DETAILED ACTION
This is a final office action on the merits. The U.S. Patent and Trademark Office (the Office) has received claims 1 – 20 in application 18/242,788.
Claims 1-8 and 10-18 are amended.
Claims 1-20 are pending and have been examined.
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
35 USC § 101
Applicant’s arguments, filed 11/07/2025, with respect to “Claim Rejections - 35 USC § 101” have been fully considered and are persuasive. The claim rejection of 35 USC § 101 has been withdrawn.
35 USC § 102
Applicant’s arguments with respect to claim(s) 1-20 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. The rejection is now updated to a 35 USC § 103 rejection.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winklevoss (US10984472B1) in view of Nieto (US11487850B1) and in further view of Ronca (US20150363783A1).
Regarding claims 1 and 11. Winklevoss teaches:
a computer-implemented method and a system comprising: a network access layer including a processor and storage hardware in communication with the processor, wherein the storage hardware includes instructions that when executed by the processor perform operations, and wherein the operations include comprising: receiving, at an enterprise access layer, an asset request from a requesting entity,
Note – The “prospective AP” is the requesting entity.
Winklevoss - Receive request from prospective AP to purchase shares in the trust (become an AP). Create a new digital wallet to receive assets. Receive assets (Fig. 17A).
Winklevoss does not teach, however Nieto discloses:
wherein the enterprise access layer corresponds to an enterprise resource that hosts exchangeable digital assets, and
Nieto – the…layer 118 may provide a customer-facing blockchain network and an enterprise-facing blockchain network (Column 7, lines 22-25). The enterprise-facing blockchain network may be for providing a backbone for processing transactions, storing information associated with the transactions and the users on the distributed ledger, and generating the digital assets (Column 7, lines 30-33).
wherein the exchangeable digital assets correspond to one or more assets stored in a private append-only data structure, wherein access to the private append-only data structure is controlled by a first set of cryptographic keys associated with an owner of the exchangeable digital assets, wherein the requesting entity does not have access to the private append-only data structure;
Nieto - A private, or permissioned, blockchain network…controlled by a single entity…determines who can participate…and who can view the information recorded on the blockchain. Users who wish to participate in a private network must first receive permission to join based on an access control mechanism (Column 6, lines 45-52).
identifying an asset control associated with an asset that corresponds to the asset request, wherein the asset control is configured by a permissions system of the enterprise access layer and
Nieto - A private, or permissioned, blockchain network…controlled by a single entity…determines who can participate…and who can view the information recorded on the blockchain. Users who wish to participate in a private network must first receive permission to join based on an access control mechanism (Column 6, lines 45-52).
in response to the asset control being satisfied by the at least one of the asset request or the requesting entity, storing the asset in a public append-only data structure to the requesting entity.
Nieto - customer - facing blockchain net- 25 query and may be utilized to further customize the digital work may be for interacting with the backend layer 110 including accessing and purchasing physical products , accessing and purchasing digital assets , and verifying the ownership (Column 7, lines 25- 29).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the wallet custody signing and relay workflow of Winklevoss with the private versus public blockchain separation of Nieto because doing so provides asset control.
The combination of Winklevoss and Nieto does not discloses, however Ronca discloses:
indicates a control parameter determined by enterprise access layer;
Ronca - calculate a risk score…determine a number of required…based at least in part upon the risk score (¶ 0009).
determining whether the asset control is satisfied by at least one of the asset request or the requesting entity; and
Ronca - determine a number of required validations to confirm the cryptocurrency transaction based at least in part upon the risk score (¶ 0009).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the wallet custody signing and relay workflow of Winklevoss and the private versus public blockchain separation of Nieto with the control parameter of Ronca because doing so implements secure enterprise fulfillment of asset requests while ensuring that the private side holdings and processing remain inaccessible to requesting entities on the public customer-facing side.
Regarding claims 2 and 12. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 1 and the system of claim 11, wherein storing the asset in the public append-nly data structure comprises storing the asset in the public append-only data structure at an address managed by a hot wallet of a digital wallet system.
Winklevoss - digital wallets for custody and other accounts to be used on behalf of participants in the trust , e.g. , AP custody accounts 315 , sponsor custody accounts 310 , trust custody accounts 300 , trust expense account 305 , and / or vault accounts 320 , to name a few ; transferring and / or having transferred , using one or more computers , digital math - based assets from and / or to one or more digital wallets associated with one or more digital wallets associated with one or more accounts) (Column 48, lines 29-38).
Regarding claims 3 and 13. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 1 and the system of claim 11, wherein storing the asset in the public append-only data structure comprises storing the asset in the public append-only data structure at an address managed by a cold wallet of a digital wallet system.
