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 .
Acknowledgements
This is a first office action on the merits in response to the application filed December 2, 2024.
Claims 2-21 are pending in the application.
Claims 2-21 are examined below.
Based on a comparison of the PGPub US 2025/0200567 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Priority
This application is a continuation application. See MPEP § 201.07. In accordance with MPEP § 609.02 A. 2 and MPEP § 2001.06(b) (last paragraph), the examiner has reviewed and considered the prior art cited in the prior-filed application(s). Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the prior-filed application(s) are now considered cited or ‘of record’ in this application. Additionally, applicant is reminded that a listing of the information cited or ‘of record’ in the prior-filed application(s) need not be resubmitted in this application unless applicant desires the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, applicant is reminded that the prosecution history of the prior-filed application(s) is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 2-21 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 2-21, the claimed invention is directed to an abstract idea without significantly more. Representative claim 9 recites providing an interface to users, receiving input specifying terms for a contract, identifying available content from a resource that is usable in the contract, generating the contract, monitoring the resource, and deploying the contract, which constitutes a certain method of organizing human activity (specifically, a commercial or legal interaction) or mental process. Accordingly, the claim recites an abstract idea. This judicial exception is not integrated into a practical application because the additional elements beyond the abstract idea simply link the abstract idea to a particular technological environment (blockchain). Because the abstract idea is not integrated into a practical application, claim 9 is “directed to” an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above represent only well-understood, routine, and conventional technology (or placeholders for such) when compared with the court decisions listed in MPEP § 2106.05(d). Viewing the additional elements as a combination does not add anything further than the individual elements. Therefore, the additional elements in the claim are not sufficient to amount to an inventive concept. Because claim 9 is directed to an abstract idea and fails to recite an inventive concept, it is patent ineligible.
Independent claims 1 and 15 contain limitations similar to claim 9 and are therefore rejected using the same rationale.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101. The additional limitations added by these claims fail to either integrate the claims into a practical application or add an inventive concept, because they serve to further narrow the abstract idea without integrating it into a practical application (claims 3, 5-8, 10, 12-14, 16, 17, 20, and 21) and/or add additional elements that simply further link to a particular technological environment (claims 4, 11, 18). Viewing the additional elements of the dependent claims as a combination does not add anything further than the individual elements. Therefore, the dependent claims neither practically integrate the abstract idea nor constitute an inventive concept, and these claims are also rejected as patent ineligible.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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 5 and 12 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claims 5 and 12, the term "user understandable" is a subjective term which renders the claim indefinite, because it has a different meaning for different users. The term "user understandable" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of understandability nor the particular user or group of users doing the understanding, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of determining statutory eligibility and comparison with the prior art, claims 5 and 12 are interpreted similarly to claims 6 and 13.
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 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 statute.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The following is a quotation of 35 U.S.C. 103(a) (pre-AIA ) which forms the basis for all obviousness rejections set forth in this office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2-21, as understood by the examiner, are rejected under 35 U.S.C. 103 as being unpatentable over Kelly (US 2019/0334726 A1) in view of Alwar (US 2018/0191503 A1).
Kelly discloses as follows:
Claim
Limitation
Kelly
2,9,15
providing a user interface to one or more of a plurality of users for generating smart contracts
See challenge interface 300 in Fig. 3 and associated text
2,9,15
receiving input specifying terms for a smart contract to be deployed on a blockchain
"Challenge interface 300 may enable users to define challenge and transmit the challenges to one or more other users" C13
2,9,15
using at least a portion of the identified content, generating, without further input from the plurality of users, the smart contract
"challenge component 114 may be configured to generate a set of instructions that codify a particular objective of a particular challenge into a particular smart contract" C10
2,9,19
deploying the smart contract to the blockchain
"smart contract 15a may be recorded on blockchain 111b as soon as one or more (or all) participating users agree and/or accept a particular challenge as defined in smart contract 15a (or as defined in a transaction to smart contract 15a)" C14
3,10,16
wherein the specified terms include … identifying information for one or more users associated with the smart contract
a section or field for user selection 303, Fig. 3 and associated text
5,12
wherein the specified terms are user understandable terms input by one or more users into the user interface
See challenge interface 300
6,13,17
wherein the specified terms are not input as computer code or in a programming language
7,20
wherein the smart contract is configured to monitor the web resource and executes an electronic exchange on the blockchain
"The smart contract, upon execution (i) obtains the challenge related information pertaining to the challenge between the first user and the second user, (ii) determines the one or more results of the challenge, and (iii) effectuates the distribution of the stake for the challenge" C18
8,14,21
triggering execution of one or more electronic exchanges on the blockchain based on one or more current values of the monitored web resource
Kelly fails to explicitly disclose but Alwar teaches:
Claim
Limitation
Alwar
2,9,15
based on the specified terms, identifying available content from a web resource that is usable in the smart contract
"A determination may be made at 4117 whether the contract includes external inputs. If so, oracles for such external inputs may be determined at 4121. In one implementation, oracles associated with the smart contract may be determined based on the values (e.g., specified by the participant) associated with Oracle Source fields of a smart contract generator GUI" [0382]. See also, "Oracle Source" in Fig. 43.
3,10,16
wherein the specified terms include identifying information of the web resource
See "Oracle Source" in Fig. 43
It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Kelly to include the oracle source selection of Alwar in order to achieve the predictable result of increasing user options and increasing user confidence regarding the source of the data.
Regarding claims 4, 11, and 18, Kelly fails to explicitly disclose wherein the smart contract is generated in a programming language of a blockchain platform associated with the blockchain on which the smart contract is to be deployed, however, there are only a limited number of known ways to program blockchains (e.g., with an associated language or with another language not associated with the blockchain). Therefore, this limitation would have been obvious because “a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc. 82 USPQ2d 1385, 1397.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bean (US 202/00211109 A1) discloses a crypto lending system that includes a GUI allowing a user to select an oracle to be monitored by a smart contract (see [0015] and Fig. 7).
Cella (US 2023/0222531 A1) discloses a smart contract configuration system.
Koch (US 11,260,304 B1) discloses a system for provable fairness in online gaming using smart contracts that obtain determined results of challenges and distribute stakes based on the determined results.
Margolis (US 11,669,830 B2) discloses a distributed ledger backed stock transaction system.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-21 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of US Patent No. 12,182,807. Although the conflicting claims are not identical, they are not patentably distinct from each other because they differ merely in terminology, nonfunctional descriptive material, intended use, etc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 . The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (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 an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
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