DETAILED ACTION
This is in response to the reply filed on 03/30/2026. Claims 1-3, 5-14, and 16-22 are pending in this Office Action. Claims 4 and 15 had been previously cancelled.
Remark
In the response filed 03/30/2026, claims 1, 5, 9, and 14 have been amended, no claim has been cancelled, and no new claim has been added.
The Applicant’s Interview Summary is acknowledged and it is OK.
The Applicant’s amendments regarding 35 USC 112(b) rejections are accepted by the Examiner. Therefore, prior 35 USC 112(b) rejections are withdrawn.
Response to Arguments
With respect to 35 USC 101 rejection:
Applicant's arguments filed 03/30/2026 with respect to claims 35 USC 101 rejections of 1-3, 5-14, and 16-22 for being directed to abstract idea have been considered but they are not persuasive.
With respect to claim 1,
the applicant alleges claim 1 recites the limitation of "searching, within an address space of registered ledger addresses, for a second address that closely matches the first address” which is not a mental process, and claim 1 does not recite any mental process “because it requires: 1. querying a ledger "registry of registered addresses" (ledger-resident or ledger-associated structure), and 2. computing similarity across an "address space" of registered ledger addresses, using an explicit positional character comparison and optionally regex acceleration (based on a character-by-character positional comparison performed across an address space of registered ledger addresses).”
The Examiner respectfully disagrees.
The Examiner holds that the limitation of “in response to determining that the first address is not registered, searching, within an address space of registered ledger addresses, for a second address that closely matches the first address” is recited at a high level of generality. Giving said limitation its broadest and reasonable interpretation (BRI), it involves the functions of observation, searching, and comparison. A human being can manually and mentally search through a list of recorded addresses on a sheet of paper (or a computer monitor) using his/her eyes to determine a close match for a given address. As such, said limitation constitutes the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.
Arguendo, even if the limitation of “searching, within an address space of registered ledger addresses” is not a mental process, under Step 2A, Prong 2, it could be considered as an insignificant extra-solution activity that does not significantly add to the recited abstract idea.
Furthermore, the limitation of “determining if the second address closely matches the first address based on a character-by-character positional comparison performed across an address space of registered ledger addresses” is also recited at a high level of generality. Thus, giving said limitation its BRI, it involves the functions of observation, comparison, and determination. A human being can look at a list of address on a sheet of paper (or a computer monitor), compare a given address to the list of addresses, and determine if the given address closely matches to one of the addresses on the list. As such, it indeed constitutes the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.
Therefore, claim 1 recites mental processes that could be performed in human mind with aid of a pen and paper. See below for details.
Moreover, the Examiner respectfully disagrees that claim 1 is integrated into a practical application for “a ledger-specific control improvement: first determine non-registration, - then only perform the expensive similarity search (explicitly described as conserving system resources), and - then notify the user when a rare close match occurs.”
The Examiner holds that said of features of “determining non-registration”, “performing” similarity search, and “notify a user” when a closes match occurs are not capable improving a manner in which a computer functions or a technology because they could be performed mentally without requiring a computer. The current claimed invention can be performed mentally, and does not require a computer. If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v.Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir.2016). In claims, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally, or with pen and paper. Thus, the claimed invention of claim 1 does not necessarily preclude the claimed limitations from being performed mentally. “That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016).
The MPEP 20106(a)(I) points out “[i]t is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation.” Therefore, based on BRI, the claimed invention failed to prove that computer improve computer functionality. Thus, claim 1 cannot be said to improve a computer or other technological fields because said claimed features can be performed by a human, mentally, and a pen and paper based on MPEP 20106(a)(I). Consequently, the limitations of the claims fail to integrate the judicial exception of abstract idea into practical application.
Furthermore, the addition of insignificant extra-solution activities (e.g., receiving, retrieving, and transmitting data) are not sufficient to improve the functionality of a computer or technology. Therefore, claim 1 fails to integrate the recited abstract idea into a practical application.
The Examiner further disagrees with the applicant’s assertion under Step 2 B that claims additional limitations (e.g., receiving and transmitting) “are not generic messaging, they are a specific ledger-centric detection mechanism that: - operates on a registered ledger address space, - uses a positional character comparison / threshold, and - is conditionally invoked to conserve system resources.”
The courts have determined that functions such as data receiving and gathering data or sending and transmitting data using conventional techniques are extra-solution and/or well-understood, routine, and conventional activities. MPEP 2106.05(d) points out that:
The courts have recognized the following computer function as well‐understood, routine, and conventional functions when it is claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec,
838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in
Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)).
Therefore, the additional limitations of receiving, retrieving, and transmitting data as recited in claim 1 in a generic manner are consider to be well-understood, routine,
and conventional activities that do not add significantly to the recited abstract idea.
In conclusion, based on above explanation and reasoning, claim 1 and its dependent claims are not patent eligible for being directed to abstract idea.
