DETAILED ACTION
The present application, filed on 11/1/2022 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 4/6/2026.
a. Claims 1, 10 are amended
Overall, claims 1-18 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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 1-18 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-9 are directed to a system, and claims 10-18 are directed to a system.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
[INDEPENDENT CLAIMS]
Per Step 2A.1. Independent claim 1, (which is representative of independent claims 10) is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 1 (which is representative of independent claims 10) recite an abstract idea, shown in bold below:
[A] A digital asset-based interaction system comprises: a digital asset-based interaction computing entity operable to facilitate one or more digital asset- based interactions between a plurality of computing entities of the digital asset-based interaction system
[B] provide system digital assets to the digital asset-based interaction computing entity; and
[C] a first computing entity of the plurality of computing entities, wherein the first computing entity includes a smart contract digital asset management unit including a digital asset-based interaction interface,
[D] wherein the digital asset-based interaction interface is associated with the digital asset-based interaction computing entity, and
wherein the digital asset-based interaction interface is operable to:
[E] interface with the digital asset-based interaction computing entity to execute a digital asset-based interaction between the first computing entity and a second computing entity of the plurality of computing entities,
[F] wherein the digital asset-based interaction includes a real-time digital asset-based interaction process and a nonreal-time digital asset-based interaction process, and
[G] wherein the first computing entity uses first digital assets for the digital asset-based interaction and the second computing entity accepts assets in a desired asset format; and
[H] wherein the digital asset-based interaction interface includes a self-enforcing smart contract module,
wherein the self-enforcing smart contract module is operable to:
[I] securely store, without a private key, the first digital assets in an account of a self-enforcing smart contract associated with the first computing entity and the digital asset-based interaction computing entity,
[J] wherein the self-enforcing smart contract is backed by at least some of the system digital assets stored in a stake pool of a digital asset backing account of the smart contract digital asset management unit, and
wherein the self-enforcing smart contract is operable to
[K] in accordance with an irreversible smart contract code: connect with a distributed ledger technology network associated with the first digital assets to automatically facilitate the real-time digital asset-based interaction process and the nonreal-time digital asset-based interaction process on behalf of the computing entity and the digital asset-based interaction computing entity.
Independent claim 1 (which is representative of independent claims 10) recites: a digital interaction (i.e. commerce) between two computers ([E]); storing digital assets ([I]); and exchanging digital assets in real-time ([K]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “buying, selling, trading or keeping in custody digital assets”.
This is a combination that, under its broadest reasonable interpretation, covers agreements in the form of marketing, sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is concluded that independent claim 1 (which is representative of independent claim 10) recites an abstract idea that corresponds to a judicial exception.
[INDEPENDENT CLAIMS – QUALIFIERS]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the added elements “a first computing entity,” and “a smart contract digital assests management unit,” recite computing elements at a high level of generality, generally linking the use of a judicial exception to a particular technological environment (see MPEP 2106.05(h)), or merely using a computer as a tool to perform an abstract idea (MPEP 2106.05(f)). Further, the qualifiers “wherein the digital asset-based interaction interface is associated with the digital asset-based interaction computing entity”; “wherein the digital asset-based interaction includes a real-time digital asset-based interaction process and a nonreal-time digital asset-based interaction process”; “wherein the first computing entity uses first digital assets for the digital asset-based interaction and the second computing entity accepts assets in a desired asset format”; “wherein the digital asset-based interaction interface includes a self-enforcing smart contract module”; and “wherein the self-enforcing smart contract is backed by at least some of the system digital assets”, as applied to the digital asset-based interaction interface, the digital-based interaction computer, the digital-based interaction, the first computing entity, and the self-enforcing smart contract, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These qualifiers of the independent claims do not preclude from carrying out the identified abstract idea “buying, selling, trading or keeping in custody digital assets”, and do not serve to integrate the identified abstract idea into a practical application.
[INDEPENDENT CLAIMS – ADDITIONAL STEPS]
The additional steps in the independent claims, shown not bolded above, recite: providing digital assets ([B]), When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“buying, selling, trading or keeping in custody digital assets”) into a practical application (see MPEP 2106.05(f)(2)).
