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 first action on the merits; a non-final office action.
Claims 1-20 have been examined in this application. Claims 16-20 are newly added.
No new information disclosure statement (IDS) has been filed.
Response to Arguments
Applicant's arguments filed January 26, 2026, pages 12-14, regarding claim rejections under 35 U.S.C. 112 (a) and 112(b) have been fully considered but they are not persuasive. Applicant argues that the amendments along with the Specification provide support and clarification to overcome the alleged issues.
The Examiner respectfully disagrees. The claims still fail to clarify the link between the so called “a plurality of nodes,” “an information processing apparatus,” “at least a part of the plurality of nodes constitutes a distributed ledger system that provides a distributed ledger,” “the distributed ledger system enables execution of a smart contract,” “a processor of each distributed ledger node of the distributed ledger system executes the smart contract,” “at least another part of the plurality of nodes provides a function… implemented among a plurality of organizations,” “the information processing system” and the rest of the limitations, which follow that fail to disclose what element / entity within the claimed “information processing system” actually carries out these functions. From the above it is clear that the claims are ambiguous and unclear, failing to provide clear support for what Applicant deems as their invention. likewise, the attempted Beauregard language is not sufficient for many reasons, including the fact that a single processor and memory and instructions cannot all be present in multiple nodes not alone an apparatus having the same processor, same memory, and same instructions as each one of the nodes and further as the nodes that are apparently part of a distributed ledger. The Specification provide structure for the apparatus but no clear structure is provided for each individual node having it’s own memory and own instructions to cause its own processor to carry out the individual instructions. For at least these reasons, the majority of the rejections are maintained.
Applicant's arguments filed January 26, 2026, pages 14-20, regarding claim rejections under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues that the claims are not directed to an abstract idea and that the claims “recite a specific technical solution for managing verifiable credentials in a distributed ledger system using self-sovereign identity technology;” id., 15. Applicant further contends that the claims integrate any abstract idea into a practical application based on additional elements: “a distributed ledger system comprising distributed ledger nodes with processors that execute smart contracts, a consensus formation mechanism among the plurality of nodes constituting the distributed ledger system, and storage of extraction information in a distributed ledger database… [that] constitute a specific technical architecture for achieving consensus-based management of verifiable credential information in a blockchain environment.” Id. Applicant then cites the Specification for support of the arguments before arguing that the newly added dependent claims add additional elements that would also integrate any abstract idea into a practical application.
The Examiner respectfully disagrees. First, the Examiner relies on MPEP 2106 and all Guidance and Memos therewith.
Under MPEP §2106, the claims are analyzed to determine whether they recite:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
If the claims recite a judicial exception, under section (1), and fail to integrate the abstract idea into a practical application, section (2), then the claims are further analyzed to determine whether they:
(3) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP §2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
The instant claims are found to be directed to an abstract idea of merely extraction of data based on approval of data without significantly more.
The abstract idea is characterized under certain methods of organizing human activity, including, commercial interactions including sales activities or behaviors, and business relations. The extraction of data is based on a transaction being carried out and data linked to the transaction utilized to eventually allow for the extraction of the data and storage of said extracted data. Such a concept is a clear concept linked to the above abstract idea grouping and sub-grouping.
