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 .
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.
2. Claims 31-37 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.
Regarding claim 30:
The claim recites, “wherein the data independently obtained from the religious organization comprises at least one of religious service attendance data, membership data for the user within the religious organization, and engagement data on one or more digital platforms of the religious organization.”
It is unclear if the limitation requires one or each element, or if the claim is reciting the elements in the alternative. If the intent is to claim the elements in the alternative, see MPEP 2117 (Markush Claims).
For purposes of examination, the claim limitation will be interpreted as in the alternative.
The preamble recites “A computer-implemented method.” The body of the claim does not recite computer components implementing the claimed steps rendering the claim indefinite.
The remaining claims are rejected due to the dependency to claim 30.
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 1-9, 24-37 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the limitations in claim 1 to illustrate, the claim recite(s) the limitations of: receiving a selection from a user to monetize data associated with a data object for benefit of a religious organization; compiling the data associated with the data object from the user and from the religious organization, wherein the data associated with the data object includes data maintained by the religious organization about the user; generating a security token including a reference to the data object; and monetizing the data object utilizing the security token in accordance with the selection by offering the security token for trade on a data exchange via a network connection; wherein the data associated with the data object includes data independently obtained from the religious organization associated with the user. The limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interactions, but for the recitation of generic computer components. The claimed invention allows for monetizing data for a religious organization which is a certain method of organizing human activity (commercial or legal interactions and fundamental economic practices).
The mere nominal recitation of a user interface of a computing device and one or more processors do not take the claim out of the methods of organizing human activity grouping. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
The claims are directed to an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. The claim recites the additional elements: receiving, via a user interface of a computing device, a selection from a user to monetize data associated with a data object for benefit of a religious organization. The receiving steps/functions are recited at a high level of generality (i.e., as a general means of receiving a selection from a user). Receiving data are forms of insignificant extra-solution activity –see MPEP 2106.05(g).
The one or more processors are also recited at a high level of generality and merely automates the compiling, generating, and monetizing steps. Each of the additional limitations is no more than mere instructions to apply the exception using generic computer components (one or more processors). Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea.
Similar arguments can be extended to independent claim 30 and hence claim 30 is rejected on similar grounds as claim 1. In addition, claim 30 recites a computer implemented method that amounts to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements in the claims amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, under Step 2B, the additional elements found to be insignificant extra-solution activities under step 2A prong two, are re-evaluated to determine if the elements are more than what is well-understood, routine and conventional activity in the field. Here, the Specification does not provide any indication that the user interface of a computing device is anything other than a generic computer component and the Apple court decision cited in MPEP 2106.05[d][ii] indicates that the mere recording of a customer’s order are well-understood, routine, and conventional functions when they are claimed in a merely generic manner (as they are here). Accordingly, a conclusion that the receiving a selection from a user via a user interface of a computing device limitations are well understood, routine, and conventional activities is supported under Berkheimer Option 2. For these reasons, there is no inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 3-9, 24-29, 32-37 simply help to define the abstract idea.
As for dependent claims 2 and 31, these claims recite limitations that further define the abstract idea noted in claims 1 and 30. In addition, they recite the additional elements of a blockchain platform. The blockchain platform in both claims is recited at a high-level of generality such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)).
The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly, claim(s) 1-9, 24-37 is/are ineligible.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
6. Claim(s) 1-5, 9, 24-25, 29, 30-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conway (US 2023/0011577) in view of Wingo, Lauren. “Choosing the Right Nonprofit Type: Which Is Right For Your Business?” U.S. Chamber of Commerce. Feb. 05, 2021.
