DETAILED ACTION
The present application is being examined under the first inventor to file provisions of the AIA . 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 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.
This Office Action is in response Applicant communication filed on 6/1/2026.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/1/2026 has been entered.
Claims
Claims 1, 8, and 16 have been amended.
Claims 1-20 are currently pending in the application.
Information Disclosure Statements
The Information Disclosure Statements (IDS) that were filed on 6/1/2026 and 7/1/2026 have been considered.
Response to Arguments
Double Patenting
The previous double patenting rejection has been withdrawn due to the claim amendments. Patent Number 11475442 does not claim that a supply of stable value digital assets tokens is decreased.
101
The applicant argues that the amended claims are not directed to an abstract idea. Specifically the applicant argues “no mathematical concepts are recited or claimed. Second, the claims recite the performance of operations by nodes of physically remote computer systems, where those operations are associated with the computer-centric problem of unit management on a blockchain, and the operations recite a computer centric solution for such unit management that culminates with the broadcasting of commands to nodes of the blockchain. It would be physically impossible for a human to act as a node of physically remote computing systems. Second, the innovation is in the field of not just the use of blockchain, but the physical management of the recited blockchain and the storage of digital asset units. Again, human beings are not capable of performing operations in this computer-centric environment. The entire premise of such blockchain-related operations is that human beings cannot perform the operations and thus cannot cause errors or alterations to the blockchain” and “the amended claims now recite the explicit and specific generation of smart contracts that automatically execute when predefined parameters are met such that human intervention (and error) is not introduced into the computer-centric environment of the blockchain at issue. This not only streamlines the execution process recite dint eh claims, but also increases security of the computer-centric environment by removing the possibility of human error that may exist without the recited smart contracts”. Further the applicant argues that the claims illustrate a computer-centric solution to a computer-centric problem and recite multiple technological improvements to computer-centric technologies because the claims recite novel functionality specific to nodes of physically remote computing systems associated with the blockchain which include the ability to perform the recited operations on the fly in a time-sensitive manner (see pages 13-15 of applicant’s arguments). The examiner respectfully disagrees. The claims recite the abstract idea of creating a contract which authorizes a request for removing an amount of an asset from a total supply of the asset. This is achieved by creating a first contract used to determine whether transactions requests are authorized; receiving a first transaction request to remove a first amount of the asset from a balance account; determining that the first transaction request is authorized based at least in part on the first contract; obtaining a second amount of the asset that reflects a current balance of the asset in a balance account; determining that the first amount of the asset is less than or equal to the second amount of the asset; based on the first amount of the asset being less than or equal to the second amount of the asset, setting a new balance for the asset to a third amount that equals the second amount less the first amount; obtaining a total supply of the asset in circulation; setting the total supply of the asset in circulation to a fourth amount that is the total supply of the asset in circulation less the first amount; destroying the first amount of the digital asset tokens; and decreasing a supply of stable value digital asset tokens that are associated with the first amount of the digital asset tokens destroyed. These steps that can be performed in the human mind and/or pen and paper using math. The use of a computer/processor to perform this abstract idea is merely using a computer as a tool to perform the abstract idea. Further, the use of the blockchain and smart contract is generally linking the use of the judicial exception to a particular technological environment or field of use. There are no improvements to the functioning of a computer or to any other technology or technical field. Instead the abstract idea, as stated above, is being performed in the technological environment of the blockchain which uses smart contracts. The computer/processor and blockchain functionality are not being improved.
Further the applicant argues that the claims recite a technological improvement in the specification and the claims similar to a recent Appeals Review Panel decision dated September 26, 2025 (Ex Parte Desjardins, Appeal 2024-000567) (see applicant’s arguments/remarks pages 15 and 16). However the examiner respectfully disagrees. The decision by the board was specific to the claims at the time the application was filed. In Ex Parle Desjardins, Appeal 2024-000567, the board determined that the claims recited subject matter that provided technical improvements over conventional systems by addressing challenges in continual learning and model efficiency by reducing storage requirements and preserving task performance across sequential training. This improvement was captured in the claims as well as the specification in paragraph 21 which recited "the training strategy allows the model to preserve performance on earlier tasks even as it learns new ones, directly addressing the technical problem of 'catastrophic forgetting' in continual learning systems". Unlike the claims in this decision, there are no additional elements that provide a technical improvement to continual learning and training model efficiency or to any other technology or technical field as stated above.
