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 .
Status of Claims
Claims 1-10 are pending.
Priority
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.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 08/18/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
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.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of US 12,394,004 B2 and claims 1 and 3 of US 12,008,669 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claims at issue are recited in claims 1-10 of US 12,394,004 B2 and claims 1 and 3 of US 12,008,669 B2. Further, it would have been obvious to a person of ordinary skill in the art to modify claims of US 12,394,004 B2 and US 12,008,669 B2 by removing the additional features (e.g., use of both a reporting and broker computing devices, and “issuing, by the reporting computing device to a broker computing device of the computing infrastructure, the indication of potential use of the set of patents by the user computing device”). It is well settled that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karison, 136 USPQ 184 (CCPA 1963) Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Thus, omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
The claims are mapped as follows:
Instant Application 19/303,016
US 12,394,004 B2
US 12,008,669 B2
1. A computer-implemented method of using a computing device of a computing infrastructure for utilizing a patent distributed ledger, the method comprising:
accessing, the computing device of the computing infrastructure, a non-fungible token (NFT) from the patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilizing, by the computing device, the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by a user computing device of the computing infrastructure;
determining, by the computing device, that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generating, by the computing device, an indication of potential use of the set of patents by the user computing device;
determining, by the computing device, that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
issuing, by the computing device to the user computing device, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
interpreting, by the computing device, a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and the patent set identifier;
extracting, by the computing device, the smart contract from the NFT;
establishing, by the computing device, proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
obtaining, by the computing device, a copy of a portion of the patent distributed ledger;
hashing, by the computing device, the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypting, by the computing device, the next transaction hash value utilizing a private key of the computing device to produce a next transaction signature;
generating, by the computing device, a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
causing, by the computing device, inclusion of the new block in the patent distributed ledger.
1. A computer-implemented method of using a computing infrastructure for utilizing a patent distributed ledger, the method comprising:
accessing, by a reporting computing device of the computing infrastructure, a non-fungible token (NFT) from the patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilizing, by the reporting computing device, the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by a user computing device of the computing infrastructure;
determining, by the reporting computing device, that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generating, by the reporting computing device, an indication of potential use of the set of patents by the user computing device;
issuing, by the reporting computing device of the computing infrastructure to a broker computing device of the computing infrastructure, the indication of potential use of the set of patents by the user computing device;
determining, by the broker computing device, that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
issuing, by the broker computing device to the user computing device, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
interpreting, by the broker computing device, a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and an identifier of the set of patents;
extracting, by the broker computing device, the smart contract from the non-fungible token (NFT) associated with the set of patents from the patent distributed ledger;
establishing, by the broker computing device, proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
obtaining, by the broker computing device, a copy of a portion of the patent distributed ledger;
hashing, by the broker computing device, the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypting, by the broker computing device, the next transaction hash value utilizing a private key of the broker computing device to produce a next transaction signature;
generating, by the broker computing device, a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
causing, by the broker computing device, inclusion of the new block in the patent distributed ledger.
1. A computer-implemented method of using a computing infrastructure for utilizing a patent distributed ledger, the method comprising:
issuing, by a broker computing device of the computing infrastructure to a reporting computing device of the computing infrastructure, one or more of patent basics of a set of patents, the one or more of patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilizing, by the reporting computing device, the one or more patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by a user computing device of the computing infrastructure;
determining, by the reporting computing device, that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generating, by the reporting computing device, an indication of potential use of the set of patents by the user computing device;
obtaining, by the broker computing device of the computing infrastructure, the indication of potential use of the set of patents by the user computing device of the computing infrastructure;
accessing, by the broker computing device, a portion of the patent distributed ledger associated with the set of patents;
determining, by the broker computing device, that the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents;
generating, by the broker computing device, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
issuing, by the broker computing device, the bilateral licensing request to the user computing device;
in response to the bilateral licensing request, issuing, by the user computing device to the broker computing device, a request to produce a license of the set of patents for use by the user computing device;
interpreting, by the broker computing device, the request from the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and an identifier of the set of patents;
identifying, by the broker computing device, a non-fungible token (NFT) associated with the set of patents, wherein the patent distributed ledger includes the NFT, wherein the user computing device is not already affiliated with a license connected to the NFT, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes the one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms;
obtaining, by the broker computing device, the available license terms from the smart contract;
generating, by the broker computing device, proposed agreed license terms based on the available license terms and the request from the user computing device;
determining, by the broker computing device, that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents;
establishing, by the broker computing device, the proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
establishing, by the broker computing device, agreed payment terms based on the available payment terms of the set of patents to update the new smart contract;
determining, by the broker computing device, to directly update the patent distributed ledger;
obtaining, by the broker computing device, a copy of the patent distributed ledger;
hashing, by the broker computing device, the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypting, by the broker computing device, the next transaction hash value utilizing a private key of the broker computing device to produce a next transaction signature;
generating, by the broker computing device, a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
causing, by the broker computing device, inclusion of the new block in the patent distributed ledger.
