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 .
This communication is a Final Office Action in response to Applicant’s amendment filed on December 22, 2025.
Claims 1, 3, 5-6, 9-13, 15-19, 22, and 59-60 have been examined in this application.
No new information disclosure statement (IDS) has been submitted.
Claim Objections
Claims 3, 5-6, 9-13, 15-19, and 22 are objected to because of the following informalities: the claims are replete with antecedent basis issues. For instance, claim 13 recites “a set of coin serial numbers” which does not clarify if they are the same or different numbers to those claimed in claim 1. Claim 15 recites a firth condition, yet only two conditions are mentioned prior to claim 15. Claim 17 recites an eight condition yet no seventh condition is mentioned. Appropriate correction is required.
Response to Arguments
Applicant’s arguments, filed December 22, 2025, pages 12-13, with respect to claim rejections under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant argues that the claims are eligible under Pathway B since they provide “a sequence of specific interactions with the blockchain… once submitted to the blockchain result in execution of a particular transaction;” page 12. Applicant then argues that the limitations are carried out on the blockchain and requires the recited conditions that capture spending and withdrawal transactions to “validly transfer the amount of the asset,” resulting in preventing “fraudulent spending transactions, which improves the security of the system as a whole… deters malicious parties from submitting non-valid spending transactions, thereby reducing the overall load on the system.” Id. Applicant then argues the hashing claimed, and the withdrawal elements claimed including a hash puzzle are steps that cannot be done by a human mind; not abstract. Applicant further argues the last point by pointing to the limitation regarding the comparison of outputs of different cryptographic hash operations.
The Examiner respectfully disagrees. A clear prima-facie case was laid out based on MPEP §2106, incorporating the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility Guidance Update (October 2019 Update), and the Berkheimer Memo.
Under MPEP §2106, the claims are analyzed to determine whether they recite:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
If the claims recite a judicial exception, under section (1), and fail to integrate the abstract idea into a practical application, section (2), then the claims are further analyzed to determine whether they:
(3) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP §2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
The claims are found to be directed to a statutory category. The claims are also determined to recite a judicial exception; an abstract idea of merely transferring an amount of an asset based on manipulation of data without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including commercial interactions including sales activities and business relations. The Applicant’s arguments, as summarized above, are directed to the abstract idea grouping of mental processes. However, the Examiner did not place the abstract idea under mental processes. Also, based on applying the eligibility analysis of the claims, it is determined that the claims cannot be deemed eligible under Pathway B.
Now that the claims have been determined to be directed to a judicial exception, AND that the judicial exception recited by the claims is characterized under certain methods of organizing human activity, including commercial interactions such as sales activities and business relations, the claims are analyzed to determine whether they include additional elements that would amount to a practical application; Step-2A, Prong II. In conclusion, Applicant’s argument that the claims do not recite an abstract idea and that Pathway B, MPEP 2106.04(a)(2)(III)(A) is applicable is not persuasive based on the analysis of the claims in view of MPEP §2106.
Applicant’s arguments regarding additional elements and their improvement to technology are now analyzed under Step-2A, prong II in order to determine whether such elements amount to a practical application. The Examiner first notes that the claims are analyzed as a whole, and under the broadest reasonable interpretation. The claims contain limitations that are outside the scope of the claims directed to an issuing party and what the issuing party does. Such limitations include the wherein clause directed to a blockchain node and what the blockchain node does in the fourth claim limitation. Therefore, such a limitation is not given weight and is not considered when applying BRI analysis. The claims also contain conditional language or outcomes. The claims include a second wherein clause directed again to the blockchain node and including the term “when,” which is and open ended conditional term because under BRI “when” can result in the limitation never occurring. This limitation at issue is recited in the determining step, third limitation on page 3. Based on the above, the following additional elements are determined to be recited in the claims: A computer-implemented method, a blockchain, digital coins, generating a withdrawal transaction, the withdrawal transaction being a first blockchain transaction comprising an output, the output comprising a locking script comprising a cryptographic hash puzzle, the cryptographic hash puzzle comprising the cryptographic hash of the respective coin serial number, computer equipment of an issuing party, the computer equipment comprising: memory comprising one or more memory units; and processing apparatus comprising one or more processing units, wherein the memory stores code arranged to run on the processing apparatus, a computer program embodied on a non-transitory computer readable storage medium and configured so as, when run on computer equipment of an issuing party, the computer equipment performs a method of implementing a system for issuing digital coins using a blockchain, computer program embodied on a non-transitory computer-readable storage medium, and computer equipment of an issuing party.
