Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). The specification expressly characterizes Fig. 1 as depicting "the conventional fact-exchange cycle 100 currently used for presentation and verification of the total bill amount fact" and the Brief Description of Drawings confirms: "Fig. 1 provides a process chart illustrating a conventional fact-exchange cycle for a simple bill." The entire figure depicts only the existing prior art process; no element of the claimed invention (fact certifier, fact certificate, certification or verification service) appears therein. Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled "Replacement Sheet" in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 504 (Fig. 5, legend entry labeled "Observed Fact"); 506 (Fig. 5, legend entry labeled "Deduced Fact"); 928 (Fig. 9, element labeled "full fact certificate" -- the certifier's response under pre-determined extreme conditions); 1524 (Fig. 15, element labeled "Appraised value certificate"). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b), are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: (1) On page 69 of disclosure, the Fig. 16 description states "the presenter 1602 sends the access key 1622 to the receiver 1601 (11)" -- the drawing for Fig. 16 labels the receiver element as "1606," not "1601"; character "1601" does not correspond to any labeled drawing element and appears to be a typographical error for "1606." (2) On page 66 of disclosure, the Fig. 15 description states "regulator 1408 can submit a strong verification request 1522 to securitization trust certifier 1404 and receive full certificates of appraisal 1522 and loan terms 1526" -- reference character "1522" is used for two distinct elements: the strong verification request (first use, correctly matching the drawing) and the appraised value certificate (second use); the drawing labels the appraised value certificate element as "1524," and the second use of "1522" appears to be a typographical error for "1524." (3) On page 69, the Fig. 16 description states "Certifier 1604 creates fact certificate (162) but instead of returning the fact certificate, the certificate is stored and an access key 1620 is returned" -- the parenthetical "(162)" does not correspond to any labeled drawing element.
The disclosure is objected to because it contains embedded hyperlinks and/or other forms of browser-executable code. The specification includes URLs with protocol prefixes (https://, http://) appearing in both narrative text and exemplary code sections at multiple locations throughout, including: https://certifier.3rd-party.com, https://certifier.utilityinc.com, https://www.bigcorp.com/certifier, https://repo.scientific-result.org, and related URLs with full certificate hash paths. These URLs appear directly in narrative specification text -- e.g., "the smart consumption gauge send the full fact to https://certifier.utilityinc.com and a digest of the fact to https://certifier.3rd-party.com/utilityinc, where it is a registered observer" -- as well as in exemplary MIME certificate code blocks. Applicant is required to delete the embedded hyperlinks and/or other forms of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 15 recites "a fact certification library containing executable code allows repetition of the deductive reasoning process," but the specification does not use the term "fact certification library" or describe any component by that name. While the specification extensively describes computation repositories (page 62, Section 9.7.4), certification plug-ins (sec. 9.7.2), and deductive reasoning processes, it does not introduce or define a "fact certification library" as a distinct component or concept. The specification should be amended to add a description of the "fact certification library" sufficient to provide proper antecedent basis for the subject matter recited in claim 15.
Claim Objections
Claim 22 is objected to because of the following informalities: the sentence ends with double punctuations “,.”, where the comma appears extraneous.
Claim 23 is objected to because of the following informalities: (1) a double comma ",," appears in the phrase "certifying the received fact by issuing a fact certificate for the received fact, , wherein the fact certificate specifies a sequence of instructions…", where only a single comma is grammatically appropriate; and (2) the claim limitation "enables a receiver of the fact certificate to evaluate validity of the fact" lacks terminal punctuation (semicolon or period) before the next limitation begins with "archiving the fact in the permanent storage."
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 and 25-26 of U.S. Patent No. 9,064,238. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 2-28 re-present the certifying-facts claims of the Patent with only obvious variations ('permanent' storage; certificate specifying a sequence of instructions as a species of the Patent's enabling certificate; wherein-clauses recast as active steps). Instant claim 1 is an obvious modular implementation of Patent claim 19 (incorporating claim 1).
Instant Claim 1 ↔ U.S. Pat. No. 9,064,238 Claim 19
Instant Application Claims
U.S. Pat. No. 9,064,238 Claims
A computer-implemented method for exchange of verifiable digital information, using a fact certification module and a fact verification module, the fact certification module and fact verification module each comprising a processor, a communication interface, and wherein the fact certification module and the fact verification module each have access to a permanent storage system,
[claim 1] A computer-implemented method for certifying facts using a fact certifier, the fact certifier including a processor and a storage associated with the processor, wherein the processor performs the method comprising:
wherein during a fact certification stage, the fact certification module performs the method comprising: receiving a digital fact for certification at the fact certification module from a fact presenter via the communication interface;
[claim 1] receiving a fact at the fact certifier from a fact presenter;
issuing a digital certification data structure corresponding to the digital fact received for certification, wherein validity of the digital fact received for certification is verifiable by a receiver of the digital certification data structure;
[claim 1] certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate enables a receiver of the fact certificate to evaluate validity of the fact;
archiving the digital certification data structure in a permanent storage system; and
[claim 1] archiving the fact in the storage; and ... transmitting the fact certificate to the fact presenter ...
wherein, during a fact verification stage, the fact verification module performs the method comprising: receiving a verification request at the fact verification module from a fact receiver via the communication interface, the request including any of a digital fact of interest, a digital digest of the fact of interest, or a unique fact identifier corresponding to the fact of interest;
[claim 19] receiving a verification request at the fact certifier from a fact receiver, based on a receipt at the fact receiver of the fact certificate from the fact presenter; and
accessing a permanent storage; and returning to the fact receiver via the communication interface a response to the received verification request, the response comprising any of: a search result, a digital certification data structure retrieved from the permanent storage system, and a formatted response data structure.
[claim 19] communicating a verification response from the fact certifier to the fact receiver; wherein the fact receiver is enabled to establish that the fact is valid, using the verification response.
Instant Claim 2 ↔ U.S. Pat. No. 9,064,238 Claim 1
A computer-implemented method for certifying facts, comprising: using a fact certifier, the fact certifier comprising a processor and a permanent storage associated with the processor, wherein the processor performs the method comprising:
A computer-implemented method for certifying facts using a fact certifier, the fact certifier including a processor and a storage associated with the processor, wherein the processor performs the method comprising:
receiving a fact at the fact certifier from a fact presenter;
receiving a fact at the fact certifier from a fact presenter;
certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate specifies a sequence of instructions in a natural language or as computer executable code or program that, when followed or executed by a receiver of the fact certificate or a computational agent acting on behalf of the receiver of the fact certificate, enables a receiver of the fact certificate to evaluate validity of the fact;
certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate enables a receiver of the fact certificate to evaluate validity of the fact;
archiving the fact in the permanent storage; and
archiving the fact in the storage; and
transmitting the fact certificate to the fact presenter.
transmitting the fact certificate to the fact presenter, wherein the fact presenter is enabled to transmit the fact certificate to a fact receiver, and wherein the fact receiver is enabled to establish that the fact is valid, using the fact certificate.
Instant Claim 3 ↔ U.S. Pat. No. 9,064,238 Claim 1
The method of claim 2, further comprising: the fact presenter transmitting the fact certificate to a fact receiver.
[claim 1] ... wherein the fact presenter is enabled to transmit the fact certificate to a fact receiver ...
Instant Claim 4 ↔ U.S. Pat. No. 9,064,238 Claim 1
The method of claim 3, further comprising: the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid.
[claim 1] ... and wherein the fact receiver is enabled to establish that the fact is valid, using the fact certificate.
Instant Claim 5 ↔ U.S. Pat. No. 9,064,238 Claim 2
wherein the transmitting of the fact certificate corresponding to the transmitted, certified fact to the fact receiver comprises: via a computing device, transmitting both of the certified fact and the fact certificate corresponding to the transmitted, certified fact to the fact receiver; and wherein the fact receiver receiving the transmitted fact certificate and inspecting the received fact certificate comprises: via a computing device, the fact receiver receiving both of the transmitted certified fact and the transmitted fact certificate.
wherein the transmitting of the fact certificate corresponding to the transmitted, certified fact to the fact receiver comprises: via a computing device, transmitting both of the certified fact and the fact certificate corresponding to the transmitted, certified fact to the fact receiver; and wherein the fact receiver receiving the transmitted fact certificate and inspecting the received fact certificate comprises: via a computing device, the fact receiver receiving both of the transmitted certified fact and the transmitted fact certificate.
Instant Claim 6 ↔ U.S. Pat. No. 9,064,238 Claim 3
wherein the fact comprises one of: an observed fact; and a deduced fact.
wherein the fact comprises one of: an observed fact; and a deduced fact.
Instant Claim 7 ↔ U.S. Pat. No. 9,064,238 Claim 4
wherein the observed fact comprises a truth known by measurement or observation.
wherein the observed fact comprises a truth known by measurement or observation.
Instant Claim 8 ↔ U.S. Pat. No. 9,064,238 Claim 5
wherein the fact presented by the fact presenter for certification comprises one of a measurement and an observation performed by an observer and wherein acceptance by the fact receiver of the fact certificate as valid establishes a permanent consensus between the fact presenter and the fact receiver that the measurement or observation accurately represents the information reported by a measurement device or the observer.
wherein the fact presented by the fact presenter for certification comprises one of a measurement and an observation performed by an observer and wherein acceptance by the fact receiver of the fact certificate as valid establishes a permanent consensus between the fact presenter and the fact receiver that the measurement or observation accurately represents the information reported by a measurement device or the observer.
Instant Claim 9 ↔ U.S. Pat. No. 9,064,238 Claim 6
wherein the measurement or observation is not revealed to the fact receiver.
wherein the measurement or observation is not revealed to the fact receiver.
Instant Claim 10 ↔ U.S. Pat. No. 9,064,238 Claim 7
wherein the certified fact and the fact certificate are broadcast to a plurality of fact receivers by the fact presenter.
wherein the certified fact and the fact certificate are broadcast to a plurality of fact receivers by the fact presenter.
Instant Claim 11 ↔ U.S. Pat. No. 9,064,238 Claim 8
wherein identity of the fact receiver is not known to at least one of an observer and the fact presenter.
wherein identity of the fact receiver is not known to at least one of an observer and the fact presenter.
Instant Claim 12 ↔ U.S. Pat. No. 9,064,238 Claim 9
wherein the deduced fact is based on any of a deductive reasoning process and one or more basis facts.
wherein the deduced fact is based on any of a deductive reasoning process and one or more basis facts.
Instant Claim 13 ↔ U.S. Pat. No. 9,064,238 Claim 10
wherein identity of the fact is not known to an observer at time of execution of the deductive reasoning process.
wherein identity of the fact is not known to an observer at time of execution of the deductive reasoning process.
