DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) received on July 27, 2023, has been considered by examiner.
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 claims are not directed to patent eligible subject matter.
Claims 1-20 do fall within at least one of the four categories of patent eligible subject matter because the claims recite a machine (i.e., computer readable storage medium1 and system) and process (i.e., a method).
Although claims 1-20 fall under at least one of the four statutory categories, it should be determined whether the claim wholly embraces a judicially recognized exception, which includes laws of nature, physical phenomena, and abstract ideas, or is it a particular practical application of a judicial exception (See MPEP 2106 I and II).
Claims 1-20 are directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Part I: Step 2A, Prong One: Identify the Abstract Idea
Under step 2A, Prong One of the Alice framework, the claims are analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). The determination consists of a) identifying the specific limitations in the claim that recite an abstract idea; and b) determining whether the identified limitations fall within at least one of the three subject matter groupings of abstract ideas (i.e., mathematical concepts, mental processes, and certain methods of organizing human activity).
The identified limitations of independent claim 19 (representative of independent claims 1 and 10) recite:
a) receive a first hash along with time stamps,
b) wherein the first hash comprises a hash of a branded product and a list of virtual identifications (IDs) which interacted with the branded product in a metaverse, and wherein each of the time stamps corresponds to the time of interaction between each of the virtual ID and the product;
c) receive a hash pre-image;
d) compare the hash pre-image with the first hash;
e) retrieve a list of users associated with the virtual IDs of the first hash;
f) generate tokens, respective ones of the tokens associated with respective ones of the users; and
g) transmit the tokens to a server associated with the branded product
The identified limitations b), d), and f), under their broadest reasonable interpretation, cover commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sale activities or behaviors, and business relations. Nothing in the claim elements precludes the steps from being commercial interactions. For example, the identified limitations b), d), and f) encompass authenticating a branded product by comparing a hash pre-image and first hash, where the first hash comprises a hash of a branded product and virtual IDs that interacted with the branded product in the metaverse, and generating tokens associated with consumers. The claim limitations fall within the Certain Methods of Human Activity groupings of abstract ideas. Thus, the claimed invention recites a judicial exception.
Part I: Step 2A, prong two: additional elements that integrate the judicial exception into a practical application
Under step 2A, Prong Two of the Alice framework, the claims are analyzed to determine whether the claims recite additional elements that integrate the judicial exception into a practical application. In particular, the claims are evaluated to determine if there are additional elements or a combination of elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort designed to monopolize the judicial exception.
As a whole, the additional elements of a), c), e), and g) are mere data gathering and output recited at a high level of generality and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and output. Accordingly, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
Dependent claims 2-9, 11-18, and 20, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
Since these claims are directed to an abstract idea, the Office must determine whether the remaining limitations “do significantly more” than describe the abstract idea.
Part II. Determine whether any Element, or Combination, Amounts to“Significantly More” than the Abstract Idea itself
Under Part II, the steps of the claims, when considered individually and as an ordered combination, do not improve another technology or technical field, do not improve the functioning of the computer itself, and are not enough to qualify as "significantly more". For example, the steps require no more than a conventional computer to perform generic computer functions. Specifically, receiving and transmitting information are well-understood, routine, and conventional activities previously known in the industry. MPEP 2106.05(d)(II) states that “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: Receiving or transmitting data over a network, e.g., using the Internet to gather data, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)). Therefore, based on the two-part Mayo analysis, there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself. Claims 1-20, when considered individually and as an ordered combination, are rejected as ineligible subject matter under 35 U.S.C. 101.
Dependent claims 2-9, 11-18, and 20, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional claims do no recite significantly more than an abstract idea.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kim (KR 2020/0085085 A), Open-type Time Stamp Generating System And The Generating Method Thereof Based On Block Chain Technology
Mayes et al. (US 2022/0121874 A1), Detection of Counterfeit Virtual Objects
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/CHINYERE MPAMUGO/Primary Examiner, Art Unit 3685
1 Claim interpretation affects the evaluation of both criteria for eligibility. For example, in Mentor Graphics
v. EVE-USA, Inc., 851 F.3d 1275, 112 USPQ2d 1120 (Fed. Cir. 2017), claim interpretation was crucial to
the court’s determination that claims to a “machine-readable medium” were not to a statutory category. In
Mentor Graphics, the court interpreted the claims in light of the specification, which expressly defined the
medium as encompassing “any data storage device” including random-access memory and carrier
waves. In this case, Paragraph [0017] of Applicant’s specification discloses, “A "storage device" is any tangible device that can retain and store instructions for use by a computer processor. Without limitation, the computer readable storage medium may be an electronic storage medium, a magnetic storage medium, an optical storage medium, an electromagnetic storage medium, a semiconductor storage medium, a mechanical storage medium, or any suitable combination of the foregoing. Some known types of storage devices that include these mediums include: diskette, hard disk, random access memory (RAM), read-only memory (ROM), erasable programmable read-only memory (EPROM or Flash memory), static random access memory (SRAM), compact disc read- only memory (CD-ROM), digital versatile disk (DVD), memory stick, floppy disk, mechanically encoded device (such as punch cards or pits/lands formed in a major surface of a disc) or any suitable combination of the foregoing. A computer readable storage medium, as that term is used in the present disclosure, is not to be construed as storage in the form of transitory signals per se, such as radio waves or other freely propagating electromagnetic waves, electromagnetic waves propagating through a waveguide, light pulses passing through a fiber optic cable, electrical signals communicated through a wire, and/or other transmission media.” The specification discloses non-transitory storage devices only. Thus, claims 10 and 19 are not directed to a transitory signal per se.
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