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
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive.
Applicant’s representative argues that the Examiner incorrectly states that the various functions of “write” or “writing”, “generate” or “generating” are not mental/manual processes.
In response, these functions involve the observations, evaluations and judgments of data.
Applicant is directed to Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (noting that a recited step that utilized a map of credit card numbers to determine the validity of a credit card transaction could be performed entirely mentally by merely using logical reasoning to identify a likely instance of fraud by merely observing that numerous transactions using different credit cards all originated from the same IP address).
Applicant is also directed to the 84 Fed. Reg. at 52 (listing exemplary mental processes including observations, evaluations, and judgments).
Furthermore, the functions recited in the independent claims could be performed manually/mentally using, at most, pen and paper to determine the analytic data.
Specifically, the claimed functions of “configuring (a) a first pairing between the raw material and an authentication mechanism that uniquely identifies a source of the raw material and stores a subset of the information, and (b) a second pairing between the raw material and a verification mechanism that verifies a sourcing of the raw material is compliant with regulatory requirements of the first jurisdiction or the second jurisdiction, and wherein a compliance of the sourcing is associated with a sourcing identifier; writing to a distributed ledger platform a transaction that is correlated with the first pairing and the second pairing, wherein the second pairing is immutably linked to the first pairing, and wherein the transaction comprises the sourcing identifier; generating, upon detecting that the transaction has been written to the distributed ledger platform…” are mental/manual processes. The claimed digital passport is not specifically stated how it is generated. A mere statement or limitations of generating a digital passport does not provide any additional elements generating the digital passport. As such, this function can be performed mentally/manually. These functions are not even stated to be performed by a broad or generic processor, while being arguably insufficient to be patent eligible.
The now added limitation of “storing…” also involves a mental/manual process.
Applicant is directed to CyberSource, 654 F.3d at 1372-73 (“[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes-or processes of human thinking-standing alone are not patentable even if they have practical application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature . . . , mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work” (emphasis added)). Additionally, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper, CyberSource, 654 F.3d at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson.”).
The receiving, writing, storing and generating of data by a computing device or electronic means or hardware amounts to receiving data and storing of data over a network has been recognized by the courts as routine, and conventional (See MPEP 2106.05(d)UD, citing Symantec, 835 F.3d at 1321, 120 OSPQ2d at 1362 (Utilizing an intermediary computer to forward information); TL Communications LEC v. AV Auto. LLC, 823 F.3d 607, G10, L18 USPO2d 1744, 1748 (ed. Cir. 2016) Casing a telephone for image transmission); OFF Techs., fac. v. Amazon.com, fic., 788 B.Ad 1359, 1363, Lis USPO2d 1090, 1093 (ed, Cir. 2015) (sending messages over a network}, buySAFE, fic. v. Google, Inc.. 768 F.3d 1350, 1355, 112 USPQ2d 1093, 1996 (Pod, Cyr. 2014) (computer receives and sends information over a network).
Positively reciting a “distributed ledger” or a “blockchain platform” and a database does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer. When further reviewing the independent claims, it is clearly seen that the distributed ledger platform is not performing any functions. Only transaction data is written to the distributed ledger platform. Private information is stored in a private database. Storing of data is not a patent eligible or statutory limitation or subject matter.
Applicant’s representative then states:
“The additional elements integrate the alleged abstract idea into a practical application in one or many ways. As an initial matter, Applicant notes that the claims advantageously leverage both the specific data written to a distributed ledger platform and the specific data stored to a private database. In this regard, such additional elements advantageously enable embodiments “to direct inquirers to the corresponding public/private database records.” See Specification, paragraph [0028]. Such additional elements used in combination further “take advantage of the accessibility and immutability of records stored by the blockchain ... while preserving the privacy of an owner.” See Specification, paragraph [0031]. The specification further describes that such implementations allow storage of private information “while anonymous information of public concern ... is publicly available to authenticate.” See Specification, paragraph [0034]. The generation of the digital passport further improves these aspects, for example by “ensuring that the information ... remains consistent, traceable, and immutable.” See Specification, paragraph [0054]. These additional elements reflect an improvement in the technical field of data management, specifically by providing a mechanism “to direct inquirers to the corresponding public/private database records,” and doing so in a manner that “takes advantage of the accessibility and immutability of records stored by the blockchain ... while preserving the privacy of an owner.” Such advantages are entirely lost in the Office Action’s overgeneralized characterization of the claims as merely reciting an abstract idea”.
