Detailed Action
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 29, 2026 has been entered.
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the RCE filed on May 29, 2026.
Claims 2-3 and 10-11 are cancelled.
Claims 1, 4-9, and 12-16 are pending.
Claims 1, 4-9, and 12-16 are examined.
This Office Action is given Paper No. 20260903 for references purposes only.
IDS
The Information Disclosure Statements filed on March 13, 2026 and May 12, 2026 have been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Objections
Claim 1 is objected to because it recites “upon the transfer of the first digital asset to the first custodial address… indicating transfer of the first digital.” Examiner assumes that Applicant intended “upon the transfer of the first digital asset to the first custodial address… indicating transfer of the first digital asset.” Appropriate correction is required.
Claim 1 is objected to because it recites “receiving, by a second processing system… from a second device of a second user.” Examiner assumes that Applicant intended “receiving, by a second processing system… from a second device of the second user.” Appropriate correction is required.
Claim 1 is objected to because it recites “without requiring direct communication between and the second processing system.” Examiner assumes that Applicant intended “without requiring direct communication between the first processing system and the second processing system.” Appropriate correction is required.
Claim 9 is objected to because it recites “receives, from a second device of a second user.” Examiner assumes that Applicant intended “receives, from the second device of a second user.” Appropriate correction is required.
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4-9, and 12-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bathen et al. (US 11,030,681), in view of Thacker et al. (US 2022/0118365), and further in view of Auerbach et al. (US 12,093,942).
Claims 1, 9
Bathen discloses:
receiving, from a first device (first user device, see C9 L61-67) of a first user (first user, see C5 L47-67), a first transfer request (first asset exchange request, see C10 L18-42) including at least (i) a first asset identifier associated with a first digital asset (first asset, see C10 L18-42) controlled by the first device of the first user (first user, see C10 L18-42), (ii) one or more first identification values (requested amount, see C10 L18-42), and (iii) a first recipient address (address to receive the requested asset type, see C10 L18-42) associated with a second user on the first blockchain… a first blockchain network (blockchain 1, see figure 2);
authorizing, by the first processing system, transfer of the first digital asset (exchange of assets, see C6 L15-67);
subsequent to authorizing the transfer of the first digital asset, submitting, by the first processing system, one or more instructions to a first smart contract (smart contract, see C6 L15-67) stored on a first blockchain managed by the first blockchain network, wherein submission of the one or more instructions results in execution of the first smart contract, and wherein execution of the first smart contract transfers the first digital asset (first asset, see C10 L18-42) to a first custodial address (blockchain address controlled by the first user device, see C9 L61 – C10 L17) on the first blockchain (first blockchain, see C11 L3-22);
receiving, from a second device (user device 2, see figure 3) of a second user (second user, see C5 L47-67), a second transfer request (second asset exchange request, see C10 L18-42) including at least (i) a second asset identifier associated with a second digital asset (second asset, see C10 L18-42) controlled by the second device of the second user (second user, see C10 L18-42), (ii) one or more second identification values (requested amount, see C10 L18-42), and (iii) a second recipient address (address to receive the requested asset type, see C10 L18-42) associated with the first user on a second blockchain, and wherein the second processing system is configured to communicate with the second device (user device 2, see figure 3) and a second blockchain network (blockchain 2, see figure 2);
authorizing, by the second processing system, transfer of the second digital asset (exchange of assets, see C6 L15-67);
submitting, by the second processing system, instructions to a second smart contract (smart contract, see C6 L15-67) stored on the second blockchain managed by the second blockchain network, wherein submission of the instructions to the second smart contract results in execution of the second smart contract, and wherein execution of the second smart contract transfers the second digital asset (second asset, see C10 L18-42) to a second custodial address (blockchain address of second device, see C9 L61 – C10 L17) on the second blockchain (second blockchain, see C11 L3-22);
verifying, by the central processing server, successful transfer of the first digital asset on the first blockchain and successful transfer of the second digital asset on the second blockchain (broker agent determines conferred assets have transferred and settle all requests, see C12 L49-67);
transferring, by the central processing server, the first digital asset (conferred assets, see C9 L61 – C10 L17) from the first custodial address (blockchain address controlled by the first user device, see C9 L61 – C10 L17) on the first blockchain to the first recipient address (temporary trading address controlled by the broker agent, see C9 L61 – C10 L17), associated with the second user (second user account, see C9 L61 – C10 L17), on the first blockchain (first blockchain, see C11 L3-22); and
transferring, by the central processing server, the second digital asset (loyalty assets requested, see C9 L61 – C10 L17) from the second custodial address (blockchain address of second device, see C9 L61 – C10 L17) on the second blockchain to the second recipient address (temporary trading address, see C9 L61 – C10 L17), associated with the first user (first user account, see C9 L61 – C10 L17), on the second blockchain (second blockchain, see C11 L3-22), such that a swap of digital assets occurs between the first user and the second user (broker agent detects that both the first and second user accounts have satisfied their transfer obligations, see C9 L61 – C10 L17) with the first and second digital assets remaining on their respective first and second blockchains (release the assets in the temporary trading addresses to the respective blockchain addresses, see C9 L61 – C10 L17, C11 L3-22).
