DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election with traverse of Invention III (claims 1, 4-6, 11, 14-16, 21, in the reply filed on 2025-11-24 is acknowledged. The traversal is on the grounds that the inventions overlap in scope. This is not found persuasive.
It is first noted that applicant provides no evidence for the alleged “overlap in scope” and instead just alleges such overlap. The Examiner surmises that Applicant may be confusing “overlap” to mean shared elements, whereas with a restriction requirement, overlap means at least one set of claims infringes another – i.e. they are not patentably distinct. That is, “Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, if a first invention would not infringe a second invention, and the second invention would not infringe the first invention”; See MPEP § 806.05.
Although the restricted claims in the various inventive groups may share similarity, the restriction requirement does not consider the shared subject matter (aside from determining whether the inventions are completely independent or related but distinct). Rather, the restriction requirement analyzes whether the differences between the claims and their respective inventive groups cause them to be patentably distinct. Further, Applicant has merely provided allegations of similarity between the restricted claims, but did not amend the claims to similar scope or make a clear admission on the record that the inventions are not patentably distinct, which would have been sufficient to successfully traverse the restriction requirement; See MPEP § 1504.05(III). If, however, the Examiner may interpret the allegation that “the alleged Inventions overlap in scope” to be clear admission on the record that the inventions are not patentably distinct, then the Examiner will promptly withdraw the restriction requirement.
The Examiner does note, however, that the presence of the linking claims does mean that the restriction requirement will be withdrawn with respect to all dependent claims of an allowed claim, though this is not germane to the propriety of the restriction requirement itself. Further, the Examiner notes that applicant is welcome to amend the independent claims during prosecution to include non-elected subject matter, as the restriction requirement is formed on the basis of the burden of determining patentability on the subcombinations separately.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2025-11-24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 4-6, 11, 14-16, 21, and 24-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite calculating a trustworthiness score based on behavior and restricting participation of untrusted nodes, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as Mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of calculating a trustworthiness score based on behavior and restricting participation of untrusted nodes, a form of observation, evaluation, judgment, and/or opinion, which is a concept performed in the human mind and thus grouped as Mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that clam features of: calculating a trustworthiness score based on behavior and restricting participation of untrusted nodes do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead of a practical application, the claim features of calculating a trustworthiness score based on behavior and restricting participation of untrusted nodes merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. overseer, processing device, memory, and computer program product) that serves to perform generic computer functions (e.g. calculating a score and restricting participation) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed trustworthiness score, request, and voting activity are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards calculating a trustworthiness score based on behavior and restricting participation of untrusted nodes, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, “calculating, by an overseer, a trustworthiness score of an untrusted node” is merely a form of performing repetitive calculations, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Further note that the abstract idea of calculating a trustworthiness score based on behavior and restricting participation of untrusted nodes to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. police stopping and questioning an individual exhibiting suspicious behavior.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
Claim Analysis - 35 USC § 101
With respect to claims 21-25, the Examiner finds that the claim term “computer readable storage medium” (comprised within the “computer program product”) is directed towards statutory subject matter. In particular, the Specification provides a disavowal of scope by explicitly defining computer readable storage medium to exclude transitory media in [0066] as filed; See MPEP § 2111.01(IV). Thus, the claimed “computer readable storage media” is limited to statutory forms of non-transitory hardware media, as it does not include transitory media.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claims 6 and 16 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. In particular, claim 6 recites the limitation “countering, by the bot node, voting activity performed by the untrusted node”, and the specification does not describe the claimed feature in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing.
It is first noted that original claims lack adequate written description when the claims are generically drafted but the written description fails to support the scope of the genus claimed; See MPEP § 2161.01(I). That is, “the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus”. In this instance, the claims generally recite countering voting activity. The specification does provide antecedent basis for this; however, the specification does not provide a suitable level of embodiments or species for how to achieve this claim function for any generic application of countering voting, such as claimed. More particularly, the only functional embodiment/species described is “voting contrary to the vote of the untrusted node, effectively canceling the vote of the untrusted node” ([0050]); however, the claims cover other undescribed embodiments – e.g. voting in a different, but not necessarily cancelling (such as if there are more than two options), manner; destroying the vote; and a range of other potentially-existing countering mechanisms that were not described. Thus, the specification does not provide the necessary written description support for the full breadth of the asserted claims as required by the written description requirement.