Re-claim 1: Conway discloses:
receiving, via a user interface of a computing device, a selection from a user to monetize data associated with a data object for benefit of an organization (donors make donations through website page-[0009]; members and donors need to register and be validated to join. Once a member /donor has joined the network, they play a role in maintaining the blockchain in a decentralized manner-[0014]; program modules such as objects perform tasks or implement particular abstract data types-[0041]; database object-[0044]; donors can, through an appropriate web interface or API, make donations directly to registered NPOs…[0082]); tokenization of the digital donation assets to provide a tokenized asset-[0021]; NPOs can transfer tokenized donations through the NP exchange to other NPOs and associated chapters, Like donations, the NP exchange liquidates these tokenized assets and Nonprofits can transfer tokenized donations. The exchange liquidates donations to registered nonprofits subchapters via a clearinghouse- [0055], [0057]-[0064] [monetize data] );
compiling, by the one or more processors, the data associated with the data object from the user and from the organization, wherein the data associated with the data object includes data maintained by the organization about the user (capturing and leveraging data for NPOs-[0018]; one or more computing devices ingests digital donation assets from one or more donors intended for a Non-profit organization (NPOs) -[0020]; the program instructions including: an ingestion module programmed to ingest digital donation assets from one or more donors intended for a NPO and database for storing -[0021]; database object-[0044]; NPOs can transfer tokenized donations through the NP exchange to other NPOs and associated chapters- [0055]);
generating, by the one or more processors, a security token including a reference to the data object (generating a security token including a reference to the data object and then tokenizes the digital donation asset to provide a tokenized asset-[0020]);
and monetizing the data object utilizing the security token in accordance with the selection ([0029]; ingested digital assets are then tokenized -[0061]) by offering the security token for trade on a data exchange via a network connection-see Fig. 3 and [0055];
wherein the data associated with the data object includes data independently obtained from the organization associated with the user (one or more computing devices for performing digital asset donation transactions for the NPOs. The one or more computing devices ingests digital donation assets from one or more donors intended for the NPO and tokenizes the assets-[0020]; individual donors can, through an appropriate web interface or API, make donations directly to registered NPOs…[0082]).
Conway discloses data associated with the data object includes data independently obtained from an organization associated with the user -see data objects and data structures in [0041], [0044], ingesting one or more assets from one or more donors intended for a NPO [0020]. Conway does not specifically disclose that the non-profit organization is a religious organization. It is notoriously old and well known that religious organizations are non-profit organizations as evidenced by Wingo -page 4.
It would have been obvious to one having ordinary skill in the art to include in the digital asset donation and tokenization for non-profit organizations of Conway to specifically include that the non-profit is a religious organization as taught by Wingo since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re-claim 2: Conway discloses wherein the security token is a blockchain-based token utilized by a blockchain platform. (blockchain platform [0031], token is a unit value that exists on an existing blockchain-[0038]).
Claim 3: Conway discloses wherein the data object includes one or more profiles associated with the user, a website, an application, or a service and wherein at least one of the one or more profiles includes the data independently obtained from the religious organization associated with the user. (individual donations are saved to distributed ledger, digital assets are tokenized using stable coins- [0083], individual donors make donations directly to nonprofit organization-[0082]).
Re-Claim 4: Conway discloses storing the data object in a secure storage associated with the religious organization; and creating access information to the data object referenced in the security token. (System offers the ability to trace stablecoins so as to ensure transparency and concurrently is able to exploit its blockchain to backstop the tokenizing of those donations using stablecoin.-[0083]).
Re-Claim 5: Conway discloses electronically sending a receipt to the user for contribution of the data associated with the data object (traceable stablecoin-[0019]; [0014]).
Re-claim 9: Conway discloses completing a transaction for trading the security token on a data exchange in exchange for monetary value, wherein the value is transferred to the religious organization (The tokenized assets are then processed for transfer via ACH to the NPO.- [0020]). The exchange liquidates donations to registered nonprofits subchapters via a clearinghouse- [0055]-[0064] [monetize data]).
Re-claim 24: Conway in view of Wingo disclose religious organization are non-profits in claim 1 above. Conway further discloses wherein the non-profit organization is a hierarchical organization comprising a plurality of subunits and wherein the interface is configured to display the data backed assets associated with each of the plurality of subunits.-Subchapter level -[0033].
