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 .
Response to Arguments/Amendments
Regarding rejection of the claims under 35 USC 112(b), the amendments overcome the previous rejections. However, the amendments introduce new issues under 112(b) and are newly rejected below.
Regarding rejection of the claims under 35 USC 101, Applicant submits that the claims are not directed to an abstract idea due to reciting a particular networked mechanism implemented with terminal devices and rooted in computing constraints. The Examiner respectfully disagrees. Under Step 2A Prong One, the additional elements of the claims such as the terminal devices and blockchain are not considered when determining whether the claims recite an abstract idea. Furthermore, supply chain tracking and tracing has long been performed via paper recordkeeping and receipts and is not solely tied to the computer arts. Therefore, the claims remain directed to the abstract idea of supply chain tracing.
Applicant further submits that the alleged abstract idea is integrated into a practical application and amount to significantly more by requiring specific implementation such as managing concealed data via blockchain and maintaining confidentiality. The Examiner respectfully disagrees. Applicant’s arguments hinge on elements disclosed in the specification that are not adequately recited in the claims. The claims recite such elements as the blockchain and concealing data at no more than a high level of generality (merely noting that the concealed data is managed using a blockchain in the preamble and not describing any specific algorithm or process for concealing) that does not require the specific technological benefits of the blockchain or concealment disclosed in the specification. Furthermore, the argued elements do not improve the functioning or the performance of the terminal devices or improve a technical field (e.g. blockchain) but rather improve the abstract idea of supply chain tracing. Therefore, the rejection is maintained.
The Examiner additionally notes that allowability of the claims over the prior art could not be determined due to the clarity and indefiniteness of the claims as noted in the 112(b) rejections below. Furthermore, while a prior art rejection has not been made, the lack of one does not preclude a future rejection under the prior art once such issues have been addressed.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-5 and 7-9 are directed to a method and claim 6 is directed to a non-transitory, computer readable, tangible storage medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites: An information management method for managing concealed data in association with each of a plurality of traders that form a supply chain, the concealed data being managed using a blockchain to which the plurality of traders are able to refer, the method comprising the steps of:
retrieving, with a receipt terminal device in association with each of the plurality of traders, undisclosed information related to a shipping item that is shipped from each of the plurality of traders;
acquiring, with the receipt terminal device in association with each of the plurality of traders, the concealed data by concealing the retrieved undisclosed information;
transmitting, with a particular terminal device in association with a particular trader, a providing request for pre-concealed data in a transmission direction of a transmission route to a receipt terminal device in association with a direct trader that has a business relationship with the particular trader in the supply chain;
when the receipt terminal device that has received the providing request does not store the pre-concealed data, transferring, with the receipt terminal device, the providing request in the transmission direction of the transmission route to the receipt terminal device of another trader that has a business relationship with the direct trader in the supply chain; and
when the receipt terminal device that has received the providing request stores the pre-concealed data, returning, with the receipt terminal device, the pre-concealed data in a reply direction of the transmission route opposite to the transmission direction to the particular terminal device.
(Additional element(s) emphasized in bold)
The above claim describes a process for: retrieving, by an entity in association with a plurality of traders that form a supply chain, undisclosed shipping information; concealing the retrieved undisclosed shipping information; requesting, by a particular trader, pre-concealed data from a direct trader that has a business relationship with the particular trader in the supply chain; when the direct trader does not store the data, transferring, by the direct trader, the request to another trader that has a business relationship with the direct trader in the supply chain; and when the direct trader stores the data, returning, by the direct trader, the data to the particular trader. Therefore, claim 1 is directed to the abstract idea of supply chain tracing which is grouped within the “methods of organizing human activity” grouping under the “commercial or legal interactions” sub-grouping of abstract ideas in prong one of step 2A. Accordingly, the claims recite an abstract idea (See MPEP 2106.04).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04), the additional elements of the claim such as blockchain and terminal devices merely uses computers as tools to perform an abstract idea. The use of blockchain does no more than generally link the abstract idea to a particular field of use (e.g. supply chain databases) due to reciting such element(s) at no more than a high level of generality (e.g. the blockchain is merely a substitute for any generic supply chain database/recordkeeping, including physical records). Finally, the use of processors/computers (terminal devices) as tools to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than computers performing functions that correspond to acts required to carry out the abstract idea. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B (See MPEP 2106.05), the additional elements of blockchain and terminal devices do not amount to significantly more than the abstract idea. As discussed above, taking the claim elements separately, the use of blockchain does no more than generally link the abstract idea to a particular field of use (e.g. supply chain databases) due to reciting such element(s) at no more than a high level of generality (e.g. the blockchain is merely a substitute for any generic supply chain database/recordkeeping, including physical records). Finally, the use of a terminal devices does no more than use computers as tools to automate and/or implement the abstract idea (i.e. “apply it”). Viewed as a whole, the combination of elements recited in the claims merely recites the concept of supply chain tracing using a digital database and computer. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-5 and 7-9 further recite characteristics of data (e.g. types of concealed/pre-concealed data) and the additional elements of concealing/hashing do no more than continue to generally link the abstract idea to a particular field of use (e.g. encryption). Accordingly, the dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
The same analysis pertaining to the abstract idea of tracing and tracking supply chain product information in a supply chain holds true for claim 6 as well, with the additional elements of memory and processor merely using a processor/computer as a tool to implement the abstract idea. Therefore, claim 6 is also not patent eligible.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The terms “a transmission direction of a transmission route” and “a reply direction of the transmission route opposite to the transmission direction” in claims 1 and 6 are relative terms which render the claim indefinite. The terms “a transmission direction of a transmission route” and “a reply direction of the transmission route opposite to the transmission direction” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear in what direction (e.g. upstream, downstream) and in relation to what route (e.g. shipping route) the terms refer to.
