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
Claims 1-19 have been examined.
Claim Objections
Claims 1 and 17 are objected to because of the following informalities: Claims recite “decrypting by the requestor”. The broader reasonable interpretation of “requestor” is human. Therefore, the claim is unclear requestor is a human or device.
Claim 9 recites “a plurality of financial institution nodes couple with the couple with a distributed ledger”. There is a typographic error.
Appropriate correction is required.
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 1-19 are rejected under 35 U.S.C. 101 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.
In the instance case, claims 1-8 are directed to a method, claims 9-16 are directed to an apparatus and claims 17-19 are directed to a tangible non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
The claims are directed to storing data record and providing the data record based on query which is an abstract idea. Specifically, the claims recite “associating a plurality of public keys…; storing service record…; receiving a query for service record…; aggregating service records…; providing the aggregated service records…; and decrypting…at least portion of records…” which is grouped within the ”certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps storing data record, receiving a query for the record, aggregating and providing the queried data record and decrypting the record which is a process that deals with commercial or legal interactions because accessing data record is a legal interactions including business relations or legal obligations. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
Additionally, claims are directed to decision making by analyzing data and cryptographic operations which is an abstract idea and deals with mental process and a mathematical concept respectively. Therefore, the claims are directed to an abstract idea, as it has been held that a combination of abstract ideas, in this case mental processes, mathematical concept and certain methods of organizing human activity, is still an abstract idea. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as, distributed ledger, automated banking machines, a memory, plurality of nodes and a processor merely use a computer as a tool to perform an abstract idea. Specifically, distributed ledger, automated banking machines, a memory, plurality of nodes and a processor perform the steps storing data record, receiving a query for the record, aggregating and providing the queried data record and decrypting the record. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements of distributed ledger, automated banking machines, a memory, plurality of nodes and a processor, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of storing data record and providing the data record based on query. As discussed above, taking the claim elements separately, distributed ledger, automated banking machines, a memory, plurality of nodes and a processor perform the steps of storing data record, receiving a query for the record, aggregating and providing the queried data record and decrypting the record. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of storing data record and providing the data record based on query. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims further describe the abstract idea of storing data record and providing the data record based on query. Specifically, claims 2-8, 10-16 and 18-19 describing service record and aggregating the service record which is part of the abstract idea of storing data record and providing the data record based on query. 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. Therefore, the dependent claims are also not patent eligible.
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 9-16 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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: “distributed ledger is operable to store”; “the requestor node is operable to decrypt” in claim 9.
Because these claim limitations are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not being interpreted to cover only the corresponding structure, material, or acts 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.
Claim 9-16 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.
With respect to claim 9, “distributed ledger is operable to store”; “the requestor node is operable to decrypt” invoke 112(f) as described above. The claim is rejected as while the specification, indeed, discloses the recited terms, the specification fails to disclose the corresponding structure, material, or acts for performing the entire claimed function.
Claim 9 directed to an apparatus comprising a memory with distributed ledger…; a plurality of financial institution nodes…; distributed ledger logic… and the requestor node…” However, specification is silent with respect to any apparatus comprises all these elements such as a memory with distributed ledger, a plurality of financial institution nodes, distributed ledger logic, and the requestor node.
Specification discloses: FIG. 1 is a block diagram illustrating an example of a system 100 using a distributed ledger to maintain a chain of custody. In an example embodiment, physical automated teller machine (ATM) modules may move between facilities in the supply chain as illustrated in Fig. 1. Facilities (or node) in the supply chain have logic that acts as a node in a semi-private peer-to-peer network. “Logic”, as used herein, includes but is not limited to hardware, firmware, software and/or combinations of each to perform a function(s) or an action(s), and/or to cause a function or action from another component. For example, based on a desired application or need, logic may include a software controlled microprocessor, discrete logic such as an application specific integrated circuit (ASIC), a programmable/programmed logic device, memory device containing instructions, or the like, or combinational logic embodied in hardware. Logic may also be fully embodied as software that performs the desired functionality when executed by a processor (See paragraph 0015) but does not describe an apparatus comprises all these elements such as a memory with distributed ledger, a plurality of financial institution nodes, distributed ledger logic, and the requestor node.
Claims 10-16 are also rejected as each depends from claim 9.
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 9-19 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.
With respect to claim 9, the limitations “distributed ledger is operable to store”; “the requestor node is operable to decrypt” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder without reciting sufficient structure to achieve the function.
Further, each limitation is not modified by sufficient structure for performing the claimed function. 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. 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.
Claim 17 recites “a tangible, non-transitory computer readable medium with instructions stored thereon for execution by a processor and when executed are operable to: associated…; store…; receive…; aggregate service…; provide…; and decrypting by the requestor…” It is unclear to one of the ordinary skill in the art that “the requestor is part of the processor that execute the instructions stored on non-transitory computer readable medium or separate entity. (In re Zletz, 893 F.2d 319, 13USPQ2d 1320 (Fed. Cir. 1989), MPEP 2173.02 (III)(B)) which states “Examiners should bear in mind that "[a]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process”
Claims 10-16 and 18-19 also rejected as each depends from claims 9 and 17 respectively.
Statement Regarding Prior Art for claims 1-19
Regarding claims 1, 9 and 17 Kawamoto (US 20010023487) discloses: associating a plurality of public keys associated with a corresponding plurality of pseudo identifiers (i.e. user ID) (See paragraph 0044); storing service records, where a pseudo identifier for the source of the record and at least a portion of the record is encrypted with a private key associated with the pseudo identifier (See paragraph 0044); decrypting at least a portion of records for where the requestor has a public key matching the pseudo identifier of the source (See paragraph 0044); Marshall (US 10623408) discloses: receiving a query for service records (i.e. content) from a requestor; aggregating service records matching the query; providing the aggregated service records matching the query to the requestor (See Abstract); Moscaritolo (US 8954740) discloses retrieving public key based on identifier matching (See column 2 lines 7-25).
However, prior art does not disclose, neither singly nor in combination all of the specific combination of claims limitations which includes: associating a plurality of public keys associated with a corresponding plurality of pseudo identifiers; storing service records for components of automated banking machines in the distributed ledger, where a pseudo identifier for a source of a record is stored as the source of the record and at least a portion of the record is encrypted with a private key associated with the pseudo identifier; receiving a query for service records for a component from a requestor; aggregating service records matching the query; providing the aggregated service records matching the query to the requestor; and decrypting, by the requestor, at least a portion of records matching the query for where the requestor has a public key matching the pseudo identifier of the source.
Conclusion
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697