Instant Claim 14 ↔ U.S. Pat. No. 9,064,238 Claim 11
via a computing device, any of presenting, storing, and transmitting the deduced fact in an interconnected data structure that allows efficient certification and communication of facts deduced from other facts by the deductive reasoning process, wherein the data structure comprises a tree of facts, wherein: the deduced fact comprises a root node of the tree; wherein the basis facts comprise nodes of the tree; and wherein the observed fact comprises a leaflet of the tree.
via a computing device, any of presenting, storing and transmitting the deduced fact in an interconnected data structure that allows efficient certification and communication of facts deduced from other facts by the deductive reasoning process, wherein the data structure comprises a tree of facts, wherein: the deduced fact comprises a root node of the tree; wherein the basis facts comprise nodes of the tree; and wherein the observed fact comprises a leaflet of the tree.
Instant Claim 15 ↔ U.S. Pat. No. 9,064,238 Claim 12
wherein a fact certification library containing executable code allows repetition of the deductive reasoning process.
wherein a fact certification library containing executable code allows repetition of the deductive reasoning process.
Instant Claim 16 ↔ U.S. Pat. No. 9,064,238 Claim 13
wherein the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that a statement regarding the deductive reasoning process used to deduce the fact from other facts represents a description of the deductive reasoning process used.
wherein the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that a statement regarding the deductive reasoning process used to deduce the fact from other facts represents a description of the deductive reasoning process used.
Instant Claim 17 ↔ U.S. Pat. No. 9,064,238 Claim 14
wherein the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that the fact that was deduced from other facts by the deductive reasoning process represents the result of an application of the deductive reasoning process.
wherein the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that the fact that was deduced from other facts by the deductive reasoning process represents the result of an application of the deductive reasoning process.
Instant Claim 18 ↔ U.S. Pat. No. 9,064,238 Claim 15
via a computing device, computing a universal fact identifier for the fact that universally and uniquely identifies the fact, wherein knowledge of the universal fact identifier does not reveal the corresponding fact and wherein the universal fact identifier is uniquely associated with the fact so that the universal fact identifier has only one possible corresponding fact.
via a computing device, computing a universal fact identifier for the fact that universally and uniquely identifies the fact, wherein knowledge of the universal fact identifier does not reveal the corresponding fact and wherein the universal fact identifier is uniquely associated with the fact so that the universal fact identifier has only one possible corresponding fact.
Instant Claim 19 ↔ U.S. Pat. No. 9,064,238 Claim 16
wherein the fact contains private information that cannot be revealed to any party other than the fact presenter.
wherein the fact contains private information that cannot be revealed to any party other than the fact presenter.
Instant Claim 20 ↔ U.S. Pat. No. 9,064,238 Claim 17
via a computing device, creating the fact certificate which conclusively demonstrates that the certified fact is valid and trustworthy.
via a computing device, creating the fact certificate which conclusively demonstrates that the certified fact is valid and trustworthy.
Instant Claim 21 ↔ U.S. Pat. No. 9,064,238 Claim 18
via a computing device, including with the certified fact a publication comprising any of: a visual communication; printed document; and digital document; wherein said publication visibly guarantees fact trustworthiness without altering an existing preparation of the publication and without altering format of the publication.
via a computing device, including with the certified fact a publication comprising any of a visual communication, printed document and digital document, which visibly guarantees fact trustworthiness without altering an existing preparation of the publication and without altering format of the publication.
Instant Claim 22 ↔ U.S. Pat. No. 9,064,238 Claim 19
receiving a verification request at the fact certifier from a fact receiver, based on a receipt at the fact receiver of the fact certificate from the fact presenter; communicating a verification response from the fact certifier to the fact receiver; and the fact receiver using the verification response to establish that the fact is valid.
receiving a verification request at the fact certifier from a fact receiver, based on a receipt at the fact receiver of the fact certificate from the fact presenter; and communicating a verification response from the fact certifier to the fact receiver; wherein the fact receiver is enabled to establish that the fact is valid, using the verification response.
Instant Claim 23 ↔ U.S. Pat. No. 9,064,238 Claim 25
A system for certifying facts, comprising: a processor; and a permanent storage associated with the processor; wherein the processor is programmed to perform computer-implemented operations comprising:
A system for certifying facts, comprising: a processor; and a storage associated with the processor, wherein the processor is programmed to perform computer-implemented operations comprising:
receiving a fact from a fact presenter;
receiving a fact from a fact presenter;
certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate specifies a sequence of instructions in a natural language or as computer executable code or program that, when followed or executed by a receiver of the fact certificate or a computational agent acting on behalf of the receiver of the fact certificate, enables a receiver of the fact certificate to evaluate validity of the fact;
certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate enables a receiver of the fact certificate to evaluate validity of the fact;
archiving the fact in the permanent storage;
archiving the fact in the storage;
transmitting the fact certificate to the fact presenter.
transmitting the fact certificate to the fact presenter, wherein the fact presenter is enabled to transmit the fact certificate to a fact receiver, and wherein the fact receiver is enabled to establish that the fact is valid, using the fact certificate.
Instant Claim 24 ↔ U.S. Pat. No. 9,064,238 Claim 25
The system of claim 23, said computer-implemented operations further comprising: the fact presenter transmitting the fact certificate to a fact receiver.
[claim 25] ... wherein the fact presenter is enabled to transmit the fact certificate to a fact receiver ...
Instant Claim 25 ↔ U.S. Pat. No. 9,064,238 Claim 25
The system of claim 24, said computer-implemented operations further comprising: the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid.
[claim 25] ... and wherein the fact receiver is enabled to establish that the fact is valid, using the fact certificate.
Instant Claim 26 ↔ U.S. Pat. No. 9,064,238 Claim 26
A non-transitory computer-readable medium having embodied thereon computer-readable instructions, which when executed by a processor having a storage associated therewith, implements a method for certifying facts, comprising: using a fact certifier, the fact certifier comprising a processor and a permanent storage associated with the processor, wherein the processor performs the method comprising:
A non-transitory computer-readable medium having embodied thereon computer-readable instructions, which when executed by a processor having a storage associated therewith, implements a method for certifying facts, comprising:
receiving a fact at the fact certifier from a fact presenter;
receiving a fact from a fact presenter;
certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate specifies a sequence of instructions in a natural language or as computer executable code or program that, when followed or executed by a receiver of the fact certificate or a computational agent acting on behalf of the receiver of the fact certificate, enables a receiver of the fact certificate to evaluate validity of the fact;
certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate enables a receiver of the fact certificate to evaluate validity of the fact;
archiving the fact in the permanent storage; and
archiving the received fact in the storage; and
transmitting the fact certificate to the fact presenter.
transmitting the fact certificate to the fact presenter, wherein the fact presenter is enabled to transmit the fact certificate to a fact receiver, and wherein the fact receiver is enabled to establish that the fact is valid, using the fact certificate.
Instant Claim 27 ↔ U.S. Pat. No. 9,064,238 Claim 26
The non-transitory computer-readable medium of claim 26, the method further comprising: the fact presenter transmitting the fact certificate to a fact receiver.
[claim 26] ... wherein the fact presenter is enabled to transmit the fact certificate to a fact receiver ...
Instant Claim 28 ↔ U.S. Pat. No. 9,064,238 Claim 26
The non-transitory computer-readable medium of claim 27, the method further comprising: the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid.
[claim 26] ... and wherein the fact receiver is enabled to establish that the fact is valid, using the fact certificate.
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 2-25 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.
Claim 2 recites a wherein clause describing the fact certificate: "when followed or executed by a receiver of the fact certificate or a computational agent acting on behalf of the receiver of the fact certificate, enables a receiver of the fact certificate to evaluate validity of the fact." The wherein clause introduces "a receiver" (indefinite article), transitions to "the receiver" (definite article, correct back-reference), and then re-introduces "a receiver" (indefinite article again) in the "enables" portion. A PHOSITA cannot determine with reasonable certainty whether the second "a receiver" is the same entity who follows or executes the instructions, or whether it encompasses any receiver generally. This inconsistent article use creates ambiguity regarding the scope of who must be enabled to evaluate fact validity. See MPEP § 2173.05.
Claim 8 recites "acceptance by the fact receiver of the fact certificate as valid establishes a permanent consensus between the fact presenter and the fact receiver." Claim 8 depends from Claim 6 which depends from Claim 2. Neither Claim 2 nor Claim 6 introduces "a fact receiver." Claim 2 recites "a fact presenter" and operations of "a fact certifier," but no fact receiver appears anywhere in the dependency chain from Claims 2 to 6 to 8. Accordingly, there is insufficient antecedent basis for "the fact receiver" in Claim 8. See MPEP § 2173.05(e).
Claim 8 further recites "permanent consensus" as the legal or evidentiary effect of acceptance of the fact certificate. The specification does not define "permanent consensus" with any objective standard. The term "permanent" is a relative term—it is unclear whether it means irrevocable, legally binding, cryptographically enforced, or merely durable. A PHOSITA cannot determine the metes and bounds of this limitation with reasonable certainty. See MPEP § 2173.05(b); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005).
Claims 9 and 11 each depend from Claim 8 and inherit the antecedent basis defect for "the fact receiver" identified in Claim 8 above. Claims 9 and 11 each use "the fact receiver" without prior introduction anywhere in their respective dependency chains from claims 2 to 6 to 8 to 9 and from claims 2 to 6 to 8 to 11. Appropriate correction is required. See MPEP § 2173.05(e).
Claim 10 recites that "the certified fact and the fact certificate are broadcast to a plurality of fact receivers." In the dependency chain from claims 2 to 6 to 8 to 10, claim 2 introduces "the received fact" and the act of "certifying the received fact" but does not introduce "a certified fact" or "the certified fact" as a distinct named element. No claim in the dependency chain uses "a certified fact" with an indefinite article prior to Claim 10's use of "the certified fact." Additionally, Claim 10 inherits the antecedent basis defect for "the fact receiver" from parent Claim 8, as discussed above. There is insufficient antecedent basis for both "the certified fact" and "the fact receiver" in Claim 10. See MPEP § 2173.05(e).
Claim 12 recites "wherein the deduced fact is based on any of a deductive reasoning process and one or more basis facts." Claim 12 depends from Claim 7, which depends from Claim 6, which depends from Claim 2. Claim 6 introduces "a deduced fact" as one of two alternatives ("the fact comprises one of: an observed fact; and a deduced fact"). However, Claim 7 narrows to the observed-fact branch: "the observed fact comprises a truth known by measurement or observation." Through the dependency chain Claims 2 to 6 to 7, the claim is restricted to the observed-fact scenario. Claim 12, depending through Claim 7 (the observed-fact branch), then uses the definite article "the deduced fact" to refer to the alternative branch of Claim 6 that was not pursued in Claim 7. Because Claim 7 does not further claim or discuss the deduced fact, "the deduced fact" lacks clear antecedent basis in the applicable dependency chain. See MPEP § 2173.05(e).
