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 .
Status of Claims
The following is Office Action on the merits in response to the communication received on 10/28/24.
Claim status:
Amended claims: none
Canceled claims: none
Added New claims: None
Pending claims: 1-10
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 1-10 are rejected under 35 U.S.C. § 101 because the claimed invention is not directed to statutory subject matter.
Specifically, the invention of claims 1-10 is directed to software. Claim 1 and its dependencies, are directed to a system. Based on the Specification, the claim terms blockchain subsystem, data assetization space, and pledge financing subsystem appear to be directed to pure software. Therefore claims 1-10 appear to be directed to pure software. Therefore on its face, each of claims 1-10 is not directed to a statutory category of invention under Step 1 of the 2019 PEG. Accordingly claims 1-10 are ineligible.
The invention of claims 1-10 is directed to an abstract idea without significantly more.
Independent claim 1 is directed to a system/apparatus. Therefore on its face, claim 1 is directed to a statutory category of invention under Step 1 of the 2019 PEG. However claim 1 is also directed to an abstract idea without significantly more, under Step 2A (Prong One and Prong Two) and Step 2B of the 2019 PEG, which is a judicial exception to 35 U.S.C. 101, as detailed below. Using the language of independent claim 1 to illustrate the claim recites the limitations of, (i) providing a full-process on-chain services for data resources, data products, and data asset circulation and transactions, along with query and control services; a data assetization space, communicatively connected to the blockchain subsystem, wherein the data assetization space provides data assetization infrastructure and services; and a pledge financing subsystem, communicatively connected to the blockchain subsystem, wherein the pledge financing subsystem provides services related to data asset pledge financing; wherein the system performs data assetization and the data asset custody through the blockchain subsystem and the data assetization space, and (ii) carries out the data asset pledge financing through the blockchain subsystem and the pledge financing subsystem under the broadest reasonable interpretation (BRI) covers methods of organizing human activity –commercial or legal interactions but for the recitation of generic computers and generic computer components.
That is, other than reciting a theoretical system for selling data stored on a blockchain nothing in the claim precludes the steps from being directed to methods of organizing human activity –commercial or legal interactions. If a claim limitation under its BRI, covers methods of organizing human activity but for the recitation of generic computers, then the limitations fall within the “methods of organizing human activity” grouping of abstract ideas. Therefore, claim 1 recites an abstract idea under Step 2A Prong One of the Revised Patent Subject Matter Eligibility Guidance 84 Fed.Reg 50 (“2019 PEG”).
This “methods of organizing human activity” is not integrated into a practical application under Step 2A prong Two of the 2019 PEG. In particular claim 1 recites the following additional element of, a theoretical system for selling data stored on a blockchain. This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements – a theoretical system for selling data stored on a blockchain.
The theoretical system for selling data stored on a blockchain is recited at a high-level or generality (i.e. as a generic computer performing generic computer functions) such that, it amounts to no more than an instruction to “apply it” with a computer (see MPEP 2106.05(h)). Accordingly this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under Step 2B of the 2019 PEG independent claim 1 does not include additional elements that are sufficient to amount to significantly more than the abstract idea. The claim(s) 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 of using a theoretical system for selling data stored on a blockchain, amounts to an instruction to “apply it” with a computer. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations individually. The Dependent claim(s) when analyzed individually are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail to establish that the claim(s) are not directed to an abstract idea. The additional limitations of the dependent claim(s) when considered individually do not amount to significantly more than the abstract idea. Claims 2-10 merely further explain the abstract idea.
When viewed individually the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea. Accordingly claims 1-10 are ineligible.
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. The following claim limitations are treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: blockchain subsystem, data assetization space, and pledge financing subsystem (Claim 1); chain account module, account data identity module, account transaction depository module, account transaction certificate module, account asset certificate module, permission smart contract module, operation smart contract module (Claim 2); data resource authorization operation center, data resource catalog subsystem, data product transaction subsystem, data circulation service subsystem, data transaction certificate subsystem, endogenous security gateway channel, data trusted circulation framework (Claim 3); data provider business system (Claim 4); data provider business system (Claim 5); and asset account module, data asset pledge application module, data asset pledge evaluation module, data asset pledge credit module, data asset certificate generation module, data asset certificate pledge module, data asset pledge management module (Claim 7).
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.
Claim Rejections - 35 USC § 112
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 1-10 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.
Claim limitations blockchain subsystem, data assetization space, and pledge financing subsystem (Claim 1); chain account module, account data identity module, account transaction depository module, account transaction certificate module, account asset certificate module, permission smart contract module, operation smart contract module (Claim 2); data resource authorization operation center, data resource catalog subsystem, data product transaction subsystem, data circulation service subsystem, data transaction certificate subsystem, endogenous security gateway channel, data trusted circulation framework (Claim 3); data provider business system (Claim 4); data provider business system (Claim 5); and asset account module, data asset pledge application module, data asset pledge evaluation module, data asset pledge credit module, data asset certificate generation module, data asset certificate pledge module, data asset pledge management module (Claim 7) 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 disclosure is devoid of any structure that performs the function in the claim, (ii) the structure described in the specification does not perform the entire function in the claim, or (iii) no association between the structure and the function can be found in the specification. Therefore, the claims are indefinite and are 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.
