The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This office action is in response to Applicant’s submission filed on 22 March 2024. THIS ACTION IS NON-FINAL.
Status of Claims
Claims 1-16 are pending.
Claims 1-16 are rejected under 35 U.S.C. 112(b) as indefinite.
Claims 1-8 are rejected under 35 U.S.C. 101 for being directed to software per se.
There is no art rejection for claims 1-16.
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.
A claim is indefinite if, when read in light of the specification, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 110 USPQ.2d 1688, U.S. Supreme Court (2014).
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1 / 9, the claim recites "store the first training result data and the identifier of the first artificial intelligence system in an off-chain" and, later in the same claim, "stores the second training result data and the identifier of the second artificial intelligence system in an off-chain." It is unclear whether the second recitation of "an off-chain" refers to the same off-chain storage location introduced earlier in the claim, or to a second, distinct off-chain storage location. The use of the indefinite article "an" in both instances, rather than "the" in the second instance, fails to establish clear antecedent basis and renders the metes and bounds of the claim unclear, the claim is therefore indefinite. Clarification is required, e.g., by amending to "in the off-chain" for the second recitation if a single storage location is intended, or by explicitly claiming two separate off-chain storage locations if that is intended.
Regarding claims 2-8 / 10-16, which depend on above rejected claim 1 / 9, are rejected for the same reason.
Regarding claim 2 / 10, the claim recites "the blockchain system receives the identifier and authentication information of the first artificial intelligence system." While "the identifier" has proper antecedent basis in claim 1, "authentication information" is introduced here for the first time in the claim set, yet is preceded by the definite article "the" rather than "an." There is no antecedent basis for "the... authentication information." The same defect applies to the parallel recitation for the second artificial intelligence system in the same claim, and to claim 10, the claim is therefore indefinite.
Regarding claim 3 / 11, the claim recites storing "the identifier of the first artificial intelligence system and the first training result data in the off-chain." Because the antecedent basis for "off-chain" in claim 1 (from which claim 3 depends via claim 2) is itself ambiguous (see rejection above), it is unclear which off-chain storage location claim 3 refers to. The claim further recites "when electronic signature verification is successful." Claim 3 earlier recites that data is "electronically signed with a private key," but "electronic signature verification" as a distinct claimed step or element is never introduced with an indefinite article before being referred to implicitly as a definite event ("verification is successful"). It is unclear what act constitutes this "verification," by what entity it is performed, and how it relates antecedently to the "electronically signed" language, the claim is therefore indefinite.
Regarding claim 4 / 12 recites that the first identifier/hash "are stored in an on-chain," and separately that the second identifier/hash "are stored in an on-chain," without antecedent linkage clarifying whether one or two on-chain storage locations are intended, the claim is therefore indefinite.
Regarding claim 5 / 13, the claim recites "wherein the training result data is a result of training raw data..." Claim 1, from which claim 5 depends, introduces only "first training result data" and "second training result data" — it never introduces a generic, unqualified "training result data." There is accordingly no antecedent basis for "the training result data" in claim 5. It is unclear whether claim 5 is intended to characterize the first training result data, the second training result data, both, or training result data generally (an unclaimed genus), the claim is therefore indefinite. Appropriate correction: e.g., "wherein each of the first training result data and the second training result data is a result of..."
Regarding claim 6 / 14, the claim recites that the first and second artificial intelligence systems "do not perform a blockchain node function." The term "blockchain node function" is a functional negative limitation whose scope is not defined in the claim and is not expressly defined in the specification. It is unclear what specific operations are encompassed by "a blockchain node function" (e.g., block validation, consensus participation, mining/minting, ledger replication) and therefore unclear what structure or operation is being excluded from the first and second artificial intelligence systems, the claim is therefore indefinite. Clarification or a definition tying this phrase to specific disclosed operations is required.
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.
