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 .
Response to Arguments
Applicant's arguments filed on 05/18/2026 have been fully considered but they are not persuasive.
With respect to U.S.C. 101 Applicant is of the opinion that claims are not directed to abstract idea. The claim limitations define concreate, distributed-computing workflow not an abstract idea. Claim also don’t recite mental process because claimed operation require machine-based interoperability among multiple services. Claims are analogous to cases Core Wireless licensing S.A.R.L. v LG Electronics inc (Fed. Cir. 2018) involving improvements to computer operation. Claims are integrated into a practical application as claims recite a technical architecture that changes how a distributed computing environment operates and improves interoperability, scalability and system consistency. Specification discloses service-agnostic policy enforcement across multiple computing services having different APIs and data schemas by converting non-standardized request data into a standardized data package. Claims are similar to USPTO Example 40. Claims amount to significant more than an abstract idea. Claims improves the functioning of the system as a whole. Further, Examiner has not provided evidence that this specific combination of elements particularly the integration of schema normalization, orchestrator-driven control flow, centralized policy enforcement and token-based execution across heterogeneous services was well-understood, routine or conventional at the time of filing. However, Examiner respectfully disagrees.
The claims recite digital right management which is an abstract idea. Specifically, the claims recite “receiving…first request…; converting…information into a data package…; receiving…a second request…; invoking…to validate the second request…; identifying… one or more policies…; based on determining that plurality of attributes satisfied… generating the license token….; and executing at least one of: transmitting…or transmitting….token”, 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 for receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token which is a process that deals with commercial or legal interactions because claims are directed to preventing access to the content which protect legal rights of creator of the content. Accordingly, the claims recite an abstract idea.
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, computing environment, server, API, control engine, processor, memory, and non-transitory computer-readable medium merely use a computer as a tool to perform 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. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of digital right management. 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
The applicant’s characterization of the claim as “concreate, distributed-computing workflow” does not overcome the rejection because the architecture being concreate and distributed is not the invention the underline activity is. The claims involve a series of steps for receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token which is a process that deals with commercial or legal interactions because claims are directed to preventing access to the content which protect legal rights of creator of the content.
With respect to “Claim also don’t recite mental process because claimed operation require machine-based interoperability among multiple services”. Claims are directed to decision making by analyzing data which is an abstract idea and deals with mental process. The recitation of “multiple services” and “machine-based interoperability” describes the environment in which the abstract idea is implemented, not a transformation of the idea itself. Receiving a request, checking it against a policy and issuing a token is the kind of evaluation a human gatekeeper performs, routing that same evaluation through several networked components changes its scale and speed, not its character.
Claim do not recite improved user interfaces as in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018). Core Wireless claimed “a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer.” /d. at 1363. Whereas “prior art interfaces required users to drill down through many layers to get to desired data or functionality,” the user interface in Core Wireless improved the efficiency of electronic devices with small screens by grouping “a limited list of common functions and commonly accessed stored data” to be accessed directly from the main menu. Here, claim involve a series of steps for receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token which is a process that deals with commercial or legal interactions because claims are directed to preventing access to the content which protect legal rights of creator of the content.
With respect to “Claims are integrated into a practical application as claims recite a technical architecture that changes how a distributed computing environment operates and improves interoperability, scalability and system consistency” These arguments are not persuasive because the asserted improvements are not reflected in the claim language. MPEP 2106.05(a) require that an alleged technical improvement be reflected in what is actually claimed, not merely asserted in the specification or remarks. The claim recites only the generic sequence of receiving, formatting, receiving, validating, generating and transmitting. No limitation recites: what about the architecture, changes how distributed components operate i.e. no specific data structure, synchronization protocol, or communication scheme is claimed, how scalability is achieved and how system consistency is achieved. 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. Applicant must take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016).
Claims are not similar to Example 40, because Example 40 is directed to a network technology where method limits collection of additional NetFlow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring. However, the applicant’s claims recite receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token which is a process that deals with commercial or legal interactions because claims are directed to preventing access to the content which protect legal rights of creator of the content.
Examiner is unable to locate any language related to operations are well-understood, routine or conventional. Therefore, the arguments are moot with respect to Berkheimer.
With respect to U.S.C 112(b) rejection, applicant is of the opinion that “The claims expressly recite a system comprising a processor and memory storing instructions that, when executed, cause the system to perform the recited operations involving the computing environment, server, orchestrator, and policy- based controls engine. A person of ordinary skill in the art would understand that these elements are components or logical entities operating within, or in association with, the claimed system, as part of a distributed computing architecture.” However, examiner respectfully disagrees.
Claims recite “a processor and memory storing instructions that when executed by the processor” and “when executed by a processor”. It is unclear to one of the ordinary skills in the art that a single processor i.e. “a processor” is correspond to computing environment, a server, an orchestrator or a policy-based control engine.
Status of Claims
Claims 1-20 have been examined.
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 1-20 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 1-7 are directed to a method, claims 8-14 are directed to a system and claims 15-20 are directed to a non-transitory computer-readable medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite digital right management which is an abstract idea. Specifically, the claims recite “receiving…first request…; converting…information into a data package…; receiving…a second request…; invoking…to validate the second request…; identifying… one or more policies…; based on determining that plurality of attributes satisfied… generating the license token….; and executing at least one of: transmitting…or transmitting….token”, 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 for receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token which is a process that deals with commercial or legal interactions because claims are directed to preventing access to the content which protect legal rights of creator of the content. Accordingly, the claims recite an abstract idea. (See MPEP 2106.05)
Additionally, claims are directed to decision making by analyzing data which is an abstract idea and deals with mental process. Therefore, the claim is directed to an abstract idea, as it has been held that a combination of abstract ideas, in this case mental processes 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, computing environment, server, API, orchestrator, control engine, processor, memory, and non-transitory computer-readable medium merely use a computer as a tool to perform an abstract idea. Specifically, computing environment, server, API, orchestrator, control engine, processor, memory, and non-transitory computer-readable medium perform the steps of receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token. 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 the computing environment, server, API, orchestrator, control engine, processor, memory, and non-transitory computer-readable medium, to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of digital right management. As discussed above, taking the claim elements separately, computing environment, server, API, orchestrator, control engine, processor, memory, and non-transitory computer-readable medium perform the steps of receiving first request, formatting the first request, receiving a second request for license token, validating the second request based on the applicable policies, generating the license token and transmitting the generated token. 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 digital right management. 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 digital right management. Specifically, claims 2-6, 9-13 and 16-20 describing first and second request, sending and receiving further requests and further describing computational constraint expressions which are part of the abstract idea, claims 7 and 14 recite creating record which is also part of the abstract idea of digital right management. 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 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 8-20 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 8 recites “a processor and memory storing instructions that when executed by the processor”. It is unclear to one of the ordinary skills in the art that a single processor i.e. “a processor” is correspond to computing environment, a server, an orchestrator or a policy-based control engine. (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”
Claim 15 recites “a non-transitory computer-readable medium storing instructions that when executed by a processor of a system for a computing environment cause the system to: …” It is unclear to one of the ordinary skills in the art that a single processor i.e. “a processor” is correspond to computing environment, a server, an orchestrator or a policy-based control engine. (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 9-14 and 16-20 are also rejected as each depends from claims 8 and 15 respectively.
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.
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/ZESHAN QAYYUM/Primary Examiner, Art Unit 3697
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