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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/19/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
Applicant’s amendment, filed 02/19/2026, has been entered and fully considered.
In light of Applicant’s amendment, the rejection of claims 6-9 under 35 U.S.C. 112(b) has been withdrawn.
Response to Arguments
Applicant’s arguments, see pages 7-9, with respect to the rejection of claims 6-9, 14 under 35 U.S.C. 101 has been fully considered but is not persuasive.
With respect to Step 2A Prong I, Applicant argues that claims do not recite mental steps or generalized data comparisons, and do recite operations anchored to a physical medium. However, the claims do recite the steps of “acquiring identification information…”, “comparing…information …” and “transmitting a message…”, all of which can be performed in the human mind, or by a human using a pen and paper. Also, claims as recited are not technically anchored to a physical medium because identification information is acquired from a user device. Even though the claim recites “the identification information is linked to a physical medium”, this does not sufficiently recite limitations that cannot practically be performed in the mind. For example, a receipt for the purchase of a music album is a physical medium, but acquiring this information from a user may practically be performed with a pen and paper.
With respect to Step 2A Prong II, Applicant argues that conditional system behavior of preventing unauthorized access to content goes beyond insignificant extra-solution activity or generic computer implementation. However, as recited, the claims merely “transmit[] a message … to enable the user to access … content”. The claims do not particularly recite the user accessing content based on the message. By contrast, the claims do recite insignificant post-solution data outputting by transmitting the message. Therefore, the claims do not recite an improvement, to integrate the abstract idea into a practical application, of preventing unauthorized access because the claims do not particularly recite allowing authorized access to content or blocking unauthorized access to content. The Examiner suggests particularly reciting a user device accessing at least one content associated with the digital album based on the message.
With respect to Step 2B, Applicant argues that claim elements recite significantly more than the judicial exception because the claims recite a specific authentication workflow that results in a conditional network operation. However, the functions of acquiring, comparing and transmitting performed by the computer system at each step of the process do no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality.
Applicant’s arguments with respect to the rejection of claim(s) 6-9, 14 under 35 U.S.C. 102 and 103, see pages 9-11, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
The Examiner notes:
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. See MPEP 2111.04(II).
With respect to claims 6-9, they recite the following conditions and corresponding contingent steps:
With respect to claim 6, since the claim does not require the condition of “the digital album is determined to be authenticated”, the contingent step “transmitting a message…” need not be carried out in order for the claimed method to be performed.
With respect to claims 7-9, they inherit the deficiencies of their parent claim.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 is objected to under 37 CFR 1.75(i). The claim sets forth a plurality of steps of elements (acquire identification information, compare issuance information, transmit a message). However, these elements or steps in the claim are not separated by a line indentation. The Examiner suggests separating these elements or steps by a line indentation.
Appropriate correction is required.
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 6-9, 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite comparing information related to a digital album, comprising: “acquiring identification information…”, “comparing issuance information…”, “transmitting a message including the…information…”, which are directed to the abstract idea of mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of comparing information related to a digital album, comprising: “acquiring identification information…”, “comparing issuance information…”, “transmitting a message including the…information…”, which are directed to the abstract idea of mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In addition, the step of acquiring identification information… constitutes extra solution activity because (1) these techniques are well known, (2) this is insignificant extra solution activity and (3) is mere data gathering or outputting. This is a pre-solution step of gathering data for use in a claimed process.
In addition, the step of transmitting a message including the…information, and transmitting a message related to the comparison result… constitutes extra solution activity because (1) these techniques are well known, (2) this is insignificant extra solution activity and (3) is mere data gathering or outputting. This is a post-solution step that is not integrated into the claim as a whole.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that claim features of: “acquiring identification information…”, “comparing issuance information…”, “transmitting a message including the…information…” does not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead, the claim features of comparing information related to a digital album merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g., first server, user device, second server, memory, communication circuit, processor) that serves to perform generic computer functions (e.g., acquiring, comparing, transmitting) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed digital album, identification information, issuance information, message, comparison result are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
Rather, the claims are merely directed towards the abstract idea of comparing information related to a digital album, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality.
For example, comparing issuance information, transmitting a message which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. 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). Similarly, acquiring identification information is merely storing, updating and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Further note that the abstract idea of comparing information related to a digital album to which the claimed invention is directed has a prior art basis outside of a computing/technological environment, e.g., a music record store owner receiving a request to buy a particular album from a customer, searching for the album, logging the received request and communicating the aisle number to the customer.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it affect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 6-9, 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Drake et al. (USP App Pub 2015/0356529; hereinafter Drake).
