Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in response to remarks received 07/27/2026.
This application claims earliest foreign priority to 1718505.9, filed 11/09/2017.
Claims 1, 9, and 14-20 have been amended and claims 2, 8 & 13 cancelled.
Claims 3-7 & 9-12 being dependent on either of independent claims 1 and 14-20.
Claims 1, 3-7, 9-12 & 14-20 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive.
Under Step 2A, Prong One, Applicant argues that claim 1 is not directed to a commercial or legal interactions or a method of organizing human activity and instead recites a technical method for validating work performed by untrusted entities in a distributed computing system. Applicant further argues that the cryptographic and blockchain features are inherently computer based, cannot be performed in the human mind or with pen and paper, and therefore are not abstract.
The Examiner acknowledges the amendments to claim 1 and has reconsidered the characterization of the amendments to claim 1 and has reconsidered the characterization of the judicial exception. The present rejection does not rely upon the conclusion that amended claim 1 is directed to commercial or legal interactions or a method of organizing human activity. Instead, amended claim 1 expressly recites mathematical concepts including mathematical relationships and calculations through the claimed polynomials encoding gate equations for multiplication gates, proof term, target polynomial, and divisibility check performed on the proof term given the polynomials and target polynomial.
Accordingly, Applicant’s arguments that the claim dos not recite commercial or legal interactions do not overcome the rejection as presently formulated. Further, the fact that other portions of the claim involve computer, cryptographic, distributed computing, or blockchain operations does not remove the expressly recited mathematical concepts from the recognized mathematical concepts grouping of abstract ideas.
Under Step 2A, Prong Two, Applicant argues that, even assuming the claim recites an abstract idea, the claim integrates any judicial exception into a practical application because it provides an improvement to distributed computing systems in which nodes are not trusted by a client or coordinating computer system.
In particular, Applicant relies upon ¶37 of the Specification as describing a problem arising when individual computer systems performing distributed subtasks are not entirely trusted by the coordinating computer system. Applicant asserts that the claimed configuration permits a verifying computer system to distribute work to a broader set of computer systems are not necessarily trusted without reproducing the distributed subtasks.
The Examiner has considered the asserted improvement described by Applicant, including Applicant’s characterization of ¶37. However, the asserted ability to determine whether work performed by an untrusted worker computer system is correct does not establish that the claim improves the functioning of the computer itself or another technology. rather, the claimed mathematical verification is used to determine whether the result produced by the worker computer system is correct. The client and worker computer systems provide the technological environment in which that verification is performed.
Applicant additionally argues that the claimed configuration improves the security of digital assets and improves scalability, security, and storage efficiency. These asserted benefits have been considered. However, amended claim 1 does not recite a particular change to computer operation that produces improved scalability or storage efficiency. Likewise, the asserted security benefit results form determining, through the recited mathematical proof and verification process, whether the worker’s computation is correct. The claim does not recite a change to the underlying processor operation, memory operation, computer architecture, network operation, distributed ledger operation, or other computer functionality resulting form the mathematical verification.
Applicant further argues that the claim imposes specific constraints before a blockchain transaction is added to the blockchain transaction is added to the blockchain and therefore provides a specific technical application rather than generic computer implementation. The Examiner has considered the claim as a whole, including the claimed interaction between the client computer system, worker computer system, mathematical verification, and blockchain transaction validation. However, the blockchain limitations use the result of the mathematical verification to determine whether the transaction is added to the distributed ledger. Thus, the claim applies the recited mathematical concepts within the particular technological environment of distributed computing and blockchain transaction validation without reciting an improvement to the functioning of the computer or blockchain technology itself.
Applicant also argues that blockchain technology is firmly rooted in computer technology and cannot be performed in the human mind or with pen and paper. This argument does not alter the Prong Two analysis. The rejection does not conclude that the entirety of the claimed blockchain process is a mental process. Rather, the claim expressly recites mathematical concepts, and the remaining limitations are evaluated to determine whether those mathematical concepts are integrated into a practical application. The use of computer cryptographic, distributed computing, and blockchain components therefore does not, by itself, establish such integration.
For the above reasoning, the additional elements, considered individually and in combination, do not integrate the abstract idea into a practical application.
Under Step 2B, Applicant argues that the Office improperly relies upon the presence of generic computer functions and that generic computer components do not themselves establish patent ineligibility. Applicant further relies upon BASCOM for the proposition that an inventive concept may be found in a non-conventional and non-generic arrangement of known, conventional components and that the claim must be evaluated as an ordered combination. The Examiner agrees that the eligibility inquiry does not end merely because individual computer components may perform generic computer functions. The limitations of amended claim 1 have therefore been considered both individually and as an ordered combination.
The Examiner agrees that the eligibility inquiry does not end merely because individual computer components may perform generic computer functions. The limitations of amended claim 1 have therefore been considered both individually and as an ordered combination.
Considered as an ordered combination, the claim provides a task to a worker computer system, communicates information used in connection with the computation, receives a proof from the worker computer system, applies the recited mathematical verification to determine whether the computation was correctly performed, and uses the result of the verification in the blockchain transaction validation process. This ordered combination implements the recited mathematical verification in a distributed computing and blockchain environment but does not provide an inventive concept separate from the judicial exception itself.
Applicant’s reliance on BASCOM does not alter this conclusion. BASCOM recognizes that an inventive concept may reside in a particular arrangement of elements even where the individual components were known. Here, however, the alleged inventive result identified by Applicant, cryptographically verifying work from untrusted worker computer systems without reproducing the distributed subtasks, is accomplished through the mathematical proof and verification operations that form the judicial exception identified above. The recited client computer, worker computer systems, communications, and blockchain transaction validation do not provide a separate inventive concept beyond implementation and use of the mathematical verification.
