DETAILED ACTION
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 reply to the communication(s) filed on 22 June 2026.
Claim(s) 2-4, 8-13 and 15 is/are cancelled.
Claim(s) 1 and 14 are amended.
Claim(s) 1, 5-7 and 14 is/are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 22 June 2026 have been fully considered but they are not persuasive.
Claim Rejections – 35 U.S.C. §101
Applicant argues that the claims as amended recite verification of the hashed value to a settlement-complete state. It is noted that the features upon which applicant relies (i.e., verification of the hashed value state) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that the claims do not merely recite payment for goods followed by a transfer of ownership and are not directed to the business objective of exchanging goods for payment. Examiner respectfully disagrees. Step 2A Prong 1 requires examiners to evaluate whether a claim recites a judicial exception as the applicant cited. The elements which examiner identified in Step 2A Prong 1 are those which describe the noted abstract idea which means that the claim recites an abstract idea. “The mere inclusion of a judicial exception such as a mathematical formula (which is one of the mathematical concepts identified as an abstract idea in MPEP § 2106.04(a)) in a claim means that the claim "recites" a judicial exception under Step 2A Prong One.” See MPEP 2106.04(II)(A)(2). “When performing the analysis at Step 2A Prong One, it is sufficient for the examiner to provide a reasoned rationale that identifies the judicial exception recited in the claim and explains why it is considered a judicial exception (e.g., that the claim limitation(s) falls within one of the abstract idea groupings). Therefore, there is no requirement for the examiner to rely on evidence, such as publications or an affidavit or declaration under 37 CFR 1.104(d)(2), to find that a claim recites a judicial exception. Cf. Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271-72, 120 USPQ2d 1210, 1214-15 (Fed. Cir. 2016) (affirming district court decision that identified an abstract idea in the claims without relying on evidence); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-64, 115 USPQ2d 1090, 1092-94 (Fed. Cir. 2015) (same); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347, 113 USPQ2d 1354, 1357-58 (Fed. Cir. 2014) (same).” See MPEP 2106.07(a)(III). The omitted element(s) (if any) are elements in addition to the abstract idea (i.e. they are not abstract) which require further analysis under Step 2A Prong 2 in order to determine if they cause the recited abstract idea to be integrated into a practical application. See MPEP 2106.07(a)(II). The omitted element(s) (if any) are later enumerated under Step 2A Prong 2 as additional elements. The claims recite and/or describe a judicial exception.
Applicant argues that the invention addresses the noted technical problem through blockchain-based processing in which ownership-transfer operations and settlement operations are treated as indivisible processing and are discarded when completion fails. Examiner respectfully disagrees. With respect to the use of blockchain and hashed values, Examiner notes the following: “The courts often cite to Parker v. Flook as providing a classic example of a field of use limitation. See, e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010) ("Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable") (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)). In Flook, the claim recited steps of calculating an updated value for an alarm limit (a numerical limit on a process variable such as temperature, pressure or flow rate) according to a mathematical formula "in a process comprising the catalytic chemical conversion of hydrocarbons." 437 U.S. at 586, 198 USPQ at 196. Processes for the catalytic chemical conversion of hydrocarbons were used in the petrochemical and oil-refining fields. Id. Although the applicant argued that limiting the use of the formula to the petrochemical and oil-refining fields should make the claim eligible because this limitation ensured that the claim did not preempt all uses of the formula, the Supreme Court disagreed. 437 U.S. at 588-90, 198 USPQ at 197-98. Instead, the additional element in Flook regarding the catalytic chemical conversion of hydrocarbons was not sufficient to make the claim eligible, because it was merely an incidental or token addition to the claim that did not alter or affect how the process steps of calculating the alarm limit value were performed. Further, the Supreme Court found that this limitation did not amount to an inventive concept. 437 U.S. at 588-90, 198 USPQ at 197-98. The Court reasoned that to hold otherwise would "exalt[] form over substance", because a competent claim drafter could attach a similar type of limitation to almost any mathematical formula. 437 U.S. at 590, 198 USPQ at 197.” See MPEP 2106.05(h). The use of blockchain does not alter or affect how the process steps of performing a trade settlement are performed. The recitation of blockchain does not integrate the recited judicial exception into a practical application.
