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 .1.
1. Applicant’s amendment filed 09/10/2025 is entered. None of the claims was amended. The amendment includes Claims 1-15 are pending for examination.
This action is a Final rejection.
Claim Rejections - 35 USC § 101
2. 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 1-12, and 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, when analyzed as per MPEP 2106.
Step 1 analysis:
Claims 1-15 are to a process comprising a series of steps, clams 16-30 to a system /apparatus, which are statutory (Step 1: Yes).
Step 2A Analysis:
Claim 1 recites:
1. A method of conducting a multi-unit, sealed-bid auction, the method comprising:
(i) opening an auction using an auction contract from a blockchain-based network, the auction contract representing one or more items to be auctioned, the opening including executing the auction contract by initiating an elliptic-curve Diffie-Hellman (ECDH) cryptographic key exchange, the initiating including storing a public key, a reserve price, and a number of the one or items to be auctioned with the auction contract;
(ii) receiving, from one or more bidders associated with the blockchain-based network, one or more bids for the one or more items to be auctioned, the one or more bids being prepared with an ECDH cryptographic key exchange specific to each of the one or more bids, each bid having a price value that is cryptographically sealed from all other parties on the blockchain-based network by a symmetric cipher for which the key is derived from a shared secret that is determined as part of a per-bid ECDH cryptographic key exchange, and each bid being coupled with the respective public key when stored by the auction contract;
(iii) calculating, based on the one or more bids, a market-clearing price for the one or more items in the auction and an ordering of the one or more bids to determine one or more winning bids;
(iv) revealing a private key to allow any of the one or more bidders to reveal a plaintext value of each bid using its respective public key along with the private key; and
(v) confirming, by the auction contract, the plaintext value of each bid, the sorting of all winning bids being based on the plaintext value and the market-clearing price for the one or more items.
Step 2A Prong 1 analysis: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim.
Claims 1-15 recite abstract idea.
The limitations in steps (i), (ii), (iii), (iv) and (v) comprising “ opening an auction using an auction contract, the auction contract representing one or more items to be auctioned, receiving, from one or more bidders one or more bids for the one or more items to be auctioned, each bid having a price value that is sealed from all other parties ; calculating, based on the one or more bids, a market-clearing price for the one or more items in the auction and an ordering of the one or more bids to determine one or more winning bids; reveal a plaintext value of each bid and confirming the plaintext value of each bid, the sorting of all winning bids being based on the plaintext value and the market-clearing price for the one or more items”, under their broadest reasonable interpretation, relate to a commercial activity of conducting an auction for items falling under “Certain Methods of Organizing Human Activity”. See MPEP 2106.04(a)(2), subsection II. Further, the step of calculating, based on the one or more bids, a market-clearing price for the one or more items in the auction and an ordering of the one or more bids to determine one or more winning bids may be practically performed in the human mind using observation, evaluation , judgment, and opinion amounting to “Mental Processes”. See MPEP 2106.04(a)(2), subsection III.
Since the other independent claim 9 recites similar limitations as claim 1, it is analyzed on the same basis as reciting “Certain Methods of Organizing Human Activity”, and “Mental Processes”. Thus claims 1 with its dependent claims 2-8 and claim 9 with its dependent claims recite abstract ideas falling within Certain Methods of Organizing Human Activity”, and “ Mental Processes”.
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception or whether the claim is “directed to” the judicial exception. This evaluation is performed by (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (2) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See MPEP 2106.04(d).
The claim recites the additional elements in step (i) using an auction contract from a blockchain-based network, and executing the auction contract by initiating an elliptic-curve Diffie-Hellman (ECDH) cryptographic key exchange including storing a public key, a reserve price, and a number of the one or items to be auctioned with the auction contract; in step (ii) the received bids being prepared with an ECDH cryptographic key exchange specific to each of the one or more bids, each bid having a price value that is cryptographically sealed from all other parties on the blockchain-based network by a symmetric cipher for which the key is derived from a shared secret that is determined as part of a per-bid ECDH cryptographic key exchange, and each bid being coupled with the respective public key when stored by the auction contract; in step (iv) revealing a private key to allow any of the one or more bidders to reveal a plaintext value of each bid using its respective public key along with the private key; and in step (v) confirming, by the auction contract, the plaintext value of each bid, the sorting of all winning bids being based on the plaintext value and the market-clearing price for the one or more items. These additional elements recite using Ethereum Virtual Machine on a blockchain and smart contracts to implement an auction using generic computers.
