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 .
DETAILED ACTION
This action is in response to the communication filed on 3/11/26.
All objections and rejections not set forth below have been withdrawn.
Claims 1, 3, 7 – 18, 20, and 24 – 35 are pending.
Claims 1, 3, and 7 – 17 are allowed.
Claims 24, 25, 27, and 35 are withdrawn from consideration
Allowable Subject Matter
Claims 1, 3, and 7 – 17 are allowed.
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 18, 20, 26, and 28 – 34 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.
Regarding claim 18, the applicant’s disclosure fails to disclose the features of a “…executing a first smart contract configured to decode one or more transaction constraints of the first blockchain network … executing a second smart contract configured to decode one or more transaction constraints of the second blockchain network … “ (claim 1, and similarly recited in claim 18).
The examiner notes that the applicant’s disclosure never teaches decoding transaction constraints, or that the hybrid multisignature digital wallet decodes each of a first smart contract and a second smart contract so as to decode respective transaction constraints of the first and second blockchain networks.
A “constraint” (i.e. limitation) of a blockchain may easily be understood by those having skill in the art to be a reference to the limitations of a blockchain network, such as the speed, capacity, transaction throughput, security, or scalability of the network. Indeed, the closest that the applicant’s own disclosure ever comes to an actual definition to the terminology of “constraints” of a network is a reference to such blockchain characteristics of “scale”, “capacity”, “speed”, or “throughput” of the network (e.g. see Specification, par. 8 – 10).
However, the applicant’s original disclosure never discloses the presently claimed notion of executing a smart contract configured to decode …constraints of a blockchain network.
Depending claims are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18, 20, 26, and 28 – 34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 18, the recitations of “…executing a … smart contract configured to decode one or more transaction constraints of the … blockchain network … “ renders the scope of the claims indefinite.
Specifically, it is unclear as to how the execution of a smart contract would serve to “decode … transaction constraints” of a blockchain network.
The examiner points out that, while one of ordinary skill in the art may recognize that the performance of smart contracts could be limited by constraints of a blockchain network within which they are executed, one of ordinary skill in the art would not understand the meaning of a smart contract that is configured to decode “constraints” of a blockchain network.
A “constraint” (i.e. limitation) of a blockchain may easily be understood by those having skill in the art to be a reference to the limitations of a blockchain network, such as the speed, capacity, transaction throughput, security, or scalability of the network. Indeed, in apparent agreement, the applicant’s own disclosure appears to reference such “constraints” of a network as the “scale”, “capacity”, “speed”, or “throughput” of the network (e.g. see Specification, par. 8 – 10).
However, the examiner points out that such constraints, such as the speed or capacity of a network, are not things that are “decoded” from the execution of a smart contract. And furthermore, the applicant’s original disclosure never discloses the presently claimed notion of executing a smart contract configured to decode …constraints of a blockchain network.
Thus, the scope of the claims are rendered unclear and indefinite.
Depending claims are rejected by virtue of dependency.
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 18, 20, 26, 28 – 33 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Kaplan et al. (Kaplan), US 2023/0018175 A1 in view of Wang, US 2021/0097528 A1.
Regarding claim 18, as best determined in view of the above noted deficiencies of clarity, Kaplan discloses:
A computer-implemented method of storing and transferring digital assets (e.g. Kaplan, Abstract), the computer-implemented method comprising:
storing, via a hybrid custody … digital wallet, a digital asset, the hybrid custody … digital wallet supported by at least a subset of multiple nodes of a first blockchain network (e.g. Kaplan, fig. 3A:104a, 112, 110)
Kaplan discloses a secure server, i.e. “secure cryptoprocessor”, comprising an enclave which is used to store the private key of a digital wallet (e.g. Kaplan, fig. 3A:110; par. 39, 74, 95). Kaplan does not appear to explicitly characterize the enclave (i.e. digital wallet) as being “multisignature”.