With respect to the indivisible processing, Examiner notes the following: The MPEP clarifies how additional elements can impose meaningful limits on a recited judicial exception:
“Consideration of improvements is relevant to the eligibility analysis regardless of the technology of the claimed invention. That is, the consideration applies equally whether it is a computer-implemented invention, an invention in the life sciences, or any other technology. See, e.g., Rapid Litigation Management v. CellzDirect, Inc., 827 F.3d 1042, 119 USPQ2d 1370 (Fed. Cir. 2016), in which the court noted that a claimed process for preserving hepatocytes could be eligible as an improvement to technology because the claim achieved a new and improved way for preserving hepatocyte cells for later use, even though the claim is based on the discovery of something natural. Notably, the court did not distinguish between the types of technology when determining the invention improved technology. However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.” (MPEP 2106.05(a)(II))
Drawing attention to the emphasized section, an improvement in the judicial exception itself is not an improvement in technology. In the current case, regardless of whether or not applicant’s invention improves the recited judicial exception, improving a method, algorithm, or process of a judicial exception absent of any technological modification, would be an improvement to the judicial exception (e.g. via the improvement in the efficiency of the judicial exception), but does not improve computers or technology.
Applicant argues that the claims are eligible under Step 2B and then largely repeats the same arguments already presented. Examiner respectfully disagrees. “Although the conclusion of whether a claim is eligible at Step 2B requires that all relevant considerations be evaluated, most of these considerations were already evaluated in Step 2A Prong Two. Thus, in Step 2B, examiners should:
• Carry over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and
• Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d)” (See MPEP 2106.05(II)).
In both the prior and instant Office Action, the conclusions from Step 2A Prong Two are equally applied in Step 2B which further re-evaluates additional elements which are considered to be insignificant extra-solution activity and evaluates these elements as per MPEP §2106.05(d) to be well-understood, routine, and conventional activity. Said elements which are considered to be insignificant extra-solution activity are evaluated as well-understood, routine, and conventional as per the evidentiary requirements detailed in MPEP §2106.07(a)(III) utilizing option (B) via citation to one or more of the court decisions discussed in MPEP §2106.05(d)(II). Thus, there are no further elements to evaluate under Step 2B. Most considerations relating to any additional elements were already evaluated in Step 2A Prong Two and thus do not require further re-evaluation in Step 2B.
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.
Claims 1, 5-7 and 14 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.
Claims 1 and 14 recite in part “…wherein the ownership registration name is updated only when the hashed value corresponds to a settlement-complete state generated by the smart contract…” While the specification does disclose that the hashed value represents a state that means “approved”, “not-yet-approved” or the like and that one may avoid a double transaction by rewriting a character string into another character string every time a change is made to data of the bill of lading to avoid updating from a state indicated by a previous status, changing the name at the time of simultaneous fulfillment of obligations (see at least paragraphs [0043] and [0045]), control information for avoiding a double transaction is not the same as “only” updating the name when a settlement complete state is generated by the smart contract and changing name at the time of simultaneous fulfillment is not the same as “only” updating the name when a settlement complete state is generated by the start contract. Specifying the name change occurs “only” in this condition represents new matter.
Claims 1 and 14 recite in part, “…and prevents further processing of the bilateral contract”. While the specification does disclose discarding of the processing and indivisible processing and does disclose returning to a state before the start of processing, the specification is silent as to preventing further processing of the bilateral contract. This represents new matter.
Any remaining claims not expounded upon are rejected based on their dependency to a rejected claim.
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.
Step 1 of the 101 Analysis:
Claims 1, 5-7 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recites a system and method for trade settlement. These are a machine and process which are within the four categories of statutory subject matter.