Bathen does not disclose:
By a first processing system… server;
Receiving… system;
By a second processing system… system;
Transmitting… server;
Receiving… message.
Thacker teaches:
by a first processing system (online gaming platform, e.g. individual game or gaming console, see [0021-0022, 0049])… a first asset identifier (unique identifier, see [0020])… wherein the first processing system (online gaming platform, see [0021]) is configured to communicate with the first device (user, see [0049])… and a central processing server (bridge server, see [0023, 0049]);
receiving, by the central processing server, the first notification message (notification regarding the transferal, see [0049]) from the first processing system;
by a second processing system (second online gaming platform, e.g. second game or second gaming console, see [0021, 0023]) that is separate and distinct from the first processing system… a second asset identifier (unique identifier, see [0020])… wherein the central processing server (bridge server, see [0049]) communicates between the first processing system and the second processing system, without requiring direct communication (exchange requests go to bridge server, see figure 1, [0049]) between the first processing system and the second processing system;
transmitting, by the second processing system, a second notification message (notification regarding the transferal, see [0049]) indicating transfer of the second digital asset to the central processing server;
receiving, by the central processing server, the second notification message (notification regarding the transferal, see [0049]) from the second processing system.
Bathen discloses receiving a first transfer request, authorizing transfer of the first asset, submitting instructions to a first smart contract, receiving a second transfer request, authorizing transfer of the second asset, submitting instructions to a second smart contract, verifying successful transfer, transferring the first asset to a first recipient address associated with the second user on the first blockchain, and transferring the second asset to a second recipient address associated with the first user on the second blockchain. Bathen does not disclose first and second processing systems, asset identifiers, and receiving notification messages, but Thacker does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the intermediate blockchain system for managing transactions of Bathen with the first and second processing systems, asset identifiers, and receiving notification messages of Thacker because 1) a need exists for enabling exchange of a first asset from a first user account and a second asset from a second user account (see Bathen C1 L37-64); and 2) a need exists for exchanging assets to other users in online platforms (see Thacker [0002]). Having first and second processing systems, separate from a central server, allows for different requests to be submitted to the system. Asset identifiers can uniquely identify the assets to be exchanged.
Bathen in view of Thacker discloses the limitations above. Bathen in view of Thacker does not disclose:
Upon the transfer… asset.
Auerbach teaches:
upon the transfer of the first digital asset to the first custodial address on the first blockchain, transmitting, by the first processing system (customer bank, see C66 L5-41), a first notification message (an electronic indication, see C66 L5-41), to the central processing server (exchange computer system, see C66 L5-41), indicating transfer of the first digital asset (customer-initiated fund transfer, see C66 L5-41).
Bathen in view of Thacker discloses receiving a first transfer request, authorizing transfer of the first asset, submitting instructions to a first smart contract, receiving a second transfer request, authorizing transfer of the second asset, submitting instructions to a second smart contract, verifying successful transfer, transferring the first asset to a first recipient address associated with the second user on the first blockchain, transferring the second asset to a second recipient address associated with the first user on the second blockchain, first and second processing systems, asset identifiers, and receiving notification messages. Bathen in view of Thacker does not disclose transmitting a first notification, but Auerbach does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the intermediate blockchain system for managing transactions of Bathen, in view of Thacker, with transmitting a first notification of Auerbach because a need exists for generating user defined smart contracts and depositing, holding, and/or distributing collateral in the form of a stable value token for a security token on the same blockchain (Auerbach C6 L56-60). Transmitting a notification can alert the user when depositing, holding, and/or distributing collateral on the same blockchain.
