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 1-21 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 12 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 mental process. For instance, the claim language “minting…a cryptographic token identifying an asset by computing a unique cryptographic hash referencing the asset; a set of executable instructions comprising a plurality of conditions joined by logical operators that upon satisfaction of the plurality conditions, causes a plurality of actions to be automatically performed corresponding to a plurality of encumbrances associated with the asset; linking…the cryptographic token to asset-related information” can be performed in the human mind. Any actions that can be performed in the human 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 “recording…the cryptographic token at a ledger address in a secure, immutable ledger…a set of executable instructions; recording,…a set of executable instructions in at least one secure, immutable ledger; recording…the plurality of cryptographic identifiers, and the cryptographic token in at least one secure, immutable ledger; one or more processors, and immutable ledger.” These additional elements, considered in the context of claim 12 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of recording data using a generic computer system. The processors and the immutable ledger, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activities. For instance, the steps of “recording…the cryptographic token at a ledger address in a secure, immutable ledger…a set of executable instructions; recording,…a set of executable instructions in at least one secure, immutable ledger; recording…the plurality of cryptographic identifiers, and the cryptographic token in at least one secure, immutable ledger; one or more processors, and immutable ledger,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitations “wherein at least some of the asset-related information is stored in at least one of: (1) the same secure, immutable edger, (11) a different ledger, or (iii) an external system, and the set of executable instructions including a plurality of cryptographic identifiers for a plurality of parties associated with the plurality of encumbrances” are merely recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 12 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 12 are the generically recited “processors and immutable ledger.” 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 0074-0076. 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 12 and are rejected using the same rationale as in claim 12 above. More specifically, dependent claims 2, 5-6, 8, 10-11, 13-14, 16-17, 20 do not recite additional elements but merely further narrow the scope of the abstract idea. However, dependent claims 3, 4, 15, 21 recites 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”). Lastly, claims 7, 9 and 18 when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity).
Response to Arguments
Applicant's arguments filed on 03/17/26 have been fully considered but they are not persuasive.
In response to applicant’s argument that the claims do not recite an abstract idea, the examiner disagrees. It is determined that the claim as a whole recites a mental process. For instance, the claim language “minting…a cryptographic token identifying an asset by computing a unique cryptographic hash referencing the asset; a set of executable instructions comprising a plurality of conditions joined by logical operators that upon satisfaction of the plurality conditions, causes a plurality of actions to be automatically performed corresponding to a plurality of encumbrances associated with the asset; linking…the cryptographic token to asset-related information” can be performed in the human mind. Any actions that can be performed in the human fall into the category of a mental process. Thus, the claim recites a judicial exception, i.e., an abstract idea.
The applicant further argues that “computing a unique cryptographic hash referencing the
asset is of sufficient data size and complexity to not be understood by human mental work…the SHA-256 hashing algorithm requires 64 rounds of fixed mathematical and bitwise
operations per block. See How SHA-256 Works.” This argument is moot because the applicant did not claim “SHA-256 hashing algorithm.”
The examiner further contends that applicant’s citation of Ex Parte Steven Charles Davis that blockchains claims cannot be performed mentally is not accurate because the rejection does not state that every element of the representative claim (claim 12) can be performed in the human mind. All the same, the examiner contends that minting a cryptographic token and linking the cryptographic token to asset-related information are steps that can be performed in human mind, and even outside of the blockchain world.