Step 2A Prong 1 of the 101 Analysis:
The following limitations and/or similar versions are found in claim(s) 1 and 14:
Claim 1:
“…includes, for a bilateral contract including a first obligation of a change of name from one party to another party of contract parties, the change of name accompanying a transfer of ownership of an article to be sold or purchased in a trade, and a second obligation of a settlement using predetermined electronic money for a consideration relating to the sale and purchase:”
“that performs the settlement…”
“…that processes the change of name… in a case where the settlement has been successful wherein:”
“a processing of the change of name includes processing for changing an ownership registration data of a predetermined shipping document including at least a bill of lading relating to the article, and a bill of lading status relating to the article…”
“each of a shipper node, a consignee node, a carrier node and an insurer node is configured by the one or more computers, the shipper node serving as a node of a shipper of the trade, the consignee node serving as a node of a consignee of the trade, the carrier node serving as a node of a carrier of the trade, the insurer node serving as a node of an insurer of the trade, wherein:”
“in a first case,…the shipper node performs the settlement by remitting the freight of the trade to the settlement processing unit of the carrier node, and remitting a cargo marine premium of the trade to the settlement processing unit of the insurer node;”
“in a second case, … the consignee node performs the settlement by remitting the freight of the trade to the settlement processing unit of the carrier node, and remitting a cargo marine premium of the trade to the settlement processing unit of the insurer node; and”
“in a third case, … the shipper node performs the settlement by remitting the freight of the trade to the settlement processing unit of the carrier node, and the settlement processing unit of the consignee node performs the settlement by remitting a cargo marine premium of the trade to the settlement processing unit of the insurer node;”
“…the consignee node performs the settlement by remitting the consideration relating to the sale and purchase of the article to the settlement processing unit of the shipper node;”
“…the carrier node processes the change of name by changing the name of the owner of the blockchain data of the predetermined shipping document from the shipper to the consignee, the predetermined shipping document including the bill of lading of the article to be sold or purchased in the trade;”
“…determines whether all of the processing of the change of name related to the bilateral contract is successful, and in a case where any part of the processing is not completed by at least one of the shipper node, the consignee node, the carrier node or the insurer node, the processing of the settlement and the change of name related to the bilateral contract, including the predetermined shipping document, the remitting of the freight of the trade to the settlement processing unit of the carrier node, the remitting of the cargo marine premium of the trade to the settlement processing unit of the insurer node, and the remitting of the consideration relating to the sale and purchase of the article to the … shipper node are transitioned to a state in which further processing is excluded…”
“the settlement includes payment using electronic currency between a plurality of parties concerned according to trade terms… and wherein the processing unit updates the ownership registration name only when the hashed value corresponds to a settlement-complete state…;”
“wherein the settlement processing and the ownership-registration updating are performed as indivisible processing such that, when any settlement transaction or ownership-registration update fails,…discards both the settlement processing and the ownership-registration updating and prevents further processing of the bilateral contract.”
Claim 14:
“…for a bilateral contract including a first obligation of a change of name from one party to another party of contract parties, the change of name accompanying a transfer of ownership of an article to be sold or purchased in a trade, and a second obligation of a settlement using predetermined electronic money for a consideration relating to the sale and purchase:”
“settlement processing step of performing the settlement…”
“a processing step of processing the change of name… in a case where the settlement has been successful and wherein:”
“a processing of the change of name includes processing for changing an ownership registration of a predetermined shipping document including at least a bill of lading relating to the article, and a bill of lading status relating to the article,…”
“remitting freight of the trade to … a carrier node;”
“remitting a cargo marine premium of the trade to … an insurer node;”
“remitting consideration relating to the sale and purchase of the article to … a shipper node;”
“processing the change of name by changing the name of the owner of the blockchain data of the predetermined shipping document from a shipper to a consignee, the predetermined shipping document including the bill of lading of the article to be sold or purchased in the trade;”
“in the processing step, determining whether all of the processing of the change of name related to the bilateral contract is successful, and in a case where any part of the processing is not completed, the processing of the settlement and the change of name related to the bilateral contract, including the predetermined shipping document, the remitting of the freight of the trade to a settlement processing unit of a carrier node, the remitting of the cargo marine premium of the trade to the settlement processing unit of the insurer node, the remitting of the consideration relating to the sale and purchase of the article to the settlement processing unit of the shipper node, are transitioned to a state in which further processing is excluded…”
“the settlement processing step includes using electronic currency between a plurality of parties concerned according to trade terms,”
“…wherein the ownership registration name is updated only when the hashed value corresponds to a settlement-complete state…”
“…wherein the settlement processing and the ownership-registration updating are performed as indivisible processing such that, when any settlement transaction or ownership-registration update fails,…discards both the settlement processing and the ownership- registration updating and prevents further processing of the bilateral contract.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, describes Commercial or Legal Interactions but for the recitation of generic computer components. That is, other than reciting “one or more computers” nothing in the claims’ elements precludes the steps from practically describing Commercial or Legal Interactions. For example, but for the recited computer language, the limitations in the context of this claim describes Marketing or Sales Activities or Behaviors or could reasonably encompass Agreements in the Form of Contracts. A Marketing or Sales Activity is described when processing the obligations associated with a bilateral contract and associated with a bill of lading. An Agreement in the Form of a Contract is described when processing the obligations associated with a bilateral contract and associated with a bill of lading. If a claim limitations, under their broadest reasonable interpretation, describes Commercial or Legal Interactions but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Activity” grouping of abstract ideas.
Accordingly, the independent claims recite an abstract idea.
