DETAILED ACTION
Status of Claims
The present application, filed on or after 3/16/2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the Application and claims filed 12/18/2023.
Claims 1-13 have been examined and are pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(b) is acknowledged.
Information Disclosure Statement (IDS)
Acknowledgement is hereby made of receipt of Information Disclosure Statements filed by applicant on 12/18/2023.
(AIA ) Examiner Note
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or (for pre-AIA ) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, a joint inventor, or (for pre-AIA ) the applicant regards as the invention.
Independent claims 1, 12, and 13 each recite limitations directed towards the following: “…[a/the] setting data generation unit that generates setting data to be used for page setting of a page of the user of the social network service, the setting data being setting data for setting the token to be presented on the page of the user of the social network service, among the tokens owned by the user…” – underline added for emphasis.
Respectfully, the underlined feature renders the claim indefinite. It is not clear whether the underlined feature is intended to be a functional limitation or merely a statement of intended use of the generated “setting data”.
If Applicant intends the feature in question to merely be a statement of intended use of the generated “setting data”, then applicant should make this clear in his response.
Examiner notes a statement of intended use of data would not be afforded patentable weight as it does not provide a clear limit on either the claimed device which generated the data nor on the scope of the “setting data” itself.
If Applicant intended the aforementioned underlined feature to be a functional limitation to impose some type of limitation on either the “Setting data generation unit” or the “setting data” the Examiner notes that the claim fails to provide a clear-cut indication of the scope of the subject matter embraced by the claim.
According to MPEP 2173.05(g) – “the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).”
According to MPEP 2173.05(g), “Applicant may resolve the ambiguities of a functional limitation in a number of ways. For example: (1) "the ambiguity might be resolved by using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature" (see Halliburton Energy Servs., 514 F.3d at 1255-56, 85 USPQ2d at 1663); (2) applicant could demonstrate that the "specification provide[s] a formula for calculating a property along with examples that meet the claim limitation and examples that do not" (see id. at 1256, 85 USPQ2d at 1663 (citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341, 65 USPQ2d 1321, 1326 (Fed. Cir. 2003))); (3) applicant could demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied (see Marosi, 710 F.2d at 803, 218 USPQ at 292); or (4) applicant could amend the claims to recite the particular structure that accomplishes the function”
For the purpose of compact prosecution, the limitation is question is interpreted as a statement of intended use which does not carry patentable weight.
Nonetheless, for the reasons noted supra, the claims are held to be indefinite and correction is required.
Furthermore, claim 11 recites in part the following: “The information processing apparatus according to claim 1, wherein an image associated with the token which is officially authenticated and an image associated with the token which is not officially authenticated are simultaneously displayed on the page of the user of the social network service.”
Respectfully, it is not clear to what the token which is officially authenticated is referencing as there has not been a previous reference to a token which is officially authenticated. The same is true of the recited the token which is not officially authenticated. It is also not clear what step is involved in “officially authenticating” even if the antecedent basis issue with the two terms in question is resolved.
Dependent claims 2-11 inherit the deficiencies of their parent claim 1 and are also rejected under 35 U.S.C. 112(b) or (for pre-AIA ) 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor, a joint inventor, or (for pre-AIA ) the applicant regards as the invention.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. a judicial exception) without significantly more.
Per step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed towards a process, machine, or manufacture.
Per step 2A Prong One, the claims recite specific limitations which fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG, as follows:
Per Independent claims 1, 12, and 13:
“generate setting data to be used for page setting of a page of the user of the social network service,
As noted supra, these limitations fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, these limitations fall within the group Certain Methods Of Organizing Human Activity (e.g. fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
That is, the generate step, as drafted, is a business decision to create undisclosed “setting data” which is intended to be used in some ambiguous manner for a webpage associated with a social network service (i.e. a business) and thus falling into Certain Methods of Organizing Human Activity. There is no technical problem here and no technical solution being claimed to solve a technical problem. Furthermore, the mere nominal recitation of generic computer components (e.g. information processing apparatus, etc…) does not take the claim limitation out of the enumerated grouping. Thus, the claims recite an abstract idea.
