DETAILED ACTION
Acknowledgements
The amendment filed 2/6/2026 is acknowledged.
Claims 21-40 are pending.
Claims 21-40 have been examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/6/2026 has been entered.
Response to Amendment/Argument
Regarding the rejection of the claims under 35 USC 101, applicant states that the claimed invention provide a practical application by improving the technical field of blockchain technology to enable content of a blockchain to be shared across different enterprises or computers associated with the blockchain network. Applicant cites Example 47 and states that like the example, the present claims reflect the improvement for enabling content to be shared across different enterprises via a blockchain without requiring the enterprises to open their respective networks to one another, and enable a trusted record of creation, access, and modification of content to be generated on the blockchain. Applicant states that the components of the computing device are not merely being applied by a general use computer and they provide an improvement to an existing technological process.
Examiner notes, however, that the only use of a blockchain in the claims is to add a block comprising the second hash to the blockchain and retrieving the block in the blockchain. This only involves using the blockchain as a store of information, equivalent to a ledger, by writing information to the blockchain and reading information from the blockchain. The functions of writing information to a blockchain and reading information from the blockchain do not provide any technical improvement to the blockchain, as these are typical ways in which a blockchain is used. The remaining steps in the independent claims only involve receiving a transaction request, and generating an identifier and hashes based on the information in the transaction request. This does not involve the blockchain nor does it provide an improvement to any other technology, as it only involves receiving and performing calculations on values. Therefore, the claims do not provide an improvement to the blockchain, nor do they otherwise provide a practical application or significantly more than the abstract idea.
Further, applicant states that the claims recite a blockchain, rather than a ledger, and that the claims are not directed to organizing human activity because the processes are claimed in a computing device interacting with other devices. Examiner notes, however, that a blockchain is a digital equivalent of a ledger, as it is used to maintain a record of transaction information. The use of a blockchain as opposed to a ledger, or the use of one or more computing devices to carry out the steps of the abstract idea does not provide a practical application or significantly more than the abstract idea because it only involves using computers to automate and/or implement the abstract idea.
Applicant additionally states that no prior art is cited to justify that the claims are without an improvement to an existing technological process. Examiner notes, however, that novelty and non-obviousness under 35 USC 102 & 103 are separate issues from patent eligibility under 35 USC 101, and the lack of prior art does not indicate that a claim is patent eligible under 35 USC 101. In other words, judicial exceptions need not be old or long-prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty (See MPEP 2106.04 (I)).
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 21-37 are directed to a computing device comprising a processor, claims 38-39 are directed to a method, claim 40 is directed to a non-transitory computer-readable storage medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite receiving a transaction request, computing and storing a first value based on the request, storing the information in the request, generating an identifier for the information, computing a second value based on the first value and the identifier, receiving a transaction identifier, storing a record comprising the second value, and retrieving the stored record to provide the stored information for a second transaction request, which is an abstract idea. Specifically, the claims recite “receiving a transaction request . . . from the [ledger], the transaction request comprising . . . content and metadata of the . . . content,” “in response to receiving the transaction request, generating and storing . . . a first hash with a hash function based upon the metadata of the . . . content,” “storing the . . .content and the metadata for the . . . content . . . as off-chain content,” “generating a content identifier of the . . . content,” “generating a second hash based on a combination of the first hash and the content identifier of the . . . content” “wherein upon . . . achieving a consensus with respect to addition of [an entry] to the [ledger], receiving a transaction identifier,” “adding to the [ledger], . . . the [entry], wherein the [entry] comprises the second hash,” “receiving a second transaction request from a second [entity], the second transaction request comprising an identifier for the . . . content,” “retrieving the second hash from the [entry] added to the [ledger], and responsive to receiving the second transaction request from the second [entity], providing the second [entity] with access to the . . . content based on the [entry] in the [ledger] and the transaction identifier,” which is grouped within the “mathematical concepts” and “certain methods of organizing human activity” groupings of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04 & 2106.04(a)). The claims fall within the “mathematical concepts” grouping of abstract idea because they describe a process of receiving values, performing a series of mathematical calculations based on the values to generate results, and then storing and later retrieving these results of the computations. Specifically, the claims involve receiving a request comprising content and metadata for the content, where the metadata is a value that is used as an input to a mathematical function used to perform a mathematical calculation to compute a first hash value. The claims then involve generating a content identifier, and using the content identifier and first hash value as inputs into the mathematical function to perform another mathematical calculation to compute a second hash value, where the resulting second hash value is ultimately stored and later retrieved. Additionally, the claims are also grouped within the “certain methods of organizing human activity” grouping of abstract ideas because they describe a process of receiving a transaction request, producing and storing a record of the transaction in a ledger, and then providing access to the record for a second transaction, which is a commercial interaction. Accordingly, the claims recite an abstract idea (See MPEP 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as the use of a computing device of a plurality of computing devices in a blockchain network, computer-readable content, a block in the blockchain, a blockchain maintained by the plurality of computing devices, as well as a computing device comprising a processor, a data store, an input interface and an output interface, and a computer-readable storage medium, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “receiving a transaction request . . . from the [ledger], the transaction request comprising . . . content and metadata of the . . . content,” “in response to receiving the transaction request, generating and storing . . . a first hash with a hash function based upon the metadata of the . . . content,” “storing the . . .content and the metadata for the . . . content . . . as