Furthermore the applicant argues the claims recite significantly more than the abstract idea because the claims recite a non-conventional and non-generic arrangement of features and so recite an inventive concept and specific technical solution. Further the applicant argues that the office has not established that the applicant’s claim elements constitute “well-understood, routine, conventional activities” as required by the April 2018 Memo (see applicant’s arguments/remarks pages 16 and 17). The examiner respectfully disagrees. The use of the processors, computer systems, and non-transitory computer-readable medium are nothing more than tools that perform the abstract idea. These computers perform generic computer functions such as receiving, determining, executing call requests, and sending instructions. Further the use of the blockchain nodes and smart contracts is generally linking the abstract idea to the particular technological environment of blockchain networks. The use of the blockchain has traditionally been used as a ledger for digital asset tokens and traditionally used smart contracts to automate, secure, and decentralize the execution of agreements on the blockchain. Therefore the claims do not provide significantly more than the abstract idea. Performing the abstract idea using computers and nodes of a blockchain does not integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
The examiner has considered all of the applicant’s arguments but maintains the 101 rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “destroying, via a destroy token component, the first amount of the digital asset tokens…” in claims 1, 8, and 16.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-7 and 16-20 are directed to a method and claims 8-15 are directed to a system. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract. Specifically, the claim recites “generating a data object representing a first… contract used to determine whether transaction requests are authorized in association with a token issuer system…; receiving… a first transaction request to remove a first amount of digital asset tokens from a balance account, wherein the first transaction request is… signed…; determining that the first transaction request is authorized based at least in part on… satisfying the parameter of the first… contract; causing execution… based on the first… contract authorizing the first transaction request, of a first call request to obtain a second amount of digital asset tokens that reflect a current balance of digital asset tokens in the balance account; determining that the first amount of digital asset tokens is less than or equal to the second amount of digital asset tokens; based at least in part on the first amount of digital asset tokens being less than or equal to the second amount of digital asset tokens, causing execution… of a second call request to set a new balance for the digital asset tokens to a third amount that equals the second amount less the first amount; causing execution… of a third call request to obtain a total supply of digital asset tokens in circulation; sending instructions… to set the total supply of digital asset tokens in circulation to a fourth amount that is the total supply of digital asset tokens in circulation less the first amount; destroying… the first amount of the digital asset tokens such that the first amount of the digital asset tokens can no longer be utilized and token storage is decreased based on destruction of the first amount of the digital asset tokens; and decreasing, utilizing a state modifying function, a supply of stable value digital asset tokens…, the supply of stable value digital asset tokens associated with the first amount of the digital asset tokens as destroyed”, which is grouped within the “mathematical concepts”, “mental processes”, and certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract, which falls under the category of mathematical calculations, concepts performed in the human mind, and agreements in the form of contracts. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP § 2106.04(a)). Claim 8 is directed to a system that performs the same functions of claim 1 and claim 16 is directed to a method that performs the same steps of claim 1. Therefore Claims 8 and 16 are also directed to the abstract idea of creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element(s) of claims 1, 9, and 16, such as the use of the token issuer system, blockchain, geographically distributed computer systems associated with the blockchain, one or more processors, destroy token component, and non-transitory computer-readable media, merely use(s) a computer as a tool to perform an abstract idea. Specifically, the token issuer system, blockchain, geographically distributed computer systems associated with the blockchain, one or more processors, destroy token component, and non-transitory computer-readable media perform(s) the steps or functions of creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Further, “the data object representing the first smart contract saved as part of the blockchain, and the data object configured to be executed automatically without human intervention when a parameter of the first smart contract is satisfied”, “the first transaction request is digitally signed by an authorized private key associated with the first smart contract”, “causing execution, automatically via geographically distributed computer systems associated with the blockchain”, and “utilizing the blockchain” is generally linking the use of the judicial exception to a particular technological environment (e.g. blockchain) or field of use. Furthermore, claim 16 recites the use of a first designated key pair, distributed public address, and distributed public transaction ledger which is generally linking the use of the judicial exception to a particular technological environment (e.g. blockchain) or field of use. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP § 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP § 2106.05(b)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Claims 1, 8, and 16 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of using a the token issuer system, blockchain, geographically distributed computer systems associated with the blockchain, one or more processors, destroy token component, and non-transitory computer-readable media to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract. As discussed above, taking the claim elements separately, the token issuer system, blockchain, geographically distributed computer systems associated with the blockchain, one or more processors, destroy token component, and non-transitory computer-readable media perform(s) the steps or functions of the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Further, “the data object representing the first smart contract saved as part of the blockchain, and the data object configured to be executed automatically without human intervention when a parameter of the first smart contract is satisfied”, “the first transaction request is digitally signed by an authorized private key associated with the first smart contract”, “causing execution, automatically via geographically distributed computer systems associated with the blockchain”, and “utilizing the blockchain” are recited at a high level and are used for generally linking the use of the judicial exception (e.g. creating a contract used to determine whether transaction requests are authorized and reducing/destroying the amount of digital asset tokens in circulation based on a request that is authorized with respect to the contract) to a particular technological environment (e.g. blockchain) or field of use and is not indicative of an inventive concept. Furthermore, claims 16 recites the use of a first designated key pair, distributed public address, and distributed public transaction ledger which is generally linking the use of the judicial exception to a particular technological environment (e.g. blockchain) or field of use. Therefore, the claims are not patent eligible.
