DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The present application claims priority to provisional Application Serial No. 63/627,003, filed 30 January 2024.
Information Disclosure Statement
The listing of references in the specification (see paragraphs 0025-0029) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because they include informalities. In Figures 2, 3, 5, 7, 9A-9E, and 10, large portions of the drawings are unreadable due to the small font size, non-black color/shading, or both. See 37 CFR 1.84(a)(1), requiring the use of black ink or its equivalent, and 1.84(p)(3), where numbers and letters must be at least 1/8 inch in height. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
A substitute specification was received on 21 August 2025 and has been entered.
The attempt to incorporate subject matter into this application by reference to certain publications (see paragraphs 0024-0029) is ineffective because the attempted incorporation does not comply with the requirements of 37 CFR 1.57(c)-(e). It does not explicitly use the terms “incorporate” or “reference”, it does not clearly identify the referenced publications, and it appears to attempt to incorporate essential material in a manner other than that provided in 37 CFR 1.57(d). See also MPEP § 608.01(p).
The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(c), (d), or (e). If the incorporated material is relied upon to meet any outstanding objection, rejection, or other requirement imposed by the Office, the correction must be made within any time period set by the Office for responding to the objection, rejection, or other requirement for the incorporation to be effective. Compliance will not be held in abeyance with respect to responding to the objection, rejection, or other requirement for the incorporation to be effective. In no case may the correction be made later than the close of prosecution as defined in 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.
Any correction inserting material by amendment that was previously incorporated by reference must be accompanied by a statement that the material being inserted is the material incorporated by reference and the amendment contains no new matter. 37 CFR 1.57(g).
The disclosure is objected to because of the following informalities:
The specification includes minor grammatical and other errors. For example, in paragraph 0004, line 8, “enable” should read “enables” for agreement with the subject “method”. In paragraph 0009, line 4, “mainly include” should read “mainly includes” for agreement with “disclosure”. In paragraph 0012, the distinctions between the various list items are not clear; it appears that list items should be separated by semicolons when the list items include internal commas. In paragraph 0022, reference is made to controlling a display as a step of method 100, but this is not shown in Figure 1. On page 11, in the non-numbered paragraph, items 2-9 are sentence fragments which are not in clear parallel structure with item 1.
Although paragraph 0008 has been amended to provide a brief description of Figures 2-10, these figures are not mentioned in the detailed description.
Appropriate correction is required. Applicant’s cooperation is requested in correcting any other errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities:
In Claim 1, line 2, the abbreviation “ADX” should be written out in full the first time it appears.
In Claim 1, line 3, it appears that “addresses” should read “address”.
Appropriate correction is required.
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 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter.
Claim 1 recites a system that comprises an ADX platform. The specification states that all elements described in the present application could be implemented in software, hardware, or any combination thereof (see paragraph 0005), thus the platform itself could be implemented as a software process per se. Because the platform is the only recited element of the system, the claimed system therefore encompasses embodiments which constitute software per se. Computer software does not fall within any of the statutory classes of invention. See Gottschalk v. Benson, 409 U.S. 63, 72, 175 USPQ 673, 676-77 (1972). Software does not constitute a statutory process, because the software itself is not a series of steps that are performed. Software is also not a machine, article, or composition of matter. When a claim encompasses both statutory and non-statutory subject matter, the claim as a whole is considered to be directed to non-statutory subject matter. See MPEP § 2106(II).
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Claim 1 recites a system that comprises an ADX platform having a secure data-sharing framework through data carnets facilitating transparent agreements for data exchange, where the platform performs secure computation and generational data creation. The data carnets and data exchange agreements are described in the specification as digital contracts (see paragraph 0015) which amount to commercial interactions, which constitute methods of organizing human activity, as per MPEP § 2106.04(a)(2) II.B. Certain methods of organizing human activity are one of the groupings of abstract ideas set forth in MPEP § 2106.04(a)(2). Abstract ideas are judicial exceptions as per MPEP § 2106.04(I). See also Alice Corporation Pty. Ltd. v. CLS Bank, International, et al, 573 U.S. 208, 110USPQ2d 1976 (2014).
