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 .
The following is a non-final, first office action on the merits, in response to application filed 7/1/2025. Claim 1-20 has been examined and are currently pending.
Priority
This application discloses and claims a continuation of Application No. 18/222445 (now abandoned), filed 7/15/2023, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application constitutes a continuation of 18/222445.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Acknowledgment is made of applicant's claim for a provisional application filed on 7/21/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/23/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 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.
Alice Corp. also establishes that the same analysis should be used for all categories of claims, regardless of a system/apparatus, a method, or a product claim.
The claimed invention (Claims 1-20) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, “an idea “of itself”, which have been identified/found by the courts as abstract ideas in new 101 memos of the subject matter eligibility in here (https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility) including 2019 Revised Patent Subject Matter Eligibility Guidance. This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because It/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
Independent claim 1 (Step 2A, Prong I): is directed to multiple abstract ideas including “Certain Methods of Organizing Human Activity”, and “Mental process”.
Claim 1, Steps of,
receiving, via a processor of a blockchain node of a plurality of blockchain nodes, a request for obtaining ownership of the IGV from a terminal device associated to a first entity of a plurality of entities, wherein the request includes unidentified data related to the first entity and data related to the IGV;
identifying, via the processor, at least one of a set of attributes of the IGV from the data related to the IGV, and the unidentified data related to the first entity, based on the receiving the request for obtaining the ownership of the IGV;
transforming, via the processor, at least one of data related to the set of attributes of the IGV and identified data related to the first entity to a first concatenated data string, based on the identifying the at least one of the set of attributes of the IGV and the unidentified data related to the first entity;
generating, via the processor, a first cryptographic hash value for the IGV, based on the first concatenated data string and execution of at least a set of machine-readable instructions, wherein the first cryptographic hash value, the data related to the set of attributes of the IGV, and the identified data related to the first entity are stored on a blockchain ledger that is distributed over the plurality of blockchain nodes; and
assigning, via the processor, the ownership of the IGV to the first entity, based on the generating the first cryptographic hash value and executing a first smart contract of a plurality of smart contracts, wherein
the plurality of smart contracts is stored on the blockchain ledger,
the first smart contract, when executed, validates authenticity of the first cryptographic hash value by acquiring the first cryptographic hash value from the blockchain ledger and comparing, subsequently, the first cryptographic hash value with at least one of the data related to the set of attributes of the IGV and the identified data related to the first entity,
the first smart contract, in real-time, records ownership information of the IGV on the blockchain ledger after the assigning the ownership of the IGV to the first entity, and
the ownership information of the IGV recorded on the blockchain ledger is immutable and verified through the first cryptographic hash value.
fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe the concepts of commercial or legal interactions (advertising, marketing or behaviors, sales activity, business relation); and managing personal behavior or relationships or interactions between people (including following rules or/and instructions). The instant steps also encompass both certain activity of a single person, certain activity that involves multiple people, and certain activity between a person and a computer.
In addition, claim 1, step mentioned above also falls within the abstract “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the mind. For example, a human being can observe/receive a request, can observe/identify a set of attributes, can observe/transform data, can observe/instruct/execute a machine to generate value/validate, can observe/assign ownership, can observe/store the contract.
Independent claim 1, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites additional element (a processor). Other than reciting “via a processor”, nothing in the claim element precludes the step from practically being performed in the mind. The steps can be performed by a human, such as a producer, a user, let alone any specificity regarding any technology, just broadly, to determine values/coupon/attribute information, to obtain/store/assign/transfer ownership.
It should be noted the limitations of the method claims are claimed as being performed by a generic processor/a computer/a server recited in method claim 1 and reciting them as though they are performed by the generically recited physical computing device does not constitute an improvement to another technology or technical field. The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions such as receiving/retrieving data, determining data, transmitting/transferring data that are well-understood, routine and conventional activities previously known to the industry.
Thus, the computer processor/server is not an essential element to actually create, change, or display functionality, and is simply used as a tool to automate the mental tasks. Applicant simply use a generic processor/server/computing device as a tool to implement the abstract ideas. The Examiner notes the instant claimed invention is in fact merely carried out by a generically recited computing platform; that is, essentially any computing system as seen in the applicant’s specification. The additional element limitations are simply a field of use that attempt to limit the abstract idea to a particular technological environment. The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. Further the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significant more.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. There is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself, and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim 1 (step 2B): The steps can usually done by a human, for example, a producer, a user. The additional element (i.e. a processor), is recited at high level of generality and is a generic computing component, and add nothing of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
These components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer/device components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/transfer/transmit/present/display information does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 1).