The dependent claims 2-7, 9-15, and 17-20 further describe the abstract idea. Claims 2 and 10 further describe a first and second designated key pair that are generally linking the use of the judicial exception to the blockchain; claims 3-7, 11-5, and 17 recite the use of smart contract instructions and their intended use that are generally linking the use of the judicial exception to the blockchain; claim 9 recites the abstract idea of causing the first smart contract to execute based at least in part on receiving the first transaction request. The use of the geographically distributed computer systems to perform the abstract idea is merely using a computer as a tool to perform the abstract idea and generally links the abstract idea to the blockchain; claim 18 recites the execution of smart contract instructions which is generally linking the judicial exception to the blockchain; claim 19 recites the abstract idea of authorizing the first transaction using public/private keys and addresses which is generally linking the judicial exception to the blockchain; claim 20 recites the abstract idea of sending a response to the first transaction request which indicates that the first transaction request has been accepted and the total supply of digital asset tokens has been set to a new amount.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Novel/Non-obvious Subject Matter
Claims 1, 8, and 16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action.
The following is an examiner’s statement of reasons for allowance over the prior art:
The instant claims include generating a data object representing a first smart contract used to determine whether transaction requests are authorized in association with a token issuer system, the data object representing the first smart contract saved as part of a blockchain, and the data object configured to be executed automatically without human intervention when a parameter of the first smart contract is satisfied; receiving, from the token issuer system and utilizing the blockchain, a first transaction request to remove a first amount of digital asset tokens from a balance account, wherein the first transaction request is digitally signed by an authorized private key associated with the first smart contract; determining that the first transaction request is authorized based at least in part on the authorized private key satisfying the parameter of the first smart contract; causing execution, automatically via geographically distributed computer systems associated with the blockchain and based on the first smart contract authorizing the first transaction request, of a first call request to obtain a second amount of digital asset tokens that reflect a current balance of digital asset tokens in the balance account; determining that the first amount of digital asset tokens is less than or equal to the second amount of digital asset tokens; based at least in part on the first amount of digital asset tokens being less than or equal to the second amount of digital asset tokens, causing execution, via the geographically distributed computer systems, of a second call request to set a new balance for the digital asset tokens to a third amount that equals the second amount less the first amount; causing execution, via the geographically distributed computer systems, of a third call request to obtain a total supply of digital asset tokens in circulation; sending instructions to cause the blockchain to set the total supply of digital asset tokens in circulation to a fourth amount that is the total supply of digital asset tokens in circulation less the first amount; destroying, via a destroy token component, the first amount of the digital asset tokens such that the first amount of the digital asset tokens can no longer be utilized and token storage is decreased based on destruction of the first amount of the digital asset tokens; and decreasing, utilizing a state modifying function, a supply of stable value digital asset tokens utilizing the blockchain, the supply of stable value digital asset tokens associated with the first amount of the digital asset tokens as destroyed.
US 20190220836 A1 to Caldwell teaches a system and method that calls blockchain smart contracts to burn a specified amount of tokens from a wallet address and then then deducts the specified amount of tokens from the total supply of available tokens. US 20190050884 A1 to Nelsen teaches a system and method that uses a buyback and burn function to reduce the total supply of crypto tokens over time. US 20200202311 A1 to Allen teaches a system and method that converts utility tokens to reserve tokens and reduces the number of utility tokens paid to miners which reduces the total supply of digital coins. US 20200027067 A1 to Hertzog teaches a system and method that calls smart contracts to execute a transaction that determines a price of a cryptocurrency token based on the total supply of the cryptocurrency token.
US 20200007544 A1 to Wang teaches a system and method that uses a smart contract to authorize a transaction request based on an authorized private key. The cited references, alone or in combination, do not teach the specific technique of authorizing a request to remove a first amount of digital asset tokens from a balance account based on satisfying a parameter of a first smart contract, executing a first call request to obtain a second amount of digital asset tokens that reflect a current balance of digital asset tokens in the balance account, determining that the first amount of digital asset tokens is less than or equal to the second amount of digital asset tokens, causing execution of a second call request to set a new balance for the digital asset tokens to a third amount that equals the second amount less the first amount, causing execution of a third call request to obtain a total supply of digital asset tokens in circulation, sending instructions to cause the blockchain to set the total supply of digital asset tokens in circulation to a fourth amount that is the total supply of digital asset tokens in circulation less the first amount, and decreasing, utilizing a state modifying function, a supply of stable value digital asset tokens utilizing the blockchain, the supply of stable value digital asset tokens associated with the first amount of the digital asset tokens destroyed, in combination with the rest of the limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P SAX whose telephone number is (571) 272-2935. The examiner can normally be reached on M-F 8-4:30.
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/TIMOTHY PAUL SAX/Examiner, Art Unit 3698
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