Based on the above, including analyzing the claims under the broadest reasonable interpretation, the claims fail to disclose any additional elements that amount to a practical application. Contrary to Applicant’s arguments, the limitations argued are not considered additional elements except for the generation of the withdrawal transaction because the lock-script is based on the coil serial number. Basing a lock-script on a serial number is not unique or amounts to a technological improvement or solution to a technical field. The use of a lock-script here is linked to a coin serial number instead of any other information including for example transaction information, a random number, a seed, a value, a random value, a sender value or identifier, or a receiver value of identifier, etc. the limitation is deemed an additional element only based on the above reason. Otherwise, generation of a lock-script to withdraw or spend digital funds is not something the inventor/Applicant invented. The limitation captures what is already deemed as a standard element of digital currency exchange in blockchain; using lock-scripts [ScriptPubKey) and unlock-scripts [ScriptSig] along with determination of whether the funds are spent [UTXO]. The additional elements as a whole are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as generating data, storing data, receiving and sending data, analyzing data, and determining an outcome. The additional elements merely automate the abstract idea. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Also, the claims seem to amount to merely adding insignificant extra-solution activity to the judicial exception; MPEP 2106.05(g) and generally linking the use of the judicial exception to a particular technological environment or field of use (blockchain transaction using locking scripts); see MPEP 2106.05(h).
Finally, the claims are analyzed under Step-B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims further describe the abstract idea.
The rejection is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5-6, 9-13, 15-19, 22, and 59-60 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claims 1, 59 and 60, the claims recite “digital coins,” “each one of the digital coins,” “that one of the digital coins,” and at least “a respective one of the digital coins.” The different recited digital coins fail to recite appropriate antecedent basis, resulting in the claims being unclear as to which reference of the many references does the digital coins refer to. Likewise, the claims at issue recite “one or more conditions” twice, lacking proper antecedent basis. For at least these reasons the claims are deemed indefinite.
All dependent claims are rejected under the same rational as above and for mere dependency on the rejected claims.
Per claims 59 and 60, the claims recite “…wherein the cryptographic hash puzzle is configured to, when executed by a blockchain node alongside an unlocking script of an input of a later transaction, require the unlocking script of the later transaction to comprise the respective coin serial number corresponding to the cryptographic hash of the respective coin serial number by applying a cryptographic hash operation to the respective coin serial number and verify that a result of the cryptographic hash operation is equal to the hash of the respective coin serial number, and wherein the output of the withdrawal transaction is locked to a public key” and “… so that when executed by the blockchain node, the result of the cryptographic hash operation applied to the first coin serial is equal to a cryptographic hash of the first coin serial number included in the locking script of the withdrawal transaction.” These limitations are directed to the blockchain node and not the claimed issuing party. Therefore, these limitations are outside the scope of the claims, rendering the scope of the claims indefinite.
Per claim 1, the claim recites the same language, but since it is directed to a method, the limitations above are not rejected but simply deemed as not having any patentable weight because they amount to mere non-functional descriptive material and conditional language.
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, 5-6, 9-13, 15-19, 22, and 59-60 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1, 3, 5-6, 9-13, 15-19, 22, and 59-60 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1, 3, 5-6, 9-13, 15-19, 22, and 59-60 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of transferring an amount of an asset based on manipulation of data without significantly more.
The abstract idea is categorized under certain methods of organizing human activity. The abstract idea is further characterized by commercial interactions including sales activities and business relations. Transferring funds between entities, setting rules on how the entities can access the funds, and allowing access in response to meeting the rules clearly captures the essence of sales activities and business relations.
