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 .
In response to the application filed on January 05, 2025, claims 21-40 are now pending for examination in the application.
Terminal Disclaimer
The terminal disclaimer filed on January 05, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,259,876 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
“The 112 rejection under 35 USC 112 set forth in the 01/06/2025 office action is hereby withdrawn.”
This office action is in response to amendment filed 01/05/2026. In this action Claim(s) 21-27, 31-32, 35 and 39-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bailey et al. (US Pub. No. 20180143995) in view of Implementation of Smart Contracts Using Hybrid Architectures with On and Off–Blockchain Component. The Implementation of Smart Contracts Using Hybrid Architectures with On and Off–Blockchain Component reference has been added to include wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event.
Applicant’s arguments:
In regards to claim 1 on Page(s) 9, applicant argues “For example, amended claim 21 recites "based on a determination that the event for the electronic document is associated with a distributed database architecture, cause execution of the electronic document with the distributed database architecture, wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event," which cannot practically be performed in the human mind.”
Examiner’s Reply:
Determining events for contract execution are steps that can be performed in the human mind. The abstract idea recited in the claims is generally linking it to a computer environment.
Applicant’s arguments:
In regards to claim 1 on Page(s) 11, applicant argues “The claimed invention reflects these improvements in the technical field of managing an execution of electronic documents. For example, the recitation of "based on a determination that the event for the electronic document is associated with a distributed database architecture, cause execution of the electronic document with the distributed database architecture, wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event" and "based on a determination that the event for the electronic document is associated with an external service integration, cause execution of the electronic document with an external application resource, wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event," in amended claim 21 provide for a way to configure a system managing execution of an electronic document to selectively store data to a distributed database.”
Examiner’s Reply:
Applicant argues that the claims comprises statutory subject matter. Examiner respectfully disagrees. If a claim limitation, under its broadest reasonable interpretation, covers a mental process (eg Executing a contract)), then it falls within the “Mental process” grouping of abstract ideas set forth in the 2019 PEG. Accordingly, the claim recites an abstract idea. The examiner notes that the computer as recited in the claims are being used for evaluating events for contract execution (the computer is being used as a generic tool). Therefore, the abstract idea recited in the claims is generally linking it to a computer environment, and does not integrate the abstract idea into a practical application. Evaluating events related to contract does not improve the functioning of a computing system.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claim 21-40 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than judicial exception. The eligibility analysis in support of these findings is provided below, on Claim Rejections - 35 USC 101 accordance with the "2019 Revised Patent Subject Matter Eligibility Guidance" (published on 1/7/2019 in Fed, Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter referred to as the "2019 PEG").
Step 1. in accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted the claim system (claims 21-38), method(s) (claim 39), and medium (claim 40) is/are directed to one of the eligible categories of subject matter and therefore satisfies Step 1.
Step 2A. In accordance with Step 2A, prong one of the 2019 PEG, it is noted that the independent claims recite an abstract idea falling within the Mental Processes enumerated groupings of abstract ideas set forth in the 2019 PEG. Examiner is of the position that independent claims 21, 39, and 40 are directed towards the Mental Process Grouping of Abstract Ideas.
Independent claim(s) 21, 39, and 40 recite(s) the following limitations directed towards a Mental Processes:
Determiningdocument, the electronic document comprising a set of executable programmable components (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to determine an event);
based on determining that the contract event for the electronic document is associated with a document with the
based on determining that the document event for the electronic document t is associated with an external service integration, causing, by the one or more processors, execution of the electronic document with an external application resource (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to execute a contract),
wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to determine not to store).
Step 2A. In accordance with Step 2A, prong two of the 2019 PEG, the judicial exception is not integrated into a practical application because of the recitation in claim(s) 1:
by one or more processors (i.e., as a generic processor/component performing a generic computer function);
storage media (i.e., as a generic processor/component performing a generic computer function); and
distributed database architecture (i.e., as a generic processor/component performing a generic computer function);
wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event (insignificant extrasolution activity of storing event data).
