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 .
In a response filed 2 September 2026, Applicant amends claims 1-20.
Claims 1-20 are presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2 September 2026 has been entered.
Election/Restrictions
The previously presented claims 1-20 were directed to a first invention whereas the claims filed in the response filed 02 September 2026 which amends all the claims while cancelling all subject matter directed to distinct inventions.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-10 drawn to: a hybrid decentralized identity system comprising a Domain Name System Security Extensions (DNSSEC) protected namespace containing a personal subdomain a Domain Name Systems TXT record for the personal subdomain including a decentralized identifier reference, and DNSSEC DS / DNSKEY /RRSIG chain and a resolver that maintains cached proof roots for the DNSSEC chain and the on-chain registry and for the resolution of access to or update of the personal subdomain, verifies the DNSSEC chain and the on-chain registry record, compares root digests of the cached proof roots to detect drift.
Claims 11-18 drawn to: methods for controlling an authority-changing action for a decentralized identity, comprising: for an authority-changing intent, requiring a canonical cryptographic consent tuple comprising an actor decentralized identifier (DID), a subject reference, an intent hash, a policy hash, proofs, a prior-commitment reference, time data, counters, a device reference, and one or more cryptographic signatures; deterministically canonicalizing the canonical cryptographic consent tuple and using the counters and the device reference to mitigate replay; enforcing continuity through the prior-commitment reference and a timelock and, when configured, requiring one or more co-signers.
Claims 19 and 20 drawn to transaction clearing and settlement system, comprising: an exchange component that receives a triplet comprising an instruction, a canonical cryptographic consent tuple, and minimum-disclosure proofs, the canonical cryptographic consent tuple comprising an intent hash, a policy hash, a prior-commitment reference, time data, counters, a device reference, and one or more cryptographic signatures, the exchange component verifying a message schema, verifying the one or more cryptographic signatures using a supported signature suite, verifying a timestamp window, verifying the device reference and policy guards, and verifying the minimum- disclosure proofs before forwarding a valid instruction.
These inventions are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable.
In the instant case, subcombination II has separate utility such as authorization changing and subcombination III has separate utility such transaction clearing and settlement systems. See MPEP § 806.05(d).
A separate, distinct and non-overlapping keyword search of the art would be required to fully examine each subcombination.
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
The Examiner would be required to perform a new, disparate, non-overlapping and burdenous search and examination of the claims. The Examiner notes that the claims require a burdenous search requiring distinct keyword combinations not used when searching the previous set of claims; the previous keyword combinations are not applicable.
The Examiner also notes that Applicant’s response titled “V. 35 U.S.C. 112(a) – WRITTEN DESCRIPTIONS”, the claims are separately addressed, at least in part:
Claim 1
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Claim 11
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Claim 19
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Applicant’s Response further demonstrates separate non-prior art issues that raise serious examination issues pertinent when analyzing each sub-combination. (see MPEP 808.02).
The Examiner also notes that Applicant’s response titled “VII. 35 U.S.C. 101 – THE PRESENT CLAIMS SHOULD BE RECONSIDERED AS THREE SPECIFIC TECHNICAL IMPLEMENTATIONS”, the claims are separately addressed, at least in part:
“A. The present claims materially change the focus of the eligibility inquiry”
“B. Claim 1 is rooted in DNS/DNSSEC resolution, a ledger registry, and a concrete recovery path”
“C. Claim 11 claims a cryptographic state-control technique for authority changes”
“D. Claim 19 claims a defined exchanged/clearing/settlement transaction path”
Accordingly, the claims require separate and distinct examination per 35 U.S.C. 101.
Since the Examiner has provided an action on the merits to the previously presented claims, the cancellation of those claims to pursue another invention is unreasonable; Applicant appears to have constructively abandoned the original invention by extensively amending all the claims.
Since applicant has received an action on the merits for the originally presented invention, specifically subcombination I, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, for at least the reasons stated supra, claims 11-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 11-20 are withdrawn subject to the restriction requirement.
Claims 1-10 stand pending and are presented for examination.
Response to Arguments
The Examiner addresses Applicant’s Remarks filed 02 September 2026, labeled, in part “AMENDMENT SUBMITTED WITH REQUEST FOR CONTINUED EXAMINATION”.
The Preliminary Statement section is acknowledged and no comments are made.
The Examiner addresses Applicant’s Remarks filed 02 September 2026, labeled “APPENDIX A – EXACT ORIGINAL LANGUAGE / RELATIONSHIP SUPPORT CHART RCE 1 V2.1 FINAL – AUGUST 31, 2025 SOURCE LOCK – CLAIMS 1-20”.
