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 .
Claims 1-20 are presented for examination.
Examiner Remarks [1]
It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Figures 1-10, ALL ELEMENTS.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because some figures contain elements (i.e. lines or strike-throughs) that inhibit readability. For instance: Figure 1, elements 101, 102 & 103 are joined by a line under the elements; Figure 1, elements 104, 105 & 106 project a strike-through inhibiting readability; text “DNSSEC Chain: DS / DNSKEY /RRSIG” appears inside and outside an element in close proximity; Figure 3, element 301 recites continuous text both inside and outside; Figure 3, element 305 projects a strike-through inhibiting readability; Figures 6, 8 & 10, projects numerous elements with text that has strike-throughs or lines interfering with the recited text inhibiting readability. This list is exemplary and may not include all objections in the drawings; Applicant’s cooperation in addressing all issues is requested to advance prosecution.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, subject matter of independent claims 1-3 must be shown or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
The claims recite numerous abbreviations (i.e. DNSSEC, DNS TXT, READ, BEISIGN, BEIGX, BEICX, BEISX, BEITOKEN, TIMECOIN, BEINFT, ENM, COSE, CBOR) and should appear, at least once, in their respective unabbreviated forms.
Appropriate correction is required.
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 namespace manager, a dual-anchoring module, a consistency monitor, a BEISIGN consent layer.
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.
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Some limited examples of some unclear, inexact or verbose terms used in the specification are: apply IDN punycode conversion, filter for homographs, allocate S from curated DNSSEC roots, key material (TEE/threshold optional), Resolver verifies DNSSEC chain and on-chain mapping, drift or mismatch triggers READ dispute path, succinct proof roots, etc. This list is non-exhaustive as there are numerous equations recited in the disclosure of the invention whose variables are undefined.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without namespace manager, dual-anchoring module, a BEISIGN consent layer, a pipeline, a Policy Virtual Machine (Policy-VM) & branch instantiation logic and the associated functions, admitting minting of BEITOKEN, TIMECOIN, or BEINFT, only when the Green Operation Indicators are greater than or equal to a governance threshold and Energy-Normalized Metrics are less than or equal to a governance threshold, BeiChart version pinning, verify mutual consistency of DNSSEC and on-chain anchors for a personal subdomain before admitting state transitions, fail-closed freeze and deterministic rollback, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). These limitations appear to merely echo language recited in the disclosure of the invention without explaining the detailed performance of such steps nor the elements upon which they are acted upon.
Claim limitations “a namespace manager configured to …”, “dual-anchoring module”, “a consistency monitor configured to …”, “a BEISIGN consent layer”, 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 1-20 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.
Claim 1 recites, at least in part, “a namespace manager configured to normalize personal identifiers and allocate a personal subdomain from curated DNSSEC-governed roots” where performance of such limitation appears silent in the disclosure of the invention.
Claim 1 recites, at least in part, “a dual-anchoring module configured to bind … publishing both” where performance of such limitation appears silent in the disclosure of the invention.
Claim 1 recites, at least in part, “a consistency monitor configured to verify” where performance of such limitation appears silent in the disclosure of the invention.
Claim 1 recites, at least in part, “a BEISIGN consent layer configured to generate canonical tuples” where performance of such limitation appears silent in the disclosure of the invention.
Claim 1 recites, at least in part, “a pipeline that enforces an inseparable triplet” where performance of such limitation appears silent in the disclosure of the invention.
Claim 1 recites, at least in part, “a Policy Virtual Machine (Policy-VM) governed by BeiChart versioning and activation timelocks, the Policy-VM applying jurisdictional and organizational rule packs to the consent layer and to each component of the pipeline” where performance of such limitation appears silent in the disclosure of the invention.
Claim 1 recites, at least in part, “branch instantiation logic enabling regulated service templates in finance, healthcare, education, retail, government, or logistics to operate under the personal subdomain.” where performance of such limitation appears silent in the disclosure of the invention.
Claim 2 recites, at least in part, “(c) admitting minting of BEITOKEN, TIMECOIN, or BEINFT only when Green Operation Indicators (GOI) are greater than or equal to a governance threshold GO and Energy-Normalized Metrics (ENM) are less than or equal to a governance threshold E0;” where performance of such limitation appears silent in the disclosure of the invention. The variables recited in the claims are further undefined in the disclosure.
Claim 3 recites, at least in part, “execute Charter-as-Code policies in a Policy-VM with BeiChart version pinning, activation timelocks, and rollback governance,” where performance of such limitation appears silent in the disclosure of the invention.
Claim 3 recites, at least in part, “verify mutual consistency of DNSSEC and on-chain anchors for a personal subdomain before admitting state transitions;” where performance of such limitation appears silent in the disclosure of the invention.
Claim 3 recites, at least in part, “maintain an append-only transparency log of BEISIGN statements, state transitions, and rollback artifacts.” where performance of such limitation appears silent in the disclosure of the invention.
