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 .
Response to Amendment
The amendment filed on December 12, 2025 has been entered. Applicant has amended claims 14, 19, 28, 32, and 33. Claim 37 was added. Claims 14, 17-19 and 22-37 are now pending have been examined and currently stand rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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 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 14, 17-19 and 22-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agrawal et al (US 2019/0164153 A1), “Agrawal” in view of Regmi, (US 2020/0410590 A1), “Regmi”, in view of “Roth” (US 2008/0140602 A1).
Regarding claims 14 and 33: Agrawal disclose:
Claim 14: A device (Agrawal, Fig. 1) configured to perform transactions involving annuity coins, the device comprising:
a network interface (See at least Agrawal, [0026]);
a memory, wherein the memory stores instructions (See at least Agrawal, [0006]); and
a processor (See at least Agrawal, [0287]), the processor configured to execute the instructions to:
Claim 33: A method for automating data transfers using annuity coins, the method comprising:
receive a digitally signed message, where the digitally signed message is signed using a secret key associated with a public key that identifies an address of an intended recipient of cryptographic data; (See at least Agrawal, [0030]; [0085]; [0116] where a digitally signed message (i.e., cryptographically signed message) is received, where the digitally signed message is signed using a secret key associated with a public key that identifies an address of an intended recipient of cryptographic data (i.e., The transaction data may include a set of public keys of the accounts involved in the transaction, ciphertexts representing amounts if a transfer is involved, a signature generated by signing nonce 290 with private key 280, and a proof that is validated by validation node computing device 206 to effect the transaction.)
access a set of bytecode stored within an immutable ledger, where the set of bytecode encodes an annuity coin (See at least Agrawal, [0004]; [0016]; [0038]) that includes:
the public key associated with the secret key; (See at least Agrawal, [0049-0050]; [0083-0084]; [0086-0087] where the accessing bytecode stored within an immutable ledger (i.e., smart contract) encodes a [coin] (i.e., token) and includes the public key associated with the secret key (i.e., User computing device 252 may also store a set of public keys 270 corresponding to accounts participating in platform smart contract a private key 280 corresponding to the public key and associated with the account of the user of user computing device) and
a reference to a validity indicator; and (See at least Agrawal, [0084-0087])
execute the set of bytecode encoding the annuity coin within a virtual machine, where execution of the set of bytecode: (See at least Agrawal, [0086-0087];
verifies the validity indicator; and (See at least Agrawal, [0086-0087]; [0090]; When platform smart contract 210 receives the fund transaction request, platform smart contract 210 may validate the cryptographic proof in the fund transaction request and invoke the Fund function.)
when the validity indicator is verified, broadcasts an action initiating a transfer of at least some of the cryptographic data to the address of the intended recipient. (See at least Agrawal, Fig. 2; [0004]; [0040-0041]; [0085-0088]; [0095]).
Agrawal disclose a smart contract that facilitate the transfer of an number of tokens (i.e., cryptocurrency amount converted into tokens). See at least Agrawal, [0086-0087]. Agrawal does not specifically disclose that the smart contract encodes an annuity coin. However, the term “annuity” to describe the coin is non-functional descriptive material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal’s system which uses a smart contract to perform transaction with a cryptocurrency token (e.g., coin) and apply the coin with any known label.
Agrawal disclose When platform smart contract 210 receives the transfer transaction request, platform smart contract 210 may validate the cryptographic proof in the transfer transaction request and invoke the Transfer function. (Agrawal, [0087]). However, Agrawal does not specifically disclose wherein the validity indicator comprises: a description of service standard for storing the cryptographic data; and a challenge and a proof corresponding to an assertion that the annuity coin is a mined coin: and wherein verifying the validity indicator comprises confirming that the service standard has been met for storage performed for the cryptographic data, according to the description, and using the network interface: and determining that the proof is a valid solution to the challenge; when the validity indicator is verified;
Regmi, on the other hand teaches a set of bytecode (i.e., smart contract) that includes validity indicator that comprises a challenge and a proof corresponding to an assertion that the annuity coin is a mined coin (i.e., proof of work) determining that the proof is a valid solution to the challenge; when the validity indicator is verified; (e.g., These approaches could require a 'proof of work' or 'proof of stake' (associated with water or wastewater treatment, mitigation or adaptation project). So, for example, in lieu of solving a puzzle for a cryptocurrency, the proof of work would be a sensor and analytics driven measurement of a completed task). (See at least Regmi, [0011]; [0012]; [0043]; [0049]; [0100]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
The combination of Agrawal and Regmi does not explicitly disclose that the validity indicator comprises a description of a standard for storing the cryptographic data and conforming that the standard for storing the cryptographic data has been met.
