Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1, 5, and 8 are currently pending. Claims 2-3, 6-7, and 9-10 are canceled in the Claims filed on September 18, 2026.
Claim Rejections - 35 USC § 112
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.
Claims 1, 5, and 8 are 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.
Regarding Claims 1, 5, and 8, Claims 1, 5, and 8 recite “determining that the vaccination certificate is authentic in a case where the calculated information identifying the vaccination history exists in the data of the block received from the blockchain.” However, as presently claimed, Claims 1, 5, and 8 recite “calculating information identifying the vaccination history from the vaccination history in the vaccination certificate,” and “receiving data of the block of the block number,” but there is no recitation detailing what information the “data of the block” includes, and further there is no recitation that the received data of the block includes the calculated information identifying the vaccination history. That is, it is unclear how the authenticity determination step occurs based on the existence of the calculated information in the block, when there is no recitation of a limitation storing the calculated information in the block.
Furthermore, Claims 1, 5, and 8 recite “registering, in a blockchain, information identifying a vaccination history calculated from the vaccination history and issuing a vaccination certificate…after registration of the information identifying the vaccination history,” and further recite “calculating information identifying the vaccination history from the vaccination history in the vaccination certificate.” That is, Claims 1, 5, and 8 recite issuing a vaccination certificate after registering information identifying a vaccination history, and further recites calculating information identifying the vaccination history from the vaccination certificate, and it is unclear if the “information identifying the vaccination history” in the calculating step is different from the “information identifying a vaccination history” in the registering step, and further there is no recitation of an initial calculation of the information identifying the vaccination history in order to register the information identifying the vaccination history on the vaccination certificate.
Hence, regarding Claims 1, 5, and 8, it is unclear what the “data of the block” comprises, it is unclear what the data being calculated actually comprises, and the order of operations is unclear. In the interest of compact prosecution, Claims 1, 5, and 8 will be interpreted as obtaining the block number and sending the block number to the blockchain, determining identifying information, retrieving data from the block of the block number, and authenticating the data from the block based on the identifying information.
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.
Claims 1, 5, and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1, 5, and 8 are within the four statutory categories. Claim 1 is drawn to a system for authenticating a vaccination history, which is within the four statutory categories (i.e. machine). Claim 5 is drawn to a method for authenticating a vaccination history, which is within the four statutory categories (i.e. process). Claim 8 is drawn to a non-transitory medium for authenticating a vaccination history, which is within the four statutory categories (i.e. manufacture).
Prong 1 of Step 2A
Claim 1, which is representative of the inventive concept, recites: A vaccination certificate verification system, comprising:
at least a processor;
and a memory in circuit communication with the processor,
wherein the processor is configured to execute program instructions stored in the memory to perform:
registering, in a blockchain, information identifying a vaccination history calculated from the vaccination history and issuing a vaccination certificate including the vaccination history after registration of the information identifying the vaccination history, wherein the vaccination certificate further includes information regarding the vaccination history in which a block number of a block of the blockchain in which the vaccination history is registered is encoded;
decoding the block number from the information regarding the vaccination history, and sending the decoded block number to the blockchain;
calculating information identifying the vaccination history from the vaccination history in the vaccination certificate;
receiving data of the block of the block number from the blockchain; and
determining that the vaccination certificate is authentic in a case where the calculated information identifying the vaccination history exists in the data of the block received from the blockchain.
The underlined limitations as shown above recite the abstract idea of a mental process and/or a certain method of organizing human activity because they recite a process that could be practically performed in the human mind (i.e. observations, evaluations, judgments, and/or opinions – in this case, the steps of registering information identifying a vaccination history, issuing a vaccination certificate including the vaccination history, calculating information identifying the vaccination history from the vaccination history in the vaccination certificate, and determining that a vaccination certificate is authentic in a case where the calculated information identifying the vaccination history exists recites at least an evaluation) or using a pen and paper, but for the recitation of generic computer components (i.e. a processor and memory interacting with a blockchain), and/or managing personal behavior or relationships or interactions between people (i.e. social activities, teaching, and following rules or instructions – in this case, the steps of registering information identifying a vaccination history, issuing a vaccination certificate including the vaccination history, calculating information identifying the vaccination history from the vaccination history in the vaccination certificate, and determining that a vaccination certificate is authentic in a case where the calculated information identifying the vaccination history exists recites at least following rules or instructions to authenticate a patient’s vaccination status, and/or the filtering of data according to the claimed data processing operations), e.g. see MPEP 2106.04(a)(2). Any limitations not identified above as part of the abstract idea are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for Claims 5 and 8 is identical as the abstract idea for Claim 1, because the only difference between Claims 1, 5, and 8 is that Claim 1 recites a system, whereas Claim 5 recites a method, and Claim 8 recites a non-transitory computer-readable recording medium.
