DETAILED ACTION
Acknowledgements
This action is in response to Applicant’s filing on Jan. 9, 2026, and is made Final. This action is being examined by James H. Miller, who is in the eastern time zone (EST), and who can be reached by email at James.Miller1@uspto.gov or by telephone at (469) 295-9082.
Interviews
Examiner interviews are available by telephone or, preferably, by video conferencing using the USPTO’s web-based collaboration platform. Applicants are strongly encouraged to schedule via the USPTO Automated Interview Request (AIR) portal at http://www.uspto.gov/interviewpractice. Interviews conducted solely for the purpose of “sounding out” the examiner, including by local counsel acting only as a conduit for another practitioner, are not permitted under MPEP § 713.03. The Office is strictly enforcing established interview practice, and applicants should ensure that every interview request is directed toward advancing prosecution on the merits in compliance with MPEP §§ 713 and 713.03.
For after-final Interview requests, supervisory approval is required before an interview may be granted. Each AIR should specifically explain how the After-Final Interview request will advance prosecution—for example, by identifying targeted arguments responsive to the rejection of record, alleged defects in the examiner’s analysis, proposed claim amendments, or another concrete basis for discussion. See MPEP § 713. If the AIR form’s character limits prevent inclusion of all pertinent details, Applicants may send a contemporaneous email to the examiner at James.Miller1@uspto.gov.
The examiner is generally available Monday through Friday, 10:00 a.m. to 4:00 p.m. EST.
For any GRANTED Interview Request, Applicant can expect an email within 24 hours confirming an interview slot from the dates/times proposed and providing collaboration tool access instructions. For any DENIED Interview Request, the record will include a communication explaining the reason for the denial.
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 .
Claim Status
The status of claims is as follows:
Claims 1–21 remain pending and examined with Claims 1, 11, and 20 in independent form.
Claims 1, 11, and 20 are presently amended.
No Claims are presently cancelled or added.
Response to Amendment
Applicant's Amendment has been reviewed against Applicant’s Specification filed Jun. 30, 2023, [“Applicant’s Specification”] and accepted for examination.
Applicant's Amendment to address claim objections has been reviewed and has overcome each and every objection to the claims previously set forth in the Non-Final Office Action mailed Sep. 10, 2025 [“Non-Final Office Action"]. The objection to Claims 1, 11, and 20 is withdrawn.
Applicant's Amendment to address the rejection under 35 U.S.C. § 112(b) has been reviewed and has overcome each and every rejection under § 112(b) previously set forth in the Non-Final Office Action. The rejection of Claims 1–21 under § 112(b) is withdrawn.
Response to Arguments
35 U.S.C. § 101 Argument
Applicant argues the claims are not directed to an abstract idea because they recite specific a specific improvement in computer functionality by allowing transactions on a blockchain to be recovered under certain circumstances as recited in the elements of Independent claims. Applicant’s Reply at 12–14. Additionally, the claims do not recite an abstract idea because they recite technical terms of art in the software engineering and computer science such as “blockchain,” “receiver wallet,” and “wrapped token.” Thus, per Ex Parte Raux, a POSITA would understand the claims are focused on software technology—not on a method of organizing human activity. Id. at 14. The Examiner previously agreed that claims do not recite mental processes based on Ex Parte Raux and now, cannot maintain the organizing human activity exception based on Ex Parte Raux.
Examiner respectfully disagrees. While Ex Parte Raux support’s Applicant’s position that technical terms may rebut the mental process exception, the use of technical terms does not automatically preclude a finding of certain methods or organizing human activity where the function of the claim is to manage and reverse financial transactions. The Examiner’s prior withdraw of the metal process exception does not bind the finding of an organizing human activity exception. The Independent calims are analogous to a conditional escrow or chargeback mechanism which is a well-recognized commercial and legal interaction under the organizing human activity exception. Ex Parte Raux involved claims directed to specific software improvements in code architecture for handling multi-modal input. Here, the present claims do not recite a specific structural improvement to the blockchain—only the outcome of a token state management process.
Applicant argues the claims recite how the process is performed (incrementing/decrementing running totals based on status indicators and time) and not merely that a result occurs, distinguishing the claims from the result only claiming in Intellectual Ventures I. Applicant’s Reply at 15.
Examiner respectfully disagrees. The “incrementing,” “determining,” and “based on” limitations are the functional steps of conventional accounting/escrow operations applied to digital tokens. Under SAP America cited by Applicant, what matters is that the specificity reflect a technological way of achieving a result that is not well understood routine or conventional in the art. Here, the steps reflect the logical steps of a financial escrow/accounting process and not a technological mechanism or improvement. The claims would read on any system that manages a conditional token transfer with a time window.