Step 2B. Similar to the analysis under 2A Prong Two, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Because the additional elements of the independent claims amount to insignificant extra solution activity and/or mere instructions, the additional elements do not add significantly more to the judicial exception such that the independent claims as a whole would be patent eligible.
Therefore, independent claims 21, 39, and 40 are rejected under 35 U.S.C. 101.
With respect to claim(s) 22:
Step 2A, prong one of the 2019 PEG:
Examiner is of the position the dependent claim is directed toward additional elements.
Step 2A Prong Two Analysis:
wherein the distributed database architecture is configured to store a single record of data at a plurality of entities (insignificant extrasolution activity of storing record data).
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 23:
Step 2A, prong one of the 2019 PEG:
Examiner is of the position the dependent claim is directed toward additional elements.
Step 2A Prong Two Analysis:
wherein the distributed database architecture comprises a distributed ledger (i.e., as a generic processor/component performing a generic computer function).
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 24:
Step 2A, prong one of the 2019 PEG:
Examiner is of the position the dependent claim is directed toward additional elements.
Step 2A Prong Two Analysis:
wherein the distributed database architecture comprises a blockchain (i.e., as a generic processor/component performing a generic computer function).
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 25:
Step 2A, prong one of the 2019 PEG:
wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to cause execution of the code to execute at least a portion of the electronic document (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to determine not to store).
Step 2A Prong Two Analysis:
wherein the distributed database is configured to store code configured to execute
an executable programmable component of the set of executable programmable components of
the electronic document contract (recites insignificant extra solution activity that amounts to executing a contract).
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 26:
Step 2A, prong one of the 2019 PEG:
wherein the instructions further cause the system to generate the event for the electronic document (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate the event).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 27:
Step 2A, prong one of the 2019 PEG:
wherein the instructions further cause the one or more processors to generate the contract event (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate the event); or
wherein to generate the event for the electronic document, the instructions cause the system to generate the event on the distributed database architecture (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate the event.
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 28:
Step 2A, prong one of the 2019 PEG:
change a state of the electronic document (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to changing a state);
wherein the instructions further cause the system to generate the event for the electronic document based on the state of change of the electronic document (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate the event).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 29:
Step 2A, prong one of the 2019 PEG:
wherein the instructions cause the system to change the state of the electronic document when the electronic document is modified (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to changing a state).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 30:
Step 2A, prong one of the 2019 PEG:
wherein the electronic document further comprises a set of conditions (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate a contract event); and
wherein the instructions cause the system to change the state of the electronic document based on a determination that the set of conditions are met (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to determination of a stipulation).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 31:
Step 2A, prong one of the 2019 PEG:
wherein to generate the event for the electronic document, the instructions cause the system to append the event for the electronic document to an audit log (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to append the contract).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 32:
Step 2A, prong one of the 2019 PEG:
Examiner is of the position the dependent claim is directed toward additional elements.
Step 2A Prong Two Analysis:
wherein to append the event for the electronic document to the audit log, the instructions cause the system to store, to the distributed database, the audit log (insignificant extrasolution activity of storing an audit log).
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 33:
Step 2A, prong one of the 2019 PEG:
wherein the instructions cause the system to change a state of the electronic document and to generate the event for the electronic document with the distributed database architecture (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate the contract); or
wherein the instructions cause the system to change the state of the electronic document and to generate the event for the electronic document with both the distributed database architecture and the external application resource (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to generate the contract).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 34:
Step 2A, prong one of the 2019 PEG:
wherein the instructions further cause the system to establish the electronic contract, and wherein the electronic document further comprises a set of natural language components (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to establishe the contract).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 35:
Step 2A, prong one of the 2019 PEG:
wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to perform an operation on a blockchain (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to perform an operation).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 36:
Step 2A, prong one of the 2019 PEG:
wherein the instructions cause the system to cause execution of the electronic document with the external application resource using an application programming interface (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to executing of a contract).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 37:
Step 2A, prong one of the 2019 PEG:
wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to map the event for the electronic document to the external application resource (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to mapping a contract event).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
With respect to claim(s) 38:
Step 2A, prong one of the 2019 PEG:
wherein to map the event for the electronic document to the external application resource, the instructions cause the system to map the event for the electronic document to the external application resource prior to an execution of the electronic document (The limitation recites a mental process of observation and/or evaluation capable of being performed by the human mind by using computer as a tool to mapping a contract event).