With respect to claim 9,
The applicant alleges that claim 9 now recites limitations of "determining if
the address is registered and has been used by determining whether the address has been used in a transaction recorded in the digital ledger or in a signed message recorded in the digital ledger," and "wherein requesting the confirmation comprises permitting a trial transaction to be transmitted to the address, verifying that the trial transaction reached the address, and permitting a commit transaction to be transmitted." Therefore, claim 9 is no longer abstract idea under Step 2A, Prong 1 because “it requires: - accessing ledger history (transaction/signed message evidence), and - executing a trial transaction / verification / commit transaction sequence, which cannot be performed mentally and is inherently tied to operation of a digital ledger network.”
The Examiner respectfully disagrees.
First, the limitation of "determining if the address is registered and has been used by determining whether the address has been used in a transaction recorded in the digital ledger or in a signed message recorded in the digital ledger” recited at a high-level of generality and giving it BRI, it involves the concept of observation, evaluation, and judgement. Thus, it is indeed a mental process that could be practically performed in the human mind.
Secondly, the limitation of "wherein requesting the confirmation comprises permitting a trial transaction to be transmitted to the address, verifying that the trial transaction reached the address, and permitting a commit transaction to be transmitted" is a contingent limitation and is not required to be performed by the claim if the other option (e.g., denying the request from the user…) is selected to be implemented. As such, it may not add to the recite abstract idea. Furthermore, given its BRI the limitations of “permitting to transmit”, “verifying”, and “permitting to commit” could be mental processes that could be performed in the human mind.
With regard to Step 2A, Prong 2 and Step 2B arguments, the Examiner holds that the features (e.g., the system can deny or require confirmation to prevent irreversible loss, including by using the trial/commit model to ensure the destination address is "appropriately reached" before committing or the "confirmation" is a trial, verify, and commit workflow) are not required to be executed by claim for being contingent limitations. Furthermore, the features such as denying or confirming a transaction could be mental processes. The limitation of “wherein requesting the confirmation comprises permitting a trial transaction to be transmitted to the address, verifying that the trial transaction reached the address, and permitting a commit transaction to be transmitted” is recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person can mentally and manually allow to send a transaction, verify if it reached the address, and allow to implement the transaction.
In conclusion, based on above explanation and reasoning, claim 9 and its dependent claims are not patent eligible for being directed to abstract idea.
With respect to claim 14,
The applicant alleges “that with escrow memory and conditional commit, claim 14 is not a human mental process. It requires: - maintaining a pending transaction request in escrow memory, - enforcing a system-controlled delay window, and - conditionally committing only if a cancellation request is not received.”
The Examiner disagrees that the feature of “conditionally committing only if a cancellation request is not received” is not a mental process. The limitation of “after an expiration of the predetermined threshold time period, adding the block to the digital ledger if the request has not been canceled” is recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A human being can manually add data to digital ledger. Thus, it is a mental process.
However, the Examiner agrees that the limitation of “holding the request in an escrow memory during the predetermined threshold time period” is not a mental process. As such, it was considered to be an extra-solution and/or well-understood, routine, and conventional computer activity that do not add significantly to the abstract idea.
The Examiner further disagrees that the feature of “a time-based reversal mechanism allowing a sender to reverse within a time period, implemented at the blockchain/wallet/exchange layer”, under Step 2A, Prong 2 would integrate the invention into a practical application.
The Examiner holds that the features of claim 14 including “refraining from adding the block to the digital ledger for a predetermined threshold time period” that allows a sender to reverse within a time period is recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A human being can hold back or stop adding data to digital ledger or a hardware/software wallet for a predetermined time period. As such, a mental process is not capable of improving a manner in which a computer functions or technology. Thus, claim 14 is not integrate the invention into a practical application.
With respect to argument under Step 2B, the Examiner contends that features such as holding or refraining committing of a transaction for a period of time would add to more than abstract idea. As it was explained, such a feature could be a mental process and be performed by a human being. Furthermore, the other additional limitations such receiving and holding data in a memory are considered to be well-understood, routine, and conventional activities that do not add to more than abstract idea. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
In conclusion, based on above explanation and reasoning, claim 14 and its dependent claims are not patent eligible for being directed to abstract idea.
Therefore, the 35 USC 101 rejection of claims 1-3, 5-14, and 16-22 for being directed to non-statutory subject matter of abstract idea are maintained.
With respect to 35 USC 103 rejection:
With respect to claim 1,
The applicant alleges, in pages 11-12 of the Remark, that “B. Di Iorio Does Not Teach or Suggest the Claimed Address-Error Detection” and “C. Zandt Is Technologically and Contextually Inapposite” because it directed to email delivery system. The Examiner respectfully disagrees.
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). As for the "reasonably pertinent" test, the examiner should consider the problem faced by the inventor, as reflected - either explicitly or implicitly - in the specification. In order for a reference to be "reasonably pertinent" to the problem, it must "logically [] have commended itself to an inventor's attention in considering his problem." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992)). See also In re Klein, 647 F.3d 1343, 1348, 98 USPQ2d 1991, 1993 (Fed. Cir. 2011) An inventor is not expected to have been aware of all prior art outside of the field of endeavor. Airbus, 41 F.3d at 1380-82. A reference outside of the field of endeavor is reasonably pertinent if a person of ordinary skill would have consulted it and applied its teachings when faced with the problem that the inventor was trying to solve. Airbus, 41 F.3d at 1380-82. In order to support a determination that a reference is reasonably pertinent, it may be appropriate to include a statement of the examiner's understanding of the problem.