Moving to Step 2A, Prong Two. Contrary to Applicant’s arguments, the Examiner finds no additional elements in the claims as a whole that would amount to a practical application. The claims must be analyzed under the broadest reasonable interpretation. Because the claim contain various indefiniteness issues, and include various conditional limitations, the claimed scope is determined to be directed to extraction of data based on multiple manipulation of data functions. The additional elements argued by the Applicant are not persuasive and further are not found to be actually claimed in full and in detail. The Applicant summarizes the additional elements from what seems to be the Specification instead of the actual claims. The claims are not directed to a distributed ledger system, blockchain network, and is not directed to what the blockchain network does specifically. Instead, the claims are directed to a “information processing system” that includes “a plurality of nodes” which are implemented “using an information processing apparatus” and are connected to one another. The nodes have a processor, a memory storing instructions and then the claim says that the processor carries out functions but then states that the nodes “constitutes a distributed ledger system.” A processor cannot constitute for a plurality of nodes a distributed ledger system, nor would anyone skilled in the art know how to carry out such a function/limitation. The claims further recite a smart contract, and “another part of the plurality of nodes provides a function for issuing or verifying a verifiable credential and a verifiable presentation.” The claims recite an SSI technology but does not recite how it’s used and who uses it. Likewise the claims include management of the smart contract that is claimed to implement functions including creation request information, approval determination, extract information, create the extraction information, and extracts information from the verifiable credential before creating BC storage information. These additional elements are not clearly describing a unique architecture that solves the claimed technical solution. Instead, they are deemed as high level and generic. The additional elements are merely applied rather than amount to an improvement in a device or technology or technical field. Likewise, the additional elements are determined to merely link the use of the judicial exception to a particular technological environment or field of use; amounting to the additional elements automating the abstract idea. In conclusion, 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 additional elements are also deemed as generally linking the use of the judicial exception to a particular technological environment or field of use.
Examiner points to MPEP 2106.04(d)(III), which recites that the “specification… must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner… the examiner should not determine the claim improves technology. Second, if the specification sets for an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.” The instant claims fail to recite an improvement as argued by the Applicant that would amount to a practical application.
With regard to Applicant’s arguments of newly presented additional elements in claims 16-20, these arguments are deemed not persuasive because again the limitations are simply further describing the abstract idea instead of capturing technical elements that clearly convey a technical solution to a technical problem of device.
Lastly, with regard to Applicant’s arguments under Step-2B, The Examiner respectfully disagrees that the claims amount to significantly more than 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 dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above.
The claims are not patent eligible.
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.
Claims 1-20 are 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 claims 1 and 11, the claims recite “An information processing system comprising: a plurality of nodes that are implemented using an information processing apparatus and are communicably connected to each other, wherein each node of the plurality of nodes comprises a processor and a memory storing instructions that, when executed by the processor, cause the processor to perform operations, and
wherein at least a part of the plurality of nodes constitutes a distributed ledger system that provides a distributed ledger, the distributed ledger system enables execution of a smart contract according to a transaction sent from the plurality of nodes, wherein a processor of each distributed ledger node of the distributed ledger system executes the smart contract…” Emphasis added.
The portions highlighted are simply an example of the issues relating the lack of support for the structure for each one of the mentioned entities / systems / nodes. It’s not known how a single processor, and a single memory having instructions can be applied to all the nodes, and the information processing system, and the information processing apparatus, and the distributed ledger system and each of the distributed ledger node. Also, there is no support for said single processor that can act on behalf of all these entities. The Specification has a processor for a processing apparatus but fails to support a single processor and memory for all nodes and other above-mentioned entities. Likewise, there is no support for a processor of a distributed ledger system that is different than the processor as recited in the first limitation of the claim. For at least these reasons, the claims are rejected for lack of support and disclosure of how to carry out the claimed functions.
All dependent claims are rejected under the same rational and for mere dependency on the rejected claims.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claims 1-20, the claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Furthermore, the claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claims 1 and 11, the claims recite: “An information processing system comprising:
a plurality of nodes that are implemented using an information processing apparatus and are communicably connected to each other, wherein each node of the plurality of nodes comprises a processor and a memory storing instructions that, when executed by the processor, cause the processor to perform operations, and wherein
at least a part of the plurality of nodes constitutes a distributed ledger system that provides a distributed ledger,
the distributed ledger system enables execution of a smart contract according to a transaction sent from the plurality of nodes, wherein a processor of each distributed ledger node of the distributed ledger system executes the smart contract,
at least another part of the plurality of nodes provides a function for issuing or verifying a verifiable credential and a verifiable presentation, the function being implemented among a plurality of organizations by a self-sovereign identity (SSI) technology, wherein the plurality of organizations operate the plurality of nodes…”
Emphasis added.