In response, the distributed ledger and the private database are not performing any functions. Only data are stored or written therein. The mere recitation of a “blockchain platform”, “distributed ledger platform” and a “private database” or a processor or server or the Internet or a server to perform business functions are not sufficient to transform a claim into patent eligible form. The presentment or receiving or communicating of data are routine generic computer functions (see page 7, July 2015 Update: Subject Matter Eligibility). The instant claims recite no physical structural details of a server, computer, processor or a computerized system to accomplish the intended functions. The claims are not tied to any specific automated computer apparatus. Computer elements that perform each of the functions are not explicitly recited. A statutory claim would recite an automated machine implemented method or system with specific structures for performing the claimed invention so as to provide an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Each claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not effect an improvement to another technology or technical field; the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Furthermore, the judicial exception is not integrated into a practical application. In particular, the independent claims do not recite even one additional element to perform any of the claimed “receiving”, “writing” and “generating” functions. These types of functions are functions that a generic computer may achieve and they are also functions which the Courts found to be abstract as noted above.
The claimed “distributed ledger platform” and “database” are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of ranking information based on a determined amount of use) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The recitation of a distributed ledger platform and database in the claims does not represent significantly more than an abstract idea. "[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); see also Alice. Accordingly, the claims do not recite significantly more than the abstract idea. The claims are not patent eligible.
A 35 USC rejection of the claims as amended is found 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 21-45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
Specifically, claims 21 and 43 are directed to a method. Claim 37 is directed to a system. Each of the claims falls under one of the four statutory classes of invention.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea).
Claim 21 recites :
receiving information associated with a raw material for manufacturing a first physical good and a second physical good, wherein the raw material may remain in it raw form and is sourced in a first jurisdiction, wherein the first physical good and/or the second physical good is manufactured in a second jurisdiction different from the first jurisdiction, and wherein a first portion of the raw material is used to manufacture the first physical good and a second portion of the raw material is used to manufacture the second physical good:
configuring (a) a first pairing between the raw material and an authentication mechanism that uniquely identifies a source of the raw material and stores a subset of the information, and (b) a second pairing between the raw material and a verification mechanism that verifies a sourcing of the raw material is compliant with regulatory requirements of the first jurisdiction or the second jurisdiction, and wherein a compliance of the sourcing is associated with a sourcing identifier;
writing a transaction that is correlated with the first pairing and the second pairing, wherein the second pairing is immutably linked to the first pairing, and wherein the transaction comprises the sourcing identifier;
generating, upon detecting that the transaction has been written a first digital passport corresponding to the first portion of the raw material, the first pairing, and the second pairing, and a second digital passport corresponding to the second portion of the raw material, the first pairing, and the second pairing;
storing private information associated with the raw material in a private database, wherein the private database and the distributed ledger platform are associated with shared information that is linked to the first digital passport and configured to provide access to the private database and the distributed ledger platform, the first digital passport providing access via the shared information to at least a portion of the private information and at least a portion of the transaction written to the distributed ledger platform;
transmitting the first digital passport to the source of the raw material; and
transmitting the second digital passport and the sourcing identifier to a location associated with a manufacturer of the second physical good.
Claim 22 recites:
transmitting the second digital passport to a border authority of the first and/or second jurisdiction; and
configuring a third pairing between the second portion of the raw material and the manufacturer of the second physical good.
Claim 23 recites:
whereby, upon determining that the raw material has been physically acquired by the manufacturer;
revoking or deactivating the second digital passport;
writing to the distributed ledger platform another transaction correlated with the third pairing, wherein the third pairing is immutably linked to the second pairing;
generating a new digital passport corresponding to the second pairing and the third pairing; and
transmitting the new digital passport to the location associated with the manufacturer.
Claim 24 recites: wherein the first digital passport and the new digital passport are concurrently active, and enable both the source and the manufacturer to access one or more events associated with the raw material, the first physical good and/or the second physical good.
Claim 25 recites wherein the sourcing identifier comprises at least one of a certificate and a permit.
Claim 26 recites wherein the information associated with the raw material comprises at least one of a common name, a scientific name, a country of origin, a certification or a permit.
Claim 27 recites various authentication mechanisms.
Claim 28 recites: wherein the holographic sticker is created using an electron-beam lithography system, and wherein the holographic sticker displays information corresponding to a verification as part of the authentication mechanism.
Claim 29 wherein the second physical good comprises a luxury good.
Claim 30 recites wherein the manufacturer is configured to:
transmit, to an insurance coverage provider, the second digital passport; and
receive, from the insurance coverage provider, a policy covering the second physical good against a loss due to theft or destruction of the second physical good.
Claim 31 recites wherein the first digital passport or the second digital passport comprises a QR code, an encoded visual identifier, or a unique wireless signal.