Here, Di Iorio is an analogous art because it is from the same field of endeavor of blockchain and data ledger system. And, Zandt, although, is not from the same field of endeavor to the claimed invention, Zandt is reasonably pertinent to the problem faced by the inventor because a person of ordinary skill would have consulted and applied its teachings when faced with the problem that the inventor was trying to solve which is resolving an incorrect address to deliver data. As such, Zandt is considered to be an analogous art to the claimed invention. Therefore, both Di Iorio and Zandt are considered to be analogous art to the claimed invention and thus are proper references for use in an obviousness rejection under 35 U.S.C. 103 of claim 1.
The Examiner further disagrees that “D. The Combination Is Not a Simple Substitution or Predictable Use…Neither Di Iorio nor Zandt-alone or in combination-suggests this architecture or decision flow. The proposed combination relies on impermissible hindsight reconstruction, using Applicant's disclosure as a roadmap.”
The Examiner holds that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, modifying the teachings of Di Iorio with the teachings of Zandt, without being structurally incorporating Zandt into Di Iorio, would disclose or suggest all the limitations of claim 1.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Furthermore, the Examiner respectfully disagrees that “[t]he amendments to claim 1 further clarify that: - Similarity analysis is explicitly conditioned on non-registration of the first address; and The comparison is a character-by-character positional comparison across registered ledger addresses, not a generic string similarity or regex match divorced from ledger context. These limitations are nowhere taught or suggested by the cited references and reflect a ledger-specific technical solution to a blockchain-specific problem.”
The Examiner contends that the combination of De Iorio and Zandt discloses said limitations. For example, Di Iorio discloses or at least suggests the feature of determining that the first address is not registered in the digital ledger by teaching that the address associated with the write request is searched to determine if there is a particular wallet or matching address. It is a common knowledge in art the when an address is incorrect, the system determines that that address is not registered with a client wallet in the distributed ledger system (See at least Fig. 5, para 6, 10, 14, 53, and 59).
Moreover, Zandt discloses comparing characters of an entered email address to other common or valid (i.e., registered) address character by character to determine a close match based on correlation threshold to determine if a single character is incorrect or misspelled (see Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42) which reads on the limitation of “determining if the second address closely matches the first address based on a character-by-character positional comparison performed across an address space of registered ledger addresses,” as recited by claim 1.
Therefore, the combination of Di Iorio and Zandt are proper and discloses or at suggests all the limitations of claim 1.
With respect to claim 9,
The Examiner respectfully disagrees with applicant’s argument “that the rejection is improper. Even if combined, Di Iorio and Chermside fail to teach or suggest the specific blockchain-centric logic, decision conditions, and technical problem addressed by claim 9, and the Office Action's rationale relies on hindsight reconstruction using Applicant's disclosure as a blueprint.”
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Furthermore, the applicant alleges “B. Di Iorio Does Not Teach or Suggest Conditional Transaction Denial Based on Unused Registered Addresses….Di Iorio fails to provide the core decision logic of claim 9: ‘when the address is registered but has not been used, denying the request ... or requesting a confirmation from the user’.”
In response to applicant's arguments against the references individually, one
cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Examiner holds that the limitation of “when the address is registered but has not been used, denying the request from the user to add the block to the digital ledger” is disclosed by modification of Di Iorio with Chermside. Chermside discloses a customer account number exist and data key is not valid (has not been used), then denying the user request of access data (See Chermside: at least Fig. 3 and 8:10-24 and 10:22-35). Thus, the combination of reference, not references individually, disclose said limitation of “when the address is registered but has not been used, denying the request from the user to add the block to the digital ledger,’ recited by claim 9.
In addition, the Examiner respectfully disagrees with the applicant’s argument that “C. Chermside Is Directed to API Security and Credential Activation, Not Ledger Address Validity, Chermside is directed to controlled API access and credential activation, particularly in the context of authorizing applications to access user data or services.”
The Examiner holds that Chermside is an analogous art because it is related to the same field of endeavor of providing secure client or customer transaction. Additionally, Chermside discloses a customer account number exist and data key is not valid (has not been used), then denying the user request of access data (See Chermside: at least Fig. 3 and 8:10-24 and 10:22-35). Thus, Chermside combined with Di Iorio discloses or at least suggests the limitation of “when the address is registered but has not been used, denying the request from the user to add the block to the digital ledger,’ recited by claim 9.
Moreover, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning (“D. The Proposed Combination Is Based on Hindsight and Mischaracterization of the Art,”), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With regard to statement that “E. Claim 9 Recites a Ledger-Specific Safety Mechanism Absent from the Prior Art.” The Examiner holds that the combination of Di Iorio and Chermside would also provide a safe and secure ledger-specific transactions.
Therefore, the combination of Di Iorio and Chermside are proper and discloses or at suggests all the features of claim 9.