The underlined entities along with their associated claimed structure result in the claims being ambiguous because it is not clear whether the scope of the claims is based on the plurality of nodes in communication with an information processing apparatus or whether the scope is based on some of the plurality of the nodes and not the information processing apparatus or whether the scope is based on the plurality of nodes, the apparatus, and the distributed ledger nodes and the structure related to each one that is also somehow for all entities. The scope of the claims is unclear and one of ordinary skill in the art would not clearly know what entity does what, when, and in which manner do all these entities communicate with each other / if at all. The architecture of the system is not clear and thus ambiguous.
The dependent claims, claims 2-10, are rejected under the same rational and for mere dependency on the rejected claim.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-20 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of extraction of data based on approval of data without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions such as sales activities and business relations. The claims capture a scope directed to a transaction initiation, verifying data as a result of the transaction, extracting information based on the verification information and generating data to be stored based on the extracted information. The alleged claimed scope is thus clearly aligned with the above identified abstract idea groupings and sub-groupings.
Claim 11, in pertinent part, recites:
An information processing method using an information processing system, wherein
the information processing system includes a plurality of nodes that are implemented using… [a first entity] and are communicably connected to each other…
at least a part of the plurality of nodes constitutes a distributed ledger system that provides a distributed ledger,
the distributed ledger system enables execution of a smart contract according to a transaction sent from the plurality of nodes…
at least another part of the plurality of nodes provides a function for issuing or verifying a verifiable credential and a verifiable presentation, the function being implemented among a plurality of organizations by a self-sovereign identity (SSI) technology, wherein the plurality of organizations operate the plurality of nodes,
the information processing method comprises causing the information processing system to execute processing of:
managing… a program that implements
a creation request information generation function of receiving, from the plurality of nodes, a creation request for extraction information that is information specifying, for information in the verifiable credential, storage or non-storage…, and generating creation request information that is information based on the received creation request,
an approval or non-approval function of determining, by consensus formation among the plurality of nodes…, an approval or non-approval of the information specifying the storage or non-storage in the creation request information, and
an extraction information creation function of creating, when consensus is reached by the consensus formation, the extraction information based on the creation request information, wherein the distributed ledger node stores the extraction information in a distributed ledger database;
creating the extraction information by activating the creation request information generation function, the approval or non-approval function, and the extraction information creation function;
extracting information from the verifiable credential or the verifiable presentation based on a schema… and the extraction information; and
creating… BC storage information that is information to be stored… based on the extracted information.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: , wherein each node of the plurality of nodes comprises a processor and a memory storing instructions that, when executed by the processor, cause the processor to perform operations, wherein a processor of each distributed ledger node of the distributed ledger system executes the smart contract, information processing system, a plurality of nodes that are implemented using an information processing apparatus and are communicably connected to each other, a part of the plurality of nodes constitutes a distributed ledger system that provides a distributed ledger, the distributed ledger system enables execution of a smart contract according to a transaction sent from the plurality of nodes, a self-sovereign identity (SSI) technology, managing, as the smart contract, a program, a distributed ledger database, and blockchain storage.
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 data, analyzing the data, executing functions, and validating data, extracting data, generate storage information for storage based on the manipulation of data. The additional elements are merely applied rather than amount to an improvement in a device or technology or technical field. Likewise, the additional elements are determined to merely link the use of the judicial exception to a particular technological environment or field of use; amounting to the additional elements automating the abstract idea. In conclusion, 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 additional elements are also deemed as generally linking the use of the judicial exception to a particular technological environment or field of use.
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 dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. For instance, the dependent claims include the additional element of a user interface. Again, this additional element is recited at a high level of generality amounting to mere instructions executed by a generic device and failing to add meaningful limits beyond the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above.
