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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This Final action is in response to the applicant’s communication received on 2/28/2026 (“Amendment”).
Claim Status
Claims 1-6 have been amended.
Claims 7-22 have been canceled as all of the claimed limitations have been struck through.
Claims 1-6 are pending.
Specification
The amendment filed 2/28/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the applicant amends the specification significantly with matters that were not supported by the original disclosure.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Interpretation
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
verification engine configured to: generate …, received …, validate … in claim 1;
a subscription registry configured to store subscription records that bind subscriber identifier to the verified sender identity in claim 1;
a message routing module that defines an exclusive outbound … and is configured to: received a communication …, perform, at message delivery time, an authorization check …, block delivery of the communication when the authorization check fails by refusing to invoke …, invoke one or more delivery … in claim 1;
authorization check performed by the message routing module relies … in claim 2;
subscription registry includes opt-in records … in claim 4;
verification engine establishes the verified sender identity … in claim 5;
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-6 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 claim 1, the claim has been significantly amended. There is no support in the original written disclosure of “An authenticated communication delivery system, comprising: verification engine configured to: generate a cryptographic challenge corresponding to a blockchain address; receive a cryptographic signature generated by a cryptographic wallet; and validate the cryptographic signature against blockchain-recorded ownership of a smart contract or non-fungible token to establish a verified sender identity; a subscription registry configured to store subscription records that bind subscriber identifiers to the verified sender identity; and a message routing module that defines an exclusive outbound communication path and is configured to: receive a communication submitted for delivery by the verified sender identity; perform, at message delivery time, an authorization check based on the verified sender identity established by the verification engine to confirm that each destination recipient identifier specified for delivery of the communication corresponds to a subscriber identifier bound to the verified sender identity; block delivery of the communication when the authorization check fails by refusing to invoke the one or more delivery transport mechanisms for the communication; and invoke one or more delivery transport mechanisms only through the exclusive outbound communication path, wherein unsolicited outbound communications lacking an associated subscription record are structurally prevented from delivery by the message routing module”. Furthermore, the claim does not teach how the delivery is structurally constrained to an exclusive outbound path through the routing module.
Per claim 2, there is no support in the original written disclosure of “the authorization check performed by the message routing module relies on a previously established verified sender identity without requiring generation of a new cryptographic signature for each communication”.
Per claim 3, there is no support in the original written disclosure of “wherein the authorization check is performed immediately prior to delivery of the communication to the destination recipient identifiers specified for delivery of the communication.”
Per claim 4, there is no support in the original written disclosure of “the subscription registry includes opt-in records generated by subscribers, and the message routing module blocks delivery of communications to destination recipient identifiers corresponding to subscriber identifiers lacking an opt-in record.”
Per claim 5, there is no support in the original written disclosure of “wherein the verification engine establishes the verified sender identity during an authentication session prior to submission of one or more communications.”
Per claim 6, there is no support in the original written disclosure of “wherein the communications are delivered via one or more electronic delivery channels selected from email, web-based interfaces, application notifications, or application programming interfaces.”
Per claims 1-6, claimed expressions of verification engine configured to: generate …, received …, validate … in claim 1; a subscription registry configured to store subscription records that bind subscriber identifier to the verified sender identity in claim 1; a message routing module that defines an exclusive outbound … and is configured to: received a communication …, perform, at message delivery time, an authorization check …, block delivery of the communication when the authorization check fails by refusing to invoke …, invoke one or more delivery … in claim 1; authorization check performed by the message routing module relies … in claim 2; subscription registry includes opt-in records … in claim 4; and verification engine establishes the verified sender identity … in claim 5 invoke 112(f) as described above. The claims are found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g. the computer and the algorithm) in the specification that performs the claimed functions.
See January 2019 Federal Register notice on Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. 112 that states, "When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a). See also MPEP § 2163.03, subsection VI.
The dependent claims are rejected as they depend on the claim(s) noted above.
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 1-6 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.
As per the system claims 1-6, the claimed expression of verification engine configured to: generate …, received …, validate … in claim 1; a subscription registry configured to store subscription records that bind subscriber identifier to the verified sender identity in claim 1; a message routing module that defines an exclusive outbound … and is configured to: received a communication …, perform, at message delivery time, an authorization check …, block delivery of the communication when the authorization check fails by refusing to invoke …, invoke one or more delivery … in claim 1; authorization check performed by the message routing module relies … in claim 2; subscription registry includes opt-in records … in claim 4; and verification engine establishes the verified sender identity … in claim 5 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is void of any structural component rather the platform is described using another generic placeholder, i.e., server. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The dependent system claims are rejected as they depend on claim(s) above and failing to cure the deficiency of the parent claim(s).
Per claim 1, the scope of the claim is unclear as the claim recites that a communication is submitted by an identity, i.e., verified sender identity, as one of ordinary skill would appreciate that identity is an information.
As per claim 6, the claim recites “the communications”. The scope of the claim is unclear as claim 1 recites “communication” not multiple communications.
The dependent claims are rejected as they depend on the claim(s) above.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 1-6 are directed to a directed to a system. Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Step 2A, 1st prong:
Claim 1 recites: An authenticated communication delivery system, comprising:
verification engine configured to:
generate a cryptographic challenge corresponding to a blockchain address;
receive a cryptographic signature generated by a cryptographic wallet; and
validate the cryptographic signature against blockchain-recorded ownership of a smart contract or non-fungible token to establish a verified sender identity;
a subscription registry configured to store subscription records that bind subscriber identifiers to the verified sender identity; and
a message routing module that defines an exclusive outbound communication path and is configured to:
receive a communication submitted for delivery by the verified sender identity;
perform, at message delivery time, an authorization check based on the verified sender identity established by the verification engine to confirm that each destination recipient identifier specified for delivery of the communication corresponds to a subscriber identifier bound to the verified sender identity;
block delivery of the communication when the authorization check fails by refusing to invoke the one or more delivery transport mechanisms for the communication; and
invoke one or more delivery transport mechanisms only through the exclusive outbound communication path, wherein unsolicited outbound communications lacking an associated subscription record are structurally prevented from delivery by the message routing module.
