Detailed Action
Acknowledgements
1. This communication is in response to the the Request for Continued Examination (RCE) filed 27 April 2026 following a decision by the Patent Trial and Appeal Board.
2. Claims 1-8 are currently pending and have been fully examined.
3. Claims 9-16 have been withdrawn.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 27 April 2026 has been entered.
Response to Applicant’s Comments/Remarks
6. Applicant’s response, filed on 27 April 2026, has fully been considered. Applicant has neither amended the claims, nor provided any specific arguments with respect to the decision by the Patent Trial and Appeal Board. Therefore, examiner adopts the reasoning and rationale for affirming the 101 rejection as outlined below.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., an abstract
idea).
Groupings of abstract ideas enumerated in MPEP 2016.04(a)(2).
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Consideration’s indicative of integration into a practical application enumerated in MPEP 2106.04(d).
Improvement to the functioning of a computer, or an improvement to any other technology or technical field;
Applying or using a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
Applying the judicial exception with, or by use of a particular machine;
Effecting a transformation or reduction of a particular article to a different state or thing;
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception;
Considerations that are not indicative of integration into a practical application enumerated in MPEP § 2106.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., an abstract idea)).
Consideration’s indicative of an inventive concept (aka “significantly more”) enumerated in MPEP 2016.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field MPEP 2106.04(d)(1);
Applying the judicial exception with, or by use of a particular machine MPEP 2106.04(d)(2);
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the consideration’s indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are NOT indicative of an inventive concept (aka “significantly more”) enumerated in the in MPEP 2016.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea MPEP 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception MPEP 2106.05(g);
Generally linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h);
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See MPEP 2106;
Claims 1-8 is/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 significantly more.
Step 1: Statutory Categories (MPEP § 2106.03):
Representative claim 1 is directed toward a method, which is a statutory category of invention.
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity:
The claim, as a whole, recites a method of organizing human activity. The claimed invention involves, “a digital asset exchange (e.g., a digital market place),” which is an abstract idea without substantially more.
1.(Currently amended) A method comprises:
storing, by a data interaction backing computing entity of a system digital asset-based data interaction system, system digital assets;
obtaining, by a data interaction computing entity of the system digital asset-based data interaction system, first and second computing entity real-time information regarding a data interaction between a first computing entity of the system digital asset-based data interaction system and a second computing entity of the system digital asset-based data interaction system (Which is an example of managing personal behavior or relationships or interactions between people);
locking, by the data interaction backing computing entity, an amount of the system digital assets to back the data interaction;
executing, by the data interaction computing entity, a real-time data interaction process to provide data from the first computing entity to the second computing entity in a desired format in a first time frame;
executing, by the data interaction computing entity, a nonreal-time data interaction process to verify the data in a second time frame, and wherein the second time frame is longer than the first time frame;
obtaining, by the data interaction computing entity, a data interaction fee from one or more of the first and second computing entities;
converting, by the data interaction computing entity, the data interaction fee to system digital assets; and
providing, by the data interaction computing entity, the system digital assets to the data interaction backing computing entity.
Thus, the claim(s) are directed toward “a digital asset exchange (e.g., a digital market place),” which is an abstract idea without substantially more. Applicant’s claims describe a method of providing data (e.g. digital asset) from a first computing entity to a second computing entity, in a desired format. Hence, based on applicant’s specification and claim language, under the broadest reasonable interpretation, applicant’s claims are being interpreted to represent a “digital asset exchange” and falls under the “certain methods of organizing human activity”, falling under the “commercial or legal interactions subcategory.” The claim recites locking “an amount of the system digital assets to back the data interaction,” which is a form of risk mitigation. See Spec, paragraph 31 (“The data interaction computing entity 16 is operable to back data interactions via the data interaction backing computing entity 20 by locking system digital assets as collateral.”); Spec, paragraph 15 (“…the collateral facilitates the reduction of that risk and/or inconvenience”). “The phrase ‘methods of organizing human activity’ is used to describe concepts relating to: fundamental economic principles or practices (including hedging, insurance, mitigating risk).” MPEP 2106.04(a)(2) II (“Certain Method of Organizing Human Activity”); see also Alice, 573 U.S. at 611-12 (describing hedging in Bilski is a “fundamental economic practice” and thus, an abstract idea.
The italicized portions of claim 1, reproduced above, recite fundamental economic principles or practices (such as mitigating risk) and commercial or legal interactions.
NOTE: The mere nominal recitation of technology does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.1
PRONG 2: The judicial exception (i.e., an abstract idea). Is not integrated into a practical application.
The claim recites the combination of additional elements of some of the positively recited steps (e.g., “storing,” “obtaining,” “locking,” “executing,” “executing,” “obtaining,” “converting,” “providing”) including interaction with a plurality of devices and additional elements of:
(e.g., (a) a data interaction backing computing entity;
(b) a system digital asset-based data interaction system;
(c) data interaction computing entity;
(d) first computing entity;
(e) second computing entity;).
The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer being used as a tool to perform the generic computer functions of:
data processing (e.g., “storing,” “locking,” “executing,” “executing,” “converting”); and
(b) data receipt/ transmission (e.g., “obtaining,” “obtaining,” “providing,” etc., step(s) as claimed)).
The additional element(s) is/ are recited at a high level of generality, and amounts to mere data processing, which is a form of insignificant data gathering and insignificant extra-solution activity. The additional elements are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea(s) are performed. The additional elements do not operate the recited generic computer components in an unconventional manner to achieve an improvement in computer functionality. See MPEP 2106.05(a). Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See MPEP 2106.05(h). In particular, applicant’s specification discloses that the additional elements encompass generic computer components. See Spec paragraphs 26, 28, 35 and 46-48 (describing these elements each at a high level of generality). Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See MPEP 2106.04(a), (d).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do NOT integrate the abstract idea(s) into a practical application because they do not impose any meaningful limits on practicing the abstract idea(s). Accordingly, the claims are directed to an abstract idea(s).