Claims 4, 12
Furthermore, Bathen discloses:
the first processing system is a first blockchain node (first node, see C4 L13-34) in the first blockchain network associated with the first blockchain, and the second processing system is a second blockchain node (second node, see C4 L13-34) in the second blockchain network associated with the second blockchain.
Claims 5, 13
Furthermore, Bathen discloses:
authorizing transfer of the first digital asset includes generating the first custodial address (blockchain address controlled by the first user device, see C9 L61 – C10 L17).
Claims 6, 14
Furthermore, Bathen discloses:
authorizing transfer of the first digital asset comprises:
transmitting, by the first processing system, at least the one or more identification values (requested amount, see C10 L18-42) to the central processing server;
verifying, by the central processing server, the one or more identification values (if enough assets exchanged, see C12 L49-67);
generating, by the central processing server, the first custodial address (blockchain address controlled by the first user device, see C9 L61 – C10 L17).
Furthermore, Thacker teaches:
receiving, by the first processing system, a message (notification regarding the transferal, see [0049]) indicating successful verification of the one or more identification values from the central processing server, the message further including the first custodial address.
Claims 7, 15
Furthermore, Bathen discloses:
the first transfer request is received from the first smart contract (smart contract, see C3 L54 – C4 L13).
Claims 8, 16
Furthermore, Bathen discloses:
authorizing transfer of the first digital asset includes verifying authenticity of the first digital asset (proof of ownership, see C10 L18-42).
Response to Arguments
103 arguments
Applicant argues that Thacker teaches a bridge server removing an asset from one ledger and adding the asset to another ledger, whereas the claims recite transmitting a notification message indicating that a first asset was transferred to a first address on a first blockchain.
Please see the revised rejection. Auerbach teaches transmitting, by the first processing system (customer bank, see C66 L5-41), a first notification message (an electronic indication, see C66 L5-41), to the central processing server (exchange computer system, see C66 L5-41), indicating transfer of the first digital asset (customer-initiated fund transfer, see C66 L5-41).
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Vaniotis et al. (US 12,493,871) discloses systems, methods, and program products for non-custodial trading of digital assets on a digital asset exchange.
Examiner hereby adopts the following definitions under the broadest reasonable interpretation standard. In accordance with In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997), Examiner points to these other sources to support his interpretation of the claims.1 Additionally, these definitions are only a guide to claim terminology since claim terms must be interpreted in context of the surrounding claim language. Finally, the following list is not intended to be exhaustive in any way:
server “2. On the Internet or other network, a computer or program that responds to commands from a client.” Computer Dictionary, 3rd Edition, Microsoft Press, Redmond, WA, 1997.
system “n. Any collection of component elements that work together to perform a task. Examples are a hardware system consisting of a microprocessor, its allied chips and circuitry, input and output devices, and peripheral devices; an operating system consisting of a set of programs and data files; or a database management system used to process specific kinds of information.” Computer Dictionary, 5th Edition, Microsoft Press, Redmond, WA, 2002.
112f analysis
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.
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 limitations use 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 limitations are:
“the first processing system receives, from a first device of a first user, a first transfer request… transmits, upon the transfer of the first digital asset to the first custodial address on the first blockchain, a first notification message indicating transfer of the first digital asset to the central processing server” in claim 9;
“the second processing system receives, from a second device of a second user, a second transfer request… transmits a second notification message indicating transfer of the second digital asset to the central processing server” in claim 9;
“the central processing server receives the first notification message… such that a swap of digital assets occurs between the first user and the second user with the first and second digital assets remaining on their respective first and second blockchains” in claim 9.
Because these claim limitations 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim limitation “the first processing system receives, from a first device of a first user, a first transfer request… server” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “the first processing system” coupled with functional language “receives, from a first device of a first user, a first transfer request… server” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The remaining limitations listed above have a similar analysis.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 9-18 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
“the first processing system receives a first transfer request… transmits a first notification message indicating transfer of the first digital asset to the central processing server” is a computing device (see specification [0054]);
“the central processing server receives the first notification message… such that a swap of digital assets occurs between the first user and the second user” is a computing device (see specification [0033]).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitations treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claims so that they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
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/CHRYSTINA E ZELASKIEWICZ/
Primary Examiner, Art Unit 3699
1 While most definition(s) are cited because these terms are found in the claims, the Examiner may have provided additional definition(s) to help interpret words, phrases, or concepts found in the definitions themselves or in the prior art.
Prosecution Insights