The judicial exception of “conducting an auction” using Ethereum Virtual Machine on a blockchain and smart contracts is used to generally apply the abstract idea without placing any limits on the use of Ethereum Virtual Machine on a blockchain and smart contracts , since these additional elements, as recited, do not indicate any technical improvement but for using the concepts already pre-existing before the effective filing date of the Application. The recitation of “using Ethereum Virtual Machine on a blockchain and smart contracts” in limitations ((i), (ii), (iv), and (v) also merely indicates a field of use or technological environment in which the judicial exception is performed. Although the additional element “using Ethereum Virtual Machine on a blockchain and smart contracts” limits the identified judicial exception of conducting an auction , this type of limitation merely confines the use of the abstract idea to a particular technological environment (using Ethereum Virtual Machine on a blockchain and smart contracts) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h).
Since the limitations of the other independent claim 9 are similar to the claim 1, it is analyzed on the same basis as claim 1. Even when viewed in combination, these additional elements in claims 1 and 9 do not integrate the recited judicial exception into a practical application, because they do not impose any meaningful limits on practicing the abstract idea (Step 2A, Prong Two: NO), and the claims 1 and 9 are directed to the judicial exception. (Step 2A: YES).
Dependent claims 2-3, 10 are directed to making payment using the pre-existing concept of cryptocurrencies, claims 4-5, 11-12 are directed to marking winning bids and enforcing restrictions to inhibit claiming by non-winning bidders similar to known Vickers auction of requiring sealed bids so that the bidders don’t get to see each other’s bids, claims 6 and 13 merely describes that the blockchain is based upon EVM a pre-existing concept before the Applicant’s effective filing date , and claims 7 and 14 are directed to making a fee payment. These additional elements of claims 2-7, and 10-14 do not integrate the recited judicial exception into a practical application, because they do not impose any meaningful limits on practicing the abstract idea . Limitations of clams 8 and 14 are mere extension of the limitations already discussed and analyzed for their base claims 1 and 9 above as do not integrate the recited judicial exception into a practical application, because they do not impose any meaningful limits on practicing the abstract idea.
Thus, the additional elements of claims 1-15 do not integrate the recited judicial exception into a practical application, because they do not impose any meaningful limits on practicing the abstract idea (Step 2A, Prong Two: NO), and the claims 1-15 are directed to the judicial exception. (Step 2A: YES).
Step 2B analysis: This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05.
The claims 1-15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Since claims are as per Step 2A are directed to an abstract idea, they have to be analyzed per Step 2B, if they recite an inventive step, i.e., the claims recite additional elements or a combination of elements that amount to “Significantly More” than the judicial exception in the claim.
As discussed above with respect to Step 2A Prong Two, the additional elements in the claims 1-15 amount to no more than mere instructions to apply the exception using generic concept of using Ethereum Virtual Machine on a blockchain and smart contracts , and generally linking the judicial exception to a particular technological environment or field of use. The same analysis applies here in 2B, i.e., mere instructions to apply the exception using a generic computer components, and generally linking the judicial exception to a particular technological environment or field of use using a generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solution activity, which do not provide an inventive concept. (Step 2B: NO).
3. Note: The bolded text represents “[[emphasis added to the relevant text]] direct quotes from the references are in a smaller and italic font.
