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 .
1. Instant application is a Continuation of U.S. Patent Application 18/321626, now U.S. Patent 12,056,227; which a Continuation of U.S. Patent Application 17/302534, now U.S. Patent 11,698,958; which is a Continuation of U.S. Patent Application 16/240526, now U.S. Patent 11,030,297. Claims 1-24 have been examined.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 09/09/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
3. Claims 1-2, 5-8, 7-14, 17-20 and 23-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A Prong One
Claims 1-2, 5-8, 7-14, 17-20 and 23-24 recite a method, device, system and computer-readable medium for generating distributed ledgers indicating permisions. Claims 1, 7, 13 and 19 comprise the steps of “generating a primary distributed ledger”, “generating…a first secondary distributed ledger” and “generating…a second secondary distributed ledger”, which under its broadest, reasonable interpretation covers a “mental process” that “can be performed in the human mind, or by a human using a pen and paper” (note MPEP 2106.04(a)(2)III). For example, a human can write permissions of devices on paper ledgers that are distributed.
Other than reciting, “by the one or more processors”, nothing in the claim elements precludes the steps from being performed in the mind. The claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. Thus, the claim is considered to recite a mental process (note MPEP 2106.04(a)(2)III.C.).
Step 2A Prong Two
Claims 1-2, 7-8, 13-14 and 19 -20 recite the additional element of “storing…a…distributed ledger record”. This is extra-solution activity to the judicial exception and does not integrate the abstract idea into a practical application. Claims 7, 13 and 19 recite additional elements of “one or more processors”, “memory”, “user device”, “server device” and “computer-readable medium storing instructions”. This judicial exception is not integrated into a practical application because the additional elements (e.g. processor, memory…) are generic computer components. The use of a generic computer component does not integrate the abstract idea into a practical application because merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f) have been identified by the courts as not integrating a judicial exception into a practical application.
Step 2B
Claims 1-2, 5-8, 7-14, 17-20 and 23-24 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the extra-solution activities and generic computer components being used to perform mental processes are not sufficient to amount to significantly more than the judicial exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The additional elements of a generic computer extracting data and sending an alert is well-understood, routine and conventional. There are no additional steps in claims 1-2, 5-8, 7-14, 17-20 and 23-24 which integrate the exception into a practical application by improving the functioning of the computer or implementing the judicial exception with a particular machine. Therefore, claims 1-2, 5-8, 7-14, 17-20 and 23-24 are not patent eligible.
4. Claims 3-4, 9-10, 15-16 and 21-22 recite the additional step of “granting…the first user device access to a first requested service” and “granting…the second user device access to a second requested service”. These additional elements, when taken in combination with the rest of the claim limitations, as a whole, improves the functioning of a computer. Thus, the additional elements integrate the abstract idea into a practical application. Therefore, claims 3-4, 9-10, 15-16 and 21-22 are directed towards patent eligible subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,056,227. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart I below.
6. Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,698,958. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart II below.
7. Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,030,297. Although the claims at issue are not identical, they are not patentably distinct from each other because:
See Chart II below.
Chart I
Instant application
12,056,227
Claims 1, 7, 13 and 19 A system comprising:
a first user device;
a second user device; and
a server device configured to:
generate a primary distributed ledger associated with an account holder,
wherein the account holder is permitted to provide permissions to user devices associated with the account holder, and
wherein the primary distributed ledger is configured to store one or more records associated with the permissions;
generate, based on receiving a first permission request from the first user device, a first secondary distributed ledger associated with the first user device;
store, on the primary distributed ledger and based on the first permission request, a first distributed ledger record indicating a first permission of the first user device;
generate, based on receiving a second permission request from the second user device, a second secondary distributed ledger associated with the second user device;
store, on the primary distributed ledger and based on the second permission request, a second distributed ledger record indicating a second permission of the second user device; and
store, based on the first distributed ledger record indicating the first permission, a third distributed ledger record on the first secondary distributed ledger indicating the first permission.
Claims 1, 3-4, 6 and 9 A system comprising:
a user device associated with a user;
claim 3 – second user device
and a computing device configured to
cause, based on the first request, a first record to be created on a first distributed ledger associated with an account holder
receive a first request to grant the user one or more permissions associated with a service account
claim 6 - wherein the first record comprises an indication of the one or more permissions
cause, based on the first request, a second record to be created on a second distributed ledger associated with the user and different than the first distributed ledger
claim 6 - wherein the first record comprises an indication of the one or more permissions
claim 3 –
cause, based on the third request, the first record, and the second record, a third record to be created on a third distributed ledger associated with the user device, wherein the third record comprises an indication of a second user device associated with the second user
a second record to be created on a second distributed ledger associated with the user and different than the first distributed ledger, wherein the second record comprises an indication of the one or more permissions
claim 4 –
based on the third request, the first record, and the second record, a fourth record to be created on the first distributed ledger, wherein the fourth record comprises an indication of the second user device
Claims 2, 8, 14, 20
Claim 5
Claims 3, 9, 15, 21
Claim 1 – grant…
Claim 3 – grant…
Claims 4, 10, 16, 22
Claim 1 – grant…
Claim 3 – grant…
Claims 5, 11, 17, 23
Claim 7
Claims 6, 12, 18, 24
Claim 8
For claims 1-24 it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the different embodiments of claims 1-28 U.S. Patent No. 12,056,227 to create the claimed limitations. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of granting permissions to user devices using distributed ledgers.