This list is non-exhaustive of the issues identified under this title and are separately rejected for failing to comply with the written description requirement and inheriting the deficiencies upon which the claims ultimately depend.
Claims 2, 3, 14, 15 and 18 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims recite, at least in part: “admitting minting of BEITOKEN, TIMECOIN, or BEINFT only when Green Operation Indicators (GOI) are greater than or equal to a governance threshold GO and Energy-Normalized Metrics (ENM) are less than or equal to a governance threshold E0” and “compute the BEI Index from identity-bound behavioral and temporal evidence and gate minting and settlement by GOI and ENM thresholds;”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to determine the recited thresholds and determining the Green Operation Indicators being greater than or equal to a governance threshold GO and the Energy-Normalized Metrics being less than or equal to a governance threshold E0. The specification appears to merely echo these limitations.
Page 8 of the Specification recites in part:
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The specification does not appear supportive as to determining GOI >= G0 where G0 and ENM <= E0 are undefined. The plain English formulas are also silent as to their respective components and variables where such subject matter appears critical or essential to practicing the invention. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
With respect to the Wand’s factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998)), (A) the breadth of the claims appear to be equally embrace the disclosed subject matter. The (B) nature of the invention, (C) state of the prior art, (D) level of one of ordinary skill (E) level of predictability in the art are set forth by the prior art of record and the associated disclosure of the invention which requires numerous variables/inputs into the respective equations to carry out the respective inequalities. There are no working examples (G). Given the extreme breadth of the claim limitation, the quantity of experimentation needed to make or use the invention based on ambiguous formulas whose variables are undefined (H) appears undue as the disclosure appears to merely cite equations and their respective results but without explaining how to use such formulas when carrying out the recited inequalities and then performing additional steps based on decisions yielded by those inequalities. More precisely, E_renewable_i, E_total_i, period, sum(), TotalEnergy, CompliantOperations are undefined and thus their respective results are undefined, a person of ordinary skill in the art is unable to fully utilize these equations and then to use those results of the equations to carry out the inequality checks.
It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. 858 F.2d at 737, 740, 8 USPQ2d at 1404, 1407.
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A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
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The determination that "undue experimentation" would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations.
Claims 1-20 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 “a dual-anchoring module configured to bind … publishing both” where performance of such limitation appears silent in the disclosure of the invention; when considering the limitations elements individually and as the combination recited, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “a consistency monitor configured to verify” where performance of such limitation appears silent in the disclosure of the invention; when considering the limitations elements individually and as the combination recited, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “a BEISIGN consent layer configured to generate canonical tuples” where performance of such limitation appears silent in the disclosure of the invention; when considering the limitations elements individually and as the combination recited, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “a pipeline that enforces an inseparable triplet” where performance of such limitation appears silent in the disclosure of the invention; when considering the limitations elements individually and as the combination recited, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “a Policy Virtual Machine (Policy-VM) governed by BeiChart versioning and activation timelocks, the Policy-VM applying jurisdictional and organizational rule packs to the consent layer and to each component of the pipeline” where performance of such limitation appears silent in the disclosure of the invention; when considering the limitations elements individually and as the combination recited, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “branch instantiation logic enabling regulated service templates in finance, healthcare, education, retail, government, or logistics to operate under the personal subdomain.” where performance of such limitation appears silent in the disclosure of the invention; when considering the limitations elements individually and as the combination recited, since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 2 recites “(c) admitting minting of BEITOKEN, TIMECOIN, or BEINFT only when Green Operation Indicators (GOI) are greater than or equal to a governance threshold GO and Energy-Normalized Metrics (ENM) are less than or equal to a governance threshold E0;” where performance of such limitation appears silent in the disclosure of the invention. The variables recited in the claims are further undefined in the disclosure.
Claim 3 recites, at least in part, “execute Charter-as-Code policies in a Policy-VM with BeiChart version pinning, activation timelocks, and rollback governance,” where performance of such limitation appears silent in the disclosure of the invention. Since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 3 recites, at least in part, “verify mutual consistency of DNSSEC and on-chain anchors for a personal subdomain before admitting state transitions;” where performance of such limitation appears silent in the disclosure of the invention. Since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 3 recites, at least in part, “maintain an append-only transparency log of BEISIGN statements, state transitions, and rollback artifacts.” where performance of such limitation appears silent in the disclosure of the invention. Since the disclosure of the invention is silent as to this limitation, the metes and bounds of performing such limitation are indefinite.
Claim 1 recites “the DNSSEC-anchored record” and lacks explicit antecedent basis.
Claim 1 recites “a same mapping” and it is unclear as to the metes and bounds of the recited mapping being a “same mapping”.
Claim 1 recites “and proofs across an exchange component (BEIGX)” (emphasis added by the Examiner) and it is unclear as to whether such language is referring to the previously recited minimum-disclosure proofs or distinct proofs from those previously cited in the claim; 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).
