DETAILED ACTION
Acknowledgements
The amendment filed on 10/14/2025 is acknowledged.
Claims 1-20 are pending.
Claims 1-20 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/14/2025 has been entered.
Claim Objections
The amendments filed with the RCE on 10/14/2025 is not based on the previously entered version (5/14/205). Therefore, the amendments fails to comply with 37 CFR 1.121(c)(2). Appropriate correction is required.
Response to Amendment/Arguments
Claims 1, 5-7, 12, 15-17 and 20 are amended.
Regarding applicant’s arguments on Claim Rejections - 35 U.S.C. §101, the arguments have been fully considered but they are not persuasive.
It is the applicant’s position that “the claimed invention is not directed to an abstract idea because
the claimed invention is integrated into a practical application.” For instance, “using a zero-knowledge proof (ZKP) to verify enforcement by a second blockchain network of rules for digital assets on a first blockchain network that are decoded with a ZKP in a secure manner-is a practical application of a solution to a concrete, real-world problem in numerous fields, such as those involving the exchange of collectibles, games and game items, art, and real estate.” The examiner respectfully disagrees.
The claim(s) recite(s) validating asset transaction. Specifically, the claims recite “implementing a decoder, the decoder configured to decode an encoded preset rule of a digital asset, the digital asset configured as a non-fungible token (NFT), the preset rule associated with the first ...; implementing a secure cross-chain blockchain protocol, the cross-chain blockchain protocol configured to: using a..., perform a verification of whether the decoded rule is enforceable on a second ..., the second ... being separate and disparate from the first ...; and prevent exposure of the decoded rule to multiple ... of the second ...; responsive to the verification indicating that the decoded rule is enforceable on the second ..., validating a transfer of the digital asset from a first ... on the first ...to a second ...on the second ...; and responsive to the verification indicating that the decoded rule is not enforceable on the second ..., determining that the transfer of the digital asset from the first ... on the first ...to the second ...on the second ...is not valid.” which is “commercial or legal interactions” 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) because the claims involve a series of steps for validating asset transaction. Accordingly, the claims recite an abstract idea.
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), the additional element(s) of the claim(s) such as the use of blockchain network, zero-knowledge proof (ZKP), cryptoprocessor, nodes, digital wallet and computer readable medium merely use(s) a computer as a tool to perform an abstract idea. The processors and computer readable medium are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of validating digital asset transaction) such that it amounts no more than mere instructions to apply the exception using a generic computer components. It is not any improvement to functioning of a computer, blockchain technology, or any technical field. Therefore, amended claims do not recite additional elements that integrated the abstract ideal into a practical application. See MPEP 2106.04(d).
The applicant further argues that “the claimed invention includes significantly more than any
alleged judicial exception at least because Claim 1 adds "a specific limitation other than what is
well-understood, routine, conventional activity.”
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using blockchain network, zero-knowledge proof (ZKP), cryptoprocessor, nodes, digital wallet and computer readable medium to validate asset transaction steps amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Regarding applicant’s arguments on Claim Rejections - 35 U.S.C. §103, the arguments are moot in light of the new ground rejection.
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 1-11 are directed to a system, claims 12-19 are directed to a method, and claim 20 is directed to a product. Therefore, these claims fall within the four statutory categories of invention.
The claim(s) recite(s) validating asset transaction. Specifically, the claims recite “implementing a decoder, the decoder configured to decode an encoded preset rule of a digital asset, the digital asset configured as a non-fungible token (NFT), the preset rule associated with the first ...; implementing a secure cross-chain blockchain protocol, the cross-chain blockchain protocol configured to: using a..., perform a verification of whether the decoded rule is enforceable on a second ..., the second ... being separate and disparate from the first ...; and prevent exposure of the decoded rule to multiple ... of the second ...; responsive to the verification indicating that the decoded rule is enforceable on the second ..., validating a transfer of the digital asset from a first ... on the first ...to a second ...on the second ...; and responsive to the verification indicating that the decoded rule is not enforceable on the second ..., determining that the transfer of the digital asset from the first ... on the first ...to the second ...on the second ...is not valid.” which is “commercial or legal interactions” 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) because the claims involve a series of steps for validating asset transaction. Accordingly, the claims recite an abstract idea.
