DETAILED ACTION
This Office action is in reply to correspondence filed 20 October 2025 in regard to application no. 18/479,657. Claims 1-20 are pending and are considered below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims lie within statutory categories of invention, as each is directed to an apparatus (machine), method (process) or non-transitory computer readable storage medium (manufacture). The claims recite establishing a contract which, like nearly any contract, includes a rule, monitoring a status of an entity in no particular manner based on certain financial data, generating a recommendation for adjusting the status, and modifying the contract to adjust the status.
This recites management of contractual relationships, which is any of a commercial activity, legal activity or fundamental business practice. Businesses have been managing contracts for centuries before there was any such thing as a computer. Further, in the absence of computers, these are mental steps which can be practically performed in the human mind and/or by pen and paper means.
A business owner can enter into a contract with, let us say, a supplier, by writing the contract on paper or even, depending upon the contract, orally; like many typical contracts, it can specify aspects of the relationship between the parties. She can monitor the supplier’s performance by watching deliveries come in (or not) and inspecting the deliveries. If she finds the contractor needs to have its status changed, e.g. disqualified for nonperformance, she can terminate or modify the contract and tell or send it to the supplier. None of this presents any practical difficulty; it is in fact quite routine, and none requires any technology beyond, at most, a pen and paper.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer and nondescript use of Al techniques, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of computers with machine learning capability. See MPEP § 2106.05(h).
As the claims only manipulate information about contracts and parties thereto, they do not improve the “functioning of a computer” or of “any other technology or technical field”. See MPEP § 2106.05(a). They do not apply the abstract idea “with, or by use of a particular machine”, MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a “transformation or reduction of a particular article to a different state or thing”, MPEP § 2106.05(c). First, such information, being intangible, is not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
In light of Recentive1, it is clear that the use of known machine learning techniques, where the only purported improvement is in the type of data being used or manipulated, is not sufficient per se to alter the analysis.
They do not apply the abstract idea “in some other meaningful way beyond generally linking [it] to a particular technological environment”, MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are not sufficient to elevate an otherwise-ineligible claim. Claim 1, which has the most, includes a processor and memory storing code for the processor to execute. These elements are recited at a high degree of generality and the specification is clear, ¶ 22, that nothing more than a “general purpose computer” is required; referring to a generic computer as a “blockchain server” is considered mere labeling and given no patentable weight. It only performs generic computer functions of nondescriptly manipulating data and sharing data with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim limitations when considered as an ordered combination — a generic computer performing a possibly chronological sequence of abstract steps — does nothing more than when they are analyzed individually. The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
Machine learning is used nondescriptly in the claims, but this was a well- understood, routine and conventional technique before the filing of the claimed invention. First, this is evidenced by the present specification’s lack of elaboration as to how it works and how it is used. Second, and just for one example among a great many, Agarwal (U.S. Publication No. 2012/0066053), whose application was filed more than a decade before the present application, disclosed an advertising social-network system [title] in which he could say, at that early date, that “machine learned rules” could be taught using “techniques” which were by then “well known in the relevant art(s)”. [0041] The use of such known techniques in a new data environment has been discussed above.
The other independent claims are simply different embodiments but are likewise directed to a generic computer performing, essentially, the same process.
The dependent claims further do not amount to significantly more than the abstract idea: claim 2 just recites the training used in claim 1, but as discussed above, this is not, by itself, enough. Claims 3-5, 8, 11 and 13 are simply further descriptive of the type of information being manipulated; claims 6, 9, 10, 12, 14 and 1618 simply recite additional, abstract manipulation of data. Claim 7 simply recites additional data gathering and claim 15 simply recites storing information.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
Response to Arguments
Applicant’s arguments, see pp. 7-8, filed 20 October 2025, with respect to rejections made under 35 U.S.C. §§ 112(a)-(b) have been fully considered and are persuasive. The rejection of claims on this basis has been withdrawn.
Applicant's arguments filed 20 October 2025 in regard to rejections made under 35 U.S.C. § 101 have been fully considered but they are not persuasive. The amendment to claim 20 is sufficient to overcome the “statutory category” rejection, which is withdrawn; the “judicial exception” rejection of all claims is maintained.
First of all, neither “contract management” nor “enforce[ment of] participation conditions in financing agreements” is a technology or technical field, but each is merely a routine problem in commerce, and does not become a technology simply because computers are used to perform it. Just about any computer program anywhere includes “multiple cooperating modules that perform distinct and interrelated computer-implemented operations”; the Examiner strains to imagine a computer program that does not include such things.
The Enfish claims included an improvement to a basic functioning of computer technology – the way in which data were stored in a computer which, the Court found, was a technical improvement. By contrast, the claims here simply use known technology and pre-existing techniques to solve a business problem.
The McRO claims did not simply recite a “specific set of rules”, but performed a complex function (synchronization of lip movements of animated characters to sounds) in a fundamentally different way than had been done by human animators. By contrast, the process here is not specific in any way that it could be distinguished from human contract management.
As stated above, a “blockchain server” is simply a computer, and the applicant did not invent or improve distributed ledger technology but is simply using it for its customary and well-known purposes.
The “steps of establishing, monitoring, determining and adjusting” are themselves abstract steps, and it is well-established that a generic computer performing abstract steps is well outside what the Courts have deemed eligible for patent protection. The lack of preemption is not a per se rule but merely one consideration among others. As the Federal Circuit said in Ariosa2, “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”
The ”significantly more” to which the applicant refers denotes the additional, that is, non-abstract claim elements. As mentioned above, simply using known machine learning methods in a new learning environment is insufficient, and blockchain is a well-known mechanism for storing data. To “ensure that participation limits and risk thresholds remain current and enforceable” is not a “technical challenge”, and mere automation of processes that can be performed mentally is not, by itself, patent eligible.
In answering the conclusory statement of the applicant that integrating blockchain and machine learning “was neither conventional nor predictable at the time of filing”, first, the integration is in no way particularized; machine learning is used only conventionally and blockchain is used only conventionally. The combination was well known before the filing of the claimed invention; just for one example, Wince et al. (U.S. Publication No. 2019/0132203), whose invention was filed in 2018, could at that early date refer to a “blockchain network” as “simply another known data source”, [0031] which the invention made use of, in addition to using “conventional implementations of machine learning modules”. [0084]
The claims are not patent eligible and the rejection is maintained.
Conclusion
As no rejection is made herein under 35 U.S.C. § 102 or 103, a brief review of the state of the art at the relevant time is in order. In a previous Office action, claims were rejected based on various combinations of the following references: Novotny et al., Kim, Zameni, Hwang et al., Yan, Saburi, Martinson, and Tedesco et al. As the claims have been amended, further search and consideration were conducted.
Jain (U.S. Publication No. 2020/0184448) discloses a cognitive blockchain [title] in which execution of a “smart contract” may trigger “modification(s) to a state of a digital blockchain ledger”, [0049] and the system may “run unsupervised learning algorithms” to make a suggestion. [0065] But neither Jain nor the prior art previously made of record, alone or if combined, teach or suggest every limitation of the claims of the present invention, in particular applying a recommendation to modify a contract to adjust the relative status of the contracting parties, combined with the other presently claimed limitations.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/ Primary Examiner, Art Unit 3694
1 Recentive Analytics, Inc. v. Fox Corp. et al., 134 F.4th 1205, 1216 (Fed. Cir. 2025)
2 Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2016)