Further Claim 3 recites the limitation "the blockchain" at line 16. There is insufficient antecedent basis for this limitation in the claim. Claims 4-10 depend from Claim 3 and are rejected for this reason.
Further Claim 4 recites the limitations "the accessed data directory" at line 9 and “the smart contract” at page 3 line 19. There is insufficient antecedent basis for each of these limitations in the claim. Claims 5-9 depend from Claim 4 and are rejected for this reason.
Further Claim 8 recites the limitations "the corresponding account digital identity" at line 6, “the data asset pledge application” at line 9, “the permission smart contract” at line 10, “the custody privileges” at line 11, “the corresponding blockchain account” at lines 11-12, “the custody privilege verification” at line 13, “the transaction certificate” at line 18, “the data asset certificate smart contract” at the last two lines and “the corresponding data asset certificate smart contract” at page 7 lines 4-5 There is insufficient antecedent basis for each of these limitations in the claim. Claim 9 depends from Claim 8 and is rejected for this reason.
Further Claim 9 recites the limitation "the data product settlement smart contract" at line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over, Bradley (U.S. Pub. No. 2023/0071800) in view of Cella (U.S. Pub. No. 2022/0172206).
With respect to claim 1:
Bradley teaches:
a data assetization space, communicatively connected to the blockchain subsystem, wherein the data assetization space provides data assetization infrastructure and services (“Another embodiment provides a system for monetizing corporate and workplace user data. The system includes electronic devices executing a data application. The data application is configured to capture the user data associated with a user. The system also includes a data platform accessible by the electronic devices executing the data application through one or more networks. The data platform receives one or more data elements associated with the user data of the user from one of a plurality of sources, creates one or more tokens based on the user data, store the user data in a secure location, the user profile may deny access to the user data, or the user profile approves and vends access to user data and the data is exchanged to one of a plurality of parties utilizing the one or more tokens, and compensates the user for vending the user data, wherein the data is accessible from the secure location utilizing an indicator included in the one or more tokens” (Bradley Pgh. [0011]) and “In one embodiment, tokens may be created that track the data. The tokens may include information or metadata regarding the data and may point to a location where the data or physical item is stored. The token may be utilized to provide a key, identifier, pointer, indicator, or link required to securely access the data. As a result, the tokens may be created, communicated, bought, sold, and otherwise monetized through a blockchain system. The tokens may include a pointer that securely points to the data being monetized whether for a single user, organization, company, or multiple users. In another embodiment, the tokens themselves may include the data that is being monetized or otherwise exchanged” (Bradley Pgh. [0052]) and “Next, the system processes the data from numerous users (step 304). In one embodiment, the numerous users may be associated with the other user through familial relationships, friendship, organizations, business entities, or other associations. The user and numerous users may be bound by law/regulation, agreements, consent, or so forth. The data may be processed by adding, confirming, modifying, reconfirming, and authorizing data according to the user profile. In one embodiment, raw data may be converted into data objects. For example, user purchases may be created to specify that the user has children 10, 12, and 16 with interests in specified sports, gaming, mobile devices, and camping. The illustrative embodiments may utilize artificial intelligence or machine learning to perform processing and segmentation of the data during the data collection process. The data may be raw, partially processed, structured, or unstructured as utilized and monetized. The data herein described may be transformed from raw data into data objects, sets, and profiles tied to real world and digital assets” Bradley Pgh. [0116]); and
a pledge financing subsystem, communicatively connected to the blockchain subsystem, wherein the pledge financing subsystem provides services related to data asset pledge financing (“In other embodiments, the data may include digital profiles and digital assets that are monetized for data and asset tracking purposes. Data validation may be performed through user opt-ins that are identified and confirmed by the user. Token based compensation for consumer data allows for the direct control and monetization of their data (e.g., web data, application data, profiles, personal measurements, readings, etc.). Compensation may be performed through digital currencies, hard currencies, charitable contributions, and tax deductions. The earnings for a user may also be donated. Users may be rewarded for additional data uploads, updates, additions, amendments, surveys/questionnaire fulfillment, and so forth. The tokens may be utilized to pay a vendor or third party for a product, service, system, or data, secure a digital asset, tracking the life of an asset, share a stake in an asset or company, participate in an initial coin offering, receive a reward, maintaining and managing a digital asset, make a charitable contribution, or receive a tax deduction” (Bradley Pgh. [0016]) and “Next, the system vends the data (step 306). The tokens may grant access to the data. Full or partial tokens may be included in transactions. The tokens may be involved in transactions by advertisers, brands, corporations, and any entity who values or requires access to data to enhance their brand reached. Tokens may be passed from these parties to consumers/users in exchange for access to their data. The tokens may be distributed each time a user associated with a data object participates in sharing, updating, exchanging, or selling the data. The illustrative embodiments provide the ability to band multiple variable priced micro fractions of tokens for each single or new data point/object. The platform may also band a single higher value token to represent and monetize a large exchange of data (e.g., objects, sets, profiles, pool(s), etc.)” Bradley Pgh. [0118]); and