Chart II
Instant application
11,698,958
11,030,297
Claims 1, 7, 13 and 19 A system comprising:
a first user device;
a second user device; and
a server device configured to:
generate a primary distributed ledger associated with an account holder,
wherein the account holder is permitted to provide permissions to user devices associated with the account holder, and
wherein the primary distributed ledger is configured to store one or more records associated with the permissions;
generate, based on receiving a first permission request from the first user device, a first secondary distributed ledger associated with the first user device;
store, on the primary distributed ledger and based on the first permission request, a first distributed ledger record indicating a first permission of the first user device;
generate, based on receiving a second permission request from the second user device, a second secondary distributed ledger associated with the second user device;
store, on the primary distributed ledger and based on the second permission request, a second distributed ledger record indicating a second permission of the second user device; and
store, based on the first distributed ledger record indicating the first permission, a third distributed ledger record on the first secondary distributed ledger indicating the first permission.
Claims 1, 3-4, 6 A method comprising:
user device
claim 3 – second user device
causing, based on the first request, a first record to be created on a first distributed ledger associated with an account holder
receiving a first request to grant a user one or more permissions associated with a service account
Claim 6 - wherein the first record comprises an indication of the one or more permissions
causing, based on the first request, a second record to be created on a second distributed ledger associated with the user and different than the first distributed ledger
Claim 6 - wherein the first record comprises an indication of the one or more permissions
Claim 3 –
causing, based on the third request, the first record, and the second record, a third record to be created on a third distributed ledger associated with the user device, wherein the third record comprises an indication of a second user device associated with the second user
Claim 3 -
receiving, from the user device, a third request to grant a second user a permission of the one or more permissions
Claim 4 –
causing, based on the third request, the first record, and the second record, a fourth record to be created on the first distributed ledger, wherein the fourth record comprises an indication of the second user device
Claims 1, 3-4, 6 A method comprising:
user device
claim 3 – second user device
causing, based on the first request, a first record to be created on a first distributed ledger associated with the account holder
receiving… a first request to grant a user one or more permissions associated with the service account
Claim 6 - wherein the first record comprises an indication of the one or more permissions
causing, based on the first request, a second record to be created on a second distributed ledger associated with the user and different than the first distributed ledger
Claim 6 - wherein the first record comprises an indication of the one or more permissions
Claim 3 –
causing, based on the third request, the first record, and the second record, a third record to be created on a third distributed ledger associated with the second user device
Claim 3 -
receiving, from the second user device, a third request to grant another user a permission of the one or more permissions
Claim 4 –
causing, based on the third request, the first record, and the second record, a fourth record to be created on the first distributed ledger, wherein the fourth record comprises an indication of the third user device
Claims 2, 8, 14, 20
Claim 5
Claim 5
Claims 3, 9, 15, 21
Claim 1 – grant…
Claim 3 – grant…
Claim 1 – grant…
Claim 3 – grant…
Claims 4, 10, 16, 22
Claim 1 – grant…
Claim 3 – grant…
Claim 1 – grant…
Claim 3 – grant…
Claims 5, 11, 17, 23
Claim 7
Claim 7
Claims 6, 12, 18, 24
Claim 8
Claim 8
11,698,958 differs from the claimed invention in that they fail to teach a “server” or “device” with “memory” and “one or more processors”. Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art at the time of the invention to implement generation of a distributed ledger with a server device that includes a processor that executes program instructions stored in memory. It would have been obvious because a server would be well known implementation running a distributed ledger system.
For claims 1-24 it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the different embodiments of claims 1-20 U.S. Patent No. 11,698,958 to create the claimed limitations. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of granting permissions to user devices using distributed ledgers.
11,030,297 differs from the claimed invention in that they fail to teach a “server” or “device” with “memory” and “one or more processors”. Examiner takes Official Notice it would have been obvious to one of ordinary skill in the art at the time of the invention to implement generation of a distributed ledger with a server device that includes a processor that executes program instructions stored in memory. It would have been obvious because a server would be well known implementation running a distributed ledger system.
For claims 1-24 it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the different embodiments of claims 1-20 U.S. Patent No. 11,030,297 to create the claimed limitations. It would have been obvious because combining prior art elements according to known methods would yield the predictable results of granting permissions to user devices using distributed ledgers.
Allowable Subject Matter
8. Claims 1-2, 5-8, 11-14, 17-20 and 23-24 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and with a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the nonstatutory double patenting rejections, set forth in this Office action.
9. Claims 3-4, 9-10, 15-16 and 21-22 would be allowable with a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the nonstatutory double patenting rejections, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record (note citation of pertinent prior art in Application No. 16/240526 - Notice of Allowance dated 02/05/2021) discloses permissions stored on multiple blockchains (see Fallah – US 2018/0343126; Molinari – 2017/0011460) and a master account granting permissions a guest account on a blockchain (Kurian – US 2019/0364046).
However, the prior art of record, alone or in combination, fails to disclose granting access to requested services for first and second user devices based on permissions stored on secondary distributed ledgers that have been generated based on account holder permissions stored on a primary distributed ledger.
The following is a statement of reasons for the indication of allowable subject matter:
For independent claims 1, 7, 13 and 19, the prior art of record, alone or in combination, fails to teach the following limitations in conjunction with the rest of the claimed limitations:
generating a primary distributed ledger associated with an account holder, wherein the account holder is permitted to provide permissions to user devices associated with the account holder, …; generating, based on receiving a first permission request from a first user device, a first secondary distributed ledger associated with the first user device; storing, on the primary distributed ledger and based on the first permission request, a first distributed ledger record indicating a first permission of the first user device; generating, based on receiving a second permission request from a second user device, a second secondary distributed ledger associated with the second user device
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PEARSON whose telephone number is (571)272-0711. The examiner can normally be reached 8:30 - 6:00 pm; Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Catherine Thiaw can be reached at (571)270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID J. PEARSON
Primary Examiner
Art Unit 2407
/David J Pearson/Primary Examiner, Art Unit 2407