DETAILED ACTION
Response to Amendment
The amendment filed on July 14, 2025 has been entered. Applicant has: amended claims 1, 3, 4, and 8-12; canceled claims 6 and 7; and added claims 14-22. Claims 1-5 and 8-22 are now pending, have been examined and currently stand rejected.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/14/2025 is in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
However, due to the excessively lengthy Information Disclosure Statements submitted by applicant, and in accordance with MPEP 609.04(a), applicant is encouraged to provide a concise explanation of why the information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability. See 37 CFR § 1.56 Duty to Disclose Information Material to Patentability.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
generating, by “the access layer”, a set of asset controls for the enterprise data set […], in claim 1;
embedding, by “the access layer”, the set of asset controls for the enterprise data set into the enterprise data set, in claim 1;
converting, by “the access layer”, the enterprise data set […], in claim 1;
publishing, by the access layer, the exchangeable digital asset to a digital wallet system , […], in claim 1;
identifying, by “the access layer”, the published exchangeable digital asset as relevant to the asset request based on a classification generated by the intelligence system, in claim 1;
determining, by “the access layer”, whether the asset request and the requesting entity comply with the set of asset controls, in claim 1;
generate, by the access layer, a set of asset controls for the enterprise data set, in claim 13;
embed, by the access layer, the set of asset controls for the enterprise data set into the enterprise data set, in claim 13;
convert, by the access layer, the enterprise data set […], in claim 13;
publish, by the access layer, the exchangeable digital asset to a digital wallet system, […], in claim 13;
identify, by the access layer, the published exchangeable digital asset as relevant to the asset request based on a classification, in claim 13; and
determine, by the access layer, whether the asset request and the requesting entity comply with the set of asset controls, in claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-5 and 8-22 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1-5 and 8-22: The claim limitations identified in the 35 U.S.C. 112(f) Claim Interpretation section, seen above, invoke 35 U.S.C. 112(f), however applicant’s disclosure fails to disclose the corresponding structure, material, or acts for performing the entire claimed function(s).
The structure corresponding to the 35 U.S.C. 112(f) claim limitations that are computer-implemented specialized functions must include a general purpose computer or computer component along with the algorithms that the computer uses to perform each claimed specialized function.
With respect to the “access layer”, Applicant’s disclosure indicates that “In network computing, an access layer generally refers to one or more layers in an information technology infrastructure that provides access to the infrastructure. The overarching purpose of the access layer is to grant a user, for example via a system or a device, access to resources of the infrastructure, such as network resources, storage resources, processing resources, and others. For example, in a wide area network (WAN) environment, a network access layer provides access to the corporate network across wide-area technology, such as Frame Relay, Multiprotocol Label Switching (MPLS), Integrated Services Digital Network, leased lines, digital subscriber lines (DSL) over traditional telephone lines or coaxial cable. Since the access layer provides local and remote access to a network, the access layer may function as a concentration point where remote users (e.g., clients, partners, etc.) meet local users or infrastructure.” Specification [3131]. The disclosure further indicates that “Protocols in the access layer provide a means for one or more systems to deliver data to other devices or systems connected to a set of infrastructure, such as by a communication network. For instance, these protocols may provide a means to deliver data from a private network to a public network. In this sense, the access layer may be considered an interface that is public or client-facing while also being private-facing.” Specification [3132].
While the disclosure describes the access layer in terms of its functionality (e.g., what it could be used for), and/or by using other generic placeholders (e.g., an access layer generally refers to one or more layers in an information technology infrastructure), Applicant’s disclosure fails to describe what structure, if any, makes up an “access layer.” Since the disclosure fails to adequately describe the recited “access layer”, Examiner is unable to determine that Applicant was in possession of the claimed invention as currently recited. In view of the details provided above, Examiner contends that Applicant’s disclosure fails to disclose the corresponding structure or material for performing the entire claimed function(s) and to clearly link the structure or material to the function(s). Accordingly, claims 1 and 13 are rejected under 35 U.S.C. 112(a) because they fail to comply with the written description requirement. Claims 2-5, 8-12, and 14-22 are also rejected under 35 U.S.C. 112(a) based on their dependency to claim 1 or 13.
