DETAILED ACTION
Acknowledgements
The claims filed 11/24/2025 are acknowledged.
Claims 1-16 are pending.
Claims 1-16 have been examined.
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 .
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 1-14 are 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 software per se. Claims 1-14 are directed to software per se they are directed to “a program for causing a computer to function as: . . .” While the claims recites that the program causes a computer to function as various “units,” this describes the functionality carried out by the program. The claim does not require any structural elements. Therefore, the claim is directed solely to a program or software per se. Software is defined according to the "Microsoft Press Dictionary Definition" or "IEEE Definition". According to MPEP § 2106, however, there are four categories of invention: process, machine, article of manufacture or composition of matter. Therefore, as "software" is neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter (In re Nuijten, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007) (slip. op. at 18)).
Claims 2-14 are also rejected as each depends on claim 1.
Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claim 15 is directed to a method and claim 16 is directed to a device comprising units that invoke 35 USC 112(f). Therefore, these claims fall within the four statutory categories of invention. Further, as described in the separate rejection above, claims 1-14 are directed to a program, which is software per se. Therefore, these claims do not fall within the four statutory categories of invention. However, the abstract idea analysis below is also applied to these claims, because is would be applicable if the claims were amended to fall within the four statutory categories of invention.
The claims recite issuing a token that includes royalty information and dividing the token on the basis of the royalties, which is an abstract idea. Specifically, the claims recite “generates information for issuing a divisible token that includes information regarding a benefit ratio of a consideration and operates on a [ledger]” and “that generates information for issuing the token divided on a basis of distribution information of the consideration based on an agreement to a beneficiary of the consideration,” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04 & 2106.04(a)) because the claims describe a process for issuing a divisible token that represents rights to royalties, and distributing the token and royalties to beneficiaries based on an agreement, which is a commercial or legal interaction. Accordingly, the claims recite an abstract idea (See MPEP 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional elements of the claims such as the use of a program for causing a computer to function as an issuance information generation unit and a division information generation unit, a blockchain, a computer, and an information processing device comprising the issuance information generation unit and division information generation unit, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “generates information for issuing a divisible token that includes information regarding a benefit ratio of a consideration and operates on a [ledger]” and “that generates information for issuing the token divided on a basis of distribution information of the consideration based on an agreement to a beneficiary of the consideration.” Viewed as a whole, the use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional elements of using a program for causing a computer to function as an issuance information generation unit and a division information generation unit, a blockchain, a computer, and an information processing device comprising the issuance information generation unit and division information generation unit to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of issuing a token that includes royalty information and dividing the token on the basis of the royalties. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of “generates information for issuing a divisible token that includes information regarding a benefit ratio of a consideration and operates on a [ledger]” and “that generates information for issuing the token divided on a basis of distribution information of the consideration based on an agreement to a beneficiary of the consideration.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of issuing a token that includes royalty information and dividing the token on the basis of the royalties. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-14 further describe the abstract idea of issuing a token that includes royalty information and dividing the token on the basis of the royalties. Specifically, claim 2 further describes the information for issuing the token to a beneficiary, which further describes the abstract idea. Claims 3-4 involves proving the legitimacy of the distribution or issuance of the tokens, which is also abstract as it is directed to ensuring that the agreement for distributing the consideration is enforced. Claims 5-7 and 9 involve restricting access to the information such that only certain users can access it. This is also directed to the abstract idea as it involves enforcing permissions or rights to view data. Claims 8, 10, and 13 describe recording information regarding the royalty distribution on a ledger and verifying it, which is a business process as it involves business record-keeping. Therefore, these claims are also directed to the abstract idea. Claims 11-12 describe the information regarding the benefit ratio of the consideration and its use, but do not require any steps or functions to be performed. Finally, claim 14 describes characteristics of the token, but does not require any steps or functions to be performed. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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.
Claim 16 is 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 claim(s) contains 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 limitations “an issuance information generation unit that generates information for issuing . . .” and “division information generation unit that generates information for issuing . . .” in claim 16 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. These limitations recite the generic placeholders “issuance information generation unit” and “division information generation unit” coupled with the function of “for issuing,” and are not modified with sufficient structure for performing the claimed functions. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discloses an information processing device that includes the issuance information generation unit the division information generation unit (See, e.g., Specification ¶¶ 26, 37). However, the specification does not disclose any particular structural elements that these units are comprised of. Therefore, the specification does not provide a sufficient written description for these limitations.