wherein the system performs data assetization and the data asset custody through the blockchain subsystem and the data assetization space, and carries out the data asset pledge financing through the blockchain subsystem and the pledge financing subsystem (“In other embodiments, one or more of the following may be implemented. Instructions are received from the user specifying how the data set is utilized and the user is compensated for sharing the tokens with one or more interested parties. Additional data elements may be requested in response to determining the data set is complete or incomplete utilizing questions, surveys, and a user profile associated with the user. The one or more data elements are authenticated as being associated with the user. The token is a blockchain crypto token and points to the data set for secure access by one or more interested parties. Distinct data sets are clustered into a data pool, the data pool is cross populated with distinct data sets, and the data pool is segmented to identify saturation, missing, incomplete, or nonrelevant data. A determination is made regarding the relevance of the data pool to one or more interested parties. Payments are received from one or more interested parties to access the data set utilizing the token. One or more users are compensated for granting access to their data sets. The interested parties represent advertisers, marketers, data brokers, consumer outreach, or businesses that desire access to the user data in the data set” (Bradley Pgh. [0014]) and “Next, the system provides payment for utilization of the data (step 308). The system may track the fluctuating value of the data points, sets, and pools (all referred to as “data”). The system may ensure that users receive optimal compensation and monetization of their data. User may be paid in hard currency (e.g., American Dollars, British Pounds, Mexican Pesos, etc.), digital currency, discounts, services, rebates, or so forth. The purchasers of the tokens/and associated data may offer users micro fractions of a tokens market value in exchange for access to advertiser desired data profile elements. The described systems and methods allow data to be monetized even if not fully utilized by the user (e.g., company, individual, entity, etc.). As a result, the user may be able to create new or enhanced revenue streams from latent data that may be collected as a byproduct of their business. The illustrative embodiments may provide a method of utilizing data that satisfies user, legal/privacy, and industry standards as well as securing the data against unwanted access or intrusions” Bradley Pgh. [0119]).
Bradley does not teach but Cella teaches:
a blockchain subsystem, providing a full-process on-chain services for data resources, data products, and data asset circulation and transactions, along with query and control services (“In one or more example embodiments, a knowledge distribution system for controlling rights related to digital knowledge is disclosed. The knowledge distribution system may be a blockchain for knowledge system that allows for storage of digital knowledge, buying and selling of digital knowledge, tokenization of digital knowledge, and/or reviewing/auditing of the digital knowledge via a cryptographically secure distributed ledger. Smart contracts may be implemented on the distributed ledger and controlling of rights to digital knowledge, transferring digital knowledge, and adherence of parties to agreements related to the digital knowledge. The blockchain for knowledge system can also facilitate third parties reviewing, auditing, or verifying information related to digital knowledge” (Cella Pgh. [0025]) and “The knowledge distribution system may include a ledger management system configured to create and manage a distributed ledger where the distributed ledger may be distributed over nodes of a network and may include blocks linked via cryptography. A smart contract system may be communication with the distributed ledger and may be configured to implement and manage a smart contract via the distributed ledger. The smart contract may be stored in the distributed ledger and may include a triggering event. The smart contract may be configured to perform a smart contract action with respect to the digital knowledge in response to an occurrence of the triggering event. The knowledge distribution system may be configured to receive from a user an instance of the digital knowledge. The digital knowledge may be tokenized such that the instance of the digital knowledge can be manipulated as a token on the distributed ledger. The tokenized digital knowledge may be stored via the distributed ledger. Commitments of parties to the smart contract may be processed. The knowledge distribution system may be configured to manage rights of control of and access to the tokenized digital knowledge according to the smart contract and manage the smart contract action in response to the triggering event” Cella Pgh. [0027]).
It would have been obvious to one of ordinary skill of the art to have modified Bradley’s teachings to incorporate Cella’s teachings, in order to “facilitate third parties reviewing, auditing, or verifying information related to digital knowledge” Cella Pgh. [0025]
Claims 2-10 are objected to as being dependent upon a rejected base claim, but would overcome rejections under 35 U.S.C. 103 if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARLA HUDSON whose telephone number is (571)272-1063. The examiner can normally be reached M-F 9:30 a.m. - 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.H./Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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