4. Prior art discussion:
Reference independent claims 1 and 9, the best prior art of record including references
Galal, Hisham S.; Youssef, Amr M.. Springer ; “Trustee: Full Privacy Preserving Vickery Auction on Top of Ethereum”; hereinafter Trustee and Liptay et al. [US 20150154672 A1[], hereinafter Liptay cited in the Non-Final Rejection mailed 03/10/2025, alone or combined, neither teaches nor renders obvious at least the limitations, as a whole, comprising, “the one or more bids being prepared with an ECDH cryptographic key exchange specific to each of the one or more bids, each bid having a price value that is cryptographically sealed from all other parties on the blockchain-based network by a symmetric cipher for which the key is derived from a shared secret that is determined as part of a per-bid ECDH cryptographic key exchange, and each bid being coupled with the respective public key when stored by the auction contract, revealing a private key to allow any of the one or more bidders to reveal a plaintext value of each bid using its respective public key along with the private key, and confirming, by the auction contract, the plaintext value of each bid, the sorting of all winning bids being based on the plaintext value and the market-clearing price for the one or more items.” Claims 2-8 and 10-15 depend from claim 9.
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(i) Williams et al. [US 20200160320 A1 cited in the Non-Final Rejection mailed 03/10/2025 , in the field of authorizing Blockchain including an EVM [[Ethereum Virtual Machine] network transactions teaches updating a token contract related to a cryptocurrency managed by the blockchain-based network to transfer a value such as transaction fees [See s para 0073, “ tokens are digital assets that can represent anything from loyalty points to vouchers and IOUs to actual objects in the physical world. Such tokens may be a smart contract that runs on top of the Ethereum blockchain. The code of the smart contract may be uploaded on the EVM, that may be a universal runtime compiler or browser, to execute the smart contract's code. …. If a user or another smart contract within Ethereum sends a message to that token's contract in the form of a “transaction,” the code may update its database. Tokens can also be tools, such as in-game items, for interacting with other smart contracts. In contrast to tokens, ether is hard coded into the Ethereum blockchain. Ether is sold and traded as cryptocurrency and it also powers the Ethereum network by allowing users to pay for smart contract transaction fees.”
Foreign reference:
(ii) WO 2020/167333 A1 [See paras 0063- 0065] describes Applications of the Oblivious transfer 214 may be used as part of an auction receiving auction bids for a sender device 204 hosting the bidding system and the sender device 204 can select a number of bids received from the receiver device 202, wherein the receiver device 202 receives encrypted data 308 including the auction bids and an encrypted auction bid management program. The receiver device 202 decrypt the encrypted data 308 to receive the winning bid and may use this input to execute the auction bid management program to inform the winning bidder and take additional actions such as automatic withdrawal of funds. Many aspects of the encrypted program 320 may be advantageously implemented using blockchain technology so that while conducting the auction, the encrypted program 320 can use smart contracts in which the value of a winning bid is automatically deducted from a winner’s payment account at the time the win is determined. The invention also describes use of ECDH to generate a shared secret from a private key and a public key.
Response to Arguments
6.1. 35 USC 101 rejection:
Applicant's arguments filed 09/10/2025 have been fully considered but they are not persuasive.
Step 2A, Prong One:
Applicant’s arguments, see paragraph 0006 on pages 7-8 that the claims do not recite an abstract idea are not persuasive. Step 2A, Prong One eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. Here, both the independent claims 1 and 9 recite limitations, “ opening an auction using an auction contract, the auction contract representing one or more items to be auctioned, receiving, from one or more bidders one or more bids for the one or more items to be auctioned, each bid having a price value that is sealed from all other parties ; calculating, based on the one or more bids, a market-clearing price for the one or more items in the auction and an ordering of the one or more bids to determine one or more winning bids; reveal a plaintext value of each bid and confirming the plaintext value of each bid, the sorting of all winning bids being based on the plaintext value and the market-clearing price for the one or more items”, relate to a commercial activity of conducting an auction and fall under “Certain Methods of Organizing Human Activity”. See MPEP 2106.04(a)(2), subsection II. Further, the step of calculating, based on the one or more bids, a market-clearing price for the one or more items in the auction and an ordering of the one or more bids to determine one or more winning bids may be practically performed in the human mind using observation, evaluation , judgment, and opinion amounting to “Mental Processes”. See MPEP 2106.04(a)(2), subsection III. As such the independent claims 1 and 9 both “describe” and “set forth” abstract idea satisfying Step 2A, Prong One.