Re-claim 25: Conway discloses wherein a smart contract authorizes the data of the user to be utilized. - [0022].
Re-claim 29: Conway discloses wherein the security token is a blockchain token (blockchain platform [0031], token is a unit value that exists on an existing blockchain-[0038]).
Claims 31-34 have similar limitations found in claim 2-5 above, and therefore are rejected by the same art and rationale.
7. Claim(s) 6-7, 26-27, 35-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conway in view of Wingo as applied to claim 1 above, and further in view of WO 2019/226489 A1 (Angelos et al.).
Re-claim 6: Conway in view of Wingo teach religious organizations as non-profit organizations as in claim 1 above. Angelos further teaches wherein the data independently obtained from the religious organization associated with the user comprises membership data for the user within the organization-[0024].
It would have been obvious to one having ordinary skill in the art to include in the digital asset donation and tokenization for non-profit organizations of Conway the ability to obtain that membership data for the organization taught by Angelos since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Re-claim 7: Conway in view of Wingo teach religious organizations as non-profit organizations as in claim 1 above. Conway disclose wherein the membership data comprises at least one of religious service attendance data and religious organization charitable contribution data for the user. (Conway discloses membership data includes donations to a non-profit organization-see [0020]; [0029];[0054]. Angelos discloses frequency of transactions [0036]).
It would have been obvious to one having ordinary skill in the art to include in the digital asset donation and tokenization for non-profit organizations of Conway the ability to obtain that membership data for the organization taught by Angelos since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claims 26 and 35 have similar limitations found in claim 6 above and is therefore rejected using the same art and rationale.
Claims 27, 36 have similar limitations found in claim 7 above and is therefore rejected using the same art and rationale.
8. Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Conway in view of Wingo in further view of Weiss et al. (US 2014/0032668) in view of Revankar et al. (US2020/0119905).
Claim 30 has similar limitations as in claim 1 above and is therefore rejected using the same art and rationale. Furthermore, Conway discloses wherein the data independently obtained from the religious organization comprises membership data for the user within the organization- Conway discloses membership data includes donations to a non-profit organization-see [0020]; [0029];[0054];
Weiss, not Conway, discloses wherein the religious organization is a hierarchical organization comprising a plurality of subunits in ¶[0038]; subordinate units in ¶[0004].
It would have been obvious to one having ordinary skill in the art to include in the digital asset donation and tokenization for non-profit organizations of Conway the ability to structure the religious organization as a hierarchical organization comprising a plurality of subunits as taught by Weiss since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conway discloses a blockchain token including a reference to the data-[0031], [0035]-[0036], [0054].
Revankar, not Conway, discloses wherein the smart contract authorizes the data of the user to be utilized. (Automatically generating the smart contract comprises issuing an authorization token authorizing a second node to access transaction data belonging to the user. -p. 15 claim 4).
It would have been obvious to one having ordinary skill in the art to include in the digital asset donation and tokenization for non-profit organizations of Conway the ability to automatically generate the smart contract comprises issuing an authorization token authorizing a second node to access transaction data belonging to the user as taught by Revankar since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Response to Arguments
9. In response to the amendments to the claims, the Examiner withdraws the claim objections.
In response to the amendment of claim 1, the Examiner withdraws the 35 U.S.C. § 112(b) rejection. There is, however, a new ground of rejection under 35 USC 112(b) for claim 30.
Regarding the rejection of the claims under 35 USC 101, Applicants argue that at Step One, claims 1 and 30 as amended are not directed to an abstract idea, and that the claims recite specific technical solutions to technical problems in data compilation and tokenization systems. Applicants further suggest that the limitations describe a specific implementation using processors to perform bidirectional data compilation and to generate tokens referencing compiled data objects, and a specific blockchain implementation with smart contract authorization resulting in particular technological solutions for data compilation, tokenization, and authorization, and not to abstract concepts divorced from technical implementation.
The Examiner respectfully disagrees.
