Prosecution Insights
Last updated: May 29, 2026
Application No. 18/320,300

METHOD AND SYSTEM FOR TRIGGERING EXECUTION OF A SMART CONTRACT

Non-Final OA §101
Filed
May 19, 2023
Examiner
GETACHEW, WODAJO
Art Unit
3697
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
The Toronto-Dominion Bank
OA Round
2 (Non-Final)
41%
Grant Probability
Moderate
2-3
OA Rounds
1y 6m
Est. Remaining
79%
With Interview

Examiner Intelligence

Grants 41% of resolved cases
41%
Career Allowance Rate
92 granted / 225 resolved
-11.1% vs TC avg
Strong +38% interview lift
Without
With
+37.7%
Interview Lift
resolved cases with interview
Typical timeline
4y 6m
Avg Prosecution
8 currently pending
Career history
245
Total Applications
across all art units

Statute-Specific Performance

§101
6.8%
-33.2% vs TC avg
§103
79.7%
+39.7% vs TC avg
§102
4.8%
-35.2% vs TC avg
§112
6.6%
-33.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 225 resolved cases

Office Action

§101
DETAILED ACTION Status of Claims This Office Action is in response to claims filed on 08/19/2025. Claims 1-20 are pending and are examined hereon. 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 With respect to rejection of claims under 35 U.S.C. 101, Applicant is of the opinion that the claimed subject matter is not directed to a judicial exception under Step 2A, Prong One since the Examiner's characterization of the claimed subject matter as a "method of organizing human activity" is misplaced as the claimed subject matter recites specific machine operations, including generating a smart contract with a voice input authentication precondition, extracting acoustic features of a voice signal, comparing those features against stored voiceprints, and generating a machine-produced indicator to control execution on a blockchain which are not mental processes or fundamental economic practices performed by humans, but computer-implemented technical operations that fall outside the enumerated groupings of abstract ideas. Even if the Examiner maintains that a judicial exception is recited, the rejection fails under Step 2A, Prong Two because amended claim 1 and the present specification (Pars. [0078], [0079] and [0093]) identifies both a technical problem and technical improvements realized by the claimed subject matter over the prior art representing a concrete improvement to computer security and automated contract execution by ensuring identity verification prior to executing a smart contract to improve the functionality of distributed ledger systems by introducing a novel, non-conventional system that processes voice input, extracts acoustic features, and generates an indicator that controls smart contract execution which is not a mere application of an idea on a computer. Further, unlike conventional approaches whereby smart contract preconditions rely solely on digital cues, (such as a state change in parameters or digital information provided by a user), the claimed subject matter relies on verification of an audible analog signal for triggering smart contract execution. As each human voice is unique, extracting and comparing acoustic properties of a user's voice to a previously obtained voiceprint provides an unconventional and highly reliable means of establishing the authenticity of the user. This solution improves the technology related to the security of distributed ledger systems by providing a more robust method for securely invoking smart contracts. The claimed subject matter further includes off-chain voice authentication leveraging signal processing techniques to solve the technical problem of identity verification of a user prior to executing a smart contract. A signal based on voice processing indicating identity confirmation of the user is machine-generated. The process followed to generate the signal is not a 'Method of Organizing Human Activity' nor an 'abstract concept', but the result of a technical process that extracts acoustic features from voice input and outputs a structured digital indicator (e.g., a binary flag). The smart contract uses this machine-generated signal to determine whether to execute the smart contract, adding a layer of automated, technical control that improves the functionality and security of the distributed ledger system. As a result, the claimed subject matter, as a whole, recites a practical application that renders them eligible at Step 2A, Prong 2. Additionally, Applicant states that even if the answer at Step 2A, Prong 2 is "NO" (which is not admitted), proper assessment of Step 2B leads to the conclusion that the claimed subject matter is directed to eligible subject matter since at least the features of “determine that the at least one precondition has been satisfied at least by comparing one or more acoustic properties of the voice input to a stored voiceprint previously obtained and stored in a database,” are additional elements outside any reasonable formulation of a judicial exception reflected in the claims and when all features or operations recited in the respective claims are considered as a combination, each claim is directed to significantly more than the abstract idea identified by the Examiner. When the identified "abstract idea" of "contract data processing" is considered together with the additional features, the claimed subject matter cannot fairly be characterized as reciting the abstract idea and "apply it" using conventional computing elements; nor can the additional features be dismissed as mere "insignificant extra-solution activity". The recited features are not simply "well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality". The additional features play a significant role in realizing the inventive concept for providing an unconventional and a highly reliable means of establishing the authenticity of the user prior to execution of a smart contract. Accordingly, the claimed subject matter recites "significantly more" than the alleged abstract idea and the rejection under 35 U.S.C. § 101 should be withdrawn. Examiner fully considers Applicant’s position and considers the argument to be unclear because the argument relies on claim element that does not exist in the instant claims cush as “identity verification prior to executing a smart contract… extracts acoustic features and generates an indicator that controls smart contract execution, off-chain voice authentication leveraging signal processing techniques, a signal based on voice processing indicating identity confirmation of the user is machine-generated, extracts acoustic features from voice input and outputs a structured digital indicator (e.g., a binary flag) and the smart contract uses this machine-generated signal to determine whether to execute the smart contract.” However, the claims continue to be directed to an abstract idea without significantly more as it recite an abstract idea of contract data processing and execution. the judicial exception is not integrated into a practical application because the additional elements are merely used as circuitry and tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of contract data processing and execution. Viewed as a whole, the use of the additional elements as a tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment 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)), 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. Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because using the additional elements to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of contract data processing and execution. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of contract data processing and execution. 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 the concept of contract data processing and execution. 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 (f) & (h)). Therefore, the claim is not patent eligible. With respect to rejection of claims under 35 U.S.C. 103, Applicant is of the opinion that the trigger signal disclosed by Upadhyay is external to the contract and operates to select or initiate a contract from a repository and it is not a precondition that is embedded within the smart contract itself. Thus, Upadhyay describes use of a smart contract but teaches a fundamentally different approach that relies on external trigger signals rather than embedding preconditions within the smart contract itself. As mentioned above, Upadhyay does not disclose a smart contract including a precondition for execution thereof, nor does it suggest relocating authentication logic into the contract code. Embedding such a precondition changes the architecture of execution by binding authentication conditions directly into the contract, which improves security and reduces reliance on external signaling mechanisms. As such, the reference cannot teach "a smart contract that includes at least one precondition requiring voice input authentication" of claim 1. Upadhyay also does not show, teach or suggest "determine that the at least one precondition has been satisfied... " and "communicate, to the blockchain network, an indication that the at least one precondition has been satisfied to automatically trigger execution of the smart contract," as recited. Kim fails to remedy the deficiencies of Upadhyay. For example, even if Upadhyay were to be modified in light of Kim, there is no teaching or motivation to embed biometric authentication as a precondition within a smart contract. To the contrary, Upadhyay's architecture depends on separating trigger-signal generation from contract execution. Relocating authentication into the contract itself would contradict this design, and nothing in Kim suggests doing so. The cited references simply do not render obvious the Applicant's claimed subject matter. Accordingly, Applicant respectfully submits that independent claims 1, 11 and 20 and the claims dependent therefrom distinguish patentably over the cited references and should be allowed. Examiner fully considers Applicant’s position and do agree that neither Upadhyay alone or in combination with Kim disclose generate a smart contract that includes at least one precondition requiring voice input authentication hence Examiner withdraws the rejection of the instant claims under 35 U.S.C. 103. 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Analysis In the instant case, claims 1-10 are directed to “A system comprising: a communications module; at least one processor coupled to the communications module; and a memory coupled to the at least one processor…” (Machine). Claims 11-19 are directed to “A computer-implemented method” (Process). Claim 20 is directed to “A non-transitory computer readable storage medium” (Article of Manufacture). Therefore, these claims fall within the four statutory categories of invention. The claims continue to recite an abstract idea of contract data processing and execution, which is an abstract idea. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. The “Certain Methods of Organizing Human Activity” abstract idea groupings are defined as concepts of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. Examples of “Certain Methods of Organizing Human Activity” include hedging, insurance, mitigating risk, agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations, social activities, teaching, and following rules or instructions. Claims recite a “Certain Methods of Organizing Human Activity” when they recite limitations of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior or relationships or interactions between people. The use of a physical aid to help perform Organized Human Activity steps does not negate the Organized Human Activity nature of the limitations, but simply accounts for variations in memory capacity from one person to another. Further, claims can recite a Methods of Organized Human Activity even if they are claimed as being performed on a computer. See MPEP § 2106.04(a)(2), subsection III. The claim limitations reciting the abstract idea are grouped within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as they relate to contract data processing and execution because the claim recites generating of contract with authentication precondition requirement that is deployed and where input is authenticated before executing the contract in an interaction involved between entities in contract. More specifically, the following non-underlined claim elements recite the abstract idea while the underlined, bolded claim elements recite additional elements according to MPEP 2106.04(a). Claims 1 as similar as 11 and 20, A system comprising: a communications module; at least one processor coupled to the communications module; and a memory coupled to the at least one processor, the memory storing processor-executable instructions which, when executed by the at least one processor, configure the at least one processor to: A non-transitory computer readable storage medium comprising computer-executable instructions which, when executed, configure at least one processor to: generate a smart contract that includes at least one precondition requiring voice input authentication; deploy the smart contract on a blockchain network; obtain, by the communications module, the voice input; determine that the at least one precondition has been satisfied at least by comparing one or more acoustic properties of the voice input to a stored voiceprint previously obtained and stored in a database; and communicate, to the blockchain network, an indication that the at least one precondition has been satisfied to automatically trigger execution of the smart contract. This judicial exception 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 elements are merely used as circuitry and tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of contract data processing and execution. Viewed as a whole, the use of the additional elements as a tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment 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)), 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 claims 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), using the additional elements to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of contract data processing and execution. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of contract data processing and execution. 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 the concept of contract data processing and execution. 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 (f) & (h)). Therefore, the claim is not patent eligible. Dependent claims 2-10 and 12-19 further describe the abstract idea of contract data processing and execution. That is, although claims 2-4 and 9-10 and their corresponding method claims recites functional steps, those steps further describe the abstract idea of contract data processing and execution. 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. Therefore, the dependent claims are also not patent eligible. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: PGPub Upadhyay et al. (US 2023/0342779 A1) discloses: requiring voice input authentication; (Fig. 3; Pars. [0008] “In some cases, a portion of the processed audio signal (e.g., a first signal portion) may be processed by an intelligent computation unit that decodes and compares the signal using a dynamic database of Smart Contract agreements and generates a trigger signal for activating an appropriate smart contract that facilitates a desired electronic transaction between two separate enterprise computing systems (e.g., the trade party and the trade counter party).” [0010], [0044], [0047]) (Figs.; Pars. [0008] “The smart contract may be stored within a block of a distributed ledger computing system (e.g., a blockchain computing system, a holochain computing system, and the like).”) obtain, by the communications module (“The cepstrum processor 330 may include an MFCC/LPCC vector extraction module 332 and an MFCC/LPCC conversion module 334.”), the voice input; (Figs. 2-3; Pars. [0036] “At 210, audio signals may be captured by the client computing system 120, where the captured audio signal may include electronic transaction information corresponding as discussed between enterprise organization representatives. At 220, the audio signals may be processed by the voice-based affirmation computing system 104 to extract user information via voice and/or dialect processing,” [0045]-[0046]) determine that the at least one precondition has been satisfied at least by comparing one or more acoustic properties of the voice input to a stored voiceprint previously obtained and stored in a database; (Pars. [0008], [0023] “Once entered, the trade details require additional confirmation and affirmation before the electronic transaction may be initiated.” [0044] “The intelligent voice based affirmation generator 320 may analyze voice signal characteristics and dialect characteristics extracted from paired and processed audio recordings, such as by comparing historical audio signal information and supporting information stored in a central dynamic voice database (e.g., the vocal information data repository 370)… In some cases, such metadata may be used to facilitate identification and authenticate the identity of the individuals recorded in the audio recording. For example, the audio characteristics of the audio signal (e.g., MFCC, LPCC, and the like) may be compared to samples stored in the vocal information data repository to identify a particular user.” [0046]) and communicate, to the blockchain network, an indication that the at least one precondition has been satisfied (“trigger signal”) to automatically trigger execution of the smart contract (Figs. 2-3; Pars. [0037] “The voice-based affirmation computing system 104 may communicate one or more of the at least two signals to the voice-based smart contracts hub computing system 108, where the trigger signal may trigger use of a smart contract corresponding to identified parties and counter parties of the proposed electronic transaction at 250 and the smart contract may be executed, based on the trigger signal, via the distributed leger computing system at 260.” [0047]). PGPub Suntae Kim (KR 20220084788 A) discloses: generate a smart contract, (Page 5 Par. 7 “The contract confirmation activity 305 automatically creates an oral contract based on the oral contract audio information or text conversion information collected by the voice contract activity 303, and according to the control of the contract controller 306,”) and deploy the smart contract. (Page 5 Par. 8 “The contract controller 306 controls the oral contract approval of the contract confirmation activity 305, and sends the oral contract approved by the contract confirmation activity 305 to the Firebase connection unit 309 and the blockchain connection unit 311.”). PGPub Hu et al. (US 2021/0334906 A1) discloses smart-contract that is invoked based on voice based transaction (Fig. 1; Par. [0082]). 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WODAJO GETACHEW whose telephone number is (469)295-9069. The examiner can normally be reached M-F 8:00-6:00 CST. 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, John W Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /WODAJO GETACHEW/Examiner, Art Unit 3697
Read full office action

Prosecution Timeline

May 19, 2023
Application Filed
Jun 10, 2025
Non-Final Rejection mailed — §101
Aug 19, 2025
Response Filed
Dec 02, 2025
Final Rejection mailed — §101
Jan 20, 2026
Response after Non-Final Action

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Prosecution Projections

2-3
Expected OA Rounds
41%
Grant Probability
79%
With Interview (+37.7%)
4y 6m (~1y 6m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 225 resolved cases by this examiner. Grant probability derived from career allowance rate.

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