With respect to claim 14,
The applicant again under the argument A asserts that the proposed combination relies on hindsight reconstruction using Applicant's disclosure as a roadmap.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With respect to argument “B”, that neither Finlow-Bates nor Abdo recognizes this problem, nor do they disclose a mechanism that allows a user to cancel a pending blockchain transaction during a deliberate hold period, the Examiner respectfully disagrees.
The Examiner holds that the combination of Neither Finlow-Bates and Abdo provides safe and secure transaction in a blockchain by allowing a user to wait or refuse to add data to blockchain within a specific time.
With respect to argument “C. Finlow-Bates Teaches Consensus Eligibility Delays, Not User-Cancelable Transactions… The waiting period in Finlow-Bates is not a reversible transaction hold… Thus, Finlow-Bates addresses who may add blocks and when, not whether a specific block request may be canceled prior to commitment.”
The Examiner respectfully disagrees. First, the claim does not require “a reversible transaction hold.”
Secondly, the feature of “whether a specific block request may be canceled prior to commitment” is taught by the secondary reference, Abdo. Here, the applicant argues against the reference individually. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091,
231 USPQ 375 (Fed. Cir. 1986).
Finlow-Bates disclose rejecting an adding data block operation if the time period is less than a threshold (See Finlow-Bates: at least para 81). Abdo discloses receiving a request by a user to cancel an operation before expiration of appointed or predetermined time, and canceling the operation (See Abdo: at least para 21 and 52). Thus, the combination of Finlow-Bates and Abdo discloses or at least suggests “receiving a request, prior to the expiration of the predetermined threshold time period, to cancel the request to add the block to the digital ledger; and canceling the request to add the block to the digital ledger,” as recited in claim 14.
The Examiner respectfully disagrees, with respect to the applicant’s argument “D. Abdo Is Directed to Network Task Scheduling, Not Immutable Ledger Writes” and “there is no disclosure of irreversible consequences if the task executes, nor any motivation to provide a safety window to prevent permanent loss.”
Although, Abdo is not related to blockchain or ledger system, Abdo is an analogous art because it is related to processing task and transitions. It belongs to US classification 707. Furthermore, the motivation for combing the two references is to improve functionality of the method by allowing a user or administrator to stop an adding operation before expiring a predetermined time period for any reasons. The applicant’s preferred and desirable motivation to “provide a safety window to prevent permanent loss” needs not be supported by the combination of references. Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so.
In response to applicant's argument “E. the proposed combination is based on
hindsight”, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
With respect the applicant’s argument “F. claim 14 solves a problem not addressed by the prior art,” the Examiner respectfully disagrees. The Examiner holds that the combined teachings of Finlow-Bates and Abdo discloses or at least suggests all the features that are required by claim 14 including allowing a transaction to be on hold, defining a predetermined time-period for holding the transaction and adding data block to a ledger after the predetermined time period, and cancelling the transaction based on a received request.
Therefore, the combination of Finlow-Bates and Abdo are proper and discloses or at suggests all the features of claim 14.
In conclusion, based on above explanation and reasoning, the 35 USC 103 rejections for claims 1-3, 5-14, and 16-22 are proper and maintained.
Claim Rejections – 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 5-14 and 16-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Independent claims 1, 9 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance” (published on 1/7/2019 in Fed, Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter
referred to as the “2019 PEG”).
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted the processes of claims 1, 9 and 14 are all directed towards one of the eligible categories of subject matter, and therefore satisfies Step 1.
Step 2A. In accordance with Step 2A Prong one of 2019 PEG, it is noted that the independent claims recite an abstract idea falling within the mental processes enumerated grouping of abstract ideas set forth in the 2019 PEG. Examiner is of the position that independent claims 1, 9 and 14 are directed towards the Mental Processes; concepts performed in the human mind (including an observation, evaluation, judgment, opinion), more specifically, the independent claims recite the following limitations directed towards Mental Processes:
Regarding claim 1,
Step 2A, Prong 1:
Claim 1 recites the steps of:
determining from the request a first address at which the block is proposed to be added to the digital ledger; [recited at a high level of generality and based on broadest and reasonable interpretation (BRI), it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.]
determining that the first address is not registered in the digital ledger; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.]
in response to determining that the first address is not registered, searching, within an address space of registered ledger addresses, for a second address that closely matches the first address; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A human being can manually and mentally search through a list of addresses to determine a close match for a given address.]
determining if the second address closely matches the first address based on a character-by-character positional comparison performed across an address space of registered ledger addresses; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.]
when the second address closely matches the first address, …[sending] a message to the user indicating that there is a possible error in the first address; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. When an address does not exactly match or closely match, a person can send a message or notification of possible error to another person]
wherein the second address closely matches the first address when a difference between numbers and characters in the first address and in the second address exceeds a threshold. [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.]