Wang, however, also teaches a secure server (e.g. Wang, par. 207; fig. 19), i.e. “secure cryptoprocessor”, for implementing an enclave (e.g. Wang, par. 204, 208; fig. 19), and furthermore, Wang teaches the enclave as being “multisignature” (e.g. Wang, par. 24, 34).
It would have been obvious to one of ordinary skill in the art to recognize the multisignature enclave implementation of Wang within the enclave teachings of Kaplan.
This would have been obvious because one of ordinary skill in the art would have been motivated by the teachings that a multisignature enclave better serves to protect against malicious attacks on the digital signatures created using the digital wallet’s private keys (e.g. Wang, par. 24, 34).
Thus, the combination enables:
facilitating, via the hybrid custody multisignature digital wallet, a transaction between the first blockchain network and a second blockchain network, the transaction involving the digital asset (e.g. Kaplan, Abstract; fig. 3A:110, 104a, 104b2; par. 39 – the digital wallet or enclave executes a bridge for facilitating token transfers across disparate blockchains),
executing a first smart contract configured to decode one or more transaction constraints of the first blockchain network (e.g. Kaplan, par. 39, 50, 66, 72, 146 – herein the enclave executes a smart contract to begin the transfer, i.e. bridging, of a token from an sending blockchain network to a second network);
executing a second smart contract configured to decode one or more transaction constraints of the second blockchain network (e.g. Kaplan, par. 47, 95, 99, 146 – herein the enclave creates and executes another smart contract for the second blockchain network so as to mint a corresponding amount new tokens on the second network and subsequently burn the transferred tokens of the first network);
detecting a disparity between the one or more transaction constraints of the first blockchain network and the one or more transaction constraints of the second blockchain network (e.g. Kaplan, par. 47, 100 – herein, e.g., the enclave can identify one or more differences, i.e. “disparity”, between the blockchain networks, such as in the addressing for the transaction or differences in protocol, and bridge assets between the blockchains despite the disparities);
and responsive to identifying detecting the disparity, managing, via the hybrid custody multisignature digital wallet, the disparity (e.g. Kaplan, par. 100 - 102, 106 – the enclave successfully bridges or transfers the tokens across the blockchain, despite the addressing disparity).
Regarding claim 20, the combination enables:
wherein the detected disparity is defined in terms of respective levels of rigor of the first and second transaction constraints (e.g. Kaplan, par. 3, 6, 17, 21, 105 – the hassle, i.e. “levels of rigor”, of cross-chain transactions between different blockchains having different protocol limitations, such as addressing, is mitigated).
Regarding claim 26, the combination enables:
wherein at least one of the one or more custodians or designees comprises a software control system configured to facilitate recovery or replacement of a lost key or a lost hybrid custody multisignature digital wallet (e.g. Kaplan, par. 43, 49, 54 – the wardens comprise means to facilitate the generation of a new enclave comprising the wallet private key).
Regarding claim 28, the combination enables:
wherein the hybrid custody multisignature digital wallet operates in support of a compliance operation (e.g. Kaplan, par. 8 – the enclave can support remote attestation of its security and validity, i.e. a “compliance” operation).
Regarding claim 29, the combination enables:
wherein the digital asset is represented as a fungible token (FT) or a non-fungible token (NFT) (e.g. Kaplan, par. 3, 5).
Regarding claim 30, the combination enables:
wherein performing the cryptographic verification of the one or more keys includes processing, via the hybrid custody multisignature digital wallet, multiple shards of a cryptographic key used to secure the digital asset (e.g. Kaplan, par. 140, 155, 156).
Regarding claim 31, the combination enables:
wherein the multiple shards of the cryptographic key are used to authorize the transaction (e.g. Kaplan, par. 155, 156).
Regarding claim 32, Kaplan discloses the use of enclaves implementing digital wallets, however, fails to teach that such enclaves as embedded on a hardware security module.
However, Wang does teach embedding the enclave on a hardware security module (e.g. Wang, par. 72, 73). It would have been obvious to one of ordinary skill in the art to employ Wang’s teachings of using a HSM for embodying enclaves within the system of Kaplan for embodying enclaves.
