DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/26/2026 has been entered.
Acknowledgements
Claims 1, 11, and 14 have been amended. Claims 3, 5, 7, 13, 15, and 17 were previously canceled. Claims 1-2, 4, 6, 8-12, 14, 16, and 18-24 are pending and presented for examination.
Response to Arguments
Applicant’s amendment to claim 14, filed 03/26/2026, has overcome the claim objection set forth in the Final Rejection 12/29/2025. The claim objection to claim 14 has been withdrawn.
Applicant’s arguments, see pgs. 10-14, filed 03/26/2026, with respect to the 35 U.S.C. 101 rejection of claims 1-2, 4, 6, 8-12, 14, 16, and 18-24 have been fully considered and are persuasive. Specifically, the claimed invention applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technology environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception MPEP 2106.05(e). Such meaningful way is addressing the problem(s) that can arise from blockchain anonymity, thereby decreasing relative risk when conducting blockchain transactions. Therefore, the 35 U.S.C. 101 rejection of claims 1-2, 4, 6, 8-12, 14, 16, and 18-24 has been withdrawn.
Applicant's arguments, filed 03/26/2026, with respect to the prior art rejection have been fully considered, but they are not persuasive.
In response to the Applicant’s remarks under “A. Independent Claim 1,” Examiner notes that “the transaction account maintained by a financial institution on a financial network that is external to the blockchain network” has been passively recited such that it does not meaningfully limit how the account identifier of a transaction account is received or how the account type for the blockchain wallet is identified. However, for purposes of compact prosecution, see below for how the claim language is interpreted and how the prior art is applied.
Yoo U.S. 2021/0342803 discloses a blockchain system 200 that includes a blockchain network in at least Figs. 3, 9A. Such blockchain system 200 including a blockchain network in Yoo is analogous to the claimed “blockchain network.” Yoo also discloses a participant node 20 seen in at least Fig. 9A. Such participant node is external to the blockchain system 200 in at least Figs 3 and 9A. Similar to the instant specification, which appears to be relying on Fig. 1 – the depiction of issuing institution 110 being separate from the blockchain network 104 - to disclose the issuing institution 110, i.e. financial institution, being on a “financial network that is external to the blockchain network,” it would also be reasonable to conclude that Yoo discloses the same, i.e. the participant node 20 being on a network that is external to the blockchain network based on the depictions in Figs. 1-2 and 8-9A of Yoo. Yoo discloses in Fig. 1, [0066], [0083] that the decentralized network 10 is not the same as the blockchain system 200, which includes the blockchain network. Therefore, the decentralized network 10 in which the participant(s) participate is external from the blockchain network. Yoo discloses in [0103] that the participant node 20 may include “an end user, a network service provider, a resource user, a resource provider, a regulator, an application service provider, a platform development and administrator, and so on.” Although Yoo does not expressly disclose the participant node 20 as a “financial institution,” Yoo does disclose that the participant node may be any entity. Therefore, one of ordinary skill in the art would recognize that modifying Yoo’s participant node to be a financial institution is merely a simple substitution of one known element, i.e. financial institution, for another to obtain predictable results.
In [0019] of Yoo, “The participant node 20 may update related information in the participant registration account when the information of the participant node 20 is changed.” The participant registration account of Yoo is analogous to the transaction account of the claimed invention. Updating the participant registration account by the participant node in Yoo is analogous to “the transaction account maintained by a financial institution…” because updating an account is one of a plurality of actions that can be performed when maintaining the account.
In response to Applicant’s remarks under “D. Response to Advisory Action Comments on Dependent Claims,” the remarks do not provide any new evidence against the prior art for claims 4, 6, 9, 14, 19, and 23-24. Such remarks have already been addressed in the Advisory Action 02/27/2026. For purposes of brevity, please refer to the Advisory Action 02/27/2026.
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 1-2, 4, 6, 8-12, 14, 16, and 18-24 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.