(Emphasis added on the additional element(s))
The claim under the broadest reasonable interpretation recites managing a delivery of communication, i.e., either block delivery of the communication when authorization fails or invoke one or more delivery method. The claim achieves this by generating a challenge corresponding to a blockchain address, receive a generated signature, and validating the signature against recorded ownership to establish a verified sender identity. A subscription records is stored in a ledger that binds the subscriber identifiers to the verified sender identity. The communication is received from the verified sender identity. An authorization check is performed at a message delivery time to see whether each destination recipient identifier specified for delivery of the communication corresponds to one of the subscriber identifiers that is bound to the verified sender identity. The communication is delivered using an exclusive communication path or blocked when the authorization check fails. As such, the claim recites certain of organizing human activity (i.e., managing interaction between people including following rules or instruction). The claim further suggests exclusive outbound path, i.e., that the outbound communication or delivery must be passed through the central point so that authorization checks cannot be bypassed (see applicant comment on page 3 of the Amendment). However, central point of outbound messages, i.e., mail service department, that is responsible for outgoing delivery and incoming delivery is an abstract idea, i.e., certain methods of organizing human activities.
The claim further recites that the challenge and signature are cryptographic. However, cryptographic challenge and cryptographic signature are representative of mental activities/mathematical concept.
As such, claim 1 recites an abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e. system comprising a verification engine, subscription registry, and message routing module are recited at a high-level generality such that it amounts to no more than mere instructions to implement the abstract idea, and/or merely uses a computer as a tool to perform an abstract idea – see MPEP 2106.05(f). The further additional elements of cryptographic wallet, blockchain-recorded, smart contract, and non-fungible token amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of user – see MPEP 2106.05(h).
These limitation do not represent: Improvements to the functioning of the system or the components of the system or to any other technology or technical field - see MPEP 2106.05(a).
In regards to the other additional elements in the claim(s), i.e., smart contract (blockchain-based) or non-fungible token, signing a cryptographic message with a cryptographic wallet(s), and/or cryptographic wallet associated with a blockchain, amount no more than generally linking the use of the judicial exception to a particular technological environment or field of user – see MPEP 2106.05(h).
These limitations, alone or in combination, do not represent improvement to the smart contract or the non-fungible token, a cryptographic wallet, cryptographic wallet, non-fungible token and/or blockchain or to any other technology or technical field. For example, as the applicant states in the original written disclosure (“specification”), the transparency, immutability, and decentralization of the blockchain-based smart contract, tokens, and cryptographic wallets are inherent features of the blockchain (see [0004] in the specification).
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea and generally linking the use of the judicial exception to a particular technological environment or field of use. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited system comprising a platform or the blockchain features individually or in combination.
For these reasons, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Dependent claims 2-6 further expands the concept of authenticating ownership. Claim 6 recites further additional element of email, web-based interfaces, application notifications, or API. However, these additional elements amount to no more than generally linking the use of the judicial exception to a particular technological environment or field of user – see MPEP 2106.05(h). There is no indication of improvement on the additional element(s) individually and as a whole. Furthermore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept.
Response to Argument(s)
101
The applicant asserts that the “exclusive outbound path” limitation is not a business rule or a user preference as it is an architectural requirement that all outbound delivery must pass through the routing module so that authorization checks cannot be bypassed by alternate delivery call paths. See page 3 of the Amendment.
First, the examiner would like to point out that the applicant unnecessarily narrows the claim construction. For example, the under the broadest reasonable interpretation, the claim merely recites that the routing module defines an exclusive outbound communication path. One of ordinary skill would appreciate that the routing module defines such for the received communication as recited in the claim.
Second, the applicant is attempting to conflate the step 2A, 1st prong test, with step 2A, 2nd prong test, by referring additional elements into the identification of abstract idea recitation.
Regards to applicant’s assertion that claims integrate any alleged abstract idea into a practical application, the applicant does not provide rational other than assertion that the claim “requiring a specific enforcement mechanism at a defined technical boundary”, particularly that claim recites a concrete routing-and-gating architecture that changes how the system’s outbound delivery operates to prevent unauthorized transmissions through the system. As mentioned above, the additional elements amount to no more than mere instructions to implement the abstract idea on a computer or computer components, and/or merely uses a computer as a tool to perform an abstract idea and generally linking the use of the judicial exception to a particular technological environment or field of use.
The applicant asserts that the claim recites an inventive concept as “this enforcement boundary is not conventional in typical messaging/subscription system”. In response, the applicant is reminded that conventional was not the basis of the rejection.
112
The claim amendments necessitate 112 rejections as described above in the 112 sections.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20110320462 A1 discloses messaging technique including in-platform messaging within the platform interface;
US 8666438 B1 discloses methods and systems for managing communications between a user of a mobile device and a content providers. A communication manager manages the communications between mobile devices, i.e., a subscriber, and content providers based on user preferences;
US 20100257043 A1 discloses a method and system, particularly a web platform that allows a creator (i.e., developer) to create a subscription service; receives a subscription request from a user to subscribe to the service (i.e., application along with configuration data). The request is sent to the developer who may make decision on the request and relay the decision to the platform.
The cited references alone or in combination does not teach claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached on Monday -Friday: 7:00 - 3:30.
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, Patrick McAtee can be reached on 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN S KIM/Primary Examiner, Art Unit 3698