification based on their plain and ordinary meaning.
With regard to §101:
Respectfully, while the Claim has been amended, it does not substantially advance the Claim toward eligibility. In fact, some of the more specific limitations for modifying the data have been removed. Testing data, generating a score, modifying data in view of the score or taking or not taking certain action in view of the score, iteratively taking these steps, storing data, and making it accessible to third parties in response to a request – are among some of the more common and generic computer functions.
Thus, the Claim remains directed to the abstract idea set forth the Final Rejection which is a method of organizing human activity. That is, the activities described in the Claim constitute fundamental economic principles or practices associated with operating a data marketplace. These are commercial interactions that are typical of this type of abstract idea. These types of “data cleansing” functions are extremely common and even generic and are recited in the Claim at a very high level of generality.
Furthermore, it is clear that the step of testing the data to generate a metric is a form of mathematical calculations within the meaning of §101:
2106.04(a)(2) Abstract Idea Groupings [R-07.2022]
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C. Mathematical Calculations
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.
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((Emphasis Added and other emphasis in the original.)
Respectfully, the Amendment does not advance prosecution substantially.
Thus, the amendments to the Claim do not alter the analysis set for the Non-Final Rejection regarding §101. The Claim merely recites a series of very common computerized functions. These limitations are recited at a very high level of generality.
The Claim provides no specificity in terms of how this is accomplished or what algorithms or specialized functions are used or whether they are used or applied in any special way. Only the mere outcome or result that the data is modified and stored for access to the requestor is recited. These are common functions. No special functionality is recited. No new computerized components are recited. The specificity suggested by the Examiner in the recent interview do not seem to be reflected in the Claim. For example:
How is the data set analyzed?
What is the analysis looking for?
What kind of PII is most concerning?
How is the data tested?
What is the nature of the machine learning model?
How is the metric generated?
In the interview, it was noted that the removal process is iterative. This is not recited? How is this function performed and how is the data re-tested?
How is the threshold for vulnerability determined?
Many other areas of specificity could be noted.
The recited limitations relate only to results or “outcome” of computer processing without specifying “how” a technical problem is solved. That is, the solution of a technical problem is not reflected in the Claim.
Taking the claim elements separately, the function performed by the computer elements at each step of the process is purely typical of processing identifiers for authentication purposes. Without greater specificity as to “how” certain functions solve a technical problem, the currently recited limitations can be achieved by any general purpose computer without special programming. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of the Claim add nothing that is not already present when the steps are considered separately.
Claim 1 does not, for example, purport to improve the functioning of the computer elements nor does the claim reflect how an improvement in any other technology or technical field is achieved. Thus, Claim 1 amounts to nothing significantly more than instructions to “apply” the abstract idea of generating an AI chatbot to provide an estimate of a home for the purpose of some insurance product using some unspecified, generic algorithm and computer components. Such is not sufficient to integrate a practical application in the abstract idea.
New Claim 24
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This Claim does not add sufficient specificity to integrate a practical application into the Claim which recites an abstract idea. Virtually all ML models are trained on data exhibiting attributes of a wide variety. A person of ordinary skill in the art would readily understand this. He or she would also understand that, if data is to be shared with a third party, the attributes of the data that the third party is seeking should be those used to train the model. In that manner, the vulnerability metric or score will be more accurate. Thus, Claim 24 is also recited at a high level of generality and does not render Claim 1 eligible.
Accordingly, the Rejection is maintained.
With regard to §103:
It is respectfully submitted that the current combination of references of Makhija in view of Cella I and further in view of Cella II render Claim 1 obvious, in spite of the Amendment. the following is a brief summary of their teachings and reiteration of the reading set forth below in the Appendix of these references onto the Claims.