Roth, on the other hand teaches a smart contract comprises the validity indicator comprises a description of a standard for storing the cryptographic data and conforming that the standard for storing the cryptographic data has been met. (See at least Roth, Abs, [0009-0010]; [0063-0064] storing the data rules in a rule repository to be available to use to validate data sets having the record format.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Roth’s teachings in order to determine records that deviate from the rules. (Roth, [0059])
Regarding claim 19: A non-transitory machine readable medium containing bytecode stored within an immutable ledger, where the bytecode encodes an annuity coin comprising: (See at least Agrawal, [0049-0050]; [0083-0084]; [0286])
a reference to a validity indicator, wherein the validity indicator confirms existence of cryptographic data backing the annuity coin; and (See at least Agrawal, [0086-0087])
a public key that identifies an address of the intended recipient of the cryptographic data (See at least Agrawal, [0049-0050]; [0083-0084]; where the accessing bytecode stored within an immutable ledger (i.e., smart contract) encodes a [coin] (i.e., token) and includes the public key associated with the secret key (i.e., User computing device 252 may also store a set of public keys 270 corresponding to accounts participating in platform smart contract a private key 280 corresponding to the public key and associated with the account of the user of user computing device); and
execution of a set of bytecode encoding the annuity coin: (See at least Agrawal, [0005])
when the validity indicator is verified, broadcast an initiated transfer of at least some of the cryptographic data to the address of the intended recipient(See at least Agrawal, Fig. 2; [0004]; [0040-0041]; [0085-0088]; [0095]).
Agrawal disclose a smart contract that facilitate the transfer of an number of tokens (i.e., cryptocurrency amount converted into tokens). See at least Agrawal, [0086-0087]. Agrawal does not specifically disclose that the smart contract encodes an annuity coin. However, the fact that the coin is an annuity coin represents non-functional descriptive material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal’s system which uses a smart contract to perform transaction with a cryptocurrency token by integrating the functionalities into an annuity coin.
Agrawal disclose when platform smart contract 210 receives the transfer transaction request, platform smart contract 210 may validate the cryptographic proof in the transfer transaction request and invoke the Transfer function. (Agrawal, [0087]). However, Agrawal does not specifically disclose; using a challenge and proof, wherein the challenge and proof correspond to an assertion that the annuity coin is a mined coin; and discloses a publicly verifiable event used to trigger a transfer of the cryptographic data to an intended recipient; execution of a set of bytecode encoding the annuity coin: verifies the validity indicator, wherein verifying the validity indicator comprises: confirming that the standard for storing the cryptographic data has been met; and determining that the proof is a valid solution to the challenge; and
Regmi, on the other hand teaches confirming existence of cryptographic data using a challenge and proof, wherein the challenge and proof correspond to an assertion that the annuity coin is a mined coin; execution of a set of bytecode encoding the annuity coin: verifies the validity indicator, wherein verifying the validity indicator comprises: confirming occurrence of the publicly verifiable event; and determining that the proof is a valid solution to the challenge; (See at least Regmi, [0011]; [0012]; [0043]; [0049]; [0100])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
The combination of Agrawal and Regmi does not explicitly disclose confirming that the standard for storing the cryptographic data has been met.
Roth, on the other hand teaches a smart contract comprises the validity indicator comprises a description of a standard for storing the cryptographic data and conforming that the standard for storing the cryptographic data has been met. (See at least Roth, Abs, [0009-0010]; [0063-0064] storing the data rules in a rule repository to be available to use to validate data sets having the record format.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Roth’s teachings in order to determine records that deviate from the rules. (Roth, [0059])
Regarding claims 17 and 22: The combination Agrawal, Regmi and Roth disclose the device of claim 14 and the readable medium of claim 19. The combination further discloses wherein the validity indicator further comprises: a reference to a contract between a transferor and the intended recipient of the cryptographic data; and a reference to evidence of contract performance. (See at least Regmi, [0050]; [0055][0075] can be automatically managed using the embedded smart contracts with multiple parties within a chain.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Regarding claim 18 and 23: The combination Agrawal, Regmi and Roth disclose the device of claim 14 and the readable medium of claim 19. The combination further wherein the validity indicator comprises an additional a digitally signed message from a third party verifying entity paying module. (See at least Agrawal, [0087] The transaction data of the transfer transaction request may include the public keys of the sender and receiver, a first operand ciphertext encrypting the negative of the transfer amount using the sender's public key, and a second operand ciphertext encrypting the transfer amount using the receiver's public key. When platform smart contract 210 receives the transfer transaction request, platform smart contract 210 may validate the cryptographic proof in the transfer transaction request and invoke the Transfer function.)
Regarding claim 24 and 29: The combination of Agrawal, Regmi and Roth disclose the device of claim 18 and the medium of claim 23. wherein the third-party verifying entity is an agent of the transferor. (See at least Regmi, [0055]; [0099] ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Regarding claim 25: The combination Agrawal, Regmi and Roth disclose the device of claim 17. The combination further discloses wherein the network interface uses the validity indicator to verify at least one of: existence of the contract, or that the evidence of contract performance confirms that the contract was performed. (See at least Regmi, [0028]; [0054]; [0091]; The smart contracts can involve infrastructure guarantees and warranties from project execution or conditionalities or contingent payments or mandatory tenders that need to be met for returns on a bond.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Regarding claims 26 and 35: The combination Agrawal, Regmi and Roth disclose the device of claim 17 and the method of claim 34. The combination further discloses wherein the processor is further configured to receive, from the intended recipient, a new digitally signed message, wherein the new digitally signed message is usable as a new annuity coin. (See at least Agrawal, [0030]; [0107]; Signature schemes are used to authorize messages by signing them; user operating a user device (e.g., one of validation nodes 106A-D, or a computing device in communication with a validation node) may initiate a transaction by generating a cryptographically signed message). Applicant is reminded that the description of the coin does not affect the positively recited steps.