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), the additional element(s) of the claim(s) such as the use of blockchain network, zero-knowledge proof (ZKP), cryptoprocessor, nodes, digital wallet and computer readable medium merely use(s) a computer as a tool to perform an abstract idea. The processors and computer readable medium are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of validating digital asset transaction) such that it amounts no more than mere instructions to apply the exception using a generic computer components. 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. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using blockchain network, zero-knowledge proof (ZKP), cryptoprocessor, nodes, digital wallet and computer readable medium to validate digital asset transaction steps amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2-3, 8-10, 13-14 and 19 describe preset rule. Dependent claims 4 and 15 describe the first and second blockchain network. Dependent claims 5-6 and 16-17 describe the first and second entities. Dependent claim 7 describes nodes. Dependent claim 11 describe the first blockchain network. Dependent claim 18 describes tokenization a digital asset and preset rule. These claims further recite the abstract idea of certain methods of organizing human activity. This judicial exception is not integrated into a practical application because the additional element(s) of the claim(s) such as the use of blockchain network, zero-knowledge proof (ZKP), cryptoprocessor, nodes, digital wallet and computer readable medium merely use(s) a computer as a tool to perform an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible.
Viewed as a whole, the combination of elements recited in the claims simply recite the concept of validating digital asset transaction. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field.
The use of a blockchain network, zero-knowledge proof (ZKP), cryptoprocessor, nodes, digital wallet and computer readable medium as tools to implement the abstract idea does not render the claim patent eligible because it does not provide meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment and requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea.
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.
Claims 1, 5, 7-8, 11-12, 16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20210133700A1 (“Williams et al.”) in view of US Application Publication US20250097045A1 (“Zhang et al.”), in further view of US20220138705A1 (“Wright”) and CN114565378B (“Ma et al.”).
Regarding claims 1, 12 and 20, Williams et al. discloses:
a first blockchain network including multiple nodes and having a first digital wallet implemented thereon; and (Figs. 1 and 3; ¶0051; claim 11)
a second blockchain network including multiple nodes and having a second digital wallet implemented thereon. the second blockchain network being separate and disparate from the first blockchain network, (Figs. 1 and 3; ¶0051; claim 11)
at least one of the multiple nodes of the first blockchain network having a processor implemented as a dedicated microprocessor configured to execute a cross-chain enforcement control system embedded on the processor, (claim 11) the cross-chain enforcement control system configured to:
implement a secure cross-chain blockchain protocol, the cross-chain blockchain protocol configured to: (claim 1)
responsive to the verification indicating that the decoded rule is enforceable on the second blockchain network, validate a transfer of the digital asset from the first digital wallet on the first blockchain network to the second digital wallet on the second blockchain network; and (¶0003 and ¶0043)
Williams et al. does not explicitly disclose:
wherein a processor is secure cryptoprocessor,
implement a decoder, the decoder configured to decode an encoded preset rule of a digital asset, the digital asset configured as a non-fungible token (NFT), the preset rule associated with the first blockchain network;
using a zero-knowledge proof (ZKP), perform a verification of whether the decoded rule is enforceable on the second blockchain network: and
prevent exposure of the decoded rule to the multiple nodes of the second blockchain network;
responsive to the verification indicating that the decoded rule is not enforceable on the second blockchain network, determine that the transfer of the digital asset from the first digital wallet on the first blockchain network to the second digital wallet on the second blockchain network is not valid.
However, Zhang et al. discloses:
wherein a processor is secure cryptoprocessor, (¶0074)
responsive to the verification indicating that the decoded rule is not enforceable on the second blockchain network, determine that the transfer of the digital asset from the first digital wallet on the first blockchain network to the second digital wallet on the second blockchain network is not valid. (¶¶0062- 63)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Blockchain Cross-chain Non-Fungible Token Exchange of Williams et al. by including cryptoprocessor in the clearinghouse control system and invalidate assets that failed on preset rule validation in accordance with the teaching of Zhang et al.. This modification provides improved security on data privacy and performance optimization on cryptographic operations.