Step 2A, Prong Two:
Applicant’s arguments, see paragraphs 0007-0008 on page 8, “ Even if an abstract idea is recited (which Applicant does not concede), under Step 2A Prong 2, the claims integrate it into a practical application. The claims improve blockchain technology by providing a trustless, verifiable multi-unit auction mechanism that preserves bid privacy during the auction while allowing post-auction verification of all bids without relying on trusted third parties or hardware (e.g., Intel SGX enclaves as in prior art). The specific use of per- bid ECDH—where each bid is sealed using a unique shared secret derived from the auction's public key and the bidder's respective public key, followed by revelation of the auction's private key—enables any party to independently verify the market-clearing price and bid ordering on the blockchain. This reduces computational overhead, enhances transparency, and prevents fraud in decentralized systems. See Specification [0020]-[0025] (explaining how this protocol achieves verifiability and efficiency on Ethereum Virtual Machine-compatible blockchains). [0008] This is analogous to Enfish, LLC v. Microsoft Corp., where claims improved database functionality, or Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., where claims improved user interfaces. Here, the claims improve blockchain auction systems by solving privacy-verifiability trade-offs technically.”, that the claims are not directed to an abstract idea are not persuasive. Applicant’s arguments that using ECDH reduces “computational overhead, enhances transparency, and prevents fraud in decentralized systems.” Integrates the abstract idea into a practical application are not persuasive, because use of ECDH have been previously widely used for secure messaging between entities using a private key to establish a shared secret key between two parties over an insecure channel to the industry . The recitation of use of ECDH and EVMC blockchain in the limitations merely confines the use of the abstract idea to a particular technological environment (EVMC blockchains using previously known ECDH for cryptographic messaging ) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h) and as about how the “detecting” and “analyzing” are accomplished. See MPEP 2106.05(f).
Examiner disagrees with the Applicant’s arguments that the claims are analogous to the claims to “Enfish” and “Core Wireless “ claims.
In Enfish the claims were not directed to an abstract idea as they were directed to configuring a computer for creating a new database table resulting in improvements to computer operations which is an improvement on the existing database technology including a single table opposed to a standard model where each entry is in a separate table, including faster search times and smaller memory requirements. Enfish has no applicability in the instant application, as analyzed and discussed above. In the instant Application the claims are not directed to any improvement in computer operations but instead directed to an abstract idea of conducting an auction by simply appending well-understood, routine, conventional activities such as ECDH cryptographic factor for messaging and EVM-compatible blockchain with previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)).
Core Wireless:
In the case of Core Wireless the claims are directed to an improved user interface comprising “summarizing and presenting information in electronic devices requiring “an application summary that can be reached directly from the menu” specifying a particular manner by which the summary window must be accessed. The claims further require the application summary window list a limited set of data, “each of the data in the list being selectable to launch the respective application and enable the selected data to be seen with the respective application”. This claim restrains the type of data that can be displayed in the summary window and the “summary window is displaced while the one or more applications are in an un-launched state”, a requirement that the device applications exist in a particular state. These limitations in claims of Core Wireless disclose a specific manner of displaying a limited set of information to the user rather than using conventional user interface to display a generic index on a computer resulting in an improved user interface for electronic devices similar to Enfish, and Finjan. Core Wireless has no applicability in the instant application, as analyzed and discussed above. In the instant Application the claims are not directed to any improvement in computer operations but instead directed to an abstract idea of conducting an auction by simply appending well-understood, routine, conventional activities such as ECDH cryptographic factor for messaging and EVM-compatible blockchain with previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)).