2. The method of claim 1 further comprising:
accessing, by the computing device, the portion of the patent distributed ledger associated with the set of patents;
determining, by the computing device, whether the user computing device is affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents; and
indicating, by the computing device, to issue the bilateral licensing request when the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents.
2. The method of claim 1 further comprising:
accessing, by the broker computing device, the portion of the patent distributed ledger associated with the set of patents;
determining, by the broker computing device, whether the user computing device is affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents; and
indicating, by the broker computing device, to issue the bilateral licensing request when the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents.
See Claim 1
3. The method of claim 1 further comprising:
generating, by the computing device, the bilateral licensing request including the indication of potential use of the set of patents by the user computing device; and
generating, by the user computing device, the request from the user computing device to license the set of patents for use by the user computing device, wherein the request from the user computing device to license the set of patents includes the licensee information.
3. The method of claim 1 further comprising:
generating, by the broker computing device, the bilateral licensing request including the indication of potential use of the set of patents by the user computing device; and
generating, by the user computing device, the request from the user computing device to license the set of patents for use by the user computing device, wherein the request from the user computing device to license the set of patents includes the licensee information.
See Claim 1
4. The method of claim 1 further comprising:
obtaining, by the computing device, the available license terms from the smart contract;
generating, by the computing device, the proposed agreed license terms based on the available license terms and the request from the user computing device to license the set of patents; and
determining, by the computing device, that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents.
4. The method of claim 1 further comprising:
obtaining, by the broker computing device, the available license terms from the smart contract;
generating, by the broker computing device, the proposed agreed license terms based on the available license terms and the request from the user computing device to license the set of patents; and
determining, by the broker computing device, that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents.
See Claim 1
5. The method of claim 1 further comprising:
establishing, by the computing device, agreed payment terms based on the available payment terms of the set of patents to update the new smart contract.
5. The method of claim 1 further comprising:
establishing, by the broker computing device, agreed payment terms based on the available payment terms of the set of patents to update the new smart contract.
See Claim 1
6. A computing infrastructure system, the computing infrastructure system comprising:
a computing device comprising a first interface, a first local memory, and a first processor operably coupled to the first interface and the first local memory;
a user computing device comprising a second interface, a second local memory, and a second processor operably coupled to the second interface and the second local memory; and
wherein the first processor performs functions to:
access, via the first interface, a non-fungible token (NFT) from a patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilize the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by the user computing device;
determine that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generate an indication of potential use of the set of patents by the user computing device;
determine that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
issue, to the user computing device via the first interface, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
interpret a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and the patent set identifier;
extract the smart contract from the NFT associated with the set of patents from the patent distributed ledger;
establish proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
obtain, via the first interface, a copy of a portion of the patent distributed ledger;
hash the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypt the next transaction hash value utilizing a private key of the computing device to produce a next transaction signature;
generate a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
cause, via the first interface, inclusion of the new block in the patent distributed ledger.
6. A computing infrastructure system, the computing infrastructure system comprising:
a reporting computing device comprising a first interface, a first local memory, and a first processor operably coupled to the first interface and the first local memory;
a broker computing device comprising a second interface, a second local memory, and a second processor operably coupled to the second interface and the second local memory;
a user computing device comprising a third interface, a third local memory, and a third processor operably coupled to the third interface and the third local memory;
wherein the first processor performs functions to:
access, via the first interface, a non-fungible token (NFT) from a patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilize the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by the user computing device;
determine that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generate an indication of potential use of the set of patents by the user computing device;
issue, to the broker computing device via the first interface, the indication of potential use of the set of patents by the user computing device; and
wherein the second processor performs functions to:
determine that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
issue, to the user computing device via the second interface, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
interpret a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and an identifier of the set of patents;
extract the smart contract from the non-fungible token (NFT) associated with the set of patents from the patent distributed ledger;
establish proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
obtain, via the second interface, a copy of a portion of the patent distributed ledger;
hash the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypt the next transaction hash value utilizing a private key of the broker computing device to produce a next transaction signature;
generate a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
cause, via the second interface, inclusion of the new block in the patent distributed ledger.