Step 2A Prong 2 of the 101 Analysis:
This judicial exception is not integrated into a practical application. In particular, the independent claim(s) recite the following additional elements:
Claim 1:
“each of the one or more computers…”
“a settlement processing unit…”
“a processing unit…”
“…by using a smart contract on a blockchain;”
“a processing unit…”
“…blockchain…”
“…wherein the bill of lading status comprises a hashed value,”
“the processing unit…”
“…and wherein the bill-of-lading status comprises a hashed value representing a current blockchain state of the bill of lading,… generated by the smart contract…”
“…the smart contract…”
Claim 14:
“each of the one or more computers performs,…”
“…by using a smart contract on a blockchain;”
“…by using the smart contract on a blockchain;”
“…blockchain…”
“…wherein the bill of lading status comprises a hashed value…”
“…generated by the smart contract…”
“…the smart contract…”
The computer components or other machinery (various computers) are recited at a high level of generality (i.e. as generic computers) such that it amounts to no more than mere instructions to implement the judicial exception on a computer or by using a computer or other machinery merely as a tool to perform an existing process. These element(s) in combination do not add anything that is not already pre-sent when the steps are considered separately. Simply implementing an abstract idea on a computer or using machinery as a tool to perform an existing process is not indicative of integration into a practical application (See MPEP § 2106.05(f).)
The use of smart contracts, blockchain and blockchain hashing is implemented at a high level of generality (i.e. as simply using the technologies) such that it amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use. These element(s) in combination do not add anything that is not already pre-sent when the steps are considered separately. Generally linking the use of the judicial exception to a particular technological environment or field of use is not indicative of integration into a practical application (See MPEP § 2106.05(h).)
Accordingly, 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.
The independent claims are directed to an abstract idea.
Step 2B of the 101 Analysis:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements identified in Step 2A Prong 2 (if any) amount to no more than mere instructions to implement the judicial exception on a computer or no more than mere data gathering or data outputting which only adds insignificant extra solution activity to the judicial exception. Accordingly, the Examiner in accordance with MPEP §2106.05(II):
• Carries over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carries over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluates any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant.
The claim elements which recite additional elements are:
Claim 1:
“each of the one or more computers…”
“a settlement processing unit…”
“a processing unit…”
“…by using a smart contract on a blockchain;”
“a processing unit…”
“…blockchain…”
“…wherein the bill of lading status comprises a hashed value,”
“the processing unit…”
Claim 14:
“each of the one or more computers performs,…”
“…by using a smart contract on a blockchain;”
“…by using the smart contract on a blockchain;”
“…blockchain…”
“…wherein the bill of lading status comprises a hashed value”
Examiner incorporates the corresponding rationale provided in Step 2A Prong Two herein by carrying over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) – (c), (e), (f) and (h).
These element(s) in combination do not add anything that is not already present when the steps are considered separately. Adding insignificant extra-solution activity cannot provide an inventive concept when the activities are well-understood routine and conventional. The independent claims contain no elements which are considered to be insignificant extra-solution activity.
The independent claims are not patent eligible.
Dependent Claim(s) 5-7 recite limitations that are similar to the abstract idea noted in the independent claims because they further narrow the independent claim(s) which recite one or more judicial exceptions. Accordingly, these claim elements do not serve to confer subject matter eligibility to the claims since they recite abstract ideas.
The claims are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hanebeck (US 2023/0185942) discloses a supply chain management system for recording supply chain processes utilizing distributed ledgers.
Chang et al. (“Blockchain in Global Supply Chains and Cross Border Trade: A Critical Synthesis of the State-of-the-Art, Challenges and Opportunities”) discloses blockchain applications for supply chain and maritime freight trade.
Sun et al. (US 20130132239 A1) discloses a system for tracking of trade documents.
Jayaram et al. (US 2019/0385172 A1) discloses generating an audit trail for shipping stored on a blockchain.
Hiroki et al. (WO 2019/003414 A1) discloses smart contracts to facilitate trade.
Dowling et al. (WO 2018/006056 A1) Dowling teaches that a trade may be documented with an audit trail detailing a transfer and assignment of a blockchain letter of credit (BLC) during a trade transaction (i.e. equivalent to change of name).
Shi et al. (CN 108960729 A) teaches cancellation of information during a return.
Ma et al. (CN 114008654 A) teaches blockchain based order state functions.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ADAM J HILMANTEL whose telephone number is (571)272-8984. The examiner can normally be reached M-F 8:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADAM HILMANTEL/Examiner, Art Unit 3691
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