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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 Oct. 09, 2019 has been entered.
Status of Claims
This office action is in response to the claim amendments filed on August 21, 2026.
Claims 1, 2, 4-12, and 14-20 are pending.
Claims 3 and 13 have been canceled.
Claims 1, 2, 4-12, and 14-20 have been examined.
Response to Arguments
With respect to Claim Rejections - 35 USC § 101
Applicant argues: Independent Claims 1, 11, and 20 are not directed to an abstract idea. These claims recite features relating to causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user. Support for these features is found at least in p. 5 1. 23 - p. 8 1. 7 and p. 21 1. 24 - p. 22 1. 11 of Applicant's Specification as well as originally filed Claims 3 and 13. Taken together, Applicant's method (e.g., as recited in Claim 1) represents a process that is not merely a method of organizing human activity, as the claims are directed to management and activation of features of an ADS. See Applicant’s arguments page 12.
The Examiner, however, respectfully disagrees. As a preliminary matter, the Examiner follows the 2019 Patent Eligibility Guidance (“2019 PEG”) which is a synthesis of the case law of Alice and its progeny. Additionally, the reasoning for this rejection is the same as was laid out in the Office Action Final Rejection, dated 05/21/2026 (hereinafter, “Office Action”).
Furthermore, while Applicant has amended the claim to recite additional subject matter, for example, the amended claim limitations recite, causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user, further describe the abstract idea of managing subscription which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106.04(a)) because it describes a process for carrying out a commercial interaction between parties that involves communicating data needed to complete a transaction (e.g., subscription activation transaction) to the parties.
Additionally, a processor and vehicle merely use(s) a computer as a tool to perform an abstract idea and does not necessarily restrict the claim from reciting an abstract idea. Accordingly, the claims recite an abstract idea (See MPEP 2106.04). (Step 2A-Prong 1: YES).
Applicant further argues that, applicant's claims recite additional elements that integrate any alleged judicial exception into a practical application. As explained in the October 2019 Update to the 2019 Revised Patent Subject Matter Eligibility Guidance, Prong Two considers whether the claim, e.g., improves technology or is implemented with a particular machine. For example, if a12 claim reflects an improvement in the functioning of a computer or improvement to a technical field, the claim integrates the judicial exception into a practical application and no further analysis is required.
Such is the situation with the subject Application. Applicant's claims claims recite additional elements that integrate any alleged judicial exception into a practical application. Applicant's claims are directed to a particular implementation for provision of a subscription service for ADS features. As further described in Applicant's Specification, the implementation relates to causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user. (Applicant's Specification: p. 5 1. 23 - p. 8 1. 7 and p. 21 1. 24 - p. 22 1. 11). Hence,
Applicant's features confer a technological improvement to a technical problem so as to improve the functionality of a subscription management system and thereby the activation and operation of an ADS (which is a particular machine). Therefore, Applicant's claimed features relate to a particular machine and not simply generic computer components. See Applicant’s arguments pages 12-13.
The Examiner, however, respectfully disagrees, the claims (e.g., the amended claim) also fail to recite a practical application of the abstract ideas. According to the 2019 PEG, the additional claim elements are considered when determining whether the claim recites a practical application, such as a technological improvement, of the abstract idea. However, the claims fail to introduce any such additional elements. Again, causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped … being associated with the user are not considered as additional claim elements. Therefore, the claims do not, for example, purport to improve the functioning of a computer. And the claims are directed to an abstract idea. Thus, claims do not integrate the abstract idea into a practical application. Therefore, this analysis is the same as it was laid out in the Office Action. (Step 2A-Prong 2: NO).
Applicant further argues that, these claims are directed to significantly more than the abstract idea itself. Applicant notes that a "consideration when determining whether a claim recites significantly more is whether the claim effects a transformation or reduction of a particular article to a different state or thing... If such a transformation exists, the claims are likely to be significantly more than any recited judicial exception" (M.P.E.P. § 2106.05(c)). Such is the case here as these claims are directed to subscription management for provision of a subscription service for automated driving system, including particular features for causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set.
Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry" where the claim provides significantly more than an abstract idea itself if the claimed features are not mere routine activities known in the industry (M.P.E.P. § 2106.05(d)). Applicant's claims recite more than well-known activities known to the communications industry. For example, Applicant's claimed features are not merely drawn to generic blockchains. Rather, the specific dual-chain cryptographic handshaking mechanism (using a public key whitelisting on a public network to generate an NFT, detecting that public minting event, and translating it back into a private blockchain transaction to unlock physical vehicle features) is a highly specific, non-conventional computing architecture. This non-conventionality is further evidenced by the fact that the Office Action sets forth no art-based rejections.
For at least these additional reasons, Claims 1, 11, and 20 are directed to significantly more than an abstract idea itself under the guidelines of M.P.E.P. § 2106.
As such, the rejection of Claims 1, 11, and 20 is unsupported, and Applicant requests the withdrawal of the rejection for this reason. See Applicant’s arguments pages 13-14.
The Examiner, however, respectfully disagrees. The claims also fail to recite significantly more than the abstract idea. According to the 2019 PEG, the additional elements, when considered individually and as a combination, are analyzed to determine whether the claims recite significantly more than the abstract idea. However, the claims fail to recite any new additional elements. As noted in the Office Action, the additional elements serve to implement the abstract idea in a computing environment.
Furthermore, the claims (e.g., the amended claims) recite, causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user. Thus, the claims (e.g., the amended claims) do not appear the recited claims would result in any improvement to the recited technology. Therefore, the claims limitations do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the claim is not patent eligible. (Step 2B: NO).
Accordingly, this ground of rejection is maintained. See detailed rejection below.
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, 2, 4-12, and 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1, 2, 4-10 are directed to a method, claims 11, 12 and 14-19 are directed to a subscription management system comprising at least one processor, and claim 20 is directed to a non-transitory computer storage medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite an abstract idea of managing subscription. Specifically, the claims recite “deploying on a private blockchain network comprising a set of nodes, a smart contract identifying data indicative of a user being eligible for one or more subscription options representing various ADS feature sets, the user-indicative data comprising a respective unique private key and public key personal to the user; deploying on a public blockchain network supporting minting of Non-fungible tokens, NFTs, and comprising at least one of the set of nodes, a smart contract generating a whitelisting request transaction comprising the unique private and public keys; deploying a smart contract adding the whitelisting request transaction to the public blockchain, the addition whitelisting the unique public key for minting of NFTs on the public blockchain network; deploying on the public blockchain network, a smart contract identifying data indicative of the public key having been included in minting of an NFT on the public blockchain, the NFT one or both comprising and pointing to data indicative of an at least first subscription option out of the one or more subscription options and further comprising a unique address associated with the user derived from the unique public key; deploying on the private blockchain network, a smart contract generating a subscription activation transaction comprising data indicative of the unique address and one or both comprising and pointing to the at least first subscription option; deploying a smart contract adding the subscription activation transaction to the private blockchain, the addition whitelisting activation of the ADS feature set of the at least first subscription option and causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped … connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user”, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106.04(a)) because it describes a process for carrying out a commercial interaction between parties that involves communicating data needed to complete a transaction (e.g., subscription activation transaction) to the parties. Accordingly, the claims recite an abstract idea (See MPEP 2106.04).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(a or d)), the additional element(s) of the claim(s) such as a processor and vehicle merely use(s) a computer as a tool to perform an abstract idea. Specifically, the processor and vehicle perform(s) the steps or functions of “deploying on a private blockchain network comprising a set of nodes, a smart contract identifying data indicative of a user being eligible for one or more subscription options representing various ADS feature sets, the user-indicative data comprising a respective unique private key and public key personal to the user; deploying on a public blockchain network supporting minting of Non-fungible tokens, NFTs, and comprising at least one of the set of nodes, a smart contract generating a whitelisting request transaction comprising the unique private and public keys; deploying a smart contract adding the whitelisting request transaction to the public blockchain, the addition whitelisting the unique public key for minting of NFTs on the public blockchain network; deploying on the public blockchain network, a smart contract identifying data indicative of the public key having been included in minting of an NFT on the public blockchain, the NFT one or both comprising and pointing to data indicative of an at least first subscription option out of the one or more subscription options and further comprising a unique address