DETAILED ACTION
Acknowledgments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the application filed on 03/06/2025.
Claims 1-3 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed on 08/27/2024 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
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 1-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patent eligible subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step 1:
The claims recite a process, system, apparatus, article of manufacture, and/or a nontransitory storage medium with instructions, each of which are proper statutory categories.
Step 2A (prong 1):
Claim 1 (representative of claim 2):
The claim limitations are grouped as shown immediately following:
an attestation generated by one of the certifying systems, the attestation comprising a type of attestation, a document hash, a time stamp by the certifying system of the time at which the attestation was generated, an electronic signature of the attestation by the certifying system, a time stamp by the processing module of the time at which the element was added to the ordered list, optionally a pointer to the document. Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
Additional dependent claim 3 does not appear remedy the deficiency.
Step 2A (prong 2):
Claim 1 (representative of claim 2):
A module (1) for processing certifying instances (100) of digital data generated by certifying systems (300), said module comprising a public key of a user terminal (200),each of the certifying instances is associated with a storage address, with a user terminal, and with an ordered list of elements stored on a non- repudiable ledger, each of the elements comprising:
These remaining claim limitations are delineated as shown immediately preceding. The abstract idea is not integrated into a practical application. There are no improvements to the functioning of a computer, other technology or technical field, a particular machine is not cited, nothing is transformed to a different state or thing, the abstract idea is not more than a drafting effort designed to monopolize the abstract idea. The claim merely uses a computer as a tool to perform the abstract idea, which is generally linked to a particular field of use, in this case, marketing and advertising. Thus, these limitations are recited at a high-level of generality (i.e., as a generic processor and memory performing a generic computer function of processing and storing data) such that it amounts no more than mere instructions to apply the exception using a generic computer component – MPEP 2106.05(f). Further, receiving data, evaluating data and distributing data are data gathering and data outputting, which has no effect on technology and does no more than generally link the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Step 2B:
The claim limitations do not provide an Inventive Concept. The claim limitations do not recite additional elements that amount to significantly more that the abstract idea because the additional elements of the system comprising a computer processor, computer readable storage medium with instructions, and a memory configured to store information, each recited at a high level of generality in a computer network which only perform the universal computer functions of accessing, receiving, storing, and processing data, transmitting and presenting information. Taking the elements both individually and as an ordered combination, the function performed by the computer at each step of the process is purely orthodox. Using a computer to obtain and display data are some of the most basic functions of a computer. As shown, the individual limitations claimed are some of the most rudimentary functions of a computer. The technical solution described in this invention does not alter hardware structure or its routine, does not transform the character of the information being processed, does not identify a novel source or type of data, does not advance the functionality of a computer as a tool, and does not incorporate specific rules enabling the computer to accomplish innovative utilities. In summary, the individual step and/or component does no more than require a general computer to perform standard computer functions. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a computer devices amounts to no more than mere instructions to apply the exception using a generic computer component - requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015);
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claim 1 and 2 recite/invoke a module for processing, among other limitations.
Applicant(s) is/are respectfully reminded, for computer-implemented functional claims, “examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.” MPEP § 2161.01(I).
As an initial matter, the Examiner notes that claims 1 and 2 are originally-filed claims. However, originally-filed claims 1 and 2 do not disclose the structure themselves and so does not provide the necessary written description support for pending claims 1 and 2.
Furthermore, Applicant’s specification does not describe an structure that performs the function of a module for processing, in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. For example, Applicant’s specification discloses a function for adding an attestation to a certifying instance (Specification, paragraph 0023). However, such disclosure does not any kind of structure that performs the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter.
35 U.S.C. 112(b) Failure To Particularly Point out and Distinctly Claim (Indefinite)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 and 2 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor the Applicant regards as the invention.
Claim 1 and 2 use/invoke the phrase module for. It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f) must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding module it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).
Although the specification is replete with the word module, this Examiner cannot find a description with regard to the structure of the module claimed.
Statement of Statutory Basis, 35 U.S.C. 112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claim 1 and 2 use/invoke the phrase module for. It is unclear whether these words convey function or structure. A limitation construed under 35 U.S.C. 112(f) must not recite the structure for performing the function. Since no clear function is specified by the word(s) preceding module it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).
Claim Rejections - 35 USC § 103
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 of this title, if the differences 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 in which the invention was made.
