DETAILED ACTION
Claims 1 and 11 have been amended.
Claims 2-10 and 12- 20 are originals.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 18, 2026 has been entered.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 1 and 11 are directed towards, “such that diversity data processing is performed on the sidechain without burdening the blockchain with diversity data storage, wherein the smart contract included in the blockchain data entry on the main blockchain.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture, or composition of matter? MPEP 2106.03.
Per Step 1, claims 1-10 is to a method (i.e., a process), claim 11-20 to a system (i.e., a machine). Thus, the claims are directed to statutory categories of invention. However, the claims are rejected under 35 U.S.C. 101 because they are directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The analysis proceeds to Step 2A Prong One.
Step 2A Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04.
The abstract idea of claim 1;
A method for reporting diversity compliance for participants in a blockchain network, comprising: receiving, by a receiver of a blockchain node in the blockchain network, diversity data associated with a registered participant in a main blockchain associated with the blockchain network, wherein the main blockchain includes a blockchain data entry including a smart contract; generating, by a processor of the blockchain node, a new block, wherein the new block includes at least one blockchain data entry and the at least one blockchain data entry includes at least the diversity data and identification data associated with the registered participant; and transmitting, by a transmitter of the blockchain node, the generated new block to a plurality of additional nodes in the blockchain network, wherein the plurality of additional nodes confirms the generated new block for addition to a sidechain to the main blockchain; publishing, by the blockchain node, the generated new block to the sidechain, wherein (i) the sidechain communicates with the blockchain via across-chain communication mechanism, and (ii) the smart contract included in the blockchain data entry on the blockchain is configured to monitor the cross-chain communication mechanism from the main blockchain to detect the publishing of the generated new block to the sidechain, such that diversity data processing is performed on the sidechain without burdening the blockchain with diversity data storage; and detecting, by the smart contract included in the blockchain data entry on the main blockchain, a publication event including the publishing of the new block to the sidechain, wherein in response to detecting the publishing of the new block to the sidechain, the smart contract self-executes, and wherein self-execution of the smart contract includes: analyzing, by the smart contract, additional diversity data included in each of one or more blockchain data entries stored in the sidechain that include the identification data associated with the registered participant, generating, by the smart contract, a reporting message based on the analyzed additional diversity data, and initiating, by the smart contract, transmission of the generated reporting message to one or more external computing systems.
The abstract idea of claim 11;
A system for reporting diversity compliance for participants in a blockchain network, comprising: the blockchain network; a blockchain node in the blockchain network; a plurality of additional nodes in the blockchain network; and one or more external computing systems, wherein the blockchain node includes a receiver receiving diversity data associated with a registered participant in a main blockchain associated with the blockchain network, wherein the main blockchain includes a blockchain data entry including a smart contract, a processor generating a new block, wherein the new block includes at least one blockchain data entry and the at least one blockchain data entry includes at least the diversity data and identification data associated with the registered participant, and a transmitter transmitting the generated new block to the plurality of additional nodes in the blockchain network, wherein the plurality of additional nodes confirm the generated new block for addition to a sidechain to the blockchain, wherein the processor is further configured to publish the generated new block to the sidechain, wherein (i) the sidechain communicates with the blockchain via across-chain communication mechanism, and (ii) the smart contract included in the blockchain data entry on the blockchain is configured to monitor the cross-chain communication mechanism from the main blockchain to detect the publishing of the generated new block to the sidechain, such that diversity data processing is performed on the sidechain without burdening the blockchain with diversity data storage, wherein the smart contract included in the blockchain data entry on the main blockchain detects a publication even including the publishing of the new blockchain to the sidechain and, in response to detecting the publishing of the new block to the sidechain, the smart contract self-executes, and wherein self-execution of the smart contract includes: analyzing, by the smart contract, additional diversity data included in each of one or more blockchain data entries stored in the sidechain that include the identification data associated with the registered participant, generating, by the smart contract, a reporting message based on the analyzed additional diversity data, and initiating, by the smart contract, transmission of the generated reporting message to the one or more external computing systems.
The abstract idea steps italicized above are those which could be performed mentally, including with pen and paper. The steps describe, at a high level, reporting diversity compliance for participants in a blockchain network. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, including transmitting, generating, evaluations, judgements, and/or opinions, then it falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. Accordingly, the claim recites an abstract idea in a computer environment.
Additionally and alternatively, the abstract idea steps italicized above relate to a commercial activity utilizing a smart contract as a transaction element for providing a detection, analysis, and output for the reporting message based on diversity data, which constitutes a process that, under its broadest reasonable interpretation, covers commercial activity. This is further supported by [0006-0007] of applicant’s specification as filed. If a claim limitation, under its broadest reasonable interpretation, covers commercial interactions, including contracts, legal obligations, advertising, marketing, sales activities or behaviors, and/or business relations, then it falls within the Certain Methods of Organizing Human Activity – Commercial or Legal Interactions grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
This judicial exception is not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f).
