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 .
Claim Rejections - 35 USC §101
1. 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.
2. Claims 1-3, 5-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Subject Matter Eligibility Standard
3. The examiner contends that, under the judicial exceptions enumerated in the MPEP § 2106, to determine the patent-eligibility of an application, a two- part analysis has to be conducted.
Part 1: it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. See MPEP 2106.03.
Part 2A: Prong 1: (1) Determine if the claims are directed to an abstract idea or one of the judicial exceptions. Examples of abstract ideas referenced in Alice Corp. include:
1. Certain method of organizing human activity such as Fundamental Economic Practices, Commercial and Legal Interactions, or Managing Personal Behavior or Relationships or Interactions Between People.
2. A mental process.
3. Mathematical relationships/formulas.
Part 2A: Prong 2: determine if the claim as a whole integrates the judicial exception into a practical application.
Part 2B: determine if the claim provides an inventive concept.
Analysis
4. Under Step 1 of the analysis, it is found that the claim indeed recites a series of steps and therefore, is a process - one of the statutory categories.
Under Step 2A (Prong 1), using claim 1 as the representative claim, it is determined that apart from generic hardware and extra-solution activity discussed in Step 2A, Prong 2 below, the claim as a whole recites a method of organizing human activity and a mental process. For instance, the claim language “issuing…a service identifier associated with a first service among a plurality of services, the plurality of services being provided through different service providers; providing…a sealing request function associated with an item available within the first service and a submission request function associated with a token to the first service to which the service identifier is issued; receiving…a sealing request of a first user associated with the item through the sealing request function from the first service; requesting…the first service associated with scaling of the item in response to the sealing request; generating a token containing the service identifier and ownership of the first user associated with the item…; receiving…a submission request for the token of the first user through the submission request function from the first service; and processing…a transaction associated with the token in response to the submission request” is a fundamental economic practice. Fundamental economic practices fall into the category of certain methods of organizing human activity. Similarly, the recited steps can be performed in the human mind. Any steps that can be performed in the human mind fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
Under Step 2A (Prong 2), the examiner contends that the claim recites a combination of additional elements including “computer device; processor and blockchain network.” These additional elements, considered in the context of claim 1 as a whole, do not integrate the abstract idea into a practical application because they are merely being applied to the abstract idea and being used as tools in executing the claimed process. Thus, it is determined that claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception.
Under Step 2B, it is determined that, taken alone, the additional elements in the claim amounts to no more than mere instructions to apply the exception using a generic computer processor— that is, mere instructions to apply a generic computer processor to the abstract idea. The only hardware or additional elements beyond the abstract idea of claim 1 are the generically recited “computer device; processor and blockchain network.” The specification does not point to sufficient evidence that any of these components are anything other than well-understood, routine, and conventional hardware components or systems being used in their ordinary manner. The specification substantiates this, for instance at paras 0096. Thus, applying an exception using a generic computer processor cannot integrate a judicial exception into a practical application or provide an inventive concept. And looking at the limitations as an ordered combination of elements add nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Accordingly, the examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The examiner contends that the ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981).” A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.” Specifically, an improvement to an abstract idea cannot be a basis for determining that the claim recites significantly more than an abstract idea. Furthermore, relying on a “processor” to “perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OJP Techs., Inc. v. Amazon.com, Inc., 7788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, the examiner concludes that the claim does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. Note: The analysis above applies to all statutory categories of invention. As such, the independent claims otherwise styled as a computer-readable medium encoded to perform specific tasks, machine or manufacture, for example, would be subject to the same analysis. Furthermore, the limitations in the dependent claims are thus subject to the same analysis as in claim 1 and are rejected using the same rationale as in claim 1 above. More specifically, dependent claims 5, 7, 9-10, 13-14, 16 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 2-3, 6, 8, 15 recite additional elements, but these additional elements comprise the analyses of data, which is nothing but the automation of mental tasks. See Benson, Bancorp and Cyberphone. Also see Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”).
. Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-13 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mawson et al (Mawson hereinafter, US PAT: 2023/0074653).