Makhija teaches the use of machine learning to cleanse data: 0037
It also teaches the importance of customer feedback: 0031
Cella I is a lengthy and detailed reference of Applicant’s and should be very familiar to Applicant. No detailed reading of its teachings is considered necessary. Nonetheless, it also teaches a data marketplace and the use of crowdsourcing, machine learning and data cleansing: see, for example, 0028; 0204; 0208
Cella II is equally lengthy. It also contains many teachings pertaining to the claimed invention. For example:
A data marketplace: Title
Participants in the marketplace (e.g. crowdsourcing) participate in the setting of prices and determining value: Abstract; 0016; 0033; 0224
Purchaser ratings (e.g. customer feedback) are also taught: 0025
Privacy policies, information sharing, and access to identity are addressed explicitly: 1558; 1561; 1582; 0343; 1056
Machine learning is used to “package” data according to certain governance rules or policies: 0344
Thus, it is respectfully submitted that – despite the Amendment – the existing combination of references reads on the Claim. Thus, the existing Rejection applies to the Amendment. However, out of an abundance of caution and for the avoidance of doubt, the German publication to Kureshi is cited:
NEW GROUNDS OF REJECTION:
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 of this title, 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.
Claims 1 – 8, 10 – 18, 20, and 22 – 24 are rejected under 35 U.S.C. §103 as being unpatentable over Makhija et al. (US 2021/0201236) in view of Cella et al. (US 2021/0342836) and further in view of Cella II (U.S. Patent Publication No. 2019/0137989)
and further in view of U.S. Patent Publication No. 2023/0334168 to Kureshi et al. (hereinafter “Kureshi”).
The title of Kureshi is as follows: Tiered data sharing privacy assurance
The Abstract indicates that it is directly on point with the claimed invention in terms of its data cleansing features:
“Embodiments of the present invention provide a method, system and computer program product for tiered data sharing privacy assurance in responding for requests to inspect investigative data. In an embodiment of the invention, a method for tiered data sharing privacy assurance in responding for requests to inspect investigative data includes receiving a request to access investigative data and applying a privacy test to the request to determine if the request is specific for an individual or generic to any individual. On condition that the privacy test is determined to be generic, the request may be denied. But otherwise, on condition the test is determined to be specific, a data sharing rule that defines a degree to which the investigative data is to be shared may be applied and the request responded to according to the defined degree.” (Emphasis Added)
The “criteria” of the request (i.e. attributes) are used in the data testing. See 0006. “Logic” (i.e. machine learning) is used (See 0015 – 0016) to generate a metric in terms of a “tiered data sharing privacy assurance” generated in accordance with enterprise “rules.” (See 0017 – 0021). Data is modified in terms of redaction, exclusion, and obfuscation (See 0007 and 0017). These teachings are well-illustrated in Fig. 1 as follows:
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Kureshi teaches that the criterion or “attributes” of the data request are used to determine – using the “logic” – whether the request can be granted. Thus, Claim 24 is rendered obvious as well.
New Claim 24:
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Therefore, despite the Amendment to Claim 1 and Applicant’s remarks, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combined data marketplace of Makhija in view of Cella, to add the self-organizing data marketplace teachings of Cella II and further in view of Kureshi to add the testing of data for privacy concerns. . The motivation to make this modification comes from Makhija. It teaches, as quoted above, that data can be organized and sold to others for training purposes. It would greatly enhance the efficiency and accuracy and value of the system of Makhija to add the privacy assurance teachings of Kureshi.
Therefore, the Rejection under §103 is maintained.
Response to Arguments
3. Applicant's arguments set forth in the Remarks section of the Amendment have been fully considered but they are not persuasive.
With regard to section 103 rejection, Applicant argues as follows:
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Assuming arguendo Applicant’s position is sound, it is moot in view of the citation to Kureshi which clearly teaches a governing set of rules and policies for privacy assurance.
With regard to §101, Applicant argues at least in part as follows:
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However, as noted above, merely reciting “testing” is not the specificity required by §101. “How” the data is tested and on what basis would be important considerations in establishing that a practical application has been integrated into the claim. There is no reflection in the Claim as to “how” a technical problem is solved, only the broad result or outcome that the data meets some obscure “metric” sufficient to allow it to be accessed.