Claims 13 and 15 each depend from Claim 12 and inherit the antecedent basis defect for "the deduced fact" identified in Claim 12 above. The defect propagates through the dependency chain to all claims that depend from Claim 12. Appropriate correction is required. See MPEP § 2173.05(e).
Claim 14 recites "wherein the basis facts comprise nodes of the tree." Claim 12 introduces "one or more basis facts" using an indefinite article and indefinite quantifier. Claim 14 uses the definite article and plural "the basis facts" without prior definite introduction of this element. "One or more basis facts" does not constitute adequate antecedent for the definite plural "the basis facts." Additionally, Claim 14 inherits the antecedent basis defect for "the deduced fact" from parent Claim 12. See MPEP § 2173.05(e).
Claim 14 further recites "wherein the observed fact comprises a leaflet of the tree." The term "leaflet" is not a standard term in computer science, data structures, or graph theory. The conventional term for a terminal node with no children in a tree structure is "leaf" or "leaf node." The specification describes fact networks and tree structures (page 17 of specification) but does not use the term "leaflet." A PHOSITA cannot determine with reasonable certainty whether "leaflet" is synonymous with "leaf node" or denotes a distinct structural concept. This ambiguity renders the limitation indefinite. See MPEP § 2173.05(b); Nautilus, 572 U.S. at 901.
Claims 16 and 17 each depend from Claim 12 through the chain Claims 2 to 6 to 7 to 12. None of Claims 2, 6, 7, or 12 introduces "a fact receiver." Claims 16 and 17 each recite "the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus," using the definite article "the fact receiver" without prior antecedent anywhere in the dependency chain. There is insufficient antecedent basis for "the fact receiver" in Claims 16 and 17. See MPEP § 2173.05(e).
Claims 16 and 17 each recite that the fact presenter and fact receiver are enabled to achieve "lasting or permanent consensus." The term "lasting" is a relative term of degree without an objective standard in the specification. The specification does not define "lasting" or distinguish it from "permanent." Furthermore, the disjunctive "lasting or permanent" creates additional ambiguity: each term may encompass different durations or qualities of agreement, and either independently satisfies the limitation, further obscuring the claim scope. A PHOSITA cannot determine with reasonable certainty what duration or quality of consensus satisfies "lasting." See MPEP § 2173.05(b).
Claim 20 recites "creating the fact certificate which conclusively demonstrates that the certified fact is valid and trustworthy." Claim 20 depends from Claim 2. Claim 2 certifies "the received fact" by issuing a fact certificate, but does not introduce the phrase "a certified fact" or "the certified fact" as a distinct named element. No claim in the dependency chain Claims 2 to 20 uses "a certified fact" with an indefinite article prior to Claim 20. There is therefore insufficient antecedent basis for "the certified fact" in Claim 20. See MPEP § 2173.05(e).
Claim 20 further recites a fact certificate that "conclusively demonstrates that the certified fact is valid and trustworthy." The term "conclusively" is a relative term of degree. The specification uses the phrase "conclusively conclude" in describing the function of fact certificates (page 15 of the specification) but does not define an objective standard for what constitutes conclusive demonstration, i.e., whether it requires cryptographic proof, a legal preponderance standard, or some other measure. A PHOSITA cannot determine with reasonable certainty the level of demonstration required to satisfy "conclusively." See MPEP § 2173.05(b
Claim 21 recites "including with the certified fact a publication." As in Claim 20, Claim 21 depends from Claim 2, which does not introduce "a certified fact" as a distinct named element. There is insufficient antecedent basis for "the certified fact" in Claim 21.
Claim 21 further recites that a publication "visibly guarantees fact trustworthiness without altering an existing preparation of the publication." The phrase "visibly guarantees fact trustworthiness" contains two terms that lack objective standards: (1) "visibly" is undefined-the specification does not prescribe what visual characteristics are sufficient for a visual feature to constitute a visible guarantee versus merely a visual indicator; and (2) "trustworthiness" is a subjective quality. The specification describes QR barcodes, hyperlinks, and small print as methods to present certified facts in publications (page 46 of specification), but does not define what visibly guarantees trustworthiness versus merely suggests it. A PHOSITA cannot determine with reasonable certainty whether a particular publication presentation satisfies this limitation. See MPEP § 2173.05(b).
Claim 21 further recites "without altering an existing preparation of the publication." It is unclear whether "existing preparation" refers to the prior formatting, layout, authoring, typesetting, or overall composition of the publication. The specification does not define this term. A PHOSITA cannot determine with reasonable certainty what constitutes the "preparation" of a publication or what types of alterations would violate this limitation. See MPEP § 2173.05.
Claim 23 contains missing punctuation that creates irresolvable scope ambiguity. The relevant text reads: "enables a receiver of the fact certificate to evaluate validity of the fact” then, without further punctuation, followed by “archiving the fact in the permanent storage" It is ambiguous whether "archiving the fact in the permanent storage" is (a) part of the evaluate-validity clause - i.e., the receiver evaluates validity by archiving, or (b) a separate, distinct computer-implemented operation performed by the processor. Because the phrase is syntactically ambiguous due to missing punctuation, the scope of both the "evaluate validity" operation and the "archiving" operation cannot be determined with reasonable certainty. See MPEP § 2173.05.
Claim 23 contains the same inconsistent article usage as Claim 2, as discussed above. The wherein clause introduces "a receiver" (indefinite), transitions to "the receiver" (definite), then re-introduces "a receiver" (indefinite again) in the enables clause. A PHOSITA cannot determine with reasonable certainty whether the entity enabled to evaluate validity is the same as, or different from, the entity who follows or executes the instructions. This inconsistency renders the scope of the enabling limitation uncertain. See MPEP § 2173.05.
Claims 24 and 25 are rejected as improperly mixing apparatus elements with method steps performed by external parties. Claims 24 and 25 are dependent from Claim 23, which is directed to a system comprising a processor and permanent storage. Claims 24 and 25 recite, as "computer-implemented operations" of that system, actions performed by "the fact presenter" (Claim 24: transmitting the fact certificate to a fact receiver) and "the fact receiver" (Claim 25: inspecting the fact and using the fact certificate to establish validity). The fact presenter and fact receiver are external parties not forming part of the claimed system. It is impossible to determine whether the external party actions in claims 24 and 25 occurs when the apparatus is made or when the external party performs the recited action. The metes and bounds of Claims 24 and 25 are therefore uncertain. See MPEP § 2173.05(p); IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).
Claims dependent and not mentioned in the aforementioned claims are rejected as being dependent upon rejected base claims.
Appropriate correction is required.
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 1-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
CLAIM 1
Step 1: Claim 1 recites “A computer-implemented method for exchange of verifiable digital information,” comprising a series of steps performed during a fact certification stage and a fact verification stage and therefore falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 1 recites an abstract idea. The claim is directed to certifying a fact presented by one party and verifying its validity for another party so that the latter may rely upon it, this falling under the abstract idea grouping of a certain method of organizing human activity, specifically a commercial or legal interaction and the management of an interaction between people (a fact presenter and a fact receiver). Furthermore, the claim also recites a mental process, because evaluating the validity of a fact is an observation, evaluation, or judgment of a kind that can be performed in the human mind or with pen and paper. See MPEP 2106.04(a)(2).
The abstract idea is recited in the limitations “issuing a digital certification data structure corresponding to the digital fact received for certification, wherein validity of the digital fact received for certification is verifiable by a receiver of the digital certification data structure.” The specification confirms that this is a longstanding human activity, describing the conventional fact-exchange cycle in which a human fact receiver — for example an audit accountant — verifies facts by recovering the reasoning, identifying the basis facts, and checking their authenticity (pages 3-4 of specification).
Step 2A, Prong 2: The judicial exception is not integrated into a practical application. The additional elements, considered individually and as an ordered combination, do not integrate the abstract idea into a practical application. The additional elements are:
the “fact certification module” and “fact verification module, each comprising a processor, a communication interface…each have access to a permanent storage system”…This is invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)).
“receiving a digital fact for certification at the fact certification module from a fact presenter via the communication interface”…This is insignificant extra-solution activity of data gathering (MPEP 2106.05(g)).
“archiving the digital certification data structure in a permanent storage system”…This is insignificant extra-solution activity of electronic recordkeeping (MPEP 2106.05(g)).
“receiving a verification request ... via the communication interface, the request including any of a digital fact of interest, a digital digest of the fact of interest, or a unique fact identifier corresponding to the fact of interest”…This is insignificant extra-solution activity of data gathering (MPEP 2106.05(g)).
“accessing a permanent storage; and returning ... via the communication interface a response to the received verification request, the response comprising any of: a search result…”…This is insignificant extra-solution of data gathering and output (MPEP 2106.05(g)).
Under Ex Parte Desjardins, the specification is first consulted to determine whether it discloses an improvement to the functioning of a computer or to another technology that a person of ordinary skill would recognize. The specification discloses improvements only to the abstract process of exchanging trustworthy facts — introducing a certifier and a fact certificate so that fact verification is “efficient,” “conclusive,” and privacy-respecting (pages 13-17 of specification) — and not to any computer or technology. The asserted benefits flow from the abstract idea itself, not from any improved operation of a computer. The specification implements the certifier on a generic “computer-implemented system” that “communicates ... over a computer network, such as the Internet” (page 17 of the specification) and depicts the supporting hardware as a generic computer platform that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17). The disclosure therefore does not describe a technological improvement; and even if it did, the claim — which recites only generic components performing the abstract steps — does not reflect any such improvement. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016).
The recited fact certification module, fact verification module, processor, communication interface, permanent storage system, the acts of receiving (data gathering), accessing/retrieving from storage, archiving, and returning a response are invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)).
Accordingly, claim 1 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. The fact certification module, fact verification module, processor, communication interface, and permanent storage system are well-understood, routine, and conventional generic computer components, as confirmed by the specification (page 71 of specification, Fig. 17) and by Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Receiving a digital fact and a verification request via the communication interface and returning a response are well-understood, routine, and conventional acts of receiving and transmitting data over a network. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Archiving and accessing the permanent storage are well-understood, routine, and conventional electronic storage and retrieval. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Alice Corp., 573 U.S. at 225. Considered as an ordered combination, these elements perform their conventional functions and do no more than implement the abstract idea on a generic computer; they add nothing significantly more. Accordingly, claim 1 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 2
Step 1: Claim 2 recites “A computer-implemented method for certifying facts,” comprising a series of steps and therefore falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 2 recites an abstract idea. The claim is directed to certifying a fact presented by one party and verifying its validity for another party so that the latter may rely upon it, this falling under the abstract idea grouping of a certain method of organizing human activity, specifically a commercial or legal interaction and the management of an interaction between people (a fact presenter and a fact receiver). Furthermore, the claim also recites a mental process, because evaluating the validity of a fact is an observation, evaluation, or judgment of a kind that can be performed in the human mind or with pen and paper. See MPEP 2106.04(a)(2).