Per step 2A Prong 2, the Examiner finds that the judicial exception is not integrated into a practical application. Although there are additional elements, other than those noted supra, recited in the claims, none of these additional element(s) or a combination of elements as recited in the claims apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception. As drafted, the claims as a whole merely describe how to generally “apply” the aforementioned concepts and link them to a field of use (i.e. in this case “settings” related to a business of a social network service) or serve as insignificant extra-solution activity (e.g. data-gathering, such as by a generic “reading unit” that acquires information or display [presenting] data on a webpage). The claimed computer components are recited at a high level of generality and are merely invoked as tools to implement the idea but are not technical in nature. Simply implementing the abstract idea on or with generic computer components is not a practical application of the abstract idea.
These additional limitations are as follows: “An information processing apparatus comprising: a data reading unit that acquires information of one or more tokens having uniqueness and owned by a user having an account of a social network service from a blockchain; and a setting data generation unit … the setting data being setting data for setting the token to be presented on the page of the user of the social network service, among the tokens owned by the user.”
However, these elements do not present a technical solution to a technical problem; i.e. Applicant’s invention is not a technique nor technical solution for “acquiring information” nor using data to present [display] a token on a web-page. The additional elements do not recite a specific manner of performing any of the steps core to the already identified abstract idea. Instead, these features merely serve to generally “apply” the aforementioned concepts and link them to a field of use or are insignificant extra-solution activity (e.g. data-gathering, and display of data) to the already identified abstract idea and do not integrate the abstract idea into a practical application thereof.
Per Step 2B, the Examiner does not find that the claims provide an inventive concept, i.e., the claims do not recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception recited in the claim. As discussed with respect to Step 2A Prong Two, the additional elements in the independent claims were considered as merely serving to generally “apply” the aforementioned concepts via generically described computer components and “link” them to a field of use, or as insignificant extra-solution activity. For the same reason these elements are not sufficient to provide an inventive concept; i.e. the same analysis applies here in 2B. Mere instructions to apply an exception using a generic computer component and conventional data gathering cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. So, upon revaluating here in step 2B, these elements are determined to amount to no more than mere instructions to apply the exception using generic computer components (i.e. a server) and/or gather and transmit data which is well-understood, routine, conventional activity in the field; i.e. note the Symantec, TLI, and OIP Techs Court decisions cited in MPEP 2106.05(d)(ll) indicate that mere receipt or transmission of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, alone and in combination, these elements do not integrate the abstract idea into a practical application, as found supra, nor provide an inventive concept, and thus the claims are not patent eligible.
As for the dependent claims, the dependent claims do recite a combination of additional elements. However, these claims as a whole, considered either independently or in combination with the parent claims, do not integrate the identified abstract idea into a practical application thereof nor do they provide an inventive concept.
For example, dependent claim 2 recites the following: “the setting data generation unit sets a condition for presenting the token owned by the user on the page of the user of the social network service.” However, this is a business decision and therefore part of the abstract idea but not significantly more than that. There is no technical solution being claimed and the decision to set a condition is a business decision and not a technical problem. Therefore, this feature is not found to be significantly more than the already recited abstract idea.
Therefore, the Examiner does not find that these additional claim limitations integrate the abstract idea into a practical application nor provide an inventive concept. Instead, these limitations, as a whole and in combination with the already recited claim elements of the parent claims, are not significantly more than the already identified abstract idea. A similar finding is found for the remaining dependent claims.
For these reasons, the claims are not found to include additional elements that are sufficient to amount to significantly more than the judicial exception and therefore the claims are not found to be patent eligible.
Please see the 2019 Revised Patent Subject Matter Eligibility Guidance published in the Federal Register (84 FR 50) on January 7, 2019 (found at http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials).
Examiner’s Note
Adhering to the guidelines of MPEP 2173.06(II), the Examiner acknowledges that all words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. However, when the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted.
Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
In the present set of claims (filed 12/18/2023), a great deal of confusion and uncertainty as to the proper interpretation of the limitations of dependent claims 11 exists. Therefore, a rejection under 35 U.S.C. 103 is not made regarding claim 11, because, as shown in the 35 USC § 112 rejections, speculation and conjecture must be utilized by the Office and the artisan inasmuch as the claims do not adequately reflect what the disclosed invention is under the second paragraph of 35 USC § 112. Again, see In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.)