Regarding Claims 1 and 13: Claim 1 recites, in part, “converting, by the access layer, the enterprise data set with the embedded set of asset controls into an exchangeable digital asset.” Claim 1 also recites a step, with various sub-steps, that publishes the exchangeable digital asset to a wallet system, and a step that configures the access layer so that a limited set of digital assets and resources can be accessed by the requesting entity. Applicant’s disclosure indicates that “the EAL 23300 converts the encoded data set to an exchangeable digital asset. This conversion may occur by the EAL 23300 publishing the encoded data set to the wallet system 23350 and configuring the interface system 23310 with access to the encoded data set in the wallet system 23350 such that market participants 23110 can access and/or request transactions for the encoded data set.” Specification [3254].
Accordingly, in view of Applicant’s disclosure, the step of “converting, by the access layer, the enterprise data set with the embedded set of asset controls into an exchangeable digital asset” comprises the “publishing” step and the step of “configuring the access layer as a peer-to-peer access layer” (i.e., converting comprises publishing and configuring). Phased differently, the disclosed invention does not appear to actually convert/modify the data set in the traditional sense of converting data, rather, according to the Specification, the data set is merely published and a portion of a system is configured so that the data can be accessed. Examiner contends that Applicant’s disclosure fails to describe any other actions/steps associated with the “conversion” of the enterprise data set. Since the disclosure fails to describe any other actions/steps associated with the “converting” step, and since the disclosure only describes the conversion process occurring a single time, the disclosure fails to support an embodiment that “convert[s], by the access layer, the enterprise data set with the embedded set of asset controls into an exchangeable digital asset” and “publish[es], by the access layer, the exchangeable digital asset to a digital wallet system, wherein publishing the exchangeable digital asset comprises: storing the exchangeable digital asset within a private data structure managed by the digital wallet system of the access layer; and configuring the digital wallet system to provide access to the exchangeable digital asset using a cryptographic key pair” and “configure[es] the access layer as a peer-to-peer access layer between the requesting entity and an additional transacting entity associated with the asset request.”
Independent claim 13 recites substantially similar limitations and contains the same written description issue, accordingly claim 13 is also rejected under 35 USC 112(a) for the same reasons and rational stated above. Claims 2-5, 8-12 and 14-22 are also rejected under 35 USC 112(a) based on their dependency to claim 1 or 13.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-5 and 8-22 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding Claims 1-5 and 8-22: The claim limitations identified in the 35 U.S.C. 112(f) Claim Interpretation section, seen above, invoke 35 U.S.C. 112(f), however the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function(s) and to clearly link the structure, material, or acts to the function(s). It is noted that for computer-implemented means-plus-function limitations, the corresponding structure includes both the computer and the algorithm that performs the recited functions. That is, specialized functions must be supported in the specification by the computer and the algorithm that the computer uses to perform the claimed specialized function. However, a non-specialized function requires no more support in the specification than a general-purpose computer or a known computer component that is recognized by those of ordinary skill in the art as typically including structure and non-specialized programming to perform the claimed function. Generally, it is only in rare circumstances that an algorithm need not be disclosed. MPEP § 2181 (ll)(B). Rare circumstances are when functionality is coextensive with a microprocessor such as the functions of receiving, storing, or processing of data. Id.
With respect to the “access layer”, Applicant’s disclosure indicates that “In network computing, an access layer generally refers to one or more layers in an information technology infrastructure that provides access to the infrastructure. The overarching purpose of the access layer is to grant a user, for example via a system or a device, access to resources of the infrastructure, such as network resources, storage resources, processing resources, and others. For example, in a wide area network (WAN) environment, a network access layer provides access to the corporate network across wide-area technology, such as Frame Relay, Multiprotocol Label Switching (MPLS), Integrated Services Digital Network, leased lines, digital subscriber lines (DSL) over traditional telephone lines or coaxial cable. Since the access layer provides local and remote access to a network, the access layer may function as a concentration point where remote users (e.g., clients, partners, etc.) meet local users or infrastructure.” Specification [3131]. The disclosure further indicates that “Protocols in the access layer provide a means for one or more systems to deliver data to other devices or systems connected to a set of infrastructure, such as by a communication network. For instance, these protocols may provide a means to deliver data from a private network to a public network. In this sense, the access layer may be considered an interface that is public or client-facing while also being private-facing.” Specification [3132].
