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/Restrictions
Applicant’s election without traverse of Group I (claims 1-10) in the reply filed on 08/04/2025 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/04/2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: encryption tool, wallet tool, statistics tool, swap tool, bridge tool, buy tool, aggregator tool, and smart contract tool in claims 1, 4, and 9 and developer module in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “an encryption tool configured to generate...a wallet tool configured to process...a statistics tool configured to provide...a swap tool configured to swap...a bridge tool to access...a buy tool to purchase...an aggregator tool configured to aggregate...and a smart contract tool configured to provide...” However, the claim does not clearly describe the structure of the overarching blockchain or portfolio engines (e.g. comprising a processor and memory), nor does it clearly describe the structure of the “tools” themselves (e.g. hardware or software). Furthermore, paragraph 0036 of the specification merely discloses “In some embodiments, memory 220-2 includes a blockchain engine 232 having a statistics tool 240, a wallet tool 242, and an encryption tool 244. Memory 220-2 may also include a portfolio management engine 234 having an aggregator tool 246 and a smart contract tool 248, and an account management engine 236 including an address book tool 249 and an account switch tool 250. API layer module 215 handles the interface between blockchain engine 232, portfolio management engine 234, account management engine 236 and application 222 in client device 210. In some embodiments, blockchain engine 232, portfolio management engine 234, the tools contained therein, and at least part of training database 252 may be hosted in a different server that is accessible by server 230 or client device 210.” Therefore, the structure of both the engines and their respective tools is unclear as they appear to be mere data stored in memory rather than clearly particular software programs. Furthermore, the engines may be “hosted in a different server” making it unclear whether the “different server” is the applicable structure.
Claims 2-10 are also rejected due to their dependence on at least claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitations: encryption tool, wallet tool, statistics tool, swap tool, bridge tool, buy tool, aggregator tool, smart contract tool, and developer module invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. For example, claim 0036 merely discloses, “In some embodiments, memory 220-2 includes a blockchain engine 232 having a statistics tool 240, a wallet tool 242, and an encryption tool 244. Memory 220-2 may also include a portfolio management engine 234 having an aggregator tool 246 and a smart contract tool 248, and an account management engine 236 including an address book tool 249 and an account switch tool 250. API layer module 215 handles the interface between blockchain engine 232, portfolio management engine 234, account management engine 236 and application 222 in client device 210. In some embodiments, blockchain engine 232, portfolio management engine 234, the tools contained therein, and at least part of training database 252 may be hosted in a different server that is accessible by server 230 or client device 210.”
The claims use a placeholder for “means” (e.g. “tool” and “module”), coupled with a function (e.g. “tool/module configured to...”), and recite insufficient structure to perform the functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-10 are also rejected due to their dependence on at least claim 1.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winklevoss et al. (USP 10269009 “Winklevoss”) in view of Knight et al. (US 20190299105 "Knight").
Regarding claim 1, Winklevoss discloses: A system, comprising:
a blockchain engine, including:
an encryption tool configured to generate multiple encryption hashes to create a sequence of encrypted data blocks storing multiple blockchain assets and transactions thereof for multiple users (Fig. 5a, Col 7 line 25-61),
a wallet tool configured to process user requests for asset transactions, including to send and receive assets, between two addresses of a blockchain (Col 9 line 59-62, Col 10 line 11-17),
a statistics tool configured to provide analytics information about the asset transactions (Fig. 12a, Col 32 line 64-Col 33 line 3),
a swap tool configured to swap a blockchain asset (Col 17 line 25-30, Col 18 line 20-27),
a bridge tool to access two or more blockchains (Fig. 30a-30b, Col 18 line 20-27, Col 72 line 7-44),
and a buy tool to purchase a blockchain asset using fiat currency (Col 17 line 25-30, Col 18 line 20-27);
a portfolio management engine, including:
an aggregator tool configured to aggregate assets for each user and across one or more blockchains to provide to the statistics tool (Fig. 22, Col 53 line 51-60, Col 56 line 37-53, Col 57 line 33-46),
and an account management engine, including:
an address book tool, and an account switch tool (Col 15 line 61-66, Col 16 line 11-21, Col 27 line 10-13, Col 32 line 30-50).
