DETAILED ACTION
Status of Claims
Claims 1, 11, and 16 have been amended.
Claims 7, 15, and 20 have been previously cancelled.
Claims 1-6, 8-14, 16-19 and 21 are currently pending and have been considered by the examiner.
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 .
Response to Arguments
101 Rejection:
Applicant arguments have been considered and have been deemed unpersuasive by the examiner. Applicant asserts on pgs. 11-12 of the remarks received 11 December 2025 that the claims do not a fundamental economic principle, specifically risk mitigation. The examiner respectfully disagrees. As outlined in the previously mailed office action, the examiner reasserts that the specified claim limitations are directed towards the fundamental economic principle or practice of mitigating risk associated with a blockchain transaction in that said limitations either explicitly recite the act of risk mitigation itself and/or are directed towards steps necessary to perform the claimed risk mitigation within the context of a generic blockchain computing system.
Additionally, applicant asserts that the newly added limitations integrate the recited judicial exception into practical application and/or amount to significantly more. The examiner respectfully disagrees. The new added limitations further describe the metadata used to perform the recited abstract idea but does not further expand upon how said metadata is used for verification purposes beyond that which is performed by generic blockchain computing system. Thus, the examiner asserts that the newly added claim limitations do not integrate the recited abstract idea into practical application or amount to significantly more because said limitations merely generally link the recited abstract idea to the technological field of blockchain computing technology.
Thus, the examiner must reassert that the claims are patent ineligible under 35 USC 101.
Prior Art Rejection:
Applicant’s arguments have been considered and have been deemed persuasive by the examiner in view of additional search and consideration. Thus, the previously issue prior art rejection has been rescinded.
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 1-6, 8-14, and 16-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-6, 8-10, and 21 are directed to a method, claims 11-14 are directed to a system/apparatus, and claims 16-19 are directed to a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites the following:
A method for data processing, comprising:
receiving, at a self-executing program stored on a blockchain distributed data store, a first message signed by a public key associated with an operator address of an operator of the self-executing program and transmitted by a wallet application associated with a sender address, wherein the operator comprises a custodial token platform and wherein the first message comprises indications of:
the sender address and
a first amount of a first crypto token type to be received by a recipient address, and metadata that references an off-chain charge associated with the sender address and the recipient address and wherein the metadata comprises a unique identifier that references the off-chain charge that is an agreement between a first entity associated with the sender address and a second entity associated with the recipient address;
verifying, based at least in part on execution of the self-executing program, that the first message transmitted by the wallet application is validly signed by the public key of the operator associated with the self-executing program, wherein verifying that the first message is validly signed indicates that the first message comprises information verified by the operator of the self-executing program;
generating, based at least in part on verifying that the first message is validly signed, one or more second messages that are configured to transfer the first amount of the first crypto token type to the recipient address; and
broadcasting the one or more second messages to transfer the first amount of the first crypto token type to the recipient address, wherein the one or more second messages further comprise the metadata that references the off-chain charge based at least in part on the first message comprising the metadata and wherein broadcasting the one or more second messages records a blockchain transaction and the unique identifier on a blockchain ledger.
Regarding Step 2A Prong One, the claims recite the abstract idea of risk mitigation. Specifically, the claims recite the limitations underlined above which recite the process of mitigating risk in an economic transaction which is grouped within the Certain Methods of Organizing Human Activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP § 2106.04) because the claims involve the process of mitigating risk in an economic transaction. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP § 2106.04(d)), the additional element(s) of the claim(s) such as a “blockchain distributed data store” merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “blockchain distributed data store” perform(s) the steps or functions underlined above. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of a “blockchain distributed data store” amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “blockchain distributed data store” perform(s) the steps or functions underlined above. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite risk mitigation. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. 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 (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-6, 8-10, 12-14, 17-19, and 21 further describe the recited abstract idea. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Specifically:
Claims 2-3, 5-6, 12-14, 17-19, and 21 recites additional limitations which are also directed to the recited abstract idea.
Claims 8-10 merely further describes the data used to the perform the recited abstract idea.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, the dependent claims are also not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
/COURTNEY P JONES/Primary Examiner, Art Unit 3699