Williams et al. and Zhang et al. do not explicitly disclose:
implement a decoder, the decoder configured to decode an encoded preset rule of a digital asset, the digital asset configured as a non-fungible token (NFT), the preset rule associated with the first blockchain network;
using a zero-knowledge proof (ZKP), perform a verification of whether the decoded rule is enforceable on the second blockchain network: and
prevent exposure of the decoded rule to the multiple nodes of the second blockchain network;
However, Wright discloses:
implement a decoder, the decoder configured to decode an encoded preset rule of a digital asset, the digital asset configured as a non-fungible token (NFT), the preset rule associated with the first blockchain network; (¶0085 and ¶0088)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al. and Zhang et al. by including decoding an encoded preset rule in accordance with the teaching of Wright. This modification enables the modified system to read the preset rule.
Williams et al., Zhang et al. and Wright do not explicitly disclose:
using a zero-knowledge proof (ZKP), perform a verification of whether the decoded rule is enforceable on the second blockchain network: and
prevent exposure of the decoded rule to the multiple nodes of the second blockchain network;
However, Ma et al. discloses:
using a zero-knowledge proof (ZKP), perform a verification of whether the decoded rule is enforceable on the second blockchain network: and (page 7 para 6)
prevent exposure of the decoded rule to the multiple nodes of the second blockchain network; (page 7 para 6)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al. and Wright by including zero-knowledge proof in accordance with the teaching of Ma et al.. This modification enables the combined system to validate the integrity of the preset rule without providing the content of the preset rule. This enhance data privacy.
Regarding claims 5 and 16, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al. further discloses:
wherein the other of the second digital wallet is implemented upon the second blockchain network at a network location separate from a corresponding network location of the first blockchain network. (Fig. 1; ¶0036)
Regarding claim 7, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al. further discloses:
wherein the multiple nodes of the first blockchain network are configured to create a token representing the digital asset, and wherein the decoded rule is configured to influence a transaction value of the digital asset. (¶¶0043-45 and ¶0052)
Regarding claim 8, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al. further discloses:
wherein the decoded rule includes a threshold value pertaining to a transaction value of the digital asset. (¶0045)
Regarding claim 11, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al. further discloses:
wherein the first blockchain network is decentralized and the decoded rule comprises a smart contract. (¶¶0051-52).
Regarding claim 18, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al. further discloses:
creating a token representing the digital asset; and (¶0052)
establishing a threshold value pertaining to a transaction value of the digital asset, and (¶0041 and ¶0053)
configuring the decoded rule to analyze the threshold value.(¶0041 and ¶0053)
Claims 2-4 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20210133700A1 (“Williams et al.”) in view of US Application Publication US20250097045A1 (“Zhang et al.”), in further view of US20220138705A1 (“Wright”), CN114565378B (“Ma et al.”) and US20230100422A1 (“Jakobsson et al.”).
Regarding claims 2 and 13, Williams et al. in view of Zhang et al. , in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al., Zhang et al., Wright and Ma et al. do not explicitly disclose:
wherein the decoded rule triggers a royalty requirement that automatically causes recursive asset transfer back to a creator or prior owner of the digital asset upon transfer of the digital asset.
However, Jakobsson et al. discloses:
wherein the preset rule encoded in the digital asset triggers a royalty requirement that automatically causes recursive asset transfer back to a creator or prior owner of the digital asset upon transfer of the digital asset. (¶0066, ¶0074, ¶0137, ¶0146)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al., Wright and Ma et al. by including digital asset transaction royalty requirement in accordance with the teaching of Jakobsson et al.. This modification ensures the asset creator receives royalty payment with each transaction.
Regarding claims 3 and 14, Williams et al. in view of Zhang et al., in further view of Wright, Ma et al. and Jakobsson et al. discloses all limitations as described above. Jakobsson et al. further discloses:
wherein the decoded rule triggers a fractionalized royalty model that requires enforcement of a distributed royalty arrangement. (¶0066, ¶0074, ¶0137, ¶0146 and ¶0229)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al., Wright and Ma et al. by including fractionalized royalty model in accordance with the teaching of Jakobsson et al.. This modification ensures each owner receives royalty payment with each transaction.
Regarding claims 4 and 15, Williams et al. in view of Zhang et al., in further view of Wright, Ma et al. and Jakobsson et al. discloses all limitations as described above. Williams et al. further discloses:
wherein the first and second blockchain networks are respectively configured to support first and second digital asset platforms. (¶0029)
Claims 6 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20210133700A1 (“Williams et al.”) in view of US Application Publication US20250097045A1 (“Zhang et al.”), in further view of US20220138705A1 (“Wright”), CN114565378B (“Ma et al.”) and US20230298005A1 (“Saad et al.”).