According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward
information); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence required by Berkeimer memo). Further, according to Berkheimer memo 04/19/2018, section III.A.1, “A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)”.
Applicant’s Specification indicate a general-purpose computer perform the instant steps and demonstrates the well-understood, routine, conventional nature of the information processing device (a processor/a computer) in any computing implementation. In other word, in light of the description in the specification as mentioned above with respect to the generic computer/user interface in the Specification demonstrates that the additional elements must be sufficiently well-known. Thus, evidence has been provided to show these additional elements are well-understood, routine, conventional activity according to Berkheimer memo. Therefore, for the above-mentioned reasons, viewed as a whole, even in combination, the above steps do not amount to significantly more/do not provide an inventive concept.
Dependent claims 2-14, are merely add further details of the abstract steps/elements recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 2-14 are also non-statutory subject matter.
Independent claim 17, 20: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system claim 17, and product claim 20 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claim(s) 1.
Further, the components (i.e. a processor, a memory and computer readable medium) described in independent claim 17, 20, add nothing of substance to the underlying abstract idea. Similarly, as it relates to the computer system claims, the limitations appear to be performed by a generic computing system. These components are merely recited at a high level of generality and/or are recited as performing generic computing functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. There are no hardware/machine/computing devices to actually perform the steps. The use of generic computer components to receive/collect/provide/storing/transmit/present/display information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 1).
Dependent claims 18-19 are merely add further details of the abstract steps/elements recited in claim 17, without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 18-19 are also non-statutory subject matter.
Viewed as a whole, the claims (1-14, 17-20) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Thus, the claims do NOT recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Thus, the claimed invention, as a whole, does not provide 'significantly more' than the abstract idea, and is non-statutory subject matter.
Possible resolving Alice 101 issues
Dependent claim 15, 16:
If independent claim 1, 17, 20, incorporate claimed element from dependent claim 14, 15 respectively, in particular, specifying how the system controls/automates the creation of cryptographic value/its structure, how the system controls/automates validation or authentication the generated hash value related to IGV, are rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office Action.
Prior Art Rejection
Independent claims 1, 17, 20, as a whole recite a combination of limitations that has Not been found as define over prior art of record (the combination of
Lingham et al. (US 2020/0111088), Lingham et al. (US 2016/0267474), Abifaker (US 2008/0052164), Walker et al. (US Patent 6,138,106), Vijayan et al. (US 2023/0394469), Jakobsson et al. (US 2023/0385815), Quigley et al. (US 2023/0118213), and
NPL1---R. Bhattacharya, M. White and N. Beloff, "A blockchain based peer-to-peer framework for exchanging leftover foreign currency," 2017 Computing Conference, London, UK, 2017, pp. 1431-1435, doi: 10.1109/SAI.2017.8252284. (Year: 2017)
NPL2---Method for point of service 'automatic gift card redemption thank you' An IP.com Prior Art Database Technical Disclosure Authors et. al.: Disclosed Anonymously IP.com Number: IPCOM000218179D IP.com Electronic Publication Date: May 25, 2012 (Year: 2012)
NPL3--- A. Vigil, P. Pathak, S. Upadhyay, D. Singh and V. Garg, "Blockchain Over Transaction System," 2018 3rd International Conference on Communication and Electronics Systems (ICCES), Coimbatore, India, 2018, pp. 1111-1117, doi: 10.1109/CESYS.2018.8723962. (Year: 2018)
and the other references teaches all the claimed features.
Allowable Subject Matter
As to the prior art rejection, in light of Specification, upon further search and consideration, it is found that claim 1-20 overcome prior art/reference over the recited arts of record, and is allowable subject to an outstanding Alice 101 rejections.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Wolfe (US 2014/0258055),
Lamba et al. (US Patent 9224141).
Isaacson et al. (US 2014/0330713, teaches processing financial transaction, gift certificate).
Isaacson et al. (US 2018/0165675, teaches managing gift cards).
Salmon et al. (US 2014/0310080) teaches managing loyalty benefit.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm. Fax is 571-270-6489.
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/SUN M LI/Primary Examiner, Art Unit 3685