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 .
This communication is a Final Office Action in response to Applicant’s amendment filed on September 18, 2025.
Claim 3 is newly presented and is examined in this application. Claims 1-2 are cancelled.
No new information disclosure statement has been filed.
Response to Arguments
Applicant's arguments filed 9/18/2025, regarding objection to the title, claim objections, and 112 rejections are withdrawn do to the claims being cancelled.
Applicant's arguments filed 9/18/2025, regarding claim rejection under 35 U.S.C. 101, have been fully considered but are not persuasive.
Applicant argues that newly recited claim 3, captures “functional steps implemented by recited components of an information processing system, not in the human mind.” Id., 5. Applicant further argues that the Specification provides support for how the claims integrate “the concept of evaluation into a practical application,” which is captures by the evaluation and recognition of a computing environment that issues tokens and stored in a provider wallet. Id. Finally Applicant argues that “conventional approaches did not provide a scalable, verifiable way to recognize provider contributions across multiple learned model uses” and that the “claimed method improves the reliability and transparency of recognition by binding provider evaluation and achievement to actual distributed network activity.” Id. 6.
The Examiner respectfully disagrees. The rejected claims, 1-2, are now cancelled. Therefore, the arguments presented for cancelled claims are moot. However, in efforts of advancing prosecution, the arguments will be addressed with regard to claim 3. Per claim 3, the claim is found to be directed to an abstract idea of issuing a first monetary token and a second token based on rules without significantly more. The abstract idea is characterized under certain methods of organizing human activity and mental processes. The claim fails to include any additional elements that would amount to a practical application. Contrary to Applicant’s arguments, the claims fail to capture the argued computing environment of issuing tokens nor do the claims capture scalable verifiable contributions through different models. The claims are devoid of any such technical recitations or how they are actually carried out. As a result, the claims are not patent eligible. Under Step-2B, the claims fail to amount to significantly more than the abstract idea. The claims fail to capture an improvement rooted in computer technology or field.
Applicant’s arguments directed to the art rejection for claims 1 and 2, under 35 U.S.C. 102 have been considered; however, since the claims rejected are cancelled, the arguments are moot. Claim 3 has been examined and after consideration of extensive searches, an obvious rational to combine references to teach the claimed scope is not deemed proper. As a result, the claims are deemed novel over prior art.
Claim Objections
Claim 3 is objected to because of the following informalities: The claim recites limitations directed to both issuance of “a token” and “a non-transferable token.” It is not clear whether the non-transferable token is associated with the issued token or whether the two different issued tokens are distinct and are both present in the provider’s wallet. The Specification does not clarify this issue. Applicant is requested to clarify the claims by associating the tokens or by adding a limitation to convey that the tokens issued are distinct. Examiner also proposes that the claims be amended to remove all conditional language, including, whether, in a case, and so on. All conditional limitations should instead be recited from a positive perspective; as actually taking place responsive to a condition being met.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 3 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Per claim 3, the claim recites “…issuing, by a distributed network, a token to a wallet of the provider that provided the one learned model at a time in which the one learned model is provided to the user; determining, by the distributed network, whether a cumulative amount of the token issued to the provider is equal to or greater than a threshold; and issuing, by the distributed network, a non-transferable token to the wallet of the provider in a case where the cumulative amount of the token issued to the provider is equal to or greater than the threshold, the non-transferable token indicating at least one of evaluation and achievement of the provider…” Emphasis added.
The above claim limitations are directed to issuance of a token based on provisioning of a model to a user by a management server. However, the limitation directed to the issuing of the “non-transferable token” to the same wallet of the same provider that was issued “the token” results in the claim being rejected because it is not known how such limitation can be carried out. The Specification does not provide support for how the “non-transferable token” is generated/issues to the same provider. The Specification merely repeats the same language of the claims, failing to capture how the limitation is actually carried out via an algorithm or other details.
As a result, the claim is rejected.
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.
Claim 3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 3 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claim 3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of issuing a first monetary token and a second token based on rules without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions such as sales activities or behaviors, and business relations. Also, the abstract idea is characterized under mental processes such as concepts performed in the human mind like observation, evaluation, judgement and opinion and performing said concepts using pen and paper. A human can receive a request for use of a formula stored in a human mind or on paper. likewise, a human can generate a token or issue a token verbally or on paper to another human that deems the token as being part of their wallet or account. Finally a human can grant another token that is non-transferable to the another human and analyze conditions to determine the issuance of non-transferable tokens. Provisioning of a model and in response receiving a monetary deposit highlights basic contractual business relations and behaviors.
