DETAILED ACTION
The present application, filed on 4/5/2024 is being examined under the AIA first inventor to file provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/5/2026 has been entered.
The following is a non-final Office Action on the Merits in response to Applicant’s submission.
Claims 1, 4, 11-12 are amended
Claims 13 are new
Overall, Claims 1-13 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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 1-13 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-10, 13 are directed to a system, claims 11 are directed to a computer implemented method, and claims 12 are directed to computer executable instructions stored on a non-transitory storage medium.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
[INDEPENDENT CLAIMS]
Per Step 2A.1. Independent claim 1, (which is representative of independent claims 11, 12) is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 1 (which is representative of independent claims 11, 12) recite an abstract idea, shown in bold below:
[A] An information processing method executed by a computer system
[B] sending, to a blockchain, contract information related to a payer who pays a predetermined payment amount and a receiver who receives the predetermined payment amount, the contract information having been encrypted; and
[C] executing payment based on the contract information.
[D] wherein the payment is executed automatically based on the contract information being registered in the blockchain in accordance with a generated zero-knowledge proof indicating validity of the registered contract information.
[E] wherein the zero-knowledge proof is generated based on at least one of the encrypted contract information or consensus information indicating consensus of the receiver with the contract information
Independent claim 1 (which is representative of independent claims 11, 12) recites: sending contract information ([B]); and executing a payment ([C]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “making payments as stipulated by a contract, which represents commercial activity”.
This is a combination that, under its broadest reasonable interpretation, covers agreements in the form of contracts, legal obligations, sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that independent claim 1 (which is representative of independent claims 11, 12) recites an abstract idea that corresponds to a judicial exception.
[INDEPENDENT CLAIMS – Additional Elements]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the added elements “to a blockchain” recite computing elements at a high level of generality, generally linking the use of a judicial exception to a particular technological environment (see MPEP 2106.05(h)), or merely using a computer as a tool to perform an abstract idea (MPEP 2106.05(f)). Further, the additional elements “the contract information having been encrypted” and “wherein the payment is executed automatically based on the contract information being registered in the blockchain in accordance with a generated zero-knowledge proof indicating validity of the registered contract information”, “wherein the zero-knowledge proof is generated based on at least one of the encrypted contract information or consensus information indicating consensus of the receiver with the contract information” as applied to the contract information, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These additional elements of the independent claims do not preclude from carrying out the identified abstract idea “making payments as stipulated by a contract, which represents commercial activity”, and do not serve to integrate the identified abstract idea into a practical application.
Per Step 2B. Independent claim 1 (which is representative of claims independent 11, 12) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 11, 12 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claim 4 recites:
[A] the circuitry is further configured to create consensus information indicating consensus of the receiver with the contract information.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making payments as stipulated by a contract, which represents commercial activity”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”).
Therefore, dependent claim 4 is deemed ineligible.
Dependent claim 5 recites:
[A] wherein the circuitry is further configured to send the consensus information to the blockchain.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making payments as stipulated by a contract, which represents commercial activity”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data” which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is concluded that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(d) II)). Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”).
Therefore, dependent claim 5 is deemed ineligible.
Dependent claim 6 recites:
[A] wherein the circuitry is further configured to convert one or more pieces of contract information into new single contract information.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making payments as stipulated by a contract, which represents commercial activity”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”).
Therefore, dependent claim 6 is deemed ineligible.
Dependent claim 7 recites:
[A] wherein the circuitry converts the one or more pieces of the contract information by converting first contract information related to a first person who pays a first payment amount and a second person who receives the first payment amount and second contract information related to the second person who pays a second payment amount and a third person who receives the second payment amount into third contract information related to the first person who pays the first payment amount, the second person who receives a difference amount of the second payment amount from the first payment amount, and the third person who receives the second payment amount.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making payments as stipulated by a contract, which represents commercial activity”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”).
Therefore, dependent claim 7 is deemed ineligible.
Dependent claim 8 recites:
[A] wherein the circuitry converts the one or more pieces of the contract information by converting first contract information related to a first person who pays a first payment amount and a second person who receives the first payment amount and second contract information related to the first person who pays a second payment amount and a third person who receives the second payment amount into third contract information related to the first person who pays a total payment amount of the first payment amount and the second payment amount, the second person who receives the first payment amount, and the third person who receives the second payment amount.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making payments as stipulated by a contract, which represents commercial activity”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”).