The Examiner acknowledges and appreciates the ‘CLAIM-BY-CLAIM EXACT-LANGUAGE SUPPORT”.
Due to the Restriction Requirement set forth supra, the listings as per claims 11-20 are moot and not addressed but the issues of support for those claims will be held in abeyance should the claims be reinstated or rejoined.
Further, due to the numerous issues identified under 35 U.S.C. 112 and 35 U.S.C. 101 set forth infra the Examiner has only addressed Claim 1 as the dependent claims ultimately inherit the issues upon which they depend.
On pages 8-10 of Applicant’s remarks, Applicant addresses prosecution status and amendments.
Given the section “Present RCE closure [sic]” states language has been removed, the arguments presented are moot in view of the new grounds of claim rejections necessitated by Applicant’s extensive amendments to the claims.
On pages 10-12 of Applicant’s remarks, Applicant addresses issues pertaining to 35 U.S.C. 112(a) and 35 U.S.C. 112(b).
The arguments are moot in view of the amendments to the claims as well as the Restriction Requirement set forth supra.
On page 13 of Applicant’s remarks, Applicant address issues pertaining to 35 U.S.C. 101, specifically arguing:
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The arguments have been carefully considered but are not persuasive as the DNSSEC-protected namespace, DNS/DNSSEC resolution, a ledger registry, concrete recovery path, DNS TXT record, a DS/DNSKEY/RRSIG chain, on-chain registry are all data structures. These elements are merely mathematical and logical constructs. As explained, such a data structure is merely a logical construct that is stored in computer memory recording information related to various entities and their relationship with each other. See In re Warmerdam, 33 F.3d 1354, 1362 (Fed. Cir. 1994) (holding that a claim directed to a data structure did not constitute patentable subject matter because it was nothing more than a way of describing the logical relationships among data elements designed to support data manipulation functions).
As MPEP § 2106.05(c) explains, [a]n “article” includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. “Transformation” of an article means that the “article” has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 . . . (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 . . . (Fed. Cir. 1994)).
The arguments of claims 11 and 19 as per 35 U.S.C. 101 are moot in view of Restriction Requirement set forth supra withdrawing the claims from consideration.
On page 15 of Applicant’s Remarks, Applicant argues:
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The arguments have been carefully considered, but are not persuasive as the alleged asserted improvements of “cryptographic-record integrity and recovery control” are not improvements to the system or apparatus but appear to improve performance of an abstract idea. The claims do not recite an improvement to another technology or technical field nor do they recite an improvement to the functioning of the computer itself as per MPEP 2106.05(a). The recited cryptographic-record integrity and recovery control merely amounts to improvement of an abstract idea, not a practical application of the abstract idea or significantly more than the abstract idea as per MPEP 2106.05(h).
The arguments as per independent claims 11 & 19 are moot in view of the withdrawal of the claims subject to the Restriction Requirement set forth supra.
On page 15 of Applicant’s Remarks, Applicant argues:
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The arguments have been carefully considered but are not persuasive. More particularly, the claims recite generic hardware and computing components performing generic computing functions that were well understood, routine, and conventional. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) and Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). The claims recite an on-chain registry, personal subdomain, record keyed by a namehash, a DID reference, an owner public key, a DNS proof root, status, resolver, and so on. These are all generic computer components performing generic computing functions that were well understood, routine and conventional.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: a resolver.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claim limitations: a resolver, have been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The boundaries of this claim limitation are ambiguous; therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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.
Claim 1 recites the elements: resolver, where performance of such limitation appears silent in the disclosure of the invention; when considering the elements individually and in the recited combination, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1 recites, at least in part:
The claim recites “a resolver” and “on-chain registry” followed by several steps, including maintaining, verifying, and detecting drift. But the Specification does appear to support performing these steps.
The claim recites “compares root digests of the cached proof roots to detect drift”; the specification provides for “Resolver verifies DNSSEC chain and on-chain mapping; drift or mismatch triggers READ dispute path”, but the Specification does not explicitly nor implicitly require comparing root digests to detect the drift. The Specification merely provides “drift or mismatch” without any further context; the claim appears to link these separately disclosed concepts. Even previously presented page 3, dependent claim 4 fails to link these concepts.
The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64. “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.”’ Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). When an explicit limitation in a claim is not present in the written description it must be shown that a person of ordinary skill would have understood that the description requires that limitation. Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). It is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See ICU Medical, Inc. v. Alaris Medical Systems, Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997) (explaining that “an applicant complies with the written description requirement by describing the invention, with all its claimed limitations, not that which makes it obvious” (internal quotation marks omitted)).
The pending claims are replete with subject matter not described in the original written description.
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.