Hence Claims 1, 5, and 8 recite the aforementioned abstract idea.
Prong 2 of Step 2A
Claims 1, 5, and 8 are not integrated into a practical application because the additional elements (i.e. the non-underlined limitations above – in this case, the processor, memory, and blockchain) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of the processor, memory, and the blockchain itself, which amounts to merely invoking a computer as a tool to perform the abstract idea, and/or recites additional elements at such a high level of generality so as to not provide meaningful limitations that integrate the judicial exception into a practical application or amount to significantly more, e.g. see [0065]-[0067] of the as-filed Specification, and see MPEP 2106.05(f); and/or
generally link the abstract idea to a particular technological environment or field of use – for example, the claim language of the vaccination certificate specifying a block number of the blockchain, and the steps of decoding the block number, sending the decoded block number to the blockchain, and receiving data of the block of the block number from the blockchain, which amounts to limiting the abstract idea to the field of blockchain/distributed ledgers, e.g. see MPEP 2106.05(h).
Hence Claims 1, 5, and 8 do not include additional elements that integrate the judicial exception into a practical application.
Step 2B
Claims 1, 5, and 8 do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because the additional elements (i.e. the non-underlined limitations above – in this case, the processor, memory, and blockchain), as stated above, are directed towards no more than limitations that amount to mere instructions to apply the exception, and/or generally link the abstract idea to a particular technological environment or field of use, wherein the additional elements comprise limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The present Specification expressly disclosing that the structural additional elements are well-understood, routine, and conventional in nature:
[0065]-[0067] of the as-filed Specification discloses that the additional elements (i.e. the processor, memory, and blockchain) comprise a plurality of different types of generic computing systems;
Relevant court decisions: The functional limitations interpreted as additional elements are analogized to the following examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Electronic recordkeeping, e.g. see Alice Corp v. CLS Bank – similarly, the additional elements merely recite the creating and maintaining of vaccination data on the blockchain;
Storing and retrieving information in memory, e.g. see Versata Dev. Group, Inc. v. SAP Am., Inc. – similarly, the additional elements recite storing vaccination data in the blockchain, and retrieving the vaccination data from the blockchain in order to determine the authenticity of a vaccination certificate;
Hence, Claims 1, 5, and 8 do not include any additional elements that amount to “significantly more” than the judicial exception.
Thus, taken alone, the additional elements do not amount to significantly more than the abstract idea identified above. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claims 1, 5, and 8 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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 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.
Claims 1, 5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Day (US 2022/0191048) in view of Rueda Galan (US 2020/0357004).
Regarding Claim 1, Day teaches the following: A vaccination certificate verification system, comprising:
at least a processor (The system includes a computing device, for example a smartphone or laptop, e.g. see Day [0074] and [0086].); and
a memory in circuit communication with the processor (The system stores data on the computing device, e.g. see Day [0074] and [0086].),
wherein the processor is configured to execute program instructions stored in the memory to perform:
registering, in a blockchain, information identifying a vaccination history calculated from the vaccination history (The system captures information regarding a vaccination including identity information and vaccination data such as the patient having been administered a vaccine, and submits the captured information to a KSI blockchain e.g. see Day [0021] and [0041]-[0046].) and issuing a vaccination certificate including the vaccination history after registration of the information identifying the vaccination history (The system utilizes the captured data to create a vaccination certificate including vaccination data (i.e. the vaccination history), e.g. see Day [0021] and [0041]-[0046].);
determining that the vaccination certificate is authentic (The system verifies (i.e. determines that the certificate is authentic) the vaccination certificate by using the KSI blockchain, for example via comparison to an authentic vaccine repository using a digital twin of each vaccine, the physical vaccine vial, and identification information of the patient, e.g. see Day [0037]-[0039], [0046]-[0047], [0051], and [0101].).