Claims 1-3 are rejected under U.S.C. 103 as being unpatentable over Cella et al. (USPGP 2023/0214925 A), hereinafter CELLA.
Claims 1, 2:
CELLA as shown below discloses the following limitations:
A module (1) for processing certifying instances (100) of digital data generated by certifying systems (300), said module comprising (see at least Figure 1 as well as associated and related text)
a public key of a user terminal (200),
each of the certifying instances is associated with a storage address, (see at least paragraphs 0094, 0095, 0508, 3180)
with a user terminal, (see at least paragraph 0402)
with an ordered list of elements stored on a non-repudiable ledger, (see at least paragraph 0029, 0032)
each of the elements comprising: (see at least paragraphs 0029, 0032, 2460)
an attestation generated by one of the certifying systems, the attestation comprising a type of attestation,
a document hash, (see at least paragraphs 1982, 3182, 0416)
a time stamp by the certifying system of the time at which the attestation was generated, (see at least paragraphs 0737, 0774)
an electronic signature of the attestation by the certifying system, (see at least paragraphs 1982, 3182, 0416)
a time stamp by the processing module of the time at which the element was added to the ordered list, (see at least paragraphs 0737, 0774)
optionally a pointer to the document. (see at least paragraphs 1196, 3180)
CELLA does not specifically disclose each of the above limitations in a single embodiment. In this case, each of the elements claimed are all shown by the prior art of record but not necessarily combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the effective filing date to combine/modify the blockchain method of CELLA because, “Brought about by exponentially increasing connectivity and intelligence of devices of all types, the world is experiencing orders-of-magnitude increases in scale and granularity of data, as well as the emergence of entirely new types of data, all available to enable or enhance digital transactions in markets of all types. This expansion brings new challenges to parse, analyze, and derive intelligence from the fractally expanding data layers, as well as regulatory and business requirements to understand and act upon the transactions, transactors, and all corporate, individual, or AI intermediaries that operate on or interact with data.” (CELLA: paragraph 0003). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
Claim 3:
CELLA discloses the limitations as shown in the rejections above. CELLA further discloses the following limitations:
a step of verifying the integrity of a file by a user terminal, (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
said file being received from another user terminal, (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
said step comprising the following steps, implemented at the user terminal: (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
calculating a hash of the received file, (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
receiving, from the other user terminal, a storage address for a certifying instance address and sending it to the module (1), (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
receiving, from the module (1), the certifying instance associated with said storage address, (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
browsing the ordered list of elements of the certifying instance received to determine the presence or absence of a hash of an attestation that is the same as the calculated hash. (see at least paragraph 0416, 3761, 1102, 1982, 3182, 0029, 0032, 2460)
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Non-Patent Literature:
Jakob Schaerer et al. “Veritaa: A distributed public key infrastructure with signature store.” (06 September 2021). Retrieved online 12/13/2025. https://onlinelibrary.wiley.com/doi/full/10.1002/nem.2183
Conner Fromknecht et al. “A Decentralized Public Key Infrastructure with Identity Retention.” (November 11, 2014). Retrieved online 12/13/2025. https://onlinelibrary.wiley.com/doi/full/10.1002/nem.2183
OMAR et al. “BLOCKCHAIN BASED FRAMEWORK FOR EDUCATIONAL CERTIFICATES VERIFICATION.” (18.01.2020). Retrieved online 12/13/2025.
Foreign Art:
DOUGLASS et al. “Method For Verifying E.g. Video Recording Of Court Hearing, Involves Receiving Confirmation Of Approval Of Certification Requests By Blockchain, And Generating And/or Displaying Verification Confirmation On Electronic Device.” (EP 3454523 A1)
BERKERMAN et al. “Method For Facilitating Tokenization Of E.g. Pharmaceutical Products, In Distributed Ledger Environment, Involves Generating Non-certified Token Being Assigned To Physical Object For Representing Object Identification Data.” (EP 3534288 A2)
BAUCHOT et al. “Generating Method For Authenticity Certificate To Be Stored On Media Involves Transmitting Encrypted Step Certificate And Encrypted Random Key To Be Written On Media.” (WO 2007/113040 A1)
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to James A. Reagan (james.reagan@uspto.gov) whose telephone number is 571.272.6710. The Examiner can normally be reached Monday through Friday from 9 AM to 5 PM. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, John Hayes, can be reached at 571.272.6708.
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/JAMES A REAGAN/Primary Examiner, Art Unit 3697
james.reagan@uspto.gov
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