DETAILED ACTION
Status of Claims
Claims 1, 4-6, 8, and 11 have been amended.
Claims 3 and 13 have been previously cancelled
Claims 1-2, 4-12, and 14-20 are currently pending and have been considered by the examiner.
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
101 Rejection:
Although the examiner previously indicated that the proposed claim amendments appear to overcome the previously issued 101 rejection in the examine interview conducted 23 December 2025, after additional reconsideration, the examiner has determined that the claims cannot be considered patent eligible under 35 USC 101.
Specifically, the examiner contends that the BRI of the claimed invention does not necessarily encompass the function of the smart contract accessing/referencing the off-chain allow list itself, merely that said list is “available” to the smart contract. Thus, an embodiment of the invention exists wherein the smart contract does not pull data from the off-chain allow list and thus the proposed improvement outlined by the applicant in the remarks received 23 December 2025 cannot be considered to be applicable to the BRI of the claimed invention. Thus, based upon the above rationale and the following 101 rejection, the examiner must maintain the previously issued 101 rejection.
Prior Art Rejection:
Applicant’s arguments have been considered and have been deemed persuasive by the examiner in view of additional search and consideration. Thus, the previously issued prior art rejection has been rescinded.
Claim Rejections - 35 USC § 101
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 1-2 and 4-12 and 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-2 and 4-10 are directed to a method and claims 11-12 and 14-20 are directed to a non-transitory storage medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites the following:
A method comprising:
receiving a transaction at a digital wallet, wherein the transaction appears valid, wherein a private key associated with the digital wallet was used to generate the transaction;
executing a smart contract in response to receiving the transaction, wherein the smart contract implements zero-trust security for a digital asset stored in the digital wallet, wherein the smart contract is configured to protect the digital asset from unauthorized transactions by automatically enforcing a protective migration of the digital asset when an unauthorized transaction is detected;
determining that the transaction is authorized or unauthorized by the smart contract using an allowed transaction list available to the smart contract and generated specifically for the digital wallet and stored outside of a blockchain associated with the digital wallet; and
cancelling the transaction and performing a protective action when the transaction is unauthorized and performing the transaction when the transaction is authorized, wherein the transaction is unauthorized when the transaction is not specified in the allowed transaction list considered by the smart contract.
Performing the transaction when the transaction is authorized,
wherein the protective action comprises automatically transferring the digital asset to a second digital wallet associated with a private key different from the private key associated with the digital wallet and automatically associating the transferred digital asset with a new instance of a smart contract that includes an allowed transaction list.
Regarding Step 2A Prong One, the claims recite the abstract idea of risk mitigation. Specifically, the claims recite the limitations underlined above which recite the process of mitigation risk in an economic transaction which is grouped within the Certain Methods of Organizing Human Activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP § 2106.04) because the claims involve the process of mitigating risk in an economic transaction. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP § 2106.04(d)), the additional element(s) of the claim(s) such as a “digital wallet” merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “digital wallet” perform(s) the steps or functions underlined above. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of a “digital wallet” amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “digital wallet” perform(s) the steps or functions underlined above. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite risk mitigation. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2, 4-10, 12 and 14-20 further describe the recited abstract idea. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Specifically:
Claims 2 and 12 merely recite additional limitation directed towards steps required to perform the recited abstract idea using a computer device.
Claims 4, 6, 8-9, 14, 16, and 18-19 recite additional limitations which are also directed towards the abstract idea of risk mitigation.
Claims 5, 7, 15, and 17 merely further describe data used by the claimed invention to perform the recited abstract idea of risk mitigation.
Claims 10 and 20 merely further describe the method used by the claimed invention to perform the recited abstract idea of risk mitigation.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, the dependent claims are also not patent eligible.
Conclusion
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bernardi (US 20240185191 A1) generally discloses a decentralized blockchain NFT framework which utilizes zero-trust security to implement NFT transactions.
Jakobsson et al. (US 20230385815 A1) generally discloses systems and techniques to facilitate content access within an NFT platform.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm 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, Neha Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
/COURTNEY P JONES/Primary Examiner, Art Unit 3699
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