But Day does not teach and Rueda Galan teaches the following:
wherein the vaccination certificate further includes information regarding the vaccination history in which a block number of a block of the blockchain in which the vaccination history is registered is encoded (The system includes a distributed ledger (i.e. a blockchain), wherein the distributed ledger stores a product identifier associated with product details including a unique identifier, authentication data, and ownership data, e.g. see Rueda Galan [0058], wherein the ownership data includes an ownership history, e.g. see Rueda Galan [0067]. Furthermore, the system may store the product identifier in the form of a QR code, e.g. see Rueda Galan [0058], wherein the QR code is linked to a URL for a specific block (i.e. a block number) on the distributed ledger, e.g. see Rueda Galan [0083].);
decoding the block number from the information regarding the vaccination history, and sending the decoded block number to the blockchain (The system receives a scan of the QR code, retrieves product details and the URL from the QR code, and utilizes the URL to query the distributed ledger to authenticate the product, e.g. see Rueda Galan [0085]-[0086].);
calculating information identifying the vaccination history from the vaccination history in the vaccination certificate (The system receives a scan of the QR code, retrieves product details and the URL from the QR code, and utilizes the URL to query the distributed ledger to authenticate the product, e.g. see Rueda Galan [0085]-[0086].);
receiving data of the block of the block number from the blockchain (The system checks to see that the block exists on the distributed ledger and then checks to see that the product details obtained from the QR code match the details on the distributed ledger, e.g. see Rueda Galan [0087].); and
wherein the authenticity determination comprises determining that the vaccination certificate is authentic in a case where the calculated information identifying the vaccination history exists in the data of the block received from the blockchain (The system determines that the product is authentic when the data obtained from the QR code matches the data on the distributed ledger, e.g. see Rueda Galan [0087].).
Furthermore, before the effective filing date, it would have been obvious to one ordinarily skilled in the art of distributed ledgers to modify Day to incorporate the authentication steps utilizing the URL (i.e. block number) as taught by Rueda Galan in order to provide confidence in the authenticity of a product, e.g. see Rueda Galan [0058] and [0087].
Regarding Claims 5 and 8, the limitations of Claims 5 and 8 are substantially similar to those claimed in Claim 1, with the sole difference being that Claim 1 recites a system, whereas Claim 5 recites a method and Claim 8 recites a non-transitory computer-readable medium. Specifically pertaining to Claim 5 and 8, Examiner notes that Day teaches that the functions of the system may be executed as software instructions (i.e. which may be interpreted as steps for a method) executed by a machine, e.g. see Day [0074] and [0086], and hence the grounds of rejection provided above for Claim 1 are similarly applied to Claims 5 and 8.
Response to Arguments
Applicant’s arguments, see Remarks, filed September 18, 2026, with respect to the rejections of Claims 1, 5, and 8 under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant alleges that the claimed invention is patent eligible under Prong Two of Step 2A of the Alice test, specifically because the features of decoding the block number, sending the decoded block number to the blockchain, receiving data of the block of the block number, and determining that the vaccination certificate is authentic where the calculated information identifying the vaccination history exists in the data of the block cannot be practically performed mentally, are not related to managing personal behavior or relationships or interactions between people, and further because they achieve the technical results of protecting vaccination data from being leaked, in accordance with [0040]-[0041] of the as-filed Specification, e.g. see pgs. 7-9 of Remarks – Examiner disagrees.
Examiner initially notes that the determination of whether or not the Claims recite an abstract idea is performed as part of Prong 1 of Step 2A, and, for the reasons disclosed above, the claimed limitations of registering information identifying a vaccination history, issuing a vaccination certificate including the vaccination history, calculating information identifying the vaccination history from the vaccination history in the vaccination certificate, and determining that a vaccination certificate is authentic in a case where the calculated information identifying the vaccination history exists recite at least an evaluation (i.e. a mental process) and/or following rules or instructions to authenticate a patient’s vaccination status, and/or the filtering of data according to the claimed data processing operations (i.e. a certain method of organizing human activities). Hence, the identified limitations recite an abstract idea.