3. A computing infrastructure system, the computing infrastructure system comprising:
a broker computing device comprising a first interface, a first local memory, and a first processor operably coupled to the first interface and the first local memory;
a reporting computing device comprising a second interface, a second local memory, and a second processor operably coupled to the second interface and the second local memory; and
a user computing device comprising a third interface, a third local memory, and a third processor operably coupled to the third interface and the third local memory;
wherein the first processor performs functions to:
issue, to the reporting computing device, one or more of patent basics of a set of patents, the one or more of patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
obtain an indication of potential use of the set of patents by the user computing device;
access a portion of a patent distributed ledger associated with the set of patents;
determine that the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents;
generate a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
issue the bilateral licensing request to the user computing device;
interpret a request to produce a license of the set of patents from the user computing device to cause the license of the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and an identifier of the set of patents;
identify a non-fungible token (NFT) associated with the set of patents, wherein the patent distributed ledger includes the NFT, wherein the user computing device is not already affiliated with a license connected to the NFT, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes the one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms;
obtain the available license terms from the smart contract;
generate proposed agreed license terms based on the available license terms and the request from the user computing device;
determine that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents;
establish the proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
establish agreed payment terms based on the available payment terms of the set of patents to update the new smart contract;
determine to directly update the patent distributed ledger;
obtain a copy of the patent distributed ledger;
hash the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypt the next transaction hash value utilizing a private key of the broker computing device to produce a next transaction signature;
generate a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
cause inclusion of the new block in the patent distributed ledger;
wherein the second processor performs functions to:
utilize the one or more patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by the user computing device;
determine that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device; and
generate the indication of potential use of the set of patents by the user computing device; and
wherein the third processor performs functions to: in response to the bilateral licensing request, issue to the broker computing device, the request to produce the license of the set of patents for use by the user computing device.
7. The computing infrastructure system of claim 6 further comprising:
wherein the first processor performs further functions to:
access the portion of the patent distributed ledger associated with the set of patents;
determine whether the user computing device is affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents; and
indicate to issue the bilateral licensing request when the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents.
7. The computing infrastructure system of claim 6 further comprising:
wherein the second processor performs further functions to:
access the portion of the patent distributed ledger associated with the set of patents;
determine whether the user computing device is affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents; and
indicate to issue the bilateral licensing request when the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents.
See Claim 3
8. The computing infrastructure system of claim 6 further comprising:
wherein the first processor performs further functions to:
generate the bilateral licensing request including the indication of potential use of the set of patents by the user computing device; and
wherein the second processor performs functions to:
generate the request from the user computing device to license the set of patents for use by the user computing device, wherein the request from the user computing device to license the set of patents includes the licensee information.
8. The computing infrastructure system of claim 6 further comprising:
wherein the second processor performs further functions to:
generate the bilateral licensing request including the indication of potential use of the set of patents by the user computing device; and
wherein the third processor performs functions to:
generate the request from the user computing device to license the set of patents for use by the user computing device, wherein the request from the user computing device to license the set of patents includes the licensee information.
See Claim 3
9. The computing infrastructure system of claim 6 further comprising:
wherein the first processor performs further functions to:
obtain the available license terms from the smart contract;
generate the proposed agreed license terms based on the available license terms and the request from the user computing device to license the set of patents; and
determine that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents.
9. The computing infrastructure system of claim 6 further comprising:
wherein the second processor performs further functions to:
obtain the available license terms from the smart contract;
generate the proposed agreed license terms based on the available license terms and the request from the user computing device to license the set of patents; and
determine that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents.
See Claim 3
10. The computing infrastructure system of claim 6 further comprising:
wherein the first processor performs further functions to:
establish agreed payment terms based on the available payment terms of the set of patents to update the new smart contract.