associated with the user derived from the unique public key; deploying on the private blockchain network, a smart contract generating a subscription activation transaction comprising data indicative of the unique address and one or both comprising and pointing to the at least first subscription option; deploying a smart contract adding the subscription activation transaction to the private blockchain, the addition whitelisting activation of the ADS feature set of the at least first subscription option and causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user.” The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (See MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (See MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (See MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of using a processor and vehicle to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of managing subscription. As discussed above, taking the claim elements separately, the processor and vehicle perform(s) the steps or functions of “deploying on a private blockchain network comprising a set of nodes, a smart contract identifying data indicative of a user being eligible for one or more subscription options representing various ADS feature sets, the user-indicative data comprising a respective unique private key and public key personal to the user; deploying on a public blockchain network supporting minting of Non-fungible tokens, NFTs, and comprising at least one of the set of nodes, a smart contract generating a whitelisting request transaction comprising the unique private and public keys; deploying a smart contract adding the whitelisting request transaction to the public blockchain, the addition whitelisting the unique public key for minting of NFTs on the public blockchain network; deploying on the public blockchain network, a smart contract identifying data indicative of the public key having been included in minting of an NFT on the public blockchain, the NFT one or both comprising and pointing to data indicative of an at least first subscription option out of the one or more subscription options and further comprising a unique address associated with the user derived from the unique public key; deploying on the private blockchain network, a smart contract generating a subscription activation transaction comprising data indicative of the unique address and one or both comprising and pointing to the at least first subscription option; deploying a smart contract adding the subscription activation transaction to the private blockchain, the addition whitelisting activation of the ADS feature set of the at least first subscription option and causing the activation of the ADS feature set of the at least first subscription option in an ADS-equipped vehicle connected to the private blockchain network, based on the addition whitelisting activation of the ADS feature set, the ADS-equipped vehicle being associated with the user.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of managing subscription. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Regarding dependent claims
Claims 2 and 12 recite: wherein the set of nodes comprises one or both a service provider node dedicated to an ADS feature provider and a subscriptions-bundling node dedicated to a subscriptions bundling provider.
Claim 7 recites: wherein the user is associated with an ADS-equipped vehicle connected to the private blockchain network.
Claim 4 recites: wherein the deploying on the public blockchain network a smart contract identifying data indicative of the public key having been included in minting of an NFT one or both comprising and pointing to data indicative of an at least first subscription option out of the one or more subscription options, comprises the one or more subscription options and corresponding required ADS-related vehicle configurations being derivable from a smart contract deployed on the public blockchain network.
Claim 5 and 9 recites: deploying a smart contract on the private blockchain network, defining available ADS features and corresponding required ADS-related vehicle configurations.
Claims 6, 10 and 18 recite: deploying on the private blockchain network, a smart contract generating a user eligibility transaction comprising data indicative of the unique private and public keys; and deploying a smart contract adding the user eligibility transaction to the private blockchain, the addition whitelisting the user for monetary transfer(s) of tokens on the private blockchain for ADS feature set(s) activation.
Claim 8 recites: wherein the deploying on the public blockchain network a smart contract identifying data indicative of the public key having been included in minting of an NFT one or both comprising and pointing to data indicative of an at least first subscription option out of the one or more subscription options, comprises the one or more subscription options and corresponding required ADS-related vehicle configurations being derivable from a smart contract deployed on the public blockchain network.
Claim 14 recites: wherein the one or more subscription options and corresponding required ADS-related vehicle configurations are derivable from a smart contract deployed on the public blockchain network.
Claim 15 recites: wherein the user is associated with an ADS-equipped vehicle connected to the private blockchain network.
Claim 16 recites: wherein the one or more subscription options and corresponding required ADS-related vehicle configurations are derivable from a smart contract deployed on the public blockchain network.
Claim 17 recites: an ADS features defining unit configured to deploy a smart contract on the private blockchain network, defining available ADS features and corresponding required ADS-related vehicle configurations.
Claim 19 recites: wherein the subscription management system is comprised in at least a first node.
Dependent claims 2, 4-10, 12, and 14-19 further describe the abstract idea of managing subscription. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
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/JAHED ALI/
Examiner, Art Unit 3699