Claim 1, in pertinent part, recites:
A… method for implementing a system for issuing… coins… the method being performed by an issuing party and comprising:
issuing… coins to a spending party, each one of the… coins representing a respective amount of an asset redeemable by a redeeming party in exchange for that one of the… coins, wherein the… coins are not underlying digital tokens of the blockchain;
maintaining a digital record of coin serial numbers, each one of the coin serial numbers representing a respective one of the digital coins;
generating a cryptographic hash of a respective coin serial number;
generating a withdrawal transaction, the withdrawal transaction being a first blockchain transaction comprising an output, the output comprising a locking script comprising a cryptographic hash puzzle, the cryptographic hash puzzle comprising the cryptographic hash of the respective coin serial number, wherein the cryptographic hash puzzle is configured to, when executed by a blockchain node alongside an unlocking script of an input of a later transaction, require the unlocking script of the later transaction to comprise the respective coin serial number corresponding to the cryptographic hash of the respective coin serial number by applying a cryptographic hash operation to the respective coin serial number and verify that a result of the cryptographic hash operation is equal to the hash of the respective coin serial number, and wherein the output of the withdrawal transaction is locked to a public key;
obtaining a spending transaction from the blockchain or the spending party, the spending transaction being a second blockchain transaction and comprising a first coin serial number of the coin serial numbers;
determining whether a first condition of one or more conditions has been met by determining that the first coin serial number is not present in a database of spent coin serial numbers;
determining whether a second condition of one or more conditions has been met by determining that the spending transaction comprises an input for unlocking the output of the withdrawal transaction by comprising the first coin serial number so that when executed by the blockchain node, the result of the cryptographic hash operation applied to the first coin serial is equal to a cryptographic hash of the first coin serial number included in the locking script of the withdrawal transaction; and
in response to determining that each of the first and second conditions have been met, transferring the amount of the asset represented by the first coin serial number to the redeeming party; or
in response to determining that each of the first and second conditions have not been met, determining that the redeeming party is attempting to double-spend the digital coin corresponding to the first coin serial number and preventing transfer of the amount of the asset represented by the first coin serial number.
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: A computer-implemented method, a blockchain, digital coins, generating a withdrawal transaction, the withdrawal transaction being a first blockchain transaction comprising an output, the output comprising a locking script comprising a cryptographic hash puzzle, the cryptographic hash puzzle comprising the cryptographic hash of the respective coin serial number, computer equipment of an issuing party, the computer equipment comprising: memory comprising one or more memory units; and processing apparatus comprising one or more processing units, wherein the memory stores code arranged to run on the processing apparatus, a computer program embodied on a non-transitory computer readable storage medium and configured so as, when run on computer equipment of an issuing party, the computer equipment performs a method of implementing a system for issuing digital coins using a blockchain, computer program embodied on a non-transitory computer-readable storage medium, and computer equipment of an issuing party. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as manipulating data, including receiving and generating data, analyzing data, and outputting a result. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore, the claims seem to amount to merely adding insignificant extra-solution activity to the judicial exception; MPEP 2106.05(g) and generally linking the use of the judicial exception to a particular technological environment or field of use; see MPEP 2106.05(h).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims further define the abstract idea and fail to include any additional elements that would amount to a practical application or significantly more than the judicial exception as discussed above. None of the dependent claims include additional elements that would integrate the abstract idea into a practical application.
The claims are not patent eligible.
References
The claims as a whole are replete with indefiniteness and other clarity issues. As a result a clear scope of the claims as intended by the Applicant is not yet clearly determinable. As a result, the claims at this point in prosecution are deemed non-obvious over the prior art; the claims are novel over the prior art.
U.S. Patent 11651429 to Hoshizuki teaches all of the claimed limitations except for the elements associated with the coin serial number. The date of the reference falls after the earliest priority date of the instant Application.
Chinese Application Publication CN107710258 to Andrade teaches issuing and validating the use of digital currency.
Non-patent literature titled “Blindly Signed Contracts: Anonymous On-Blockchain and Off-Blockchain Bitcoin Transaction” to Heilman et al. (herein Heilman) teaches what Applicant deems as their invention. See all rejections made under 35 USC 102, which are incorporated herewith.
