Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-8 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 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.
Independent claims 1, 8, and 9 were amended to include the word “simultaneously” to specify that the commits for a subsequent turn are made simultaneously with the reveals/disclosures for prior commits. See e.g. claim 1 lines 9-12. It is not apparent where the word “simultaneously” is used in the application as originally filed. Figure 1 elems. 12 and 13 and its corresponding description in the Specificaiton at p. 6 describe the reveal and subsequent commit as separate blocks. It is not apparent how separate steps arranged in a sequential flow teaches or suggests performing the steps simultaneously. Moreover, the first complete paragraph at Specification p. 7 describes how “Participant B then reveals the value first committed to by him, and commits to a fourth value.” Spec. p. 7 first complete paragraph. This language merely suggests that the reveal and subsequent commit occur during the participant’s turn and not that the reveal and subsequent commit are simultaneous.
Regarding claims 2-7, they are rejected because they depend on claim 1.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, “the sequence” at line 13 is unclear because it could refer either to a “member” (i.e., participant) associated with the sequence of moves or alternatively to a pseudo-random number of the random number sequence recited in the preamble. The Applicant should consider whether it would be appropriate to amend the claim to recite: “each participant computer determining a pseudo-random number of the pseudo-random number sequence … .”
As to claims 2-7, they are rejected because they depend on claim 1.
Regarding claims 8 and 9, neither claim has a transitional phrase consistent with U.S. practice. It is therefore unclear whether the claims are open or closed ended. Since method claim 1 uses the open-ended transitional phrase “comprising,” Applicant should consider appropriate amendments to claims 8 and 9 to make them consistent with claim 1. For purposes of prior art rejections in this Office action, both claims will be treated as if they were open-ended.
Regarding claim 9, the preamble states that the claim is directed to a device but then refers to participants. The use of different terms suggests that the device is not a participant but rather something else. All of the functional language recited in the claim after line 2 is performed by the participants and not by device. However, claim 9 states at line 2 that the device is “configured to” perform these functions. This inconsistency makes the claim unclear. When addressing this issue along with the issue identified in the preceding paragraph, Applicant should consider whether a preamble based on the following language would be appropriate: a distributed system comprising a plurality of participant computers. For purposes of prior art rejections in this Office action, claim 9 will be construed consistently with the possible language.
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 1-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
At step (1), claims 1-9 recites either a method, device, or non-transitory machine-readable storage medium. , which falls into one of the four statutory classes.
Claim 1:
At step (1), claim 1 recites a method, which falls into one of the four statutory classes.
Before addressing step 2(a) prong 1, it is necessary to construe various claim terms. It is important to note that the claim refers to participants and not participant computers. The broadest reasonable interpretation of participants includes people. The claim does not specify specific complex cryptographic operations being applied to generate commitments and merely requires the committed value to be hidden. The claim does not specify specific complex cryptographic operations being used to generate a random number (i.e., determine a member of the sequence) based on the reveals/disclosed values. A simple bitwise XOR hashing function could be applied to the revealed values to generate the random number. The claims do not specify the number of bits of the reveals/disclosed values and/or the number of bits of the random number generated. The revealed value and subsequently generated random number could therefore have a reasonably small number of bits (i.e., 8, 16, or 32) that would be amenable generation or calculation by a person.
At step 2(a) prong 2, claim 1 recites an abstract idea as with the abstract idea shown in italics and the additional elements shown in bold text:
Claim
Abstract Idea Recited
Committing by each of the participants, in a data structure managed on the state channel, to at least a number of at first hidden values that corresponds to a number of participants
Mental steps
In a turn-based sequence of moves, respectively and repeatedly executing a turn for one of the plurality of participants, wherein executing the turn for a current participant comprises:
Mental steps
the current participant disclosing a number of values previously committed by the current participant
Mental steps
the current participant simultaneously committing to a same number of further at first hidden values for a subsequent turn;
Mental steps
in response to each executed turn, determining a member of the sequence by a relation that includes, for each of the participants, at least one of the values disclosed by the participant.