Claim Rejections - 35 USC § 102 (AIA )
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8, 10, 12-13 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Smith et al. (U.S. 2021/0067511 A1; hereinafter, "Smith").
Claims 1, 12, 13
Pertaining to claims 1, 12, 13 exemplified in the limitations of claim 1, Smith as shown teaches the following:
An information processing apparatus comprising:
a data reading unit that acquires information of one or more tokens having uniqueness and owned by a user having an account of a social network service from a blockchain (Smith, see at least [Abstract] and [0226]-[0229], teaching: “…The method includes receiving a request by a validation system from a first device, for a validation badge [token having uniqueness and owned by a user having an account], the request identifying user and entity [social network service]. The method also includes retrieving, by the validation system [data reading unit], a record [information of one or more tokens having uniqueness and owned by a user] in a centralized or distributed ledger [blockchain] at an address corresponding to the user and entity. The method also includes determining, by the validation system, that a relationship between the user and the entity is existent based on the retrieved record in the centralized or distributed ledger…”);
and a setting data generation unit that generates setting data to be used for page setting of a page of the user of the social network service, the setting data being setting data for setting the token to be presented on the page of the user of the social network service, among the tokens owned by the user (Smith, see again citations noted supra, e.g. at least [Abstract], and [0226]-[0229], teaching, e.g.: Determination is made that a relationship between user and the entity is existent based on the retrieved record in the centralized or distributed ledgering, by the identity verification platform. “The method also includes transmitting, by the validation system to the first device, the requested validation badge, responsive to the determination that the relationship is existent, an application of the first device rendering the validation badge for display [setting the token to be presented on the page of the user of the social network service]…”).
Claim 2
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 1, wherein the setting data generation unit sets a condition for presenting the token owned by the user on the page of the user of the social network service (Smith, see citations noted supra including also at least [0228], e.g.: “…In some implementations, the method includes determining that the relationship between the user and the entity is existent responsive to identifying the presence of a non-zero value stored with the retrieved record in the centralized or distributed ledger…”).
Claim 3
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 1, wherein the setting data generation unit restricts a viewer to which the token owned by the user is presented on the page of the user of the social network service (Smith, see citations noted supra including also at least Fig. 33 and associated disclosure; e.g. “the badge is only displayed [a restriction] on approved company domain”, etc…).
Claim 4
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 1, wherein the setting data generation unit generates the setting data for each of a plurality of the social network services for which the user has accounts (Smith, see citations noted supra including also at least [0042]-[0045], [0214]-[0217] and Figs. 25 and 28; e.g. FIG. 25 illustrates an interface for user settings in an identity verification platform, according to some implementations; and FIG. 28 illustrates an entity dashboard in an identification verification platform illustrating settings of an entity, according to some implementations; e.g. per [0217]: FIG. 28 is an illustration of an example of a graphical user interface displaying a dashboard for a company/ organization 2020 of identity verification platform 2000, showing settings for company/organization 2020. In some embodiments, a company representative user 1002 may change the company photo or remove the company photo. In some embodiments, if the company is still under review by the identity verification platform 2000, and indication of this will be displayed with the information for the company/organization 2020.).
Claim 5
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 1, wherein the setting data generation unit sets a type of the token to be presented on the social network service according to a type of the social network service (Smith, see citations noted supra, including also e.g. [0197], teaching: “…FIG. 27 shows an illustration of badges for connections for company/organization 2020 rendered on identity verification platform 2020. …In embodiments, the rendered badge on identity verification platform 2020 shows a picture for connection 2025, the name of connection 2025, the relationship between connection 2025 and company/organization 2020, the email address for connection 2025, and optionally any other profile information for connection 2025, for example a link to connection 2025's Linkedln profile, or twitter feed, or any other social network feed for connection 2025…”).
Claim 6
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 5, wherein the setting data generation unit sets the type of the token to be presented on the social network service on a basis of selection of the user (Smith, see citations noted supra, including also e.g. [0197], teaching: “…FIG. 27 shows an illustration of badges for connections for company/organization 2020 rendered on identity verification platform 2020. In some examples, user 1002 of company/organization 2020 may export a badge of connection 2025, for example by clicking on the badge for connection 2025…”).
