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 .
DETAILED ACTION
This is a Resubmission of Final Office action in response to communications received July 10, 2025. Claims 1, 36, and 37 have been amended. Claim 10 has been canceled. Therefore, claims 1-4, 9, 12-16, 19-20, 27-29, 36, 37 are pending and addressed below.
Interview Summary
Applicant's representative, Mr. Smith called and left message on 12/29/2025, to discuss the Final office action (10/28/2024) and stated the rejection does not align with the prior art "Rui Oliveira ET AL. ("Hyperledger fabric: a distributed operating system for permissioned blockchains", EuroSys '18: Proceedings of the Thirteenth EuroSys Conference; DI April 23-26, 2018; Porto, Potugal, 23 April 2018 (2018-04-23), pages 1-15, XP055735306).
Examiner reviewed and called Mr. Smith on 01/07/2026, stating correction is needed on the prior art stated in the Final office action with the correct prior art. The correct prior art is “WUST K., et al., "ACE: Asynchronous and Concurrent Execution of Complex Smart Contracts," 2019, Retrieved from the Internet: URL:https://eprint.iacr.org/2019/835.pd on 25 September 2019, 14 pages”.
Therefore resubmission of office action is submitted.
Specification
The amendment to the Specification filed 07/10/2025 has been reviewed and accepted.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 9, 12-16, 19-20, 36, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WUST Karl., et al., "ACE: Asynchronous and Concurrent Execution of Complex Smart Contracts," 2019, Retrieved from the Internet: URL:https://eprint.iacr.org/2019/835.pd on 25 September 2019, 14 pages”. (on applicant’s IDS filed 08/04/2022)
Claims 1, 36, 37:
With respect to claims 1, 36, 37, WUST Karl., et al. discloses a method of/Computer equipment/A computer program product for maintaining a state of a smart contract in a layered network (p. 2, left-hand col., last para., "Once a transaction is fully executed, service providers sign a state-change transaction. Miners accept state changes signed by at least t service providers and include it in the result section of one of the next blocks which commits the transaction."),
the layered network comprising a core layer comprising one or more core nodes (Fig. 1, "miners"),
one or more intermediate layers each comprising one or more intermediate layer nodes (Fig. 1, "service providers"), and
one or more outer layers each comprising one or more outer layer nodes (Fig. 1, "clients");
wherein each of the core nodes is a node of a blockchain network (p .4, left- hand col., para. 2, "Miners are responsible for collecting and ordering transactions to blocks [...] do not execute contract calls [...] they only add state changes from already executed contract calls to new blocks"),
one or more of the intermediate layer nodes are smart contracts nodes providing a smart contract service for maintaining the state of the smart contract (p. 4, left-hand col., para. 3, "Service providers are responsible for executing contract calls [...] After execution is complete, service providers communicate the the execution results back to miners"), and
one or more of the outer layer nodes are client nodes of the smart contract service (p. 4, left-hand col., para. 1, "Clients");
the method comprising, by a first one of the one or more smart contract nodes/the computer equipment comprising, at a first one of the one or more smart contract nodes:
memory comprising one or more memory units, and processing apparatus comprising one or more processing units; wherein the memory stores code arranged to run on the processing apparatus, the code being configured so as when run on the processing apparatus, the processing apparatus operates the computer equipment as said first smart contract node by performing a method comprising:
recording a state of the smart contract in a record of the state maintained at the first smart contract node (p. 9, left-hand col., third-last para., "Missing state change [...] the service providers will soon observe that their state changes cannot be committed by miners and they can simply re-send the state changes again"; Remark: re-sending requires that state changes are stored at the providers);
wherein at least a first transaction also recording the state is recorded on a blockchain of the blockchain network (p. 2, left-hand col., para. 5, "the service provider simply executes the transaction, sign state changes and send them to the network [...] The miners then [...] include the results in the result section of the next block, and thus commit the transaction."); and
wherein the record of the state maintained at at least one of the smart contract nodes available to at least one of the client nodes, said making available enabling the at least one client node to determine the state without needing to query the record on the blockchain (see e.g.p. 12, right-hand col., para. 2, 7 - since fewer participants need to execute each contract, desirable to have the ability to update the set of service providers, want to replace a service provider, one possible approach is that the deployed smart contract code includes a contract-specific service provider update policy that defines the conditions under which the service providers may be updated after the initial contract deployment).