Applicant also argues that implementation of the claimed invention improves the computer technology of a blockchain. However, for the reasons discussed above, the claim uses the result of the mathematical verification in determining whether a blockchain transaction is validated and added to the distributed ledger without reciting an improvement to the operation of the blockchain or computer components themselves.
For the above reasoning, when the additional elements are considered individually and as an ordered combination, they do not amount to significantly more than the recited judicial exception.
Applicant’s arguments regarding claims 3-7, 9-12 and 14-20 have been considered. Claims 3-12 further limit aspects of the proof, keys, circuit, transaction validation, and computer systems, while claims 14-20 recite systems or computer-readable storage media configured to perform the corresponding methods. These limitations do not alter the Step 2A or Step 2B analysis discussed above. Therefore, Applicant’s arguments and amendments do not overcome the rejection of claims 1, 3-7, 9-12 & 14-20 under 35 U.S.C. § 101, and the rejection is maintained.
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, 3-7, 9-12 & 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 3-7 & 9-12 recite a process, claims 14 & 16-18 recite systems, and claims 15 & 19-20 recite non-transitory computer-readable storage media, and therefore fall within statutory categories of invention.
Under Step 2A, Prong One, claim 1 recites generating an evaluation key and a verification key, wherein the verification key is based on one or more inputs to a set of multiplication gates and outputs of the set of multiplication gates, the inputs and outputs forming a set of I/O values that include polynomials that encode gate equations for the multiplication gates; receiving a proof having a proof term; and verifying that a computation is correct by performing a divisibility check on the proof term given the polynomials and a target polynomial.
These limitations recite mathematical concepts, including mathematical relationships and mathematical calculations. In particular, the claimed polynomials encoding gate equations, proof term, target polynomial, and divisibility check expressly require the use of mathematical relationships and calculations to determine whether the computation has been correctly performed. Mathematical concepts constitute a recognized grouping of abstract ideas. Therefore, claim 1 recites a judicial exception.
Claims 14 and 15 require a system or computer-readable storage medium, respectively, configured to perform the computer implemented method of claim 1 and therefore recite the same judicial exception. claims 16-20 similarly incorporate the methods of claims 3-5 and therefore likewise recite the mathematical concepts incorporated from claim 1.
Under Step 2A, Prong Two, the additional elements include a client computer system, a processor, a worker computer system in a set of independent computer systems, providing a task to at least one worker computer system, the independent computer systems being untrusted by the client computer system, providing an evaluation key to the worker computer system, receiving a proof from the worker computer system, using the result in connection with validation of a blockchain transaction, and adding the blockchain transaction to a distributed ledger when the computation is verified.
Considered individually and in combination, these additional elements do not integrate the recited mathematical concepts into a practical application. The computer and blockchain limitations provide the technological environment in which the claimed mathematical verification is performed. The claim uses the mathematical verification to determine whether a computation performed by a worker computer system is correct and, based upon that determination, permits the blockchain transaction to be added to the distributed ledger.
The additional elements do not reflect an improvement to the functioning of a computer or another technology or technical field. The client and worker computer systems perform computing and communication functions in implementing the mathematical verification, and the blockchain limitations use the result of that verification in determining whether the transaction is added to the distributed ledger. The claim does not recite an improvement to the operation of the processor, memory, computer architecture, network, distributed ledger, or other computer functionality itself. Further, additional elements do not apply or use the judicial exception in conjunction with a particular machine in a manner that imposes a meaningful limit on the judicial exception, effect a particular transformation, or otherwise impose meaningful limits beyond generally linking the use of the judicial exception to a distributed computing and blockchain environment. Therefore, when claim 1 considered as a whole, the additional elements do not integrate the judicial exception into a practical application.
Under Step 2B, the claims as a whole are analyzed to determine whether any element, or combination of elements, are sufficient to ensure the claims amount to significantly more than an abstract idea. As discussed with respect to Step 2A, the claim as a whole merely describes additional elements performing the abstract idea on a generic device i.e., abstract idea and generally applying the use of the judicial exception to a particular technological environment. See MPEP 2106.05(h). There is no improvement to computer technology or computer functionality MPEP 2106.05(a) nor a particular machine MPEP 2106.05(b) nor a particular transformation MPEP 2106.05(c). Given the above reasons, even when viewed as a whole, nothing in the claims add significantly more (i.e. an inventive Concept) to the abstract idea. Thus, claim 1 is not patent eligible. Independent claims 14-20 are not eligible under the same analysis.
The dependent claims 3-7, & 9-12 have been given the full two-part analysis (Step 2A – 2-prong tests and step 2B) including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are held to be patent ineligible under 35 U.S.C. 101 because further limiting the abstract idea does not amount to significantly more than the abstract idea. Claims 3-12 further narrow the abstract idea without providing significantly more than the abstract idea. In some examples, "nodes" refers to peer-to-peer electronic devices that are distributed among the blockchain network”’ and “In some embodiments, the nodes 102 can be comprised of any suitable computing device (e.g., by a server in a data center, by a client computing device (e.g., a desktop computer, laptop computer, tablet computer, smartphone, etc.), by multiple computing devices in a distributed system of a computing resource service provider, or by any suitable electronic client device such as the computing- device 600 of figure 6). Clearly, the additional recited limitations in the dependent claims only refine the abstract idea further. The additional limitations of claims 3-12 have been considered individually and in combination with the limitations of claim 1 and do not integrate the recited judicial exception into a practical application or provide significantly more than the judicial exception. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TONY P KANAAN whose telephone number is (571)272-2481. The examiner can normally be reached Monday- Friday 7:30am - 3:30 pm EST.
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/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696