This judicial exception is not integrated into a practical application because the claim does not clearly recite any functions of how the data is exchanged or any subsequent use of the generational data. There is nothing that would result in a particular transformation, as per MPEP § 2106.05(c), nor does the claim require the use of the abstract ideas in conjunction with a particular machine or manufacture, as per MPEP § 2106.05(b). The recitations of the ADX platform and the internet of everything ecosystem constitute nothing more than mere instructions to implement the abstract idea on a computer or a technological environment in which the abstract idea is to be implemented. See MPEP §§ 2106.05(f) and (h). Although the claim recites intended uses of addressing challenges of data trading, integrity, and value creation, as well as assuring data integrity and long-term value, there are no limitations specifying how to achieve these desired results, and therefore these limitations are not clearly sufficient to show an improvement in computer functionality as per MPEP § 2106.05(a). Because the claim only recites the idea of a solution or outcome but fails to recite details of how a solution or result is accomplished, this also suggests that the additional elements are mere instructions to apply the exception as per MPEP § 2106.05(f). There are no additional elements that apply or use the abstract ideas in a meaningful way beyond merely linking the use of the judicial exceptions to a particular technological environment. Therefore, the claim is not directed to a practical application of the abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exceptions for similar reasons as detailed above with respect to the question of a practical application of the judicial exceptions. To the extent that the “data exchange” may be considered an additional limitation, this exchange of data appears merely to be directed to sending and receiving data over a network in a generic manner. These have been recognized by the courts as well-understood, routine, and conventional functions. See MPEP § 2106.05(d)(II), citing Symantec, TLI, OIP Techs, and buySAFE. Therefore, the claim as a whole, whether the steps are considered individually or as an ordered combination, is not directed to significantly more than the abstract ideas.
Based upon consideration of all the relevant factors with respect to the claims as an ordered combination and as a whole, Claim 1 is determined to be directed to abstract ideas without a practical application and without significantly more, as detailed above. Therefore, based on the above analysis, the claimed invention is not directed to patent eligible subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent Claim 1 broadly recites a platform “configured to addresses [sic] challenges of data trading, integrity, and value creation” and “assuring data integrity and long-term value”. The claims therefore define the invention in functional language specifying a desired result. However, the specification does not sufficiently describe how the result is achieved. Although the claim recites addressing challenges of data trading, integrity, and value creation, the claims do not recite any details of how the platform or other elements are configured to address these challenges. Although the specification generally mentions “innovative algorithms or processes for data trading and analysis” (paragraph 0011) and “verified algorithms” (paragraph 0017), there appears to be no further detail provided in the specification of what these algorithms or processes might entail. Similarly, although the claim recites assuring data integrity and long-term value, the claims do not recite any details of how the secure computation or data creation would provide such assurances. The only other mention of assuring long-term value (or of long-term value at all) is in the Abstract, using language similar to that of the claims. The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention. See MPEP § 2161.01(I).
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.
Claim 1 is 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 1 recites “an ADX platform having a secure data-sharing framework through data carnets facilitating transparent agreements for data exchange configured to addresses [sic] challenges…” in lines 2-3. It is not grammatically clear whether the phrase “configured to address” is intended to modify the platform itself, the framework, the carnets and/or agreements, or the data exchange, for example. The placement of the phrase suggests that it would modify the data exchange itself, or possibly the agreements for data exchange, but it is not clear how those could be “configured”. If the “configured to” phrase is intended to modify the ADX platform, then it is recommended that the phrase “having… for data exchange” be set off by commas. For purposes of interpreting the art, it has been assumed that it is the platform that is configured. The claim further recites “long-term value” in line 5. The term “long-term” is a relative term which is not clearly defined in the claims or specification; no standard of comparison has been provided to determine how long a time period must be to be considered “long-term”. See also MPEP § 2173.05(b). The above ambiguities render the claim indefinite.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 status.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berti et al, US Patent 11348120.
In reference to Claim 1, Berti discloses a system for an internet of everything ecosystem, comprising: an ADX platform having a secure data-sharing framework (see column 12, line 41-column 13, line 28, discussing data sharing between owners and/or manufacturer, for example; see also Figure 10A, steps 1016-1020, recording agreements in blockchain, generating terms defining sharing IoT sensor data) through data carnets facilitating transparent agreements for data exchange (again, column 12, line 41-column 13, line 28, contract/digital agreements regarding sharing IoT data) configured to addresses challenges of data trading, integrity, and value creation, wherein the ADX platform performs secure computation and generational data creation, assuring data integrity and long-term value (column 25, line 55-column 26, line 9, ensures integrity of encrypted records using blockchain, for example).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Boston et al, US Patent 10528890, discloses a system using smart contracts to provide data exchange capabilities.
Qing et al, US Patent 10789628, discloses a method that implements data exchange between a smart contract and a data entity.
Patangia et al, US Patent 11204939, discloses a system storing a data exchange contract in a blockchain.
Hu et al, US Patent 12170694, discloses a method in which a data sharing smart contract is stored in a distributed ledger.
Batcher et al, US Patent 12328401, discloses an automation control system that uses contracts for sharing of data.
Hsu et al, US Patent Application Publication 2022/0270753, discloses a system for data exchange using smart contracts stored on a blockchain.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zachary A Davis whose telephone number is (571)272-3870. The examiner can normally be reached Monday-Friday, 9:00am-5:30pm, Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rupal D Dharia can be reached at (571) 272-3880. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Zachary A. Davis/Primary Examiner, Art Unit 2492
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