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, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using generic components cannot provide an inventive concept. See MPEP 2106.05(f).
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do NOT provide an inventive concept (i.e., The claim(s) do NOT include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., an abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field.
Applicant’s Specification, as filed on 11/30/2022 does NOT provide any indication there is anything other than generic, off-the-shelf computer components. The original filed Specification supports this conclusion at Par [0028], which recites:
[0028] As used herein, a computing device may be one or more portable computing devices and/or one or more fixed computing devices. The first computing entity12, the second computing entity14, the data interaction computing entity16, the data interaction backing computing entity20, the data management computing entity50, and the plurality of consensus network computing entities45 may be one or more portable computing devices and/or one or more fixed computing devices. A portable computing device may be a social networking device, a gaming device, a cell phone, a smart phone, a digital assistant, a digital music player, a digital video player, a laptop computer, a handheld computer, a tablet, a video game controller, a virtual reality (VR) computing device, a portable merchant point-of-sale (POS) device (e.g., a mobile device with POS capabilities) and/or any other portable device that includes a computing core. A fixed computing device may be a computer (PC), a computer server, a cable set-top box, a satellite receiver, a television set, a printer, a fax machine, home entertainment equipment, a video game console, a fixed merchant point-of-sale (POS) device (e.g., attended cash register, unattended register, etc.), and/or any type of home or office computing equipment.
Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as:
data processing (e.g., “storing,” “locking,” “executing,” “executing,” “converting”); and
data receipt/ transmission (e.g., “obtaining,” “obtaining,” “providing,” etc., step(s) as claimed)).
are well understood, routine and conventional. Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here).
Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer. Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activates previously known in the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do NOT add meaningful limits to practicing the abstract idea. The original filed Specification supports this conclusion at Par [0028], which recites:
[0028] As used herein, a computing device may be one or more portable computing devices and/or one or more fixed computing devices. The first computing entity12, the second computing entity14, the data interaction computing entity16, the data interaction backing computing entity20, the data management computing entity50, and the plurality of consensus network computing entities45 may be one or more portable computing devices and/or one or more fixed computing devices. A portable computing device may be a social networking device, a gaming device, a cell phone, a smart phone, a digital assistant, a digital music player, a digital video player, a laptop computer, a handheld computer, a tablet, a video game controller, a virtual reality (VR) computing device, a portable merchant point-of-sale (POS) device (e.g., a mobile device with POS capabilities) and/or any other portable device that includes a computing core. A fixed computing device may be a computer (PC), a computer server, a cable set-top box, a satellite receiver, a television set, a printer, a fax machine, home entertainment equipment, a video game console, a fixed merchant point-of-sale (POS) device (e.g., attended cash register, unattended register, etc.), and/or any type of home or office computing equipment.
Therefore, the use of these additional elements does no more than employ a computer or processor to automate and/or implement the abstract idea. Hence, the use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself.2 Therefore, the claim is not patent eligible.
Conclusion
Accordingly, 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.
Dependent claim(s) 2-8 when analyzed as a whole are held to be patent ineligible under 35 USC 101 because the additional recited limitations only refine the abstract idea further.
For instance, in claim(s) 2-3 the steps, under the broadest reasonable interpretation, are further refinements of [organizing human activities, mental process, mathematical concepts/formulas] because these steps further describe the exchange/transfer of data between computing entities.
For instance, in claim(s) 4-5 the steps, under the broadest reasonable interpretation, are further refinements of [organizing human activities, mental process, mathematical concepts/formulas] because these steps further describe the conversion of data from one format to another.
For instance, in claim(s) 6 the steps, under the broadest reasonable interpretation, are further refinements of [organizing human activities, mental process, mathematical concepts/formulas] because these steps further describe the verification of the exchange of data between entities.
For instance, in claim(s) 7 the steps, under the broadest reasonable interpretation, are further refinements of [organizing human activities, mental process, mathematical concepts/formulas] because these steps further describe the collection of fees to complete the asset conversion and providing financial rewards.
For instance, in claim(s) 8 the steps, under the broadest reasonable interpretation, are further refinements of [organizing human activities, mental process, mathematical concepts/formulas] because these steps further describe the data interaction computing entity.
In all the dependent claim(s), the judicial exception is not integrated into a practical application because the limitations are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. This is because the claim(s) do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; the claims do not affect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment. In addition, the dependent claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements of the instant underlying 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. Thus, the claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claim(s) also are not patent eligible.
Dependent claim(s) 2-8 do not add any limitations that would remedy the deficiencies outlined above and are rejected accordingly.
Conclusion
The prior art made of record and not relied upon is considered pertinent to
applicant’s disclosure.
Ricotta et al., (US 2019/0139033)
Systems and methods move money from a crypto currency to a fiat currency in real-time using a mobile wallet or debit card to allow a customer to use the funds instantly. The process for such movement of money is secured using distributed ledger technology and smart contract services. The funds are available to the customer in real-time and the customer is able to use those funds substantially anywhere credit cards are accepted and at substantially any automatic teller machine (ATM). A multi-layered distributed ledger and reconciliation method may be used as a transaction settlement system. The multi-tiered authentication and distributed identification method may be used to prevent fraud and theft. A retail transactional value of a portfolio of digital currencies may be determined by taking into account asset market liquidity and volatility.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 John Hayes whose telephone number is (571)272-6708. The examiner can normally be reached Monday-Thursday 6:00AM-4:00PM EST.
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/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
1 (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, NO 13-298, June 19, 2014; MPEP 2106);
2 MPEP 2106.05(I)(A)(f) & (h);
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