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 .
Status of Claims
This action is in response to remarks received 11/24/2025.
Application 17/990,270 claims earliest priority from provisional application 63/281,072, filed 11/18/2021.
Claim 1 has been amended.
Claims 4-6 previously canceled.
Claim 1 being independent and claims 2, 3 and 7-11 dependent claims.
Claims 1-3 & 7-11 are currently pending and have been examined.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the 35 U.S.C. 101 rejection of the claims, has been fully considered, however, the examiner respectfully disagrees.
On page 9, applicant argues claim 1 is directed to a practical application, however; the examiner respectfully disagrees. The newly amended language, including automatically recording, retrieving and determining data, are not specific and merely using generic computing components (i.e. processor, blockchain, database, wallet, smart contract) as tools to automate the process without significantly more. In addition, the storing/recording and receiving/transmitting are also interpreted as extra-solution activity.
The Federal Circuit has indicated that a claim must include more than conventional implementation on generic components or machinery to qualify as an improvement to an existing technology. The Supreme Court in Alice Corp. cautioned that merely limiting the use of an abstract idea "to a particular technological environment" or implementing the abstract idea on a "wholly generic computer" is not sufficient as an additional feature to provide "practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself." The current claims are not meaningful limitations beyond simply applying the abstract idea on generic computing components. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea, see MPEP 2106.05 (f). Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012).
Using a computer and blockchain technology, including smart contracts, to make trading decisions without a human placing the trades does not render the system a specialized particular machine. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Hence these additional elements do not add anything significantly more than an abstract idea. The current claims are not indicative of the USPTO examples of integration into a practical application. There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally applying the abstract idea to a particular technological environment as a result of performing the claimed method. The claimed sequence of steps comprises only “conventional steps, specified at a high-level of generality,” which is insufficient to supply an “inventive concept.” Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete. Hence the claims do not recite significantly more than an abstract idea.
Performing operations in succession does not render the render a specialized system nor recite more than merely automating a manual process, rather, akin to parallel processing, which the courts have identified as being abstract. When taking all the additional elements from the claims, the claims are a mere automation of manual processes and increasing the speed of a process where these purported improvements come solely from the capabilities of a general-purpose computer are not sufficient to show an improvement in computer-functionality. The 3 trading operations mentioned above can be performed manually using generic computing technology including blockchain network. The newly amended language does not recite more than automation of a manual process.
The claims are not necessarily rooted in computer technology, the computer and blockchain network are merely a platform on which the abstract idea is implemented, and the additional elements are recited at a high-level of generality i.e., as a generic processor performing generic pre-programmed functions; thus, do not solve technological challenge.
As mentioned above, the blockchain is a generic computing technology with a generic computing environment with rules and operations that can be generically manually modified using generic computing components. A smart contract, by its very nature, is not necessarily rooted in a blockchain technology nor does it address blockchain-specific challenges. All transaction taking place using a blockchain are not necessarily cryptographic in nature and do necessarily require complex and high-performance computing resources to process. The blockchain is merely invoked as a tool to automate a business process and does not recite more than generic computing technology. With regard to automating a manual process, all of the recited steps can be performed using generic computing technology and the blockchain network is not necessary to perform the recited steps. The additional 3 recitation of automation operations by the smart contract does not make the smart contract specific.
In Desjardins, the Board found eligibility because the claims were directed to a specific technical improvement in computer functionality. The claims in Desjardins recited how the computer system operated in a non-generic manner to solve a computer-centric problem, rather than merely using a computer as a tool to perform an abstract idea.
In contract, the present claims do not recite any comparable technical improvement. Instead, the claims are directed to an abstract idea, which is a longstanding human activity. Unlike Desjardins, the claims do not recite any non-conventional data structures, protocols, or control flow; nor do the claims identify a computer-specific problem or a technical limitation of prior computer systems.
Applicant’s argument that the claims are not abstract because they include numerous and specific limitations is not persuasive. While the claims recite multiple steps and components, the inclusion of additional detail does not, by itself, render the claims patent eligible. When considered as a whole, the claims remain directed to an abstract idea, and the additional limitations merely implement the abstract idea using generic computer components performing routine and conventional functions.
At best, Applicant has claimed features that attempt to improve an abstract idea. However, an improved abstract idea is still abstract and not a specific technological implementation, (SAP America v. Investpic *2-3 (‘“We may assume that the techniques claimed are “groundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”’
Accordingly, the present claims do not integrate the abstract idea into a practical application under Step 2A, Prong Two. Further, when considered individually and in combination, the additional elements do not amount to significantly more than the abstract idea itself and therefore do not provide an inventive concept under Step 2B.
The dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the dependent claims are directed to the same abstract idea as independent claim it depends on, and the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
For the above reasoning, the 35 U.S.C. 101 rejection of claims 1-3 & 7-11 is 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 & 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without practical application or significantly more. The claims fall within at least one of the four categories of patent eligible subject matter because independent claim 1 directed to a system; Step 1-yes.