Claim 1 recites the following additional elements: a blockchain network, a blockchain node in the blockchain network, diversity data, in a main blockchain associated with the blockchain network, main blockchain includes a blockchain data entry including a smart contract; a processor of the blockchain node, a new block, the new block, one blockchain data, one blockchain data, diversity data and identification data, a transmitter of the blockchain node, additional nodes in the blockchain network, a sidechain to the main blockchain; blockchain node, new block to the sidechain, the sidechain communicates with the blockchain via across-chain communication mechanism, and (ii) the smart contract included in the blockchain data entry on the blockchain is configured to monitor the cross-chain communication mechanism from the main blockchain to detect the publishing of the generated new block to the sidechain, such that diversity data processing is performed on the sidechain, blockchain with diversity data storage; smart contract, blockchain data, blockchain, new block to the sidechain, new block to the sidechain, the smart contract, self-execution of the smart contract, smart contract, additional diversity data, one or more blockchain data, sidechain, identification data, the smart contract, additional diversity data, by the smart contract, one or more external computing systems.
Claim 11 recites the following additional elements: the blockchain network; a blockchain node in the blockchain network; a plurality of additional nodes in the blockchain network; and one or more external computing systems, wherein the blockchain node; a main blockchain, a blockchain data, a smart contract, a processor, a new block, diversity data and identification data, a transmitter, of additional nodes in the blockchain network, a sidechain to the blockchain, the blockchain data entry on the blockchain, the main blockchain, the blockchain with diversity data storage, new block to the sidechain, one or more external computing systems.
These elements are merely instructions to apply the abstract idea to a computer, per MPEP 2106.05(f). Applicant has only described generic computing elements such as generic blockchain/sidechain tech to implement the reporting of diversity data in their specification, as seen in [0055- 0058] of applicant’s specification as filed, for example.
Further, the combination of these elements is nothing more than a generic computing system applied to the tasks of the abstract idea. Because the additional elements are merely instructions to apply the abstract idea to a generic computing system, they do not integrate the abstract idea into a practical application, when viewed in combination. See MPEP 2106.05(f).
Therefore, per Step 2A Prong Two, the additional elements, alone and in combination, do not integrate the judicial exception into a practical application. The claim is directed to an abstract idea.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B involves evaluating the additional elements to determine whether they amount to significantly more than the judicial exception itself.
The examination process involves carrying over identification of the additional element(s) in the claim from Step 2A Prong Two and carrying over conclusions from Step 2A Prong Two pertaining to MPEP 2106.05(f).
The additional elements and their analysis are therefore carried over: applicant has merely recited elements that facilitate the tasks of the abstract idea, as described in MPEP 2106.05(f).
Further, the combination of these elements is nothing more than a generic computing system. When the claim elements above are considered, alone and in combination, they do not amount to significantly more.
Therefore, per Step 2B, the additional elements, alone and in combination, are not significantly more. The claims are not patent eligible.
The analysis takes into consideration all dependent claims as well:
Dependent claim 2-10 and 12 -20 contain additional steps that further narrow the abstract idea above.
Claim 2 recites the following additional elements: public key. Applicant has only described generic computing elements in their specification, as seen in {[0019]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 3 recites the following additional elements: diversity data. Applicant has only described generic computing elements in their specification, as seen in {[0028]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 4 further describes the abstract idea. Claim 4 and 14 are based on the claims describing a mental process of reporting diversity compliance for participants in a blockchain network. See applicants’ specification, as seen in {[0007]} for further details. The processor is merely a generic technology to generate a new block. The apparatus is not a technical improvement and merely implementing the abstract idea using generic technology. As such additional elements are not significantly more or transformative into a practical application. MPEP 2106.05(f). Therefore, the claims are covered under certain methods of mental process groupings of abstract ideas.
Claim 5 recites the following additional elements: Sidechains. Applicant has only described generic computing elements in their specification, as seen in {[0027- 0028]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 7, 8 recites the following additional elements: Computing systems, blockchain network. Applicant has only described generic computing elements in their specification, as seen in {[0054]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 9, 10, 19 and 20 recites the following additional elements: smart contracts, new block, sidechains. Applicant has only described generic computing elements in their specification, as seen in {[0027-0028]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 12 recites the following additional elements: blockchain wallet, data, public key. Applicant has only described generic computing elements in their specification, as seen in {[0019]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 13 recites the following additional elements: public key, blockchain node, data. Applicant has only described generic computing elements in their specification, as seen in {[0005]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 14, 15, 16 recites the following additional elements: processor, blockchain node, sidechains. Applicant has only described generic computing elements in their specification, as seen in {[0005]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
Claim 17, 18 recites the following additional elements: computing systems, nodes, blockchain. Applicant has only described generic computing elements in their specification, as seen in {[0022]} of applicant’s specification as filed. This does not integrate the abstract idea into practical application and/or add significantly more. The claim is ineligible. Refer to MPEP 2106.05(f).