Therefore, the additional steps of independent claim 1 (which is representative of independent claims 10) do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Independent claim 1 (which is representative of independent claims 10) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 10 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claim 2, which is representative of dependent claim 11, recites:
withdraw at least a portion of the first digital assets from the account of the self-enforcing smart contract; and
transfer at least a portion of the first digital assets from the account of the self-enforcing smart contract.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “buying, selling, trading or keeping in custody digital assets”. The elements in this dependent claim are comparable to “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“buying, selling, trading or keeping in custody digital assets”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“buying, selling, trading or keeping in custody digital assets”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“buying, selling, trading or keeping in custody digital assets”).
Therefore, dependent claim 2 (which is representative of dependent claim 11) is deemed ineligible.
Dependent claim 3, which is representative of dependent claim 12, recites:
securely store one or more other digital assets in the account of the self-enforcing smart contract.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “buying, selling, trading or keeping in custody digital assets”. The elements in this dependent claim are comparable to “storing and retrieving information in/from memory”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“buying, selling, trading or keeping in custody digital assets”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“buying, selling, trading or keeping in custody digital assets”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“buying, selling, trading or keeping in custody digital assets”).
Therefore, dependent claim 3 (which is representative of dependent claim 12) is deemed ineligible.
Dependent claim 4, which is representative of dependent claim 13, recites:
automatically facilitate the real-time digital asset-based interaction process on behalf of the digital asset-based interaction computing entity by:
exchanging an amount of the first digital assets for a substantially equivalent amount of the assets in the desired asset format; and
providing the substantially equivalent amount of the assets in the desired asset format to the second computing entity.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “buying, selling, trading or keeping in custody digital assets”. The elements in this dependent claim are comparable to agreements in the form of sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is concluded that independent claim 4 (which is representative of independent claim 13) recites an abstract idea that corresponds to a judicial exception. In addition, when considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“buying, selling, trading or keeping in custody digital assets”).
Therefore, dependent claim 4 (which is representative of dependent claim 13) is deemed ineligible.
Dependent claim 5, which is representative of dependent claim 14, recites:
automatically facilitate the nonreal-time digital asset-based interaction process on behalf of the digital asset-based interaction computing entity by:
locking an amount of the at least the portion of the system digital assets to back the digital asset-based interaction;
implementing a nonreal-time verification process associated with the first digital assets to verify obtaining the first digital assets;
when the obtaining the first digital assets is verified by the nonreal-time verification process:
unlocking the amount of the at least the portion of the system digital assets; and
when the obtaining the first digital assets is not verified by the nonreal-time verification process:
consuming the amount of the at least the portion of the system digital assets.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “buying, selling, trading or keeping in custody digital assets”. The elements in this dependent claim are comparable to agreements in the form of sales activities or behaviors, business relationships (e-commerce), which falls under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is concluded that independent claim 5 (which is representative of independent claim 14) recites an abstract idea that corresponds to a judicial exception. In addition, when considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“buying, selling, trading or keeping in custody digital assets”).
Therefore, dependent claim 5 (which is representative of dependent claim 14) is deemed ineligible.
Dependent claim 6, which is representative of dependent claim 15, recites:
provide one or more data inputs to the self-enforcing smart contract to indicate one or more of: the initiation of the digital asset-based interaction; information pertaining to the digital asset-based interaction; and a request regarding management of the first digital assets.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “buying, selling, trading or keeping in custody digital assets”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“buying, selling, trading or keeping in custody digital assets”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“buying, selling, trading or keeping in custody digital assets”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“buying, selling, trading or keeping in custody digital assets”).
Therefore, dependent claims 6, which is representative of dependent claim 15, is deemed ineligible.
Dependent claims 7-9, which are representative of dependent claims 16-18, respectively, recite:
wherein the information pertaining to the digital asset-based interaction includes one or more of: an amount of the digital asset-based interaction; an item involved in the digital asset-based interaction; the type of the first digital assets; an identifier of the first computing entity; and an identifier of the second computing entity.
wherein the first computing entity further comprises: a display; and one or more scanning devices.
wherein the smart contract digital asset management unit further comprises: a scanning interface coupled to the one or more scanning devices.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements – asset-based interaction; the first computing entity; the smart contract digital asset management unit – and as such, cannot change the nature of the identified abstract idea (“buying, selling, trading or keeping in custody digital assets”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 7-9 (which are representative of dependent claims 16-18, respectively) are deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claims of the instant application, considered individually, or as a as a whole, as an ordered combination, do not amount to significantly more (see MPEP 2106.07(a)II).