Furthermore, Chinese Patent Application Publication 115836314 to Alessio et al. teaches computer-implemented method for identifying double spending attempts at blockchain transaction outputs, wherein the method is performed by a sending entity and comprises: generating a first probability filter, wherein the first probability filter encodes a respective identifier for each of a first plurality of spent blockchain transaction outputs available to the sending entity; and making the first probability filter available to a receiving entity. A method for identifying dual-cost attempts at blockchain transaction output, wherein the method is performed by a receiving entity and comprises: obtaining a first probability filter from a sending entity, wherein the first probability filter encodes a respective identifier for each of a first plurality of expended blockchain transaction outputs available to the sending entity; obtaining an indication of one or more blockchain transaction outputs; and determining whether the one or more blockchain transaction outputs are double-spending attempts based on whether there are respective identifiers of the one or more blockchain transaction outputs in the first probability filter. Alessio teaches using outputs of blockchain transaction and determining based on these outputs whether or not transaction authentication should be approved in order to overcome the double-spending issues that rise with digital currency transactions.
Finally, the following reference is further provided that also captures the majority of what Applicant claims as their invention: Chinese Patent Application Publication 118476186 to Molloy et al. Molloy teaches A method performed in a system comprising a first party and a second party, the method comprising: generating, by the first party, a template of a first transaction having an input based on an output from a previous transaction associated with the second party; generating, by the first party, a message based on the template of the first transaction; generating, by the first party, a secret based on the message; generating, by the first party, a value based on the secret, wherein the secret cannot be derived from the value; generating, by the first party, a first puzzle transaction, wherein a first locking script of the first puzzle transaction includes a proof of knowledge configured to require an unlocking script to include the secret; issuing, by the first party, the first puzzle transaction to a first blockchain; obtaining, by the second party, the value based on the secret; signing, by the second party, the value based on the secret to create a signature; transmitting the signature from the second party to the first party; including, by the first party, the signature in the unlocking script of the first transaction, and then sending the first transaction to a second blockchain; determining, by the second party, the message and the secret from the first transaction on the second blockchain; and creating, by the second party, a second transaction that unlocks the first output of the first puzzle transaction based on the secret, and committing the second transaction to the first blockchain. Malloy teaches utilizing hashes and signatures to insure validation of transactions based on unused or certified funds available. The following as a clear indication of what Malloy teaches: According to an output-based transaction protocol, such as bitcoin, when a party 103, such as an individual user or organization, wishes to issue a new transaction 152j (either by an automated program employed by the party or manually), the issuer sends the new transaction from its computer terminal 102 to the recipient. The issuer or recipient will eventually send the transaction to one or more blockchain nodes 104 of the network 106 (now typically a server or data center, but in principle other user terminals are possible as well). It is also not precluded that the party 103 issuing the new transaction 152j may send the transaction directly to one or more blockchain nodes 104, and in some examples, may not send the transaction to the recipient. The blockchain nodes 104 that receive the transaction check whether the transaction is valid according to the blockchain point protocol applied at each blockchain node 104. The blockchain point protocol typically requires the blockchain node 104 to check whether the encrypted signature in the new transaction 152j matches the expected signature, depending on the previous transaction 152i in the ordered sequence of transactions 152. In such an output-based transaction protocol, this may include checking whether the cryptographic signature or other authorization of party 103 included in the input of new transaction 152j matches a condition defined in the output of the previous transaction 152i assigned by the new transaction, where the condition typically includes checking at least whether the cryptographic signature or other authorization in the input of new transaction 152j unlocks the output of the previous transaction 152i to which the input of the new transaction is linked. The condition may be defined, at least in part, by a script included in the output of the previous transaction 152i. Or this may be determined solely by the block link point protocol, or may be determined by a combination thereof. Either way, if the new transaction 152j is valid, the blockchain node 104 forwards it to one or more other blockchain nodes 104 in the blockchain network 106. These other blockchain nodes 104 apply the same tests according to the same blockchain point protocol and thus forward the new transaction 152j to one or more other nodes 104, and so on. In this way, new transactions propagate throughout the network of blockchain nodes 104.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
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