While the disclosure describes the access layer in terms of its functionality (e.g., what it could be used for), and/or by using other generic placeholders (e.g., an access layer generally refers to one or more layers in an information technology infrastructure), Applicant’s disclosure fails to describe what structure, if any, makes up an “access layer.” Since the disclosure fails to adequately describe the recited “access layer”, Examiner is unable clearly determine what structure, if any, makes up the recited “access layer.” Since the disclosure fails to disclose the corresponding structure (i.e., computer and algorithm), material, or acts for performing the entire claimed function(s) and to clearly link the structure, material, or acts to the various functions claims 1 and 13 are determined to be indefinite and are therefore rejected under 35 U.S.C. 112(b). Claims 2-5, 8-12, and 14-22 are also rejected under 35 U.S.C. 112(b) based on their dependency to claim 1 or 13.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding Claim 2: Claim 2 recites the limitation “the transacting entity” as in “wherein the transacting entity includes a plurality of entities forming a multilateral connection between the requesting entity and the plurality of entities.” There is insufficient antecedent basis for this limitation in the claim. The lack of antecedent basis also makes the claim unclear because it is unknown whether “the transaction entity” is referring to the “additional transacting entity” recited in claim 1, or if this is a different transacting entity. As best understood, “the transacting entity” in claim 2 is the same as “the additional transacting entity” in claim 1. In order to further prosecution, the claim has been interpreted in this manner.
Regarding Claim 13: Claim 13 recites a system comprising at least one processor and memory storing instructions that, when executed by the at least one processor, cause the system to perform various steps. Claim 13 becomes unclear because some steps are recited as being performed by the at least one processor and by the access layer (e.g., cause the system to: generate, by the access layer, a set of asset controls […]; embed, by the access layer, the set of asset controls […]; convert, by the access layer, the enterprise data set […]; publish, by the access layer, the exchangeable digital asset […]; etc.). It is unclear what relationship, if any, the claimed system has with the recited “access layer”, accordingly it is unclear/unknown which steps are actually performed by the claimed system. Claims 14-22 are also rejected under 35 U.S.C. 112(b) based on their dependency to claim 13.
Regarding Claim 16: Claim 16 recites, in part, “wherein the instructions, when executed by the at least one processor, further cause the system to generate, using a data processing system of the access layer, an encrypted message packet for communication using the secure peer-to-peer connection.” The scope of this limitation is unclear because it is unknown/unclear which entity/system is actually generating the encrypted message packet and what role, if any, “the instructions” have in the generation of the encrypted message packet. For example, it is unclear if “the instructions” merely instruct “the system” to request an encrypted message packet from “the data processing system of the access layer”, or if “the system” is actually generating the encrypted message packet. Examiner notes that “the data processing system of the access layer” is not part of the claimed system (i.e., not part of the claimed invention), accordingly any actions performed by “the data processing system of the access layer” would be outside the scope of the claimed invention.
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 1-5 and 8-22 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined at Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that claims 1-5 and 8-12 are directed to the statutory category of a process, and claims 13-22 are directed to the statutory category of a machine. Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent claim 1, the method claim, is selected as being representative of the independent claims. Independent claim 1 recites:
A computer-implemented method comprising:
receiving an enterprise data set at an access layer;
generating, by the access layer, a set of asset controls for the enterprise data set, wherein at least one control parameter of the set of asset controls is generated by an intelligence system based on historical data related to usage of similar assets;
embedding, by the access layer, the set of asset controls for the enterprise data set into the enterprise data set;
converting, by the access layer, the enterprise data set with the embedded set of asset controls into an exchangeable digital asset;
publishing, by the access layer, the exchangeable digital asset to a digital wallet system, wherein publishing the exchangeable digital asset comprises:
storing the exchangeable digital asset within a private data structure managed by the digital wallet system of the access layer; and
configuring the digital wallet system to provide access to the exchangeable digital asset using a cryptographic key pair;
receiving, at the access layer, an asset request from a requesting entity, wherein the asset request indicates a request for a data set;
identifying, by the access layer, the published exchangeable digital asset as relevant to the asset request based on a classification generated by the intelligence system;
determining, by the access layer, whether the asset request and the requesting entity comply with the set of asset controls; and
in response to determining compliance with the set of asset controls, configuring the access layer as a peer-to-peer access layer between the requesting entity and an additional transacting entity associated with the asset request, wherein the configuring comprises provisioning a set of resources for the peer-to-peer access layer, wherein the peer-to-peer access layer provides the additional transacting entity with access to a limited set of digital assets and resources of the requesting entity.