The abstract idea is recited in the limitations “certifying the received fact by issuing a fact certificate for the received fact, wherein the face certificates specifies a sequence of instructions in a natural language or as computer executable code or program that, when followed or executed by a receiver of the fact certificate … acting on behalf of the receiver of the fact certificate” and “enables a receiver of the fact certificate to evaluate validity of the fact.” The specification confirms that this is a longstanding human activity, describing the conventional fact-exchange cycle in which a human fact receiver — for example an audit accountant — verifies facts by recovering the reasoning, identifying the basis facts, and checking their authenticity (pages 3-4 of specification).
Step 2A, Prong 2: The judicial exception is not integrated into a practical application. The additional elements, considered individually and as an ordered combination, do not integrate the abstract idea into a practical application. The additional elements are:
“a fact certifier ... comprising a processor and a permanent storage associated with the processor, …”…This is invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)).
“receiving a fact at the fact certifier from a fact presenter”…This is insignificant extra-solution activity of data gathering (MPEP 2106.05(g)).
“archiving the fact in the permanent storage”… This is insignificant extra-solution activity of electronic recordkeeping (MPEP 2106.05(g)).
“transmitting the fact certificate to the fact presenter”…This is insignificant extra-solution activity of data gathering and output (MPEP 2106.05(g)).
Under Ex Parte Desjardins, the specification is first consulted to determine whether it discloses an improvement to the functioning of a computer or to another technology that a person of ordinary skill would recognize. The specification discloses improvements only to the abstract process of exchanging trustworthy facts — introducing a certifier and a fact certificate so that fact verification is “efficient,” “conclusive,” and privacy-respecting (pages 13-17 of specification) — and not to any computer or technology. The asserted benefits flow from the abstract idea itself, not from any improved operation of a computer. The specification implements the certifier on a generic “computer-implemented system” that “communicates ... over a computer network, such as the Internet” (page 17 of the specification) and depicts the supporting hardware as a generic computer platform that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17). The disclosure therefore does not describe a technological improvement; and even if it did, the claim — which recites only generic components performing the abstract steps — does not reflect any such improvement. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016).
The recited processor, permanent storage, the act of receiving a fact, the act of archiving the fact, and the act of transmitting the fact certificate are invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)). Accordingly, claim 2 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. The processor, permanent storage, and generic computer-implemented environment are well-understood, routine, and conventional, as confirmed by the specification's own description of a generic computer platform (page 71 of specification; Fig. 17) and by Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Receiving a fact from a fact presenter and transmitting the fact certificate to the fact presenter are well-understood, routine, and conventional acts of receiving and transmitting data over a network. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Archiving the fact in the permanent storage is well-understood, routine, and conventional electronic storage and recordkeeping. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Alice Corp., 573 U.S. at 225. Considered as an ordered combination, these elements perform their conventional functions and do no more than implement the abstract idea on a generic computer; they add nothing significantly more. Accordingly, claim 2 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 3
Step 1: Claim 3 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 3 additionally recites “the fact presenter transmitting the fact certificate to a fact receiver.” This limitation merely recites a further step of the abstract fact-exchange interaction — the presenter communicating the fact certificate to the receiver — which is itself part of the certain method of organizing human activity (a commercial or legal interaction between people). See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 4
Step 1: Claim 4 depends from claim 3 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 4 additionally recites “the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid.” These limitations recite a mental process: inspecting a fact and using the fact certificate to establish that the fact is valid are observations, evaluations, and judgments that can be performed in the human mind or with pen and paper. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 5
Step 1: Claim 5 depends from claim 4 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: There a no additional abstract idea limitations expressly recited.
Step 2A, Prong 2: The claim recites the additional elements:
“via a computing device, transmitting both of the certified fact and the fact certificate ... to the fact receiver; and ... via a computing device, the fact receiver receiving both of the transmitted certified fact and the transmitted fact certificate”…This limitation does not add any further abstract concept; it recites the same abstract idea of presenting the certified fact, now stated as being carried out via a computing device. See MPEP 2106.04(a)(2). The additional elements in claim 5 are those identified in claim 4, plus the newly recited “a computing device” that transmits and receives the certified fact and the fact certificate. The newly recited computing device is a generic computer component invoked merely as a tool to carry out the abstract idea, amounting to no more than mere instructions to apply the exception on a computer (MPEP 2106.05(f)) and generally linking the abstract idea to a computer environment (MPEP 2106.05(h)). In addition, transmitting and receiving the certified fact and the fact certificate are insignificant extra-solution activities — the mere movement of data — that do not impose meaningful limits (MPEP 2106.05(g)). Accordingly, claim 5 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 4, the additional elements carried over from claim 4 are well-understood, routine, and conventional. The newly recited computing device is well-understood, routine, and conventional. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of the specification). Transmitting and receiving data over a network are likewise well-understood, routine, and conventional. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 5 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 6
Step 1: Claim 6 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 6 additionally recites “the fact comprises one of: an observed fact; and a deduced fact.” This limitation merely narrows the type of information to which the abstract idea is applied; narrowing the data does not change the abstract character of the claim. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 7
Step 1: Claim 7 depends from claim 6 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 7 additionally recites “the observed fact comprises a truth known by measurement or observation.” This limitation merely further narrows the nature of the information, specifying that the observed fact is a truth known by measurement or observation. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 8
Step 1: Claim 8 depends from claim 6 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 8 additionally recites “the fact presented by the fact presenter for certification comprises one of a measurement and an observation performed by an observer”… This limitation merely further narrows the nature of the information, specifying that the observed fact is a truth known by measurement or observation. See MPEP 2106.04(a)(2). Additional recited is “acceptance by the fact receiver of the fact certificate as valid establishes a permanent consensus between the fact presenter and the fact receiver that the measurement or observation accurately represents the information...”. This limitation recites a further method of organizing human activity — the parties reaching a permanent consensus (an agreement) that the measurement or observation accurately represents the reported information. See MPEP 2106.04(a)(2).
Step 2A, Prong 2: Claims 8 additionally recites:
“the information reported by a measurement device or the observer”…This merely identify the source of the data to be certified; obtaining the fact from such a source is insignificant extra-solution data gathering (MPEP 2106.05(g)) and generally links the abstract idea to a field of use (MPEP 2106.05(h)). Accordingly, claim 8 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 6, the additional elements carried over from claim 6 are well-understood, routine, and conventional. Obtaining data from a measurement device or a human observer is well-understood, routine, and conventional pre-solution data gathering. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 8 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 9
Step 1: Claim 9 depends from claim 8 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 9 additionally recites “the measurement or observation is not revealed to the fact receiver.” This limitation merely adds a privacy condition to the abstract idea, specifying that the measurement or observation is not revealed to the fact receiver. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 10
Step 1: Claim 10 depends from claim 8 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: There are no additional abstract idea limitations recited.
Step 2A, Prong 2: Claim 10 additionally recites:
“the certified fact and the fact certificate are broadcast to a plurality of fact receivers by the fact presenter.” This limitation recites disseminating the certified fact and fact certificate to a plurality of fact receivers, where broadcasting information to people is itself part of the method of organizing human activity, and to the extent it is performed electronically it introduces a new additional element of transmitting data. See MPEP 2106.04(a)(2). The judicial exception is not integrated into a practical application. For the same reasons discussed in the Step 2A, Prong 2 analysis of claim 8, the additional elements carried over from claim 8 do not integrate the judicial exception into a practical application. The recited broadcasting of the certified fact and fact certificate to a plurality of fact receivers is insignificant extra-solution activity — the transmission of data to recipients — that does not impose meaningful limits (MPEP 2106.05(g)). Accordingly, claim 10 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 8, the additional elements carried over from claim 8 are well-understood, routine, and conventional. Broadcasting or transmitting data over a network to multiple recipients is well-understood, routine, and conventional. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 10 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 11
Step 1: Claim 11 depends from claim 8 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 11 additionally recites “identity of the fact receiver is not known to at least one of an observer and the fact presenter.” This limitation merely adds an anonymity condition to the abstract idea, specifying that the identity of the fact receiver is not known to an observer or the fact presenter. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 12
Step 1: Claim 12 depends from claim 7 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 12 incorporates all the limitations of claim 7 and is therefore directed to the same abstract idea identified in claim 7. Claim 12 additionally recites “the deduced fact is based on any of a deductive reasoning process and one or more basis facts.” This limitation recites a mental process and a method of organizing information — that the deduced fact is based on a deductive reasoning process and one or more basis facts; deductive reasoning is a form of evaluation/judgment that can be performed in the human mind. See MPEP 2106.04(a)(2). No new additional elements are introduced.
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 13
Step 1: Claim 13 depends from claim 12 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 13 additionally recites “identity of the fact is not known to an observer at time of execution of the deductive reasoning process.” This limitation merely adds a condition to the abstract reasoning, specifying that the identity of the fact is not known to an observer at the time the deductive reasoning process is executed. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 14
Step 1: Claim 14 depends from claim 12 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 14 incorporates all the limitations of claim 12 and is therefore directed to the same abstract idea identified in claim 12. Claim 14 additionally recites “…any of presenting, storing, and transmitting the deduced fact in an interconnected data structure ... wherein the data structure comprises a tree of facts…” This limitation recites organizing the deduced fact and its basis facts into an interconnected data structure (a tree of facts); arranging information into a tree is a method of organizing information that can be performed mentally or with pen and paper. The limitation further introduces new additional elements (a computing device and the data structure). See MPEP 2106.04(a)(2).
Step 2A, Prong 2: Claim 14 additionally recites:
“via a computing device” and “interconnected data structure” (a “tree of facts”). The recited computing device is a generic computer component invoked merely as a tool to carry out the abstract idea, amounting to no more than mere instructions to apply the exception on a computer (MPEP 2106.05(f)) and generally linking the abstract idea to a computer environment (MPEP 2106.05(h)). The recited interconnected data structure and tree of facts merely organize the abstract facts themselves. Although the specification states that the data structure “allows efficient communication and storage of fact collections” (page 20 of specification), this is an asserted efficiency in organizing the abstract information, not an improvement to the functioning of a computer or to any technology.
Under Ex Parte Desjardins, the specification does not disclose, and the claim does not reflect, a technological improvement; unlike the self-referential table in Enfish that improved how a computer database itself operates, the recited tree is a generic means of arranging information that does not impose meaningful limits on the abstract idea (MPEP 2106.05(f)). Accordingly, claim 14 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 12, the additional elements carried over from claim 12 are well-understood, routine, and conventional. The newly recited computing device is well-understood, routine, and conventional. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Arranging and storing data in a generic data structure such as a tree is well-understood, routine, and conventional. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Alice Corp., 573 U.S. at 225. Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 14 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 15
Step 1: Claim 15 depends from claim 12 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: There are no additional abstract ideal limitations recited.