In response to applicant’s arguments that the pending claims integrate the judicial exception into a practical application, the examiner disagrees. The examiner contends that the claim recites a combination of additional elements including “recording…the cryptographic token at a ledger address in a secure, immutable ledger…a set of executable instructions; recording,…a set of executable instructions in at least one secure, immutable ledger; recording…the plurality of cryptographic identifiers, and the cryptographic token in at least one secure, immutable ledger; one or more processors, and immutable ledger.” These additional elements, considered in the context of claim 12 as a whole, do not integrate the abstract idea into a practical application because they simply recite the steps of recording data using a generic computer system. The processors and the immutable ledger, with their already available basic functions, are simply being applied to the abstract idea and being used as tools in executing the claimed process. Further, the additional limitations can be reasonably characterized as reciting a patent-ineligible insignificant extra-solution activities. For instance, the steps of “recording…the cryptographic token at a ledger address in a secure, immutable ledger…a set of executable instructions; recording,…a set of executable instructions in at least one secure, immutable ledger; recording…the plurality of cryptographic identifiers, and the cryptographic token in at least one secure, immutable ledger; one or more processors, and immutable ledger,” when considered as a whole, are mere data gathering steps considered to be insignificant extra-solution activities. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Lastly, the limitations “wherein at least some of the asset-related information is stored in at least one of: (1) the same secure, immutable edger, (11) a different ledger, or (iii) an external system, and the set of executable instructions including a plurality of cryptographic identifiers for a plurality of parties associated with the plurality of encumbrances” are merely recited to further narrow the scope of the abstract idea. In all, these recited steps merely describe an intangible property of the data that does not affect the examiner’s characterization of the additional limitations as insignificant extra-solution activities. Thus, it is determined that claim 12 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.
The examiner went through Jeff Livesay’s Declaration and found the arguments in it unpersuasive. According to the Declaration, “blockchain systems and other secure ledger systems did not have the ability to handle complex interactions with assets, such as automatically processing multiple sets of rules that trigger actions based on various events. The claimed invention introduces new capabilities to such systems by enabling the storage and execution of sets of executable instructions that include multiple conditions joined by logical operators, which, when met, automatically perform multiple actions. This enhances the core functionality of the secure ledger/blockchain—its ability to securely and immutably process transactions in a secure ledger environment—by allowing for more sophisticated automation and verification protocols that weren't built into earlier infrastructures,” the examiner disagrees. The examiner contends that the improvements touts by the applicant is not novel at all, because the previously cited prior art of record, Augustine (US PUB: 2020/0193418), though not relied upon in this office action, recites substantially the same improvements i.e., “a transaction for data storage includes a cryptographic hash (or hashes) of information stored outside of the directed acyclic graph 105 of cryptographic hash pointers, like a unique identifier of an entity, content item, or other information, but that outside information and an appended timestamp and address in a data store (e.g., like that of a CDN 140 or platform server 130 or other entity) may be input to a cryptographic hash function to output a cryptographic hash value. That cryptographic hash value (or other hash digest) may be stored as node content of the directed acyclic graph 105 of cryptographic hash pointers. The information stored outside of the graph 105 may then be verified as having been untampered with by recalculating the cryptographic hash value based on the asserted address, time, and transaction information and comparing the recalculated cryptographic hash value to the cryptographic hash value stored by the transaction in the directed acyclic graph of cryptographic hash pointers. Upon determining that the hash values match, the outside data may be determined to be current and has not been subject to tampering, or upon determining that the values do not match, the information may be determined to have been tampered with. For example, a contributor cannot misrepresent ownership and date of contribution of a content item. In another example, a consumer cannot assert access rights unless a subscription is current. In another example, a platform server 130 cannot circumvent permissions to grant access to a consumer or otherwise manipulate reported information. Further, to verify that the cryptographic hash value in the directed acyclic graph has not been tampered with, some embodiments may recalculate cryptographic hash values along a chain of cryptographic hash pointers to confirm that the recalculated values match those in the directed acyclic graph, thereby indicating the absence of tampering (or upon detecting a mismatch, indicating the presence of tampering)” --- see paras 0061 of Augustine.
The examiner further contends that the improvements tout by the applicant do not concern an improvement to computer technology (i.e. software or hardware improvements) and capabilities but instead relate to an alleged improvement in computer-based process; that is, a process in which a computer is used as a tool in its ordinary capacity which is to process data. (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept’’); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract application realm’).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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