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
This is the first office action on the merits in response to the application filed on 12/20/2024.
Claims 1-30 are currently pending and have been examined.
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 1-30 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 5-7, 10-18, 20-25, 27-29, 32-40, and 42-46 of copending Application No. 15/646,941 and 1-40 of copending Application No. 17/976,266. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-30 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.
Subject Matter Eligibility Criteria – Step 1:
Claims 1-15 and 30 are directed to a system and claims 16-29 are directed to a computer implemented method, and claim 30 directed to a system. Therefore, these claims fall within the four statutory categories of invention.
Subject Matter Eligibility Criteria – Step 2A – Prong One:
Regarding Prong One of Step 2A of the Alice/Mayo test, the claim limitations are to be analyzed to determine whether, under their broadest reasonable interpretation, they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. MPEP 2106.04(II)(A)(1). An “abstract idea” judicial exception is subject matter that falls within at least one of the following groups: a) certain methods of organizing human activity, b) mental processes, and/or c) mathematical concepts. MPEP 2106.04(a).
Representative independents claims 1, 16, and 30 include limitations that recite at least one abstract idea.
Claims 1, 16, and 30 are directed to the abstract idea of “a user interface operative to receive a proposed transaction record, comprising one of data indicative of data indicative of a rule by which subsequently received proposed transaction records must be validated or data indicative of an assertion, from a participant of a plurality of participants for storage in a new or existing substrate of a shared data structure stored in a non-transitory memory, the shared data structure including a first portion in which a set of core rules, including data validation rules used to initially operate the system, is stored and a second portion partitioned into one or more substrates for storing one or more transaction records at least one of which comprises data indicative of a previously validated rule and at least one other which comprises a validated assertion of one of the plurality of participants, wherein at least one rule of the set of core rules comprises a rule for communicating the proposed transaction record comprising data indicative of a rule to another participant of the plurality of participants via the electronic communications network and determining whether the other participant has approved of the rule, a rule for receiving the proposed transaction record comprising data indicative of a rule from another participant and determining whether to approve that rule, and a rule for validating the proposed transaction record, or a combination thereof; a network interface which facilitates communication of an electronic data transaction messages comprising the proposed transaction record via an electronic communications network to another system and/or receipt of another proposed transaction record from another system comprising one of data indicative of data indicative of a rule by which subsequently received proposed transaction records must be validated or data indicative of an assertion, from another participant of a plurality of participants for storage in a new or existing substrate of the shared data structure; a validation processor coupled with the user interface, the network interface and the non-transitory memory, and, upon receipt of a proposed transaction record via the user interface or via the network interface, the validation processor is configured to: communicate the proposed transaction record received via the user interface to at least a subset of the plurality of participants via the electronic communications network to solicit approval of the storage thereof in the shared data structure and determine that each of the at least the subset of the plurality of participants has provided the solicited approval; validate the other proposed transaction record received via the network interface in accordance with each of the set of core rules and at least a subset of the validated rules of the one or more stored transaction records; and store the proposed transaction record received via the user interface or network interface in the specified substrate in response to the determination that each of the at least the subset of the plurality of participants has provided the solicited approval or the validation of the proposed transaction record, wherein the one or more additional rules are subsequently used to validate subsequently received proposed transaction records; and wherein the validation processor enables determination of consensus among the plurality of participants without the plurality of participants having to communicate independently of the system.” Under its broadest reasonable interpretation, this claim is directed to managing interactions amongst participants using rule-based validation and approval, and determining consensus on transaction records and hence falls under organizing human activity (i.e., as fundamental economic practices).
Dependent Claims:
Claims 2 and 17 recites: wherein the received proposed transaction record includes data indicative of one or more additional rules by which the validation processor must validate subsequently received proposed transaction records in addition to each of the set of core rules and the subset of the validated rules; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 3 and 18 recites: wherein, upon receipt by the validation processor of another proposed transaction record for storage in the shared data structure from the participant via the user interface or from another participant via the network interface, the received other proposed transaction record including data indicative of a delegation rule, the validation processor is further configured to: validate the received other proposed transaction record in accordance with each of the set of core rules and at least a subset of the validated rules of the one or more stored transaction records; and apply the delegation rule and store the received other proposed transaction record in a specified substrate of the shared data structure in response to the validation; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 4 and 19 recites: wherein the delegation rule specifies a modification to one or more other substrates based upon validation of one or more proposed transaction records into the substrate comprising the delegation rule and/or another substrate; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 5 recites: wherein the non-transitory memory comprises a portion that is located remote from the validation processor, the validation processor being coupled with the remote portion of the non-transitory memory via the network interface and the electronic communications network; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 6 and 20 recites: wherein the shared data structure comprises a blockchain structure; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 7 and 21 recites: wherein the received proposed transaction record is digitally signed by the participant from which the received proposed transaction record originated; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 8 and 22 recites: wherein a content of the received proposed transaction record is encrypted; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 9 and 23 recites: wherein the proposed transaction record received via the user interface or the network interface comprises data indicative of a data transformation function, and further wherein the validation processor is configured to transform at least a portion of the received proposed transaction record in accordance with each of at least a subset of the validated data transformation functions of the one or more stored transaction records, wherein the validation processor further stores the transformed received proposed transaction record in the shared data structure when validated; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 10 and 24 recites: wherein a substrate of the one or more substrates is accessible only to a subset of the plurality of participants, the remainder of the plurality of participants not having access thereto; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 11 recites: wherein each of the one or more substrates stores different sets of associated transaction records, each set comprising one of transaction records comprising data indicative of assertions, transaction records comprising data indicative of assertions of one participant or transaction records comprising data indicative of rules; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 12 recites: wherein the one or more substrates comprises a hierarchical arrangement comprising a Merkle tree; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 13 and 27 recites: wherein at least one of the set of core rules comprises a rule for communicating an invitation to participate to another participant via the electronic communications network and determining whether the other participant has accepted or rejected the invitation, a rule for receiving an invitation to participate from another participant and determining whether to accept or reject the invitation, or a combination thereof; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claims 14 and 28 recites: wherein at least one of the set of core rules comprises a rule for determining which of a subset of the plurality of participants is a leader participant; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 15 recites: wherein at least one of the set of core rules comprises a rule for validating the received proposed transaction record including solicitation of approval from at least a subset of the plurality of participants, a proof of work, a federated agreement, a Practical Byzantine Fault Tolerance, a RAFT or a combination thereof; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 25 recites: wherein each of the one or more substrates stores different sets of associated transaction records; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 26 recites: wherein the one or more substrates comprises a hierarchical arrangement; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Claim 29 recites: wherein at least one of the set of core rules comprises a rule for validating the proposed transaction record; further describes the abstract idea of organizing human activity (i.e., as fundamental economic practices).