Claim 7
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 1, further comprising: a processing unit that performs advertisement or recommendation on a basis of the user's preference analyzed on a basis of the token owned by the user (Smith, see citations noted supra, in view of at least [0008]: “…There is significant value to the individual with whom the relationship is claimed as it protects their own reputation from misuse. There is significant value to a third party visiting the web site as they may make decisions based upon the claimed relationship, endorsement or recommendation presented to them…”)
Claim 8
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 7, wherein the processing unit recommends a connection with another user having similar preference to that of the user (Smith, see citations noted supra, in view of at least [0041]-[0044]: “…FIG. 24 illustrates an interface showing [a type of recommendation] a user's personal connections in an identity verification platform, according to some implementations… FIG. 26 illustrates an entity dashboard in an identity verification platform that is operable to enable a user to invite new connections to the entity, according to some implementations… FIG. 27 illustrates an entity dashboard in an identity verification platform illustrating connections of an entity, according to some implementations…”; a possible new connection with a connection of an entity to which the user is also connected is a type of recommendation based on similar preference – i.e. similar by virtue of being connected with the same entity, etc…).
Claim 10
Smith teaches the limitations upon which this claim depends. Furthermore, as shown, Smith teaches the following:
The information processing apparatus according to claim 1, wherein an image associated with the token is displayed next to a profile icon of the user on the page of the user of the social network service (Smith, see citations noted supra including again at least Fig. 33 and associated disclosure; e.g. per [0210]: “In some examples, the company may put a picture of the individual on the website and the picture may appear with a check mark beside it, or a badge icon, or any other representation, visual or audio, that indicates to a viewer of the website that that person has been authenticated by a validator…”; i.e. an image of a “checkmark” [an image associated with the token] is displayed next to a profile icon of the user on the page of the user of the social network; note “the badge is only displayed on approved company domain”, etc… the social network may be “Twitter”, etc…e.g. per [0181]. ).
Claim Rejections - 35 USC § 103 (AIA )
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claim 9 is rejected under 35 U.S.C. 103 as obvious over Smith et al. (U.S. 2021/0067511 A1; hereinafter, "Smith") in view of McDonald (WO 2021/016225 A1; hereinafter, “McDonald”).
Claim 9
Although Smith teaches the limitations upon which this claim depends, including a token system, e.g. per [0067]: “…As noted previously, these tokens are digital assets, cryptographically secured upon the blockchain, which can represent whatever the issuer wants and is prepared to back (if necessary), and
which can play whatever role in the system that its rule-set determines…”, and he teaches it there is significant value to recommending and making endorsements based on verified and authenticated relationships and/or qualifications which may be indicated by “badges” [tokens], etc… (e.g. per [0008], [0030], [0189], [0197], etc…), he may not teach the below nuance of recommending a connection who has the same qualification/badge/token. However, regarding this feature, Smith in view of McDonald teaches the following:
The information processing apparatus according to claim 7, wherein the processing unit recommends a connection with another user having same token as the token owned by the user (McDonald, see at least [157] teaching, e.g.: “…the system determines match recommendations based on entity qualifications [tokens]. For example, the system may recommend matches between entities with similar or the same qualifications [tokens]… As another example, the system may recommend a match between a company in a seed round and an investor that is qualified as a seed round investor based on the investor’s behavioral trends…”)
Therefore, the Examiner understands that the limitation in question is merely applying a known technique of McDonald (directed towards determines match recommendations based on entity qualifications [tokens]. For example, the system may recommend matches between entities with similar or the same qualifications [tokens]) which is applicable to a known base device/method of Smith (already directed towards verifying user relationships and qualifications which may be represented by tokenized “badges”) to yield predictable results. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the techniques of McDonald to the device/method of Smith in order to perform the limitation in question because Smith and McDonald are analogous art in the same field of endeavor (at least H04L 63/0884) and because according to MPEP 2143(I) (C) and/or (D), the use of known technique to improve a known device, methods, or products in the same way (or which is ready for improvement) is obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J SITTNER whose telephone number is (571)270-3984. The examiner can normally be reached M-F; ~9:30-6:30. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraf can be reached on (571) 270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Sittner/
Primary Examiner, Art Unit 3621