Here, the claims recite the abstract idea, or combination of abstract ideas, of receiving data, associating the data with a set of rules/parameters, storing a modified version of the data, and, in response to a request for data, providing access to one or more sets of data (e.g., a set of digital assets) based on satisfying the set of rules/parameters associated with the data. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a commercial or legal interaction (e.g., asset management based on rules/conditions). The tying of this concept to a particular environment (e.g., a wallet environment, an access layer, etc.) fails to move the claims beyond a general link of the use of the abstract idea in a particular environment. Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. Furthermore, the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F .3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear that the claim(s) focus on an abstract idea, and not on any improvement to technology and/or a technical field. It is further noted that, the performance of the one or more process steps using a generic computer component (e.g., computer-implemented, an access layer, at least one processor, a memory, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Here, claim 1 recites the additional elements of: a computer (i.e., computer-implemented); and an access layer. Independent claim 13 recites the additional elements of: at least one processor; a memory storing instructions; and an access layer. The computer, access layer, processor(s) and memory are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component and/or system. See MPEP 2106.05(f). Examiner finds no indication that the computer component(s) itself/themselves is/are improved, or that there is an improvement to some other technology. Examiner finds no indication in the Specification (See e.g., Published Specification [0020]; [3131-3132]), that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). They do not transform or reduce a particular article to a different state or thing. They do not apply the abstract idea in a meaningful way beyond merely linking it to a particular technological environment. Therefore, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015).
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of using various computing components (e.g., a computer, an access layer, a processor, etc.) to implement the abstract idea amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 1 and 13 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2-5, 8-12 and 14-22 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea. Dependent claim 2 further refines the abstract idea by describing characteristics about one of the entities involved in the abstract idea. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 3 and 15 further refine the abstract idea by describing what type of connection is used to share the data/asset. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 4 and 16 further refine the abstract idea by describing the type of data (e.g., encrypted data) shared over the established connection. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 5 and 17 further refine the abstract idea by describing characteristics about the access layer. The fact that the access layer is a particular type of access layer fails to affect how any of the positively recited steps are performed. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 8-10 and 18-20 further refine the abstract idea by describing characteristics about the asset (e.g., where it is available). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 11 and 21 further refine the abstract idea by describing characteristics about the peer-to-peer access layer. Claims 11 and 21 also describes an intended use the established peer-to-peer access layer (e.g., so that the other transacting part can access the limited set of digital assets and resources). These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claims 12 and 22 further refine the abstract idea by describing the receiving of rules pertaining to one or more assets and resources. These claims fail to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 14 further refines the abstract idea by describing characteristics about one of the entities involved in the abstract idea, and by describing, at a high level of generality, how the connection to share the asset(s)/data is configured. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible. Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Relevant Prior Art Not Relied Upon
Examiner has performed a thorough search of the prior art based on the claimed subject matter, and is unable to find any references that would reasonably teach the combination of features recited in independent claims 1 and 13.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Gaur et al. (US 2023/0092436 A1) discloses receiving, at the access layer (i.e., at a portion of software associated with system 100), an asset request (i.e., a request for executing a transaction) from a requesting entity (i.e., requesting client). Gaur [0003]; [0037]; [0044-0045]; [0052]; [0083]; Fig. 4A step 401. Gaur discloses determining whether a request complies (i.e., is safe enough, based, in part, on a value/score being above a threshold) with the asset controls (i.e., risk value/score), and in response to determining compliance with the set of asset controls, [performing an action] (e.g., automate/authorize/send/initiate the transaction) associated with the asset request. Gaur [0039]; [0042]; [0044-0045]; [0048-0049]; [0078]; [0084-0085]; Fig. 4A.