Applicant argues the claims integrate any alleged abstract idea into a practical application because they improve the technical field of blockchain security by solving the specific blockchain-inherent problem of transaction immutability by using a wrapped token architecture (recoverability stats indicator, frozen status indicator, time). Applicant’s Reply at 18–19. Applicant further argues and analogizes the pending claims to Ex parte Moshe and Ex parte Das as justification for eligibility. Id. at 19–20.
Examiner respectfully disagrees. While the specification identifies blockchain immutability as the technical problem with the blockchain architecture (Spec. ¶ 16), the claims do not recite the specific technical mechanism that addresses this problem at the blockchain architectural level. Spec ¶ 21 describes a wrapped token with Boolean-valued recoverability and frozen status indicators and Spec ¶ 19 describes a specific system architecture comprising a token wrapper/unwrapper module 112, a token freezer 114 and a transaction processor 116. Representative Claim 11 recites only the processor is configured to “create a wrapped token by encapsulating a base token with a recoverability status indicator and a frozen status indicator” without specifying how the encapsulation operates on the blockchain (e.g., via smart contract, on-chain data stricture, or specific consensus layer mechanism). Spec ¶ 29 describes the “transaction processor can invoke a transfer of tokens from a transmitter wallet 1202 to a transmitter wallet 1201 by validating that a sufficient number of tokens exist within the transmitter wallet 1202 and, if so, invoking a smart contract or other programmatic construct on blockchain 132 that commits a transaction record to the blockchain 132.” However, this “smart contract or other programmatic construct on blockchain 132” is entirely absent from the claims. Unlike Ex parte Moshe Israel where the claim itself recited a specific machine learning classifier performing a specific classification operation, here, the present claims recite only the functional result of operating on status indicators and running totals, which does not meet MPEP § 2106.05(a) to demonstrate an improvement in the computer (blockchain).
Applicant argues the Examiner improperly dismissed technical features (blockchains, tokens, wallets) as generic without considering whether they confer a technological improvement. Applicant’s Reply at 20–21.
Examiner respectfully disagrees. Examiner has considered the technical features individually and in combination but the claim elements of “incrementing,” “determining,” and “based on” limitations do not specify any improvement to how the blockchain itself processes, validates, or records transactions. The wrapped token is claimed at a functional level (token with two names status indicators and a base token) without reciting the specific on chain data structure, smart contract logic, or consensus mechanism that makes this token a technical improvement over conventional blockchain tokens. Spec. ¶ 55 describes “a token wrapper/unwrapper 420 [that] encapsulates a base token, which may be a token used in transactions performed and recorded on a blockchain, and adds additional features that allow for the base token to be placed in a recoverable or unrecoverable state and in a frozen state when tokens are transferred in a transaction marked as fraudulent, a result of malicious activity, or otherwise subject to reversal.” However, this structural implementation is not reflected with sufficient specificity in the claim language itself to satisfy MPEP § 2106.05(a) as an improvement to the computer (blockchain).
Applicant argues The claims recite an inventive concept under Step 2B because the claims reflect a nonconventional and non-generic arrangement of known elements, citing BASCOM. Specifically, the combination of wrapped tokens with recoverability status indicators, frozen status indicators, and threshold time variables collectively improve performance and security.
Examiner respectively disagrees. In BASCOM, the inventive concept was the unconventional placement of a content filter at a specific network location (the ISP server), providing individualized filtering. Here, the claimed “arrangement” amounts to: (1) a token with status flags, (2) a time-based check, and (3) a conditional state reclassification. Nothing in Representative Claim 11’s language specifies an unconventional structural configuration of the blockchain system itself. The “memory” and “processor configured to execute the executable instructions” are generic computing components performing functional operations on abstract data states. Spec. ¶ 51–54. Spec. ¶ 17 describes the benefit of the invention but does not, without more specific structural claim language, transform a functional arrangement of token-state bookkeeping into a BASCOM-type unconventional technical arrangement and improvement to the blockchain itself.
35 U.S.C. §§ 102, 103 Argument
Applicant argues the prior art NPL: Wang, et al., “ERC-20R and ERC-721R: Reversible Transactions on Ethereum” (Jul. 21, 2022) [“NPL Wang”] is not prior art to the present application under 35 U.S.C. § 102(b)(1)(A). Kaili Wang is a named inventor of the present application and an author of NPL Wang. Further, the present application was filed on Jun. 30, 2023, less than one year after first publishing NPL Wang on Jul. 31, 2022. Applicant’s Reply at 23–24.
Examiner respectfully disagrees until the conditions of MPEP §§ 2153.01(a), 2155.01 are satisfied. Because the exception is not automatically apparent on its face, Examiner’s reliance on NPL Wang (sans Affidavit or Declaration with the required information) is proper and the associated rejections under §§ 102, 103 are maintained.