Therefore, dependent claim 8 is deemed ineligible.
Dependent claim 13 recites:
[A] wherein the circuitry is further configured to send to the blockchain, along with the encrypted contract information, the zero-knowledge proof generated based on the consensus information indicating the consensus of the receiver with the contract information.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “making payments as stipulated by a contract, which represents commercial activity”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“making payments as stipulated by a contract, which represents commercial activity”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”).
Therefore, dependent claim 13 is deemed ineligible.
Dependent claims 2-3, 9-10 recite:
wherein the contract information includes at least one of attribute information or the predetermined payment amount, the attribute information indicating attributes of contractors including the payer and the receiver.
wherein the predetermined payment amount includes a payment amount based on a ratio of distribution indicated by the contract information.
wherein the encrypted contract information includes the zero-knowledge proof for proving validity of the contract information.
wherein the consensus information includes the zero-knowledge proof indicating that the contract information has been correctly encrypted.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements – the contract information; the predetermined payment amount; the transmitter; the encrypted contract information; the consensus information – and as such, cannot change the nature of the identified abstract idea (“making payments as stipulated by a contract, which represents commercial activity”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 2-3, 9-10 are deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claims of the instant application, considered individually, or as a as a whole, as an ordered combination, do not amount to significantly more (see MPEP 2106.07(a)II).
In sum, Claims 1-13 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the difference between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable Goldston (US 2021/0279305), in view of Ferenczi et al (US 2020/0193425).
Regarding Claims 1, 11, 12: Goldston first embodiment discloses: An information processing method executed by a computer system, comprising:
sending, to a blockchain
executing payment based on the contract information. {see at least [0051] how payments have to be split (reads on executing payments); [0121] financial rights specified in the contract … making payments to the owner; fig2, rc295 [0084], [0121] token transaction module (reads on executing payments; [0214] using smart contracts to execute future payments (reads on making automatic payments)}
wherein the payment is executed automatically {see at least [0214]-[0215] smart contract (reds on automatic execution)} based on the contract information being registered in the blockchain in accordance with …. {see at least [0051] the transaction is tracked via a blockchain or other distributed ledger; fig12, rc1018, [0141] tracking transfer activities … the log can be encrypted or otherwise protected … using blockchain or other distributed ledger technology.}
Goldstone does not disclose, however, Ferenczi discloses:
… a generated zero-knowledge proof indicating validity of the registered contract information {see at least [claim1] validating with a zero-knowledge proof (ZKP) the function (based on the BRI (MPEP 2111) reads on the consensus function)}
wherein the zero-knowledge proof is generated based on at least one of the encrypted contract information or consensus information indicating consensus of the receiver with the contract information. {see at least [claim1] validating with a zero-knowledge proof (ZKP) the function (based on the BRI (MPEP 2111) reads on the consensus function)}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Goldstone to include the elements of Ferenczi. One would have been motivated to do so, in order to improve the transaction security. In the instant case, Goldstone evidently discloses making payments as stipulated by a contract. Ferenczi is merely relied upon to illustrate the functionality of a zero-knowledge proof validating function in the same or similar context. Since both making payments as stipulated by a contract, as well as a zero-knowledge proof validating function are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Goldstone, as well as Ferenczi would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Goldstone / Ferenczi.