Claims 1 and 11 recite the newly added amendment: “the transaction account maintained by a financial institution on a financial network that is external to the blockchain network.” Fig. 1 of the instant specification illustrates the issuing institution 110, i.e. the financial institution, as being separate from the blockchain network 104. However, the instant specification does not disclose or suggest that the transaction account is maintained by the issuing institution. At most, the instant specification discloses in [0022] – “The issuing institution 110 can be any entity that issues transaction accounts to users for use in sending or receiving currency.” Issuing a transaction account is not the same as maintaining the transaction account. Therefore, the amendments introduce new matter.
Claims 2, 4, 6, 8-10, 12, 14, 16, and 18-24 depend from claims 1 and 11. They do not cure the deficiencies presented above. Therefore, they are also rejected under 35 U.S.C. 112(a) for at least based on their dependency from a rejected base claim.
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.
Claims 1, 4, 6, 9-11, 14, 16, and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo U.S. 2021/0342803 in view of Marsh U.S. 2022/0147983, and further in view of Agrawal et al. U.S. 2019/0164153 (herein referred to as “Agrawal”).
Re Claim 1, Yoo discloses a method for account type registration for blockchain wallets, comprising:
receiving, by a receiving device of a processing server, a public key of a cryptographic key pair of a blockchain wallet associated with a blockchain network [0116] – “initiating a registration process, and may send a registration transaction…to the blockchain system 200,” “The registration transaction may further include…a public key of the participant,” [0115] – “the participant node 20 may install a downloaded blockchain wallet function 111…and may use the blockchain wallet function 111 to create a blockchain account.”;
receiving, by the receiving device of the processing server, an account identifier of a transaction account ([0116] – “may send a registration transaction including a participant identifier for identification of the participant node,” [0118] – “may create a participant registration account…data…may be stored for each participant identifier in the participant registration account,” i.e. participant identifier is analogous to an account identifier, participant registration account is analogous to a transaction account), the transaction account maintained by a financial institution on a financial network that is external to the blockchain network (Fig. 3 - blockchain system 200 including a blockchain network is analogous to blockchain network, participant is external to the blockchain system 200, Fig. 9A - participant node 20 is external to the blockchain system 200 in Fig. 9A, Fig. 1, [0066], [0083] – decentralized network 10 is not the same as the blockchain system 200, which includes the blockchain network, therefore the decentralized network 10 in which the participant(s) participate is external from the blockchain network, [0019] - “The participant node 20 may update related information in the participant registration account when the information of the participant node 20 is changed.” The participant registration account of Yoo is analogous to the transaction account of the claimed invention. Updating the participant registration account in Yoo is analogous to “the transaction account maintained by a financial institution on a financial network that is external to the blockchain network” because updating an account is one of a plurality of actions that can be performed when maintaining the account. [0103] - the participant node 20 may include “an end user, a network service provider, a resource user, a resource provider, a regulator, an application service provider, a platform development and administrator, and so on.” So, although Yoo does not expressly disclose the participant node 20 as a “financial institution,” Yoo does disclose that the participant node may be any entity. Therefore, one of ordinary skill in the art would recognize that modifying Yoo’s participant node to be a financial institution is merely a simple substitution of one known element, i.e. financial institution, for another to obtain predictable results);
Examiner notes that “the transaction account maintained by a financial institution on a financial network that is external to the blockchain network” has been passively recited such that it does not meaningfully limit how the account identifier of a transaction account is received or how the account type for the blockchain wallet is identified. However, for purposes of compact prosecution, prior art is provided.
identifying, by the processing server, an account type for the blockchain wallet based on the account identifier of the transaction account ([0116-0118] – the blockchain account(s) are each associated with a participant role, a participant role is analogous to an account type);
storing, in a data entry, at least the public key of the blockchain wallet and an identifier associated with the identified account type for the blockchain wallet [0118] – “Data including the blockchain account identifier, the participant role…the public key of the participant, and so on may be stored for each participant identifier in the participant registration account.”