Winklevoss does not disclose: and a smart contract tool configured to provide secure contracts for two or more parties involved in the asset transactions.
However, in the same field of endeavor, Knight discloses: and a smart contract tool configured to provide secure contracts for two or more parties involved in the asset transactions (0071, 0073).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 disclosed by Winklevoss by including smart contract tool as disclosed by Knight. One of ordinary skill in the art would have been motivated to make this modification to require agreement/signatures from both parties to a transaction before processing (Knight 0071).
Regarding claim 2, Winklevoss in view of Knight discloses all of claim 1. Winklevoss further discloses: a database configured to store the blockchain assets, the asset transactions, and smart contracts associated thereof (Col 19 line 55-Col 20 line 13).
Regarding claim 3, Winklevoss in view of Knight discloses all of claim 1. Knight further discloses: wherein the blockchain assets include collectible items, and at least one of the collectible items is a digital media file signed by an encryption hash (Fig. 11, 0052, 0077, 0079, 0081-0083).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 3 disclosed by Winklevoss in view of Knight by including assets including collectibles as disclosed by Knight. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 4, Winklevoss in view of Knight discloses all of claim 1. Winklevoss further discloses: wherein the statistics tool is configured to generate a value for each blockchain asset based on aggregated transaction data over blockchain assets (Col 57 line 33-67).
Regarding claim 5, Winklevoss in view of Knight discloses all of claim 1. Winklevoss further discloses: an application interface configured to link the blockchain engine and the portfolio management engine with a remote server hosting a web-browser application (Col 15 line 59-Col 16 line 3).
Regarding claim 6, Winklevoss in view of Knight discloses all of claim 1. Winklevoss further discloses: an application interface configured to link the blockchain engine and the portfolio management engine with an application installed in a mobile device to allow a user of the mobile device to perform blockchain asset transactions (Col 16 line 35-49).
Regarding claim 7, Winklevoss in view of Knight discloses all of claim 1. Winklevoss further discloses: an application interface configured to link the blockchain engine and the portfolio management engine with a web application installed in a client device to allow a user of the client device to perform blockchain asset transactions (Col 15 line 59-Col 16 line 3, Col 16 line 35-49).
Regarding claim 8, Winklevoss in view of Knight discloses all of claim 1. Knight further discloses: an application interface configured to link the blockchain engine and the portfolio management engine with a gaming application installed in a client device to enable a user to play a networked game to earn an income (Fig. 11, 0052, 0081-0083).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 8 disclosed by Winklevoss in view of Knight by including linking a gaming application as disclosed by Knight. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 9, Winklevoss in view of Knight discloses all of claim 1. Knight further discloses: wherein the smart contract tool is configured to request a digital signature from each of the parties to a smart contract, and to store an executed contract in a database, for public access (0071, 0073).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 9 disclosed by Winklevoss by including smart contract tool as disclosed by Knight. One of ordinary skill in the art would have been motivated to make this modification to require agreement/signatures from both parties to a transaction before processing (Knight 0071).
Regarding claim 10, Winklevoss in view of Knight discloses all of claim 1. Winklevoss further discloses: wherein the portfolio management engine further comprises a developer module configured to enable an application developer to provide an application for performing operations with the blockchain assets (Col 19 line 60-64, Col 54 line 15-17).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Suratkar et al. (“Cryptocurrency Wallet: A Review”) generally discloses a cryptocurrency wallet platform allowing management, purchasing, and trading of cryptocurrencies across mobile devices, desktop computers, and web applications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR RAK whose telephone number is (571)270-1575. The examiner can normally be reached Monday-Friday 11:00-7:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571)-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
Prosecution Insights