The above-mentioned steps are processes that, under its BRI, covers performance of the limitation in the mind. That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Prong 2:
This judicial exception is not integrated into a practical application. Claim 1 recites the additional steps of: receiving into a computer processor a request from a user to add a block to a digital ledger, …retrieving, from a registry of registered ledger addresses maintained for the digital ledger, an indication of whether the first address is registered, …transmitting a message to the user, that could be considered as insignificant extra-solution activities of gathering and sending data. See
MPEP 2106.04(d) and 2106.05(g).
The additional limitations of blockchain system and a computer processor are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. See MPEP 2106.04(d) and 2106.05(g).
Step 2B:
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claim 1 recites the additional steps of: receiving into a computer processor a request from a user to add a block to a digital ledger,…retrieving, from a registry of registered ledger addresses maintained for the digital ledger, an indication of whether the first address is registered,…transmitting a message to the user that could be considered as well-understood, routine, and conventional activities of gathering and sending data. See
MPEP 2106.04(d) and 2106.05(g).
The additional limitations of blockchain system and a computer processor are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Therefore, claim 1 is not patent eligible.
Regarding claim 9,
Step 2A, Prong 1:
Claim 9 recites the steps of:
determining from the request a first address at which the block is proposed to be added to the digital ledger; [recited at a high level of generality and based on broadest and reasonable interpretation (BRI), it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind.]
determining if the address is registered and has been used by determining whether the address has been used in a transaction recorded in the digital ledger or in a signed message recorded in the digital ledger; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or
judgement which could be practically performed in the human mind.] and
when the address is registered but has not been used, denying the request from the user to add the block to the digital ledger, or requesting a confirmation from the user that the user wants to add the block to the digital ledger at the address; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person can mentally and manually deny to add data when a condition (e.g., an address is registered but not used) is true or request confirmation]
wherein requesting the confirmation comprises permitting a trial transaction to be transmitted to the address, verifying that the trial transaction reached the address, and permitting a commit transaction to be transmitted. [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person can mentally and manually allow to send a transaction, verify if it reached the address, and allow to implement the transaction]
The above-mentioned steps are processes that, under its BRI, covers performance of the limitation in the mind. That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Prong 2:
This judicial exception is not integrated into a practical application. Claim 9 recites the additional step of receiving into a computer processor a request from a user to add a block to a digital ledger that could be considered as an insignificant extra pre-solution activity of gathering data. See MPEP 2106.04(d) and 2106.05(g).
The additional limitations of blockchain system and a computer processor are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. See MPEP 2106.04(d) and 2106.05(g).
Step 2B:
Claim 9 does not include additional elements that are sufficient to amount to
significantly more than the judicial exception. Claim 9 recites the additional step of receiving into a computer processor a request from a user to add a block to a digital ledger that could be considered as a well-understood, routine, and conventional activity of gathering data. See MPEP 2106.04(d) and 2106.05(g).
The additional limitations of blockchain system and a computer processor are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Therefore, claim 9 is not patent eligible.
Regarding claim 14,
Step 2A, Prong 1:
Claim 14 recites the steps of:
refraining from adding the block to the digital ledger for a predetermined threshold time period…wherein the refraining is executed in the digital ledger, a hardware wallet, a software wallet, or an exchange; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A human being can hold back or stop adding data to digital ledger or a hardware/software wallet for a predetermined time period]
after an expiration of the predetermined threshold time period, adding the block to the digital ledger if the request has not been canceled; [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A human being can manually add data to digital ledger] and
canceling the request to add the block to the digital ledger. [recited at a high level of generality and based on BRI, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A human being can manually cancel the request to add data]
The above-mentioned steps are processes that, under its BRI, covers performance of the limitation in the mind. That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Prong 2:
This judicial exception is not integrated into a practical application. Claim 14 recites the additional steps of: receiving into a computer processor a request from a user to add a block to a digital ledger, …holding the request in an escrow memory during the predetermined threshold time period, … receiving a request, prior to the expiration of the predetermined threshold time period, to cancel the request to add the block to the digital ledger that could be considered as an insignificant extra solution activity of gathering and storing data. See MPEP 2106.04(d) and 2106.05(g).
The additional limitations of blockchain system and a computer processor are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. See MPEP 2106.04(d) and 2106.05(g).
Step 2B:
Claim 14 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claim 14 recites the additional steps of: receiving into a computer processor a request from a user to add a block to a digital ledger, … receiving a request, prior to the expiration of the predetermined threshold time period, to cancel the request to add the block to the digital ledger, that could be considered as a well-understood, conventional, and routine activity of
receiving and gathering data. See MPEP 2106.04(d) and 2106.05(g).
The additional limitations of blockchain system and a computer processor are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Therefore, claim 14 is not patent eligible.
Dependent claims 2-3, 5-8, 10-13 and 16-22 are also rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance” (published on 1/7/2019 in Fed, Register, Vol. 84, No. 4 at pgs. 50-57, hereinafter referred to as the “2019 PEG”).
Step 1. Analyzed above.
