DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 Amendment
2. The Amendment filed on August 19, 2026 has been entered. Claims 1, 8, and 15-16 have been amended. Claims 5 and 12 were previously cancelled. No additional claims have been cancelled and claims 21 and 22 have been added. Thus, claims 1-4, 6-11 and 13-22 are pending and rejected for the reasons set forth below.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-4, 6-11, and 13-22 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In sum, claims 1-4, 6-11, and 13-22 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception to patentability (i.e., a law of nature, a natural phenomenon, or an abstract idea) and do not include an inventive concept that is something “significantly more” than the judicial exception under the January 2019 patentable subject matter eligibility guidance (2019 PEG) analysis which follows.
Under the 2019 PEG step 1 analysis, it must first be determined whether the claims are directed to one of the four statutory categories of invention (i.e., process, machine, manufacture, or composition of matter). Applying step 1 of the analysis for patentable subject matter to the claims, it is determined that the claims are directed to the statutory category of a process (claims 1-4 and 6-7), a machine (claims 8-11 and 13-14) and a manufacture (claims 15-22), where the machine and manufacture are substantially directed to the subject matter of the process. (See, e.g., MPEP §2106.03). Therefore, we proceed to step 2A, Prong 1.
Under the 2019 PEG step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more designated categories of patent ineligible subject matter (i.e., organizing human activity, mathematical concepts, and mental processes) that amount to a judicial exception to patentability. Here, the claims recite the abstract idea of generating a smart contract using a set of rules by:
identifying two or more endpoints, including at least one sender and at least one recipient, each of the two or more endpoints being a blockchain wallet on a blockchain…;
determining one or more exchange rules to govern a stream of messages sent from the at least one sender to the at least one recipient;
generating a smart contract, according to the one or more exchange rules, wherein the one or more exchange rules specify blockchain enforcement of (i) recipient attestation via a token held in a recipient wallet, and (ii) per-message metered payment debited from a sender wallet and credited to the recipient wallet;
receiving an input message in the stream of messages from the at least one sender; and
in response to receiving the input message, invoking the smart contract to transfer the metered payment on the blockchain,…, to the at least one recipient, and upon successful blockchain attestation of the recipient wallet via verification of the token held in the recipient wallet, routing the input message directly from the at least one sender to the at least one recipient over a,.., according to the smart contract without being routed through an intermediate,…, or hub, wherein the verification is performed by the smart contract and includes verifying a blockchain state object bound to the recipient wallet, the blockchain state object comprising a non-fungible or nontransferable token recorded on the blockchain,....,
Here, the recited abstract idea falls within one or more of the three enumerated 2019 PEG categories of patent ineligible subject matter, to wit: the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions (e.g., generating a smart contract using a set of rules).
Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea. Independent claims 8 and 15 are nearly identical to independent claim 1 so the same analysis applies to those two claims as well. Claims 8 and 15 contain additional elements such as a “medium,” “processor,” and “system” which are being used to implement the abstract idea noted in claim 1.
Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “network,” “medium,” “processor,” and “system,” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see also, paragraphs [0023-0024] of the specification).
Dependent claims 2–4, 6-7, 9–11, 13-14, and 16–20 have all been considered and do not integrate the abstract idea into a practical application. Dependent claims 2, 9, and 16 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the exchange rules consist of payment rules for the stream of messages. Dependent claims 3, 10, and 17 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the payment rules include a rule governing payment using a specific type such as cryptocurrency. Dependent claims 4, 11, and 18 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that the generating is automatically performed based on certain preferences selected by the sender or recipient. Dependent claims 13, and 19 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe that an attestation feature is used for authentication of the identity of the sender and recipient. Dependent claims 6, 14, and 20 recite nearly identical limitations that further define the abstract idea noted in claim 1 in that they describe what the attestation feature is (“a feature to recognize a non-fungible token in a particular wallet on the blockchain”). Dependent claim 21 recites limitations that further define the abstract idea noted in claim 1 in that it describes that the input message is encrypted. Dependent claim 22 recites limitations that further define the abstract idea noted in claim 1 in that it describes how the verification process of the blockchain state object is conducted.
The elements of the instant process steps when taken in combination do not offer substantially more than the sum of the functions of the elements when each is taken alone. The claims as a whole, do not amount to significantly more than the abstract idea itself because the claims do not effect an improvement to another technology or technical field (e.g., the field of computer coding technology is not being improved); the claims do not amount to an improvement to the functioning of an electronic device itself which implements the abstract idea (e.g., the general purpose computer and/or the computer system which implements the process are not made more efficient or technologically improved); the claims do not perform a transformation or reduction of a particular article to a different state or thing (i.e., the claims do not use the abstract idea in the claimed process to bring about a physical change. See, e.g., Diamond v. Diehr, 450 U.S. 175 (1981), where a physical change, and thus patentability, was imparted by the claimed process; contrast, Parker v. Flook, 437 U.S. 584 (1978), where a physical change, and thus patentability, was not imparted by the claimed process); and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment (e.g., simply claiming the use of a computer and/or computer system to implement the abstract idea).