In sum, Claims 1-18 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112(a)
Written Description (New Matter)
The following is a quotation of 35 U.S.C. 112(a):
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.
The following is a quotation of the relevant portion of 35 U.S.C. §132(a):
No amendment shall introduce new matter into the disclosure of the invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a), for failing to comply with the written description requirement. MPEP 2163.06 stipulates – If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) – written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
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Claims 1, 10 have been amended by Applicant to include the limitation “securely store, without a private key, the first …” and “in accordance with an irreversible smart contract code …” The amended limitations have no support in the specification, drawings or initial set of claims. ss
As per claims 1, 10 Applicant has not pointed out where the amended claim limitations are supported, nor does there appear to be a written description of the claim limitation “securely store, without a private key, the first …” in the application as filed, the drawings or the initial set of claims. Moreover, the disclosure, as filed, discloses at [0129] wallets storing digital assets, including private key information, which teaches away from the amended claim limitation.
The remainder of the claims are rejected by virtue of dependency. The reference is provided for the purpose of compact prosecution.
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 difference 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 the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over James et al (US 11,200,569), in view of Filter et al (US 20220076334).
Regarding Claims 1, 10: James discloses: A digital asset-based interaction system comprises: a digital asset-based interaction computing entity operable to facilitate one or more digital asset- based interactions between a plurality of computing entities of the digital asset-based interaction system, one or more staking computing entities operable to {see at least fig1, rc105, rc140, rc145, (337)-(338)/[67:35-68:13], (677)/[112:32-52], (344)-(347)/[69:32-70:65] computers for asset-based interactions}
provide system digital assets to the digital asset-based interaction computing entity; and a first computing entity of the plurality of computing entities, wherein the first computing entity includes a smart contract digital asset management unit including a digital asset-based interaction interface, {see at least fig13A-fig13H, (164)-(197)/[33:1-36:30] computing entity including smart contract}
wherein the digital asset-based interaction interface is associated with the digital asset-based interaction computing entity, and {see at least fig1, rc16, [0038] the interface as a link}
wherein the digital asset-based interaction interface is operable to:
interface with the digital asset-based interaction computing entity to execute a digital asset-based interaction between the first computing entity and a second computing entity of the plurality of computing entities, {see at least fig1, rc110a-rc110n, (338)/[67:60-68:13] digital asset client (reads on interface for digital asset-based interaction); fig1, rc120, rc115, (338)/[67:60-68:13] interaction source code and ledger (reads on digital asset-based interaction)}
wherein the digital asset-based interaction includes a real-time digital asset-based interaction process and a nonreal-time digital asset-based interaction process, and {see at least (261)/[46:13-48] real-time or substantially real-time; (356)/[72:25-52} periodic or aperiodic reconciliation (reads on non-real-time)}
James does not disclose; however, Filter discloses:
wherein the first computing entity uses first digital assets for the digital asset-based interaction and the second computing entity accepts assets in a desired asset format; and {see at least fig1, rc12, rc16, rc18, [0036]-[0040] the interface as a link}
wherein the
securely store, without a private key, the first digital assets in an account of a
wherein the
wherein the digital asset-based interaction includes a real-time digital asset-based interaction process and a nonreal-time digital asset-based interaction process, and {see at least fig21, operation2, [0249]- [0260] real time exchange; [0185]-[0189] non-real time reconciliation}
wherein the digital asset-based interaction interface includes a
wherein the
in accordance with an irreversible smart contract code: connect with a distributed ledger technology network associated with the first digital assets to automatically facilitate the real-time digital asset-based interaction process and the nonreal-time digital asset-based interaction process on behalf of the computing entity and the digital asset-based interaction computing entity. {see at least fig21, operation2, [0249]- [0260] real time exchange; [0185]-[0189] non-real time reconciliation; [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17] (self-enforcing reads on automatically)}
… self-enforcing smart contract … {see at least [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17]}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify James to include the elements of Filter. One would have been motivated to do so, in order to automatically execute the terms of the agreement. In the instant case, James evidently discloses managing digital assets in real-time and non-real time. Filter is merely relied upon to illustrate the functionality of self-enforcing smart contract and real-time and non-real-time exchanges in the same or similar context. Since both managing digital assets in real-time and non-real time, as well as self-enforcing smart contract and real-time and non-real-time exchanges are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by James, as well as Filter would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over James / Filter.
