DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Receipt of Applicant’s amendments filed on October 14, 2025 is acknowledged.
Response to Amendment
Applicant amended claims 1, 6, 8, 13, and 15.
Claims 1-22 are pending and have been examined.
Response to Arguments
Applicant's arguments filed October 14, 2025 have been fully considered but they are not persuasive.
Regarding 112 Rejections
Examiner initially rejected claims 6 and 13 under 35 USC 112(b) / 2nd paragraph as being indefinite. Applicant amended the claims to replace the trademark term “QR code” with the generic term multidimensional barcode. In view of Applicant’s amendments, Examiner withdraws this rejection.
Regarding 101 Rejections
Examiner initially rejected claims 1-22 under 35 USC 101 as being directed to non-statutory subject matter.
Applicant argued that the claims do not recite an abstract idea because the claims recite multiple active computing nodes that participate in the computer system for creating a digital record. Examiner does not find this argument persuasive. Applicant’s claims recite commercial/legal interactions as well as a method which can be performed in the human mind. This means the claims are abstract under the categorization of Certain Methods of Organizing Human Activity as well as a Metal Process. Applicant is merely focusing on the computer implementation of this abstract idea. The computer implementation of the abstract idea doesn’t change the nature of the underlying abstract idea. Furthermore the claims could be performed in the human mind (or via pen and paper). The human mind is capable of memorizing a serial number and value of a piece of currency; a computer acting the place of a person does not change the abstract nature of the claims.
Applicant argued that the claims a recite a practical application of the judicial exception. Applicant argued the claims recite a specific manner in which a physical item is transferred between multiple entities. Examiner does not find this argument persuasive. Applicant’s claims do not improve technology; the underlying technology remains unaffected by the claims. If Applicant desires to argue that its claims improve technology there must be some technology that is actually being improved. Applicant is merely trying to frame a business issue as a technology issue. While recording information digitally has a technical aspect, Applicant is not addressing how data is stored on a memory or something of a technical nature. Applicant is merely utilizing existing technology for its intended purpose and achieving the predictable results of using that technology. Applicant is addressing a business problem (who “owns” a unity of physical currency) with a business solution. Applicant is merely using existing technology (for its intended purpose) to implement the business solution. Any improvements lie in the abstract idea itself, not in underlying technology. It is not a technical solution to track who owns a unit of physical currency. Applicant merely recites the utility of the claims and focuses on the computer implementation of the abstract idea. The identified limitations do no amount to a practical application because they are a part of the abstract idea. Outside of the abstract idea there remains only the computer implementation of the abstract idea and extra-solution activity. Neither of these are indicative of a practical application. Applicant’s claims do not address a technical limitation/deficiency in the art and thus does not amount to a practical application.
Applicant argued it recites an unconventional combination of features that results in a practical application. Examiner does not find this argument persuasive. First, an unconventional combination of features is not a standard indicative of a practical application (such as an improvement to technology, a particular machine, etc.). An ordered combination or unconventional combination of elements may be considered significantly more. However, Applicant does not recite an unconventional combination of elements in its claim. Again Applicant is merely focusing on the computer implementation of the abstract idea; and in its computer implementation of the abstract idea there is nothing claimed which is something other than what is well-understood, routine, and conventional. Applicant is using technology in the manner it was intended to be used to obtain the desired results of that technology. Applicant is merely linking the use of the abstract idea to a computing environment. Applicant is mistaken that Examiner must provide evidence that the underlying abstract idea is well-understood, routine and conventional. It is the additional elements that must be shown to be well-understood, routine and conventional. Outside of the abstract idea, there is only the computer implementation of the abstract idea and extra-solution activity. Examiner provided evidence that these are well-understood, routine and conventional limitations. Examiner has provided the proper evidence as required by Berkheimer. Applicant’s claims do not recite significantly more nor do they recite a practical application.
Examiner maintains this rejection.
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite the abstract idea which may be summarized as recording ownership information reflecting transactions.
Step 1 Analysis
Applicants claims are directed to a process (claims 8-14), machine (claims 1-7, 21, 22), and manufacture/product (claims 15-20).
Step 2A, Prong 1 Analysis
Claims 1, 8 and 15 recite the abstract idea/limitations of:
creating a… record of a physical item of value,
wherein in response to capturing an image of a physical currency unity, extracts a serial number and a value integrated within the physical currency unit;
in response to receiving a first request message, prompting a capture of a(an)… image of a first physical item of value using the camera,
wherein the first request message includes a first entity identifier identifying the first entity;
in response to the… image being captured by the camera and being converted, creating a first… record of the first physical item including a first physical item identifier uniquely identifying the first physical item and the value of the first physical item,
wherein the first physical item identifier is generated based on the serial number and the value extracted from the… image of the first physical item, and the first entity identifier identifying the first entity, the first… record assigning the first entity as a recorded owner of the first physical item;
storing the first… record in a secure database;
receiving a second request message indicating that the first physical item is in possession of a second entity,
the second request message generated in response to a(an)… image of the first physical item being captured by the camera and being converted,
the second request message including the first physical item identifier captured by the camera from the same data integrated in the first physical item that was previously captured by the camera, and a second entity identifier identifying the second entity;
in response to receiving the second request message, performing a lookup operation in the secured database using the first physical item identifier to determine that the first entity is the recorded owner of the first physical item of value,
to retrieve the first entity identifier and a messaging address;
generate a confirmation message using the first physical item identifier, the second entity identifier, and the first entity identifier;
transmitting a confirmation message to the (entity) via the messaging address, the confirmation message requesting confirmation from the first entity to transfer recorded ownership of the first physical item of value to the second entity;
wherein the confirmation message causes the (entity) to display the second entity identifier, the first physical item identifier, and a selectable input prompting the first entity to confirm via the selectable input the transfer of the recorded ownership of the first physical item of value from the first entity to the second entity;
and in response to receiving both a positive confirmation message based on user selection of the selectable input and the… image of the first physical item, creating a second record including the first physical item identifier and a second entity identifier of the second entity indicating that the second entity is the recorded owner of the first physical item, the second… record associated with the first record based on the first physical item identifier, to track the transfer of the first physical item represented by the first physical item identifier between the first entity and the second entity.