Step 2A, Prong 2: Claim 15 additionally recites:
“a fact certification library containing executable code allows repetition of the deductive reasoning process.” This limitation recites repetition of the deductive reasoning process — an abstract reasoning/organizing concept — being performed by a fact certification library containing executable code. See MPEP 2106.04(a)(2). The judicial exception is not integrated into a practical application. For the same reasons discussed in the Step 2A, Prong 2 analysis of claim 12, the additional elements carried over from claim 12 do not integrate the judicial exception into a practical application. The recited fact certification library containing executable code is a generic stored-software component; storing and reusing executable code to repeat a process is no more than mere instructions to apply the abstract idea on a computer (MPEP 2106.05(f)) and does not impose meaningful limits. Accordingly, claim 15 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 12, the additional elements carried over from claim 12 are well-understood, routine, and conventional. Storing executable code in a library for repeated execution is well-understood, routine, and conventional. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Alice Corp., 573 U.S. at 225. Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 15 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 16
Step 1: Claim 16 depends from claim 12 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 16 additionally recites “the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that a statement regarding the deductive reasoning process ... represents a description of the deductive reasoning process used.” This limitation recites a further method of organizing human activity — the parties reaching a lasting or permanent consensus (an agreement) regarding a description of the deductive reasoning process used. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 17
Step 1: Claim 17 depends from claim 12 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 17 additionally recites “the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that the fact that was deduced ... represents the result of an application of the deductive reasoning process.” This limitation recites a further method of organizing human activity — the parties reaching a lasting or permanent consensus (an agreement) that the deduced fact represents the result of the deductive reasoning process. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 18
Step 1: Claim 18 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 18 additionally recites “…computing a universal fact identifier for the fact that universally and uniquely identifies the fact, wherein knowledge of the universal fact identifier does not reveal the corresponding fact.” This limitation recites assigning a unique identifier to the fact that identifies it without revealing it; assigning and associating an identifier with information is an act of organizing and identifying information that can be performed mentally or with pen and paper. Consistent with the Kim memo, the generic recitation of “computing a universal fact identifier” does not set forth or describe any specific mathematical calculation, formula, or equation, and therefore is not treated under the mathematical-concept grouping.
Step 2A, Prong 2: Claim 18 additionally recites:
“via a computing device, computing a universal fact identifier for the fact…”. This computing device is a generic computer component invoked merely as a tool to carry out the abstract idea, amounting to no more than mere instructions to apply the exception on a computer (MPEP 2106.05(f)) and generally linking the abstract idea to a computer environment (MPEP 2106.05(h)). Computing a universal fact identifier for the fact is, at most, an insignificant extra-solution computation (MPEP 2106.05(g)). Accordingly, claim 18 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 2, the additional elements carried over from claim 2 are well-understood, routine, and conventional. The newly recited computing device is well-understood, routine, and conventional. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Computing an identifier for stored data is a well-understood, routine, and conventional repetitive computation. Parker v. Flook, 437 U.S. 584, 594 (1978); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 18 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 19
Step 1: Claim 19 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 19 additionally recites “the fact contains private information that cannot be revealed to any party other than the fact presenter.” This limitation merely adds a privacy characterization of the information, specifying that the fact contains private information that cannot be revealed to any party other than the fact presenter. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 20
Step 1: Claim 20 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 20 additionally recites “…creating the fact certificate which conclusively demonstrates that the certified fact is valid and trustworthy.” This limitation restates the core abstract idea — creating the fact certificate that demonstrates the certified fact is valid and trustworthy. See MPEP 2106.04(a)(2).
Step 2A, Prong 2: Claim 20 additionally recites:
“via a computing device,…”. This newly recited computing device is a generic computer component invoked merely as a tool to carry out the abstract idea, amounting to no more than mere instructions to apply the exception on a computer (MPEP 2106.05(f)) and generally linking the abstract idea to a computer environment (MPEP 2106.05(h)). Accordingly, claim 20 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 2, the additional elements carried over from claim 2 are well-understood, routine, and conventional. The newly recited computing device is well-understood, routine, and conventional. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 20 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 21
Step 1: Claim 21 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 21 additionally recites “…including with the certified fact a publication comprising any of: a visual communication; printed document; and digital document; wherein said publication visibly guarantees fact trustworthiness without altering an existing preparation of the publication and with altering format of the publication”. This limitation recites presenting and publishing the certified fact in a manner that visibly guarantees its trustworthiness, which is a method of organizing human activity and the presentation of information See MPEP 2106.04(a)(2).
Step 2A, Prong 2: Claim 21 additionally recites
“via a computing device…a publication comprising any of: a visual communication; printed document; a digital document…” This newly recited computing device is a generic computer component invoked merely as a tool to carry out the abstract idea, amounting to no more than mere instructions to apply the exception on a computer (MPEP 2106.05(f)) and generally linking the abstract idea to a computer environment (MPEP 2106.05(h)). The recited publication — a visual communication, printed document, or digital document presenting the certified fact — is insignificant post-solution activity, namely outputting or presenting the result of the abstract idea (MPEP 2106.05(g)), and generally links the abstract idea to a field of use (MPEP 2106.05(h)). Accordingly, claim 21 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 2, the additional elements carried over from claim 2 are well-understood, routine, and conventional. The newly recited computing device is well-understood, routine, and conventional. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Presenting or displaying results in a publication or digital document is well-understood, routine, and conventional. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 21 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 22
Step 1: Claim 22 depends from claim 2 and recites a method, which falls within the statutory category of a process. See MPEP 2106.03.
Step 2A, Prong 1: Claim 22 additionally recites “receiving a verification request at the fact certifier from a fact receiver…communicating a verification response from the fact certifier to the fact receiver; and the fact receiver using the verification response to establish that the fact is valid.” This limitation recites the verification interaction — receiving a verification request and communicating a verification response — and the fact receiver using the response to establish that the fact is valid, the latter being a mental evaluation/judgment. See MPEP 2106.04(a)(2).
Step 2A, Prong 2: Insofar as the newly recited steps can be considered additional elements, the receiving a verification request and communicating a verification response are insignificant extra-solution activities — receiving and transmitting data — that do not impose meaningful limits (MPEP 2106.05(g)). Accordingly, claim 22 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. For the same reasons discussed in the Step 2B analysis of claim 2, the additional elements carried over from claim 2 are well-understood, routine, and conventional. Receiving a request and transmitting a response over a network are well-understood, routine, and conventional. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Considered as an ordered combination, the additional elements do not amount to significantly more. Accordingly, claim 22 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 23
Step 1: Claim 23 recites “A system for certifying facts,” comprising a processor and a permanent storage programmed to perform computer-implemented operations and therefore falls within the statutory category of a machine. See MPEP 2106.03.
Step 2A, Prong 1: Claim 23 recites an abstract idea. The claim is directed to certifying a fact presented by one party and verifying its validity for another party so that the latter may rely upon it, this falling under the abstract idea grouping of a certain method of organizing human activity, specifically a commercial or legal interaction and the management of an interaction between people (a fact presenter and a fact receiver). Furthermore, the claim also recites a mental process, because evaluating the validity of a fact is an observation, evaluation, or judgment of a kind that can be performed in the human mind or with pen and paper. See MPEP 2106.04(a)(2).
The abstract idea is recited in the limitations “certifying the received fact by issuing a fact certificate for the received fact, wherein the fact certificate specifies a sequence of instructions in a natural language or as computer executable code or program that, when followed or executed by a receiver of the fact certificate … acting on behalf of the receiver of the fact certificate” and “enables a receiver of the fact certificate to evaluate validity of the fact.” The specification confirms that this is a longstanding human activity, describing the conventional fact-exchange cycle in which a human fact receiver — for example an audit accountant — verifies facts by recovering the reasoning, identifying the basis facts, and checking their authenticity (pages 3-4 of specification).
Step 2A, Prong 2: The judicial exception is not integrated into a practical application. The additional elements, considered individually and as an ordered combination, do not integrate the abstract idea into a practical application. The additional elements are:
“a processor; and a permanent storage associated with the processor…”… This recited processor, permanent storage, the act of receiving a fact, the act of archiving the fact, and the act of transmitting the fact certificate are invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)).
“receiving a fact from a fact presenter…”…This is insignificant extra-solution data gathering (MPEP 2106.05(g)).
“archiving the fact in the permanent storage”…This is insignificant extra-solution activity of electronic recordkeeping (MPEP 2106.05(g)).
“transmitting the fact certificate to the fact presenter”…This is insignificant extra-solution activity of data gathering and output (MPEP 2106.05(g)).
Under Ex Parte Desjardins, the specification is first consulted to determine whether it discloses an improvement to the functioning of a computer or to another technology that a person of ordinary skill would recognize. The specification discloses improvements only to the abstract process of exchanging trustworthy facts — introducing a certifier and a fact certificate so that fact verification is “efficient,” “conclusive,” and privacy-respecting (pages 13-17 of specification) — and not to any computer or technology. The asserted benefits flow from the abstract idea itself, not from any improved operation of a computer. The specification implements the certifier on a generic “computer-implemented system” that “communicates ... over a computer network, such as the Internet” (page 17 of the specification) and depicts the supporting hardware as a generic computer platform that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17). The disclosure therefore does not describe a technological improvement; and even if it did, the claim — which recites only generic components performing the abstract steps — does not reflect any such improvement. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016).
The recited processor, permanent storage, the act of receiving a fact, the act of archiving the fact, and the act of transmitting the fact certificate are invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)). Accordingly, claim 23 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. The processor and permanent storage programmed to perform the operations are well-understood, routine, and conventional generic computer hardware, as confirmed by the specification (page 71 of specification; Fig. 17) and by Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17), and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Receiving a fact and transmitting the fact certificate are well-understood, routine, and conventional acts of receiving and transmitting data over a network. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Archiving the fact in the permanent storage is well-understood, routine, and conventional electronic storage. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Alice Corp., 573 U.S. at 225. Considered as an ordered combination, these elements perform their conventional functions and do no more than implement the abstract idea on a generic computer; they add nothing significantly more. Accordingly, claim 23 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 24
Step 1: Claim 24 depends from claim 23 and recites a system, which falls within the statutory category of a machine. See MPEP 2106.03.
Step 2A, Prong 1: Claim 24 additionally recites “the fact presenter transmitting the fact certificate to a fact receiver.” This limitation merely recites a further step of the abstract fact-exchange interaction — the presenter communicating the fact certificate to the receiver — which is part of the certain method of organizing human activity. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 25
Step 1: Claim 25 depends from claim 24 and recites a system, which falls within the statutory category of a machine. See MPEP 2106.03.
Step 2A, Prong 1: Claim 25 additionally recites “the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid.” These limitations recite a mental process: inspecting a fact and using the fact certificate to establish that the fact is valid are observations, evaluations, and judgments that can be performed in the human mind. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 26
Step 1: Claim 26 recites “A non-transitory computer-readable medium having embodied thereon computer-readable instructions” that, when executed by a processor, implement a method for certifying facts and therefore falls within the statutory category of a manufacture. See MPEP 2106.03. Accordingly, claim 26 satisfies Step 1 of the eligibility analysis.