Claim 32 recites wherein said authentication mechanism comprises an image capture device.
Claim 33 recites wherein the distributed ledger platform comprises a public blockchain platform that uses a proof-of-stake consensus mechanism and a native token for processing on-chain transactions.
Claim 34 recites wherein a completion time of the proof-of-stake consensus mechanism is based on a number of threads supported by at least one processor associated with at least one platform server.
Claim 35 recites wherein the distributed ledger platform comprises a permissioned blockchain platform.
Claim 36 recites wherein at least one of said first digital passport and said second digital passport is represented as a token, at least a portion of which is transferable.
Claim 37 recites:
receive information associated with a raw material for manufacturing a first physical good and a second physical good, wherein the raw material is sourced in a first jurisdiction, wherein the first physical good and/or the second physical good is manufactured in a second jurisdiction different from the first jurisdiction, and wherein a first portion of the raw material is used to manufacture the first physical good and a second portion of the raw material is used to manufacture the second physical good;
configure (a) a first pairing between the raw material and an authentication mechanism that uniquely identifies a source of the raw material and stores a subset of the information, and (b) a second pairing between the raw material and a verification mechanism that verifies a sourcing of the raw material is compliant with regulatory requirements of the first jurisdiction or the second jurisdiction, and wherein compliance of the sourcing is associated with a sourcing identifier;
write a transaction that is correlated with the first pairing and the second pairing, wherein the second pairing is immutably linked to the first pairing, and wherein the transaction comprises the sourcing identifier;
generate, upon detecting a first digital passport corresponding to the first portion of the raw material, the first pairing, and the second pairing, and a second digital passport corresponding to the second portion of the raw material, the first pairing, and the second pairing;
store private information associated with the raw material in a private database, wherein the private database and the distributed ledger platform are associated with shared information that is linked to the first digital passport and configured to provide access to the private database and the distributed ledger platform, the first digital passport providing access via the shared information to at least a portion of the private information and at least a portion of the transaction written to the distributed ledger platform;
transmit the first digital passport to the source of the raw material; and
transmit the second digital passport and the sourcing identifier to a location associated with a manufacturer of the second physical good.
Claim 38 recites: processing on-chain transactions.
Claim 39 recites wherein a completion time of the proof-of-stake consensus mechanism is based on a number of threads supported by the at least one processor.
Claim 40 recites wherein the sourcing identifier comprises at least one of a certificate and a permit.
Claim 41 recites wherein a holographic sticker that is affixed to packaging of the first physical good or the second physical good, and wherein the authentication mechanism is configured to remain with the first physical good or the second physical good through its lifecycle.
Claim 42 recites wherein said authentication mechanism comprises an image capture device.
Claim 43 recites:
instructions for receiving, information associated with a raw material for manufacturing a first physical good and a second physical good, wherein the raw material is sourced in a first Jurisdiction, wherein the first physical good and/or the second physical good is manufactured in a second jurisdiction different from the first jurisdiction, and wherein a first portion of the raw material is used to manufacture the first physical good and a second portion of the raw material is used to manufacture the second physical good;
instructions for configuring (a) a first pairing between the raw material and an authentication mechanism that uniquely identifies a source of the raw material and stores a subset of the information, and (b) a second pairing between the raw material and a verification mechanism that verifies a sourcing of the raw material is compliant with regulatory requirements of the first jurisdiction or the second jurisdiction, and wherein a compliance of the sourcing is associated with a sourcing identifier;
instructions for writing a transaction that is correlated with the first pairing and the second pairing wherein the second pairing is immutably linked to the first pairing, and wherein the transaction comprises the sourcing identifier;
instructions for generating a first digital passport corresponding to the first portion of the raw material, the first pairing, and the second pairing, and a second digital passport corresponding to the second portion of the raw material, the first pairing, and the second pairing;
instructions for storing private information associated with the raw material in a private database, wherein the private database and the distributed ledger platform are associated with shared information that is linked to the first digital passport and configured to provide access to the private database and the distributed ledger platform, the first digital passport providing access via the shared information to at least a portion of the private information and at least a portion of the transaction written to the distributed ledger platform;
instructions for transmitting the first digital passport to the source of the raw material; and instructions for transmitting the second digital passport and the sourcing identifier
associated with a manufacturer of the second physical good.