Step 2A Prong Two Analysis:
This judicial exception is not integrated into a practical application because the claim as drafted recites insignificant extrasolution activity of generating desired data.
Step 2B Analysis:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim is not patent eligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 21-27, 31-32, 35 and 39-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bailey et al. (US Pub. No. 20180143995) in view of Implementation of Smart Contracts Using Hybrid Architectures with On and Off–Blockchain Component.
With respect to claim 21, Bailey et al. teaches a system comprising one or more processors and non-transitory storage media storing instructions, wherein the instructions, when executed by the one or more processors, cause the one or more processors to:
Determiningdocument (Paragraph 42 discloses change the state of an item of value in a distributed ledger by appending a new block to the blockchain and Paragraph 34 discloses generating event or transaction occurs) for an electronic document (Paragraph 34 discloses a contract, a smart contract), the electronic contract comprising a set of executable programmable components (Paragraph 64 discloses component, subroutine, object, or other unit suitable for use in a computing environment);
based on a determination that the event for the electronic document is associated with a distributed database architecture, cause execution of the electronic document with the distributed database architecture (Paragraph 34 discloses appending a new block to the blockchain and Paragraph 34 discloses create and enforce contractual obligations and commitments between two or more agents); and
based on a determination that the document event for the electronic document is associated with an external service integration, cause execution of the electronic document with an external application resource (Paragraph 70 discloses components and systems can generally be integrated together in a single software product or packaged into multiple software products).
Bailey et al. does not discloses wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event.
However, Implementation of Smart Contracts teaches wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event (Pages 88 discloses a Pay event is executed on an Ethereum blockchain (distributed database) , the executable code being submitPayment() method of dataseller.drl contract. And all other events (BuyReq, Conf, Ref..) are executed by external service (trusted third party, contract compliance checker CCC), and since these are not processed on the Ethereum blockchain, nothing is stored on the Ethereum blockchain (claim limitation “refrain from storing”)); and
wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event (Pages 88 discloses a Pay event is executed on an Ethereum blockchain (distributed database) , the executable code being submitPayment() method of dataseller.drl contract. And all other events (BuyReq, Conf, Ref..) are executed by external service (trusted third party, contract compliance checker CCC), and since these are not processed on the Ethereum blockchain, nothing is stored on the Ethereum blockchain (claim limitation “refrain from storing”)).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. with Implementation of Smart Contracts. This would have been an improvement for contract management in and outside of a blockchain environment. See Implementation of Smart Contracts Page 83.
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 22, Bailey et al. teaches the system of claim 21, wherein the distributed database architecture is configured to store a single record of data at a plurality of entities (Paragraph 34 discloses appending a new block to the blockchain and Paragraph 34 discloses create and enforce contractual obligations and commitments between two or more agents)..
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 23, Bailey et al. teaches the system of claim 21, wherein the distributed database architecture comprises a distributed ledger (Paragraph 34 discloses a blockchain environment).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 24, Bailey et al. teaches the system of claim 21, wherein the distributed database architecture comprises a blockchain (Paragraph 34 discloses a blockchain environment).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 25, Bailey et al. teaches the system of claim 21, wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to cause execution of the code to execute at least a portion of the electronic document (Paragraph 34 discloses appending a new block to the blockchain and Paragraph 34 discloses create and enforce contractual obligations and commitments between two or more agents).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 26, Bailey et al. teaches the system of claim 21, wherein the instructions further cause the system to generate the event for the electronic document (Paragraph 42 discloses generating event or transaction occurs. A transaction is equivalent to an operation).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 26. With respect to claim 27, Bailey et al. teaches the system of claim 26, wherein the instructions further cause the one or more processors to generate the contract event (Paragraph 41 discloses a private server); or
wherein to generate the event for the electronic document, the instructions cause the system to generate the event on the distributed database architecture.