Step 2B:
Applicant’s arguments with respect to Step 2B, see paragraph 0009 on page 9, “ The ordered combination of elements—per-bid ECDH sealing, private key revelation for plaintext exposure, and smart contract confirmation of values—is unconventional and provides inventive programming for blockchain auctions. This is not generic computer implementation but a specific cryptographic- blockchain integration not well-understood, routine, or conventional. See Specification [0030]- [0035] (contrasting with prior art requiring trusted enclaves or revealing bids prematurely). Accordingly, Applicant respectfully asserts that the claims are eligible”, because Step 2B analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. See MPEP 2106.05. The additional elements of using ECDH with ECDH cryptographic messaging and using blockchain for conducting an abstract idea directed to auctions does not amount to “Significantly More”. In the instant Application the claims are not directed to any improvement in computer operations but instead directed to an abstract idea of conducting an auction by simply appending well-understood, routine, conventional activities such as ECDH cryptographic factor for messaging and EVM-compatible blockchain with previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)). See reference Gupta et al. [US 2006/0209789 A1, see para 0023] cited as an evidence that the concept of using ECDH was previously well-known before the effective filing date of the claimed invention, “ The Elliptic Curve Diffie Hellman (ECDH) key exchange and the Elliptic Curve Digital Signature Algorithm (ECDSA) are elliptic curve counterparts of the well-known Diffie-Hellman algorithm and the digital signature algorithm (DSA), respectively. In ECDH key agreement, two communicating parties A and B agree to use the same curve parameters. They generate their private keys k.sub.A and k.sub.B, and corresponding public keys Q.sub.A=k.sub.AG and Q.sub.B=k.sub.BG. The parties exchange their public keys and each party multiplies its private key and the other's public key to arrive at a common shared secret k.sub.AQ.sub.B=k.sub.BQ.sub.A=k.sub.Ak.sub.BG. While a description of ECDSA is not provided here, it similarly parallels DSA. Recently, NIST approved ECC for use by the U.S. government. Several standards organizations, such as IEEE, ANSI, OMA (Open Mobile Alliance) and the IETF, have ongoing efforts to include ECC as a required or recommended security mechanism.”]. Similarly, reference Li et al [US 20210157930 A1; see para 0003 cited as an evidence that the concept of using blockchain with smart contract was previously well-known before the effective filing date of the claimed invention, “ The blockchain technology is a distributed database technology that ensures that data cannot be tampered with or forged by using cryptography and a consensus mechanism. With the development of computer and Internet technologies, the blockchain technology is highly praised due to features such as decentralization, openness and transparency, and trustworthiness, and is widely used in many scenarios such as smart contracts, securities trading, e-commerce, Internet of Things, social communication, file storage, existence proof, identity verification, and stock ownership crowdfunding.”]. Accordingly, individually or even in combination, the additional elements in the claims do not integrate the abstract idea into a practical application and amount to “Significantly More” because they do not impose any meaningful limits on practicing the abstract idea and are not indicative of any of the following meaningful limits, see “ MPEP 2106.04 (d)::
• An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field; See MPEP 2106.05(a).
• an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; See MPEP 2106.05(b).
• an additional element effects a transformation or reduction of a particular article to a different state or thing; see MPEP 2106.05(c).and
• an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.29 an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim; See MPEP 2106.05(e) and Vanda Memo .
In view of the foregoing, the rejection of claims 1-15 [not currently amended] under 35 USC 101 is sustainable and maintained as submitted in the Non-Final Rejection mailed 03/10/2025.
6.2. 35 USC 103 rejection:
Applicant’s arguments, see , see pages 9-11, filed 09/10/205, with respect to rejection of claims 1-15 under 35 USC 103 have been fully considered and are persuasive, specially, see pages 9-10, wherein the Applicant argues that the combined teachings of Trustee and Liptay do not teach the limitations, “revealing a private key to allow any of the one or more bidders to reveal a plaintext value of each bid using its respective public key along with the private key; and "confirming, by the auction contract, the plaintext value of each bid" recited in the independent claims 1 and 9. The rejection of claims 1 and 9 with their dependent claims 2-8, and 10-15 respectively under 35 USC 102 has been withdrawn.
7. Note: If the independent claims 1 and 9 are amended to overcome 35 USC 101 rejection, the application can be placed in condition for allowance. All amendments would be subject to further reconsideration and search
Conclusion
8. Final Action:
THIS ACTION IS MADE FINAL. 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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/YOGESH C GARG/Primary Examiner, Art Unit 3688