Step 2A, Prong 1: Claim 26 recites an abstract idea. The claim is directed to certifying a fact presented by one party and verifying its validity for another party so that the latter may rely upon it, this falling under the abstract idea grouping of a certain method of organizing human activity, specifically a commercial or legal interaction and the management of an interaction between people (a fact presenter and a fact receiver). Furthermore, the claim also recites a mental process, because evaluating the validity of a fact is an observation, evaluation, or judgment of a kind that can be performed in the human mind or with pen and paper. See MPEP 2106.04(a)(2).
The abstract idea is recited in the limitations “certifying the received fact by issuing a fact certificate for the received fact” and “enables a receiver of the fact certificate to evaluate validity of the fact.” The specification confirms that this is a longstanding human activity, describing the conventional fact-exchange cycle in which a human fact receiver — for example an audit accountant — verifies facts by recovering the reasoning, identifying the basis facts, and checking their authenticity (pages 3-4 of specification).
Step 2A, Prong 2: The judicial exception is not integrated into a practical application. The additional elements, considered individually and as an ordered combination, do not integrate the abstract idea into a practical application. The additional elements are:
“A non-transitory computer-readable medium having embodied thereon computer-readable instructions, which when executed by a processor having a storage associated therewith…”…This recited non-transitory computer-readable medium, computer-readable instructions, processor, storage, the act of receiving a fact, the act of archiving the fact, and the act of transmitting the fact certificate are invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)).
“receiving a fact at the fact certifier from a fact presenter”…This is insignificant extra-solution data gathering (MPEP 2106.05(g)).
“archiving the fact in the permanent storage”… This is insignificant extra-solution activity of electronic recordkeeping (MPEP 2106.05(g)).
“transmitting the fact certificate to the fact presenter”…This is insignificant extra-solution activity of data gathering and output (MPEP 2106.05(g)).
Under Ex Parte Desjardins, the specification is first consulted to determine whether it discloses an improvement to the functioning of a computer or to another technology that a person of ordinary skill would recognize. The specification discloses improvements only to the abstract process of exchanging trustworthy facts — introducing a certifier and a fact certificate so that fact verification is “efficient,” “conclusive,” and privacy-respecting (pages 13-17 of specification) — and not to any computer or technology. The asserted benefits flow from the abstract idea itself, not from any improved operation of a computer. The specification implements the certifier on a generic “computer-implemented system” that “communicates ... over a computer network, such as the Internet” (page 17 of the specification) and depicts the supporting hardware as a generic computer platform that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17). The disclosure therefore does not describe a technological improvement; and even if it did, the claim — which recites only generic components performing the abstract steps — does not reflect any such improvement. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed. Cir. 2016).
The recited non-transitory computer-readable medium, computer-readable instructions, processor, storage, the act of receiving a fact, the act of archiving the fact, and the act of transmitting the fact certificate are invoked merely as tools to perform the abstract idea, which is no more than mere instructions to apply the exception on a generic computer (MPEP 2106.05(f)) and generally links the abstract idea to a computer environment (MPEP 2106.05(h)). Accordingly, claim 26 does not satisfy Step 2A, Prong 2.
Step 2B: The claim does not include additional elements that amount to significantly more than the judicial exception. The non-transitory computer-readable medium, the stored computer-readable instructions, the processor, and the associated storage are well-understood, routine, and conventional generic computer components, as confirmed by the specification (spec page {71}, Fig. 17) and by Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 226 (2014); see also the specification, which describes the supporting hardware as a generic “computer platform” comprising a processor, main memory, static memory and a network interface device that is “any machine capable of executing a sequence of instructions” (page 71 of specification; Fig. 17) , and describes the certifier as a “computer-implemented system that includes a permanent storage unit and communicates with the computational agents of fact presenters and fact receivers over a computer network, such as the Internet” (page 17 of specification). Receiving a fact and transmitting the fact certificate are well-understood, routine, and conventional acts of receiving and transmitting data over a network. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016); TLI Communications LLC v. AV Automotive, LLC, 823 F.3d 607, 610 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Archiving the fact in the permanent storage is well-understood, routine, and conventional electronic storage. Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Alice Corp., 573 U.S. at 225. Considered as an ordered combination, these elements perform their conventional functions and do no more than implement the abstract idea on a generic computer; they add nothing significantly more. Accordingly, claim 26 does not satisfy Step 2B and is rejected under 35 U.S.C. 101.
CLAIM 27
Step 1: Claim 27 depends from claim 26 and recites a non-transitory computer-readable medium, which falls within the statutory category of a manufacture. See MPEP 2106.03.
Step 2A, Prong 1: Claim 27 additionally recites “the fact presenter transmitting the fact certificate to a fact receiver.” This limitation merely recites a further step of the abstract fact-exchange interaction — the presenter communicating the fact certificate to the receiver — which is part of the certain method of organizing human activity. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
CLAIM 28
Step 1: Claim 28 depends from claim 27 and recites a non-transitory computer-readable medium, which falls within the statutory category of a manufacture. See MPEP 2106.03.
Step 2A, Prong 1: Claim 28 additionally recites “the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid.” These limitations recite a mental process: inspecting a fact and using the fact certificate to establish that the fact is valid are observations, evaluations, and judgments that can be performed in the human mind. See MPEP 2106.04(a)(2).
Step 2A, Prong 2 and Step 2B: There are no additional elements. The analysis from parent claim is maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 1 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US Pat. No. 5,748,738 to Bisbee et al. (hereinafter Bisbee).
Per claim 1, Bisbee discloses A computer-implemented method for exchange of verifiable digital information, using a fact certification module and a fact verification module, the fact certification module and fact verification module each comprising a processor, a communication interface, and wherein the fact certification module and the fact verification module each have access to a permanent storage system (Bisbee: col. 5, ln 29-39…Bisbee's Document Authentication System (DAS) exchanges verifiable digital documents, the Authentication Center performs both an authentication (certification) function and a storage/retrieval (verification) function on a server having a processor, a terminal communication subsystem, and storage, which constitutes the claimed certification and verification modules each comprising a processor and a communication interface with access to a permanent storage system, “the DAS is a system for authenticating a document by applying digital signature encryption technology. As used here, "authentication" is the corroboration and verification of the identity of the party which executed, sealed, or transmitted the original document and verification that the encrypted document received is the document sent by that party. The DAS uses an Authentication Center to provide an audit or evidence trail, for applications that require this capability, from the original execution of the executed or encrypted or sealed document through all subsequent transmissions”; col. 8, ln 38-44…"The Authentication Center is advantageously organized as a server subsystem, a crypto backup subsystem, and storage. As part of the server subsystem, which may be implemented with a 486 computer running under a UNIX-type operating system, a terminal communication subsystem includes a multiport controller (see also FIG. 3) that handles communications with the Transfer Agent terminals"; Abstract…”An Authentication Center provides “third party" verification that a document is executed and transmitted by the document's originator. The methods and apparatus eliminate the need for "hard copies" of original documents as well as hard-copy storage. Retrieval of an authenticated document from the Authentication Center may be done by any number of authorized parties at any time by on-line capability”),
wherein during a fact certification stage, the fact certification module performs the method comprising:
receiving a digital fact for certification at the fact certification module from a fact presenter via the communication interface (Bisbee: col. 6, ln. 14-26…the digitally signed electronic document received by the Authentication Center from the Transfer Agent (the fact presenter) over a modem or computer network is a digital fact received for certification via a communication interface, "…each transaction and its documents are authenticated by transmission to the Authentication Center from the Transfer Agent's terminal. As described below, the Transfer Agent provides the document in digital form, such as the output of a conventional word processor, to the Transfer Agent's Token…The digital document is digitally signed and/or encrypted by the DAS Token, and the digitally signed and/or encrypted version is communicated to the Authentication Center electronically (e.g., by modem or computer network)");
issuing a digital certification data structure corresponding to the digital fact received for certification, wherein validity of the digital fact received for certification is verifiable by a receiver of the digital certification data structure (Bisbee: col. 6, ln. 31-42…the digital signature and date-and-time stamp the Authentication Center appends to the received document form a certification data structure corresponding to that document, and the DAS guarantees that any receiving party can later verify the document's integrity, "The Authentication Center verifies the identity of the Transfer Agent and the authenticity of the documents, and appends a digital signature and a date and time stamp to the document, thereby establishing each transaction in a manner which can not be repudiated"; col. 6, ln. 60-67 "The DAS can verify at any stage and at any time that a document is exactly, to the last bit, the document which was executed and transmitted by the originator and that the document has not been altered or impaired in any manner");
archiving the digital certification data structure in a permanent storage system; and (Bisbee: col. 6, ln. 43-52…the authenticated documents bearing the Center's appended signature and date-time stamp are stored on optical and/or magnetic disks, i.e., the certification data structure is archived in a permanent storage system, "The authenticated, digitally signed and/or encrypted documents are stored by the third-party Authentication Center in any convenient form, such as on optical and/or magnetic disks")
wherein, during a fact verification stage, the fact verification module performs the method comprising:
receiving a verification request at the fact verification module from a fact receiver via the communication interface, the request including any of a digital fact of interest, a digital digest of the fact of interest, or a unique fact identifier corresponding to the fact of interest (Bisbee: col. 6, ln. 49-59…an authorized party's access request to obtain a specific authenticated document is a verification request that identifies the document of interest, being a "unique fact identifier" because access is controlled at the granularity of an individually identified document, "any authorized party can access the Authentication Center through an electronic device such as a modem to obtain or further transmit an authenticated document…Authorization for access may be restricted to the level of a single document or group of documents"; Abstract… retrieval from the Center is performed per individually identified document by any authorized party on-line, "Retrieval of an authenticated document from the Authentication Center may be done by any number of authorized parties at any time by on-line capability"; col. 12…request, e.g., instruction, drives retrieval of the specific stored authenticated object, "the transferring step comprises retrieving the stored authenticated object and providing the retrieved authenticated object to the entity in accordance with the instruction");
accessing a permanent storage (Bisbee: col. 6, ln. 51-59…responding to the access request entails retrieving the stored authenticated document from the Authentication Center's document storage, "All transmissions of electronic documents are made to the Authentication Center, which provides authentication as described above and stores the authenticated documents for transmission to and on behalf of authorized parties"); and
returning to the fact receiver via the communication interface a response to the received verification request, the response comprising any of: a search result, a digital certification data structure retrieved from the permanent storage system, and a formatted response data structure (Bisbee: col. 6, lns. 43-51…the authenticated document, bearing the Center's digital signature and date-time stamp and retrieved from storage, is transmitted to the authorized requesting party over the modem/network connection, which is a digital certification data structure retrieved from the permanent storage system, "any authorized party can access the Authentication Center through an electronic device such as a modem to obtain or further transmit an authenticated document").