Claim 1 recites “a consistency monitor configured to verify, for each access or update, that the DNSSEC-anchored record and the on-chain registry record are mutually consistent, and upon detecting a drift or mismatch to automatically invoke a rollback-enabled execution and audit (READ) control loop that freezes affected actors and reverts state to a causal-consistent checkpoint;” (emphasis added by the Examiner) and it is unclear as to whether each limitation is itself performed by the consistency monitor due to the run-on grammatical nature of the limitation.
Claim 2 recites “(c) admitting minting of BEITOKEN, TIMECOIN, or BEINFT only when Green Operation Indicators (GOI) are greater than or equal to a governance threshold GO” and “Energy-Normalized Metrics (ENM) are less than or equal to a governance threshold E0;” It is unclear as to the metes and bounds of the recited indicators being “greater than or equal to a governance threshold GO”. It is further unclear as to the metes and bounds of the recited governance threshold. It is unclear as to the metes and bounds of the recited “Energy-Normalized Metrics (ENM) are less than or equal to a governance threshold E0;” as it is unclear as to the metes and bounds of the recited governance threshold E0. Such thresholds are undefined.
Claim 2 recites “the READ control loop” and lacks explicit antecedent basis.
Claim 3 recites “the exchange, clearing, and settlement components” and lacks explicit antecedent basis.
Claim 3 recites “the BEI Index” and lacks explicit antecedent basis.
Claim 3 recites (b) compute the BEI Index from identity-bound behavioral and temporal evidence and gate minting and settlement by GOI and ENM thresholds;” (emphasis added by the Examiner) and it is unclear as to whether all of some of the recited elements are relied upon to compute the BEI Index due to the run-on nature of the claim.
Claim 3 recites “enforce stage-wise validation of an inseparable triplet comprising an instruction, a BEISIGN consent, and proofs, with fail-closed freeze and deterministic rollback;” (emphasis added by the Examiner) and it is unclear as to whether such limitation is referring to the stage-wise validation, inseparable triplet or the proofs; 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).
Independent claims 1-3 each recite “an inseparable triplet” and it is unclear as to the metes and bounds as to a triplet comprising numerous data structures being “inseparable”. It is unclear as to the metes and bounds as to a plurality of data structures described in the disclosure being “inseparable” as the specification does not clearly define the adjective when describing the recited triplet. The relevant inquiry under 35 U.S.C. § 112(b) is whether the claim language, as it would have been interpreted by one of ordinary skill in the art in light of Applicant’s Specification, sets out and circumscribes a particular area with a reasonable degree of precision and particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The reviewing court guides that any special meaning assigned to a claim term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008). Acceptability of the claim language, thus, depends on whether a person of ordinary skill in the art would understand what is claimed when the claims are considered in light of the Specification. Seattle Box Co., v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Here, the recited triplet requires an instruction, a specific consent and minimum-disclosure proofs. The disclosure describes the triplet as containing separate data structures, so it is unclear as to how the triplet containing these three separate data structures become “inseparable” or incapable/unable to be separated. While these data structures are amalgamated or concatenated, it is unclear as to the metes and bounds of the data structures forming the triplet and becoming “inseperable”. It is unclear as to the metes of the triplet being “inseparable” and the bounds to which such data structures of the triplet become “inseparable”.
Any claim not specifically addressed above is being rejected as incorporating the deficiencies of a claim upon which it depends.
The Examiner notes that numerous issues have been identified supra and such a list may not be exhaustive; Applicant is encouraged to carefully review the claims for any additional issues not identified to advance prosecution. While the Examiner has made every attempt to identify all issues, further issues may exist; the claims are wholly rejected under this title for being replete with issues under 35 U.S.C. 112(2)/112(b) and thus the claims as a whole are rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are nominally directed to methods, systems and non-transitory computer-readable mediums.
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] “normalize personal identifiers and allocate a personal subdomain”
[Symbol font/0xB7] “bind the personal subdomain to a decentralized identifier (DID) document”
[Symbol font/0xB7] “a DNSSEC proof chain for a DNS TXT record and (ii) an on-chain registry record”
[Symbol font/0xB7] “verify, for each access or update, that the DNSSEC-anchored record and the on-chain registry record are mutually consistent”
[Symbol font/0xB7] “upon detecting a drift or mismatch to automatically invoke a rollback-enabled execution and audit (READ)”
[Symbol font/0xB7] “freezes affected actors and reverts state to a causal-consistent checkpoint;”
[Symbol font/0xB7] “generate canonical tuples comprising an intent hash, a policy hash, minimum- disclosure proofs, a prior commitment reference, time data, counters, a device reference, and one or more cryptographic signatures;”
[Symbol font/0xB7] “enforces an inseparable triplet”
[Symbol font/0xB7] “each component validates the triplet and fails closed with freeze and rollback on validation failure;”
[Symbol font/0xB7] “applying jurisdictional and organizational rule packs to the consent layer and to each component of the pipeline”
[Symbol font/0xB7] “branch instantiation logic enabling regulated service templates”
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.
Examiner Remarks [2]
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DARREN B SCHWARTZ/ Primary Examiner, Art Unit 2435
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