However, Yoo does not expressly disclose
identifying, by the processing server, one or more sanctions imposed on the transaction account;
storing, in the data entry, one or more sanction identifiers associated with the one or more identified sanctions;
determining, by the processing server, the data entry includes the one or more sanction identifiers and the new blockchain transaction is subject to one or more sanctions associated with the one or more sanction identifiers;
generating, by the processing server, a transaction notification message based on the transaction data for the new blockchain transaction and the one or more sanction identifiers of the data entry; and
transmitting, by a transmitting device of the processing server, the transaction notification message to a regulatory entity.
Marsh discloses a hierarchy-based distributed ledger. Specifically, Marsh discloses
identifying, by the processing server, one or more sanctions imposed on the transaction account [0108] – “Such rules may be stored and retrieved from the distributed ledger…determine if the transaction satisfies the rules for each of the intermediary accounts,” wherein
storing, in the data entry, one or more sanction identifiers associated with the one or more identified sanctions [0108] – “The rules may be stored in the distributed ledger…for the individual accounts,”;
determining, by the processing server, the data entry includes the one or more sanction identifiers and the new blockchain transaction is subject to one or more sanctions associated with the one or more sanction identifiers [0108] – “Such rules may be stored and retrieved from the distributed ledger…determine if the transaction satisfies the rules for each of the intermediary accounts,”;
generating, by the processing server, a transaction notification message based on the transaction data for the new blockchain transaction and the one or more sanction identifiers of the data entry ([0113] – “each message that is transmitted between the different devices may use a common data model with a common format and common transaction attributes [for the transaction],” thereby suggesting that the messages are generated because they follow the format of such common data model); and
transmitting, by a transmitting device of the processing server, the transaction notification message to a regulatory entity ([0113] – “The first computing device may transmit messages using the data model so the devices that maintain the distributed ledger may easily parse the message…,” the devices are analogous to a regulatory entity because they analyze the data and confirm the data to include in the record being added to the distributed ledger, thus “regulating” the record to be added).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo’s registration process with the teachings of identifying, storing, and determining sanctions imposed on the account and generating and transmitting a transaction notification message for the transaction in Marsh. One would be motivated to make this combination to ensure transactions satisfy a transaction policy Marsh [0107] and ensure the distributed ledger is updated quickly Marsh [0113].
Yoo in view of Marsh do not explicitly teach
receiving, by the receiving device of the processing server, transaction data for a new blockchain transaction on the blockchain network, the transaction data including at least the public key of the blockchain wallet and a second public key of a second blockchain wallet;
identifying, by the processing server, the data entry including the public key of the blockchain wallet.
Agrawal discloses a blockchain system for confidential and anonymous smart contracts. Specifically, Agrawal discloses
receiving, by the receiving device of the processing server, transaction data for a new blockchain transaction on the blockchain network, the transaction data including at least the public key of the blockchain wallet and a second public key of a second blockchain wallet ([0085] – “The transaction data may include a set of public keys of the accounts involved in the transaction,” [0030] – “Once a validation node has received the message,” “The message may include transaction data,” Fig. 1, [0007] – a blockchain network);
identifying, by the processing server, the data entry including the public key of the blockchain wallet ([0091] – “the set of entries may include a first entry having a first public key associated with a first account; a second entry having a second public key associated with a second account.” The public key of the blockchain wallet is interpreted to be the first blockchain wallet introduced in “receiving…a public key of a cryptographic key pair of a blockchain wallet…”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo in view of Marsh’s registration process with the teachings of receiving transaction data and identifying the data entry including the public key of the blockchain wallet in Agrawal. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 4, Yoo in view of Marsh and Agrawal teach the method of claim 1, and Yoo in view of Marsh and Agrawal further teach comprising:
identifying, by the processing server, a second data entry that includes the second public key of the second blockchain wallet Agrawal, [0091] – “the set of entries may include a first entry having a first public key associated with a first account; a second entry having a second public key associated with a second account”; and
storing, by the processing server, at least one of the one or more sanction identifiers in the second data entry (Agrawal, [0082] – “Each entry may include a public key that can be used to reference an account…a lock status of the public key…The lock status indicates whether a public key (and its associated account) is locked,” a locked status is analogous to the at least one of the one or more sanction identifiers).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo’s registration process with the teachings of identifying a second data entry and storing at least one of the one or more sanction identifiers in the second data entry in Agrawal. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 6, Yoo in view of Marsh and Agrawal teach the method of claim 4, and Yoo in view of Marsh and Agrawal further teach the method further comprising:
updating, by the processing server, the second data entry based on the one or more sanctions imposed on the transaction account Agrawal [0092] – “An account can be locked in response to receiving a lock request from a user device associated with the account,” [0082] – “Each entry may include…a lock status of the public key,” thereby suggesting the lock status is updated when a lock request is received.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo’s registration process with the teachings of updating entries in Agrawal. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 9, Yoo in view of Marsh and Agrawal teach the method of claim 1, and Yoo in view of Marsh and Agrawal further teach wherein the account identifier of the transaction account is a portion of a payment account number Yoo, Fig. 20 – user node can replenish account with asset, thereby suggesting a payment account associated with the user node.
