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/Amendments
Regarding rejection of the claims under 35 USC 112(a) and 112(b), the amendments overcome the prior rejections and the rejections are hereby withdrawn.
Applicant’s arguments with respect to rejection of the claims under 35 USC 103 over Winklevoss in view of Knight have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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") and further in view of Vladi (US 20210019737 “Vladi”).
Regarding claim 1, Winklevoss discloses: A system, comprising:
at least one processor; and
at least one non-transitory memory storing instructions that, when executed by the at least one processor, configure the system to implement:
a blockchain engine, including:
generating 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),
processing 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),
providing analytics information about the asset transactions (Fig. 12a, Col 32 line 64-Col 33 line 3),
swapping a blockchain asset (Col 17 line 25-30, Col 18 line 20-27),
purchasing a blockchain asset using fiat currency (Col 17 line 25-30, Col 18 line 20-27);
a portfolio management engine, including:
aggregating assets for each user and across the two or more blockchains to provide to the blockchain engine (Fig. 22, Col 53 line 51-60, Col 56 line 37-53, Col 57 line 33-46),
and an account management engine, including:
managing an address book, and managing account switching between multiple addresses (Col 15 line 61-66, Col 16 line 11-21, Col 27 line 10-13, Col 32 line 30-50).
Winklevoss does not disclose: providing secure smart contracts for two or more parties involved in the asset transactions across the two or more blockchains.
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).
Winklevoss in view of Knight does not disclose: bridging assets between two or more blockchains.
However, in the same field of endeavor, Vladi discloses: bridging assets between two or more blockchains (Fig. 8, 0080-0082).
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 in view of Knight by including bridging assets as disclosed by Vladi. 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 2, Winklevoss in view of Knight and Vladi 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 and Vladi 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 and Vladi discloses all of claim 1. Winklevoss further discloses: wherein the blockchain engine is further 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 and Vladi 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 and Vladi 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 and Vladi 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 and Vladi 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 and Vladi discloses all of claim 1. Knight further discloses: wherein portfolio management engine is further configured to request a digital signature from each of the two or more 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 and Vladi 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).
Regarding claim 21, Winklevoss in view of Knight and Vladi discloses all of claim 1. Vladi further discloses: wherein bridging the assets between the two or more blockchains further comprises locking an asset on a first blockchain and minting a corresponding representation of the asset on a second blockchain using a smart contract executed on at least one of the blockchains (Fig. 8, 0080-0082).
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 in view of Knight by including bridging assets as disclosed by Vladi. 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)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Iwama et al. (US 20220156725) generally discloses a bridging blockchain client linking two or more blockchains and allowing cross-chain settlements.
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.
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697