The Patent Office has issued guidance about this framework. -See MPEP§ 2106 (9th ed. Rev. 10.2019, rev. June 2020), in particular, Sections 2103 through 2106.07(c). As indicated in the MPEP § 2106, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites one of the abstract ideas listed in the Revised Guidance (“Prong One”) and (2) fails to integrate the recited abstract idea into a practical application (“Prong Two”).
Beginning with Prong One, step 2A of the eligibility analysis, we must determine whether the claims at issue are directed to one of those patent-ineligible concepts. One of the subject matter groupings identified as an abstract idea in the Guidance is “[certain methods of organizing human activity—fundamental economic principles or practices (including . . . mitigating risk, insurance); commercial. . . interactions (including agreements in the form of contracts; . . . sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including . . . following rules or instructions)].” See MPEP 2106.04(a).
Here, apart from the recited systems, i.e., generic computer components (one or more processors, user interface of a computing device) as claimed, claim 1 recites abstract ideas in the category of “methods of organizing human activity.” In the 101 analysis in the rejection above, the Examiner identifies and considers each of the underlying steps for the claims as a basis for describing and explaining the recited abstract idea. For example, the Examiner identifies the underlying steps of claim 1—i.e., the “receiving,” “compiling,” “generating,” “monetizing,” —and explains that they describe the concept of monetizing data for a religious organization, i.e., financial principle or practice (certain methods of organizing human activity). The Examiner’s approach here is consistent with USPTO guidance.
Applicants argue that the claims recite elements or a combination of elements which “integrate the exception into a practical application of the exception” because the claims improve computer technology because of bidirectional data compilation and the claimed invention addresses the problem of aggregating data from multiple sources maintained by different entities. Applicants further argue that the claimed invention uses tokenization to provide secure data access control and blockchain token and smart contract authorizing data of the user to be utilized provide a specific technological implementation. The Examiner respectfully disagrees.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea and generally linking the use of the judicial exception to a particular technological environment or field of use.-see MPEP § 2106.05(f) and 2106.05(h).
Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., a user interface of a computing device, and one or more processors. The user interface of a computing device, and one or more processors are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications. The claims recite computer components that function in their ordinary capacity to implement the claimed invention. The abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment. -see Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3e 1363, 1366 (Fed. Cir. 2015); see also Alice, 576 U.S. at 22; Parker v. Flook, 437 U.S. 584, 593 (1978).
The claimed invention is using existing technology such as a computer processor, a user device, and a blockchain platform to execute the claimed invention-see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) and SAP Am., 898 F.3d at 1169-70.
Regarding the suggestion that the claims at issue are analogous to those found in the DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014), the patent claims in the instant application do not address problems unique to the Internet, so DDR has no applicability. In DDR, the claims address a business challenge (retaining website visitors), it is a challenge particular to the Internet. In particular, the court said that “these claims stand apart because they do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
The court concluded that “instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to t[a] hybrid web page that presents product information from the third-party and visual ‘look and feel’ elements from the host website. When the limitations of the … patent’s asserted claims are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional ‘use of the Internet.’” The DDR claims “do not broadly and generically claim ‘use of the Internet’ to achieve the desired result, but instead “specify how interactions with the Internet are manipulated to yield a desired result.” Id. at 1258. Claims that specify how to overcome a technological challenge are eligible. The claims here do not solve a technological problem with a technological solution.
Applicants suggest that the claims as amended recite technical implementations that cannot be performed mentally or manually and therefore are patent eligible under 35 USC 101. The Examiner respectfully disagrees. As indicated in the rejection above, the claims are directed to monetizing data for a religious organization. The computer components recited, i.e., processor(s), user interface of a computing device, function in their ordinary capacity to implement the claimed invention. The blockchain platform in recited at a high-level of generality such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)).