In conclusion the claims do not provide an inventive concept, because the claims do not recite additional elements or a combination of elements that amount to significantly more than the judicial exception of the claims. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non - statutory subject matter.
Response to Arguments
In response to the argument filled May 13, 2026, on page 9-19, regarding the 101 rejections, the Examiner Respectfully disagrees.
Applicant argues that the claims do not recite a mental process and an abstract idea, and as amended provide an improvement to a technical field. Applicant further states that the claims are technical improvements related to blockchain network, node, sidechain, public key, new block, diversity data, processor and smart contract.
The Examiner respectfully disagrees.
The Examiner views Applicant’s proffered benefits of technological improvement using blockchain system through the use of a dedicated sidechain architecture of reducing the processing burden on the main blockchain as benefits from performing the recited abstract idea rather than provided by the additional elements of the claim, which the Examiner identified under the Step 2A Prong 2 and 2B Analyses to be mere instructions to apply the abstract idea using generic computing components and does not integrate the abstract idea into a practical application or adds significantly more. MPEP 2106.05 (f)
Applicant argues that the independent claim is not directed to merely reporting information instead recites a specific technology-based process rooted in blockchain architecture.
Applicant also argues that the independent claim recite steps (e.g., generating a new cryptographic block, transmitting the block to a plurality of nodes for consensus confirmation, publishing the block to a dedicated sidechain, detecting and publishing via the smart contract residing on the main blockchain that monitors a cross-chain communication mechanism and self-executes) require a distributed blockchain network, cryptographic data structures, cross-chain communication architecture, and automated execution environments.
The Examiner respectfully disagrees.
The Examiner notes that the receiving diversity data, generating a new block, identifying data, registering participants, transmitting the new block, executing, detecting and publishing the confirmed block the examiner viewed as steps of the identified abstract idea in the Step 2A Prong 1 Analysis and the block/blockchain, node, sidechain, public key, new block, diversity data, processor and smart contract as an additional element in the Step 2A Prong 2 Analysis. Therefore, the examiner maintains the claims recite Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People grouping of abstract ideas and under its broadest reasonable interpretation, falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. See Applicant specification [0028-0030].
Applicant argues that the Paragraphs [0028]-[0030] cited by prior office action as “merely generic tools providing no technical improvement” describes the functional operation of the smart contract in the claimed system, including its ability to monitor for new blockchain data entries in the sidechain, self-execute upon detection of a publication event, analyze diversity data, generate reporting messages, and transmit those messages to external systems without human intervention.
The Examiner respectfully disagrees.
In view of the above cited paragraphs, the automatic generated smart contract, the configuration of the smart contract to monitor new blockchain data entries, self-execution, analysis of diversity data and blockchain identification by the smart contract; the Examiner views these combinations as merely generic technology with no technical improvement rather an improvement to the abstract idea using generic technology. See specification [0028 - 0030].
Applicant argues that the amended, recite a specific technical architecture and specific technical functions that go well beyond any generic implementation of blockchain technology. The Applicant recites that the sidechain communicates with the blockchain via a cross- chain communication mechanism, that the smart contract monitors the cross-chain communication mechanism from the main blockchain to detect the publishing of the generated new block to the sidechain, and that diversity data processing is performed on the sidechain without burdening the main blockchain with diversity data storage.
The Examiner respectfully disagrees.
The Examiner notes that the communication of the sidechain with the blockchain via a cross- chain mechanism, the monitoring of the cross-chain communication mechanism by the smart contract, the publishing of the generated new block to the sidechain, and the diversity data processing performed on the sidechain are merely generic technology with no technical improvement rather an improvement to the abstract idea using generic technology.
The Examiner maintains these claims recite an abstract idea.
Therefore, for the foregoing reasons the Examiner has maintained the 35 USC 101 rejection.
Regarding the prior art rejections 103, Examiner notes that the considered prior art does not specifically teach the combination of elements. The claim limitations are directed towards a novel and nonobvious features in the combination of elements that are not rejected under 35 USC 103.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR CHIGOZIRIM ESONU whose telephone number is (571)272-4883. The examiner can normally be reached Monday - Friday 9:00 am - 5pm.
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/VICTOR ESONU/
Examiner, Art Unit 3629
/SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629
