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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/18/2026 has been entered.
Specification
3. 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:
Claims 1, 30 recite “unified record,” there is a lack of antecedent basis in the Specification for this term.
Claims 1 , 30, 39-40 recite “decryption credential,” there is a lack of antecedent basis in the Specification for this term.
Claims 1 and 30 recite “transferee,” there is a lack of antecedent basis in the Specification for this term.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 1-9, 24-40 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.
There is a lack of written description in the Specification for the following amended and newly added claim limitations:
Claims 1 and 30 recite “storing…the unified record in encrypted form in a secure storage.”
Claims 1 and 30 recite “wherein transfer of the security token on the distributed ledger to a transferee triggers execution of the smart contract to release the decryption credential to the transferee for accessing the encrypted unified record in the secure storage.”
Claim 38 recites “wherein the cryptographic content identifier comprises a content-addressed hash of the unified record.”
Claim 39 recites “smart contract is permitted to release the decryption credential and refusing, by execution of the smart contract, to release the decryption credential when the conditions are not satisfied.”
Claims 2-9, 24-29, 31-37, 40 are rejected due to the dependency to claims 1 and 30.
It is recommended that the applicants indicate in the Remarks, where support can be found in the Specification for all claim amendments and newly added limitations.
Claim Rejections - 35 USC § 101
6. 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.
7. Claims 1-9, 24-40 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: compiling, the data object as a unified record from (i) user-supplied data received from the user interface and (ii) attribute data about the user that is independently maintained by the religious organization and obtained from at least one data warehouse associated with the religious organization, the data object including data maintained by the religious organization about the user; storing, the unified record in encrypted form in a secure storage: generating, a security token comprising (a) cryptographic content identifier of the unified record and (b) access information resolvable, by execution of a smart contract, to a decryption credential for the unified record stored in the secure storage, wherein the security token is a non-fungible token recorded on a distributed ledger and is cryptographically co-signed by a non-fungible token registry service and by an authenticated representative of the religious organization; 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 transfer of the security token on the distributed ledger to a transferee triggers execution of the smart contract to release the decryption credential to the transferee for accessing the encrypted unified record in the secure storage.
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, storing, 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, one or more processors, and a user interface 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, 32-40 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, 24-40 is/are ineligible.
Response to Arguments
8. In response to the amendments to the claims, the Examiner withdraws the 35 U.S.C. § 112(b) rejection.
In response to the amendments to the claims, the Examiner withdraws the 35 U.S.C. § 103 rejections.
Applicant's arguments regarding the rejection of the claims under 35 USC § 101 have been fully considered but they are not persuasive.
On pages 14-15 of the Remarks, applicants contend that the claims integrate the abstract idea into a practical application because the limitations “are not ‘mere instructions to apply’ a financial concept on a generic computer. They specify a particular technical arrangement in which (i) data integrity is enforced by cryptographic content identification, (ii) provenance is enforced by dual cryptographic co-signing tied to authenticated identities (an automated NFT registry service plus an authenticated representative of the religious organization), and (iii) access to the underlying record is enforced by on-chain smart-contract logic that releases a decryption credential only upon a recorded transfer event. That is a concrete, particular, and non-generic data-security and data-provenance architecture, recited as part of the claim itself.” 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.-see MPEP 2106.05(f).
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, one or more generic processors. The processor(s), and user interface of a computing device 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).
Applicants further argue that the amended claims integrate the abstract idea into a practical application and do not "generically" apply blockchain or cryptography and instead, they recite a specific dual co-signed, content-identified, smart-contract-gated arrangement in which the security token's value, transferability, and access-control behavior are all determined by the recited cryptographic and ledger structure.
The argument is not persuasive because the improvement here is to a business process, not to an improvement to technology. In other words, 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.
Although a distributed ledger and cryptography are used, such use is generic. The object of the claim limitations using a distributed ledger and cryptography is to store data and secure data transmission, not to produce technology enabling a distributed ledger to operate. The claims call for generic use of a distributed ledger and cryptography. Simply reciting a particular technological module or piece of equipment in a claim does not confer eligibility.
The claimed invention is using existing technology such as computer processor, a user interface on a computing 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.
On page 16 of the Remarks, Applicants suggest 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 argue that “the claims, when read as a whole, are directed to a particular technical arrangement for tokenizing, storing, and controlling access to a compiled user data record and not to the abstract idea of ‘monetizing data’ untethered from a particular technical implementation. The "focus" of the claim is the arrangement itself, not a result,” and therefore, are similar to the features recited in the claims at issue in Enfish. The argument is not convincing.
The claims in Enfish were not simply adding conventional computer components to well-known business practices; mathematical formulas performed on any general purpose computer; or generalized steps performed on a computer using conventional computer activity. The patent claims here are not directed to a specific implementation to a solution to a problem in the software arts of improving the way a computer stores and retrieves data in memory through use of a specific data structure. In Enfish, The claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement—a particular database technique—in how computer could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools.
On page 17 of the Remarks, applicants argue that the claims recite significantly more than the judicial exception because the combination of generating an NFT and gating release of a decryption credential by smart-contract execution is not well-understood routine and conventional. The argument is not convincing because the claimed invention is implemented using a generic processor and user interface. As indicated in the rejection above, 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.
Applicants argue that the recited dual co-signing is not the “mere recording of a customer’s order considered in Apple, Inc. v. Ameranth, Inc., 842 F. 3d 1229 (Fed. Cir. 2016) and therefore is patent eligible under 35 USC 101. The argument is not persuasive because a NFT recorded on a distributed ledger and cryptographically co-signed by a NFT registry service and by an authenticated content creator or organization was known in the art at the time of filing of the instant application. See prior art cited in the Conclusion.
The Examiner fails to see, and the Applicant fails to point out, how the steps are unconventional steps that confine the claims to a particular useful application and provide an inventive concept.
The claims are not patent eligible.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2020/0005284 (Vijayan et al.)-cited for systems and methods for implementing blockchain based content engagement platform including NFTs that are cryptographically co-signed by the NFT registry service and an authenticated content creator.
US 2023/0070586 (Kapur et al.)-cited for a Nonfungible token (NFT) platform including cryptographically co-signing an NFT by a NFT registry service and authenticated creator);
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/ELDA G MILEF/ Primary Examiner, Art Unit 3694
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