Regarding Claims 2, 11: James, Filter discloses the limitations of Claims 1, 10. James further discloses: wherein the
withdraw at least a portion of the first digital assets from the account of the
transfer at least a portion of the first digital assets from the account of the
Filter further discloses:
… self-enforcing smart contract … {see at least [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17]}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify James, Filter to include additional elements of Filter. One would have been motivated to do so, in order to automatically execute the terms of the agreement. In the instant case, James, Filter evidently discloses managing digital assets in real-time and non-real time. Filter is merely relied upon to illustrate the additional functionality of self-enforcing smart contract in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claims 3, 12: James, Filter discloses the limitations of Claims 2, 10. James further discloses: wherein the
securely store one or more other digital assets in the account of the
Filter further discloses:
… self-enforcing smart contract … {see at least [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17]}
Iy would have been obvious to one of ordinary skill in the art, at the time of filing, to modify James, Filter to include additional elements of Filter. One would have been motivated to do so, in order to automatically execute the terms of the agreement. In the instant case, James, Filter evidently discloses managing digital assets in real-time and non-real time. Filter is merely relied upon to illustrate the additional functionality of self-enforcing smart contract in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claims 4, 13: James, Filter discloses the limitations of Claims 1, 10. James further discloses: wherein the
exchanging an amount of the first digital assets for a substantially equivalent amount of the assets in the desired asset format; and {see at least (773)/[124:53-125:18] purchase price (reads on equivalent amount of desired assets); (867)/[149:25-43] digital asset price (reads on equivalent amount of desired assets)}
providing the substantially equivalent amount of the assets in the desired asset format to the second computing entity. {see at least (724/[125:19-22] accepting payment methods (readds on providing equivalent amount of assets)}
Filter further discloses:
… self-enforcing smart contract … {see at least [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17]}
automatically facilitate the real-time digital asset-based interaction process on behalf of the digital asset-based interaction computing entity by: {see at least fig21, operation2, [0249]- [0260] real time exchange; [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17] (self-enforcing reads on automatically)}
Itwould have been obvious to one of ordinary skill in the art, at the time of filing, to modify James, Filter to include additional elements of Filter. One would have been motivated to do so, in order to automatically execute the terms of the agreement. In the instant case, James, Filter evidently discloses managing digital assets in real-time and non-real time. Filter is merely relied upon to illustrate the additional functionality of self-enforcing smart contract in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claims 5, 14: James, Filter discloses the limitations of Claims 1, 10. James further discloses: wherein the
locking an amount of the at least the portion of the system digital assets to back the digital asset-based interaction; {see at least (124)/[28:66-29:14], (200)-(215)/[36:39-38:17] locking funds}
implementing a nonreal-time verification process associated with the first digital assets to verify obtaining the first digital assets; {see at least (668)/[11014-32] verify/audit the amount of digital assets in wallet}
when the obtaining the first digital assets is verified by the nonreal-time verification process:
unlocking the amount of the at least the portion of the system digital assets; and {see at least (124)/[28:66-29:14], (200)-(215)/[36:39-38:17] unlocking funds}
when the obtaining the first digital assets is not verified by the nonreal-time verification process:
consuming the amount of the at least the portion of the system digital assets. {see at least (124)/[28:66-29:14], (200)-(215)/[36:39-38:17] smart contract transaction completed (reads on consuming the digital assets), conducting operations/transactions}
Filter further discloses:
… self-enforcing smart contract … {see at least [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17]}
automatically facilitate the nonreal-time digital asset-based interaction process on behalf of the digital asset-based interaction computing entity by: {see at least [0185]-[0189] non-real time reconciliation; [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17] (self-enforcing reads on automatically)}
I would have been obvious to one of ordinary skill in the art, at the time of filing, to modify James, Filter to include additional elements of Filter. One would have been motivated to do so, in order to automatically execute the terms of the agreement. In the instant case, James, Filter evidently discloses managing digital assets in real-time and non-real time. Filter is merely relied upon to illustrate the additional functionality of self-enforcing smart contract in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claims 6, 15: James, Filter discloses the limitations of Claims 1, 10. James further discloses: wherein one or more of the digital asset-based interaction computing entity and the