As drafted these limitations are a process that falls within the “Certain Methods of Organizing Human Activity” and the “Mental Processes” grouping of abstract ideas; but for the recitation of generic computer components. Specifically, the claims recite recording ownership information related to a physical object and changing that ownership information to reflect a transfer of the property. These claims are reflective of commercial/legal interactions as well as a mental process that can be performed in the human mind. If a claim limitation, under its broadest reasonable interpretation, recites a mental process and/or certain methods of organizing human activity, then it recites an abstract idea.
Step 2A, Prong 2 Analysis
This judicial exception is not integrated into a practical application because the claims only recites system components for implementing the abstract idea and extra-solution activity. The claims recite the additional limitations of a network computer device, a processor, at least one memory device, a distributed network of computer nodes, a camera, an optical character recognition (OCR) application, computer nodes, a secure database, a non-transitory computer-readable storage medium, computer-executable instructions; and they are recited at a high level of generality. These system components amount to no more than mere instructions to apply the exception using a generic computer. These limitations generally link the use of the judicial exception to a technological environment and are not indicative of integration into a practical application. The limitations of:
storing the first… record in a secure database;
receiving a second request message,
performing a look up in the secured database;
transmitting a confirmation message;
display the second entity identifier, the first physical item identifier, and a selectable input;
as drafted are insignificant extra-solution activity. These steps are mere data gathering and storing of information and do not qualify as a practical application of the judicial exception. See MPEP 2106.05(d). These additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims as a whole do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea without a practical application.
Step 2B Analysis
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a network computer device, a processor, at least one memory device, a distributed network of computer nodes, a camera, an optical character recognition (OCR) application, computer nodes, a secure database, a non-transitory computer-readable storage medium, computer-executable instructions; amount to no more than mere components to implement the judicial exception using a generic computer components and/or generally link the abstract idea to a particular technological environment. The limitations of:
storing the first… record in a secure database;
receiving a second request message,
performing a look up in the secured database;
transmitting a confirmation message;
display the second entity identifier, the first physical item identifier, and a selectable input;
amount to the sending and receiving data between devices, claimed at a high level of generality. These insignificant extra-solution activities are also well-understood, routine, and conventional as recognized by the federal courts See MPEP 2106.05(d)(II)(i). See also, Applicant’s specification paragraphs [0042-0045], [0082-0092], about implementation of the abstract idea using general purpose or special purpose computing devices; and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not amount to significantly more than the abstract idea because they do not impose any meaningful limits on practicing the abstract idea. Thus Applicant’s claims are not patent eligible.
Dependent Claims Analysis
As for dependent claims 2, 9, 16, and 22 these claims recite limitations that further define the same abstract idea noted in independent claims 1, 8, and 15. Therefore, claims 2, 9, 16, and 22 are considered ineligible subject matter for the reasons given above.
As for dependent claims 4, 5, 11, and 12 these claims recite limitations that further define the same abstract idea noted in independent claims 1, 8, and 15. In addition, the recite the additional elements of a blockchain structure, a digital wallet. The components are recited 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. This is not indicative of a practical application or significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, claims 4, 5, 11, and 12 are considered ineligible subject matter.
As for dependent claims 3-7, 10-14, and 17-21 these claims recite limitations that further define the same abstract idea noted in independent claims 1, 8, and 15. In addition, the recite the additional elements of
record a transfer;
store the first record;
store the first physical item identifier
store a transfer history;
receive an item consignment message;
store a consignment record;
transmit a notification message;
This is considered insignificant extra-solution activity, because as drafted the limitations are mere data gathering and storing of information. These limitations do not qualify as a practical application of the judicial exception or significantly more. See MPEP 2106.05(g). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Therefore, claims 3-7, 10-14, and 17-21 are considered ineligible subject matter.
Thus, the dependent claims 2-7, 9-14, and 16-22 are not patent-eligible either.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112 first paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Prior Art
There was no prior art rejection on file. Examiner has conducted an updated prior art search in view of the new claims and will not provide an art rejection at this time.
Conclusion
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 extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WARDEN whose telephone number is (571)272-9602. The examiner can normally be reached on M-F; 9-6 CDT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J. WARDEN/
Examiner
Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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