www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/886,638
`
`08/12/2022
`
`Naohisa NISHIDA
`
`2022-1546A
`
`9616
`
`Cp
`Lind&
`Wenderoth,
`Wenderoth, Lind & Ponack, L.L.P.
`1025 Connecticut Avenue, NW
`Suite 500
`Washington, DC 20036
`
`DANG, CHRISTINE
`
`ART UNIT
`3685
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/14/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eoa@ wenderoth.com
`kmiller@wenderoth.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 1-12 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 0812/2022 is/are: a) accepted or b)L) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)£) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 08/12/2022.
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240610
`
`Application No.
`Applicant(s)
`17/886,638
`NISHIDAet al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`CHRISTINE DANG
`3685
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 8/12/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA orAIA Status
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b} CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the inventor or a jointinventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 4-5, 9, and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph,as being indefinite forfailing to particularly point out and distinctly claim the subject matter
`
`which the inventor or a joint inventor (or for applications subject to pre-AlA 35 U.S.C. 112, the
`
`applicant), regards as the invention.
`
`Claim 4 recites “the determining whether the total number exceeds the predetermined value
`
`includes determining whether the total number exceeds the predetermined value according to whet her
`
`the first transaction data has been received from, among the plurality of second nodes, second nodes, a
`
`total number of which exceeds the predetermined value.” The claim languageis unclear in distinguishing
`
`what condition is to be met when determining whether the total number exceeds the predetermined
`
`value. The specification recites similar language and therefore does not shed anyfurther insight on this
`
`limitation pg. 14, lines 24-27. For purposes of compact prosecution, the limitation will be interpreted to
`
`mean “according to whether thefirst transaction data has been received from atotal number of second
`
`nodes that which exceeds the predetermined value.”
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 3
`
`Claim 5 recites “transmitting the first block generated to, amongthe plurality of second nodes,
`
`second nodes, a total number of which exceeds the predetermined value.” The languageis unclear in
`
`distinguishing the claimed invention. The specification recites similar language and therefore does not
`
`shed any further insight on this limitation pg. 14,lines 32-34. For purposes of compact prosecution, the
`
`limitation will be interpreted to mean “transmitting the first block generated to the second node.”
`
`Claim 9 recites “when the reservation transaction data is stored, generating the first transaction
`
`data..” However, claim 8, from which claim 9 depends, recite “the first transaction data is reservation
`
`transaction data...” Claim 8 suggests that they are the same,yet claim 9 suggests oneis derived from the
`
`other. These are two conflicting limitations. The specification does not shed any further insight on this
`
`limitation pg. 15, lines 32-33. For purposes of compact prosecution, the generated first transaction data
`
`and the stored reservation transaction data will be interpreted to be different.
`
`Claim 11 recites a control device and a plurality of other control devices. When reciting “the
`
`control device comprising:,”it is unclear which control device is being referred. Appropriate correctionis
`
`required. For purposes of compact prosecution, a device capable of carrying out the process shall be
`
`sufficient to read upon the claimed invention.
`
`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 requirementsofthis title.
`
`Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an
`
`abstract idea without significantly more.
`
`Step 1:
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 4
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`Claims 1-10 are directed to a process. Claims 11-12 are directed to a machine. The eligibility
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`analysis proceeds to Step 2A.1.
`
`Step 2A.1:
`
`The limitations of independent claim 1 have been denoted with letters by the Examiner for easy
`
`reference. Independent claims 11 and 12 recite the same functional limitations as claim 1, therefore the
`
`following eligibility analysis shall apply to both independent claims 11 and 12. The judicial exceptions
`
`recitedin claim 1 are identified in bold below:
`
`A. Acontrol method for controlling a first node that managesa first blockchain ina first
`
`distributed ledger in a system utilized to use a service object and including the first node anda
`
`plurality of second nodes that each managea second blockchain in a second distributed ledger,
`
`the control method comprising:
`
`B. obtaining first transaction data;
`
`C. determining whether a total number of second nodes, amongthe plurality of second nodes,
`
`that are capable of communication exceeds a predetermined value; and
`
`D. generating a first block containing the first transaction data only when the total number of
`
`second nodes that are capable of communication exceeds the predetermined value.