10. The computing infrastructure system of claim 6 further comprising:
wherein the second processor performs further functions to:
establish agreed payment terms based on the available payment terms of the set of patents to update the new smart contract.
See Claim 3
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Step 1 of the eligibility analysis asks is the claim to a process, machine, manufacture or composition of matter (See MPEP § 2106.03, subsections I and II). Claims 1-5 are directed to a computer-implemented method (i.e., process). Claims 6-10 are directed to a computer-implemented system (i.e., machine, and manufacture). Therefore, these claims fall within the four statutory categories of invention.
Step 2A, Prong One
Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon (MPEP § 2106.04(II)(A)(1)). Claims 1 and 6 under a broadest reasonable interpretation recite an abstract idea because the claims describe patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas (MPEP § 2106.04(a)(2), subsection II). The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas because the limitations describe fundamental economic principles or practices, including mitigating risk, and describe commercial or legal interactions, including agreements in the form of contracts, and advertising, marketing or sales activities or behaviors. The following underlined claim limitations recite the abstract idea.
Claim 1:
accessing, the computing device of the computing infrastructure, a non-fungible token (NFT) from the patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilizing, by the computing device, the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by a user computing device of the computing infrastructure;
determining, by the computing device, that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generating, by the computing device, an indication of potential use of the set of patents by the user computing device;
determining, by the computing device, that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
issuing, by the computing device to the user computing device, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
interpreting, by the computing device, a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and the patent set identifier;
extracting, by the computing device, the smart contract from the NFT;
establishing, by the computing device, proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
obtaining, by the computing device, a copy of a portion of the patent distributed ledger;
hashing, by the computing device, the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypting, by the computing device, the next transaction hash value utilizing a private key of the computing device to produce a next transaction signature;
generating, by the computing device, a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
causing, by the computing device, inclusion of the new block in the patent distributed ledger.
Claim 6:
a computing device comprising a first interface, a first local memory, and a first processor operably coupled to the first interface and the first local memory;
a user computing device comprising a second interface, a second local memory, and a second processor operably coupled to the second interface and the second local memory; and
wherein the first processor performs functions to:
access, via the first interface, a non-fungible token (NFT) from a patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
utilize the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by the user computing device;
determine that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device;
generate an indication of potential use of the set of patents by the user computing device;
determine that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
issue, to the user computing device via the first interface, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device;
interpret a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and the patent set identifier;
extract the smart contract from the NFT associated with the set of patents from the patent distributed ledger;
establish proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract;
obtain, via the first interface, a copy of a portion of the patent distributed ledger;
hash the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value;
encrypt the next transaction hash value utilizing a private key of the computing device to produce a next transaction signature;
generate a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and
cause, via the first interface, inclusion of the new block in the patent distributed ledger.
Step 2A, Prong Two
Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application (MPEP § 2106.04(II)(A)(2)). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h). Here, the non-underlined claim limitations above recite additional elements. The additional elements do not improve the functioning of computers, another technology, or a technical field (MPEP §§ 2106.04(d)(1) and 2106.05(a)). The Specification does not assert that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. The claim does not purport to improve computer capabilities, but rather invokes computers merely as a tool by adding general purpose computers post-hoc to an abstract idea. A commonplace business method being applied on a general-purpose computer is not sufficient to show an improvement to technology. The claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. The Specification and the claim language provide evidence that the focus of the claim is on a scheme. An improvement in the abstract idea itself is not an improvement in technology. Even if the Specification describes technical improvements, they are not claimed. The additional elements do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (MPEP § 2106.04(d)(2)). The additional elements do not implement the abstract idea with a particular machine or manufacture that is integral to the claim (MPEP § 2106.05(b)). A general-purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. The additional elements do not transform or reduce a particular article to a different state or thing (MPEP § 2106.05(c)). The claim does not recite any transformation of an article where the article changes to a different state or thing. Nor do the additional elements apply the abstract idea in a meaningful way or impose a meaningful limit on it beyond linking its use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). The additional elements generally link the use of the judicial exception to a particular technological environment. A wholly generic computer implementation is not generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself. The additional elements individually and in combination, merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). Implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application. The additional elements are being used in their ordinary capacity. The additional elements do no more than merely invoke computers or machinery as a tool to perform an existing process. The additional elements generally link the use of the abstract idea to a particular technological environment or field of use (MPEP § 2106.05(h)). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception cannot integrate a judicial exception into a practical application. Thus, the additional elements do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to the abstract idea identified above.
