DETAILED ACTION
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 .
Status of Claims
This action is in reply to the Applicant Response filed on 9/8/2025.
Claims 1, 12, and 20 have been amended and are hereby entered.
Claims 1-20 are currently pending and have been examined.
This action is made FINAL.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.12141870. Although the claims at issue are not identical, they are not patentably distinct from each other.
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 a judicial exception (abstract idea) without significantly more.
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
Claim 1, 12 and 20 recite “non-recursive function.” A non-recursive function is a type of mathematical function, just like a recursive one. The key difference is that a non-recursive function, also called an explicit function, calculates a term in a sequence based only on its position (index), whereas a recursive function defines a term based on previous terms in the sequence.
The claim recites blockchain, which is defined in the applicant specification (Para. 5), as chain of blocks linked together cryptographically and a distributed ledger with computing devices that include a copy (Para. 4).
The claim recites a block on a blockchain. A block is stored data on a blockchain (Applicant specification (Para. 5).
Claim 1 recites a process, which is a statutory category of invention (Step 1: YES). Claim 12 recites an apparatus (product), which is a statutory category of invention (Step 1: YES). Claim 20 recites a system, which is a statutory category of invention (Step 1: YES).
The claims are analyzed to determine whether it is directed to a judicial exception. Claim 1 recites receiving, a request to exchange a first amount of a first token for a second token, wherein the first token and the second token have an exchange rate; generating a transaction that calls a partial differential equation function of a smart contract, wherein source code of the smart contract is stored; transmitting the transaction, wherein transmission of the transaction causes the transaction to be stored, and wherein storage of the transaction causes the partial differential equation function to be executed to produce an output; causing execution of a non-recursive function to produce the output, wherein the output is associated with a value for exchanging the first token for the second token, wherein the output comprises a length matching a global variable, and wherein the non-recursive function computes the output in constant tim; determining a second amount of the second token to be received in exchange for the first amount of the first token based on the output; and transmitting an indication of the second amount of the second token to the user device. These limitations, as drafted, under its broadest reasonable interpretation, covers mathematical concepts and performance via certain methods of organizing human activity, but for the recitation of generic computer components. Under human activity, the limitations are commercial interactions, and managing interactions between people. More specifically, under commercial interactions, the claims involve business relations, and managing interactions between people, such as following rules. Accordingly, the claim recites an abstract idea. The mere recitation of generic computer components in the claims do not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: Yes. The claims recite an abstract idea).
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a system processors, memory, user device, and first and second graphical user interfaces. The additional elements of computing device, and user device in claim 1, an automated market maker, network interface, non-transitory computer readable storage medium storing program instructions, hardware processor, user device, and automated market maker in claim 12, and a non transitory computer-readable media with computer-executable instructions, computer system, user device in claim 20, are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)). The additional elements of decentralized network, block and blockchain are generally linking the use of the judicial exception to a particular technological environment or field of use, for the particular technological use of trading assets on the blockchain (MPEP 2106.05(h)). The computer components are recited at such a high-level of generality (i.e. as a generic computer components) such that it amounts to no more than mere instructions to apply the exception using generic computer components, and the claims fail to recite technological detail as to how the step of the judicial exception is accomplished. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. (Step 2A-Prong 2: NO. The judicial exception is not integrated into a practical application).
Next, the claims are analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed with respect to Step 2A2 above, the additional elements of (The additional elements of computing device, and user device, and decentralized network, block and blockchain in claim 1, an automated market maker, network interface, non-transitory computer readable storage medium storing program instructions, hardware processor, user device, automated market maker, and decentralized network, block and blockchain in claim 12, and a non-transitory computer-readable media with computer-executable instructions, computer system, user device, and decentralized network, block and blockchain in claim 20) in the claims amount to no more than mere instructions to apply the exception using a generic computer component and generally linking the use of trading assets on the blockchain to the judicial exception. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component and generally linking the use of trading assets to the blockchain to the judicial exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Viewing the limitations as an ordered combination does not add anything further than looking at the 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 itself. Therefore, the claims do not amount to significantly more than the recited abstract idea (Step 2B: NO; The claims do not provide significantly more, and are not patent eligible).