Step 2A. In accordance with Step 2A Prong One of 2019 PEG, it is noted that the independent claims from which the dependent claims rely recite abstract ideas falling within the mental processes enumerated groupings of abstract ideas set forth in the 2019 PEG as detailed above. Examiner is of the position the dependent claims 2-3, 5 and 10 also recite abstract ideas falling within the mental processes enumerated groupings of abstract ideas as follows:
“Claim 2…determining that the first address is a not a registered address in the digital ledger; and searching for the second address that closely matches the first address when the first address is not a registered address”, as drafted recites a mental process of determining based on a comparison or evaluation;
“Claim 3…wherein the search for the second address and the determination that the second address closely matches the first address is executed using a regular expression algorithm”, as drafted recites a mental process of determining based on a comparison or evaluation;
“Claim 5…wherein the threshold comprises half or more of the numbers and the characters match in a same position in the first address and the second address”, as drafted recites a mental process of determining based on a comparison or evaluation;
“Claim 10…wherein the determination that the address has been used comprises determining that the address has been used in a transaction in the digital ledger or that the address has been used in a signed message in the digital ledger”, as drafted recites a mental process of determining based on a comparison or evaluation;
With respect to Step 2A Prong Two of the 2019 PEG, Examiner is of the position
that the additional elements of dependent claims 6-8, 11 and 16-18 do not integrate the judicial exception identified above, into a practical application. The dependent claim’s
additional elements, as interpreted by the Examiner, are identified below:
“Claim 6…comprising suggesting to the user that the second address is an intended address of the user”, as drafted recites insignificant extra solution activity;
“Claim 7… wherein the digital ledger comprises a cryptocurrency system”, as drafted recites generic computer components performing generic computer functions;
“Claim 8…wherein the digital ledger comprises a blockchain system”, as drafted recites generic computer components performing generic computer functions;
“Claim 11…permitting the user to transmit a trial transaction to the address; verifying that the trial transaction has reached the address; and permitting the user to transmit a commit transaction to the address”, as drafted recites insignificant extra solution activity;
“Claim 16…wherein the predetermined threshold time period is created by the user or the predetermined threshold time period is created by a system operator”, as drafted recites insignificant extra solution activity;
“Claim 17…wherein the refraining from adding the block to the digital ledger for the predetermined threshold time period is executed in the digital ledger, a hardware wallet, a software wallet, or an exchange”, as drafted recites generic computer components performing generic computer functions; and
“Claim 18…wherein the refraining comprises holding the request in an escrow memory”, as drafted recites generic computer components performing generic computer functions.
Dependent claims 12-13 and 19-20 are similar in scope to dependent claims 7-8 analyzed above.
“Claim 21…disclosing to the user to whom the address is registered”, as drafted recites insignificant extra solution activity and/or generic computer components performing generic computer function of outputting/displaying data.
“Claim 22…informing the user of the predetermined threshold time”, as drafted recites insignificant extra solution activity and/or generic computer components performing generic computer function of outputting data.
The additional element identified above fail to integrate the abstract idea into a practical application because the additional elements amount to generic computer components performing generic computer functions and insignificant extra-solution activity, See MPEP 2106.05(g) which lists three considerations when making a determination as to whether additional elements are insignificant extra-solution activity.
Step 2B. Similar to the analysis under 2A Prong Two, because the additional elements of the dependent claims amount to generic computer components performing generic computer functions and insignificant extra solution activity, the additional elements do not add significantly more to the judicial exception such that the independent claim as a whole would be patent eligible.
Therefore, claims 2-3, 5-8, 10-13 and 16-22 are rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter of “retrieving, from a registry of registered ledger addresses maintained for the digital ledger, an indication of whether the first address is registered” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Although, the specification (for example in paragraph 14) describes determining whether an address is registered or not, it does not provide sufficient written description for the subject matter of retrieving an indication from a registry of registered ledger addresses, an indication of whether the first address is registered.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 recites limitations similar to the newly amended limitations of “in response to determining that the first address is not registered, searching, within an address space of registered ledger addresses, for a second address that closely matches the first address” in claim 1. As such, claim 2 fails to specify a further limitation of the subject matter claimed.
Claim 11 recites limitations similar to the newly amended limitations of “wherein requesting the confirmation comprises permitting a trial transaction to be transmitted to the address, verifying that the trial transaction reached the address, and permitting a commit transaction to be transmitted” in claim 9. As such, claim 11 fails to specify a further limitation of the subject matter claimed.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1-3 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Di Iorio et al., US 2019/0354963 (Di, hereafter) in view of Zandt, US 2005/0188031.
Regarding claim 1,
Di discloses a process to improve a blockchain system by identifying a valid but an incorrect address in the blockchain system comprising:
receiving a request into a computer processor from a user to add a block to a digital ledger (See Di: at least Fig. 5, para 6, 23, and 44, receiving a write request to store/add data or block to a ledger);
determining from the request a first address at which the block is proposed to be added to the digital ledger (See Di: at least Fig. 5, para 6, 23, 44, 45, and 68, the write request is associated with an address);
retrieving, from a registry of registered ledger addresses maintained for the digital ledger, an indication of whether the first address is registered; (See Di: at least Fig. 8, para 4, 23, 44, 45, and 68, retrieving a registration identifier indicating a client wallet is registered in the distributed ledger system);
determining that the first address is not registered in the digital ledger; (See Di: at least Fig. 5, para 6, 10, 14, 53, and 59, the address associated with the write request is searched to determine if there is a particular wallet or matching address. It is a common knowledge in art the when an address is incorrect, the system determines that that address is not registered with a client wallet in the distributed ledger system).
