DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (18/617,377) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 18/617,377, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
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 as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential § 102(a)(2) prior art against the later invention.
Preliminary Amendment and Claim Status
The instant Office action is responsive to the preliminary amendment received July 14, 2024.
Claims 4–23 are currently pending.
Provisional Application
The instant application claims benefit to provisional application No. 63/492,991 filed on March 29, 2023 under 35 U.S.C. § 119(e).
Drawings
37 C.F.R. § 1.84(p)(5) recites “Reference characters not mentioned in the description shall not appear in the drawings.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(p)(5) for including reference characters not mentioned in the description. See Fig. 1, items 102(n-3), 102(n-2), 102(n-3), 104(0)–104(104(n), 106(0)–106(n), 108(0)–108(n-1), 110(0), 110(n–3), 110(n–2), 110(n); Fig. 2, items 206A–222A, 206B–222B, 206C–222C, 224; Fig. 8, items 1–18.
37 C.F.R. § 1.84(p)(5) recites “Reference characters mentioned in the description must appear in the drawings.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(p)(5) for not including reference characters mentioned in the description. See Spec. ¶ 32 (reciting “timestamp 225”).
37 C.F.R. § 1.84(l) recites “Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(l) for including letters that are not black. See Fig. 6, the text within items 602a, 602c, 604b, 604e, 604h; Fig. 7, the text within items 704a–f.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The use of trade names or marks used in commerce (e.g., “Ethereum” at Spec. ¶ 32) has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as TM, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
This is not an objection to the Specification.
The lengthy Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicants’ cooperation is requested in correcting any errors of which Applicants may become aware in the Specification.
Means-plus-Function Language
The following is a quotation of 35 U.S.C. § 112(f):
ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with § 112(f). The presumption that § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with § 112(f). The presumption that § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
The instant application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such a claim limitation is:
“blockchain” (claim 11, line 3; claim 18, line 3).
If Applicants do not intend to have the claim limitations treated under § 112(f), Applicants may amend the claims so that they will clearly not invoke § 112(f), or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of § 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011) (available at https://www.govinfo.gov/content/pkg/FR-2011-02-09/pdf/2011-2841.pdf).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “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 MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id. See also id. § 2173.05(e)(discussing indefiniteness arising for terms lacking proper antecedent basis).
Claims 1–23 are rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular,
(i) As discussed above, claim element “blockchain” (claim 11, line 3; claim 18, line 3) is a limitation that invokes 35 U.S.C. § 112(f). The written description, therefore, fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function.
Applicants may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. § 112(f); or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR § 1.175(d) and MPEP §§ 608.01(o) and 2181.
(ii) claim 4, lines 13–14, “events of the employee management ecosystem data” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the events of the employee management ecosystem data introduced in lines 11–12 or not.
It is assumed for examination purposes that the limitation refers to the events of the employee management ecosystem data introduced in lines 11–12. See MPEP § 2173.06 (citing Packard, 751 F.3d at 1312).
But if the limitation does not refer the events of the employee management ecosystem data introduced in lines 11–12, then “the events” at line 14 adds ambiguity to the claim because the Examiner is uncertain as to whether “the events” refers to the events at lines 11–12 or the events at lines 13–14.
Claim 4, lines 28 and 30 by analogy.
(iii) claim 4, line 23, “the association” adds ambiguity to the claim because the Examiner is uncertain as to which association the limitation is referring to—(a) the non-fungible event token associated with the event at line 3, (b) the non-fungible user token associated with the user at line 4, (c) the blockchain associated with the employee management ecosystem at line 7, (d) the event database records data associated with events at line 13, (e) the data associated with the contribution of the user at line 16, or (f) the cryptographic address of the non- fungible user token associated with a cryptographic address of the non-fungible event token at line 19.
Claim 9, line 4; claim 11, line 25; claim 16, line 6; and claim 18, line 25 by analogy.
(iv) claim 9, line 5, “metadata of the non-fungible user token” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the metadata of the non-fungible user token introduced in claim 4, line 27 or not.
(v) claim 10, lines 3–4, “a user interface associated with the employee management ecosystem” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the user interface associated with the employee management ecosystem introduced in claim 5, line 6 or not.
(vi) claim 11, line 31, “events of the employee management ecosystem data” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the events of the employee management ecosystem data introduced in lines 11–12 or not.
Claim 11, lines 33–34 by analogy.
(vii) claim 12, lines 8–9, “a memory of the blockchain storing instructions associated with a smart contract” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the memory of the blockchain storing instructions associated with the smart contract introduced in lines 11–12 or not.
Claim 14, lines 3–4; claim 15, lines 3–4; and claim 16, lines 3–4 by analogy.
(viii) claim 16, line 6, “metadata of the non-fungible user token” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the metadata of the non-fungible user token introduced in claim 11, line 30 or not.
(ix) claim 19, line 5, “events of the employee management ecosystem data” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the events of the employee management ecosystem data introduced in claim 18, lines 11–12 or not.
Claim 19, line 7 by analogy.
Allowable Subject Matter
Claims 4, 11, and 19 would be allowable if rewritten to overcome the rejection under 35 U.S.C. § 112(b) set forth in this Office action.
Claims 5–10, 12–18, and 20–23 would be allowable if rewritten to (1) overcome the rejection under 35 U.S.C. § 112(b) set forth in this Office action; and (2) include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20230281604-A1; US-20220358418-A1; US-20240062621-A1; US-20220173893-A1; US-20230289784-A1; US-20240154825-A1; WO-2023081844-A1; and TW-202343478-A.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449