`
`Under the broadest reasonable interpretation, limitations A-C recite functions that are
`
`reasonably categorized under mathematical concepts. Specifically, the claimed limitations can be
`
`grouped as mathematical calculation. Determining whether a number exceeds a predetermined value is
`
`a mathematical calculation by way of comparing two values. Therefore,limitations A-C recite an abstract
`
`idea, as highlighted above, that is consistent with mathematical calculations, which falls under the
`
`grouping of mathematical concepts.
`
`Claims 1 and 11-12 recite at least one abstract idea. The eligibility analysis proceeds to Step
`
`2A.2.
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Step 2A.2:
`
`Page5S
`
`The judicial exception is not integrated into a practical application. In particular, claim 1 recites
`
`the additional element(s) in bold below:
`
`A. Acontrol method for controlling a first node that managesa first blockchaininafirst
`
`distributed ledger in asystem utilized to use a service object and including the first node anda
`
`plurality of second nodes that each manage a second blockchain in a second distributed
`
`ledger, the control method comprising:
`
`B. obtaining first transaction data;
`
`C. determining whether a total number of second nodes, amongthe plurality of second nodes, that
`
`are capable of communication exceeds a predetermined value; and
`
`D. generatingafirst block containing the first transaction data only when the total numberof
`
`second nodes that are capable of communication exceeds the predetermined value.
`
`In limitations A and D, merely reciting performing the method steps in a system that includes a
`
`first node, a plurality of second nodes, a first blockchain, a second blockchain, a first distributed ledger,
`
`and a second distributed ledger is general usage of a data structure. When the additional elements are
`
`considered individually and as an ordered combination with the abstract idea, claim 1 as a whole
`
`amounts to no more than mere steps to implement an abstract idea on a data structure. These
`
`additional elements do not integrate the abstract idea into a practical application because they do not
`
`impose any meaningful limits on practicing the abstract idea. Furthermore, generatingafirst block is
`
`analogous to storing information in a data structure. Storing informationis insignificant extra-solution
`
`activity because it does not add a meaningful limitation to the judicial exception.
`
`Claims 11 and 12 recite “a processor,”
`
`“amemory,” and “a non-transitory computer-readable
`
`We
`
`recording medium”as additional elements. The additional elementsare all recited at a high-level of
`
`generality (see pgs. 80-82 of the instant application for general definitions of the identified elements).
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 6
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`The abstract idea in limitations A-C are merely software instructions that as an ordered combination
`
`with the additional elements amount to a computer that is programmed to carry out the abstract idea.
`
`Therefore, when the additional elements are considered individual and as an ordered combination with
`
`the abstract idea, claims 11 and 12 amount to no more than mere software instructions to implement
`
`an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. These
`
`additional elements do not integrate the abstract idea into a practical application because they do not
`
`impose any meaningful limits on practicing the abstract idea.
`
`Claims 1 and 11-12 do not recite additional elements that integrate the judicial exception into a
`
`practical application. The eligibility analysis proceeds to Step 2B.
`
`Step 2B:
`
`The additional elements, both individually and as an ordered combination, do not amount to
`
`significantly more than the judicial exception because the outcome of the considerations at Step 2B will
`
`be the same when considerations from Step 2A.2 are re-evaluated. Furthermore, the courts have
`
`identified that storing information in memory (“generating a first block...”) as well-understood, routine,
`
`and conventional functions See MPEP 2106.05(d). As discussed above with respect to integration of the
`
`abstract idea into a practical application, the additional elements amount to no more than mere
`
`instructions to apply the exception in a generic computer environment. Mere instructions to apply an
`
`exception in a generic computing environment and/or using a generic computer component cannot
`
`provide an inventive concept.
`
`Claims 1 and 11-12 are not patenteligible.
`
`Dependent Claims
`
`Dependentclaim 2 recite transmitting a signal todetermine a response, and determining
`
`whether a total number exceeds a predetermined value. Transmitting and receiving a response have
`
`been determined by the courts to be well-understood, routine, and conventional functions See MPEP
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 7
`
`2106.05(d). Furthermore, determining whether a total number exceeds a predetermined value merely
`
`elaborates on the abstract idea identified above and doesnot recite any new additional elements. When
`
`the limitations are considered individually and as a whole in combination with the independent claims
`
`from which they depend on, the claim does not recite additional elements that amountto significantly
`
`morethan the judicial exception.