Under Step 2A, Prong 1, representative claim 1 recites a series of steps for trading assets; i.e. business relation, and thus grouped as a certain method of organizing human activity. As such, the claim as a whole and the limitations in combination recite an abstract idea. Specifically, the limitations of representative claim 1, stripped of all additional elements, recite the abstract idea as follows:
A trading system including:
a computerized decentralized autonomous organization (DAO) smart contract set representing one or more DAO smart contracts stored and operating, wherein the DAO smart contract set controls a DAO cryptoasset wallet,
wherein said DAO smart contract set electronically stores a whitelist representing public token holder cryptoasset wallet addresses operating from which said DAO cryptoasset wallet is authorized to receive tokens
wherein said DAO smart contract set automatically queries and updates a blockchain-stored data section of said DAO smart contract set to match said whitelist of public token holder cryptoasset wallet addresses,
wherein said DAO cryptoasset wallet receives a request to receive tokens to be transferrered to said DAO cryptoasset wallet, said DAO smart contract set compares the public wallet address of the sender’s cryptoasset wallet to the whitelisted public wallet addresses stored in section of said DAO smart contract and only allows the transfer to occur when the public wallet address of the sender matches one of the whitelisted public wallet addresses stored in data section of said DAO smart contract set,
wherein for each public wallet address that has transferred tokens to said DAO cryptoasset wallet, said DAO smart contract set automatially records the quantity of tokens that have been received from each of said public wallet addresses wherein the total quantity of all tokens that have been received from all public wallet addresses is a pledged quantity of cryptoassets,
wherein said DAO smart contract set includes storing a predetermined price spread target associated with a predetermined percentage of said pledged quantity of cryptoassets stored in said DAO cryptoasset wallet; wherein said DAO smart contract set includes receiving commodity price data for a commodity;
wherein said DAO smart contract set includes retrieving said pledged quantity of cryptoassets and receiving cryptoasset and receiving cryptoasset price data for said cryptoasset;
wherein, when the difference between said commodity price data and said cryptoasset price data exceeds said price spread target, said DAO smart contract set automatically retrieves said pledged quantity of cryptoassets and automatically determines a cryptoasset quantity target by multiplying said pledged quantity of cryptoassets stored in said DAO cryptoasset wallet by said predetermined percentage,
wherein said DAO smart contract set converts said cryptoasset quantity target to a commodity quantity target based on said commodity price data,
retrieves a coin conversion cost to convert said cryptoasset to a cryptographic stablecoin,
wherein said DAO smart contract set automatically initiates computerized trading to exchange said cryptoasset quantity target of said cryptoasset for a stable coin target amount of said cryptographic stablecoin,
wherein said DAO smart contract set automatically initiates a cryptographic burn of said stablecoin target amount of said cryptographic stablecoin to generate a fiat currency target amount of a fiat currency, and
wherein said DAO smart contract set automatically initiates computerized trading of said commodity based on said commodity quantity target using said fiat currency target amount.
The claimed limitations, identified above, recite a system that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction, but for the recitation of generic computer components. There is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea groupings. Thus, claim 1 recites an abstract idea.
Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements: at least a computerized decentralized autonomous organization, application programming interface, and blockchain are recited at a high-level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
The claimed steps describe the concept of trading commodities which corresponds to concepts identified as abstract ideas by the courts, such as: Alice, Electric Power Group, Fairwarning, Digitech, Intellectual Ventures LLC, v. Capital One Bank, and OIP “The claim limitations identified as abstract ideas need not be an identical to claim limitations identified as the analogous abstract ideas identified by the courts. Judicial precedence for this practice can be found in, BuySafe, Inc. v. Google Inc. 765 F.3d 1350 (Fed. Cir. 2014) where the courts analogized the mitigating of the risk of online purchases to that of hedging financial transactions identified in Alice Corp v. CLS Bank International. …”
All of these concepts relate to organizing human activity (see July 2015 Update: Interim Eligibility Guidance pages 4-7 for abstract idea found by the court) in which a person is able to manage data and manipulate data for end means, which includes initiate trading of said commodity based on said commodity quantity target. The concept described in claim 1 is not meaningfully different than those organizing human activity found by the courts to be abstract ideas.
(See Alice) the Supreme Court expressly declined to limit the categories of unpatentable abstract ideas as suggested by Patent Owner.
As such, the description in claim 1 of initiate trading of said commodity based on said commodity quantity target is an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea.
The claim recites the additional limitations of the additional computer elements (supra) and programmed to perform the method steps (storing, determining, converting, initiating, etc.) are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
The use of generic computer components for trading commodities does not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea).
Considering claims 1-3 & 7-11 as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the dependent claims are directed to the same abstract idea as independent claim it depends on, and the additional recited limitations fail to establish that the claims are not directed to an abstract idea [Supra].
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696