off-chain content,” “generating a content identifier of the . . . content,” “generating a second hash based on a combination of the first hash and the content identifier of the . . . content” “wherein upon . . . achieving a consensus with respect to addition of [an entry] to the [ledger], receiving a transaction identifier,” “adding to the [ledger], . . . the [entry], wherein the [entry] comprises the second hash,” “receiving a second transaction request from a second [entity], the second transaction request comprising an identifier for the . . . content,” “retrieving the second hash from the [entry] added to the [ledger], and responsive to receiving the second transaction request from the second [entity], providing the second [entity] with access to the . . . content based on the [entry] in the [ledger] and the transaction identifier.” Viewed as a whole, the use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional elements of using a computing device of a plurality of computing devices in a blockchain network, computer-readable content, a block in the blockchain, a blockchain maintained by the plurality of computing devices, as well as a computing device comprising a processor, a data store, an input interface and an output interface, and a computer-readable storage medium to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of receiving a transaction request, computing and storing a first value based on the request, storing the information in the request, generating an identifier for the information, computing a second value based on the first value and the identifier, receiving a transaction identifier, storing a record comprising the second value, and retrieving the stored record to provide the stored information for a second transaction request. As discussed above, taking the claim elements separately, the additional elements recited in the claims perform the steps or functions of “receiving a transaction request . . . from the [ledger], the transaction request comprising . . . content and metadata of the . . . content,” “in response to receiving the transaction request, generating and storing . . . a first hash with a hash function based upon the metadata of the . . . content,” “storing the . . .content and the metadata for the . . . content . . . as off-chain content,” “generating a content identifier of the . . . content,” “generating a second hash based on a combination of the first hash and the content identifier of the . . . content” “wherein upon . . . achieving a consensus with respect to addition of [an entry] to the [ledger], receiving a transaction identifier,” “adding to the [ledger], . . . the [entry], wherein the [entry] comprises the second hash,” “receiving a second transaction request from a second [entity], the second transaction request comprising an identifier for the . . . content,” “retrieving the second hash from the [entry] added to the [ledger], and responsive to receiving the second transaction request from the second [entity], providing the second [entity] with access to the . . . content based on the [entry] in the [ledger] and the transaction identifier.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of receiving a transaction request, computing and storing a first value based on the request, storing the information in the request, generating an identifier for the information, computing a second value based on the first value and the identifier, receiving a transaction identifier, storing a record comprising the second value, and retrieving the stored record to provide the stored information for a second transaction request. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 22-37 and 39 further describe the abstract idea of receiving a transaction request, computing and storing a first value based on the request, storing the information in the request, generating an identifier for the information, computing a second value based on the first value and the identifier, receiving a transaction identifier, storing a record comprising the second value, and retrieving the stored record to provide the stored information for a second transaction request. Specifically, claim 22 describes the generation of the second hash value, claim 23 describes generation of a second transaction identifier, and claim 24 describes additional calculations such as generating a key and using it to encrypt or decrypt information. These claims further describe the calculation of various values, which is part of the abstract idea. Claim 25 describes receiving and storing data values, which are part of the abstract idea. Claim 26 describes generating a test hash and comparing it to the second hash, which describe calculating a value and comparing it to the stored value. This also further describes the abstract idea as it describes additional calculations that are performed. Claim 27 describes generating a share token, which is a set of data. Thus, this also recites an abstract concept as it only involves generating data. Claim 28 only involves storing the off-chain data, and thus does not provide a practical application or significantly more than the abstract idea. Claim 29 recites performing a consensus protocol. Although the use of a blockchain and its consensus protocol is an additional element, it only serves to carry out the function of storing the result of the computation (i.e., the second hash) by adding the block comprising the second hash to the blockchain. Therefore, the additional elements recited in this claim do not provide a practical application or significantly more than the abstract idea. Claim 30 describes generating an alarm when the result of the comparison indicates the two values are not identical. This is also abstract as it only involves outputting a result of comparing two values. Claim 31 describes a characteristic of the cloud-based computing platform, but does not require any additional steps or functions to be performed. Claim 32 describes distributing copies of the blockchain or ledger. This only involves distributing data and thus is part of the abstract idea. Claims 33-34 describe characteristics of the computing devices, claim 35 describes characteristics of the computer-readable content, claim 36 describes characteristics of the blockchain network, and claim 37 describes a characteristics of the computing device. However, these claims do not require any additional steps or functionality to be carried out. Therefore, the dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 recites “wherein upon a plurality of computing devices achieving a consensus with respect to addition of a block to the blockchain, receiving a transaction identifier,” and “adding to the blockchain network, via the output interface, the block, wherein the block comprises the second hash.” Claims 38 and 40 also recite similar limitations. These limitations appear to describe a consensus being achieving with respect to addition of a block to the blockchain before a first computing device adds the block to the blockchain network. This is not supported by the specification. Paragraphs 46 and 53 of the specification describe the consensus being achieved as part of adding the block to the blockchain, and paragraph 58 explains that after the server computing device causes a block to be added to a blockchain, “the plurality of computing devices achieve a consensus with respect to addition of the block to a blockchain which results in the generation of a transaction identifier and a key” (See also Figure 5, Step 512). Thus, the specification does not provide support for the achievement of the consensus as being an act separate from, and performed prior to, adding the block to the blockchain network.