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 26. With respect to claim 31, Bailey et al. teaches the system of claim 26, wherein to generate the event for the electronic document, the instructions cause the system to append the event for the electronic document to an audit log (Paragraph 42 discloses generating event or transaction occurs and information that is appended to the blockchain).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 31. With respect to claim 32, Bailey et al. teaches the system of claim 31, wherein to append the event for the electronic document to the audit log, the instructions cause the system to store, to the distributed database, the audit log (Paragraph 42 discloses generating event or transaction occurs and information that is appended to the blockchain).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 35, Bailey et al. teaches the system of claim 21, wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to perform an operation on a blockchain (Paragraph 42 discloses generating event or transaction occurs. A transaction is equivalent to an operation).
With respect to claim 39, Bailey et al. teaches a method comprising:
determining, by one or more processors, a generation of a contract event (Paragraph 42 discloses change the state of an item of value in a distributed ledger by appending a new block to the blockchain and Paragraph 34 discloses generating event or transaction occurs) for an electronic contract (Paragraph 34 discloses a contract, a smart contract), the electronic contract comprising a set of executable programmable components (Paragraph 64 discloses component, subroutine, object, or other unit suitable for use in a computing environment);
based on determining that the contract event for the electronic contract is associated with a distributed database architecture, causing, by the one or more processors, execution of the electronic contract with the distributed database architecture (Paragraph 34 discloses appending a new block to the blockchain and Paragraph 34 discloses create and enforce contractual obligations and commitments between two or more agents); and
based on determining that the contract event for the electronic contract is associated with an external service integration, causing, by the one or more processors, execution of the electronic contract with an external application resource (Paragraph 70 discloses components and systems can generally be integrated together in a single software product or packaged into multiple software products). Determiningdocument (Paragraph 42 discloses change the state of an item of value in a distributed ledger by appending a new block to the blockchain and Paragraph 34 discloses generating event or transaction occurs) for an electronic document (Paragraph 34 discloses a contract, a smart contract), the electronic contract comprising a set of executable programmable components (Paragraph 64 discloses component, subroutine, object, or other unit suitable for use in a computing environment);
based on a determination that the event for the electronic document is associated with a distributed database architecture, cause execution of the electronic document with the distributed database architecture (Paragraph 34 discloses appending a new block to the blockchain and Paragraph 34 discloses create and enforce contractual obligations and commitments between two or more agents); and
based on a determination that the document event for the electronic document is associated with an external service integration, cause execution of the electronic document with an external application resource (Paragraph 70 discloses components and systems can generally be integrated together in a single software product or packaged into multiple software products).
Bailey et al. does not discloses wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event.
However, Implementation of Smart Contracts teaches wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event (Pages 88 discloses a Pay event is executed on an Ethereum blockchain (distributed database) , the executable code being submitPayment() method of dataseller.drl contract. And all other events (BuyReq, Conf, Ref..) are executed by external service (trusted third party, contract compliance checker CCC), and since these are not processed on the Ethereum blockchain, nothing is stored on the Ethereum blockchain (claim limitation “refrain from storing”)); and
wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event (Pages 88 discloses a Pay event is executed on an Ethereum blockchain (distributed database) , the executable code being submitPayment() method of dataseller.drl contract. And all other events (BuyReq, Conf, Ref..) are executed by external service (trusted third party, contract compliance checker CCC), and since these are not processed on the Ethereum blockchain, nothing is stored on the Ethereum blockchain (claim limitation “refrain from storing”)).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. with Implementation of Smart Contracts. This would have been an improvement for contract management in and outside of a blockchain environment. See Implementation of Smart Contracts Page 83.