The claims are not patent eligible.
References
The filed claims contain multiple ambiguity issues, resulting in the claimed scope being unclear. As a result, a determination of whether the claimed scope is rejectable under 35 U.S.C. 102 or 103 cannot be made. However, the following reference seems to teach the overall scope of what Applicant is deeming as their invention.
International Application Publication WO 2022179502 to Novotny et al. (Novotny), teaches receiving a request for storage at a blockchain network, attaching, via a blockchain node, a verifiable credential created by a self-sovereign identity (SSI) network to a blockchain transaction associated with the request, where the verifiable credential includes a claim of the blockchain node and a proof of the SSI network that created the verifiable credential, transmitting the blockchain transaction and the attached verifiable credential to one or more other blockchain nodes, and storing the blockchain transaction and the attached verifiable credential via a data block on the blockchain. Novotny teaches utilizing issuers, credential holders, and verifier nodes within a decentralized system to validate verifiable credentials of data and using SSI technology to do so.
Novotny recites that each blockchain entity (e.g., peers, orderers, endorsers, clients, auditors, admins, etc) can be assigned a unique decentralized identifier (DID) that identifies the blockchain entity within a blockchain network. A blockchain entity that possesses a DID can be issued one or more verifiable credentials (VCs) which can be used by the blockchain entity to sign blockchain transactions, messages, blocks, and the like. In some embodiments, each blockchain entity may include a set of VCs which each give the blockchain entity one or more claims. A claim, for example, may be a claim that a blockchain peer is authorized to sign a transaction for a particular smart contract (chaincode). As another example, a claim may be that a blockchain peer is authorized to transact on a particular channel/blockchain among a plurality of channels on a blockchain ledger. As another example, a claim may identity that the blockchain peer is an endorsing peer of the blockchain network, etc.
Each verifiable credential may be issued from an authority within a SSI network of the blockchain network, for example, a membership service provider (MSP) , a certificate authority (CA) , or the like. The verifiable credential may include “proof” such as a signature of the issuer of the verifiable credential. The SSI network may maintain all allocated DIDs, VCs, and the like. In addition, the SSI network may maintain schema information of each VC, a public key of the issuer that signed the public key, and the like. Members of the blockchain can access the registry to obtain the schema information and the public key of the issuer to verify the schema of the verifiable credential and the signature of the issuer, respectively. In this way, any of the blockchain entities can validate the verifiable credential without relying on a central authority.
As Novotny lays out in an exemplary embodiment, verifiable credentials can be issued to DID holders (network participants that rely on SSI) . The verifiable credentials can be issued by issuers (members of the SSI network) that can be existing identity providers and certificate authorities within permissioned networks or they can be well-known external authorities. Within networks, issuers may include network or organizational (sub-division) CAs. In a Hyperledger Fabric network, these entities are called MSPs (membership service providers) , which maintain chains of root and intermediate CAs. In a Corda network, there is a hierarchy of network CAs credentialing doormen CAs who in turn credential node CAs (each node having the ability to sign and approve transactions. ) These MSPs or CAs represent either a network as a whole or sub-divisions within a network, and they issue/revoke identities and credentials (such as DIDs) Outside of networks, the issuers may include external parties such as reputed CAs and credentialing authorities, like Verisign or the DMV. Other issuers can include existing organizations that choose to participate in a permissioned network, ad hoc authorities representing the consortium of organizations that comprises a business network, for example, a supply chain, a food trust network, etc. It should also be appreciated that the SSI networks are capable of managing identities of multiple networks' participants and facilitating identity-sharing across network boundaries.
Thus through use of blockchain comprising multiple nodes executing smart contracts, validation of verification credentials can be carried out, with the use of SSI, and allow data to be obtained and stored as a result.
The Examiner requests the Applicant to carefully review the reference and those attached in order to help expedite prosecution.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NEHA PATEL can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
Prosecution Insights