Nevertheless, the Examiner requests a follow up interview for the purpose of discussing eligibility and nonobviousness of these Claims.
The Rejection must be maintained.
Conclusion
4. Applicant should carefully consider the following in connection with this Office Action:
A. Search and Prior Art
The search conducted in connection with this Office Action, as well as any previous Actions, encompassed the inventive concepts as defined in the Applicant’s specification. That is, the search(es) included concepts and features which are defined by the pending claims but also pertinent to significant although unclaimed subject matter. Accordingly, such search(es) were directed to the defined invention as well as the general state of the art, including references which are in the same field of endeavor as the present application as well as related fields (e.g. testing data for privacy concerns and cleansing it prior to selling it). Indeed, there is a plethora of prior art in these fields.
Therefore, in addition to prior art references cited and applied in connection with this and any previous Office Actions, the following prior art is also made of record but not relied upon in the current rejection:
U.S. Patent Publication No. 2019/0266355 to Lockhart III. This reference relates to the concept of privacy protection.
U.S. Patent Publication No. 2017/0161746 to Cook et al. This reference relates to the concept of attributes of requested data.
U.S. Patent Publication No. 2019/0057225 to Thomas et al. This reference relates to the concept of removing PII from data.
B. Responding to this Office Action
In view of the foregoing explanation of the scope of searches conducted in connection with the examination of this application, in preparing any response to this Action, Applicant is encouraged to carefully review the entire disclosures of the above-cited, unapplied references, as well as any previously cited references. It is likely that one or more such references disclose or suggest features which Applicant may seek to claim. Moreover, for the same reasons, Applicant is encouraged to review the entire disclosures of the references applied in the foregoing rejections and not just the sections mentioned.
C. Interviews and Compact Prosecution
The Office strongly encourages interviews as an important aspect of compact prosecution. Statistics and studies have shown that prosecution can be greatly advanced by way of interviews. Indeed, in many instances, during the course of one or more interviews, the Examiner and Applicant may reach an agreement on eligible and allowable subject matter that is supported by the specification.
Interviews are especially welcomed by this examiner at any stage of the prosecution process. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool (e.g. TEAMS). To facilitate the scheduling of an interview, the Examiner requests either a phone call at the number set forth below or the use of the AIR form as follows:
USPTO Automated Interview Request http://www.uspto.gov/interviewpractice.
Other forms of interview requests filed in this application may result in a delay in scheduling the interview because of the time required to appear on the Examiner's docket. Thus, a phone call or the use of the AIR form is strongly encouraged.
D. Communicating with the Office
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM BUNKER whose telephone number is (571)272-0017. The examiner can normally be reached on M - F 8:30AM - 5:30PM, Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas, can be reached at 571-270-1836. Information regarding the status of an application, whether published or unpublished, may be obtained from the “Patent Center” system. For more information about the Patent Center system, see https://patentcenter.uspto.gov/
/William (Bill) Bunker/
U.S. Patent Examiner
AU 3691
(571) 272-0017 - office
william.bunker@uspto.gov
December 6, 2025
APPENDIX
Previous Actions in this Prosecution
Repeated for completeness of the record.
This is a CONTINUATION utility application with a claim of priority to a PCT Application and six (6) prior filed provisional applications. However, at this time, priority is granted only as to the PCT Application, and earlier priority is withheld until Claims have been solidified and Applicant has established priority to one or more of the provisional applications.
Response to Amendment
2.. An Amendment was filed October 9, 2024 (hereinafter “Amendment”) and has been entered into the record and fully considered. The Amendment was filed in response to a Non-Final Rejection dated May 9, 2024.
Despite the Amendment to the Claims and Applicant’s remarks, the Rejections set forth in the Non-Final Rejection are hereby maintained; although, the Rejection under §103 is based on new grounds necessitated by the Amendment.
