DETAILED ACTION
Acknowledgments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the RCE, amendment, and response , filed on 04/13/2026.
Claims 13, 17, and 20 have been amended.
Claims 1-9, 12-15, 17-18, and 20-24 are currently pending and have been examined.
Response to Arguments
Claim Interpretation
After careful review of the original specification, the Examiner is unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision. See MPEP §2111.01 IV.
Terms such as “when”, “if”, “only if”, “on the condition”, “in the event” and “in a case where” are representative of optional limitations; therefore, optional or conditional language do not narrow the claims because they can always be omitted.
Arguments and Assertions by the Applicant
Applicant’s arguments received 03/16/2026 have been fully considered but they are not persuasive. With regard to the limitations of the independent claims, Applicant argues, “Augustine in view of Bentov, and further in view of Soundararajan do not explicitly disclose, implicitly teach, or otherwise suggest providing the message, previously formatted to include one or more details of the burn operation, and the attestation to the second blockchain.” This Examiner respectfully disagrees and points to the updated rejection below. As an initial matter, this Examiner notes that there have been no substantial amendments with regard to the claimed burn-related message. There continues to be no claim language that discloses what would reasonably constitute one or more details of the burn operation. Nonetheless, this Examiner notes that AUGUSTINE in at least column 60, line 61 to column 61, line 19 discloses messages that would contain ubiquitous data such as, for example a timestamp, etc. BENTOV, in at least paragraph 0225 discloses messages that are signed via remote attestation. SOUNDARARAJAN in at least paragraph 0112 teaches, “After a consensus has been reached by the blockchain network 300, the verifier and other blockchain nodes 350 may receive a new block containing the validated transaction and update their respective copy of the blockchain. After validation, verifier 400 may transmit a confirmation message to client device 200 that its presence at a particular location at a particular time has been verified. The confirmation message may include a reference to the attestation transaction ID of the attestation transaction stored on the blockchain network 350.”
As shown, messaging is a common technique used in the compute sciences. One of ordinary skill in the art would recognize that any electronic message contains event-related information. Since the claim language is vague regarding the content of the message associated with the burn operation, there are no metes and bounds to evaluate the content of the message itself. Even if there were particulars delineating the content of the burn-related message, the contents themselves would be considered printed matter, and given no patentable weight. Furthermore, even if the content of the burn-related messages were given some patentable weight, the data itself contained within the message would be of the non-functional variety, having insignificant claimed impact on the invention itself as a whole or otherwise, if at all.
Finally, with regard to the Applicant’s assertions that the prior art of record does not fairly teach or disclose each and every limitation contained within the claims, it appears as if the Applicant is reading limitations into the claims from the specification. Consequently, the points argued are not recited in the claims themselves. For that reason, a solid argument in their contemplation cannot be established. Subsequent amendments to the claim language that would include the positions presented by the Applicant’s arguments would provoke the Examiner to address the claims individually and as a whole, in light of the remaining limitations as well as the specification. Until such amendments are rendered, the arguments are disregarded and will not be countered.
In summary, the Examiner has taken the broadest and most reasonable interpretation of the claim limitations as written, in light of the specification. Although the specification may contain recitations of intended use, alternative points of view and subjective interpretative differences between the prior art of record and the present invention as premeditated, it is the claims themselves that are given patentable weight only inasmuch as they are constructed. Because the claimed invention has been painted with the broad stroke of petitioning for limitations that encompasses more than is asserted in the Applicant’s claims, the prior art of record continues to fully discloses the Applicant’s inventions as claimed.
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 of this title, if the differences 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 in which the invention was made.
Claims 1-9, 12-15, and 17, 18, and 20 are rejected under U.S.C. 103 as being unpatentable over Augustine et al (US 10,600,009 B1) hereinafter AUGUSTINE, in view of Bentov et al. (USPGP 2019/0156301 A1), hereinafter BENTOV, and further in view of Soundararajan et al. (USPGP 2020/0037876 A1), hereinafter SOUNDARARAJAN.