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 2-9, 11, 18-20 and 22-28 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over How To Time-Stamp a Digital Document to Haber et al. (hereinafter Haber) in view of Internet X.509 Public Key Infrastructure Time-Stamp Protocol (TSP) to Adams et al. (hereinafter Adams).
Per claim 2, Haber discloses A computer-implemented method for certifying facts, comprising: (Haber: p. 100, Section 2…Haber's time-stamping schemes certify digital documents in a computational setting of networked client computers and a time-stamping service, "The setting for our problem is a distributed network of users, perhaps representing individuals, different companies, or divisions within a company")
using a fact certifier, the fact certifier comprising a processor and a permanent storage associated with the processor, wherein the processor performs the method (Haber: p. 101, Section 3…the time-stamping service (TSS) is the fact certifier and maintains storage in which received documents are retained, "Whenever a client has a document to be time-stamped, he or she transmits the document to a time-stamping service (TSS). The service records the date and time the document was received and retains a copy of the document for safe-keeping"; p. 109, Section 7…TSS implemented centrally, intrinsically with a processor, “we would like to emphasize the practical nature of our suggestion: because there are practical implementations of these cryptographic tools, both of our time-stamp schemes can be inexpensively implemented as described. Practical hash functions like Rivest's are quite fast, even running on low-end PCs”; p. 102, Section 4.1…TSS computes cryptographic hash functions and digital signatures over digital documents exchanged on a computer network, such cryptographic computation cannot be performed without a processor, so a processor is necessarily present in the TSS, "We use the hash function as follows. Instead of transmitting his document x to the TSS, a client will send its hash value h(x) = y instead. For the purposes of authentication, time-stamping y is equivalent to time-stamping x. This greatly reduces the bandwidth problem and the storage requirements, and solves the privacy issue as well") comprising:
receiving a fact at the fact certifier from a fact presenter (Haber: p. 101, Section 3…the client (fact presenter) transmits the digital document (the fact) to the TSS (fact certifier), "Whenever a client has a document to be time-stamped, he or she transmits the document to a time-stamping service (TSS)");
certifying the received fact by issuing a fact certificate for the received fact (Haber: p. 102, Section 4.2… upon receipt the TSS creates and signs a time-stamp certificate for the fact, "when the TSS receives the hash value, it appends the date and time, then signs this compound document and sends it to the client"; p. 103, Section 5.1…"The TSS issues signed, sequentially numbered time-stamp certificates");
archiving the fact in the permanent storage; and (Haber: p. 101, Section 3…the TSS retains the received fact in safe-keeping storage, "Whenever a client has a document to be time-stamped, he or she transmits the document to a time-stamping service (TSS). The service records the date and time the document was received and retains a copy of the document for safe-keeping");
transmitting the fact certificate to the fact presenter (Haber: p. 102, Section 4.2…the signed time-stamp certificate is returned to the requesting client (the fact presenter), "With a secure signature scheme available, when the TSS receives the has value, it appends the date and time, then signs this compound document and sends it to the client").
Haber does not expressly disclose, but with Adams does teach: wherein the fact certificate specifies a sequence of instructions in a natural language or as computer executable code or program that, when followed or executed by a receiver of the fact certificate or a computational agent acting on behalf of the receiver of the fact certificate, enables a receiver of the fact certificate to evaluate validity of the fact (Adams: p. 3, Section 2.2…Adams's time-stamp token specifies, in machine-interpretable form, the sequence of verification operations that the receiving entity's software (a computational agent) executes — verification of the token's fields, of its digital signature, of the data imprint, and of the hash algorithm identified by OID within the token — thereby enabling the receiver to evaluate validity of the certified fact, "…the requesting entity requests a time-stamp token by sending a request (which is or includes a TimeStampReq, as defined below) to the Time Stamping Authority. As the second message, the Time Stamp Authority responds by sending a response…to the requesting entity. Upon receiving the response, … the requesting entity SHALL verify the status error returned in the response and if no error is present it SHALL verify the various fields contained in the TimeStampToken and the validity of the digital signature of the TimeStampToken"; pp. 3-4, Section 2.2…"The requester SHALL verify that the TimeStampToken contains the correct certificate identifier of the TSA, the correct data imprint and the correct hash algorithm OID"; p. 5, Section 2.4.1…the token's embedded algorithm identifier instructs the verifying agent which executable one-way function to apply, "The hash algorithm indicated in the hashAlgorithm field SHOULD be a known hash algorithm (one-way and collision resistant)"; p. 9, Section 2.4.2…the token's own messageImprint and hashAlgorithm fields are the operands and operator that the receiving agent's verification code executes and compares, i.e., machine-interpretable directives carried within the certificate itself — which is constitutes a sequence of instructions ... as computer executable code or program, the certificate's instructions are what the verifier person or computational agent follows or executes to conclude validity, "The messageImprint MUST have the same value as the similar field in TimeStampReq, provided that the size of the hash value matches the expected size of the hash algorithm identified in hashAlgorithm").
Haber and Adams are analogous art because they are from the same field of endeavor, specifically trusted digital time-stamping and certification of digital documents. They address the same problem of enabling a receiver to verify that digital information existed in unaltered form at a certified time. Adams also expressly identifies the Haber-Stornetta time-stamping work as a reference underlying the Time-Stamp Protocol (Adams: p. 17…IPR notice listing "# 5,136,647 Method for Secure Time-Stamping of Digital Documents ... Inventors: Stuart A. Haber, Wakefield S. Stornetta Jr."), which is the core subject of Haber.
Before the effective filing date of the claimed invention (and at the time the invention was made), it would have been obvious to a person of ordinary skill in the art to implement Haber's time-stamping service using the standardized request/response formats and time-stamp token of Adams, so that the certificate issued by the certifier specifies, in standard machine-executable form, the hash algorithm and verification fields that a receiver's computational agent executes to evaluate the validity of the certified fact. This is the use of a known technique (Adams's standardized TSP token and its specified verification procedure) to improve a similar device (Haber's time-stamping service) in the same way, with predictable results (KSR rationale (C)).
The suggestion/motivation for doing so would have been that Adams provides the Internet-standard protocol for precisely the time-stamping service that Haber describes, Adams's intellectual-property notice expressly cites the Haber-Stornetta time-stamping patents (Adams: p. 17), and Adams teaches that the standardized token enables any receiving entity to confirm the association between the certificate and the underlying fact (Adams: p. 2, Section 2.2…"In particular, it SHALL verify that what was time-stamped corresponds to what was requested to be time-stamped").
Per claim 3, Haber combined with Adams discloses claim 2, Haber further disclosing the fact presenter transmitting the fact certificate to a fact receiver (Haber: p. 104, Section 5.1…when the certified document is challenged, the client (presenter) produces her time-stamp certificate to the challenger (fact receiver) for inspection, "If her time-stamped document x is later challenged, the challenger first checks that the time-stamp (s, IDn+1) is of the correct form (with s being a signature of a certificate that indeed contains a hash of x)").
Per claim 4, Haber combined with Adams discloses claim 3, Haber combined with Adams further disclosing the fact receiver inspecting the fact; and after the sequence of instructions included in the fact certificate are followed or executed by the fact receiver, using the fact certificate to establish that the fact is valid (Haber: p. 102, Section 4.1…validating the certificate requires producing and inspecting the preimage fact and recomputing its hash, "Part of the procedure for validating a time-stamp will be to produce the preimage document x that satisfies h(x) = y; inability to produce such an x invalidates the putative time-stamp"; Adams: Section 2.2, p. 3…the receiving entity executes the token-specified verifications to establish validity, "it SHALL verify the various fields contained in the TimeStampToken and the validity of the digital signature of the TimeStampToken"). The rationale to combine Adams with Haber is the same as the parent claim.
Per claim 5, Haber combined with Adams discloses claim 4, Haber further disclosing via a computing device, transmitting both of the certified fact and the fact certificate corresponding to the transmitted, certified fact to the fact receiver; and ... via a computing device, the fact receiver receiving both of the transmitted certified fact and the transmitted fact certificate (Haber: p. 104, Section 5.1…the challenger receives both the document x and the time-stamp certificate, because the check requires confirming that the certificate contains a hash of the received document, "of the correct form (with s being a signature of a certificate that indeed contains a hash of x)").
Per claim 6, Haber combined with Adams discloses claim 2, Haber further disclosing the fact comprises one of: an observed fact; and a deduced fact (Haber: p. 99, Section 1…the time-stamped documents include dated records of observations of work performed, i.e., observed facts, "One accepted procedure for time-stamping a scientific idea involves daily notations of one's work in a lab notebook").
Per claim 7, Haber combined with Adams discloses claim 6, Haber further disclosing the observed fact comprises a truth known by measurement or observation (Haber: p. 99, Section 1…the daily dated notebook notations record the inventor's first-hand observations of work actually performed, e.g., a truth known by observation, and Haber's purpose is to certify when that observed record existed, "in intellectual property matters, it is sometimes crucial to verify the date an inventor first put in writing a patentable idea, in order to establish its precedence over competing claims").
Per claim 8, Haber combined with Adams discloses claim 6, Haber further disclosing the fact presented by the fact presenter for certification comprises one of a measurement and an observation performed by an observer and wherein acceptance by the fact receiver of the fact certificate as valid establishes a permanent consensus between the fact presenter and the fact receiver that the measurement or observation accurately represents the information reported by a measurement device or the observer (Haber: p. 101, Section 3…the time-stamped record permanently evidences to presenter and receiver alike that the fact is an accurate, untampered account of what was originally recorded as of the certified date, establishing a lasting (permanent) consensus, "If the integrity of the client's document is ever challenged, it can be compared with the copy stored by the TSS. If they are identical, this is evidence that the document has not been tampered with after the date contained in the TSS records").
Per claim 9, Haber combined with Adams discloses claim 8, Haber further disclosing the measurement or observation is not revealed to the fact receiver (Haber: p. 102, Section 4.1…only the hash value, not the underlying content, need ever be disclosed, "Instead of transmitting his document x to the TSS, a client will send its hash value h(x) = y instead"; p. 99, Abstract…"Our procedures maintain complete privacy of the documents themselves, and require no record-keeping by the time-stamping service").
Per claim 11, Haber combined with Adams discloses claim 8, Haber further disclosing identity of the fact receiver is not known to at least one of an observer and the fact presenter (Haber: p. 100, Section 2…verification is available to any future third-party challenger, whose identity is necessarily unknown to the presenter and observer at certification time, "There should also be a procedure for meeting a third party's challenge to the validity of a document's time-stamp").