provide one or more data inputs to the
Filter further discloses:
… self-enforcing smart contract … {see at least [abstract], [0043], [0066] [claims 1, 6, 8, 10, 15, 17]}
It would have been obvious to one of ordinary skill in the art, at the time of filing, to modify James, Filter to include additional elements of Filter. One would have been motivated to do so, in order to automatically execute the terms of the agreement. In the instant case, James, Filter evidently discloses managing digital assets in real-time and non-real time. Filter is merely relied upon to illustrate the additional functionality of self-enforcing smart contract in the same or similar context. Since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claims 7, 16: James, Filter discloses the limitations of Claims 6, 15. James further discloses:
wherein the information pertaining to the digital asset-based interaction includes one or more of: an amount of the digital asset-based interaction; an item involved in the digital asset-based interaction; the type of the first digital assets; an identifier of the first computing entity; and an identifier of the second computing entity. {see at least (15)/[6:57-7:51] payment amount (reads on amount of interaction)}
Regarding Claims 8, 17: James, Filter discloses the limitations of Claims 1, 10. James further discloses:
wherein the first computing entity further comprises: a display {see at least (830)/[141:10-18] touch screen (reads on display)}; and one or more scanning devices. {see at least (830)/[141:10-18] scanner}
Regarding Claims 9, 18: James, Filter discloses the limitations of Claims 8, 17. James further discloses:
wherein the smart contract digital asset management unit further comprises: a scanning interface coupled to the one or more scanning devices. {see at least (843)/[143:55-144:28] stored from scanners (implicitly reads on scanning interface connecting a scanner)}
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20190318424 A1 2019-10-17 30 McWilliams; John et al. SYSTEMS AND METHODS FOR IMPLEMENTING A BLOCKCHAIN-BASED MONEY TRANSFER - Systems and methods for implementing blockchain-based money transfer transactions between a sending party and a receiving party are disclosed. The money transfer transactions may utilize one or more cryptocurrency transactions. The disclosed systems and methods may identify optimum cryptocurrencies and/or cryptocurrency exchanges to be used to facilitate the money transfer transactions, and may utilize aggregation techniques and/or forecasting techniques to more efficiently handle money transfer transactions. The disclosed systems and methods may also implement various authentication and identification techniques to improve the security and compliance of money transfer transactions.
US 20210374791 A1 2021-12-02 23 Kim; Peter Jihoon SYSTEM AND METHOD FOR ON-CHAIN REWARDS - [0013] The system and method disclosed herein provide on-chain cryptocurrency rewards processing that reduces (or eliminates) off-chain processing required for a user to receive cryptocurrency rewards. The system includes or is used with a rewards smart contract (e.g., 110 shown in FIG. 1) (executed by a blockchain network, e.g., 101). The smart contract can interact with one or more user digital wallets (e.g., 120), and optionally interact with a token rewards administrator system (e.g., 130), a wrapper smart contract (e.g., 133), and/or other components. The system can optionally include a KYC (Know Your Customer) service system (e.g., 140). In variants, at least one component of the system performs at least a portion of the method. The method includes at least one of: performing identity verification S205; processing a deposit S210; processing a reward S220; and processing a withdrawal S230. In variants, at least a portion of the method is performed by using the rewards smart contract.
US 20210089677 A1 2021-03-25 6 Qian; Dejun et al. METHOD FOR PERFORMING SEGMENTING LOCKING AND MERGING CONTROL OF ENCRYPTED DIGITAL ASSETS BASED ON TIME DIMENSION - A method for performing segmenting locking and merging control of encrypted digital assets based on time dimension is provided. The method being mainly provided to achieve segmenting locking and merging control of encrypted digital assets by adding a time attribute to encrypted digital asset. Using the method for performing segmenting locking and merging control of encrypted digital assets based on time dimension of the present invention, through the processing of encrypted digital assets in the time dimension, which not only can use smart contracts or hash locking to realize the automated transfer of encrypted digital assets in the future, and the transferred encrypted digital asset before the set time, also can transfer and transaction; meanwhile, since the segmentation object is based on the assets currently held by the user, therefore the deterministic payment of future value rights also can be ensured, has a wider range of applications.