The focus of the claims is not on an improvement to the identified additional elements as tools, but on the abstract ideas that use the additional elements as tools. The use of generic computer components to carry out the abstract idea does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). The additional limitations of the dependent claims, such as claim 2 and 31 as argued by the applicants, do not add an inventive concept to the abstract idea because they are insignificant extra solution activity, e.g., mere data gathering, further define the abstract idea and field of use, or as described above, perform generic computer functions in conjunction with the abstract idea and does not go beyond generally linking the use of the judicial exception to a particular technological environment or field of use.
Applicant argues that “the claims also do not preempt all ways of monetizing data for religious organizations or performing data compilation.” The argument is not persuasive. That the claims do not preempt all forms of abstraction or may be limited to a specific implementation involving processors compiling data from multiple sources, generating security tokens, a block-chain based token, smart contract authorization and trading on a data exchange, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (“And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”).
Regarding the rejection under 35 USC 103, on page 15 of the Remarks, Applicants contend that Conway does not obtain data from the NPO about the donor, Applicants further argue that there is no mechanism in Conway for, and Conway does not describe, obtaining data from the nonprofit organization about the donor. The argument is not convincing. Conway discloses that donors elect to register and join the nonprofit organization via a website [0009], information about the donor donations are recorded in a ledger in a token donation currency-[0009]. The NPO provides the donor donations to a donation ledger.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., donor attributes (Applicants arguing Conway tracks donation transactions not donor attributes maintained by the NPO) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants argue that Conway’s relevant information flow goes in one direction only, and that it is different from the claimed invention that requires data compilation from two distinct sources: the user and data about that user maintained by the religious organization. This argument is not persuasive. Conway discloses that the user inputs information into the NPO system to register and join the system-see at least [0009]. Conway further describes that the NPO maintains records of the donations made by the user, i.e., donor.-see [0009] and Fig. 3 (items 11, 13, and 15) and Fig. 4.
On page 16 of the Remarks, Applicants contend that Conway does not disclose data objects available for trading nor data exchange functionality. The argument is not convincing. Conway discloses generating a security token including a reference to the data object and then tokenizes the digital donation asset to provide a tokenized asset-see [0020]. Fig. 3 item 70 -NP exchange; Blockchain based non-profit exchange system for performing digital asset donation transactions-[0052].
Applicant contends that the claims are not directed to donation processing but rather data monetization and that the Examiner mischaracterizes the invention. The Examiner disagrees with Applicants’ contention. Conway discloses performing digital asset donation transactions for NPOs including tokenization [0061] and like donations, the NP exchange liquidates these tokenized assets and that nonprofits can transfer tokenized donations, the exchange liquidates donations to registered nonprofits subchapters via a clearinghouse- ¶[0055] [monetization of data].
On page 17 of the Remarks, Applicants contend that Conway does not disclose a “data object.” The applicants’ attention is directed to Conway database object-[0044].
On page 18 of the Remarks, Applicants argue that religious organizations are not a type of non-profit and should not be categorized as such. This argument is not convincing. The Wingo reference lists types of NPOs which include religious organizations. Applicants’ attention is directed to the paragraph above explaining that Conway discloses monetization of donations to a non-profit.-see at least Conway ¶[0019],[0020-0021],[0055], and figs 3-5.
Applicant’s arguments with respect to claim(s) 30 on pages 18-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
On page 21, Applicant argues that Conway’s system lacks bidirectional data compilation. While claim 1 recites, “compiling…data associated with the data object from the user and from the religious organization,” it does not require “bidirectional data.” Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As best understood by the Examiner, on page 21, Applicants are arguing that the Examiner failed to provide a motivation for why one or ordinary skill would modify Conway to become Applicant’s data monetization system. As an initial matter, there is no modification needed of the Conway reference since it is the primary reference and discloses the claimed elements as indicated in the rejection above. Secondly, Conway teaches monetization of donation data, digital asset donation transactions for the NPO, tokenization of these assets in [0020], and that a blockchain nonprofit exchange performs transactions such as cryptocurrency payments-see ¶¶[0054]-[0064], i.e., data monetization.
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694