With respect to claim 40, Bailey et al. teaches non-transitory storage media storing instructions that when executed by one or more processors cause the one or more processors to:
Determiningdocument (Paragraph 42 discloses change the state of an item of value in a distributed ledger by appending a new block to the blockchain and Paragraph 34 discloses generating event or transaction occurs) for an electronic document (Paragraph 34 discloses a contract, a smart contract), the electronic contract comprising a set of executable programmable components (Paragraph 64 discloses component, subroutine, object, or other unit suitable for use in a computing environment);
based on a determination that the event for the electronic document is associated with a distributed database architecture, cause execution of the electronic document with the distributed database architecture (Paragraph 34 discloses appending a new block to the blockchain and Paragraph 34 discloses create and enforce contractual obligations and commitments between two or more agents); and
based on a determination that the document event for the electronic document is associated with an external service integration, cause execution of the electronic document with an external application resource (Paragraph 70 discloses components and systems can generally be integrated together in a single software product or packaged into multiple software products).
Bailey et al. does not discloses wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event.
However, Implementation of Smart Contracts teaches wherein to cause execution of the electronic document with the distributed database architecture, the instructions cause the system to store, to a distributed database, data relating to the event (Pages 88 discloses a Pay event is executed on an Ethereum blockchain (distributed database) the executable code being submitPayment() method of dataseller.drl contract. And all other events (BuyReq, Conf, Ref..) are executed by external service (trusted third party, contract compliance checker CCC), and since these are not processed on the Ethereum blockchain, nothing is stored on the Ethereum blockchain (claim limitation “refrain from storing”)); and
wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to refrain from storing, to the distributed database, the data relating to the event (Pages 88 discloses a Pay event is executed on an Ethereum blockchain (distributed database) the executable code being submitPayment() method of dataseller.drl contract. And all other events (BuyReq, Conf, Ref..) are executed by external service (trusted third party, contract compliance checker CCC) and since these are not processed on the Ethereum blockchain, nothing is stored on the Ethereum blockchain (claim limitation “refrain from storing”)).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. with Implementation of Smart Contracts. This would have been an improvement for contract management in and outside of a blockchain environment. See Implementation of Smart Contracts Page 83.
Claim(s) 28-30, 33-34, and 36-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bailey et al. (US Pub. No. 20180143995) and Implementation of Smart Contracts Using Hybrid Architectures with On and Off–Blockchain Component in further view of Hunn (US Pub. No. 20180005186).
Bailey et al. and Implementation of Smart Contracts teaches all the limitations of claim 26. With respect to claim 28, Bailey et al. does not disclose change a state of the electronic document, wherein the instructions further cause the system to generate the event for the electronic document based on the state of change of the electronic document.
However, Hunn teaches the system of claim 26, wherein the instructions further cause the one or more processors to:
change a state of the electronic document, wherein the instructions further cause the system to generate the event for the electronic document based on the state of change of the electronic document (Paragraph 53 discloses a Contract state updates may take place continuously and in `real-time` or near `real-time`).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. and Implementation of Smart Contracts with Hunn. This would have been an improvement for contract management in and outside of a blockchain environment. See Hunn Paragraphs 3-6
Bailey et al. as modified by Implementation of Smart Contracts and Hunn teaches all the limitations of claim 28. With respect to claim 29, Hunn teaches the system of claim 28, wherein the instructions cause the system to change the state of the electronic document when the electronic document is modified (Paragraph 53 discloses a Contract state updates may take place continuously and in `real-time` or near `real-time`). The motivation to combine statement previously provided in the rejection of independent claim 28 provided above, combining the Bailey et al. reference and the Hunn reference is applicable to dependent claim 29.
Bailey et al. as modified by Implementation of Smart Contracts and Hunn teaches all the limitations of claim 28. With respect to claim 30, Hunn teaches the system of claim 28, wherein the electronic document further comprises a set of conditions(See Paragraph 246 teaches a clause stipulation); and
wherein the instructions cause the system to change the state of the electronic document based on a determination that the set of conditions are met (Paragraph 53 discloses a Contract state updates may take place continuously and in `real-time` or near `real-time`).
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 26. With respect to claim 33, Bailey et al. does not disclose wherein the instructions cause the system to change a state of the electronic document and to generate the event for the electronic document with the distributed database architecture.