An explanation of the maintained Rejections and a response to Applicant’s arguments are set forth below. The previous Non-Final Rejection is repeated below for completeness of the record. Please see the “Conclusion” section of this Action below for important information regarding responding to this Action.
The independent claims were amended in substantially identical/similar fashion, making it unnecessary to address each Claim. The dependent Claims were not amended in any substantive manner. Therefore, the following explanation of the maintained rejections with regard to Claim 1 is considered explanatory of the Rejection as a whole.
OFFICE NOTE: Interviews are always welcome at any stage of prosecution. Please use the AIR form for scheduling an interview if such is desired. The link for the AIR form is found at the end of this Action.
With regard to the Amendment:
Claims 1 – 8, 10 – 18, and 20 – 23 are pending. Claims 22 – 23 are new. The Claims are examined as follows:
Claim 1 was amended as follows:
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Summary of the Amendment and Broadest Reasonable Interpretation:
Claim terminology is to be given its plain and ordinary meaning to a person of ordinary skill in the art, consistent with the specification. This is true, unless the terms are given a special meaning. See MPEP §2111.01
Here, no special meaning is detected. As noted in the Amendment, the
changes to Claim 1 relate generally to modifying data in a dataset marketplace so as to comply internal/enterprise rules pertaining to privacy and/or protecting the data.
These terms appear – subject to further consideration – to be defined in the specification based on their plain and ordinary meaning.
With regard to §101:
The Examiner notes with gratitude that the independent Claim 1 has been amended in an attempt to advance prosecution. However, with regard to 101, respectfully, the Amendment does not advance prosecution in a material manner.
Thus, the amendments to the Claim do not alter the analysis set for the Non-Final Rejection regarding §101. The only changes are summarized above. The above quoted recitations merely relate to:
receiving data with a request for certain attributes (non-specified),
analyzing data for the attributes,
determining permissions for selling or exchanging the data,
modifying the data,
storing the data,
granting access to the data, and
responding to the request
These limitations are recited at a very high – extremely high – level of generality. There is nothing concrete or substantive about these recitations.
Receiving and analyzing data, and modifying it in accordance with rules, are broad and abstract concepts. Computerized systems very typically and commonly perform such functions.
The Claim provides no specificity in terms of how this is accomplished or what detailed processes are used or whether they are special or used or applied in any special way. Only the mere outcome or result that the data is modified and provided to the requestor is recited. No special functionality is recited. No new computerized components are recited.
These limitations recite results or “outcome” of computer processing without specifying “how” a technical problem is solved. That is, the solution of a technical problem is not reflected in the Claim.
Taking the claim elements separately, the function performed by the computer elements at each step of the process is purely typical of processing data and especially data with privacy restrictions. Using a computer to receive data, analyze it, modify it, and provide it to a requestor are among the most basic functions of a computer. Without greater specificity as to “how” certain functions solve a technical problem, the currently recited limitations can be achieved by any general purpose computer without special programming. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of the Claim add nothing that is not already present when the steps are considered separately.
Claim 1 does not, for example, purport to improve the functioning of the computer elements nor does the claim reflect how an improvement in any other technology or technical field is achieved. Thus, Claim 1 amounts to nothing significantly more than instructions to “apply” the abstract idea of generating an AI chatbot to provide an estimate of a home for the purpose of some insurance product using some unspecified, generic algorithm and computer components. Such is not sufficient to integrate a practical application in the abstract idea.
Accordingly, the Rejection is maintained.
With regard to §103:
The newly added citation is the U.S. Patent Publication No. 2019/0137989 to Cella et al. (hereafter “Cella II”). It is prior art by virtue of its publication date in 2019.
It is respectfully submitted that this new reference to Cella II – as noted below – in combination with the previously cited references – teach all of the newly added limitation.
The new reference is Applicant’s own reference and should be very familiar to Applicant. Therefore, the explanations of the maintained Rejection as set forth below is considered sufficient.