Claim 2:
With respect to claim 2, WUST Karl., et al. discloses wherein the one or more smart contract nodes are a plurality of smart contract nodes; and the method comprises, by the first smart contract node:
propagating the state to a record of the state of the smart contract maintained at the other smart contract node, the propagating being performed over one or more connections between smart contract nodes within the one or more intermediate layers of the layered network (see e.g. page 6, right-hand col., paras. 2-3).
Claim 3:
With respect to claim 3, WUST Karl., et al. discloses wherein:
the first transaction is transmitted by one of the client nodes to at least one of the core nodes to be recorded in the blockchain; and
wherein the first transaction is transmitted directly to the at least one core node over at least one connection within the layered network between said one of the client nodes and the core layer (see e.g. Fig. 3, steps 3 and 5; p. 7, left-hand col., last para.)
Claim 4:
With respect to claim 4, WUST Karl., et al. discloses wherein the method comprises, by the first smart contract node:
transmitting the first transaction from the first smart contract node to at least one of the core nodes to be recorded on the blockchain; and
receiving the first transaction from said one of the client nodes at the first smart contract node;
wherein said transmitting by the first smart contract nodes comprises forwarding the first transaction on to the at least one core node; and
wherein one or both of:
said receiving is performed directly over a connection within the layered network between the first smart contract node and said one of the client nodes, and/or
said forwarding is performed directly over at least one connection within the layered network between the first smart contract node and the core layer. (see e.g. Fig. 3, steps 3 and 5; p. 7, left-hand col., last para.)
Claim 9:
With respect to claim 9, WUST Karl., et al. discloses wherein the first transaction is initiated by the first smart contract node. (see e.g. Fig. 3, steps 3 and 5; p. 7, left-hand col., last para.)
Claim 12:
With respect to claim 12, WUST Karl., et al. discloses wherein the record is made available directly over a connection within the layered network between the at least one smart contract node and the at least one client node. (see e.g. p. 8, 4.4, broadcast results).
Claim 13:
With respect to claim 13, WUST Karl., et al. discloses wherein the method comprises:
the first smart contract node performing said making available, by the first smart contract node making the record of the state maintained at the first smart contract node available to the at least one client node. (see e.g. p. 8, 4.4, broadcast results)
Claim 14:
With respect to claim 14, WUST Karl., et al. discloses wherein the one or more smart contract nodes are a plurality of smart contract nodes; and the method comprises, by the first smart contract node:
propagating the state to a record of the state of the smart contract maintained at the other smart contract node, the propagating being performed over one or more connections between smart contract nodes within the one or more intermediate layers of the layered network;
wherein the record maintained at at least one of the other smart contract nodes, to which the state is propagated, is made available to the at least one client node. (see e.g. p. 8, 4.4, broadcast results)
Claim 15:
With respect to claim 15, WUST Karl., et al. discloses wherein at least one of the smart contract nodes is arranged to inspect the record on the blockchain, or in a mempool of a miner, to confirm the state of the smart contract. (see e.g. p. 9, left-hand col., para. 7)
Claim 16:
With respect to claim 16, WUST Karl., et al. discloses wherein the at least one smart contract node is arranged to perform said inspecting directly over a connection within the layered network between the at least one smart contract node and at least one of the core nodes. (see e.g. p. 9, left-hand col., para. 7)
Claim 19:
With respect to claim 19, WUST Karl., et al. discloses wherein at least one of the client nodes inspects the blockchain, or a mempool of a miner, to confirm the state of the smart contract (see e.g. p. 7, left-hand col., second-last para.)
Claim 20:
With respect to claim 20, WUST Karl., et al. discloses wherein said inspecting by the at least one client node is performed over a direct connection within the layered network between the client node and the core layer. (see e.g. p. 7, left-hand col., second-last para.)
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 of this title, 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 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over WUST Karl., et al., "ACE: Asynchronous and Concurrent Execution of Complex Smart Contracts," 2019, Retrieved from the Internet: URL:https://eprint.iacr.org/2019/835.pd on 25 September 2019, 14 pages”. (on applicant’s IDS filed 08/04/2022) in view of Wright Craig Steven (US2019/279197, September 12, 2019).
Claim 27:
With respect to claim 27, WUST Karl., et al. discloses the limitations of claim 1, as addressed.
Wright Craig Steven teaches wherein said recording of the state in the record maintained at the first smart contract node comprises:
recording a first state of the smart contract, and recording a change to the state of the smart contract, being a change compared to the first state;
wherein the first state is recorded in a first transaction on the blockchain and the change in state is recorded in a second transaction on the blockchain (Fig. 1, 2, paras. [0014], [0084], [0122]-[0128], [0192], [0193], [0206], [0207]).