Claim 2 recites further comprising receiving an instruction to initiate an exchange of the first amount of the first token for the second amount of the second token. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 3 recites further comprising: generating a second transaction that identifies the exchange; and transmitting the second transaction, wherein transmission of the second transaction causes the second transaction to be stored, and wherein storage of the second transaction in the third block causes the exchange to complete. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the third block as addressed in the Steps A2 and B are generally linking the use of trading assets on the blockchain to the judicial exception (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 4 recites wherein a call to the partial differential equation function of the smart contract in the transaction comprises as an argument at least one of a relative reserve of the first token, a relative reserve of the second token, an Oracle price of the first token, an Oracle price of the second token, a dynamic weight, or a leverage parameter. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 5 recites wherein execution of the partial differential equation function causes a bonding curve to be calculated. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 6 recites wherein the partial differential equation function is expressed as:
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MM (x, y, p, s,w)=sw (px + y) - 2xysw + xyw wherein x is a relative amount of a first asset, y is a relative amount of a second asset, p is a price of the first asset in terms of the second asset, s is a leverage parameter, and w is a dynamic weight. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 7 recites wherein the partial differential equation function is expressed as:f(t1
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r, c) = c *
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(tip+t2)-2tit2c+tit2
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wherein t1 indicates available liquidity of the first token, wherein t2 indicates available liquidity of the second token, wherein r is an exchange rate between the first token and the second token, wherein c is a slippage rate, and wherein the exchange rate r is set to one in response to an indication that no exchange rate r is known. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 8 recites wherein the partial differential equation function is expressed as: f2 (X0, Y0, Wweight, Wfactor) = X0weightY0+ =X0Y0wfactorwweight. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 9 recites wherein the partial differential equation function is expressed as: fnewFunction(X0, Yo, V) = X0Y0(1 + Y50 + VX50Y0) . These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 10 recites wherein operations of the partial differential equation function are non-recursive. These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra.
Claim 11 recites, wherein the computing device comprises an Automated Market Maker (AMM). These limitations are also part of the abstract idea identified in claim 1, and is similarly rejected under the same rationale as claim 1, supra. These limitations are also part of the abstract idea identified in claim 1, and the additional elements of the automated market maker as addressed in the Steps 2A2 and B are just applying generic computer components to the recited abstract limitations (MPEP 2106.05(f)) as in the claim 1 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 1, supra.
Claim 13 recites receive an instruction from the user device to initiate an exchange of the first amount of the first token for the second amount of the second token. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Claim 14 recites generate a second transaction that identifies the exchange; and transmit the second transaction to the second computing device, wherein transmission of the second transaction causes the second transaction to be stored in a third block in the blockchain, and wherein storage of the second transaction in the third block causes the exchange to complete. These limitations are also part of the abstract idea identified in claim 12, and the additional elements of the third block as addressed in the Steps 2A2 and B are generally linking the use of trading assets on the blockchain to the judicial exception (MPEP 2106.05(f)) as in the claim 12 analysis above. Therefore, this claim is similarly rejected under the same rationale as claim 12, supra.
Claim 15 recites wherein a call to the partial differential equation function of the smart contract in the transaction comprises as an argument at least one of a relative reserve of the first token, a relative reserve of the second token, an Oracle price of the first token, an Oracle price of the second token, a dynamic weight, or a leverage parameter. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Claim 16 recites wherein the partial differential equation function is expressed as:fAMM (x, y, p, s,w)=sw
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(px + y) - 2xysw + xyw wherein x is a relative amount of a first asset, y is a relative amount of a second asset, p is a price of the first asset in terms of the second asset, s is a leverage parameter, and w is a dynamic weight. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Claim 17 recites wherein the partial differential equation function is expressed as: f(t1
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r, c) =c*
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(tip+t2)-2tit2c+tit2
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wherein t1 indicates available liquidity of the first token, wherein t2 indicates available liquidity of the second token, wherein r is an exchange rate between the first token and the second token, wherein c is a slippage rate, and wherein the exchange rate r is set to one in response to an indication that no exchange rate r is known. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Claim 18 recites wherein the partial differential equation function is expressed as: f2 (X0, Y0, Wweight, Wfactor) = X0weightY0+ =X0Y0wfactorwweight. These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Claim 19 recites wherein the partial differential equation function is expressed as: fnewFunction(X0, Yo, V) = X0Y0(1 + Y50 + VX50Y0). These limitations are also part of the abstract idea identified in claim 12, and is similarly rejected under the same rationale as claim 12, supra.