The title is: Systems and methods for data collection system including a data marketplace
The Abstract is as follows:
“Systems and methods of a data collection system including a data marketplace in an industrial environment are disclosed. An input interface, in communication with at least one of a data pool and a data stream, may be structured to receive data inputs from or about one or more of a plurality of industrial machines, broker, and execute a data transaction among at least two marketplace participants including setting a price and a marketplace value rating for at least one a plurality of data inputs.” (Emphasis Added)
Thus, Cella II is clearly on point with the claimed invention which relates to a data marketplace for selling datasets for training machine learning model. Furthermore, the Cella II clearly relates a data marketplace where data can be modified and conditioned and provided to requestors. The marketplace is illustrated in Fig. 180 as follows:
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Thus, the datasets are subject to permissions rules and governance polices as taught in 1544-1549. Such rules are discussed at 1557. The sharing of data under privacy restrictions is discussed at 1561. Permission to access data is discussed at 1575-1578. The value/price of the data is determined by the participants in the marketplace as taught at 0016. The modification and presentation of data in accordance with permissions policies is considered to be comprised with the teachings relating to “self-organizing” data marketplace. (See at least [1578].)
NEW GROUNDS OF REJECTION:
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 of this title, 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.
Claims 1 – 8, 10 – 18, and 20 – 23 are rejected under 35 U.S.C. §103 as being unpatentable over Makhija et al. (US 2021/0201236) in view of Cella et al. (US 2021/0342836) and further in view of Cella II (U.S. Patent Publication No. 2019/0137989)
Therefore, despite the Amendments to Claim 1 and Applicant’s remarks, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the combined data marketplace of Makhija in view of Cella, to add the self-organizing data marketplace teachings of Cella II. The motivation to make this modification comes from Makhija. It teaches, as quoted below, that data can be organized and sold to others for training purposes. It would greatly enhance the efficiency and accuracy and value of the system of Makhija to add the teachings of Cella II.
Response to Arguments
3. Applicant's arguments set forth in the Remarks section of the Amendment have been fully considered but they are not persuasive.
With regard to section 101 rejection, Applicant argues, in part, as follows:
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Respectfully, this argument fails on its face. As noted above, the steps recited in this quotation are common computer functions performed by any generic computer without special programming. There is no specificity recited as to how the requested data relates to “protected enterprise data” or how it is stored or classified or accessed. There is no specificity around the analyzing step which – curiously – relates to exchangeable data and yet it is protected data at the same time. There is no recitation of “how” the data is modified nor any details about the governance rules.
Only the outcome or result is recited in the claim. There is no specific recitation of “how” the outcome or result is achieved.
Accordingly, the Claim is a classic example of an “apply it” situation, as explained in the Non-Final Rejection in more detail.
Applicant’s remaining arguments are likewise not persuasive.
The Rejection must be maintained.
As to §103, Applicant’s arguments are moot in view of the new grounds of rejection.
Accordingly, the Rejections are maintained.
For completeness of the record, the following explanation of the previous rejections are repeated:
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) recite(s) receiving a data set, determining whether the data satisfies permission criteria, generating an encoded data set, converting the encoded data by publishing a representation of the data and configuring and interface with access to the data. The exemplary application of the claimed method and device concerns transmitting and displaying information pertaining to digital assets. Therefore, the claim recites a fundamental economic practice which is a “method of organizing human activity” and therefore an abstract idea.
The judicial exception is not integrated into a practical application because the additional elements of a computer and interface system are recited at a high level of generality. The specification does not disclose details in reference to the elements above. Given the broadest reasonable interpretation the Examiner will interpret the embodiments are implemented on “one or more general-purpose computers”. In other words, it is reasonable to infer from applicant’s specification that the above additional elements are generic. Thus, these additional limitations, considered individually and in combination, amount to mere instructions to implement an abstract idea on a general-purpose computer or use the computer as a tool to perform an abstract idea and therefore do not integrate the judicial exception into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims, individually or in combination, do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to generally linking the use of the abstract idea to a particular technological environment. Thus, the generally linking the use of the abstract idea of to a technical environment (i.e. online environment) cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. For these reasons, there is no inventive concept in the claim, and thus it is ineligible.