`
`Dependentclaim 3 provides further context on the signal and when and how often to transmit
`
`the data. Context on the signal cannot be given patentable weight since it does not give meaning or
`
`purpose to the manipulative steps. Furthermore, signals do not fall under any statutory categories, soit
`
`is patentineligible. Transmitting and receiving data over a network have been determined by the courts
`
`to be well-understood, routine, and conventional functions See MPEP 2106.05(d). When the limitations
`
`are considered individually and as a whole in combination with the independent claims from which they
`
`depend on, the claim does not recite additional elements that amountto significantly more than the
`
`judicial exception.
`
`Dependentclaims 4, 7, and 10 merely elaborate on the abstract idea identified above without
`
`reciting any new, meaningful additional elements. When the limitations are considered individually and
`
`asa whole in combination with the independent claims from which they depend on, the claims do not
`
`recite additional elements that amount to significantly more than the judicial exception.
`
`Dependentclaim 5 recite transmitting the first block and executing a consensus algorithm.
`
`Transmitting data has been determined by the courts to be well-understood, routine, and conventional
`
`functions See MPEP 2106.05(d). Furthermore, executing a consensus algorithm merely elaborates on the
`
`abstract idea identified above and does not recite any new additional elements. When the limitations
`
`are considered individually and as a whole in combination with the independent claims from which they
`
`depend on, the claim does not recite additional elements that amountto significantly more than the
`
`judicial exception.
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 8
`
`Dependentclaims 6 and 8 cannot be given patentable weight because they merely provide
`
`further context without giving meaning or purpose to the manipulative steps. Therefore, they cannot be
`
`considered for patenteligibility.
`
`Dependentclaim 9 recite receiving a request, confirming whether data is storedin the first
`
`blockchain, and generatingfirst transaction data. Receiving data has been determined by the courts to
`
`be well-understood, routine, and conventional functions See MPEP 2106.05(d). Furthermore, confirming
`
`and generating data introduces an additional abstract idea of following rules or instructions, grouped
`
`under managing personal behavioror relationships or interaction between people. The claim does not
`
`recite any new, meaningful additional elements. When the limitations are considered individually and as
`
`a whole in combination with the independent claims from which they depend on, the claim does not
`
`recite additional elements that amount to significantly more than the judicial exception.
`
`In summary, the dependent claims considered both individually and as an ordered combination
`
`do not provide meaningful limitations to transform the abstract idea(s) intoa patenteligible application
`
`such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not
`
`recite an improvement to another technology or technical field, an improvement to the functioning of
`
`the computer itself, or provide meaningful limitations beyond generally linking an abstract ideatoa
`
`particular technological environment. Therefore, claims 1-12 are rejected under 35 U.S.C. 101 as being
`
`directed to non-statutory subject matter.
`
`Claim Rejections - 35 USC § 102
`
`Inthe 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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 9
`
`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 paragraphsof 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 ina 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 ina patent issued under section 151, or in anapplication
`for patent published or deemed published under section 122(b), inwhich 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 1-2, 4-8, and 11-12 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being
`
`anticipated by Lim et al. U.S. 2020/0005388.
`
`Re Claim 1, Lim et al. disclose a control method for controlling a first node that manages a first
`
`blockchain ina first distributed ledger in a system utilized to use a service object and including the first
`
`node andaplurality of second nodes that each manageasecond blockchain in a second distributed
`
`ledger Fig. 1A, the control method comprising:
`
`obtainingfirst transaction data [0042], [0068] —consumergenerates ordersfor rental assets to
`
`one or more requester nodes, which in turn provides a rental asset request,i.e. first transaction data;
`
`determining whether a total number of second nodes, amongthe plurality of second nodesFig.
`
`1A— 104A/B, that are capable of communication exceeds a predetermined value; and [0069] — provider
`
`node,i.e. second node, provides a notification to the requester nodethat the rental assetis available.
`
`Under the broadest, most reasonable interpretation, predetermined value can be assumedto beO
`
`(assetis available or not), so if a provider or second node has the rental assetavailable, the total
`
`numberof second nodeswith the asset available therefore exceeds 0, and is capable of
`
`communicating suchinformation backto the requester node;
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 10
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`generating a first block containing the first transaction data only when the total number of
`
`second nodes that are capable of communication exceeds the predetermined value [0030], [0070] —
`
`only when rentalassetis available, arental asset in-use blockchain transaction is generated andthe
`
`smart ledger is updated with the transaction.