Regarding Claim 2: Goldston, Ferenczi discloses the limitations of Claim 1. Goldston further discloses:
wherein the contract information includes at least one of attribute information or the predetermined payment amount, the attribute information indicating attributes of contractors including the payer and the receiver. {see at least [0214]-[0215] who is paid what amounts}
Regarding Claim 3: Goldston, Ferenczi discloses the limitations of Claim 2. Goldston further discloses:
wherein the predetermined payment amount includes a payment amount based on a ratio of distribution indicated by the contract information. {see at least [0714]-[0175] payment distribution; [0063]-[0064] split distribution (reads on ratio of distribution)}
Regarding Claim 4: Goldston, Ferenczi discloses the limitations of Claim 1. Goldston further discloses:
wherein the circuitry is further configured to create consensus information indicating consensus of the receiver with the contract information. {see at least [0061]-[0063] consensus}
Regarding Claim 5: Goldston, Ferenczi discloses the limitations of Claim 4. Goldston further discloses:
wherein the circuitry is further configured to send the consensus information to the blockchain. {see at least [0061]-[0063] smart contract (reads implicitly on blockchain)}
Regarding Claim 6: Goldston, Ferenczi discloses the limitations of Claim 1. Goldston further discloses: further wherein the circuitry is further configured to convert one or more pieces of the contract information into new single contract information. {see at least [0214]-[0215] how to distribute future payment among various rights folders (reads on conflating all information into a single contract information)}
Regarding Claim 7: Goldston, Ferenczi discloses the limitations of Claim 6. Goldston further discloses:
wherein the circuitry converts the one or more pieces of the contract information by converting first contract information related to a first person who pays a first payment amount and a second person who receives the first payment amount and second contract information related to the second person who pays a second payment amount and a third person who receives the second payment amount into third contract information related to the first person who pays the first payment amount, the second person who receives a difference amount of the second payment amount from the first payment amount, and the third person who receives the second payment amount. {see at least [0214]-[0215] multiple payments from multiple sources to multiple rights holders as stipulated by the contract (based on BRI (MPEP 2111), reads on first person, second person, third person receiving first payment amount, second payment amount, as well as contract information; in addition, varying the payment amounts will not change the essence of the operation)}
Regarding Claim 8: Goldston, Ferenczi discloses the limitations of Claim 6. Goldston further discloses:
wherein the circuitry converts the one or more pieces of the contract information by converting first contract information related to a first person who pays a first payment amount and a second person who receives the first payment amount and second contract information related to the first person who pays a second payment amount and a third person who receives the second payment amount into third contract information related to the first person who pays a total payment amount of the first payment amount and the second payment amount, the second person who receives the first payment amount, and the third person who receives the second payment amount. {see at least [0214]-[0215] multiple payments from multiple sources to multiple rights holders as stipulated by the contract (based on BRI (MPEP 2111), reads on first person, second person, third person receiving first payment amount, second payment amount, as well as contract information; in addition, varying the payment amounts will not change the essence of the operation)}
Regarding Claim 9: Goldston, Ferenczi discloses the limitations of Claim 1. Ferenczi further discloses:
wherein the encrypted contract information includes the zero-knowledge proof for proving validity of the contract information. {see at least [claim1] validating with a zero-knowledge proof (ZKP) the function (based on the BRI (MPEP 2111) reads on the consensus function)}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Goldston to include the elements of Ferenczi. One would have been motivated to do so, in order to provide a validity guarantee. In the instant case, Goldston evidently discloses making payments as stipulated by a contract. Ferenczi is merely relied upon to illustrate the functionality of a validity proof for the contract in the same or similar context. Since both making payments as stipulated by a contract, as well as validity proof for the contract are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Goldston, as well as Ferenczi would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Goldston / Ferenczi.
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Goldston, Ferenczi to include additional elements of Ferenczi. One would have been motivated to do so, in order to improve the transaction security. In the instant case, Goldston, Ferenczi evidently discloses payments as stipulated by a contract. Ferenczi is merely relied upon to illustrate the additional functionality of a zero-knowledge proof validating function in the same or similar context in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claim 13: Goldston, Ferenczi discloses the limitations of Claim 1. Ferenczi further discloses:
wherein the circuitry is further configured to send to the blockchain, along with
the encrypted contract information, the zero-knowledge proof generated based on the
consensus information indicating the consensus of the receiver with the contract
information. {see at least [claim1] validating with a zero-knowledge proof (ZKP) the function (based on the BRI (MPEP 2111) reads on the consensus function)}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Goldston, Ferenczi to include additional elements of Ferenczi. One would have been motivated to do so, in order to improve the transaction security. In the instant case, Goldston, Ferenczi evidently discloses payments as stipulated by a contract. Ferenczi is merely relied upon to illustrate the additional functionality of a zero-knowledge proof validating function in the same or similar context in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Claims 10 are rejected under 35 U.S.C. 103 as being unpatentable Goldston (US 2021/0279305), in view of Ferenczi et al (US 2020/0193425), in further view of Camenisch et al (US 2011/0013771).