US 10373129 B1 2019-08-06 85 James; Daniel William Halley et al. System, method and program product for generating and utilizing stable value digital assets - (In recent times, using blockchain technology and/or tokens to track inventory, including potentially, equities or shares in a fund has been a subject of a lot of discussion. Moreover, the use of smart contracts to generate tokens on a blockchain have also become the subject of a lot of discussion. One of the defining characteristics of a blockchain is its immutability. As such, current blockchain technology make it difficult to generate new tokens using smart contracts on an underlying blockchain, like Ethereum, which allows for greater flexibility in updating the smart contract coding as well as providing different thresholds of permission to perform essential functions like generate (or “print”) new tokens, distribute new tokens and/or destroy (or “burn”) existing tokens using current blockchain technology. Accordingly, it would be beneficial to provide for a method, system and program product that provide greater flexibility in updating the smart contract coding as well as providing different thresholds of permission to perform essential functions like generate (or “print”) new tokens, distribute new tokens and/or destroy (or “burn”) existing tokens using current blockchain technology and thus avoid the problems discussed above.
US 11139955 B1 2021-10-05 297 So; Michael et al. Systems, methods, and program products for loaning digital assets and for depositing, holding and/or distributing collateral as a token in the form of digital assets on an underlying blockchain - The present invention relates to a method, system, and program product for depositing, holding and/or distributing collateral in the form of a stable value token for a security token, the tokens being on the same underlying blockchain. Furthermore, the present invention relates to methods, systems and program products for lending digital assets, such as crypto currency, and related products.
US 11334883 B1 2022-05-17 455 Auerbach; Ira et al. Systems, methods, and program products for modifying the supply, depositing, holding and/or distributing collateral as a stable value token in the form of digital assets
US 11501370 B1 2022-11-15 382 Paya; Ismail Cem et al; Systems, methods, and program products for non-custodial trading of digital assets on a digital asset exchange - An object of the present invention is to address technological challenges that currently exist in providing user defined smart contracts based on user provided contract parameters on underlying blockchains as well as depositing, holding and/or distributing collateral in the form of a stable value token for a security token based on the user defined smart contract, the tokens being on the same underlying blockchain. This and other objects shall be addressed by embodiments of the present invention as set forth herein. 1The present invention relates to methods, systems, and program products for providing user defined smart contract parameters on underlying blockchains.
US 10540654 B1 2020-01-21 243 James; Daniel William Halley et al; System, method and program product for generating and utilizing stable value digital assets - (5) An object of the present invention is to address technological challenges that currently exist in modifying a supply of stable value digital asset tokens tied to underlying blockchain technology associated with another digital asset. This and other objects shall be addressed by embodiments of the present invention as set forth herein. The present invention generally relates to a system, method and program product for modifying a supply stable value digital asset token tied to an underlying blockchain. In embodiments, the present invention generally relates to the use of stable value digital assets as a cryptocurrency that can be linked to other digital assets using blockchain technology. In embodiments, the present invention relates to specific applications of stable value digital asset tokens tied to a blockchain. A stable value digital asset token (e.g., SVCoin) is provided which may be pegged to a fiat currency such as USD, Euro, Yen, to name a few. For example, 1 SVCoin will have a net asset value (“NAV”) of $1 USD. In embodiments, 100 SVCoins may have a NAV of $1 USD, so that 1 SVCoin has a NAV of 1 penny. Unlike Bitcoin and many other crypto protocols, the SVCoin will not have a natural cap (e.g., 22 million bitcoins) and, because it is pegged to a fiat currency, it will not fluctuate in value against such fiat currency as is typical of many crypto currencies.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions. Further, Applicant is of the opinion that the prior art fails to teach Applicant’s invention.
Examiner respectfully disagrees in both regards.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits no specific remarks or arguments.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
Applicant submits no specific remarks or arguments.
The other arguments presented by Applicant continually point back to the above arguments as being the basis for the arguments against the other 103 rejections, as the other arguments are presented only because those claims depend from the independent claims, and the main argument above is presented against the independent claims. Therefore, it is believed that all arguments put forth have been addressed by the points above.
Examiner has reviewed and considered all of Applicant’s remarks. The changes of the grounds for rejection, if any, have been necessitated by Applicant’s extensive amendments to the claims. Therefore, the rejection is maintained, necessitated by the extensive amendments and by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Conclusion
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 mailing date of this final action.
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/Radu Andrei/
Primary Examiner, AU 3697
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