This would have been obvious because one of ordinary skill in the art would have been motivated by the teachings that hardware security modules (HSMs) are viable and equivalent alternatives to using SGX technologies (e.g. Wang, par. 73).
Thus, the combination enables:
wherein the hybrid custody multisignature digital wallet is embedded on a hardware secure module (HSM) (e.g. Wang, par. 72, 73) configured as a cryptographic processor gateway that interfaces with a plurality of blockchain networks that lack interoperability, the plurality of blockchain networks including the first and second blockchain networks (e.g. Kaplan, Abstract; par. 39; fig. 3A:114, 110 – a bridge, i.e. “gateway”, operates within the enclave to facilitate transactions between different blockchain networks).
Regarding claim 33, the combination enables:
wherein the hybrid custody multisignature digital wallet is configured as a cryptographic processor gateway that interfaces with a plurality of blockchain networks (e.g. Kaplan, Abstract; par. 39; fig. 3A:114, 110 – a bridge, i.e. “gateway”, operates within the enclave to facilitate transactions between different blockchain networks).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Kaplan et al. (Kaplan), US 2023/0018175 A1, in view of Wang, US 2021/0097528 A1, in view of Osborn et al. (Osborn), US 20230298016 A1.
Regarding claim 34, Kaplan does not disclose, but Osborn does disclose the used of “encapsulated machine learning” oracles with digital wallets (e.g. Osborn, par. 6, 18). It would have been obvious to one of ordinary skill in the art to configure the digital wallet of Kaplan to employ an encapsulated ML oracle as taught by Obsborn because one of ordinary skill in the art would have been motivated by the teachings that the approval and trust of transactions within wallets can be enhanced by the usage of a machine learning oracle (e.g. Osborn, par. 6, 18, 36, 54).
Thus, the combination enables:
wherein the hybrid custody multisignature digital wallet is configured with an encapsulated machine learning (ML) oracle that enables authorization of the transaction in response to detecting the disparity (e.g. Osborn, par. 6, 18, 36, 54).
Response to Arguments
Applicant's arguments filed 3/11/26 have been fully considered but they are not persuasive.
Applicant argues or alleges essentially that:
…
Applicant has amended Claims 1 and 18 such that the claim elements at issue are no longer recited.
…
(Remarks, pg. 13)
Examiner respectfully responds:
The examiner respectfully disagrees, at least for the reason that claim 18 was not amended to remove the features directed towards the execution of first and second smart contracts so as to decode transaction constraints.
Applicant argues or alleges essentially that:
…
… Kaplan is entirely silent as to a cryptographic processor- let alone a cryptographic processor gateway that interfaces with a plurality of blockchain networks.
…
(Remarks, pg. 17)
Examiner respectfully responds:
The examiner respectfully disagrees. Kaplan clearly discloses a bridge, i.e. “gateway”, between blockchain networks which performs cryptographic operations within the enclave, i.e. “cryptographic processor”, to facilitate transactions between the different blockchain networks (e.g. Kaplan, Abstract; par. 39; fig. 3A:114, 110) –
Applicant argues or alleges essentially that:
…
… Claim 18 contains patentably similar elements as those argued above with
regard to Claim 1 and, thus, is likewise nonobvious.
…
(Remarks, pg. 17)
Examiner respectfully responds:
The examiner respectfully disagrees, at least, for the reason that claim 18 differs in scope and claim language from that of claim 1, and claim 18 does not appear to comprise the features argued by the applicant.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
The balance of applicant’s arguments appear to be based upon the above noted arguments, and are unpersuasive, at least, for the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY L WILLIAMS whose telephone number is (571)272-7965. The examiner can normally be reached 7:30 am - 4:00 pm.
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, Farid Homayounmehr can be reached at 571-272-3739. 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.
/JEFFERY L WILLIAMS/Primary Examiner, Art Unit 2495