Dependent claims 2-21 only narrow the abstract idea and do not add significantly more (i.e. an inventive concept) to the abstract idea. The claims are ineligible.
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.
Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Makhija et al. (US 2021/0201236) in view of Cella et al. (US 2021/0342836).
Regarding claim 1, Makhija teaches A computer-implemented method comprising:
receiving, at an access layer controlled by an enterprise, a data set characterizing one or more attributes associated with a group of assets or resources controlled by the enterprise, wherein the access layer corresponds to an intelligence system that hosts exchangeable enterprise assets (Paragraph [0072]-[0077]);
determining, by a permissions system of the access layer, whether the data set satisfies a set of permission criteria indicating a set of governing rules for assets or resources controlled by the enterprise (Paragraph [0077] teaches an access layer to govern who has access to the network);
in response to the data set satisfying the permission criteria, generating, by a data services system associated with the access layer, an encoded data set that satisfies the set of governing rules (Paragraph [0048]);
Makhija does not teach, however, Cella teaches
converting the encoded data set to an exchangeable digital asset by:
publishing a representation of the encoded data set to a digital wallet system of the access layer (Paragraph [0898] teaches access to a digital wallet system); and
configuring an interface system of the access layer with access to the encoded data set represented in the digital wallet system, wherein the interface system is accessible by a third party (Paragraph [0900]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 2, the combination of Makhija and Cella teaches The method of claim 1. Makhija does not teach, however, Cella further comprising assigning a monetary value to the encoded data set that is viewable via the interface system (Paragraph [0920]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 3, the combination of Makhija and Cella teaches The method of claim 2, wherein assigning the monetary value to the encoded data set includes generating an estimated monetary value from valuation data compiled from a set of target consumers (Paragraph [0276]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 4, the combination of Makhija and Cella teaches The method of claim 2, wherein assigning the monetary value to the encoded data set includes:
generating an invite to a set of target consumers for the data set (Paragraph [0276]);
requesting the set of target consumers assign a proposed value to a set of secondary data sets that share one or more characteristics with the data set (Paragraph [0276]); and
determining the monetary value for the encoded data set by statistical inference from the proposed values returned from the set of target consumers (Paragraph [0276]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 5, the combination of Makhija and Cella teaches The method of claim 2, further comprising adjusting the monetary value based on feedback from the enterprise (Paragraph [0276]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 6, the combination of Makhija and Cella teaches The method of claim 5, wherein adjusting the monetary value includes:
generating a feedback request to the enterprise to authorize the monetary value assigned to the encoded data set; and
in response to the feedback request, receiving a message from the enterprise to modify the monetary value of the encoded data set.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 7, the combination of Makhija and Cella teaches The method of claim 1, wherein generating the encoded data set includes partially encoding a portion of the data set that includes information failing to satisfy the set of governing rules (Paragraph [0332] teaches denying access to information).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 8, the combination of Makhija and Cella teaches The method of claim 1, wherein publishing the representation of the encoded data set to the digital wallet system includes publishing the representation of the encoded data set to a hot wallet of the wallet system.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 9, the combination of Makhija and Cella teaches The method of claim 1, wherein publishing the representation of the encoded data set to the digital wallet system includes publishing the representation of the encoded data set to a cold wallet of the wallet system.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 10, the combination of Makhija and Cella teaches The method of claim 1, wherein publishing the encoded data set to the digital wallet system includes publishing the encoded data set to a custodial wallet of the wallet system.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 11, the combination of Makhija and Cella teaches The method of claim 1, wherein the group of resources is enterprise-owned devices (Paragraph [0876]-[0877] teaches machines).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 12, the combination of Makhija and Cella teaches The method of claim 1, wherein the group of resources is production equipment of the enterprise (Paragraph [0876]-[0877] teaches machines).