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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 5, 2026 has been entered.
Response to Amendment
The amendment filed on June 5, 2026 has been entered. Applicant has amended claims 14, 19 and 33. Claims 14, 17-19, 22-37 are now pending, have been examined and currently stand rejected.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 09, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Non-Functional Language:
Regarding claims 1 and 20:
The phrase “that is configured to provide automated payments conditional on a predetermined time passage, and wherein the annuity coin” is non- functional descriptive material as it only describes, at least in part, the set of the bytecode encoding the annuity coin. The fact that the claims describes what the bytecode/annuity coin is capable of doing, do change the scope of the claims and do not affect the positively recited steps.
It has been held that non-functional descriptive material will not distinguish the invention from the prior art in terms of patentability.
Intended use/Result Language:
The phrase which recites, “for storing the cryptographic data” is intended use language indicating the intended use of a description of a service standard.
The applicant is reminded that these portions, i.e., intended use/result, do not further limit the scope of the claim as the limitations, or portions thereof, do not claim the functions as being positively recited actions or functions, and/or they do not add any meaning or purpose to the associated manipulative step(s). See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being "for ... [performing a specific functionality]", etc. does not mean that the functions are required to be performed, or are actually performed.
Examiner has provided prior art, where available, for these intended use and/or non-functional phrases/limitations, however, these phrases/limitations will not distinguish the invention from the prior art in terms of patentability. Accordingly, the prior art is only provided in the interest of compact prosecution.
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, 18-19, 23, 26-27, 31, 33 and 35-36 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), Verma et al. (US 2020/0013025 A2)“Verma”, 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 a 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 the set of bytecode encodes an annuity coin that is configured to provide automated payments conditional on a predetermined time passage, and wherein the annuity coin includes; 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; accesses the validity indicator using the reference to the validity indicator.
Verma, on the other hand teaches a set of bytecode encoding annuity coin that is configured to provide automated payments conditional on a predetermined time passage, and wherein the annuity coin includes that includes validity indicator that comprises a challenge and a proof corresponding to an assertion that the annuity coin is a mined coin determining that the proof is a valid solution to the challenge; accesses the validity indicator using the reference to the validity indicator. (See at least Verma, [0037]; [0084] If every blockchain node that determines the condition as true invokes the smart contract, then the transaction would be executed several times, which would be an error. The deferred blockchain transaction must be executed exactly once. For example, one use case for deferred blockchain transactions is to set up recurring payments. On the 1st of every month, a renter would like to send $1000 to a landlord. So, the condition would be "is date 1st of month?". If the node is challenged to prove that a given transaction was included in the outgoing queue as of a certain summary, or even to provide the queue's entire contents, it can prove the accuracy of its response using standard Merkle proof techniques.)
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 Verma’s teachings in order to provide a more secure system by perform verifiable transfers.
The combination of Agrawal and Verma 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, wherein 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])
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; accesses the validity indicator using the reference to the validity indicator.
Verma, on the other hand teaches a set of bytecode encoding annuity coin that is configured to provide automated payments conditional on a predetermined time passage, and wherein the annuity coin includes that includes validity indicator that comprises a challenge and a proof corresponding to an assertion that the annuity coin is a mined coin determining that the proof is a valid solution to the challenge; accesses the validity indicator using the reference to the validity indicator. (See at least Verma, [0037]; [0084] If every blockchain node that determines the condition as true invokes the smart contract, then the transaction would be executed several times, which would be an error. The deferred blockchain transaction must be executed exactly once. For example, one use case for deferred blockchain transactions is to set up recurring payments. On the 1st of every month, a renter would like to send $1000 to a landlord. So, the condition would be "is date 1st of month?". If the node is challenged to prove that a given transaction was included in the outgoing queue as of a certain summary, or even to provide the queue's entire contents, it can prove the accuracy of its response using standard Merkle proof techniques.)
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 claim 18 and 23: The combination Agrawal, Verma 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 claims 26 and 35: The combination Agrawal, Verma 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, Verma 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])
Claim(s) 17, 22, 24-25, 28-30, 32, 34 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agrawal, Verma and Roth as applied to claim 4 above, and further in view of Regmi, (US 2020/0410590).
Regarding claims 17 and 22: The combination Agrawal, Verma and Roth disclose the device of claim 14 and the readable medium of claim 19. The combination does not explicitly disclose, however Regmi teaches; 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 24 and 29: The combination of Agrawal, Verma and Roth disclose the device of claim 18 and the medium of claim 23. The combination does not explicitly disclose, however Regmi teaches; 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 performing verifiable transfers.
Regarding claim 25: The combination Agrawal, Verma 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 28 and 32: The combination Agrawal, Verma 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, Verma 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, Verma 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, Verma 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 THE CLAIMS UNDER 35 U.S.C. §103
Applicant asserts that that the cited references do not disclose or suggest the method of the amended claim 14. Specifically, Applicant asserts that the cited references do not suggest an annuity coin that is configured to provide automated payments conditional on a predetermined time passage; or a reference to a validity indicator, wherein the validity indicator comprises: (Remarks, p.1-2). Examiner agrees. However, upon further consideration of the newly introduced language, a new ground(s) of rejection is made in view of Agrawal, Verma and Roth. Roth further disclose 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.)
Applicant asserts that the cited references address fundamentally different technical problems and lack a proper motivation to combine. (Remarks, p. 3). 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). In this case, Roth is pertinent to the particular problem because the claims recite the intended use of a service standard (e.g., for storing). While prior Roth teaches “storing the data rules in a rule repository to be available…”.
Applicant asserts 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. (Remarks, p. 3). Examiner respectfully disagrees. Under the broadest reasonable interpretation, the validity indicator comprising a description of a service standard for storing the cryptographic data is data comprising data.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLYANNIE M GARCIA whose telephone number is (571)272-6950. The examiner can normally be reached Monday - Friday 7:30am - 4:30-pm.
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/K.G.M/Examiner, Art Unit 3698
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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