WUST Karl., et al. and Wright Craig Steven are analogous art because they are from the same field of endeavor of smart contracts/blockchains.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use Wright Craig Steven teaches in WUST Karl., et al. as claimed for purposes of enhancing the system of Rui Oliveira et al. by avoiding a large single point of failure and is not vulnerable to attack, Immutable, once data has been written to the blockchain, no one can change it, Privacy is maintained, no personally identifying information is involved. (see Wright Craig Stevens 0075, 0080-0081)
Claim 28:
With respect to claim 28, the combination of WUST Karl., et al. and Wright Craig Steven discloses the limitations of claim 27, as addressed.
Wright Craig Steven teaches wherein the first transaction comprises an output comprising a respective locking script that comprises a state puzzle requiring a solution to the state puzzle to unlock the respective locking script; and wherein the method comprises, by the first smart contract node:
using a set of rules stored at the first smart contract node to formulate the state puzzle based on said set of rules, and including the state puzzle in the first transaction prior to recordal on the blockchain; and
recording the change in the state of the smart contract in the record maintained at the first smart contract node, on condition that the second transaction comprises an input that points to the respective output comprising the state puzzle and that said input provides a solution to the state puzzle. (Fig. 1, 2, paras. [0014], [0084], [0122]-[0128], [0192], [0193], [0206], [0207]).
WUST Karl., et al. and Wright Craig Steven are analogous art because they are from the same field of endeavor of smart contracts/blockchains.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use Wright Craig Steven teaches in WUST Karl., et al. as claimed for purposes of enhancing the system of Rui Oliveira et al. by avoiding a large single point of failure and is not vulnerable to attack, Immutable, once data has been written to the blockchain, no one can change it, Privacy is maintained, no personally identifying information is involved. (see Wright Craig Stevens 0075, 0080-0081)
Claim 29:
With respect to claim 29, WUST Karl., et al. discloses the limitations of claim 1, as addressed.
Wright Craig Steven teaches wherein the first transaction is negotiated between at least two of the client nodes over at least one connection within one or more outer layers of the layered network (Fig. 1, 2, paras. [0014], [0084], [0122]-[0128], [0192], [0193], [0206], [0207]).
WUST Karl., et al. and Wright Craig Steven are analogous art because they are from the same field of endeavor of smart contracts/blockchains.
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use Wright Craig Steven teaches in Rui Oliveira et al. as claimed for purposes of enhancing the system of Rui Oliveira et al. by avoiding a large single point of failure and is not vulnerable to attack, Immutable, once data has been written to the blockchain, no one can change it, Privacy is maintained, no personally identifying information is involved. (see Wright Craig Stevens 0075, 0080-0081)
Response to Remarks/Arguments
Applicant's arguments filed on July 10, 2025 have been fully considered but they are not persuasive. In the remarks, Applicant argues that:
Claim 1:
1- Rui Oliveira et al. does not disclose that a client can query the state of smart contract that has been stored on chain without itself querying the blockchain, by instead querying the state as maintained an intermediate node, as in previous claim 10 (now incorporated in claim 1). Rui Oliveira does not recognize the issue that it is burdensome for a client to have to trawl the large amount of data on a blockchain in order to later (after the contract has been originally endorsed and stored on chain) query the state of the smart contract. Therefore Applicant submits that Rui Oliveira does not provide any motivation that would lead a person of ordinary skill to consider providing an intermediate service enabling the client to query the state of a contract that has been stored on chain without themselves having to query the blockchain.
In response to remark/arguments (1), Examiner respectfully disagrees. WUST Karl., et al. discloses “one client node to determine the state without needing to query the record on the blockchain (see e.g.p. 12, right-hand col., para. 2, 7 - since fewer participants need to execute each contract, desirable to have the ability to update the set of service providers, want to replace a service provider, one possible approach is that the deployed smart contract code includes a contract-specific service provider update policy that defines the conditions under which the service providers may be updated after the initial contract deployment). Therefore, Examiner maintains that Wust et al. does teach and suggest this limitation.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Helai Salehi whose telephone number is 571-270-7468. The examiner can normally be reached on Monday - Friday from 9 am to 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Jeff Pwu, can be reached on 571-272-6798. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HELAI SALEHI/
Examiner, Art Unit 2433
/JEFFREY C PWU/ Supervisory Patent Examiner, Art Unit 2433