Regarding Claim 10: Goldston, Ferenczi discloses the limitations of Claim 4. Goldston, Ferenczi does not disclose, however, Camenisch discloses:
wherein the consensus information includes the zero-knowledge proof indicating that the contract information has been correctly encrypted. {see at least [0108], [0149] ZKP with correct encoding (keying)}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify Goldston, Ferenczi to include the elements of Camenisch. One would have been motivated to do so, in order to provide a correctness guarantee. In the instant case, Goldston, Ferenczi evidently discloses making payments as stipulated by a contract. Camenisch is merely relied upon to illustrate the functionality of correctness proof for the encryption in the same or similar context. Since both making payments as stipulated by a contract, as well as correctness proof for the encryption are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by Goldston, Ferenczi, as well as Camenisch would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Goldston, Ferenczi / Camenisch.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20190228447 A1 Macias; Luis SYSTEM AND METHOD FOR DISTRIBUTED, SECURE COMPUTING SYSTEM - A method for injecting data into a secure distributed computing system includes obtaining characteristics of an object via a secure operable connection from a smart silo. The method further includes verifying an identity of the smart silo based on credentials included in a message from the smart silo received via the secure operable connection. The method further includes making a determination that the characteristics match a trigger condition of a smart contract. The method further includes executing the smart contract in response to the determination.
US 20200005410 A1 McKee; Peter Kingsley System and Method for Facilitating Legal Review for Commercial Loan Transactions - A computerized method is disclosed for recording information associated with a commercial real estate asset that would facilitate legal review for future transactions. The method includes providing a legal data record template for receiving information related to the commercial real estate asset, storing the legal data record information in a database, setting access rules for accessing the legal data record information, creating a blockchain record of legal information that contains the legal data record information from the database, adding the blockchain record of legal information to a blockchain for the commercial real estate asset, and maintaining the blockchain for the commercial real estate asset. Using blockchain technology facilitates the creation of a network of users that are inter-connected with access to the blockchain records of legal information for any commercial real estate asset included within the users' blockchains.
US 20210073212 A1 CONLEY; JOHN P. et al. BLOCKCHAIN METHODS, NODES, SYSTEMS AND PRODUCTS - Proposed is a scalable and computationally light approach to validating blockchains called the Catastrophic Dissent Mechanism (CDM). CDM uses anonymous actors who are free to join and leave the system as they please. The mechanism gives all actors strong incentives to behave honestly, both as individuals, and as members of coalitions who might benefit in compromising the integrity of the blockchain. As a result, CDM offers users Strategically Provable Security (SPS). CDM provides a foundation to create an ecosystem of federated chains which can share heterogeneous tokens using different business logic. As a result, new instances of chains can be created to serve as inexpensive, scalable platforms for a wide variety of blockchain applications and to provide a path for existing instances to be upgraded or altered without the use of hard forks or breaking the rule that code is law.
US 20200058055 A1 SIMHA; Rahul et al. BLOCKCHAIN FOR THE COMMON GOOD: DIGITAL CURRENCY FOR CITIZEN PHILANTHROPY AND SOCIAL ENTREPRENEURSHIP
US 20140074701 A1 Kingston; Tamara S. et al. PHYSICAL-VIRTUAL GIFTING VIA ONLINE BILLPAY - A distributed ledger application for the world of citizen philanthropy and social entrepreneurship, with stakeholder incentives designed to increase social good through accountability, transparency, and flexibility. In this system, called Directed Cash, individual donors specify conditions (the “Directed” part) attached to their donation or investment (“Cash”), that are then efficiently paired with interested recipients or aggregators of recipients (charities, social entrepreneurs) using distributed consensus so that the intent and pairing are open while maintaining donor anonymity. Furthermore, Directed Cash flows both ways to promote accountability and transparency: after receipt, a validation flows backwards to return to the donor so that the donor receives a report of how their donation was spent. While some elements of the system borrow from existing cryptocurrency and blockchain technologies, we propose alternative incentives for distributed consensus that are better aligned with the application and promote social good through the stakeholders. This invention is for a system design to achieve these goals, a primary feature of which is a simple SQL-like language to enable specifying conditions, pairing, aggregation and publicly-verifiable reporting.