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 16 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitations “an issuance information generation unit that generates information for issuing . . .” and “division information generation unit that generates information for issuing . . .” in claim 16 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. These limitations recite the generic placeholders “issuance information generation unit” and “division information generation unit” coupled with the function of “for issuing,” and are not modified with sufficient structure for performing the claimed functions. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discloses an information processing device that includes the issuance information generation unit the division information generation unit (See, e.g., Specification ¶¶ 26, 37). However, the specification does not disclose any particular structural elements that these units are comprised of. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 15-16 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Khandelwal, et al. (US 2022/0229883) (“Khandelwal”).
Regarding claims 1, 15, and 16, Khandelwal discloses a method executed by a computer, an information processing device, and a program for causing a computer to function as:
an issuance information generation unit that generates information for issuing a divisible token that includes information regarding a benefit ratio of a consideration and operates on a blockchain (Khandelwal ¶¶ 155-156, 167-172, 174, 178, 181-182);
and
a division information generation unit that generates information for issuing the token divided on a basis of distribution information of the consideration based on an agreement to a beneficiary of the consideration (Khandelwal ¶¶ 155-156, 168, 171, 181-182).
Regarding claim 2, Khandelwal discloses that the issuance information generation unit generates information for issuing the token to a beneficiary who has registered a generation source of the consideration (Khandelwal ¶¶ 178-182).
Regarding claim 3, Khandelwal discloses that the information generated by the division information generation unit includes information that can prove legitimacy of a process executed by the division information generation unit (Khandelwal ¶¶ 168, 182, 186-199).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal in view of Azgad-Tromer, et al. (US 2024/0104521) (“Azgad-Tromer”).
Regarding claim 4, Khandelwal discloses the process executed by the division information generation unit (Khandelwal ¶¶ 155-156, 168, 171, 181-182).
Khandelwal does not specifically disclose a process verified by zero knowledge proof.
Azgad-Tromer discloses a process verified by zero knowledge proof (Azgad-Tromer ¶¶ 12, 222, 255, 275-278, 281, 296).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal to include a process verified by zero knowledge proof, as disclosed in Azgad-Tromer, in order to protect sensitive information (Azgad-Tromer ¶¶ 3-5, 7-14).
Regarding claim 5, Khandelwal discloses information regarding the benefit ratio of the consideration (Khandelwal ¶¶ 155-156, 167-172, 174, 178, 181-182).
Khandelwal does not specifically disclose that the information is information encrypted such that only the beneficiary can decrypt the information.
Azgad-Tromer discloses that certain information is information encrypted such that only the beneficiary can decrypt the information (Azgad-Tromer ¶¶ 11-14, 187-188, 291).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal to include certain information being encrypted such that only the beneficiary can decrypt the information, as disclosed in Azgad-Tromer, in order to protect sensitive information (Azgad-Tromer ¶¶ 3-5, 7-14).
Regarding claim 6, Khandelwal discloses a disclosure information generation unit that generates information for further adding, to the token, information (Khandelwal ¶¶ 167-171, 174, 178, 181-182), as well as a benefit ration of the consideration (Khandelwal ¶¶ 155-156, 167-172, 174, 178, 181-182).
Khandelwal does not specifically disclose that the added information is information encrypted such that a selected viewer other than the beneficiary can decrypt a particular item of information.
Azgad-Tromer discloses information that is encrypted such that a selected viewer other than the beneficiary can decrypt a particular item of information (Azgad-Tromer ¶¶ 8-9, 194-196, 208, 260, 291).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal to include information that is encrypted such that a selected viewer other than the beneficiary can decrypt a particular item of information, as disclosed in Azgad-Tromer, in order to protect sensitive information (Azgad-Tromer ¶¶ 3-5, 7-14).
Regarding claim 7, Azgad-Tromer discloses a process executed by the disclosure information generation unit is verified by zero knowledge proof (Azgad-Tromer ¶¶ 12, 222, 255, 275-278, 281, 296).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal in view of Goldston, et al. (US 2022/0366022) (“Goldston”).
Regarding claim 8, Khandelwal does not specifically disclose a consideration information generation unit that generates information for issuing, on the blockchain, information regarding the consideration distributed to each of the beneficiaries on a basis of the information regarding the benefit ratio of the consideration acquired from the token.
Goldston discloses consideration information generation unit that generates information for issuing, on the blockchain, information regarding the consideration distributed to each of the beneficiaries on a basis of the information regarding the benefit ratio of the consideration acquired from the token (Goldston ¶¶ 14-15, 83, 230-231, 238, 278-282, 296-297).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal to include generating information for issuing, on the blockchain, information regarding the consideration distributed to each of the beneficiaries on a basis of the information regarding the benefit ratio of the consideration acquired from the token, as disclosed in Goldston, in order to allow for the distribution of royalty payment using blockchain-based payment methods (Goldston ¶¶ 296-297).
