DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The Amendment filed on January 21, 2026 has been entered. Claims 1-4, 7-8, 10-13, and 16 have been amended. Claims 9 and 18-19 have been cancelled Claims 20-23 have been newly added. Thus, claims 1-8, 10-17, and 20-23 are pending and rejected for the reasons set forth below.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-8, 10-17, and 20-23 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In sum, claims 1-8, 10-17, and 20-23 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 10-17, 21 and 23) and a machine (claims 1-8, 20, and 22), where the machine is substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of receiving data corresponding to whether or not conditions have met for an existing agreement by:
providing,…, membership services, to each of a plurality of parties, wherein the membership services include mandates for carbon removal, carbon sequestration, or carbon removal and sequestration;
for each of the plurality of parties:
generating, by the at least one data processing apparatus, a respective
mandate for an amount of carbon to be removed, sequestered, or removed and sequestered by the respective party over a period of time; and
providing, by the at least one data processing software having instructions that, when executed, configure,…, associated with the respective party to operate within the membership services (a respective “configured computing device”);
receiving,…, associated with a first party, an encrypted data payload including information representing at least one of carbon removal and carbon sequestering by the respective party;
validating,.., the information received in the encrypted data payload;
determining,…, as a function of machine learning and artificial intelligence, at least one of carbon removal and/or carbon sequestering associated with validated information in the encrypted data payload;
accessing,…, a first respective mandate generated for the amount of to be sequestered over a period of time by the first party;
determining,…,as a function of the validated information and the first respective mandate, that the first party is compliant with the first respective mandate.
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., receiving data corresponding to whether or not conditions have met for an existing agreement).
Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea. Independent claim 1 is nearly identical to claim 10. However, claim 1 includes several additional elements such as a “processor” and “media” that are not found in claim 10. These elements are being used to implement the abstract idea noted in claim 10.
Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “apparatus,” “software,” and “device” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see also, paragraph [0007] of the specification).
Dependent claims 2–8, 11-17, and 20-23 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 2 and 11 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe what the payload comprises. It is a specific type of information that is determined to ensure compliance with an agreement. Dependent claims 3 and 12 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe what the payload comprises. It is a specific type of information that is determined to ensure compliance with an agreement. Dependent claims 4 and 13 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe determining whether the user is complaint with the agreement by determining a net carbon effect. Dependent claims 5 and 14 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe what the payload data comprises. Dependent claims 6 and 15 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe that the apparatus includes an artificial intelligence network, naming a type of neural network that is being used. Dependent claims 7 and 16 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe the operation of the neural network using generic weighting assigned to some of the information to determine compliance. Dependent claims 8 and 17 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe decryption of the information contained in the encrypted data payload. Dependent claims 20 and 21 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe identifying a threshold associated with the carbon removal and/or carbon sequestering and when it is met, altering the mandate. Dependent claims 22 and 23 recite nearly identical limitations that further define the abstract idea noted in claim 10 in that they describe generating a mandate and then a different one for another party.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea).
Response to Arguments
5. Applicant’s arguments filed on January 21, 2026 have been fully considered.
Applicant’s arguments concerning the 35 U.S.C. §101 rejection of the claims, including supposed deficiencies in the rejection, are not persuasive. Applicant first argues that “Applicant respectfully submits that the invention as current claimed includes the features identified above, which go far beyond the 2019 PEG categories.” (See Applicant’s Arguments, p. 10). The Applicant does not explain how “the features identified above” “go far beyond the 2019 PEG categories.” These claims most definitely recite an abstract idea. Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., receiving data corresponding to whether or not conditions have met for an existing agreement).
Applicant also argues that “Applicant respectfully submits, as set forth in Ex Parte Desjardins et al., that the combination of features set forth in the amended independent claims, including as identified above, regard improvements to technology and computer functionality and support a determination of eligible subject matter of the amended claims and of patentability.” (See Applicant’s Arguments, p. 10). Once again, Applicant puts forth a conclusory statement without actually explaining how the “combination of features” improve computer technology. Generating various mandates based on generic software methods is not an improvement to computer technology.
Therefore, the rejection under 35 U.S.C. §101 is maintained.
Prior Art Not Relied Upon
6. The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. (See MPEP §707.05). The Examiner considers the following reference pertinent for disclosing various features relevant to the invention, but not all the features of the invention, for at least the following reasons:
1. MacArthur et al. (U.S. Publication No. 2022/0156754) teaches a device for receiving carbon emissions data and also generating token data and storing this on a distributed ledger. However, it does not make use of the limitations of this invention noted above that deal with providing payload data in order to determine compliance with an agreement between parties and then using this to enable or disable operating feature of a user device.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR §1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Amit Patel whose telephone number is (313) 446-4902. The Examiner can normally be reached Mon - Thu 8 AM - 6 PM EST. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Matthew Gart, can be reached at (571) 272-3955. The Examiner’s fax number is (571) 273-6087. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amit Patel/
Examiner, Art Unit 3696
/EDWARD CHANG/Primary Examiner, Art Unit 3696