Non-Statutory Subject Matter
Claims 1-16 are directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to software per se. As drafted, the claims recite "a blockchain system configured to" perform a series of data receipt, storage, and transmission functions, but fails to positively recite any tangible, hardware-based structure (e.g., a processor, memory, or network interface) that would limit the claim to a machine implementation. Under MPEP § 2106.03, a claim to a "system" that is not limited to a tangible embodiment and merely recites functional software operations may be treated as directed to software per se, which does not fall within any of the four statutory categories of invention (process, machine, manufacture, or composition of matter) under 35 U.S.C. § 101. Applicant should amend claim 1 to positively recite hardware elements (e.g., "one or more processors" and "a memory storing instructions" or equivalent network/node hardware of the blockchain system) sufficient to tie the claim to a specific machine, in order to place the claim in a statutory category.
Allowable Subject Matter
Claims 1-16 include allowable subject matter since when reading the claims in light of the specification, as per, MPEP §2111.01 or Toro Co. v. White Consolidated Industries Inc., 199F.3d 1295, 1301, 53 USPQ2d 1065, 1069, 1069 (Fed.Cir. 1999), none of the references of record alone or in combination disclose or suggest the combination of limitations specified in claims 1-16.
In interpreting the claims, in light of the specification filed on 22 March 2024, the Examiner finds the claimed invention to be patentably distinct from the prior arts of record.
Regarding the amended independent claims, the primary reason for the allowance is the inclusion of the specific process / structure of the specific system where a blockchain stores each AI system's identified training result data off-chain and forwards it, unaggregated and identifier-tagged, directly to the other AI system, rather than merging contributions into a single broadcast global model.
None of the cited prior art references, singly or in combination, fully teaches all limitations of independent claims 1, 7 and 13.
Regarding the dependent claims, which include all the limitations of the independent claims, are also allowed.
The followings are references close to the invention claimed:
Chapman et al., US-PGPUB NO. 201/0228338A1 [hereafter Chapman] teaches computing devices exchanging locally-computed portioned results and iteratively averaging them in peer-to-peer fashion to cooperatively train an AI model without a central server. However, Chapman does not teach the specific claimed elements combination of a blockchain system storing off-chain training result data tagged with a participant identifier and forwarding one system's tagged data to the other system.
Boston et al., US-PGPUB NO. 20210027196A1 [hereafter Boston] teaches storing document metadata and curator-approval smart contracts on a blockchain to curate which electronic documents qualify as training data for a model. However, Boston does not teach the specific claimed elements combination of receiving two AI systems' respective training result data with system identifiers and transmitting each system's tagged data to the other system.
Kannan et al., US-PGPUB NO. 20210258160A1 [hereafter Kannan] teaches generating a certified blockchain-linked factsheet for an AI model and transmitting that certifying link to other computing devices for trust verification. However, Kannan does not teach the specific claimed elements combination of off-chain storage of identifier-tagged training result data and exchanging that data between two identified AI systems via the blockchain.
Kim et al., "Blockchained On-Device Federated Learning," IEEE Communications Letters, vol. 24, no. 6, pp. 1279–1283, Jun. 2020 [hereafter Kim] teaches mobile devices training locally and uploading model updates to a blockchain, where miners aggregate the updates into a single global model broadcast back to all devices. However, Kim does not teach the specific claimed elements combination of off-chain storage of each device's individually-identified data and forwarding one specific device's unaggregated result directly to another specific device.
Desai et al., "BlockFLA: Accountable Federated Learning via Hybrid Blockchain Architecture," CODASPY’21 [hereafter Desai] teaches off-chain worker-node training, submission of SHA-256 hashes of local updates to a blockchain for verification, and blockchain-based aggregation of updates into a global model. However, Desai does not teach the specific claimed elements combination of forwarding a specific worker's individually-identified raw training result data, unaggregated, directly to a different specific worker via the blockchain.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TSU-CHANG LEE whose telephone number is 571-272-3567. The fax number is 571-273-3567.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Omar Fernandez Rivas, can be reached 571-272-2589.
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/TSU-CHANG LEE/
Primary Examiner, Art Unit 2128
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