Regarding claims 27, 31 and 36: The combination Agrawal, Regmi and Roth disclose the device of claim 14, the medium of claim 22 and the method of claim 33. The combination further disclose wherein: the cryptographic data corresponds to at least one of a set of cryptocurrency or a set of non-fungible tokens (NFTs); and the immutable ledger is a blockchain. (See at least Agrawal, [0016]; [0086])
Regarding claims 28 and 32: The combination Agrawal, Regmi and Roth disclose the device of claim 14 and the readable medium of claim 19. The combination further disclose wherein: the validity indicator further discloses a the publicly verifiable event used to trigger broadcasting of the action initiating the transfer. (See at least Regmi, [0043]; Once a claim for performance is placed, subsequent verification triggers an automated payment and updates the investment landscape to reflect the portion of the goal that was achieved.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Regarding claim 30: The combination Agrawal, Regmi and Roth disclose the readable medium of claim 22. The combination further discloses, wherein verifying the validity indicator further comprises verifying at least one of: existence of the contract, or that the evidence of contract performance confirms that the contract was performed. (See at least Regmi, [0028]; [0054]; [0091]; The smart contracts can involve infrastructure guarantees and warranties from project execution or conditionalities or contingent payments or mandatory tenders that need to be met for returns on a bond.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Regarding claim 34: The combination Agrawal, Regmi and Roth disclose the method of claim 33. The combination further discloses wherein the validity indicator further comprises: a reference to a contract between a transferor and the intended recipient of the cryptographic data; a reference to evidence of contract performance; and (See at least Regmi, [0050]; [0055]; [0075] can be automatically managed using the embedded smart contracts with multiple parties within a chain.)
an additional digitally signed message from a third-party verifying entity that is an agent of the transferor. (See at least Agrawal,[0016]; [0087] The transaction data of the transfer transaction request may include the public keys of the sender and receiver, a first operand ciphertext encrypting the negative of the transfer amount using the sender's public key, and a second operand ciphertext encrypting the transfer amount using the receiver's public key. When platform smart contract 210 receives the transfer transaction request, platform smart contract 210 may validate the cryptographic proof in the transfer transaction request and invoke the Transfer function.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Regarding claim 37: The combination Agrawal, Regmi and Roth disclose the method of claim 33. The combination further discloses wherein the validity indicator further discloses a publicly verifiable event used to trigger broadcasting of the action initiating the transfer. (See at least Regmi, [0011-0012]; [0028-0029]; [0043]; Once a claim for performance is placed, subsequent verification triggers an automated payment and updates the investment landscape to reflect the portion of the goal that was achieved.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agrawal and include Regmi’s teachings in order to provide a more secure system by perform verifiable transfers.
Response to Arguments
REJECTION OF CLAIM 19 UNDER 35 U.S.C. §112
Applicant’s amendments have corrected the previously identified issue. Accordingly, the rejections under 112(b) are withdrawn.
REJECTION OF THE CLAIMS UNDER 35 U.S.C. §103
Applicant argues that the cited references do not disclose or suggest a reference to a validity indicator, wherein the validity indicator comprises: a description of a standard for storing the cryptographic data; and a challenge and a proof corresponding to an assertion that the annuity coin is a mined coin. Examiner respectfully disagrees. Roth disclose a reference to a validity indicator, wherein the validity indicator comprises: a description of a standard for storing the cryptographic data; See at least Roth, Abs, [0009-0010]; [0063-0064] storing the data rules in a rule repository to be available to use to validate data sets having the record format. Furthermore, Regmi discloses a challenge and a proof corresponding to an assertion that the annuity coin is a mined coin (i.e., proof of work) determining that the proof is a valid solution to the challenge; when the validity indicator is verified; (e.g., These approaches could require a 'proof of work' or 'proof of stake' (associated with water or wastewater treatment, mitigation or adaptation project). So, for example, in lieu of solving a puzzle for a cryptocurrency, the proof of work would be a sensor and analytics driven measurement of a completed task). (See at least Regmi, [0011]; [0012]; [0043]; [0049]; [0100]).
Applicant submits that the cited references address fundamentally different technical problems and lack a proper motivation to combine. Specifically, Applicant argues that Roth is directed to a completely different technical field involving data validation rules for record formats and does not describe the use of cryptocurrency, blockchain technology, or smart contracts. Applicant submits that the citation to Roth's teaching of "storing the data rules in a rule repository to be available to use to validate data sets having the record format" does not correspond to the claimed description of a standard for storing cryptographic data in the context of an annuity coin, only general data storage. (Office action, pg. 6), and that there is not motivation for combining these disparate references beyond Regmi and Roth both broadly relating to data security. Examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The current invention and Roth are analogous because Roth recites; digital validation and cryptographic rules.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/K.G.M/Examiner, Art Unit 3698
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698