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the abstract idea itself (MPEP § 2106.05). In Step 2B examiners carry over their identification of the additional element(s) in the claim from Step 2A Prong Two; carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a)-(c), (e), (f) and (h); re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d). The additional elements individually and in combination, merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). The additional elements generally link the use of the abstract idea to a particular technological environment or field of use (MPEP § 2106.05(h)). Individually, the additional elements do not amount to significantly more than the abstract idea. Here, the additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Here, the specification of the application indicates that additional elements are well-known or conventional (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). There is nothing in the specification to indicate that the operations recited in the claims require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. The ordered combination recites no more than the individual elements do. Thus, the additional elements are not significantly more than the abstract idea. Accordingly, the claims are directed to the abstract idea identified above without significantly more. The claims are not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claim 2 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
accessing, by the computing device, the portion of the patent distributed ledger associated with the set of patents;
determining, by the computing device, whether the user computing device is affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents; and
indicating, by the computing device, to issue the bilateral licensing request when the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents.
Claim 3 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
generating, by the computing device, the bilateral licensing request including the indication of potential use of the set of patents by the user computing device; and
generating, by the user computing device, the request from the user computing device to license the set of patents for use by the user computing device, wherein the request from the user computing device to license the set of patents includes the licensee information.
Claim 4 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
obtaining, by the computing device, the available license terms from the smart contract;
generating, by the computing device, the proposed agreed license terms based on the available license terms and the request from the user computing device to license the set of patents; and
determining, by the computing device, that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents.
Claim 5 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
establishing, by the computing device, agreed payment terms based on the available payment terms of the set of patents to update the new smart contract.
Claim 7 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
wherein the first processor performs further functions to:
access the portion of the patent distributed ledger associated with the set of patents;
determine whether the user computing device is affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents; and
indicate to issue the bilateral licensing request when the user computing device is not affiliated with licensing of the set of patents based on the portion of the patent distributed ledger associated with the set of patents.
Claim 8 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
wherein the first processor performs further functions to:
generate the bilateral licensing request including the indication of potential use of the set of patents by the user computing device; and
wherein the second processor performs functions to:
generate the request from the user computing device to license the set of patents for use by the user computing device, wherein the request from the user computing device to license the set of patents includes the licensee information.
Claim 9 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
wherein the first processor performs further functions to:
obtain the available license terms from the smart contract;
generate the proposed agreed license terms based on the available license terms and the request from the user computing device to license the set of patents; and
determine that the proposed agreed license terms are acceptable to a set of owners associated with the set of patents.
Claim 10 recites an abstract idea because the claim describes patent licensing management, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements. The additional elements do not integrate the abstract idea into a practical application and are not significantly more than the abstract idea because the additional elements individually and in combination, merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment or field of use. The additional elements, individually and in combination, are well-understood, routine, conventional activity (See Spec. 0005, 0037-0047, 0155, 0162, 0168-0169). Therefore, the claim is not eligible.
wherein the first processor performs further functions to:
establish agreed payment terms based on the available payment terms of the set of patents to update the new smart contract.
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 1-10 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 pre-AIA the applicant regards as the invention.
Relative Terminology
Claims 1 and 6 recite the term "determining, by the computing device, that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device". However, the term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree (See pre-grant publication 0056), and one or ordinary skill in the art would not be reasonably apprised of the scope of the invention (See MPEP 2173.05(b)).
Therefore, these claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 2-5 and 7-10 are also rejected per dependency upon a rejected claim.
Claims Free of Art
Claims 1-10 are free of art.