Examiner notes that the content of the account identifier is nonfunctional descriptive language. The content of the account identifier does not meaningfully limit how the account type is identified and/or how the account type is registered. Therefore, the content of the account identifier cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 10, Yoo in view of Marsh and Agrawal teach the method of claim 1, and Yoo in view of Marsh and Agrawal further teach wherein the account type is one of an individual or an entity Yoo, [0066].
Examiner notes that the content of the account type is nonfunctional descriptive language. The content of the account type does not meaningfully limit how the account type is identified and/or how the account type is registered. Therefore, the content of the account type cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claim 16, Yoo in view of Marsh and Agrawal teach the method of claim 14, and Yoo in view of Marsh and Agrawal further teach wherein the new blockchain transaction is subject to the one or more sanctions, and the processing server is configured to deny the new blockchain transaction Marsh [0081] – “the central server may decline the transaction [responsive to determining the transaction attributes do not satisfy the respective node’s rules].”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo’s registration process with the teachings of denying a transaction based on defined rules in Marsh. One would be motivated to make this combination to ensure transactions satisfy a transaction policy Marsh [0107].
Re Claim 21, Yoo in view of Marsh and Agrawal teach the method of claim 1, and Yoo in view of Marsh and Agrawal further teach wherein the one or more sanctions include at least one of: a transaction amount limit, a transaction participant limit, a transaction frequency limit, a transaction time limit, a transaction date limit, and transaction activity report requirement Marsh, [0108] – “may have a transaction limit indicating the maximum value of an asset that can be transferred.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo’s registration process with the teachings of a transaction amount limit in Marsh. One would be motivated to make this combination to ensure transactions satisfy a transaction policy and enable unique control of the transactions Marsh [0008], [0107].
Re Claim 23, Yoo in view of Marsh and Agrawal teach the method of claim 1, and Yoo in view of Marsh and Agrawal further teach wherein the identifying the one or more sanctions imposed on the transaction account includes:
generating, by the processing server, a sanction data request for the blockchain wallet, the sanction data request including at least the public key for the blockchain wallet (Marsh, [0101] – “a request to execute a transaction…The request may include an identification of the first account and the second account,” “the blockchain wallet” is interpreted to be the first blockchain wallet introduced in “receiving…a public key of a cryptographic key pair of a blockchain wallet…”);
transmitting, by the transmitting device of the processing server, the sanction data request to the regulatory entity (Marsh, [0081] – “When a node initiates a transaction, the server may send the transaction attributes for the transaction to the corresponding nodes,” i.e. regulatory entity); and
receiving, by the receiving device of the processing server, sanction data from the
regulatory entity, the sanction data identifying the one or more sanctions (Marsh, [0081] – “the central server may receive rules from the different nodes”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo’s registration process with the teachings of identifying the one or more sanctions imposed on the transaction account in Marsh. One would be motivated to make this combination to ensure transactions satisfy a transaction policy Marsh [0107].