Re claim: Mawson further discloses a peer-to-peer (P2P) transaction method of a computer device comprising at least one processor, the P2P transaction method comprising: issuing, by the at least one processor, a service identifier associated with a first service among a plurality of services the plurality of services being provided through different service providers (see fig.5A element 512, see para 0059); providing, by the at least one processor, a sealing request function associated with an item available within the first service and a submission request function associated with a token to the first service to which the service identifier is issued (see fig.5A element 511, see para 0059); receiving, by the at least one processor, a sealing request of a first user associated with the item through the sealing request function from the first service (see fig.5A; requesting, by the at least one processor, the first service associated with scaling of the item in response to the sealing request; generating a token containing the service identifier and ownership of the first user associated with the item through a blockchain network (see fig.5B element 526, see paras 0063-0064); receiving, by the at least one processor, a submission request for the token of the first user through the submission request function from the first service; and processing, by the at least one processor, a transaction associated with the token in response to the submission request (see fig.7, and paras 0063-0064).
Re claim 2. Mawson further discloses the P2P transaction method of claim 1, wherein the receiving of the sealing request comprises further receiving an item identifier of the item, and
the generating of the token comprises generating the token further containing the item identifier of the item received with the sealing request (see fig.5B element 526, fig.7, and paras 0063-0064)
Re claim 3. Mawson further discloses the P2P transaction method of claim 1, wherein the providing comprises further providing an unsealing request function associated with the token to the first service, and the P2P transaction method further comprises: receiving, by the at least one processor, an unsealing request of a second user having ownership of the token through the unsealing request function from the first service; retrieving, by the at least one processor, the token from an electronic wallet (E-wallet) of the second user in response to the unsealing request; and requesting the first service associated with unsealing of the item corresponding to the token (see fig.7, see paras 0063-0064).
Re claim 4. Mawson further discloses the P2P transaction method of claim 3, wherein the requesting comprises: moving the token from the E-wallet of the second user to another E-wallet, the moving the token associated with retrieval; and changing the token to be in an unusable state (see para 0063).
Re claim 5. Mawson further discloses the P2P transaction method of claim 3, wherein the second user is same user as the first user or is another user having purchased the token from the first user (see para 0090).
Re claim 7. Mawson further discloses the P2P transaction method of claim 1, wherein the issuing of the service identifier comprises further issuing a right to use software development kit (SDK) associated with implementation of the sealing request function and the submission request function to the first service (see para 0215).
Re claim 8. Mawson further discloses the P2P transaction method of claim 1, wherein the processing of the transaction comprises registering the token through a centralized exchange and processing the transaction of the token (see the abstract and paras 0049, 0062-0063).
Re claim 9. Mawson further discloses the P2P transaction method of claim 1, wherein the processing of the transaction comprises registering the token through a decentralized exchange implemented through at least some nodes among nodes included in the blockchain network, and
processing the transaction of the token (see paras 0062-0063)
Re claim 10. Mawson further discloses the P2P transaction method of claim 9, wherein the decentralized exchange processes the transaction of the token based on a signature on smart contract deployed to the at least some nodes (see para 0064)
Re claim 11. Mawson further discloses a non-transitory computer-readable recording medium storing instructions that, when executed by a processor, cause the processor to implement the method of claim 1 on the computer device (see para 0096).
Re claim 12. Claim 12 recites similar limitations to claim 1 and thus rejected using the same art and rationale as in claim 1, above.
Re claim 13. Mawson further discloses the computer device of claim 12, wherein the at least one processor causes the computer device to, further provide an unsealing request function associated with the token to the first service, receive an unsealing request of a second user having ownership of the token through the unsealing request function, the receiving the unsealing request from the first service, and retrieve the token from an electronic wallet (E-wallet) of the second user in response to the unsealing request and request the first service for unsealing of an item corresponding to the token (see fig.7, see paras 0063-0064).
Re claim 15. Mawson further discloses the computer device of claim 12, wherein the at least one processor causes the computer device to further issue a right to use software development kit (SDK) associated with implementation of the sealing request function and the submission request function to the first service (see para 0215).
Re claim 16. Mawson further discloses the computer device of claim 12, wherein, in processing the transaction, the at least one processor causes the computer device to register the token through a centralized exchange and process the transaction of the token, or to register the token through a decentralized exchange implemented through at least some nodes among nodes included in the blockchain network and process the transaction of the token (see paras 0062-0064).
Conclusion
While no art is cited against claims 6 and 14, these claims are rejected under 35 USC 101. Also, while claim 4 is not rejection under 35 USC 101, the claim is rejected under 35 USC 102. Any inquiry concerning this communication or earlier communications from the examiner should be directed to OJO O OYEBISI whose telephone number is (571)272-8298. The examiner can normally be reached on Monday-Friday, 9am-7pm. 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) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine Behncke can be reached at 571-272-8103. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OJO O OYEBISI/Primary Examiner, Art Unit 3695
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