Mental steps or mathematical concepts
The limitations identified as mental steps above could all be implemented mentally using pen and paper by a group of three people/participants in a conference room with three cubicles and a bulletin board. Each participant could go to his cubicle, generate a random 16-bit binary number, write it on a paper, and hide the paper in an envelope. Each participant could take a turn walking to the bulletin board and commit to the participant’s random number by tacking the envelope to the board in the participant’s column as shown in instant application Fig. 2. Each participant could then go back to his cubicle and generate an envelope with a new hidden 16-bit binary number in the same way. Then, each participant takes a turn walking to the board. The participant opens his envelope, removes the paper, and then simultaneously tacks the paper with the participant’s revealed random number and the envelope containing the further hidden value to the board. Once each participant has taken his turn, each participant can calculate the combined random value by performing bitwise XOR hashing on the 3 16-bit values.
At step 2(a), prong 2, the judicial exception recited in claim 1 is not integrated into a practical application. Although claim 1 recites the additional element of a data structure managed on the state channel, these elements are recited at a high level of generality. Nothing in the claim specifies the details or organization of the data structure. It is merely a generalized container of the information used by the abstract idea. Nothing in the claim specifies details of how the state channel is used in the generation of the random number. These additional elements do not provide a meaningful limitation on the abstract idea recited in the claims and at best generally link the abstract idea to computerized blockchain systems. Employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient. See MPEP 2106.07(a).
At step 2(b), claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The analysis for step 2(b) is essentially the same as for step 2(a) prong 2. The additional elements do not along, or in combination, provide an inventive concept. The claim is therefore not eligible.
Regarding claims 2-5, the claims merely introduce new limitations directed to the abstract idea of mathematical concepts. The analysis for claims 2-5 is therefore essentially the same as for claim 1.
Regarding claims 8 and 9, they are media and apparatus claims corresponding to method claim 1. The analysis for claim 1 applies equally to them.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3 and 6-9 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Schindler, P., et al., HydRand: Efficient Continuous Distributed Randomness, 2020 IEEE Symposium on Security and Privacy (SP), May 21, 2020, pp. 1-18, in view of Coleman, J., et al., Counterfactual: Generalized State Channels, as cited in the IDS filed 9/28/2021.
Regarding claim 1, Hydrand teaches the invention substantially as claimed. Hydrand describes a round based protocol in which the round leader (i.e., participant) simultaneously reveals a previous commitment and commits to a new one (Hydrand p. 2 col. 2 protocol overview). Hydrand therefore teaches the limitations of lines 6-12 of claim 1. Hydrand explains that the overall system should wait f + 1 rounds before using the protocol output (i.e., the random beacon). (Hydrand p. 2 col. 1 Contribution). In f + 1 rounds, all of the leaders selected for each round (i.e., participants) have committed to and revealed information that goes into the computed random beacon for the round. Alternatively, Hydrand teaches that all participants prepare an initial commitment using publicly-verifiable secret sharing. (Hydrand p. 2 col. 2 III. Protocol Overview). Hydrand therefore teaches the limitations in lines 3-5 of claim 1. Hydrand also teaches how the previously committed secret value (i.e., the proposed random beacon for the round) is reconstructed by f+1 other nodes. (Hydrand p. 2 col. 2 end). Hydrand’s reconstruction therefore teaches the limitation of claim 1 lines 13-15. Hydrand’s random beacon is a pseudo-random number. Hydrand therefore teaches this limitation at line 1.
Although Hydrand is described as a particular randomness source for blockchain systems (Hydrand abstract), Hydrand does not specifically state that the messages exchanges as part of its protocol are exchanged outside the blockchain (i.e, using a state channel).
Coleman teaches state channels for use in blockchain systems (Coleman p. 1 1.1 State Channels: Basic Overview).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the Hydrand system to exchange messages according to the protocol off blockchain using Coleman’s state channels. This modification would have been obvious because of Coleman’s teaching that use of state channels reduces overhead on the blockchain. (p.p. 2-3 Benefits of State Channels).