Regarding Prong 2 of Step 2A, even assuming, arguendo, that the claimed invention achieved the improvement of protecting a vaccination history from being leaked, this represents an improvement to the abstract idea of a mental process (e.g. the mental process of keeping patient information secure) and/or a certain method of organizing human activities (e.g. rules or instructions to keep the patient information secure), and an improvement to the abstract idea is not a technological improvement, e.g. see MPEP 2106.05(a)(II). Furthermore, the improvements of protecting a vaccination history from being leaked and protecting the security/privacy of a vaccination record is not a technological problem arising in the realm of computer networks because these problems have existed since long before the advent of computer technology.
Hence, the claimed invention recites an abstract idea without integrating the abstract idea into a practical application.
Applicant further alleges that the claimed invention is patent eligible under Step 2B because the additional elements are not taught by the cited prior art references and hence are not well-understood, routine, or conventional, e.g. see pg. 10 of Remarks – Examiner disagrees.
Examiner notes that, for the reasons disclosed above and further below, the claimed limitations are taught by the combination of Day and Rueda Galan. Moreover, even assuming, arguendo, that the combination of Day and Rueda Galan did not teach the claimed limitations, “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,” and specifically, a finding of a lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that claimed invention is therefore patent eligible. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101, e.g. see MPEP 2106.05(I). Hence, the presence/absence of any rejections under 35 U.S.C. 102 and/or 103 is not, by itself, dispositive of patent eligibility under 35 U.S.C. 101.
For the aforementioned reasons, Claims 1, 5, and 8 are rejected under 35 U.S.C. 101.
Applicant’s arguments, see Remarks, filed September 18, 2026, with respect to the rejections of Claims 1, 5, and 8 under 35 U.S.C. 102(a)(1) have been fully considered, and, in combination with the amendments, are persuasive. The rejections of Claims 1, 5, and 8 under 35 U.S.C. 102(a)(1) are withdrawn, but as will be explained below, Claims 1, 5, and 8 are nonetheless rejected under 35 U.S.C. 103.
Applicant’s arguments, see Remarks, filed September 18, 2026, with respect to the rejections of Claims 1, 5, and 8 under 35 U.S.C. 103 have been fully considered but are not persuasive.
Applicant alleges that the rejections of Claims 1, 5, and 8 under 35 U.S.C. 103 are improper because Day and Rueda Galan do not teach the steps of decoding the block number, sending the decoded block number to the blockchain, receiving data of the block of the block number, and determining that the vaccination certificate is authentic where the calculated information identifying the vaccination history exists in the data of the block, e.g. see pg. 12 of Remarks – Examiner disagrees.
As shown above, Day is not cited to teach these features. Hence, any arguments regarding these features in relation to Day are not pertinent to the patentability of the Claims. Additionally, Day does disclose that its system does not need to query an external database, e.g. see Day Abstract and [0101]. However, the present claim language of Claims 1, 5, and 8 does not recite any language defining the location and/or orientation of the blockchain. For example, Claims 1, 5, and 8 do not recite that the blockchain is external or remote from the processor and memory. Furthermore, as shown above, Day does teach verifying the authenticity of the data based on a consultation with a KSI blockchain, e.g. see Day [0037]-[0039], [0046]-[0047], [0051], and [0101]. Hence, Day is not deficient to teach the features it is cited for.
Regarding Rueda Galan, as shown above, Rueda Galan teaches storing product details on a blockchain, wherein the authenticity of the product may be determined based on a QR code linked to a URL for a specific block of the blockchain, e.g. see Rueda Galan [0058], [0067], [0083], and [0085]-[0087].
For the aforementioned reasons, Claims 1, 5, and 8 are rejected under 35 U.S.C. 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is as follows:
Gadnis (US 2018/0285879) – teaches a blockchain-based identity and transaction platform that stores transactions including vaccination data, and further includes a dashboard that enables a user to view various data regarding a block including the block number showing where the transaction data is stored.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN P GO whose telephone number is (703)756-1965. The examiner can normally be reached Monday-Friday 9am-6pm Pacific.
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/JOHN P GO/Primary Examiner, Art Unit 3681
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