The claim rejections under 35 U.S.C. 112(a)/112(1) are fully incorporated herein as performance of such limitation appears silent in the disclosure of the invention; when considering the elements individually and in the recited combination, since the disclosure of the invention is silent as to these limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “restores state to a last verified checkpoint” (emphasis added by the Examiner) and it is unclear as to whether such language is referring to the previously recited freeze state, rollback state or another state distinct from those other states. When a claim is amenable to two or plausible claim constructions, the claim is indefinite for failing to particularly point out and distinctly claim the subject matter the Applicant considers to be the invention. Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential).
Any claim not specifically addressed above is being rejected as incorporating the deficiencies of a claim upon which it depends.
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. The claims are nominally directed to systems.
Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). 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. In interpreting this statute, the Supreme Court emphasizes that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (“Alice”). The rationale is that patents directed to basic building blocks of technology would not “promote the progress of science and useful arts” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede it. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216– 17). The Supreme Court set forth a two-part test for subject matter eligibility in Alice (573 U.S. at 217–19). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which we “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to the second step, however, if the first step of the Alice/Mayo test yields a determination that the claim is directed to patent eligible subject matter. The Patent Office has revised its guidance for how to apply the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (the “Revised Guidance”). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at 51–52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent-eligible under § 101. Revised Guidance, 84 Fed. Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–19, 221. Evaluation of the inventive concept involves consideration of whether an additional element or combination of elements (1) adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
USPTO Step 1 – Do the claims recite a statutory category of invention?
The claims nominally satisfy a statutory category of invention. The analysis proceeds to the first step of Alice/Mayo.
The Examiner relies upon claim 1 as the representative claim infra.
Alice/Mayo—Step 1 (Abstract Idea)
USPTO Step 2A–Prongs 1 and 2 identified in the Revised Guidance
USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the Revised Guidance), the Examiner finds the independent claims are directed to the abstract idea BEI Sovereign Mobile Terminal Systems. Each of these elements and steps are acts performed using human activities and data. All of these steps/elements do not require the use of a computer or rely upon a computer for nominal, generic functionality. In particular, such underlying steps of can be done in the human mind or via the use of pen & paper.
The idea is recited, at least in part and not limited when analyzing the limitations individually and as an ordered combination, in the following aspects of the claims:
[Symbol font/0xB7] “dnssec protected namespace”
[Symbol font/0xB7] “dns txt record”
[Symbol font/0xB7] “on-chain registry”
[Symbol font/0xB7] “personal subdomain”
[Symbol font/0xB7] “a resolver that maintains cached proof roots”
[Symbol font/0xB7] “storing, … a record keyed by a namehash of the personal subdomain and comprising” data structures
[Symbol font/0xB7] “verifies the DNSSEC chain and the on-chain registry record”
[Symbol font/0xB7] “compares root digests of the cached proof roots to detect drift”
[Symbol font/0xB7] “rollback-enabled execution and audit (READ) dispute path”
The idea amounts to a process that, under its broadest reasonable interpretation, covers performance in the mind or with a pen and paper but for the recitation of generic computer components. If a claim, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas. Accordingly, each of the independent claims recites an abstract idea.
Thus, all of the limitations are in fact a mental process and certain methods of organizing human activity; See MPEP §§ 2106.04(a)(2)(II)-(III). While the claims do recite some functional steps, the underlying operations recited in the claim are acts that could be performed mentally and by pen & paper without the use of a computer. Our reviewing court has concluded that mental processes include similar concepts of collecting, manipulating and providing data. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (the Federal Circuit held “the concept of . . . collecting data, . . . recognizing certain data within the collected data set, and . . . storing that recognized data in a memory” ineligible); and Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes). However, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). We now turn to USPTO Step 2A, Prong 2, of the Revised Guidance to determine whether the abstract idea is integrated into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55.
The Examiner holds the claimed invention does not improve a computer or its components’ functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. The Examiner maintains the claimed invention, while necessarily utilizing a computing device, is not rooted in computer technology, but merely utilizes a computing device to execute the process faster or more efficiently than doing so manually, any speed or efficiency increase comes from the capabilities of the generic computer components—not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (non-precedential) (“Though the claims purport to accelerate the process of finding errant files and to reduce error, we have held that speed and accuracy increases stemming from the ordinary capabilities of a general-purpose computer ‘do not materially alter the patent eligibility of the claimed subject matter.’” (citation omitted)). Like the claims in FairWarning, the focus of the claims are not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095. Nor is this invention analogous to that which the court held eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).