Claims 22-37 and 39 are also rejected as each depends on either claims 21 or 38.
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 21-40 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 21 recites “wherein upon a plurality of computing devices achieving a consensus with respect to addition of a block to the blockchain, receiving a transaction identifier,” and “adding to the blockchain network, via the output interface, the block, wherein the block comprises the second hash.” Claims 38 and 40 also recite similar limitations. These limitations appear to describe a consensus being achieving with respect to addition of a block to the blockchain before a first computing device adds the block to the blockchain network. This is unclear, because a consensus cannot be achieved by other computing devices regarding addition of a block to the blockchain before the computing device which is seeking to add the block has output it using its output interface. The other computing devices would have no knowledge of the block until after the claimed computing device seeks to add it to the blockchain network via its output interface. Therefore, the claims are indefinite.
Claims 22-37 and 39 are also rejected as each depends on either claims 21 or 38.
Statement Regarding Prior Art
The closest prior art of Kakavand (US 2018/0341648) (“Kakavand”) discloses receiving a first transaction request from a first computing device, the first transaction request comprising information for a computer readable contract (Kakavand Fig. 3, Item 302 INIT; ¶¶ 61, 64), responsive to receiving the first transaction request, generating a first hash based upon the metadata for the computer-readable contract (Kakavand Fig. 4 Item 415; ¶¶ 24. 41, 64), storing the computer-readable contract and the metadata for the computer-readable contract (Kakavand Fig. 3, Items 307, 309, 310; ¶¶ 64, 71), causing a block to be added to a blockchain maintained by a plurality of computing devices in a blockchain network, the block comprising a hash (Kakavand Fig. 4, Item 415; ¶¶ 41, 65), wherein the plurality of computing devices achieves a consensus with respect to addition of the block to the blockchain (Kakavand ¶¶ 17, 29). Kakavand additionally discloses, responsive to the consensus being achieved, storing a transaction identifier in the data store (Kakavand Fig. 4, Items 409; ¶¶ 65, 72), responsive to receiving a second transaction request comprising an identifier for the computer-readable content from a second computing device of a second enterprise, providing the second computing device with access to the computer-readable contract based upon the identifier for the computer-readable contract (Kakavand Fig. 4, Item 415; ¶¶ 64-65), the block in the blockchain (Kakavand Fig. 4, Item 415; ¶¶ 41, 65), and the transaction identifier (Kakavand Fig. 4, Item 409; ¶¶ 72).
Solow, et al. (US 11,234,033) (“Solow”) further discloses making a payment for access to DRM protected content on a blockchain, using a transaction ID to locate the payment for verification before accessing the DRM protected content (Solow 5:65-6:7:11). Luthra (US 10,402,376) additionally discloses generating a content identifier for computer-readable content (Luthra Fig. 4A, 13:65-67; 14:25-30).
Additionally, Deery, et al. (US 10,419,225) (“Deery”) discloses generating a hash or a signature based on metadata of a content item, and storing the hash or signature on the blockchain (Deery Claim 1; 8:32-9:32).
However, the prior art does not disclose, neither singly nor in combination, the specific sequence of steps recited in the present claims, which include initially generating and storing in a data store a first hash with a first hash function based upon metadata of computer readable content in response to receiving a transaction request, storing the computer-readable content and the metadata for the computer-readable content in the data store as off-chain content, then generating a content identifier of the computer-readable content, next generating a second hash with the hash function based on a combination of the first hash and the content identifier of the computer- readable content, and adding a block comprising the second hash to a blockchain after achieving a consensus with respect to addition of the block and receiving a transaction identifier, where the block in the blockchain is later retrieved and used to provide a second computing device with access to the computer-readable content for a second transaction request.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697
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