DETAILED ACTION
This office action is in response to the application filed on 12/18/2024. Claim(s) 1-20 is/are pending and are examined.
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 .
Priority/Benefit
Applicant’s priority claim is hereby acknowledged of CON of 17/427,896 08/02/2021 PAT 12200137, 17/427,896 is a 371 of PCT/US20/16451 02/03/2020, PCT/US20/16451 has PRO 62/801,062 02/04/2019, which papers have been placed of record in the file.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement(s) submitted by applicant on 12/18/2024 has/have been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
Examiner’s Note – Allowable Subject Matter
Claims 1-20 overcome the prior art and would otherwise be allowable if made to overcome the rejections under 35 USC 101 and double patenting below.
The closest prior art is Liu et al. (US 2021/0357233 A1) ¶ 130-134 which teaches calculating a hash rate and determining that the rate is abnormal based on a threshold which is different than the instant claims which states, “receiving, by the node, a value reported by a mining pool for the miner client; and comparing, by the node, the value reported by the mining pool against the computed hash rate to determine whether to conduct reporting dishonesty to the miner client”. The remaining prior art typically deals with the hash rate of the mining pool, not the individual miner.
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.
Claim(s) 1-2, 11-12, and 15-16 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do 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.
The analysis is guided by the Supreme Court's two-step framework, described in Mayo and Alice (Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)).Step 1: Is/Are the claim(s) directed to a process, machine, manufacture, or composition of matter?Answer: Yes.Step 2A Prong 1: Is/Are the claim(s) directed to a law of nature, a natural phenomenon, or an abstract idea, i.e., judicially recognized exceptions (both individually and as an ordered combination)?
Answer: Yes, the claim(s) are directed to the mental process of “accessing, by a node in a digital network, packet communications of a mining protocol from a miner client; measuring, by the node, a hash rate of the miner client based on the packet communications to form a computed hash rate for the miner client; and comparing, by the node, the value reported by the mining pool against the computed hash rate to determine whether to conduct reporting dishonesty to the miner client” beyond the scope of § 101. A similar analysis applies to independent claims 13 and 15.
Step 2A Prong 2: Is/Are the claim(s) implemented into a practical application?
Answer: No, the limitations of the claim as drafted, is a process that, under its broadest reasonable interpretation, covers implementation of the mathematical concepts which can be performed by the mind using pencil and paper but for the recitation of generic computer components (i.e., “network transceiver”, “memory” and a “processor”). The claims recite extra solution activity including the ingestion of data (i.e., receiving) by a generic computer. This judicial exception is not integrated into a practical application. Extra solution activity of ingesting data on a generic computer amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.Step 2B: Does/Do the claim(s) recite additional elements that when analyzed individually and in ordered combinations amount to significantly more than the judicial exception(s)?
Answer: No, the claim(s) (both individually and as an ordered combinations) does/do not transform the nature of the claim(s) into a patent-eligible application of the abstract idea (i.e., significantly more than the abstract idea implemented using generic computer components). The claim does 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 to perform the processing steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Therefore, claims are not patent eligible.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,200,137. Although the claims at issue are not identical in form, they are not patentably distinct from each other. In particular, the patented claims anticipate the instant claims.
Conclusion
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen T Gundry whose telephone number is (571) 270-0507. The examiner can normally be reached Monday-Friday 9AM-5PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at (571) 270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435
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