Subject Matter Eligibility Criteria – Step 2A – Prong Two:
Claims 1, 16, and 30 recites a user interface, network interface, validation processor, non-transitory memory and shared data structure as additional elements to the judicial exception in the preamble. Viewed individually and in combination, this additional element to the identified judicial exception of Step 2A.1, amounts to no more than mere instructions for managing interactions amongst participants using rule-based validation and approval, and determining consensus on transaction records on a generic computer. Therefore, at Step 2A.2, these additional elements do not act in combination to integrate the abstract idea into a practical application. The additional elements of claims 1, 16, and 30 considered both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the additional element of a generic computer does no more than “[s]imply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.” See MPEP 2106.05 (citing to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225 (2014)).
Therefore claims 1, 16, and 30 is found ineligible under 35 U.S.C. 101.
Step 2B:
Viewed as a whole, instructions/method claims recite the concept of “organizing human activity” (i.e., as fundamental economic practices) managing interactions amongst participants using rule-based validation and approval, and determining consensus on transaction records are performed by generic computer conponents. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a generic computer is 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.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: The independent claim 1 contains allowable subject matter. As per claim 1, the closest prior art of record, United States Patent Application No. 9298806 to Vessenes teaches analyzing transactions in a distributed ledger. The system may identify transactions where addresses and/or groupings of addresses are co-spent together and determine whether the addresses and/or groupings of addresses should be associated with each other. Addresses may be associated with each other in a grouping of addresses and/or potential grouping of addresses because they likely belong to the same entity. The system may identify different strengths and/or confidence levels of groupings of addresses and/or potential groupings of addresses. Strong groupings, relatively strong potential groupings, and/or other groupings of addresses, potential groupings of addresses, and/or groups may be grouped, associated, analyzed, and/or presented together. As such, the system may provide a comprehensive analysis of addresses associated with a given entity. In addition, United States Patent Application No. 7398237 to Agostini teaches checking whether customer orders for transactions of financial instruments conform to business logic rules. Executable rule files are created and stored in a repository. New executable rule files can be created by scripting the new business logic rules in a script file which is converted into a corresponding source code file written in a computer programming language. The source code file is compiled to create an individual executable rule file. A rule selection repository contains identification of groups of selected executable rule files. The invention determines the category of the customer order and reads, from the rule selection repository, a group of executable rule files that correspond to the identified category of the customer order. The selected executable rule files are executed to check the conformance of the customer order. Execution results are stored in a status repository for subsequent retrieval and analysis.
The closest prior art of record fail to teach or suggest, in the context of the ordered combination of the claim, the shared data structure including a first portion in which a set of core rules, including data validation rules used to initially operate the system, is stored and a second portion partitioned into one or more substrates for storing one or more transaction records at least one of which comprises data indicative of a previously validated rule and at least one other which comprises a validated assertion of one of the plurality of participants, wherein at least one rule of the set of core rules comprises a rule for communicating the proposed transaction record comprising data indicative of a rule to another participant of the plurality of participants via the electronic communications network and determining whether the other participant has approved of the rule, a rule for receiving the proposed transaction record comprising data indicative of a rule from another participant and determining whether to approve that rule, and a rule for validating the proposed transaction record, or a combination thereof.
Claims 2-15 are dependent on claim 1 and contain allowable subject matter for the same reasons stated above. In addition, claim 16 is analogous to claim 1, and thus contains allowable subject matter for the same reasons stated above. Claims 17-29 are dependent on claim 16 and contain allowable subject matter for the same reasons stated above. In addition, claim 30 is analogous to claim 1, and thus contains allowable subject matter for the same reasons stated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Davida L. King whose telephone number is (571) 272-4724. The examiner can normally be reached M-F 8am-5pm.
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/D.L.K./Examiner, Art Unit 3699