Response to Arguments
Applicant's arguments filed 9/8/2025 have been fully considered but they are not persuasive.
Applicant argues that the currently recited claims are not abstract (Applicant arguments, pg. 8). Examiner disagrees. “A mathematical calculation is . . . an act of calculating using mathematical methods to determine a variable or number.” MPEP § 2106.04(a)(2)(I)(C). An “equation” is math and a “non-recursive function” is math. A non-recursive function is a type of mathematical function, just like a recursive one. The key difference is that a non-recursive function, also called an explicit function, calculates a term in a sequence based only on its position (index), whereas a recursive function defines a term based on previous terms in the sequence. Furthermore, the claim recites a mathematical relationship under the mathematical concepts exception because "generating a transaction that calls a partial differential equation function of a smart contract…,” “wherein storage of the transaction in the second block causes the partial differential equation function to be executed to produce an output,” and “causing execution of a non-recursive function to produce the output,” and “wherein the output comprises a length matching a global variable,” and “wherein the non-recursive function computes the output in constant time,” is an abstract idea.” Digitech Image Techs. LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); MPEP § 2106.04(a)(2)(I)(A)(iv) (“The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form. The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula.”)
Under human activity, the limitations are commercial interactions, and managing interactions between people. More specifically, under commercial interactions, the claims involve business relations, and managing interactions between people, such as following rules. The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
The term "certain" qualifies the "certain methods of organizing human activity" grouping as a reminder of several important points. First, not all methods of organizing human activity are abstract ideas (e.g., "a defined set of steps for combining particular ingredients to create a drug formulation" is not a certain "method of organizing human activity"), In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160-61, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). Second, this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances as explained in MPEP 2106.04(a)(3). Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.
"Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. An example of a claim reciting a commercial or legal interaction, where the interaction is an agreement in the form of contracts, is found in buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014). The agreement at issue in buySAFE was a transaction performance guaranty, which is a contractual relationship. 765 F.3d at 1355, 112 USPQ2d at 1096. The patentee claimed a method in which a computer operated by the provider of a safe transaction service receives a request for a performance guarantee for an online commercial transaction, the computer processes the request by underwriting the requesting party in order to provide the transaction guarantee service, and the computer offers, via a computer network, a transaction guaranty that binds to the transaction upon the closing of the transaction. 765 F.3d at 1351-52, 112 USPQ2d at 1094. The Federal Circuit described the claims as directed to an abstract idea because they were "squarely about creating a contractual relationship--a ‘transaction performance guaranty’." 765 F.3d at 1355, 112 USPQ2d at 1096.
An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The business relation at issue in Credit Acceptance is the relationship between a customer and dealer when processing a credit application to purchase a vehicle. The patentee claimed a "system for maintaining a database of information about the items in a dealer’s inventory, obtaining financial information about a customer from a user, combining these two sources of information to create a financing package for each of the inventoried items, and presenting the financing packages to the user." 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described the claims as directed to the abstract idea of "processing an application for financing a loan" and found "no meaningful distinction between this type of financial industry practice" and the concept of intermediated settlement in Alice or the hedging concept in Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.
An example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015). The patentee in this case claimed methods comprising storing user-selected pre-set limits on spending in a database, and when one of the limits is reached, communicating a notification to the user via a device. 792 F.3d. at 1367, 115 USPQ2d at 1639-40. The Federal Circuit determined that the claims were directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)”, which “is not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity.” 792 F.3d. at 1367-68, 115 USPQ2d at 1640.