The Examiner notes “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
USPTO Step 2A—Prong 2 (Integration into Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, the Examiner discern no additional element or combination of elements recited in Applicant’s claims that may have integrated the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. The Examiner further points out that the additional elements of the claims are nominal. The claims do not recite specific types of additional elements or their operations, thereby requiring no improvements to computing or data processing technologies. Such elements do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for generic computing elements); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. (See MPEP §§ 2106.05(a)–(c), (e)–(h)). As a result, the claim’s recited additional elements are not indicative of “integration into a practical application,” and are not enough to distinguish the steps of the independent claims from describing a mental process. See Revised Guidance, 84 Fed. Reg. at 54–55.
Using a generic computing device to receive and process data amounts to merely applying the judicial exception using a generic computing component. See Mayo, 566 U.S. at 72 (Explaining that “to transform an unpatentable [judicial exception] into a patent eligible application of [the judicial exception], one must do more than simply state the [judicial exception] while adding the words ‘apply it.”’); see also Alice, 573 U.S. at 221; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (Explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.”); MPEP § 2106.05(b). Further, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (explaining that “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”) (citing Alice, 573 U.S. at 224 (“use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept)).
Moreover, the devices recited in the preambles amount to insignificant extra-solution activity that is insufficient to integrate the abstract idea into a practical application. See MPEP § 2106.05(g). Thus, the claims do not recite an improvement to the functioning of the computer system or other computer related products. Nor do the claims recite an improvement to a technical field. Indeed, the claims do not use the results of the recited “comput[ing]” step. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”).
Accordingly, under Step 2A, Prong 2, claims 1-27 do not recite “additional elements that integrate the [judicial] exception into a practical application,” and are directed to an abstract idea in the form of a mental process. Revised Guidance, 84 Fed. Reg. at 52, 54. Therefore, we proceed to USPTO Step 2B, The Inventive Concept.
Alice/Mayo—Step 2 (Inventive Concept)
USPTO Step 2B identified in the Revised Guidance
USPTO Step 2B of the Alice two-step framework requires us to determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception. Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg. at 56. As discussed above, the independent claims include additional elements that are nominally recited and relied upon when performing the underlying process when considered individually and in an ordered combination, correspond to nothing more than generic and well-known components and operations used to implement the abstract idea. In other words, we find that the additional elements, as claimed, are well-understood, routine, and conventional and “behave exactly as expected according to their ordinary use.” (See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 615 (Fed. Cir. 2016); Final Act. 7; Ans. 7–8.) Thus, implementing the abstract idea with these generic and well-known elements “fail[s] to transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221.
Claims 1-10 are separately rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to “A domain Name System Security Extensions protected namespace”, “an on-chain registry” and “a resolver”. The Examiner relies upon the explicit framework and analysis stated in Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009) where the claims were found not to be within any of the four statutory categories: process, machine, manufacture, or composition of matter.
Each of these identified elements can be broadly and reasonably interpreted as a combination of data structures and software which are themselves ineligible; "[s]oftware by itself does not fall into any one of these statutory categories" under 35 U.S.C. § 101 (Ans. 2). A claim that recites no more than software, logic, or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, "[a]bstract software code is an idea without physical embodiment .... " Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). Accordingly, this analysis of the claimed proof of authenticity of a presentation does not fall within one of the four statutory categories of invention.
Examiner Remarks
The Examiner has noted significant issues supra as to the pending claims under 35 U.S.C. 101, 35 U.S.C. 112(1)/112(a) & 35 U.S.C. 112(2)/112(b). Presently, the pending claims do not adequately reflect what the disclosed invention is. The Examiner has incorporated the closest art into the record; any potential rejection in view of art would necessarily be based on speculation and assumptions. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011), In re Steele, 305 F.2d 859, 862 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The fact that the claims are not rejected under 35 U.S.C. 102/103 should not be construed as being allowable over art and does not reflect on the adequacy of the prior art evidence in the record.
Conclusion
Examiner's Note:
The Examiner identified and designated “the particular part[s] [of the references] relied on” as provided in 37 C.F.R § 1.104(c)(2).
A reference is not limited to the disclosure of specific working examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (A prior art reference’s disclosure is not limited to its examples.). Nor do disclosed examples teach away from a reference’s broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971); In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art reference “must be evaluated for what they fairly teach one of ordinary skill in the art.”).
“The prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
MPEP 2123 [R – 08.2012] states: "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
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A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.").
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention. See: Ralston Purina Co. v. FarMar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985), In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983), Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010), Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000), Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991) and TurboCare Div. of Demag Delavel Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001)
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTOL-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN B SCHWARTZ whose telephone number is (571)270-3850. The examiner can normally be reached 9am-7pm EST, Monday-Thursday, 9am-5pm EST, Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amir Mehrmanesh can be reached at (571)270-3351. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARREN B SCHWARTZ/Primary Examiner, Art Unit 2435