Re Claims 11, 14, 19-20, 22, and 24, they are the system claims of the method claims 1, 4, 9-10, 21, and 23 respectively. Claims 11, 14, 19-20, 22, and 24 recite similar distinguishing features as claims 1, 4, 9-10, 21, and 23. Furthermore, Yoo discloses a blockchain system Fig. 3 comprising at least a processor Fig. 25, 2510, including a plurality of blockchain nodes [0083], i.e. regulatory entity, and such blockchain system 200 providing services to other computers/systems Fig. 2, [0002], [0078]. Therefore, they are rejected for the same reasons above.
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo U.S. 2021/0342803 in view of Marsh U.S. 2022/0147983, and further in view of Agrawal et al. U.S. 2019/0164153 (herein referred to as “Agrawal”) as applied to claims 1 and 11 above, and further in view of Auerbach et al. U.S. Patent 12,093,942 (herein as “Auerbach”).
Re Claim 2, Yoo in view of Marsh and Agrawal teach the method of claim 1, and Yoo in view of Marsh and Agrawal further teach wherein
the data entry is a blockchain data value Yoo [0151] – “the participant registration information stored in the blockchain database.”
However, Yoo in view of Marsh and Agrawal do not explicitly teach
the blockchain data value is stored in a second blockchain separate from the blockchain.
Auerbach discloses an account creation process for digital assets in a peer-to-peer network. Specifically, Auerbach discloses
the blockchain data value is stored in a second blockchain separate from the blockchain Col. 349, lines 48-53 – “the fiat-backed digital asset data base may be maintained on a side chain. A sidechain, in embodiments, may refer to a portion of the distributed transaction ledger. For example, an administrator, user, and/or trusted entity may maintain a portion of the distributed transaction ledger and/or an electronic copy of a portion of the distributed transaction ledger.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo in view of Marsh and Agrawal’s registration process with the teaching of storing the blockchain data value in a sidechain, i.e. second blockchain in Auerbach. One would be motivated to make this combination because use of a sidechain reduces both transaction costs and transaction times overall Auerbach Col. 76, lines 1-2.
Re Claim 12, it is the system claim of the method claim 2. Claim 12 recites similar distinguishing features as claim 2. Therefore, it is rejected for the same reasons above.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo U.S. 2021/0342803 in view of Marsh U.S. 2022/0147983, and further in view of Agrawal et al. U.S. 2019/0164153 (herein referred to as “Agrawal”) as applied to claims 1 and 11 above, and further in view of Shahin et al. U.S. 2022/0343015 (herein referred to as “Shahin”).
Re Claim 8, Yoo in view of Marsh and Agrawal teach the method of claim 1, however, Yoo in view of Marsh and Agrawal do not explicitly teach further comprising:
generating, by the processing server, a hash value by hashing the account identifier using a one-way hashing algorithm, wherein the data entry further includes the generated hash value.
Shahin discloses a system and a method for securing sensitive data for transaction requests using tokenization and encryption. Specifically, Shahin discloses
generating, by the processing server, a hash value by hashing the account identifier using a one-way hashing algorithm, wherein the data entry further includes the generated hash value [0069] – “concatenate and hash the values of certain transaction request fields [DFI account number],” “the hash module 220 may apply a SHA-224 hash to the concatenation and store the hashed concatenation into the tokenization and encryption datastore 250,” “the hashing operation cannot be reversed.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Yoo in view of Marsh and Agrawal’s registration process with the teachings of generating a hash value by hashing the account identifier and storing the generated hash value in Shahin. One would be motivated to make this combination to enable a high level of security for sensitive information Shahin [0003].
Re Claim 18, it is the system claim of the method claim 8. Claim 18 recites similar distinguishing features as claim 8. Therefore, it is rejected for the same reasons above.
Conclusion
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/CHRISTINE DANG/Examiner, Art Unit 3698
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