Regarding claim 9, Goldston discloses that the information regarding the consideration is encrypted such that each of the beneficiaries can decrypt only information regarding their own consideration (Goldston ¶¶ 14-15, 83, 120, 135-136, 138, 165, 172, 230-231, 238, 278-282, 296-297).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal in view of Goldston as applied to claim 8 above, and further in view of Azgad-Tromer.
Regarding claim 10, Goldston discloses a process executed by the consideration information generation unit (Goldston ¶¶ 14-15, 83, 230-231, 238, 278-282, 296-297).
Khandelwal in view of Goldston does not specifically disclose a process is verified by zero knowledge proof.
Azgad-Tromer discloses a process verified by zero knowledge proof (Azgad-Tromer ¶¶ 12, 222, 255, 275-278, 281, 296).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal in view of Goldston to include a process verified by zero knowledge proof, as disclosed in Azgad-Tromer, in order to protect sensitive information (Azgad-Tromer ¶¶ 3-5, 7-14).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal in view of E. Ben Sasson et al., "Zerocash: Decentralized Anonymous Payments from Bitcoin," 2014 IEEE Symposium on Security and Privacy, Berkeley, CA, USA, 2014, pp. 459-474, doi: 10.1109/SP.2014.36 (“Zerocash”).
Regarding claim 11, Khandelwal discloses that the information regarding the benefit ratio of the consideration is a hash value generated by using the benefit ratio of the consideration and a random number that is uniquely set (Khandelwal ¶¶ 41, 132-134, 138, 145, 150-151, 155-156, 167-172, 174, 181-182).
Khandelwal does not specifically disclose that the random number is uniquely set for each beneficiary.
Zerocash discloses a random number uniquely set for each beneficiary (Zerocash Section I.B, Step 3; Figure 2, CreateAddress section, steps 2-3, Mint section steps 4-6, Pour section, steps (e)-(i)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal to include a a random number uniquely set for each beneficiary, as disclosed in Zerocash, in order to protect the privacy of each beneficiary or user (Zerocash Abstract, Introduction).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal in view of Zerocash as applied to claim 11 above, and further in view of Goldston.
Regarding claim 12, Khandelwal discloses that the hash value is used to verify legitimacy of the benefit ratio of the consideration (Khandelwal ¶¶ 41, 132-134, 138, 145, 150-151, 155-156, 167-172, 174, 181-182).
Khandelwal in view of Zerocash does not specifically disclose that the information including the benefit ratio of the consideration and the random number are stored in a storage device provided outside the blockchain.
Goldston discloses that the information is stored in a storage device provided outside the blockchain (Goldston ¶¶ 14-15, 83, 230-232, 234, 238-239, 278-282, 296-297).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal in view of Zerocash to include information stored in a storage device provided outside the blockchain, as disclosed in Goldston, in order to maintain privacy or confidentiality for some types of information (Goldston ¶¶ 232, 282).
Regarding claim 13, Khandelwal in view of Zerocash does not specifically disclose generating information for issuing, on the blockchain, information regarding the consideration distributed to each of the beneficiaries on a basis of the benefit ratio of the consideration stored in the storage device.
Goldston discloses generating information for issuing, on the blockchain, information regarding the consideration distributed to each of the beneficiaries on a basis of the benefit ratio of the consideration stored in the storage device (Goldston ¶¶ 14-15, 83, 230-231, 234, 238-239, 278-282, 296-297).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the method of Khandelwal in view of Zerocash to include generating information for issuing, on the blockchain, information regarding the consideration distributed to each of the beneficiaries on a basis of the benefit ratio of the consideration stored in the storage device, as disclosed in Goldston, in order to allow for the distribution of royalty payment using blockchain-based payment methods (Goldston ¶¶ 296-297) while maintaining privacy or confidentiality for some types of information (Goldston ¶¶ 232, 282).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Khandelwal.
Regarding claim 14, Khandelwal does not specifically disclose that the token is a semi-fungible token.
However, this only describes a characteristic of the token, which is stored data. The claim does not require any steps or functions to be performed based on the characteristic of the token, and thus the described characteristic is not processed or used to carry out any functionality. Therefore, this limitation recites nonfunctional descriptive material and does not serve to differentiate the claims from the prior art. When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from prior art in terms of patentability. It has been held that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate (In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); Ex parte Nehls 88 USPQ2d 1883, 1888-1889 (BPAI 2008); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983)). Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to use data representing any type of token as the token of Khandelwal, because the subjective interpretation of the type of token does not patentably distinguish the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697
