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 .
Detailed Action
This action is in response to the application filed on 6/18/2025.
Priority
Acknowledgment is made of applicant's claim for prior priority dates including:
This application is a CON of 18/052,363 11/03/2022 PAT 12354095
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
All claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) of U.S. Patent No. 12,354,095. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to systems and methods for systems and methods for based on the indication, nodes associated with a distributed database that is particular to the vehicle, a request to add a smart contract to the distributed database, the smart contract indicating the one or more settings.
The differences between the claimed invention and the reference claims are limited to parent case had second indication. This difference would have been an obvious modification to a person of ordinary skill in the art because it represents a predictable variation to achieve intended purpose or function, and thus does not render the claims patentably distinct.
Regarding claim 1, the limitations of this claim are disclosed by, or correspond to, the limitations of claim 1 of U.S. Patent No. 12,354,095.
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.
All claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method Claim 15 (herein called the Primary Independent Claim) as the claim that represents the claimed invention for analysis and is similar to independent system Claim 1 and product Claim 8 (herein called Additional Independent Claims). The Primary Independent Claim recites the limitations of:
A method, comprising: receiving, by a device, an indication of one or more settings for a vehicle; and transmitting, by the device, based on the indication, and to one or more nodes associated with a distributed database that is particular to the vehicle, a request to add a smart contract to the distributed database, the smart contract indicating the one or more settings
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The limitation of at least “a request to add a smart contract to the distributed database” recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of at least “one or more memories; and one or more processors” in the Primary Independent Claim is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. The Additional Independent Claims are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. The examiner did not find any additional elements that would cause further analysis. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, all the independent claims are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware and software per se amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more as well as MPEP 2106.05(d). Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, all independent claims are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims, and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, all the claims are not patent-eligible.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 listed below are rejected under 35 U.S.C. 103 as being unpatentable over Mazaael (U.S. Patent ref#1) in view of Dey and Floyd (U.S. Patent ref#2)
Re claim 1 & 8 & 15: Mazaael discloses:
A non-transitory computer-readable medium storing a set of instructions, the set of instructions comprising: one or more instructions that, when executed by one or more processors of a device, cause the device to: (see Mezaael Fig 1 – 3)
A device, comprising: one or more memories; and one or more processors, coupled to the one or more memories, configured to: (see Mezaael Fig 1 – 3)
A method, comprising: (see Mezaael Fig 1 – 3)
receiving, by a device, an indication of one or more settings for a vehicle; and (see Mezaael Fig 3 item 305)
transmitting, by the device, based on the indication, and to one or more nodes associated with a distributed database that is particular to the vehicle, a request to add a smart contract to the distributed database, the smart contract indicating the one or more settings (see Mezaael Fig 3 item 310-320 + Fig 2 item 245-370 + Fig 1 item 162 + 102)
Although Mazaael does not explicitly have distributed database, Dey and Floyd more clearly claims “Distributed database” and other features.
See Dey para 0003 + receiving settings for a vehicle; and (see Del Fig 1A item 114-124) + transmitting a request to add a smart contract to the distributed database (see Del Fig 1A item 112)
See Floyd Fig 6 + receiving settings for a vehicle; and (see Floyd Fig 1A item 101-105) + transmitting a request to add a smart contract to the distributed database (see Floyd Fig 1A item 125 + Fig 5 item 525)
Therefore it would have been obvious to one of ordinary skill in the art at the effect filling date was made to modify Mazaael by adapting any features of Dey and Floyd.
It is clear that one would be motivated by the teaching in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. Specifically, both Mazaael teaches Fig 3 that is adapted in Distributed database system see Figure Floyd Fig 6 + Dey Fig 1A)
Re claim 2 & 9 & 16: see claim 1 +
wherein the one or more settings include one or more vehicle exchange settings. (see Mezaael Fig 3 item 305 + Del Fig 1A item 114-124 + Floyd Fig 1A item 101-105)
Re claim 3 & 10 & 17: see claim 1 +
wherein the one or more settings include one or more vehicle coverage settings. (see Mezaael Fig 3 item 305 + Del Fig 1A item 114-124 + Floyd Fig 1A item 101-105)
Re claim 4 & 11 & 18: see claim 1 +
wherein the distributed database includes a plurality of records associated with the vehicle. (see Mezaael Fig 3 item 305 + Del para 0003 Fig 1A item 114-124 + Floyd Fig 1A item 101-105)
Re claim 5 & 12 & 19: see claim 1 +
wherein the one or more records are inter-related. (see Mezaael Fig 3 item 310-320 + Fig 2 item 245-370 + Fig 1 item 162 + 102 + Del Fig 1A item 112 + Floyd Fig 1A item 125 + Fig 5 item 525)
Re claim 6 & 13 & 20: see claim 1 +
wherein execution of the smart contract causes an additional smart contract, indicating an exchange amount for the vehicle, to be added to the distributed database. (see Mezaael Fig 3 item 310-320 + Fig 2 item 245-370 + Fig 1 item 162 + 102 + Del para 0003 + Fig 1A item 112 + Floyd Fig 1A item 125 + Fig 5 item 525)
Re claim 7 & 14: see claim 1 +
wherein the additional smart contract is added based on satisfaction of a setting, of the one or more settings. (see Mezaael Fig 3 item 310-320 + Fig 2 item 245-370 + Fig 1 item 162 + 102 + Del Fig 1A item 112 + Floyd Fig 1A item 125 + Fig 5 item 525)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lamba et al., U.S. Patent Pub 2020/0074477, discloses a media for implementing a block chain node device are disclosed. A processor allows hosting a received smart contract on a block chain ledger.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kirsten Apple whose telephone number is (571)272-5588. The examiner can normally be reached on M-F 9-5.
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, Michael Anderson can be reached on (571) 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIRSTEN S APPLE/Primary Examiner, Art Unit 3693
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