Claims 1, 13, 20:
AUGUSTINE as shown below discloses the following limitations:
executing a first process on a first blockchain, including: (see at least Figure 3B as well as associated and related text)
causing a first amount of cryptocurrency to be burned on the first blockchain according to a burn operation; (see at least Figure 3B as well as associated and related text)
formatting a message to include one or more details of the burn operation; (see at least column 3, line 12 to column 4, line 21; column 36, lines 22-48; column 22, lines 14-29)
emitting the message to an event log associated with the first blockchain; (see at least Figure 3B as well as associated and related text; column 3, line 12 to column 4, line 21; column 36, lines 22-4)
requesting an attestation from an attestation service based on a hash of the message emitted to the event log; (see at least column 38, lines 65-67, line 21; column 47, line 56 to column 48, line 15)
receiving the attestation from the attestation service; (see at last column 50, lines 1-14)
AUGUSTINE does not specifically disclose:
verifying the attestation based on an expected public key;
causing a second amount of cryptocurrency to be minted on the second blockchain based on the message.
However, BENTOV, in at least paragraphs 0009, 0077, 0103, 0111, and 0218 does. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention effective filing date to combine/modify the mint and burn method of AUGUSTINE with the second blockchain technique of BENTOV because, “A variety of different cryptocurrencies, including Bitcoin, Ethereum and Litecoin, are coming into increasingly widespread use. However, significant problems can arise when a user holding an amount of one cryptocurrency would like to exchange it for an amount of a different cryptocurrency. For example, existing systems for cryptocurrency exchange are highly vulnerable to so-called “frontrunning” attacks that can prevent users from achieving a fair exchange rate. Such systems are also vulnerable to other attacks that can lead to theft or other loss of cryptocurrency assets. These and other conventional arrangements are unable to achieve real-time cross-trading between multiple independent cryptocurrency systems in a manner that provides adequate security against frontrunning attacks and other types of attacks.” (BENTOV: paragraphs 0004-0005). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
The combination of AUGUSTINE/BENTOV does not specifically disclose
executing, responsive to receiving the attestation, a second process on a second blockchain, including:
providing the message, previously formatted to include one or more details of the burn operation,
SOUNDARARAJAN, however, in at least paragraphs 0089, 0105, 0112, 0152, and 0156 does. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention effective filing date to combine/modify the mint and burn method of AUGUSTINE/BENTOV with the second blockchain technique of SOUNDARARAJAN because, “A variety of different cryptocurrencies, including Bitcoin, Ethereum and Litecoin, are coming into increasingly widespread use. However, significant problems can arise when a user holding an amount of one cryptocurrency would like to exchange it for an amount of a different cryptocurrency. For example, existing systems for cryptocurrency exchange are highly vulnerable to so-called “frontrunning” attacks that can prevent users from achieving a fair exchange rate. Such systems are also vulnerable to other attacks that can lead to theft or other loss of cryptocurrency assets. These and other conventional arrangements are unable to achieve real-time cross-trading between multiple independent cryptocurrency systems in a manner that provides adequate security against frontrunning attacks and other types of attacks.” (BENTOV: paragraphs 0004-0005). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
Claims 2, 14:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. AUGUSTINE further discloses wherein the one or more details of the burn operation comprise at least an indication of the first amount of cryptocurrency. See at least Figure 3B as well as associated and related text.
Claims 3-5, 15:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. AUGUSTINE further discloses:
wherein the message further comprises one or more of:
an indication of the second blockchain;
a recipient; or
a burn contract defining the burn operation.
wherein the first process is defined by a first smart contract, and the second process is defined by a second smart contract.
wherein the message comprises a smart contract event.
See at least column 38, line 33 to column 39, line 5.
Claims 6-8, 17:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. AUGUSTINE further discloses:
sending the second amount of cryptocurrency to a destination address included within the message.
wherein the first amount of cryptocurrency is the same as the second amount of cryptocurrency.
wherein the first amount of cryptocurrency has an equivalent value to the second amount of cryptocurrency.
See at least column 45, lines 15-64.
Claims 9, 12, 18:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. AUGUSTINE further discloses:
wherein the message further comprises one or more of:
an indication of the first blockchain;
a sender; or
an indication of the second amount of cryptocurrency.
wherein the attestation comprises a signature.
See at least column 45, lines 15-64, column 38, line 33 to column 39, line 5, column 38, lines 65-67, line 21; column 47, line 56 to column 48, line 15; column 18, lines 53-55.
Claim 21:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. BENTOV further discloses:
wherein verifying the attestation based on the expected public key comprises:
decrypting the signature with the expected public key to generate a hash of the signature;
generating a hash of the message; and
comparing the hash of the signature with the hash of the message.