Seifert et al. (US 2024/0250931 A1) discloses, in response to determining compliance with the set of asset controls (i.e., in response to satisfying one or more access rules), configuring the access layer as a peer-to-peer access layer (i.e., peer-to-peer connection) between the requesting entity (i.e., entity) and an additional transacting entity (i.e., an entity which may gain access to the structure data) associated with the asset request (i.e., associated with the access request), wherein the peer-to-peer access layer provides the additional transacting entity (i.e., provides the entity which may gain access to the structure data) with access to a limited set of digital assets and resources (i.e., to specified data in the data structure) of the requesting entity (i.e., of the entity). Seifert [0017]; [0024]; [0028]; [0044]; [0053-0062]; [0139].
Lally et al. (US 2023/0315872 A1) discloses systems, methods, and devices for conditionally controlling access, across a computer network by decentralized client computers, to private information pertaining to a subject stored in a decentralized database. The apparatus comprises a client computer processor and memory to store instructions that, when executed or initiated by the client computer processor, cause the client computer processor to facilitate an access-control transaction, including: embedding with the private information one or more access-control objects containing an independently-verifiable digital representation of consent by the subject and associated computer instructions to control access to the private information based on consent of the subject; receiving requests for private information and in response to the requests, determining from the one or more access-control objects whether to authorize access to the private information; and selectively granting authorization to access the private information and then embedding with the private information, a digital representation of the access-control transaction traceable to the consent of the subject. Lally [0007].
Summer (US 2023/0107805 A1) discloses a system and method for providing secure access to an asset, for example, in the form of a cryptographic key needed to perform cryptographic operations, such as signing transactions of digital assets. The system makes use of three interrelated data objects; a policy object that defines access control rules, one or more online vault objects that are linked to the policy object, and one or more assets that are linked to one of the vault objects. The policy object and the assets are all created in a cold storage environment, with their integrity being protected using a key-based cryptographic technique. The vault object is created in an online environment, wherein a cryptographic hash is used to generate a vault ID, with specific data fields within the vault object being used as inputs to the hash function. Summer Abstract.
Vrancken et al. (US 2012/0102566 A1) discloses a method for providing access to private digital content owned by an owner and installed on a content server, wherein a content manager server has a number of clients potentially interested in the private content. The method comprises obtaining a delegate token from the content server; receiving a query for the private digital content from a client of the number of clients of the content management server; and providing said client with a token using the delegate token enabling the client to access the private content. Vrancken Abstract.
Ricotta et al. (US 2020/0389309 A1) discloses the use of an owner consent contract, which is a type of smart contract, in which a data owner grants, to other entities or a group of entities (e.g., individuals, companies, institutions, providers, etc.) having access to the blockchain, read-only access to assets (i.e., data) that are owned by the owner and stored in the blockchain. The consent contract answers the questions: "Which entity, if any, should get access to my data?" and "Which elements of that data should they see?" During a query performed on the blockchain, explicit rights determined by an owner consent contract are enforced in view of implicit rights (i.e., those inherent to the owner). Ricotta [0010].
Accordingly, while certain aspects of claims 1 and 13 appear to be known in the art, the prior art, taken either individually or in reasonable combination with other prior art, fails to disclose, suggest, teach, or render obvious the particular combination of steps or elements as recited in claims 1 and 13.
Examiner notes that the claims would still need to overcome any other outstanding rejections (e.g., 35 U.S.C. 112, 35 U.S.C. 101) before a notice of allowance could be issued.
Response to Arguments
Claim Objections
Claims 11 and 12 were objected to for various antecedent basis issues. Applicant’s amendments have corrected the previously identified issues, accordingly the prior claim objections are withdrawn.
Claim Rejections – 35 U.S.C. § 112(b)
Claims 1-12 were rejected under 35 U.S.C. 112(b) as being indefinite. Applicant’s amendments corrected the issues identified in claims 1 and 3, however the amendments did not resolve the antecedent basis issue identified in claim 2. Examiner has updated the 112 rejections to address the remaining issues.