Regarding claims 6 and 17, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al., Zhang et al., Wright and Ma et al. do not explicitly disclose:
wherein the second digital wallet is an offline entity.
However, Saad et al. discloses:
wherein the second digital wallet is an offline entity. (¶0151)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al., Wright and Ma et al. by supporting offline entity in accordance with the teaching of Saad et al.. This modification enhance wallet security by keeping private keys offline to prevent remote hacking, malware and other cyber threats.
Claims 9-10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20210133700A1 (“Williams et al.”) in view of US Application Publication US20250097045A1 (“Zhang et al.”), in further view of US20220138705A1 (“Wright”), CN114565378B (“Ma et al.”) and US20200394651A1 (“Kreder, III et al.”).
Regarding claim 9, Williams et al. in view of Zhang et al., , in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al., Zhang et al., Wright and Ma et al. do not explicitly disclose:
wherein the decoded rule is configured to implement a transaction value floor for the transfer of the digital asset.
However, Kreder, III et al. discloses:
wherein the decoded rule is configured to implement a transaction value floor for the transfer of the digital asset. (¶0142)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al., Wright and Ma et al. by including transaction value floor in accordance with the teaching of Kreder, III et al.. This modification enhances transaction security by reducing fraud and potential losses.
Regarding claim 10, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al. Zhang et al., Wright and Ma et al. do not explicitly disclose:
wherein the decoded rule is configured to require a transaction value of the digital asset to remain within a bounded percentage of a transaction value change from a prior transaction.
However, Kreder, III et al. discloses:
wherein the decoded rule is configured to require a transaction value of the digital asset to remain within a bounded percentage of a transaction value change from a prior transaction. (¶0142)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al., Wright and Ma et al. by including transaction boundary value in accordance with the teaching of Kreder, III et al.. This modification enhances transaction security by reducing fraud and potential losses.
Regarding claim 19, Williams et al. in view of Zhang et al., in further view of Wright and Ma et al. discloses all limitations as described above. Williams et al., Zhang et al., Wright and Ma et al. do not explicitly disclose:
at least one of
implementing, via the threshold value, a transaction value floor for the transfer of the digital asset and
implementing a condition whereby the transaction value of the digital asset remains within a bounded percentage of a transaction value change from a prior transaction, wherein the threshold value is based on the bounded percentage.
However, Kreder, III et al. discloses:
at least one of
implementing, via the threshold value, a transaction value floor for the transfer of the digital asset and (¶0142)
implementing a condition whereby the transaction value of the digital asset remains within a bounded percentage of a transaction value change from a prior transaction, wherein the threshold value is based on the bounded percentage. (¶0142)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Williams et al., Zhang et al., Wright and Ma et al. by including transaction value floor in accordance with the teaching of Kreder, III et al.. This modification enhances transaction security by reducing fraud and potential losses.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US12099997B1 (“Hoffberg”) discloses a method of transacting a liability, by defining smart contract which separates a set of rights as a first fungible token type and set of responsibilities as a second fungible token type, the second token type comprising a representation of a liability; in a first transaction, establishing a first transaction consideration which offsets a difference in a value of the set of rights and the set of responsibilities, and allocating a first fungible token with a requirement to pay the consideration to a first party, and allocating the second fungible token with a right to receive the consideration to a second party; and in a second transaction, merging possession of a token of the first fungible token type and a token of the second fungible token type, and extinguish the smart contract set of rights and the set of responsibilities to thereby satisfy the liability.
US20190251199A1(“Klianev”) discloses a system utilizes the time-bound consensus, a protocol and architecture for cross-chain transactions accomplish safe interoperability across blockchain networks. Multiple cross-chain transacting networks interconnected in a federation overcome the limitations of blockchain networks with monolithic ledgers in regard to transaction latency, scalability of throughput, volume of managed data, and openness for further interoperability.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGYING ZHOU whose telephone number is (571)272-5308. The examiner can normally be reached Mon - Fri 9:00am - 5:00pm ET.
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/YINGYING ZHOU/Examiner, Art Unit 3697