DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 8/21/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-20 are currently pending.
Claims 16-18 are withdrawn.
Claims 1-15, 19-20 are elected without traverse.
Claims 1-15, 19-20 are rejected as set forth below.
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 .
Election/Restriction
Applicant’s election without traverse of claims 1-15, 19-20 in the reply filed on 8/21/25 is acknowledged.
Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention. Election was made without traverse in the reply filed on 8/21/25.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, Application No. 62565099/62571556/62585943/62644841, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, (d) defining a plurality of secondary transactions, each comprising the recipient and a secondary originating party and an asset portion, wherein the combination of asset portions corresponds to the asset and at least some of which secondary originating parties indicate a party other than the originator; (e) recording on the distributed ledger the plurality of secondary transactions.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1, 4, 8, 11, 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20160260171 to Ford in view of United States Patent Application Publication No. 2018/0247191 to Katz.
As per claim 1¸ Ford teaches:
(a) recording at the third party information relative to the originator that allows determination of the identity of the originator; (b) recording on the distributed ledger a transfer of the asset from the originator to the third party and verifying that said transfer has been recorded on the distributed ledger; (c) communicating from the originator to the third party an identifier of the recipient, where none of the originator, recipient and third party are controlled by or under common control with either of the others; ([0094], “In embodiments, the Escrow role serves as an intermediary in the transfer of cryptocurrency funds between the Buyer, the Seller, and a potential third party (as discussed below). In embodiments, the Escrow role also serves as a recorder of the various transactions it adjudicates such that a history of the past behaviors of the various parties exists for public scrutiny.”; [0191], “FIG. 18 depicts a method for the Escrow who has received a Transfer Funds message via a secure distributed transactional ledger according to embodiments of the present invention. In embodiments, after receipt of a Transfer Funds message from a Buyer, the Escrow transfers (1805) the appropriate amount of funds as indicated in the message from the Buyer's account to an escrow account.”)
Ford does not explicitly teach, but Katz teaches:
(d) defining a plurality of secondary transactions, each comprising the recipient and a secondary originating party and an asset portion, wherein the combination of asset portions corresponds to the asset and at least some of which secondary originating parties indicate a party other than the originator and do not identify the originator; (e) recording on the distributed ledger the plurality of secondary transactions, wherein a communicating from the originator to the third party an identifier of the recipient is not recorded on the distributed ledger; ([0355], “Laundry: Also known as a “mixing service”, they combine funds from various users and redistribute them, making tracing the bitcoins back to their original source very difficult by mixing their “taint”.”; [0390], “Mixing: A process of exchanging coins with other persons in order to increase privacy of one's history. Sometimes it is associated with money laundering, but strictly speaking it is orthogonal to laundering. In traditional banking, a bank protects customer's privacy by hiding transactions from all 3.sup.rd parties. In Bitcoin any merchant may do a statistical analysis of one's entire payment history and determine, for instance, how many bitcoins one owns. While it is still possible to implement KYC (Know Your customer) rules on a level of every merchant, mixing allows to be separate information about one's history between the merchants. Most important use cases for mixing are: 1) receiving a salary as a single bit monthly payment and then spending it in small transactions (“cafe sees thousands of dollars when you pay just $4”); 2) making a single payment and revealing connection of many small private spendings (“car dealer sees how much you are addicted to the coffee”). In both cases your employer, a café and a car dealer may comply with KYC/AML laws and report your identity and transferred amounts, but neither of them need to know about each other. Mixing bitcoins after receiving a salary and mixing them before making a big payment solves this privacy problem.”)
One of ordinary skill in the art would have recognized that applying the known technique of Katz to the known invention of Ford would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such money processing features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to define and execute a plurality of secondary transactions that when combined represent the original transaction results in an improved invention because applying said technique protects the customer’s privacy by hiding transactions from all parties (Katz, [0390]).
As per claims 4, 11¸ Katz teaches:
wherein the third party controls a plurality of wallets on the distributed ledger, and where at least one of the plurality of secondary originating parties is associated with a different wallet than at least one other of the plurality of secondary originating parties; ([0355], [0390])
As per claim 8¸ Katz teaches:
wherein the third party receives communications specifying a plurality of primary transactions, at least one of which is from the originator and at least one of which is from a party other than the originator, and all of which are to the recipient, and wherein the third party combines the plurality of primary transactions to the recipient and the combined transaction is treated as the primary transaction for the remainder of the method; ([0355], [0390])
As per claim 15¸ Katz teaches:
wherein the originator and the recipient are the same entity; ([0355], [0390])
Claims 2, 9-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20160260171 to Ford in view of United States Patent Application Publication No. 2018/0247191 to Katz, and further in view of United States Patent Application Publication No. 2018/0247191 to Grey.