Claim Rejections – 35 U.S.C. § 101
Applicant argues that even if the claims were considered to be directed to an abstract concept such as managing access to an asset (which Applicant does not concede), the claim integrates any such concept into a specific, practical application that improves the functioning of the computer system. Amendment, pp. 8-9. Examiner respectfully disagrees. Examiner fails to find any indication that the claimed invention improves the functioning of the computer, rather the claimed invention continues to merely use a computer as a tool to implement the abstract idea. Additionally, applicant points to the embedding of data/controls into the data set as an indication of a possible improvement. Amendment, pp. 8-9. However, this argument is not persuasive as the manner of embedding these controls is recited at a high level of generality in the claims and in the disclosure (see e.g., Specification [3254]), accordingly any alleged improvement is not found in the claimed invention.
Applicant argues that, under Step 2B of the Alice/Mayo framework, the amended claims recite additional elements that, as an ordered combination, amount to significantly more than any alleged abstract idea. Amendment, p. 10. Specifically, applicant contends that the amended claims recite a specific, unconventional combination of technical elements that is necessarily rooted in computer technology and directed to solving a problem that specifically arises in the realm of computer networks. Id. Examiner respectfully disagrees. Examiner acknowledges that the claimed invention may be placed, or performed in, a particular environment (e.g., an environment with enterprise data, an environment using a digital wallet system, etc.,), however Examiner contends that protecting data and/or selectively sharing data is not only a problem rooted in computer technology.
Applicant indicates that the inventive concept is found in the ordered combination of an intelligence system that does not merely apply rules, but generates them based on historical data, a data transformation process that creates a new digital asset by embedding the controls into the data set, and an access layer configuration where the access layer itself is configured for secure peer-to-peer layer exchanges by provisioning a specific set of resources. Amendment, pp. 9-10. Examiner respectfully disagrees. Examiner initially notes that several of the elements identified by applicant are not additional elements, rather they are part of the abstract idea. Elements that are part of the abstract idea cannot integrate the abstract idea into a practical application or amount to significantly more than the abstract idea. Additionally, even if these elements were considered to be additional elements (which Examiner does not concede), the elements noted in applicant remarks are recited at a high level of generality. For example, while the claim indicates that it generates a set of access controls, the claim fails to provide any indication how it does so other than indicating, at a high level, that it uses historical data related to usage of similar assets and an intelligence system. This amounts to nothing more than feeding some historical data into a black box and received a set of rules/parameters. The embedding step also lacks any particular details (e.g., how the embedding procedure is performed), and the claimed invention fails to explicitly utilize the embedded data. As per the configuring of the access layer, this procedure is also recited at a high level of generality and merely amounts to making certain data/assets available to a qualified entity.
Applicant argues that the Office Action's argument that the claims are ineligible because they allegedly lack "specialized hardware” is incorrect. Amendment, p. 10. Examiner respectfully disagrees. Examiner notes that a claim does not require “specialized hardware” to be eligible under 35 USC 101, however if a claim does recite an abstract idea, as it does here, applying the judicial exception with, or by the use of, a particular machine can be an indication that the abstract idea is integrated into a practical application and/or that the claim recites additional elements that amount to an inventive concept. See MPEP 2106.05(b).
Applicant argues that the claim amounts to significantly more than merely linking the alleged abstract idea to a particular technological environment. Amendment, p. 11. Examiner respectfully disagrees. Examiner acknowledges that the claim recites several steps, however many of these steps are part of the abstract idea, accordingly they cannot integrate the abstract idea into a practical application or provide significantly more. At best the claim may recite a new abstract idea, however a claim to a new abstract idea is still not eligible under 35 USC 101.
For the above reasons, and for those set forth in the 35 U.S.C. § 101 rejection seen above, all claims remain rejected under 35 U.S.C. § 101.
Claim Rejections – 35 U.S.C. § 103
Applicant argues that the amended claims recite features that are not present in the cited references. Amendment, pp. 11-12. Specifically, Applicant contends that the cited references fail to disclose "embedding, by the access layer, the set of asset controls for the enterprise data set into the enterprise data set" and a "converting" step that operates on "the enterprise data set with the embedded set of asset controls." Id. Examiner agrees. Examiner has performed an updated prior art search based on the amended claim language and is unable to find any references, or reasonable combination of references, that disclose/teach/suggest all of the features of amended claim 1, and similar features found in independent claim 13. Accordingly, the 35 USC 103 rejection is withdrawn.
Conclusion
Applicant's amendmen