Per claim 18, Haber combined with Adams discloses claim 2, Haber with Adams further disclosing via a computing device, computing a universal fact identifier for the fact that universally and uniquely identifies the fact, wherein knowledge of the universal fact identifier does not reveal the corresponding fact and wherein the universal fact identifier is uniquely associated with the fact so that the universal fact identifier has only one possible corresponding fact (Haber: p. 102, Section 4.1…the collision-free hash value y = h(x) uniquely identifies the fact without revealing it, and collision-freeness ensures only one feasible corresponding fact, "Instead of transmitting his document x to the TSS, a client will send its hash value h(x) = y instead. For the purposes of authentication, time-stamping y is equivalent to time-stamping x"; Adams: p. 15, Section 4, Security Considerations, item 5…identical imprints correspond to the same underlying data, confirming the one-to-one association, "the generated time-stamp tokens will include identical message imprints; as a result, an observer with access to those time-stamp tokens could infer that the time-stamps may refer to the same underlying data"). The rationale to combine Adams with Haber is the same as the parent claim.
Per claim 19, Haber combined with Adams discloses claim 2, Haber with Adams further disclosing the fact contains private information that cannot be revealed to any party other than the fact presenter (Haber: p. 99, Abstract…the schemes keep the document private from every party including the time-stamping service itself, "Our procedures maintain complete privacy of the documents themselves, and require no record-keeping by the time-stamping service"; Adams: p. 3, Section 2.1…the TSA is forbidden from examining the underlying datum, "not to examine the imprint being time-stamped in any way (other than to check its length, as specified in the previous bullet)"). The rationale to combine Adams with Haber is the same as the parent claim.
Per claim 20, Haber combined with Adams discloses claim 2, Haber further disclosing via a computing device, creating the fact certificate which conclusively demonstrates that the certified fact is valid and trustworthy (Haber: p. 99, Abstract…the certificate renders back-dating or forward-dating computationally infeasible, conclusively demonstrating the certified fact's integrity, "We propose computationally practical procedures for digital time-stamping of such documents so that it is infeasible for a user either to back-date or to forward-date his document").
Per claim 22, Haber combined with Adams discloses claim 2, Haber with Adams further disclosing receiving a verification request at the fact certifier from a fact receiver, based on a receipt at the fact receiver of the fact certificate from the fact presenter; communicating a verification response from the fact certifier to the fact receiver; and the fact receiver using the verification response to establish that the fact is valid (Haber: p. 101, Section 3…a challenged certified fact is verified against the certifier's stored copy, i.e., a verification request answered by the certifier with a comparison result the receiver uses to establish validity, "If the integrity of the client's document is ever challenged, it can be compared with the copy stored by the TSS. If they are identical, this is evidence that the document has not been tampered with after the date contained in the TSS records"; Adams: p. 3, Section 2.2…the authority responds to the requesting entity, which verifies the response, "the Time Stamping Authority responds by sending a response (which is or includes a TimeStampResp, as defined below) to the requesting entity").
Per claim 23, Haber combined with Adams discloses A system for certifying facts, comprising: a processor; and a permanent storage associated with the processor; wherein the processor is programmed to perform computer-implemented operations comprising: (Haber: p. 101, Section 3…the TSS is a computer-implemented service with storage in which received facts are retained, "The service records the date and time the document was received and retains a copy of the document for safe-keeping"; Adams: pp. 2-3, Section 2.1…the TSA is a networked computational authority that produces tokens upon request, "to produce a time-stamp token upon receiving a valid request from the requester, when it is possible"), the recited operations being substantially identical to the steps of claim 2; the mapping set forth for claim 2 above applies equally. The rationale to combine Adams with Haber is the same as for claim 2.
Per claim 26, Haber combined with Adams discloses A non-transitory computer-readable medium having embodied thereon computer-readable instructions, which when executed by a processor having a storage associated therewith, implements a method for certifying facts (Haber: p. 100, Section 2…Haber's schemes are computer-implemented cryptographic procedures performed by software on networked computers, which a person of ordinary skill understands to exist as instructions embodied on a non-transitory medium and executed by a processor, "The setting for our problem is a distributed network of users, perhaps representing individuals, different companies, or divisions within a company"), the remaining limitations being substantially identical to claim 2; the mapping set forth for claim 2 above applies equally. The rationale to combine Adams with Haber is the same as for claim 2.
Claims 24, 25, 27 and 28 are substantially similar in scope and spirit as claims 3 and 4. Therefore the rejections of claims 3 and 4 are applied accordingly.
Claims 10, 12-17 and 21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Haber in view of Adams in view of Improving the Efficiency and Reliability of Digital Time-Stamping to Bayer et al. (hereinafter Bayer).
Per claim 10, Haber combined with Adams discloses claim 8. Haber combined with Adams does not expressly disclose, but with Bayer does teach: the certified fact and the fact certificate are broadcast to a plurality of fact receivers by the fact presenter (Bayer: p. 4…the certified time-stamp values ("winners") are broadcast so that a plurality of interested parties receive and can verify them, "the winners can be broadcast by various members of the respective hemispheres, and anyone who wants to can carry out the computations to determine the unique global winner for that time period"; Haber: p. 105, Section 5.2…in the distributed-trust scheme the fact presenter herself transmits the certified fact to each of a plurality of receivers, "Our client sends her request (y, ID) to each of these clients").
Per claim 12, Haber combined with Adams discloses claim 7. Haber combined with Adams does not expressly disclose, but with Bayer does teach: the deduced fact is based on any of a deductive reasoning process and one or more basis facts (Bayer: p. 3…the combined hash value is a new fact deduced from two basis facts (the users' hash values) by applying the deterministic hash-combination process, which is a deductive reasoning process applied to one or more basis facts, "Suppose we combine the hash values of two users' documents into one new hash value, and publicize only the combined hash value").
Per claim 13, Haber combined with Adams and Bayer discloses claim 12. Bayer further teaches identity of the fact is not known to an observer at time of execution of the deductive reasoning process (Bayer: p. 4…the value of the combined (deduced) hash is necessarily unknown to the contributing participants (observers) until the combination has been computed, because the output of a secure hash combination is unpredictable before it is executed, "Either participant, by saving his or her own document as well as the other contributing hash value, can later establish that the document existed before the time when the combined hash value was publicized"; p. 1…Bayer premises time-stamp evidence on values that could not have been predicted before they happened, so the combined (deduced) value is necessarily unknown to any observer until the combination process executes, "it is necessary to report events that could not have been predicted before they happened").
Per claim 14, Haber combined with Adams and Bayer discloses claim 12. Bayer further teaches via a computing device, any of presenting, storing, and transmitting the deduced fact in an interconnected data structure that allows efficient certification and communication of facts deduced from other facts by the deductive reasoning process, wherein the data structure comprises a tree of facts, wherein: the deduced fact comprises a root node of the tree; wherein the basis facts comprise nodes of the tree; and wherein the observed fact comprises a leaflet of the tree (Bayer: p. 4…the time-stamped values are organized as a binary hash tree whose root is the deduced combined value, whose interior nodes are the combining basis values along the authentication path, and whose leaves are the individual documents' hash values, enabling efficient (logarithmic) certification and communication, "More generally, suppose that N hash values are combined into one via a binary tree, and the resulting single hash value is widely publicized"; p. 4…"a participant need only record his own document, as well as the ⌈log2 N⌉ hash values that were directly combined with the document's hash value along the path to the root of the tree").
Per claim 15, Haber combined with Adams and Bayer discloses claim 12. Bayer further teaches a fact certification library containing executable code allows repetition of the deductive reasoning process (Bayer: p. 4…once the hash functions are fixed by agreement, any party's implementation of those agreed functions (executable code available to all participants) repeats the combination process during verification, "Once hashing functions are chosen, such a scheme could be carried out like a world championship tournament"; p. 4…"Verification consists simply of recomputing the root of the tree from this data"; Haber: p. 102, Section 4.1…the agreed hash functions exist as concrete executable implementations (e.g., Rivest's) available to all parties, i.e., a library of executable code whose re-execution repeats the combination process, "There are practical implementations of hash functions, for example, that of Rivest [19], which seem to be reasonably secure").
Per claim 16, Haber combined with Adams and Bayer discloses claim 12. Bayer further teaches the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that a statement regarding the deductive reasoning process used to deduce the fact from other facts represents a description of the deductive reasoning process used (Bayer: p. 4…the recorded combining values together with their "handedness" constitute a complete, agreed statement describing exactly how the deduced root value was computed from the basis values, on which presenter and any receiver permanently agree by recomputation, "along with each combining hash value, the user needs to record its "handedness," indicating whether the newly computed value was placed before or after the combining hash value").
Per claim 17, Haber combined with Adams and Bayer discloses claim 12. Bayer further teaches the fact presenter and the fact receiver are enabled to achieve lasting or permanent consensus that the fact that was deduced from other facts by the deductive reasoning process represents the result of an application of the deductive reasoning process (Bayer: p. 4…any party recomputing the root from the recorded data permanently confirms that the published (deduced) value is the true result of applying the stated combination process to the basis facts, "Verification consists simply of recomputing the root of the tree from this data").
Per claim 21, Haber combined with Adams discloses claim 2. Haber combined with Adams does not expressly disclose, but with Bayer does teach: via a computing device, including with the certified fact a publication comprising any of: a visual communication; printed document; and digital document; wherein said publication visibly guarantees fact trustworthiness without altering an existing preparation of the publication and without altering format of the publication (Bayer: p. 4…the certified values are recorded in printed newspaper advertisements, a printed-document publication whose wide availability visibly guarantees the trustworthiness of the certified facts while leaving the underlying documents and the publication's own preparation and format unaltered, "The newspaper functions as a widely available public record whose long-term preservation at many locations makes tampering very difficult"; p. 4…the certified values are expressly recorded in printed newspaper advertisements preserved indefinitely, "At a minimum, daily global winners could be recorded in newspaper advertisements, to end up indefinitely on library microfilm")
As it pertains to claims 10, 12-17 and 21…Haber, Adams and Bayer are analogous art because all three are from the same field of endeavor, specifically trusted digital time-stamping and certification of digital documents. Bayer is a direct continuation of the Haber-Stornetta time-stamping work by the same authors and addresses the same problem of efficient and reliable verification of certified digital facts.
Before the effective filing date of the claimed invention (and at the time the invention was made), it would have been obvious to a person of ordinary skill in the art to organize the hash values certified by the Haber/Adams time-stamping service into Bayer's tree structure and to broadcast and publish the resulting root values, in order to reduce storage and verification cost while increasing the number of witnesses to each certification. This is a combination of prior art elements (Haber/Adams time-stamp certification; Bayer's hash tree and publication) according to known methods to yield predictable results (KSR rationale (A)).
The suggestion/motivation for doing so would have been Bayer's express teaching that the tree organization achieves "an exponential increase in the publicity obtained for each time-stamping event, while reducing the storage and the computation required in order to validate a given certificate" (Bayer: p. 1, Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN CHEN whose telephone number is (571) 272-4143. The examiner can normally be reached M-F 10-7.
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/ALAN CHEN/Primary Examiner, Art Unit 2125
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