Prior Art Not Relied Upon
5. The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. (See MPEP §707.05). The Examiner considers the following reference pertinent for disclosing various features relevant to the invention, but not all the features of the invention, for at least the following reasons:
Nelson et al. (U.S. Pub. No. 2019/0158674) teaches distributed ledger architectures for exchange of wireless communication services. Although the invention in Nelson describes facilitating an exchange among providers, it fails to disclose the following limitations of the current invention:
“determining one or more exchange rules to govern a stream of messages sent from the at least one sender to the at least one recipient;
generating a smart contract, on a blockchain,…, according to the one or more exchange rules;
receiving an input message in the stream of messages from the at least one sender; and
in response to receiving the input message, sending an output message to the at least one recipient based on the smart contract and as at least part of the governing of the stream of messages.”
However, Nelson does not teach the use of several exchange rules to govern the stream of messages in order to then generate a smart contract and then the use of messages (both input and output) relating to the sender and recipient.
.
Response to Arguments
6. Applicant’s arguments filed on August 19, 2026 have been fully considered.
Applicant’s arguments concerning the 35 U.S.C. §101 rejection of the claims, including supposed deficiencies in the rejection, are not persuasive. Applicant first argues that “[t]herefore, the claim does not merely organize an agreement or transaction between a sender and a recipient. It uses the result of smart-contract verification to control how a message is routed through a computer network. Accordingly, the Examiner's characterization of the claim as merely ‘generating a smart contract using a set of rules’ does not capture the claim as amended.” (See Applicant’s Arguments, p. 12). However, the heart of this invention is tied to generating a smart contract between two users. Thus, the claims do not merely involve a judicial exception. They most definitely recite one. Specifically, this is within the category of certain methods of organizing human activity, which includes fundamental economic practices or principles and commercial or legal interactions. The generating of a smart contract is an essential aspect of this invention and the rules governing it are ancillary. A smart contract is one in which a transaction takes place based on certain conditions.
Applicant argues that “...amended claim 1 includes additional elements that integrate the alleged abstract idea into a practical application.” (See Applicant’s Arguments, pp. 13). Under the 2019 PEG step 2A, Prong 2 analysis, the identified abstract idea to which the claim is directed does not include limitations that integrate the abstract idea into a practical application, since the recited features of the abstract idea are being applied on a computer or computing device or via software programming that is simply being used as a tool (“apply it”) to implement the abstract idea. (See, e.g., MPEP §2106.05(f)). Therefore, the claim is directed to an abstract idea. Nonetheless, there are no interactive elements here which would result in the abstract idea being integrated into a practical application. This is merely a generic smart contract being created with messages being sent and received between two parties. Merely bypassing “an intermediate server or hub” does not integrate the abstract idea into a practical application. The interaction that Applicant argues is an “interactive element” is being done in the backend system and does not involve a user interaction.
Applicant also argues that “[a]mended claim 1 also recites significantly more than the alleged abstract idea when its limitations are considered as an ordered combination.” (See Applicant’s Arguments, p. 15). Under the 2019 PEG step 2B analysis, the additional elements are evaluated to determine whether they amount to something “significantly more” than the recited abstract idea. (i.e., an innovative concept). Here, the additional elements, such as: a “network,” “medium,” “processor,” and “system,” do not amount to an innovative concept since, as stated above in the step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer or computing device and/or via software programming. (See, e.g., MPEP §2106.05(f)). The additional elements are specified at a high level of generality to simply implement the abstract idea and are not themselves being technologically improved. (See, e.g., MPEP §2106.05 I.A.); (see paragraphs [0023-0024] of the specification). Sending and receiving messages to parties to a smart contract is not a technological improvement. Also, no specific hardware is being used here. It’s merely generic components. A smart contract message stream on a blockchain network is not specialized hardware.
Therefore, the rejection under 35 U.S.C. §101 is maintained.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Amit Patel whose telephone number is (313) 446-4902. The Examiner can normally be reached Mon - Thu 8 AM - 6 PM EST. If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Matthew Gart, can be reached at (571) 272-3955. The Examiner’s fax number is (571) 273-6087. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amit Patel/
Examiner, Art Unit 3696
/EDWARD CHANG/Primary Examiner, Art Unit 3696
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