US 20210248214 A1 Goldston; Mark et al. TOKENIZED MEDIA CONTENT MANAGEMENT - A system and method for media content management include creating, via a digital vault, a container file comprising media content submitted by a user and content metadata; verifying, via the digital vault, a completeness of the content metadata associated with the media content in the container file; classifying, via the digital vault, the container file based on the completeness of the media content; identifying a salable content item that is to be put up for sale; creating, via the digital vault, a nonfungible token (NFT) container file and populating the NFT container file with the salable content item and NFT metadata; offering the specified ownership rights to the salable content item for sale via an NFT transaction; and updating the NFT container file to reflect a new owner of the ownership rights to the salable content after sale of the salable content item.
US 20190370919 A1 WOODROW; Christopher Robert et al. SYSTEMS, METHODS, AND STORAGE MEDIA FOR OPERATING AN APPLICATION ON A DISTRIBUTED COMPUTING PLATFORM FOR MANAGING RIGHTS AND ENTITLEMENTS ASSOCIATED WITH THE PRODUCTION AND DISTRIBUTION OF FILMS - Systems, methods, and storage media for operating an application on a distributed computing platform for managing rights and entitlements associated with the production and distribution of films are disclosed. The system may store tokenization information for a set of fungible crypto tokens on a distributed ledger, generate a set of smart contracts comprising computer instructions, and store the smart contracts on the one or more computer nodes associated with the distributed computing platform. The computing platform may execute one of the smart contracts to validate and process a request for token transfer to a digital wallet and update the distributed ledger. The computing platform may execute one of the smart contracts to determine proceeds of the films and allocate a portion of the proceeds to the tokens associated with the film.
US 20210326872 A1 ROBOTHAM; John Stoddard et al. INTELLIGENT ASSERTION TOKENS FOR AUTHENTICATING AND CONTROLLING NETWORK COMMUNICATIONS USING A DISTRIBUTED LEDGER - A method for generating and controlling intelligent assertion tokens includes generating a first assertion token, during a first step of a supply chain process. The first assertion token is inspected to determine validity. If the first assertion token is not valid, the receipt of the first assertion token is rejected. If the first assertion token is determined to be valid, the use of the first assertion token in further transmissions and/or transactions is authorized. The first assertion token can be passed to a second step of the supply chain process, and a second assertion token may be generated based on the first assertion token. Upon receipt of the second assertion token, it is inspected to determine validity. If not valid, the transmission and/or transfer of the second assertion token is rejected. If valid, the transmission and/or transfer of the second assertion token to a further step of the supply chain process or to a customer is authorized.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions. Further, Applicant is of the opinion that the prior art fails to teach Applicant’s invention.
Examiner respectfully disagrees in both regards.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “Applicant respectfully submits that the present recitations of at least independent claim 1 amount to significantly more than merely an abstract idea such as a mental steps or processes, especially in view of the specifically recited technical solution directed toward a particular configuration of the various technical elements set forth by the particular claim recitations.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The test if the additional elements amount to “significantly more” is part of the Step 2B analysis (see MPEP 2106.04-07).
The eligibility analysis in the instant office action has determined at Step 2B:
Per Step 2B. Independent claim 1 (which is representative of claims independent 11, 12) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 11, 12 are deemed ineligible.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant submits that the presently recited claims, taken as a whole, recite significant claim elements that cannot be satisfied by mental steps or processes, are not merely abstract ideas as defined by case law, and the claimed subject matter relates to a specific improvement in a computer-related technology including technical structural elements.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
First, the eligibility analysis in the instant office action does not allege that “claim elements [are] satisfied by metal steps or processes.”
Second, MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully submits that the Examiner has also "oversimplified the [technical] component of the claims and downplayed the invention's benefits."”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
An examiner can describe an abstract idea at different levels of generality without affecting the patent-eligibility analysis. Cf Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240--41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction .... The Board's slight revision of its abstract idea analysis does not impact the patentability analysis."). That is the case here. Regardless of the level of generality used to describe the abstract idea recited in claim 1, the result is the same – claim 1 recites an abstract idea. Cf Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) ("Although not as broad as the district court's abstract idea of organizing data, it is nonetheless an abstract concept.").