Regarding claims 2 and 3, Hydrand teaches how the previously committed secret value (i.e., the proposed random beacon for the round) is reconstructed by f+1 other nodes. (Hydrand p. 2 col. 2 end). The beacon is calculated using a publicly-verifiable secret sharing scheme (Hydrand p. 2 col. 2 III. Protocol Overview). A publicly verifiable secret sharing scheme is based on arithmetic and includes addition as on of the operations.
Regarding claim 5, Hydrand in view of Coleman teaches a method wherein:
on the state channel, a plurality, corresponding to the number of participants, of the data structure of a same type are arrange, and include the data structure (Hydrand teaches that all participants receive the messages that constitute the data structure and keep their own copy);
the disclosure of the values by the participants in the data structures takes place in a sequence that differs between the data structures (Hydrand p. 4 col. 2 describing the adversary that selectively sent the previous dataset to a subset of nodes).
Regarding claim 6, Hydrand teaches a system in which the sequence of participants (i.e., leaders) is arbitrary. (Hydrand p. 5 col. 1 D. Leader selection – where the leader is selected randomly based on the randomness R-1).
Response to Arguments
Applicant’s arguments regarding the rejection(s) of claim(s) 1-9 under 35 U.S.C. 103 as being unpatentable over Wright in view of Floersch and Yildiz have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as explained above.
Regarding the rejection of claims 1-9 under 35 U.S.C. 101, Applicant's arguments have been fully considered but they are not persuasive
As to step 2(a) prong 1, Applicant argues that Enfish provides guidance on the nonabstractness of software-based improvements to computing technology. Resp. pp. 10-11. At the end of a discussion of Enfish, Applicant explains that the claims are directed “to the sequential commitment-disclosure mode that the above-quoted specification blurbs explain is a key feature for generating secure random numbers in distribute application dApps.” Id. This argument is not persuasive for a number of reasons. It relies upon features not recited in the claims. It ignores the fact that the claims recite participants and do not even recite participant computers. It is not persuasive because it is conflating the prong 1 and prong 2 analysis.
As to step 2(a) prong 2, Applicant’s arguments have been considered but are not deemed persuasive. Applicant essentially argues that any abstract idea is integrated into a practical application because the exception improves the function of a computer or improves another technology or technical field (the generation of random numbers or the field of dApps/distributed applications). Resp. p. 12. Applicant’s remarks refer to various technical terms (e.g., dApps and rows of a data structure) from the specification that do not appear in the claims. An improvement must come from the additional elements alone or the additional elements in combination with the abstract idea. MPEP 2106.05(a). It is not apparent how the claims adequately reflect these features from the specification such that the claim covers a particular solution to a problem as opposed to claiming the idea of a solution or outcome.
As to step 2(b), Applicant’s arguments have been considered but are not deemed persuasive. First, Applicant argues that Berkheimer evidence must be supplied in this case. It is not apparent that Berkheimer evidence is required in this case since the rejection does not rely on reasoning that the additional elements are well-understood, routine, and conventional. However, applicant provided the Coleman reference on the IDS filed 9/28/2021. The Coleman reference is an overview article that describes various state channel and associated data structure implementations. Coleman is therefore evidence of the type set forth in MPEP 2106.07(c) III (C). The Examiner’s characterization of Coleman as an overview article is consistent with Applicant’s characterization of Coleman in the specification. See Spec. p. 1 line 25 to p. 2 line 2. As to the discussion of ex parte Desjardins, Applicant argues that Desjardins applies to distributed ledger/crypto technologies to which the present claims are relevant. The Examiner agrees that distributed ledger/crypto technology cases are potentially eligible but nothing in the decision says that this type of application is per se eligible. The Applicant’s argument is therefore unpersuasive since it does not point out particular errors in the rejection made.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant argues that the claim does not recite any judicial exception. Resp. p. 10. This argument is not persuasive because it is conclusory.
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/ANDREW CALDWELL/Supervisory Patent Examiner, Art Unit 2182