Claims 2-5 and 7-9 are also rejected due to their dependence on at least claim 1.
Claims 1 and 6 recite multiple instances of “receipt terminal device” and it is unclear whether each instance refers to the same, singular receipt terminal device or multiple, different receipt terminal devices. For example, it is unclear if the receipt terminal device in the following limitations, “retrieving, with a receipt terminal device in association with each of the plurality of traders” and “providing request for pre-concealed data in a transmission direction of a transmission route to a receipt terminal device in association with a direct trader that has a business relationship with the particular trader in the supply chain” is a singular terminal or two different terminals. Similarly, it is unclear if the receipt terminal device in the following limitations, “when the receipt terminal device that has received the providing request does not store the pre-concealed data, transferring, with the receipt terminal device, the providing request in the transmission direction of the transmission route to the receipt terminal device of another trader that has a business relationship with the direct trader in the supply chain” refers to the terminal(s) above or a third different terminal. Therefore, the scope of the claims is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989))
Claims 2-5 and 7-9 are also rejected due to their dependence on at least claim 1.
Similarly, claims 7-8 continue to recite “receipt terminal device” and it remains unclear to which receipt terminal device of claim 1 they refer to. The Examiner suggests amending the claims to clearly delineate the terminal devices from one another (e.g. first terminal device, second terminal device, etc.).
Claim 6 includes limitations directed to “receipt terminal device(s)” and “particular terminal device.” However, the claim is explicitly directed to “A non-transitory, computer readable, tangible storage medium storing an information management program...executed by at least one processor.” It is unclear whether the at least one processor is the processor of the receipt terminal device(s), the particular terminal device, or another separate device. Therefore, as the “receipt terminal device(s)” and “particular terminal device” are not a part of the non-transitory computer readable tangible storage medium, the scope of claim 6 is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).
Claim 7 recites, “generating...a hash value, as the concealed data, by inputting the retrieved undisclosed information into a hash function.” It is unclear whether this limitation narrows the “acquiring” step of claim 1 or is performed separately from/in addition to the “acquiring” step. Therefore, the claim is indefinite.
Similarly, claim 8 recites, “generating...the concealed data for each of the plurality of information items.” As above, it is unclear whether this limitation narrows the “acquiring” step of claim 1 or is performed separately from/in addition to the “acquiring” step. Furthermore, it is unclear whether the generating step generates a singular concealed data as recited in claim 1 or a plurality of concealed data.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kawasaki (US 20200202287) generally discloses a process for requesting supply chain information by forwarding information obtainment requests upstream through the supply chain using a trace-back sequence (see Fig. 1, 0036-0052).
Gou (US 20230196351) generally discloses a method and apparatus for tracing a transaction on a blockchain upstream via intermediate blockchain nodes, smart contracts, and encryption (see Fig. 1, Fig. 5, 0066-0079).
Hayati et al. ("Blockchain Based Traceability System in Food Supply Chain") generally discloses a traceability system and algorithms for tracing blockchain transactions in a supply chain.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR RAK whose telephone number is (571)270-1575. The examiner can normally be reached Monday-Friday 11:00-7:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571)-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
Prosecution Insights