`
`Re Claim 2, Lim et al. disclose the control method according to claim 1, and Lim etal. further
`
`disclose
`
`wherein the determining whether the total number exceeds the predetermined value includes:
`
`transmitting, tothe plurality of second nodes, a signal requesting a response [0072] —rental
`
`asset is requested from multiple blockchain nodes;
`
`determining, among the plurality of second nodes, one or more second nodes from which a
`
`response to the signal is obtained are capable of communication [0069] — provider node provides a
`
`notification to the requester node that the rental assetis available, providinganotification is an
`
`indicator that the provider node is capable of communication; and
`
`determining whether the total number of second nodes that are capable of communication
`
`exceeds the predetermined value according to whether a total number of the second nodes from which
`
`a response to thesignal is obtained exceeds the predetermined value [0068]-[0069] — provider node
`
`signaling that the rental assetis available is analogous to determining the total numberof second
`
`nodesthat exceeds the predetermined value, wherein the predeterminedvalue is reasonably set to 0
`
`(rental asset is not available = 0, is available = 1).
`
`Re Claim 4, Lim et al. disclose the control method according to claim 1, and Lim et al. further
`
`disclose
`
`wherein the obtaining of the first transaction data includes obtaining the first transaction data
`
`by receiving the first transaction data from at least one second node amongtheplurality of second
`
`nodes [0068] — receiving a rentalasset request froma node, and
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 11
`
`the determining whether the total number exceeds the predetermined value includes
`
`determining whether the total number exceeds the predetermined value according to whether the first
`
`transaction data has been received from, amongthe plurality of second nodes, second nodes, a total
`
`number of which exceeds the predetermined value [0068] — receiving a rental asset request froma
`
`node,which is greater than the predetermined value of 0 (not available = 0, available =1).
`
`Re Claim 5, Lim et al. disclose the control method according to claim 1, and Lim etal. further
`
`disclose further comprising:
`
`transmitting the first block generated to, among the plurality of second nodes, second nodes, a
`
`total number of which exceeds the predetermined value [0070] — smart ledger is updated, which
`
`creates an immutable record of the transaction oneach ledger distributed amongstthe nodes [0025],
`
`i.e. if the ledger is updated, then it can be concludedthat the generatedfirst block was transmitted to
`
`the nodes; and
`
`executing a consensusalgorithm with the number of the second nodes exceeding the
`
`predetermined value and storing thefirst block in the first blockchain [0037], [0048], [0051].
`
`Re Claim 6, Lim et al. disclose the control method according to claim 1, and Lim etal. further
`
`disclose
`
`wherein the first transaction data includes information pertaining toa first contract for using the
`
`service object [0068].
`
`Applicant is reminded that the content of information is not given patentable weight because no
`
`functional relationship exists. The content of the first transaction data does not give meaning or purpose
`
`to the manipulative steps of the claimed invention. For purposes of compact prosecution, prior art is
`
`cited.
`
`Re Claim 7, Lim et al. disclose the control method according to claim 6, and Lim etal. further
`
`disclose further comprising:
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 12
`
`permitting the service object corresponding to the first contract to be used when thefirst
`
`transaction data is stored in the first blockchain [0070].
`
`Re Claim 8, Lim et al. disclose the control method according to claim 1, and Lim et al. further
`
`disclose
`
`wherein the system is used in a service for sharing a plurality of mobile bodies [0033],
`
`the service object is each of the plurality of mobile bodies [0033], and
`
`the first transaction data is reservation transaction data for a user to makeause reservation for
`
`using a first mobile body through thefirst node, and includes an|D of the user, a reservation time period
`
`indicating atime period for which the user is to use the first mobile body, and a reservation number for
`
`identifying the use reservation [0070].
`
`Applicant is reminded that intended useis not given patentable weight since it does not result in
`
`a manipulative difference between the claimed invention and the prior art MPEP 2111.02. Furthermore,
`
`the content of information is not given patentable weight because no functional relationship exists. The
`
`contentof the service object and/or first transaction data do not give meaning or purpose to the
`
`manipulative steps of the claimed invention. For purposes of compact prosecution,prior art is cited.