The closest prior art of record is US 2021/0035246 A1 by Schouppe et al. (hereinafter “Schouppe”). Schouppe teaches:
issuing, by the computing device to the user computing device, a bilateral licensing request including the indication of potential use of the set of patents by the user computing device; (paras 71-72, 76)
interpreting, by the computing device, a request from the user computing device to license the set of patents for use by the user computing device to produce licensee information, wherein the licensee information includes a licensee identifier and the patent set identifier; (paras 71-72, 76)
establishing, by the computing device, proposed agreed license terms as the agreed license terms to update the smart contract to produce a new smart contract; (paras 66, 71-72, 76)
obtaining, by the computing device, a copy of a portion of the patent distributed ledger; (paras 58, 63, 65, 78, 82-84)
hashing, by the computing device, the new smart contract utilizing a receiving public key of the patent distributed ledger to produce a next transaction hash value; (paras 58, 63, 65, 78, 82-84)
encrypting, by the computing device, the next transaction hash value utilizing a private key of the computing device to produce a next transaction signature; (paras 58, 63, 65, 78, 82-84)
generating, by the computing device, a new block of a blockchain of the patent distributed ledger to include the new smart contract and the next transaction signature; and (paras 58, 63, 65, 78, 82-84)
causing, by the computing device, inclusion of the new block in the patent distributed ledger. (paras 58, 63, 65, 78, 82-84)
US 2018/0285996 A1 by Ma (hereinafter “Ma”) is also of interest. Ma teaches:
utilizing, by the computing device, the patent basics to compare claimed aspects of the set of patents to an activity of a potential utilization of the set of patents by a user computing device of the computing infrastructure; (paras 130-134)
determining, by the computing device, that the claimed aspects of the set of patents are substantially the same as the activity of the potential utilization of the set of patents by the user computing device; (paras 130-134)
generating, by the computing device, an indication of potential use of the set of patents by the user computing device; (paras 130-134)
US 2021/0256070 A1 by Tran et al. (hereinafter “Tran”) is also of interest. Tran teaches:
extracting, by the computing device, the smart contract from the NFT; (0107, 0112-0113, 0118-0119, 0184-0185, 0252, 0870, 0875)
Therefore, the prior art does not teach, neither singly nor in combination the following:
accessing, the computing device of the computing infrastructure, a non-fungible token (NFT) from the patent distributed ledger where the NFT represents a set of patents, wherein the NFT includes a smart contract for the set of patents, wherein the smart contract includes one or more of patent basics of the set of patents, available license terms, available payment terms, agreed license terms, and agreed payment terms the patent basics comprising a patent set identifier, a patent number of at least one patent number of the set of patents, and at least one patent owner identifier associated with the set of patents;
determining, by the computing device, that the user computing device is not affiliated with licensing of the set of patents based on a portion of the patent distributed ledger associated with the set of patents;
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2020/0213121 A1 to Hioki discloses: A token management system includes a generation unit that generates a non-fungible token associated with a product identifier in a distributed ledger, a management unit that associates the non-fungible token with a first public key, and a second public key for licensing processing in the distributed ledge, and a transfer unit that performs transaction processing of changing the first public key associated with the non-fungible token on the basis of a first private key is realized.
US 2021/0326856 A1 to Yantis et al. discloses: In embodiments of the present invention, methods are provided for maintaining a plurality of public addresses and a plurality of virtual representations and digital tokens of a plurality of items where each digital token is cryptographically linked to a respective instance of the item represented by the virtual representation. A request may be received to participate in a transaction for an item represented by a specific virtual representation and a transfer request received to transfer the specific digital token to a different user, where the transfer request includes a digital-token identifier that identifies the specific digital token and a public address of the different user, and a token validation and redemption process is completed.
US 2023/0177480 A1 to Spangenberg et al. discloses: A system and method which assesses for stakeholders or ownership holders in intangible property is disclosed, which utilizes tokens such as NFTs (non-fungible tokens) to represent ownership of unique stakes in intellectual property. The present invention provides an automated valuation of patents to assist with transfer pricing, by utilizing NFTs. This is not limited to patents, and can cover all transfer pricing (not limited to IP) utilizing NFTs, including all kinds of royalties. The present invention can apply to IP transactions, such as patent transactions. The present invention can authenticate those who are initiating the transfer, along with providing a hierarchical approval from supervisors and executives. In another embodiment, the present invention can include automated transfer pricing and automated IP valuation. However, manual IP valuation could also be used. The present invention is an automated valuation solution, as well as a joint automated and manual valuation solution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ari Shahabi whose telephone number is (571)272-2565. The examiner can normally be reached M-F: 8:00-5:00.
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, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARI SHAHABI/Primary Examiner, Art Unit 3697
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