Claim 16 is rejected under a similar rationale.
Claims 1, 4-6, 11, 14-16, 21, and 24-25 are rejected under 35 U.S.C. 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. Specifically, Claim 1 recites the limitation “restricting participation in the peer network by the untrusted node based on the untrusted node being flagged as untrusted”, and it’s unclear what creates the basis of “the untrusted node being flagged as untrusted”. That is, there is a computation of “a trustworthiness score”, but this is not linked to the act of flagging a node as untrusted and it is unclear if there is an association between the two. Moreso, dependent claim 4 further creates confusion by implying that nodes are added to the network as “untrusted” by default, which effectively cancels any link to the calculated trustworthiness score since it is based “on activity of the untrusted node in the peer network” (which should not exist if it’s just added). It’s further unclear whether the node recited as “untrusted” is also flagged as untrusted. Thus, it is unclear as to the basis by which a node is “flagged as untrusted” and what effect – if any – the calculation of a trustworthiness score has on the node. Claims 11 and 21 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4-6, 11, 14-16, 21, and 24-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koorella et al. (US Pre-Grant Publication No. 20210320797-A1, hereinafter “Koorella”).
With respect to independent claim 1, Koorella discloses a method comprising:
calculating, by an overseer, a trustworthiness score of an untrusted node of a peer network comprising a plurality of nodes, wherein the trustworthiness score is based on activity of the untrusted node in the peer network {para. 0050: “blockchain network trust maintainer nodes may monitor and adjust the trust score of human nodes before processing a new block based on the endorsement/ voting history of the previous block processing”}.
restricting participation in the peer network by the untrusted node based on the untrusted node being flagged as untrusted {paras. 0050 & 0058: “responsive to the overall trust value of the blockchain 106 being below a minimum threshold, select at least one node from the plurality of the nodes 105 to be assigned as the non-human intelligent node to increase the overall trust value of the blockchain 106”}.
With respect to dependent claim 4, Koorella discloses adding, in response to a request to add a node to the peer network, the node as the untrusted node {para. 0046: “new human nodes get added to the network” and “human nodes must earn their trust by demonstrating trustworthy voting/endorsement history”}.
With respect to dependent claim 5, Koorella discloses adding, in response to the request to add the node to the peer network, a bot node to the peer network {para. 0046: “system may inject/spawn new intelligent trustable nodes when new human nodes get added to the network”}.
With respect to dependent claim 6, Koorella discloses restricting participation in the peer network by the untrusted node comprises countering, by the bot node, voting activity performed by the untrusted node {paras. 0050 & 0058: “responsive to the overall trust value of the blockchain 106 being below a minimum threshold, select at least one node from the plurality of the nodes 105 to be assigned as the non-human intelligent node to increase the overall trust value of the blockchain 106”}.
With respect to claims 11 and 21, a corresponding reasoning as given earlier in this section with respect to claim 1 applies, mutatis mutandis, to the subject matter of claims 11 and 21; therefore, claims 11 and 21 are rejected, for similar reasons, under the grounds as set forth for claim 1.
With respect to claims 14-16, a corresponding reasoning as given earlier in this section with respect to claims 4-6 applies, mutatis mutandis, to the subject matter of claims 14-16; therefore, claims 14-16 are rejected, for similar reasons, under the grounds as set forth for claims 4-6.
With respect to claims 24-25, a corresponding reasoning as given earlier in this section with respect to claims 4-5 applies, mutatis mutandis, to the subject matter of claims 24-25; therefore, claims 24-25 are rejected, for similar reasons, under the grounds as set forth for claims 4-5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491