`
`Re Claim 11,it is the device claim of method claim 1. It recites similar distinguishing features as
`
`the method claim. Furthermore, Lim et al. disclose steps may be implemented via a physical
`
`infrastructure that includes processors and memories [0081]. Therefore,it is rejected for the same
`
`reasons above.
`
`Re Claim 12, it is the non-transitory computer-readable recording medium claim of method
`
`claim 1. It recites similar distinguishing features as the method claim. Furthermore, Lim et al. disclose
`
`steps maybe implemented in a computer program embodied on a computer readable medium [0085].
`
`Therefore,it is rejected for the same reasonsabove.
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 13
`
`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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
`
`basis (i.e., changing from AIA to pre-AlA) 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 forthin 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.
`
`Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. U.S. 2020/0005388
`
`in view of Taylor et al. U.S. 2019/0299835.
`
`Re Claim 3, Lim et al. disclose the control method according to claim 2,
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`wherein the signal is the first transaction data [0068] — requester node providesa rental asset
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`request to the provider node.
`
`However, Lim et al. do not expressly disclose
`
`the determining whether the total number exceeds the predetermined value includes
`
`transmitting the first transaction data tothe plurality of second nodesas the signal at predetermined
`
`intervals when the total number of second nodes that are capable of communication is not greater than
`
`the predetermined value.
`
`Taylor et al. disclose system and methodfor distributing merchandise in response to
`
`emergencies. Specifically, Taylor et al. disclose transmitting a signal at predetermined time intervals
`
`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 14
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`until an acknowledgementsignal is received [0094]. One would look to Taylor et al. as analogousart
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`because similar to the claimed invention, both are related to the distribution of good(s).
`
`It would have been obvious to a personof ordinaryskill in the art before the effective filing date
`
`of the claimed invention to madify the rental asset processing of Lim et al. with the teachings of
`
`transmitting a signal at predetermined time intervals of Taylor et al. The combination would result in the
`
`requester node transmitting requests toa plurality of provider nodes at predetermined time intervals
`
`until a response is received. One would be motivated to make this combination because combining the
`
`prior art elements of transmitting a rental request and transmitting a signal at predetermined time
`
`intervals until a response is received yields predictable results.
`
`Applicant is reminded that no patentable weight can be given to the recitation “wherein the
`
`signalis the first transaction data” because it is neither a method stepor computer function that
`
`meaningfully limits the claimed invention. The recitation does not give meaning or purpose to the
`
`manipulative steps or structural limitationso a device/apparatus. For purposes of compact prosecution,
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`prior artis cited.
`
`Applicant is reminded that contingent limitations only require those steps that must be
`
`performed and does not include steps that are not required tobe performed because the condition(s)
`
`precedent are not met see MPEP 2111.04. In this claimed invention, condition A is “when the total
`
`number of second nodes that are capable of communication is not greater than the predetermined
`
`value.” The claimed invention may be practiced without condition A occurring, therefore the recited
`
`steps are not required by the broadest, most reasonable interpretation of the claim. For purposes of
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`compactprosecution, prior art citing is provided.
`
`Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. U.S.
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`2020/0005388in view of Turato U.S. 2019/0259093.
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`

`

`Application/Control Number: 17/886,638
`Art Unit: 3685
`
`Page 15
`
`Re Claim 9, Lim et al. disclose the control method according to claim 8, Lim et al. further disclose
`
`further comprising:
`
`when the reservation transaction data is stored, generating the first transaction data soas to
`
`allow the user to unlock the first mobile body during the time period [0068] — asset request transaction
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`is validated and stored on smartledger, i.e. stored reservation transaction data, [0070] —rental asset
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`in-use blockchain transaction is created, i.e. generated first transaction data.
`
`However, Lim et al. do not expressly disclose
`
`receiving, by the first node, an unlock request for the first mobile body, the unlock request
`
`serving as a request from the user to start using the first mobile body;
`
`confirming, by the first node, whether the reservation transaction data corresponding to the
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`unlock request is storedin thefirst blockchain; and
`
`Turato discloses a system and related methods for management of communications and
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`interactions betweenauser and a connectedfleet of vehicles. Specifically, Turato discloses
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`receiving, by the first node, an unlock request for the first mobile body, the unlock request
`
`serving as a request from the user to start using the first mobile body [0027] — user seeks access to
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`vehicle;
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`confirming, by the first node, whether the reservation transaction data corresponding to the
`
`unlock request is storedin