An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018). The patentee claimed a method of playing a dice game including placing wagers on whether certain die faces will appear face up. 911 F.3d at 1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims were directed to the abstract idea of “rules for playing games”, which the court characterized as a certain method of organizing human activity. 911 F.3d at 1160-61; 129 USPQ2d at 1011.
In DDR Holdings LLC v. Hotels.com, LP, the claims were found eligible as they reflected improvements to the functioning of a computer, i.e. a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage. In contrast, the current claims do not contain limitations reflective of an improvement to computer functionality and instead merely recite the computer database elements at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
In Finjan, the claims to a “behavior-based virus scan” were found to provide greater computer security and were thus directed to a patent-eligible improvement in computer functionality. In contrast, the current claims do not contain limitations reflective of an improvement to computer functionality and instead merely recite the computer database elements at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Furthermore, the claim limitations are unrelated and not synonymous to Cosmokey Solutions.
Applicant argues (Pg. 10), that the claims are directed to increasing performance of computing token exchange rates and improving security. Examiner disagrees. The claims might improve computational efficiency, but the claims themselves accomplish this through a simplified algorithm. Specifically, this occurs through using less resources, but not improving the resources. In essence, the algorithm might be more efficient, but any improvement is to the abstract idea, not in how the additional element implement the idea. management, or a solution to a technical problem. Technical details must be in the claim and the specification. For a trading method to be patent-eligible under USPTO Section 101, merely "improving computational resources" is not enough to overcome the abstract idea exception established in Alice Corp. v. CLS Bank International. The claim must specify a concrete, technological improvement to the computer's functionality. Further, as USPTO Guidance 2019, Example 35 was not eligible simply because it increased security and decreased fraud, but the devices were key to the eligibility.
Applicant argues that the currently recited claims are an improvement to computing exchange rates of cryptocurrency tokens and security improvements to cryptocurrency transfer technology (Pg. 10-11 & 13). Examiner disagrees. 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. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem. More specifically, the claims are limited to a business solution to a technical problem, not a technical solution to a technical problem.
Applicant also argues that the claims are directed to a practical application (Pg. 13-15). Examiner disagrees. Unlike Enfish, LLC v. Microsoft Corporation (“Enfish”), where the claims were focused on a specific improvement in how the computer functioned, the claim here merely uses the computer as a tool to perform the abstract concepts. Therefore, based on the similarity of the concept described in this claim to abstract idea identified by the courts, claim 1 is directed to an abstract idea (Step 2A: Yes). The court also emphasized that the "directed to" inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept. The Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention.
Further, in Enfish, the court asked whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database), or instead on a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. To make the determination of whether these claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification. Specifically, the court identified the specification's teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.
The Federal Circuit in Enfish stated that certain claims directed to improvements in computer related technology, including claims directed to software, are not necessarily abstract (Step 2A). The court specifically noted that some improvements in computer-related technology, such as chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract. Explaining that software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract.
Applicant's argument that the rejection lacks Berkheimer evidence is not persuasive (Applicant arguments, pg. 13 & 18). Such evidence is only required to support a conclusion that an additional element is well-understood, routine, conventional activity. Here, the rejection does not assert well-understood, routine, conventional activity and instead identifies the additional elements drawn to the database as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. MPEP 2106.05(f). Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from the list of considerations set forth in MPEP 2106.05. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept.
Lastly, the claims do not provide an inventive concept. As discussed above, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer. Even when viewed as whole, nothing in the claim adds significantly more (i.e. inventive concept) to the abstract idea. The currently recited claims solve digital asset management, which is not a significant improvement to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wang, et al., in “Neural-Guided Inductive Synthesis of Functional Programs on List Manipulation by Offline Supervised Learning,” from IEEE, on 2021, discloses a non-recursive function with different lists manipulation tasks with benchmarks for synthesis for the development of blockchain networks (Pg. 71522 & 71528).
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 BRANDON M DUCK whose telephone number is (469)295-9049. The examiner can normally be reached 8am - 5pm.
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/BRANDON M DUCK/Examiner, Art Unit 3693 /Mike Anderson/Supervisory Patent Examiner, Art Unit 3693