Although, Di discloses finding a match to an address of a write request to write data, it does not explicitly teach in response to determining that the first address is not registered, searching, within an address space of registered ledger addresses, for a second address that closely matches the first address; determining if the second address closely matches the first address based on a character-by-character positional comparison performed across an address space of registered ledger addresses; and when the second address closely matches the first address, transmitting a message to the user indicating that there is a possible error in the first address; wherein the second address closely matches the first address when a difference between numbers and characters in the first address and in the second address exceeds a threshold.
On the other hand, Zandt discloses:
in response to determining that the first address is not registered, searching, within an address space of registered ledger addresses, for a second address that closely matches the first address (determining if there is an error in the email address (e.g., a single character is wrong or misspelled). When an address is incorrect, it implies that the address is not a registered address, see Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42);
determining if the second address closely matches the first address based on a character-by-character positional comparison performed across an address space of registered ledger addresses (comparing characters of an entered email address to other common or valid (i.e., registered) address character by character to determine a close match based on correlation threshold to determine if a single character is incorrect or misspelled, see Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42); and
when the second address closely matches the first address, transmitting a message to the user indicating that there is a possible error in the first address; wherein the second address closely matches the first address when a difference between numbers and characters in the first address and in the second address exceeds a threshold (If there is an error in the email address (e.g., a single character is wrong or misspelled) then a notification is sent to the sender indicating that the entered email address contains an error or misspelling, see Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42).
Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of Di with Zandt’s teaching in order to implement above functions with reasonable expectation of success. The motivation for doing so would have been to improve functionality of the method by detecting and notifying a user of errors in an address to ensure accurate addressing and avoiding the bounce back of the write/add request.
Regarding claim 2,
the combination of Di and Zandt discloses determining that the first address is a not a registered address in the digital ledger; and searching for the second address that closely matches the first address when the first address is not a registered address (See Di: at least Fig. 8, para 6, 23, 44, and 45, and 76 and Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42, an incorrect (e.g., misspelled) address is not a registered address in the system, and in response to determining that an (incorrect) address does not match a registered address in the system, then they system search for a close match).
Regarding claim 3,
the combination of Di and Zandt discloses wherein the search for the second address and the determination that the second address closely matches the first address is executed using a regular expression algorithm (See Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42).
Regarding claim 5,
the combination of Di and Zandt discloses wherein the threshold comprises half or more of the numbers and the characters match in a same position in the first address and the second address (See Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42).
Regarding claim 6,
the combination of Di and Zandt discloses suggesting to the user that the second address is an intended address of the user (See Zandt: at least Fig. 2 and para 16, 17, 25-29 and 39-42).
Regarding claim 7,
the combination of Di and Zandt discloses wherein the digital ledger comprises a cryptocurrency system (See Di: at least Fig. 1, para 10, 13, and 23).
Regarding claim 8,
the combination of Di and Zandt discloses wherein the digital ledger comprises a blockchain system (See Di: at least Fig. 1 and para 23).
Claims 9-13 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Di Iorio et al., US 2019/0354963 (Di, hereafter) in view of Chermside, US 10,432,598.
Regarding claim 9,
Di discloses a process to improve a blockchain system by identifying a valid but an incorrect address in the blockchain system comprising:
receiving into a computer processor a request from a user to add a block to a digital ledger (See Di: at least Fig. 5, para 6, 23, and 44, receiving a write request to store/add data or block to a ledger);
determining from the request an address at which the block is proposed to
be added to the digital ledger (See Di: at least Fig. 5, para 6, 23, 44, and 45, and 68, the write request is associated with an address), and
determining if the address is registered and has been used by determining whether the address has been used in a transaction recorded in the digital ledger or in a signed message recorded in the digital ledger (See Di: at least Fig. 5, Fig. 8, para 4, 10, 23, 44, and 45, and 68).
Although, Di discloses registering a wallet and address associated with a public key, it does not explicitly teach when the address is registered but has not been used, denying the request from the user to add the block to the digital ledger, or requesting a confirmation from the user that the user wants to add the block to the digital ledger at the address; wherein requesting the confirmation comprises permitting a trial transaction to be transmitted to the address, verifying that the trial transaction reached the address, and permitting a commit transaction to be transmitted.
The Examiner notes that the execution of above underline functions is optional. They are contingent limitations. In claim 1, if the step of “denying…” is selected, then the execution of step of “or requesting a confirmation from the user that the user wants to add the block to the digital ledger at the address…comprises permitting…verifying…
and permitting…” will not be required by the claim and is optional. Therefore, this step of “or requesting a confirmation from…” will not be examined. See 2111.04.II Contingent Limitations).