Regarding claim 6, A method of authenticating a digital album (Drake: paragraph [0011], “Media content 151 may include … a musical composition or album … or any other type of audiovisual work or content”) performed on a first server (Drake: paragraph [0010], “Redemption server 130 may include a cloud based server, personal computer, or any other device capable of receiving receipts from user devices and transmitting tokens to the user devices in response to receiving the receipts”), comprising:
acquiring identification information related to the digital album from a user device (Drake: paragraph [0012], “User device 110 may transmit receipt 111 to redemption server 130 using any wired or wireless technology”; paragraph [0011], “Media content 151 may include … album), wherein the identification information is linked to a physical medium (Drake: paragraph [0012], “Receipt 111 may include a receipt for a previously purchased media content by user device 110 from a retailer”; FIG. 2, receipt 211 is stored in memory 215 of user device 210; paragraph [0023], “Memory 215 may be instituted as ROM, RAM, flash memory”) associated with the digital album (Drake: paragraph [0012], “As such receipt 111 may include the identity of media content 151”);
comparing issuance information pre-stored in the first server (Drake: FIG. 3, media content list 371 is included in memory 335 of redemption server) with the acquired identification information (Drake: paragraph [0041], “user device 310 transmits receipt 311 including media content identity 323 to redemption server 330. In response to receiving receipt 311 from user device 310, redemption server 330 compares media content identity 323 with media content list 371 to determine if media content identity 323 is included in media content list 371”) to determine whether the digital album is authenticated (Drake: paragraph [0018], “Retailer 170 transmits media content list 171 to redemption server 130. Media content list 171 may include a list of every media content that can be redeemed or purchased from retailer 170. Redemption server 130 thus uses media content list 171 when determining if a media content from a receipt received from a user device 110 is available to be redeemed from retailer 170” i.e., the media content is authenticated for redemption from retailer 170); and
transmitting a message (Drake: paragraph [0017], “Redemption server 130 transmits redemption tokens 132 to retailer 170”; paragraph [0042], “redemption server 330 transmits redemption tokens 332 to retailer 370”) including the identification information related to the digital album (Drake: paragraph [0015], “token 131 may include a redemption code that is used by user device 110 to redeem media content 151 from retailer 170”; paragraph [0014], “a token may only be used by the user device that received the token to redeem the specific media content from a specific retailer”) and identification information of the user device (Drake: paragraph [0044], “token 331 may only be associated with user device 310”; paragraph [0042], “redemption tokens 332 includes a list of the tokens that redemption server 330 has transmitted to user devices to redeem media content”) to a second server (Drake: paragraph [0010], “retailer 170 may each include a server … that distributes media content to user devices”) to enable the user device to access at least one content associated with the digital album (Drake: paragraph [0019], “user device 110 transmits token 131 to retailer 170, and retailer 170 transmits media content 151 to user device 110 in response to retailer 170 receiving token 131 from user device 110”; paragraph [0041], “User device 310 may then redeem a media content associated with media content identity 323 from retailer 370”), only when the digital album is determined to be authenticated (Drake: paragraph [0041], “compares media content identity 323 with media content list 371 to determine if media content identity 323 is included in media content list 371”; paragraph [0042], “redemption server 330 transmits redemption tokens 332 to retailer 370”).
Regarding claim 7, Drake teaches the method of claim 6, further comprising:
transmitting a message related to the comparison result to the user device (Drake: paragraph [0041], “redemption server 330 compares media content identity 323 with media content list 371 to determine if media content identity 323 is included in media content list 371. If redemption server 330 determines media content identity 323 is included in media content list 371, as illustrated in FIG. 3, redemption server 330 transmits token 331 … [to] user device 310”).
Regarding claim 8, Drake teaches the method of claim 6, wherein
at least one content (Drake: paragraph [0019], “media content 151”) corresponding to the identification information related to the digital album (Drake: paragraph [0015], “token 131 may include a redemption code that is used by user device 110 to redeem media content 151 from retailer 170”; paragraph [0014], “a token may only be used by the user device that received the token to redeem the specific media content from a specific retailer”) is transmitted from the second server (Drake: paragraph [0010], “retailer 170”) to the user device (Drake: paragraph [0019], “user device 110 transmits token 131 to retailer 170, and retailer 170 transmits media content 151 to user device 110 in response to retailer 170 receiving token 131 from user device 110”) according to the message (Drake: paragraph [0042], “redemption server 330 transmits redemption tokens 332 to retailer 370”; paragraph [0042], “redemption tokens 332 includes a list of the tokens that redemption server 330 has transmitted to user devices to redeem media content”).
Regarding claim 9, Drake teaches the method of claim 8, wherein
the at least one content (Drake: paragraph [0019], “media content 151”) includes at least one of a video, a sound source (Drake: paragraph [0011], “Media content 151 may include … a musical composition or album … or any other type of audiovisual work or content”), an image, or text.
Re. claim 14, it recites analogous limitations as claim 6 and therefore is rejected for the same reasons.
Conclusion
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 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.
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/A.S./ Examiner, Art Unit 2491
/WILLIAM R KORZUCH/ Supervisory Patent Examiner, Art Unit 2491