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 13, the combination of Makhija and Cella teaches The method of claim 1, wherein the data set includes logistics information.14. The method of claim 1 wherein the data set includes inventory information (Paragraph [0876]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 14, the combination of Makhija and Cella teaches The method of claim 1 wherein the data set includes procurement information (Paragraph [0285]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 15, the combination of Makhija and Cella teaches The method of claim 1 wherein the data set includes enterprise marketing information (Paragraph [0295] teaches marketing factors).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 16, the combination of Makhija and Cella teaches The method of claim 1 wherein the data set includes client-purchasing information (Paragraph [0028] teaches a client database).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 17, the combination of Makhija and Cella teaches The method of claim 1, wherein the access layer is a network access layer (Paragraph [0295]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 18, the combination of Makhija and Cella teaches The method of claim 1, wherein the enterprise assets are digital assets (Paragraph [0732] teaches digital assets of the assets within the facility).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 19, the combination of Makhija and Cella teaches The method of claim 1, wherein the governing rules are privacy rules (Paragraph [0908] teaches options may include privacy options).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Regarding claim 20, the combination of Makhija and Cella teaches The method of claim 1, wherein the governing rules are prioritization rules (Paragraph [1086]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the system as taught by Makhija to include the digital wallet as taught by Cella for ease and speed of exchanging digital assets.
Conclusion
4. Applicant should carefully consider the following in connection with this Office Action:
A. Finality
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. 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.
B. Search and Prior Art
The search conducted in connection with this Office Action, as well as any previous Actions, encompassed the inventive concepts as defined in the Applicant’s specification. That is, the search(es) included concepts and features which are defined by the pending claims but also pertinent to significant although unclaimed subject matter. Accordingly, such search(es) were directed to the defined invention as well as the general state of the art, including references which are in the same field of endeavor as the present application as well as related fields (e.g. the management and conditioning of datasets for the sale of training datasets in a data marketplace). Indeed, there is a plethora of prior art in these fields.
Therefore, in addition to prior art references cited and applied in connection with this and any previous Office Actions, the following prior art is also made of record but not relied upon in the current rejection:
U.S. Patent Publication No.2020/0250717 to Todd. This reference relates to the concept of proving value of data in a data marketplace.
U.S. Patent Publication No. 2022/0318418 to Goel et al. This reference relates to the concept of a data marketplace.
U.S. Patent Publication No. 2024/0171721 to Peeters. This reference relates to the concept of selling and purchasing data.
U.S. Patent Publication No. 2024/0223615 to Crabtree et al. This reference relates to the concept of crowd-based valuation of data.
U.S. Patent Publication No. 2024/0135402 to Cascio et al. This reference relates to the concept of valuation of data based on crowd sourcing.
PCT Patent Publication No. WO 2019/094729 to Cella et al. This reference relates to the concept of a data marketplace in an industrial energy setting.
Non-Patent Literature to Azcoitia et al., “A Survey of Data Marketplaces and Their Business Models,” ARXIV ID: 2201.04561 2022
C. Responding to this Office Action
In view of the foregoing explanation of the scope of searches conducted in connection with the examination of this application, in preparing any response to this Action, Applicant is encouraged to carefully review the entire disclosures of the above-cited, unapplied references, as well as any previously cited references. It is likely that one or more such references disclose or suggest features which Applicant may seek to claim. Moreover, for the same reasons, Applicant is encouraged to review the entire disclosures of the references applied in the foregoing rejections and not just the sections mentioned.
D. Interviews and Compact Prosecution
The Office strongly encourages interviews as an important aspect of compact prosecution. Statistics and studies have shown that prosecution can be greatly advanced by way of interviews. Indeed, in many instances, during the course of one or more interviews, the Examiner and Applicant may reach an agreement on eligible and allowable subject matter that is supported by the specification.
Interviews are especially welcomed by this examiner at any stage of the prosecution process. Examiner interviews are available via telephone, in-person, an