Claim 3 recites:
An information processing method comprising:
receiving… a use request of one learned model from a user, the one learned model being registered in a database in association with identification information related to a provider;
providing… the one learned model to the user based on the received use request;
issuing… a token to a wallet of the provider that provided the one learned model at a time in which the one learned model is provided to the user;
determining… whether a cumulative amount of the token issued to the provider is equal to or greater than a threshold; and
issuing… a non-transferable token to the wallet of the provider in a case where the cumulative amount of the token issued to the provider is equal to or greater than the threshold, the non-transferable token indicating at least one of evaluation and achievement of the provider,
wherein, in a case where the cumulative amount of the token issued to the provider is equal to or greater than "1," the distributed network assigns a first token indicating a first rank is assigned to the wallet as the non-transferable token,
in a case where the cumulative amount of the token issued to the provider is equal to or greater than "10," the distributed network assigns a second token indicating a second rank that is a rank higher than the first rank is assigned to the wallet as the non-transferable token, and
in a case where the cumulative amount of the token issued to the provider is equal to or greater than "100," the distributed network assigns a third token indicating a third rank that is a rank higher than the second rank is assigned to the wallet as the non-transferable token
The claims, under the broadest reasonable interpretation (BRI), amount to receiving a request for a learned model from a user, providing the model to the user, issuing another entity a token in response to provisioning of the model, determining whether a cumulative amount of token issued is equal to or greater thana threshold. The issuing limitation and the remaining three limitations that follow are not considered under BRI because they are based on a condition being met. The claims do not recite that the condition is determined, positively, as being met. Therefore, under BRI, the condition is considered as not being met and thus the claims limitations directed to issuing and the additional three limitations after the issuing limitation are not given any weight under BRI. Even if they were, the claim limitations fail to include any additional elements that would render the claims eligible. Per claim analysis under BRI, the judicial exception is not integrated into a practical application. The claims, at best, recite the following additional elements: a management server, and a distributed network. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as receiving and sending data, issuing data or generating data, and analyzing data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The claims are not patent eligible.
Prior Art
International Application Publication WO 2020/032209 to Kazuya (Kazuya) teaches An information processing method comprising [Abstract]: receiving, by a management server, a use request of one learned model from a user, the one learned model being registered in a database in association with identification information related to a provider [“As is clear from the figure, first, the user 2 operates the information processing terminal 21 and inputs the specification information of the desired learned model. Various forms, such as an arbitrary entry or a selection method, are possible as an input form. The input information is acquired as specification information on a desired learned model (S11). The acquired specification information is transmitted to the server 11 (S12). At this time, a dedicated API may be used. After the transmission, the information processing terminal 21 enters a standby state (S13 NO); Figures 2];
providing, by the management server, the one learned model to the user based on the received use request [“The server 11, which has been waiting for the reception of the information (NO in S51), cancels the waiting after acquiring the specification information (YES in S51), specifies one or more appropriate learned models based on the specification conditions, and A process of reading from the model storage network 5 is performed (S52). When a plurality of learned models are specified, the contribution of each learned model is calculated and stored in the server 11. At this time, an access permission is given to the use applicant 2 for the learned model” and Figure 2];
issuing, by a distributed network, a token to a wallet of the provider that provided the one learned model at a time in which the one learned model is provided to the user [“The server 11 that has acquired the identification information of the trained model (S57) reads out the user information (S58). As described above, the personal information includes, for example, ID information and password of each user in the system 100, identification information of the provided trained model, and a wallet address for cryptocurrency transactions. The server 11 performs a process of comparing the acquired learned model identification information with the personal information and specifying a corresponding wallet address (S59). Then, the server 11 performs a process of transmitting the cryptocurrency to the wallet address (S60). At this time, when a plurality of learned algorithms are specified, the cryptocurrencies are apportioned according to the contribution ratio.” Figures 2-3];
However, Kazuya does not explicitly disclose determining, by the distributed network, whether a cumulative amount of the token issued to the provider is equal to or greater than a threshold; and issuing, by the distributed network, non-transferable token to the wallet of the provider in a case where the cumulative amount of the token issued to the provider is equal to or greater than the threshold, the non-transferable token indicating at least one of evaluation and achievement of the provider, wherein, in a case where the cumulative amount of the token issued to the provider is equal to or greater than "1," the distributed network assigns a first token indicating a first rank is assigned to the wallet as the non-transferable token, in a case where the cumulative amount of the token issued to the provider is equal to or greater than "10," the distributed network assigns a second token indicating a second rank that is a rank higher than the first rank is assigned to the wallet as the non-transferable token, and in a case where the cumulative amount of the token issued to the provider is equal to or greater than "100," the distributed network assigns a third token indicating a third rank that is a rank higher than the second rank is assigned to the wallet as the non-transferable token.
Examiner notes that the last 4 limitations are conditional limitations, which under BRI are given no patentable weight because they don’t have to be carried out. The reference to Kazuya is not obviously modifiable by another reference to teach the limitations not taught by Kazuya. As a result, the claims as they stand are not obvious over the prior art; therefore, they are considered novel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892. For instance, International Application Publication WO 2025047595 to Ueki teaches all of the Applicant’s claimed scope.
See also International Application Publication WO 2024/257644 to Nishida et al. which teaches various elements of what the Applicant deems as their invention.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699