On the other hand, Chermside discloses a customer account number exist and data key is not valid (has not been used), then denying the user request of access data (See Chermside: at least Fig. 3 and 8:10-24 and 10:22-35). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of Di with Chermside’s teaching in order to implement above function with reasonable expectation of success. The motivation for doing so would have been to improve functionality of the method by denying an authorized or insecure access to the user digital wallet or account.
Regarding claim 10,
the combination of Di and Chermside discloses wherein the determination that the address has been used comprises determining that the address has been used in a transaction in the digital ledger or that the address has been used in a signed message in the digital ledger (See Di: at least Fig. 8, para 6, 23, 44, and 45, and 76).
Regarding claim 11,
the combination of Di and Chermside discloses wherein the confirmation from
the user comprises: permitting the user to transmit a trial transaction to the address; verifying that the trial transaction has reached the address; and permitting the user to transmit a commit transaction to the address (the execution of step of “or requesting a confirmation from the user that the user wants to add the block to the digital ledger at the address” is optional and is not required by the claim. In claim 1 the step of “denying…” has already been selected. Therefore, this step is not required to be implemented. See 2111.04.II Contingent Limitations).
Regarding claim 12,
the combination of Di and Chermside discloses wherein the digital ledger comprises a cryptocurrency system (See Di: at least Fig. 1, para 10, 13, and 23).
Regarding claim 13,
the combination of Di and Chermside discloses wherein the digital ledger comprises a blockchain system (See Di: at least Fig. 1 and para 23).
Regarding claim 21,
the combination of Di and Chermside discloses comprising disclosing to the user to whom the address is registered (See Di: at least Fig. 1-3, Fig. 8, Fig. 10, para 10, 14, 23, 59, and 76).
Claims 14, 16-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Finlow-Bates, US 2017/0075941 in view of Abdo et al., US 2005/0278342 (Abdo, hereafter).
Regarding claim 14,
Finlow-Bates discloses a process to improve a blockchain system by identifying a valid but an incorrect address in the blockchain system comprising:
receiving into a computer processor a request from a user to add a block to a digital ledger (See Finlow-Bates: at least para 16, 29, 32, and 77, submitting data block for adding or appending into a distributed ledger);
refraining from adding the block to the digital ledger for a predetermined threshold time period, wherein the refraining includes holding the request in an escrow memory during the predetermined threshold time period, wherein the refraining is executed in the digital ledger, a hardware wallet, a software wallet, or an exchange; (See Finlow-Bates: at least para 16, 25, 28, 32, 72, 81, and 83, refusing (by waiting) to the add or include data block if the time is less than a given predetermined period of time, if the time is less than a predetermined time, the block is rejected to be added to the digital ledger. As such, the block is stored or maintained in the memory of node/device for resubmission until a proper time);
after an expiration of the predetermined threshold time period, adding the block to the digital ledger if the request has not been canceled (See Finlow-Bates: at least para 16, 25, 28, and 32, adding data block after the waiting for a predetermined period of time).
Finlow-Bates further disclose rejecting an adding data block operation if the time period is less than a threshold (See Finlow-Bates: at least para 81). However, Finlow-Bates does not expressly teach receiving a request, prior to the expiration of the predetermined threshold time period, to cancel the request to add the block to the digital ledger; and canceling the request to add the block to the digital ledger.
On the other hand, Abdo discloses receiving a request by a user to cancel an operation before expiration of appointed or predetermined time, and canceling the operation (See Abdo: at least para 21 and 52). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of Finlow-Bates with Abdo’s teaching in order to implement above function with reasonable expectation of success. The motivation for doing so would have been to improve functionality of the method by allowing a user or administrator to stop an adding operation before expiring a predetermined time period for any reasons.
Regarding claim 16,
the combination of Finlow-Bates and Abdo discloses wherein the predetermined threshold time period is created by the user or the predetermined threshold time period is created by a system operator (See Finlow-Bates: at least para 16, 25, 28, and 32 and Abdo: at least para 21 and 52).
Regarding claim 17,
the combination of Finlow-Bates and Abdo discloses wherein the refraining from adding the block to the digital ledger for the predetermined threshold time period is executed in the digital ledger, a hardware wallet, a software wallet, or an exchange (See Finlow-Bates: at least para 16, 25, 28, and 32).
Regarding claim 18,
the combination of Finlow-Bates and Abdo discloses wherein the refraining comprises holding the request in an escrow memory (See Finlow-Bates: at least Fig. 2 and para 51 and Abdo: at least para 13-14).
Regarding claim 19,
the combination of Finlow-Bates and Abdo discloses wherein the digital ledger comprises a cryptocurrency system (See Finlow-Bates: at least para 2 and 61).
Regarding claim 20,
the combination of Finlow-Bates and Abdo discloses wherein the digital ledger comprises a blockchain system (See Finlow-Bates: at least para 2, 18 and 61).
Regarding claim 22,
the combination of Finlow-Bates and Abdo discloses informing the user of the predetermined threshold time (See Finlow-Bates: at least Fig. 2 and para 51 and Abdo: at least Fig. 3 and para 13-14 and 25-27).
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.
Points of Contact
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/Hares Jami/ Primary Examiner, Art Unit 2164
06/24/2026
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