Claim 44 recites:
receiving information associated with a material;
configuring a first pairing between the material and an authentication mechanism, said authentication mechanism uniquely identifying the material and storing at least subset of the information associated with the material;
writing a transaction that is correlated with the first pairing;
generating, upon detecting that the transaction has been written to the blockchain platform, a first digital passport corresponding to at least a portion of the material;
storing private information associated with the raw material in a private database, wherein the private database and the distributed ledger platform are associated with shared information that is linked to the first digital passport and configured to provide access to the private database and the distributed ledger platform, the first digital passport providing access via the shared information to at least a portion of the private information and at least a portion of the transaction written to the distributed ledger platform; and
transmitting the first digital passport to a source of the material.
Claim 45 recites:
configuring a second pairing between the material and a verification mechanism which verifies that the source of the material has complied with regulatory requirements of a first Jurisdiction.
As per claims 21, 37 and 43 applicant is to be noted that the steps or functions of “receive” or “receiving” are considered as data gathering functions. The functions of “sort” or “configure”, “write” or “writing”, and “generate” or “generating” involve mental/manual processes and/or generic computer functions.
The functions of “transmit” or “transmitting” involve an insignificant post solution activity.
Here, the claimed concept falls into the category of functions of organizing human activities such as managing commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) because it amounts to the functions of comparing received information associated with raw materials for the manufacturing of a first and second physical goods in a respective first and/or second jurisdictions and determining a first and second physical passport for the manufacturing of the physical good in a jurisdiction.
The BRI of the claimed limitations describe functions of determining the legality of manufacturing a physical good in a jurisdiction.
Step 2A, Prong Two: The judicial exception is not integrated into a practical application, In particular, the claims recite the above noted bolded limitations understood to be the additional limitations.
These limitations recite performing steps of executing an identified request and/or action associated with an asset authentication system and method for the manufacturing of goods in a jurisdiction. The instructions or seps to perform these functions amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(1)), also see applicant's specification for guiding interpretation of these claim features, describing implementation with generic commercially available devices or any machine capable of executing a set of instructions, similarly describing usage of general and special purpose computer and “any kind of digital computer” including generic commercially available devices.
The claimed “distributed ledger platform” and private database of claims 21, 43 and 44 are not performing any positive function. The “image capture device” of claim 32 (performing its expected functions), the “processor” of claim 34, the processor with the at least one platform server and the distributed ledger of claim 37, and the “computing device and application program of claim 43 are similarly understood in light of applicant's specification as mere usage of any arrangement of computer software or hardware intermediate components potentially using networks to communicate with instructions are properly understood to be mere instructions to apply the abstraction using a computer or device or computer system.
The claims recite receiving data, writing data, configuring data, and transmitting data.
Performing steps by a generic machine, a transaction server or computer with one or more processors with memories merely limits the abstraction to computer field by execution by generic computers. See MPEP 2106.05¢h).
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to insignificant extra-solution activity, and limitations which amount to generally linking to a
particular technological environment do not integrate a practical exception into a practical application.
The receiving and retrieving data from/to a machine are similar to Alappat, which as noted in MPEP 2106. 05(b)(1) are superseded, and the correct analysis is to look whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. The claims in the instant application are performed by one or more processors which receive data, retrieve data, write and generate data.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the clams fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Receiving and transmitting data by electronic means or hardware amounts to receiving and transmitting information over a network has been recognized by the courts as routine, and conventional (See MPEP 2106.05(d)(ID, citing Symantec, 835 F.3d at 1321, 120 OSPQ2d at 1362 (Utilizing an intermediary computer to forward information); TL Communications LEC v. AV Auto. LLC, 823 F.3d 607, G10, L18 USPO2d 1744, 1748 (ed. Cir. 2016) Casing a telephone for image transmission); OFF Techs., fac. v. Amazon.com, fic., 788 B.Ad 1359, 1363, Lis USPO2d 1090, 1093 (ed, Cir. 2015) (sending messages over a network}, buySAFE, fic. v. Google, Inc.. 768 F.3d 1350, 1355, 112 USPQ2d 1093, 1996 (Pod, Cyr. 2014) (computer receives and sends information over a network).
Positively reciting a “processor” with a memory, a computing device, a distributed ledger platform, a database, an image capture device, and an “application program” does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements do not impact the analysis of the claims because these elements in combination are noted only to be a general purpose computer for performing basic or routine computer functions. These claimed elements are noted to a be a generic computer for collecting data and performing conventional computer functions. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed “processor” with a memory, a computing device, a distributed ledger, an image capture device, and an “application program” are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The dependent claim(s) when analyzed and each taken as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea.
Accordingly, claims 21-45 remain to be directed to an abstract idea.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANTZY POINVIL whose telephone number is (571)272-6797. The examiner can normally be reached M-Th 7:00AM to 5:30PM.
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/FRANTZY POINVIL/Primary Examiner, Art Unit 3693
December 2, 2025