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 .
DETAILED ACTION
1. This Office Action is in response to the Amendment filed on November 5, 2025, which paper has been placed of record in the file.
2. Claims 1, 8, 15, and 21-35 are pending in this application.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1, 8, 15, and 21-35 are rejected under 35 U.S.C. 101 because the claim invention is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea) without significantly more.
Regarding independent claim 8, which is analyzing as the following:
Step 1: This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03. The claim recites a system for generating smart contracts. Thus, the claim is to a machine, which is one of the statutory categories of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
The claim recites a system for generating a plurality of smart contracts, each of the plurality of smart contracts associated with a respective service team, and each of the plurality of smart contracts identifying components impacting each respective service team. One or more component changes associated with a proposed design are received. The claim recites the steps: identifying a cloud computing environment that include hardware components…; generating a plurality of smart contracts associated with the service teams, each of the plurality of smart contracts identifying one or more of the hardware components impacting a corresponding on of the service teams; receiving one or more component changes associated with a proposed design update to the cloud computing environment, the one or more component changes including changes or additions to the hardware components of the cloud computing environment; and validating, via at least a portion of the plurality of smart contracts, the one or more component changes to identify (i) workflows corresponding to requirement for the service teams to write or modify software or firmware…, (ii) workflow dependencies corresponding to how some of the workflows impact the other workflows, the information prompting one or more users to conduct a staged implementation of the proposed design update based on the workflows and the workflow independencies, under its broadest reasonable interpretation when read in light of the Specification, falls within “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they cover performance of commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing, sales activities or behaviors, business relations. See MPEP 2106.04(a)(2), subsection III.
Moreover, the claim recites the steps: identifying a cloud computing environment that include hardware components…; generating a plurality of smart contracts associated with the service teams, each of the plurality of smart contracts identifying one or more of the hardware components impacting a corresponding on of the service teams; receiving one or more component changes associated with a proposed design update to the cloud computing environment, the one or more component changes including changes or additions to the hardware components of the cloud computing environment; and validating, via at least a portion of the plurality of smart contracts, the one or more component changes to identify (i) workflows corresponding to requirement for the service teams to write or modify software or firmware…, (ii) workflow dependencies corresponding to how some of the workflows impact the other workflows, as drafted, is a process that, under its broadest reasonable interpretation when read in light of the Specification, covers performance of the limitations in the mind, can be practically performed by human in their mind or with pen/paper, but for the recitation of generic computer components. That is, other than reciting “a computer/processor”, nothing in the claim elements preclude the steps from practically being performed in the mind. The mere nominal recitation of generic computing devices does not take the claim limitation out of the Mental Processes grouping of abstract ideas. Thus, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, opinion). See MPEP 2106.04(a)(2), subsection III.
Accordingly, the claim recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claim recites the additional elements of “outputting information including the workflows and the workflow dependencies.” The claim also recites that the steps of “identifying a cloud computing environment that include hardware components…; generating a plurality of smart contracts associated with the service teams…; receiving one or more component changes associated with a proposed design update to the cloud computing environment…; validating, via at least a portion of the plurality of smart contracts; and outputting information including the workflows and the workflow dependencies”, are performed by a processor.
The additional element “outputting information including the workflows and the workflow dependencies” are mere data gathering and outputting, recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and outputting, and, as such, these limitations do not impose any meaningful limits on the claim. These limitation amounts to necessary data gathering and receiving. See MPEP 2106.05. Moreover, these additional elements do not provide any improvement to the technology, improvement to the functioning of the computer, improvement to the display, they are just merely used as general means for collecting and displaying data. It is similar to other concepts that have been identified by the courts Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48; Collecting information, analyzing it, and displaying certain results of the collection and analysis, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Further, the limitations “identifying a cloud computing environment that include hardware components…; generating a plurality of smart contracts associated with the service teams…; receiving one or more component changes associated with a proposed design update to the cloud computing environment…; validating, via at least a portion of the plurality of smart contracts; and outputting information including the workflows and the workflow dependencies”, are recited as being performed by the processor.” The processor is recited at a high level of generality. In limitations “outputting information including the workflows and the workflow dependencies”, the processor is used as a tool to perform the generic computer function of gathering and outputting data. See MPEP 2106.05(f). In limitations “identifying a cloud computing environment that include hardware components…; generating a plurality of smart contracts associated with the service teams…; receiving one or more component changes associated with a proposed design update to the cloud computing environment…; and validating, via at least a portion of the plurality of smart contracts”, the processor is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). The additional elements recite generic computer components the processors, the storage devices, and the networking devices, that are recited a high-level of generality that merely perform, conduct, carry out, implement, and/or narrow the abstract idea itself. Accordingly, the additional elements evaluated individually and in combination do not integrate the abstract idea into a practical application because they comprise or include limitations that are not indicative of integration into a practical application such as adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea -- See MPEP 2106.05(f).
Moreover, these additional elements do not effect an improvement to the functioning of the processors, the storage devices, and the networking devices, or other technology, do no recite a particular machine or manufacture that is integral to the claim, and do not transform or reduce a particular article to a different state or thing.
Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception (Step 2A, Prong One: YES).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a whole, amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
The additional element “outputting information including the workflows and the workflow dependencies”, was found to be insignificant extra-solution activity in Step 2A, Prong Two, because they were determined to be insignificant limitations as necessary data gathering and outputting. However, a conclusion that an additional element is insignificant extra solution activity in Step 2A, Prong Two should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
As discussed in Step 2A, Prong Two above, the additional element of “outputting information including the workflows and the workflow dependencies” are recited at a high level of generality. This element amounts to gathering and outputting data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. The courts have recognized the following computer functions as well understood, routine, and conventional functions when they are claimed in a merely genetic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
As discussed in Step 2A, Prong Two above, the recitation of the processor to perform limitations “identifying a cloud computing environment that include hardware components…; generating a plurality of smart contracts associated with the service teams…; receiving one or more component changes associated with a proposed design update to the cloud computing environment…; validating, via at least a portion of the plurality of smart contracts; and outputting information including the workflows and the workflow dependencies”, amounts to no more than mere instructions to apply the exception using a generic computer component.
Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. Therefore, the claim is not patent eligible. (Step 2B: NO).
Regarding independent claims 1 and 15, Alice Corp. establishes that the same analysis should be used for all categories of claims. Therefore, independent claim 1 directed to a method, independent claim 15 directed to a medium, are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as independent system claim 8 described above.
Regarding dependent claims 21-35, the dependent claims do not impart patent eligibility to the abstract idea of the independent claim. The dependent claims rather further narrow the abstract idea and the narrower scope does not change the outcome of the two-part Mayo test. Narrowing the scope of the claims is not enough to impart eligibility as it is still interpreted as an abstract idea, a narrower abstract idea.
Regarding dependent claims 21-23, 26-28, and 31-33, the claims simply refine the abstract idea by further reciting generating, …a dependency chain identifying which of the workflows are capable of being carried out in parallel; wherein the dependency chain further identifies with of the workflows must be carried out in series with one another; wherein the information further includes the dependency chain and prompts at least two of the workflows to be performed concurrently, that fall under the category of Organizing Human Activity and Mental process groupings of abstract ideas as described above in the independent claim 1. Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claims 24, 29, and 34, the claims recite the additional elements wherein the hardware components include processors, storage devices, and network devices, that are recited at a high level of generality and are used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using generic computer components. See MPEP 2106.05(f). (See claim 1 above). Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Regarding dependent claims 25, 30, and 35, the claims recite the additional elements wherein the proposed design update includes replacing one or more existing processors…, that are recited at a high level of generality and are used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using generic computer components. See MPEP 2106.05(f). (See claim 1 above). Thus, the dependent claims do not add any additional element or subject matter that provides a technological improvement (i.e., an integration into a practical application under Step 2A-Prong Two), results in the claim being directed to patent eligible subject matter or include an element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B).
Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
Accordingly, claims 1, 8, 15, and 21-35 are not draw to eligible subject matter as they are directed to an abstract idea without significantly more and are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Novelty and Non-Obviousness
5. No prior arts were applied to the claims because the Examiner is unaware of any prior arts, alone or in combination, which disclose at least the limitations of “generating a plurality of smart contracts, smart contracts associated with the service teams, and each of the plurality of smart contracts identifying one or more of the hardware components impacting a corresponding one of the service teams; receiving one or more component changes associated with a proposed design update to the cloud computing environment, the one or more component changes including changes or additions to the hardware components of the cloud computing environment; and validating, via at least a portion of the plurality of smart contracts, the one or more component changes to identify (i) workflows corresponding to requirements for the service teams to write or modify software or firmware to accommodate the one or more component changes and (ii) workflow dependencies corresponding to how some of the workflows impact the other workflows” recited in the independent claims 1, 8, and 15.
Response to Arguments/Amendment
6. Applicant's arguments with respect to claims 1, 8, 15, and 21-35 have been fully considered and are moot in view of new grounds of rejections.
I. Claim Rejections - 35 USC § 101
Claims 1, 8, 15, and 21-35 are rejected under 35 U.S.C. 101 because the claim invention is directed to a judicial exception (i.e., law of nature, natural phenomenon, or abstract idea) without significantly more.
In response to the Applicant’s arguments the pending claims provide a technical improvement in the field of cloud computing as it permits the staged implementation of design updates that might otherwise result in unacceptable down times for critical services, the claimed approach therefore servers to integrate the judicial exception to a practical application, the Examiner respectfully disagrees and submits that the claims recite the additional elements the processors, the storage devices, and the networking devices, which do not effect an improvement to the functioning of the processors, the storage devices, and the networking devices, or other technology, do no recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a different state or thing.
Accordingly, even in combination, these 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. See MPEP 2106.04(a)(2), subsection III. Accordingly, the claims do not integrate the abstract idea into a practical application.
Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. Therefore, the claims are not patent eligible.
Accordingly, the 101 rejection is maintained.
II. Claim Rejections - 35 USC § 102
Applicant’s arguments and Amendment with respect to claims 1, 8, 15, and 21-35 have been fully considered and are persuasive.
Accordingly, the 102 rejection has been withdrawn.
Conclusion
7. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
8. Claims 1, 8, 15, and 21-35 are rejected.
9. The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure:
Obstfeld et al. (US 2025/0039002) disclose techniques for observing smart contracts. A method can include obtaining, by a digital twin, a first data set from a first smart contract that stores the first data to a first distributed ledger and a second data set from a second smart contract that stores the second data set to a second distributed ledger.
Bag (US 2024/0037004) discloses preserving enterprise artifacts using digital twin technology and intelligent smart contracts.
Shah (US 11,769,573) disclose a computer-controlled diagnostic network system. The system includes diagnostic devices and diagnostician devices located at different locations in a distributed secured network.
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/NGA B NGUYEN/Primary Examiner, Art Unit 3625 March 5, 2026