Thus, the rejection is proper and has been maintained.
Applicant submits “Thus, the specific practical application of the claimed invention demonstrates an enhancement to the functioning of a computer-related technology and is not merely directed to an abstract idea.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “The presently recited claim elements provide a particular solution to a particular problem in the art, and the claimed solution is not appreciated in the prior art. Furthermore, Applicant respectfully asserts that the claimed invention is novel and nonobvious, and the deficiencies of the cited art discussed below provide an additional indication that the recited claim elements are not routine or conventional in the relevant field.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Applicant’s argument regarding the necessity of the Office to provide art in a determination that the claimed elements are not a judicial exception in a 101 analysis, is unpersuasive. Applicant suggests that novelty and/or non-obviousness must be considered in determining whether a claim is directed to an abstract idea. However, novelty and non-obviousness (i.e., a 102/103 prior art-type analysis) have no bearing on whether a claim recites an abstract idea, or involves conventional and routine elements. Indeed, the Federal Circuit has made this clear by rejecting an argument substantially similar to applicant’s in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) ("We do not agree … that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete."). The prior Office action (and herein in the 101 rejection analysis, above) made a determination, for the reasons given, that the instant claims are directed as part of the “inventive concept” features/elements, which do not bring about a technological improvement to the recited elements or require the use of a special purpose computing device. Additionally, whether claimed features/elements are routine and/or conventional is just one factor in the 101 analysis and is not determinative.
Thus, the rejection is proper and has been maintained.
Applicant submits “Applicant respectfully continues to assert that the claim recitations improve computer functionality as identified in the original disclosure in relation to at least the "usability" of a system. See para. [0078] of originally-filed specification.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 1112(a).
Applicant’s arguments are persuasive. The rejection is withdrawn.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
Applicant submits “However, Applicant respectfully submits that there is no teaching or suggestion in Goldston to send contract information to a blockchain and execute payment based on the contract information, let alone any teaching or suggestion that the payment is executed automatically based on the contract information being registered in the blockchain in accordance with a generated zero-knowledge proof indicating validity of the registered contract information, along with the zero-knowledge proof being generated based on at least one of the encrypted contract information or consensus information indicating consensus of the receiver with the contract information, as particularly claimed.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
sending, to a blockchain
executing payment based on the contract information. {see at least [0051] how payments have to be split (reads on executing payments); [0121] financial rights specified in the contract … making payments to the owner; fig2, rc295 [0084], [0121] token transaction module (reads on executing payments; [0214] using smart contracts to execute future payments (reads on making automatic payments)}
wherein the payment is executed automatically {see at least [0214]-[0215] smart contract (reds on automatic execution)} based on the contract information being registered in the blockchain in accordance with …. {see at least [0051] the transaction is tracked via a blockchain or other distributed ledger; fig12, rc1018, [0141] tracking transfer activities … the log can be encrypted or otherwise protected … using blockchain or other distributed ledger technology.}
Thus, the rejection is proper and has been maintained.
Applicant submits “In reply to the rejection of claim 9 under 35 U.S.C. §103 as allegedly being unpatentable over Goldston in view of Ferenczi, Applicant respectfully requests reconsideration.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Claim one from which claim 9 depends, is not patentable, as shown here above.
Thus, the rejection is proper and has been maintained.
Applicant submits “In reply to the rejection of claim 10 under 35 U.S.C. §103 as allegedly being unpatentable over Goldston in view of Camenisch, Applicant respectfully requests reconsideration.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
Claim 10 depends on claim 4, which depends claim1, both of which have been found not to be patentable.
Thus, the rejection is proper and has been maintained.
The other arguments presented by Applicant continually point back to the above arguments as being the basis for the arguments against the other 103 rejections, as the other arguments are presented only because those claims depend from the independent claims, and the main argument above is presented against the independent claims. Therefore, it is believed that all arguments put forth have been addressed by the points above.
Examiner has reviewed and considered all of Applicant’s remarks. The changes of the grounds for rejection, if any, have been necessitated by Applicant’s extensive amendments to the claims. Therefore, the rejection is maintained, necessitated by the extensive amendments and by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
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or faxed to 571-273-8300
/Radu Andrei/
Primary Examiner, AU 3698
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