See at least paragraphs 0009, 0077, 0098, 0103, 0111, and 0218 does. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention effective filing date to combine/modify the mint and burn method of AUGUSTINE with the second blockchain technique of BENTOV because, “A variety of different cryptocurrencies, including Bitcoin, Ethereum and Litecoin, are coming into increasingly widespread use. However, significant problems can arise when a user holding an amount of one cryptocurrency would like to exchange it for an amount of a different cryptocurrency. For example, existing systems for cryptocurrency exchange are highly vulnerable to so-called “frontrunning” attacks that can prevent users from achieving a fair exchange rate. Such systems are also vulnerable to other attacks that can lead to theft or other loss of cryptocurrency assets. These and other conventional arrangements are unable to achieve real-time cross-trading between multiple independent cryptocurrency systems in a manner that provides adequate security against frontrunning attacks and other types of attacks.” (BENTOV: paragraphs 0004-0005). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
Claim 22:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. AUGUSTINE further discloses:
wherein the attestation service comprises an off-chain intermediary.
See at least column 7, lines 27-62.
Claim 23:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. AUGUSTINE further discloses:
wherein the first amount of cryptocurrency has an equivalent value to the second amount of cryptocurrency.
See at least column 49, lines 5-21.
Claim 24:
The combination of AUGUSTINE/BENTOV/SOUNDARARAJAN discloses the limitations as shown in the rejections above. BENTOV further discloses:
formatting a mint message based on causing the second amount of cryptocurrency to be minted on the second blockchain; and
emitting the mint message to an event log associated with the second blockchain.
See at least paragraphs 0009, 0068, 0077, 0098, 0103, 0135, 0111, and 0218 does. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the time of the invention effective filing date to combine/modify the mint and burn method of AUGUSTINE with the second blockchain technique of BENTOV because, “A variety of different cryptocurrencies, including Bitcoin, Ethereum and Litecoin, are coming into increasingly widespread use. However, significant problems can arise when a user holding an amount of one cryptocurrency would like to exchange it for an amount of a different cryptocurrency. For example, existing systems for cryptocurrency exchange are highly vulnerable to so-called “frontrunning” attacks that can prevent users from achieving a fair exchange rate. Such systems are also vulnerable to other attacks that can lead to theft or other loss of cryptocurrency assets. These and other conventional arrangements are unable to achieve real-time cross-trading between multiple independent cryptocurrency systems in a manner that provides adequate security against frontrunning attacks and other types of attacks.” (BENTOV: paragraphs 0004-0005). Additionally, there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Non-Patent Literature:
Benedict George. “What Does It Mean to Burn Crypto?” (Jan 26, 2022). Retrieved online 09/19/2024. https://www.coindesk.com/learn/what-does-it-mean-to-burn-crypto/
Sara Garg. “What is Burn and mint equilibrium in crypto world?” (September 20, 2021). Retrieved online 09/19/2024. https://www.exhibit.tech/crypto/what-is-burn-and-mint-equilibrium-in-crypto-world
Chainswap. “Mint and Burn Bridge.” (30 August 2021). Retrieved online 09/19/2024. https://docs.chainswap.com/mechanism/chainswap-architecture
Foreign Art:
SHETTY SURESH et al. “SYSTEMS AND METHODS FOR TOKENIZING ASSETS VIA BLOCKCHAIN-TO-BLOCKCHAIN BRIDGE USING UNDERLYING ASSETS HELD AT A TRIPARTY AGENT OR CUSTODIAN.” (WO 2024/097729 A1)
MEE A J. “Computer Implemented Smart Contract Execution Enabling Method For E.g. Blockchain, Involves Obtaining Updated Current State Of Smart Contract Based On New Event, And Storing Or Providing Result Based On Current State For Smart Contract.” (WO 2021/165816 A1)
GODOWSKI P et al. “Method For Transferring Source Token Of Source Set Of Tokens From Source Blockchain, Involves Verifying Annihilation Of Source Token In Source Blockchain Of Source Blockchain Network Using Set Of Transfer Conditions With Receiver Approval.” (WO 2021/019398 A1)
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 date of this final action.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to James A. Reagan (james.reagan@uspto.gov) whose telephone number is 571.272.6710. The Examiner can normally be reached Monday through Friday from 9 AM to 5 PM. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, John Hayes, can be reached at 571.272.6708.
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/JAMES A REAGAN/Primary Examiner, Art Unit 3697
james.reagan@uspto.gov
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