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 .
Response to Arguments
102/103 arguments are withdrawn based on the filed amendment.
Argument:
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446
696
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Response:
The examiner disagrees. MPEP 2106.04(a)(2)(II) states:
The phrase “methods of organizing human activity” is used to describe concepts relating to:
• commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations);
Purchasing diversity is a sales activity. Managing social equality based on purchase of the credits is a commercial/legal interaction. A novel abstract idea remains an abstract idea.
MPEP 2106.04(a)(2) goes on to say:
Other examples of subject matter where the commercial or legal interaction is a legal obligation include:
i. hedging, Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1004 (2010);
ii. mitigating settlement risk, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 218, 110 USPQ2d 1976, 1979 (2014);
Diversity credits in effect are hedging/mitigating against bad PR from having bad diversity metrics.
Argument:
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328
672
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Response:
The examiner doesn’t see how claims would be eligible at the Step 2A_2 stage as there are no additional elements adding to the alleged abstract idea.
Furthermore, as has been explained, the blockchain aspects are not recited in a way that even limits the claims at all. The preamble recitations don’t breathe any life into the body of the claim. The claim 5/claim 10 recitations are constructed as wherein clauses that 1) don’t add any new steps i.e. clauses beginning with “-ing” verbs and 2) don’t limit any steps in the parent claims.
Argument:
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74
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292
694
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Response:
The examiner disagrees. Recited claims lack any additional elements. What remains is a judicial exception and that alone cannot provide an inventive concept. See MPEP 2106.05(I):
An inventive concept “cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the claims before us?”) (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract”). Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
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 1-11 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-11 recite subject matter falling within one of the four categories of invention (step 1).
Claims 1-11 recite:
1. (Currently Amended) A blockchain-based diversity credit method comprising the steps of:
setting a set of quantifiable diversity goals for an organization,
assessing a current performance of the organization relative to the set of quantifiable diversity goals to produce a set of current performance gaps representing a set of shortfalls of the current performance of the organization relative to the set of quantifiable diversity goals,
providing one or more diversity credits for purchase, wherein each diversity credit is pre- defined and verifiable, and
purchasing, on behalf of the organization, a set of purchased diversity credits from the provided one or more diversity credits for purchase, according to the set of current performance gaps, wherein the set of purchased diversity credits offset the set of current performance gaps.
2. (Currently Amended) The method of claim 1, wherein each diversity credit represents a human capital metric.
3. (Currently Amended) The method of claim 1, wherein each diversity credit represents an environmental metric.
4. (Currently Amended) The method of claim 1, wherein each diversity credit represents a governance metric.
5. (Currently Amended) The method of claim 1, wherein a blockchain is used for quantification, tracking, tracing and verification of the one or more diversity credits being provided, and the set of purchased diversity credits.
6. (Currently Amended) A blockchain-based diversity credit method comprising the steps of:
setting a set of quantifiable diversity goals for an organization at each level of a set of pre- defined organizational levels of the organization including hourly employees, salaried employees, managers, senior leaders and board members
auditing the racial and ethnic demographics of its workforce at each level of the set of pre-defined organizational levels
determining a set of current performance gaps between the number of workers at a subset of levels among the set of pre-defined organizational levels of the organization that identify as Hispanic or Black and the number that the organization's constituents would expect it to employ;
providing one or more diversity credits for purchase, wherein each diversity credit is pre- defined and verifiable, and
purchasing, on behalf of the organization, a set of purchased diversity credits from the provided one or more diversity credits for purchase, according to the set of current performance gaps, wherein the set of purchased diversity credits offset the set of current performance gaps.
7. (Currently Amended) The method of claim 6, wherein each diversity credit represents a human capital metric.
8. (Currently Amended) The method of claim 6, wherein each diversity credit represents an environmental metric.
9. (Currently Amended) The method of claim 6, wherein each diversity credit represents a governance metric.
10. (Currently Amended) The method of claim 6, wherein a blockchain is used for quantification, tracking, tracing and verification of the one or more diversity credits being provided, and the set of purchased diversity credits.
11. (New) The method of claim 6, wherein the subset of the levels among the set of pre- defined organizational levels of the organization include levels of managers, senior leaders and board members.
Claims 1-11 recite concepts for providing/purchasing diversity credits based on organizational diversity goals/assessments.
These are commercial interactions, which per MPEP 2106.04(a)(2)(II) means they fall within the certain method of organizing human activity grouping.
Thus claims 1-11 recite an abstract idea (Step 2A_1).
Claims 1-11 recite no additional elements. Thus claims 1-11 are considered to be directed to an abstract idea without a practical application or significantly more (Step 2A_2 and Step 2B) and are ineligible.
The examiner notes the recitation of blockchain in claims 5 and 10, but notes that these claims were not written in a way to require steps to be performed (see MPEP 2111.04). Even if claims 5 and 10 were written to positively recite steps, it would not make a difference as to eligibility as using blockchain would be considered to be generally linking a judicial exception to a particular technological environment. See MPEP 2106.05(h). The examiner also notes the recitation of “blockchain-based” in the preamble of claims 1 and 6, but this preamble is not recited in a way to limit the steps performed. See MPEP 2111.02: "If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). See also Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333, 68 USPQ2d 1154, 1158 (Fed. Cir. 2003)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Garg (US 11030404 B1) discloses evaluating diversity spend metrics. NPL “Diversity Scoreboards & Dashboards” discloses various diversity metrics.
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 NATHAN A MITCHELL whose telephone number is (571)270-3117. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Zeender can be reached at 571-272-6790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN A MITCHELL/Primary Examiner, Art Unit 3627
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