However, Hunn teaches the system of claim 26, wherein the instructions cause the system to change a state of the electronic document and to generate the event for the electronic document with the distributed database architecture; or
wherein the instructions cause the system to change the state of the electronic document and to generate the event for the electronic document with both the distributed database architecture and the external application resource (Paragraph 99 discloses off-chain and on-chain).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. and Implementation of Smart Contracts with Hunn. This would have been an improvement for contract management in and outside of a blockchain environment. See Hunn Paragraphs 3-6.
Bailey et al. as modified by Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 34, Bailey et al. does not disclose wherein the instructions further cause the system to establish the electronic contract, and wherein the electronic document further comprises a set of natural language components.
However, Hunn teaches the system of claim 21, wherein the instructions further cause the system to establish the electronic contract, and wherein the electronic document further comprises a set of natural language components (Paragraph 61 discloses part natural language, part-machine readable code).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. and Implementation of Smart Contracts with Hunn. This would have been an improvement for contract management in and outside of a blockchain environment. See Hunn Paragraphs 3-6.
Bailey et al. and Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 36, Bailey et al. does not disclose wherein the instructions cause the system to cause execution of the electronic document with the external application resource using an application programming interface.
However, Hunn teaches system of claim 21, wherein the instructions cause the system to cause execution of the electronic document with the external application resource using an application programming interface (Paragraph 241 teaches an API).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. with Hunn. This would have been an improvement for contract management in and outside of a blockchain environment. See Hunn Paragraphs 3-6.
Bailey et al. and Implementation of Smart Contracts teaches all the limitations of claim 21. With respect to claim 37, Bailey et al. does not disclose wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to map the event for the electronic document to the external application resource.
However, Hunn teaches the system of claim 21, wherein to cause execution of the electronic document with the external application resource, the instructions cause the system to map the event for the electronic document to the external application resource (Paragraph 76 teaches mapping integrations to programmable clauses, adding clauses to contracts (e.g. from clause libraries, using templates, and other appropriate means), and monitoring the post-formation state of a contract via a graphical user interface (GUI) dashboard(s), analytics, notifications, feeds, graphs, charts, and other data visualization techniques).
Therefore, it would have been obvious before the effective filing data of invention was made to a person having ordinary skill in the art to modify Bailey et al. and Implementation of Smart Contracts with Hunn. This would have been an improvement for contract management in and outside of a blockchain environment. See Hunn Paragraphs 3-6.
Bailey et al. and Implementation of Smart Contracts as modified by Hunn teaches all the limitations of claim 37. With respect to claim 38, Hunn teaches the system of claim 37, wherein to map the event for the electronic document to the external application resource, the instructions cause the system to map the event for the electronic document to the external application resource prior to an execution of the electronic document (Paragraph 76 teaches mapping integrations to programmable clauses, adding clauses to contracts (e.g. from clause libraries, using templates, and other appropriate means), and monitoring the post-formation state of a contract via a graphical user interface (GUI) dashboard(s), analytics, notifications, feeds, graphs, charts, and other data visualization techniques). The motivation to combine statement previously provided in the rejection of independent claim 37 provided above, combining the Bailey et al. reference and the Hunn reference is applicable to dependent claim38.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PG-PUB 20190139037 is directed to SYSTEM AND METHOD FOR SCALING BLOCKCHAIN NETWORKS WITH SECURE OFF-CHAIN PAYMENT HUBS: [0029] deploying a smart contract from an originating source to a first off-chain ledger associated with a first payment hub server; authorizing at least one user to interact with the first payment hub server; and synchronizing periodically a balance sheet of the first off-chain ledger with the smart contract using a cryptographic commitment structure, wherein the smart contact is used to authorize a withdrawal from the first off-chain ledger. In embodiments of the present invention, an off-chain transaction is enacted, the transaction authorization is signed and sent to the payment hub server directly.
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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/N.E.A/Examiner, Art Unit 2154
/SYED H HASAN/Primary Examiner, Art Unit 2154
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