Winklevoss - cold storage digital wallets (Column 79, lines 4-5). a digital wallet identifier may comprise a public key and / or a public address (Column 18, lines 33-34).
Regarding claims 4 and 14. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 1 and the system of claim 11, wherein storing the asset in the public append-only data structure comprises storing the asset in the public append-only data structure at an address managed by a custodial wallet of a digital wallet system.
Winklevoss - a custody account may be a digital wallet (Column 52, line 16). The trust custody account 300 may store public and private keys for one or more digital wallets holding the trust's digital assets (Column 52, lines 25-27).
Regarding claims 5 and 15. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 3 and the system of claim 13, further comprising transferring a set of keys for the cold wallet to a hot wallet of the digital wallet system.
Winklevoss – Temporary digital wallets may be hot storage (Column 52, lines 33-34). Trustee scans the QR codes, decrypts and reassembles the Private key and decrypts the public key for cold storage digital wallet (Column 81, lines 33-35).
Regarding claims 6 and 16. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 3 and system of claim 13, wherein storing the asset in the public append-only data structure includes: signing a transaction involving the asset on the cold wallet; and relaying the signed transaction using a hot wallet of the digital wallet system that is associated with the cold wallet.
Winklevoss - The isolated computer may then access and sign the transaction data . The signed transaction data may then be computer , the transaction instructions to a decentralized electronic ledger maintained by a plurality of physically remote computer systems. FIG . 8 describes an exemplary method of performing transferred back to the networked computer using the same 60 secure transactions . In a step S702 , a digital wallet may be or different method of transfer as used for the unsigned transaction data) (Column 33, lines 58-61).
Regarding claims 7 and 17. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 3 and the system of claim 13, further comprising connecting the cold wallet to the requesting entity.
Winklevoss - the trustee transfers 9,986.44922498 bitcoins from a trust custody account to the newly created wallet in the AP2 custody account ; transfers such bitcoins from the AP2 custody 30 account to wallet associated with the Public Key identified by AP2 as its outside account) (Column 80, lines 26-31).
Regarding claims 8 and 18. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 1 and the system of claim 11, wherein the asset control matches an access control for an enterprise entity that submitted the asset to the enterprise access layer.
Nieto - Users who wish to participate in a private network must first provides users access to digital assets . For example , in managing user devices 122A , backend layer 110 may include servers for manufacturing physical products and shipping the physical products . Manufacturing servers may receive permission to join based on an access control mechanism (Column 6, lines 50-52).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the wallet custody signing and relay workflow of Winklevoss and the private versus public blockchain separation of Nieto with the control parameter of Ronca because doing so implements secure enterprise fulfillment of asset requests while ensuring that the private side holdings and processing remain inaccessible to requesting entities on the public customer-facing side.
Regarding claims 9 and 19. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claim 1 and the system of claim 11, wherein the asset control indicates a security clearance level.
Nieto - Users who wish to participate in a private network must first provides users access to digital assets . For example , in managing user devices 122A , backend layer 110 may include servers for manufacturing physical products and shipping the physical products . Manufacturing servers may receive permission to join based on an access control mechanism (Column 6, lines 50-52).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the wallet custody signing and relay workflow of Winklevoss and the private versus public blockchain separation of Nieto with the control parameter of Ronca because doing so implements secure enterprise fulfillment of asset requests while ensuring that the private side holdings and processing remain inaccessible to requesting entities on the public customer-facing side.
Regarding claims 10 and 20. The combination of Winklevoss, Nieto, and Ronca further teaches:
the method of claims 1 and the system of claim 11, wherein the asset control includes transactional detail requirements for the asset.
Winklevoss - The exemplary log 115 includes transaction identifiers, date and/or time information, fee information, digital asset account identifiers for the origin accounts, digital asset account identifiers for the destination accounts, and amounts transferred to and from each account. Such a ledger may also include description information(Column 13, lines 43-50).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dettinger (US8224872B2) - Methods, systems, and articles of manufacture for accessing data stored in multiple data sources. Such methods employ an automated software agent to maintain a collection of data sources available for querying. The data sources may all reside within a single local network or may be distributed throughout multiple locations. Generally, the automated software agent searches a given domain for additional data sources according to a defined set of selection criteria. After discovering an additional data source, the automated software agent configures a query application to reflect the availability the additional data source. Further, the automated software agent may periodically evaluate the collection of data sources against the selection criteria and remove those that are either no longer available or no longer satisfy the selection criteria.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA C STEVENSON whose telephone number is (571)270-7280. The examiner can normally be reached on Monday to Friday to 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick Mcatee, can be reached at telephone number 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698