As per claim 2, Ford as modified does not explicitly teach, but Grey teaches:
wherein the number of the plurality of secondary transactions is determined by a predetermined method and is at least equal to a predetermined lower bound; ([0038], Setting the number of secondary transactions is equivalent to setting a predetermined lower bound.)
wherein the predetermined lower bound is at least two; ([0005], “According to embodiments of the present invention, a transaction or request is decomposed or broken down into two or more secondary transactions or requests.”)
One of ordinary skill in the art would have recognized that applying the known technique of Grey to the known invention of Ford as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such transaction processing features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to determine a number of secondary transactions by setting a predetermined lower bound results in an improved invention because applying said technique ensures that the desired number of secondary transactions are used to affect transfer of the asset.
As per claim 9, Ford as modified does not explicitly teach, but Grey teaches:
wherein the number of the plurality of secondary transactions is determined by a predetermined method and is at least equal to a predetermined lower bound; ([0038], Setting the number of secondary transactions is equivalent to setting a predetermined lower bound.)
One of ordinary skill in the art would have recognized that applying the known technique of Grey to the known invention of Ford as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such transaction processing features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to determine a number of secondary transactions by setting a predetermined lower bound results in an improved invention because applying said technique ensures that the desired number of secondary transactions are used to affect transfer of the asset.
As per claim 10¸ Grey teaches:
wherein the number of the plurality of secondary transactions is determined by a predetermined method and no more than a predetermined upper bound. ([0038], Setting the number of secondary transactions is equivalent to setting a predetermined upper bound.)
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20160260171 to Ford in view of United States Patent Application Publication No. 2018/0247191 to Katz and United States Patent Application Publication No. 2018/0247191 to Grey, and further in view of United States Patent Application Publication No. 20130055269 to Sukenari.
As per claim 3, Grey teaches:
determining the number of plurality of secondary transactions; ([0038])
Ford as modified does not explicitly teach, but Sukenari teaches:
wherein a determined number is a random number no more than a predetermined upper bound, where the predetermined upper bound is greater than the predetermined lower bound; ([0049], “The back-off time determination unit 24 generates a random value (to be referred to as rand or window size; see Formula 1) existing between a preset lower limit value (rand_min) and a preset upper limit value (rand_max).”)
One of ordinary skill in the art would have recognized that applying the known technique of Sukenari to the known invention of Ford as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such mathematical features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the step of determining the number of plurality of secondary transactions so the number is a random number between a predetermined lower and upper bound results in an improved invention because applying said technique decreases the likelihood of revealing more information about the primary transaction by making it more difficult to determine a relationship between the number of secondary transactions and the primary transaction.
Claims 5-7, 12-14, 19-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over United States Patent Application Publication No. 20160260171 to Ford in view of United States Patent Application Publication No. 2018/0247191 to Katz, and further in view of United States Patent No. 8424758 to Esslinger.
As per claims 5-7, 12-14, Ford as modified does not explicitly teach, but Esslinger teaches:
wherein recording the plurality of transactions comprises recording the plurality of transactions at a plurality of times, wherein at least two of the plurality of times are separated by a time interval determined by a predetermined method and no less/no more than a predetermined lower/upper bound; (col 1 lines 42-46, Setting a predetermined interval is equivalent to setting a predetermined lower/upper bound.)
One of ordinary skill in the art would have recognized that applying the known technique of Esslinger to the known invention of Ford as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such transaction processing features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to record a plurality of transactions, such as secondary transactions, that are separated by a predetermined lower/upper bound results in an improved invention because applying said technique ensures that the payment processor network is not overloaded with a plurality of simultaneous secondary transactions, thus improving the overall efficiency of the invention.
As per claims 19-20¸ Katz teaches:
wherein the third party controls a plurality of wallets on the distributed ledger, and where at least one of the plurality of secondary originating parties is associated with a different wallet than at least one other of the plurality of secondary originating parties; ([0355], [0390])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 2018/0247191 to Katz discloses a system for performing transaction mixing between a plurality of users on a blockchain. The blockchain may be, for example, the Bitcoin blockchain. The system is configured to carry out the steps of: (i) preparing a first commitment transaction arranged to transmit control of a resource from a source address of a first user to a receiving address of a second user; (ii) preparing a second commitment transaction arranged to transmit control of a resource from a source address of the second user to a receiving address of a further user; (iii) preparing a further commitment transaction arranged to transmit control of a resource from a source address of the further user to either: (a) a receiving address of the first user; or (b) a receiving address of a yet further user and repeating step (iii) until option (a) is performed to complete a transaction chain; and (iv) executing the transaction chain. At least one of the users is randomly chosen from the plurality.
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/JAY HUANG/Primary Examiner, Art Unit 3619