The governing rule is explicit in this scenario: “If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies.” MPEP § 2153.01(a). Here, prior art NPL Wang names three authors (Kaili Wang, Qinchen Wang, and Dan Boneh), while the instant application names only two inventors (Kaili Wang and Erik Tierney). Because NPL Wang names persons in addition to the named inventors, it is not readily apparent from NPL Wang alone that the disclosure is an inventor-originated disclosure. Id. Accordingly, the §§ 102, 103 rejections based on NPL Wang are maintained.
Applicant may overcome this rejection by filing an affidavit or declaration under 37 CFR § 1.1305 providing (i) an unequivocal statement that the named inventor(s) invented the claimed subject matter, and (ii) a reasonable explanation of why Qinchen Wang and Dan Boneh appear as co-authors on NPL Wang but are not named inventors on the patent application. See MPEP § 2155.01. Until such a declaration or affidavit is made of record, NPL Wang remains prior art under § 102(a)(1) and the §§ 102. 103 rejections are maintained.
Claim Interpretation
Under the broadest reasonable interpretation, the following claim terms are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skill in the art. MPEP § 2111.
token(s) and wrapped token(s) is “digital currency”
wallet is a “digital account”
recoverable state is “reversible”
non-recoverable state is “irreversible”
frozen is a disputed or cancelled transaction.
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 1–21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Analysis
Step 1: Claims 1–21 are directed to a statutory category. Claims 1–10 and 21 recites a “method” and are therefore, directed to the statutory category of a “process.” Claims 11–19 recite a “system” and are therefore, directed to the statutory category of a “machine.” Claim 20 recites a “computer-readable medium” and are therefore, directed to the statutory category of an "article of manufacture.”
Representative Claim
Claim 11 is representative [“Rep. Claim 11”] of the subject matter under examination and recites, in part, emphasis added by Examiner to identify limitations with normal font indicating the abstract idea exception, bold limitations indicating additional elements. Each limitation is identified by a letter for later use as a shorthand notation in referencing/describing each limitation. Portions of the claim use italics to identify intended use limitations1 and underline, as needed, in further describing the abstract idea exception:
[A] 11. A system, comprising: a memory having executable instructions stored thereon; and a processor configured to execute the executable instructions in order to cause the system to:
[B] create a wrapped token by encapsulating a base token with a recoverability status indicator and a frozen status indicator, wherein the base token is exchanged in transactions on the blockchain;
[C] receive a request to execute a transaction on a blockchain, wherein the request comprises a request to transfer a quantity of a token on the blockchain from a transmitter wallet to a receiver wallet identified in the request, wherein the token comprises the wrapped token;
[D] increment a running total of tokens in the receiver wallet that are in a recoverable state by the quantity of the token identified in the request based on the recoverability status indicator of each token;
[E] determine, after a threshold amount of time from a timestamp associated with the received request, whether the transaction has been frozen based on the frozen status indicator of each [wrapped] token; and
[F] based on a determination that the transaction has not been frozen:
[G] decrement the running total of tokens in the receiver wallet that are in the recoverable state by the quantity of the token, and
[H] increment a running total of tokens in the receiver wallet that are in a non-recoverable state by the quantity of the token.
Claims are directed to an abstract idea exception.
Step 2A, Prong One2: Rep. Claim 11 recites “create a [digital currency] …, with a recoverability status indicator and a frozen status indicator, … wherein the [digital currency] is exchanged in transactions on the blockchain” in Limitation B; “receive a request to execute a transaction … , wherein the request comprises a request to transfer a quantity of [digital currency] … from a transmitter [digital account] to a receiver [digital account] identified in the request … ” in Limitation C; “increment a running total of [digital currency] in the receiver [digital account] that are in a recoverable state [reversible] by the quantity of the [digital currency] identified in the request based on the recoverability status indicator of each [digital currency]” in Limitation D; “determine, after a threshold amount of time from a timestamp associated with the received request, whether the transaction has been frozen [disputed or cancelled] based on the frozen status indicator of each [digital currency]” in Limitation E, “based on a determination that the transaction has not been frozen [disputed or cancelled]:” in Limitation F; “decrement the running total of [digital currency] in the receiver [digital account] that are in the recoverable state [reversible] by the quantity of the [digital currency]” in Limitation G; and “increment a running total of [digital currency] in the receiver [digital account] that are in a non-recoverable state [irreversible] by the quantity of the [digital currency]” in Limitation H, which recites a “long-standing commercial practice” and “legal interaction” under the organizing human activity exception because a transaction that exchanges tokens or as interpreted, digital currency, recites “sales activities or behaviors, and business relations” between two people. MPEP § 2106.04(a)(2)(II)(B). Merchants have long offered refunds within a time period after the sale.
Alternatively, Limitations C–H recites a fundamental economic principle/practice under the organizing human activity exception because said Limitations describe concepts relating to the economy and commerce, such as bookkeeping, a practice long prevalent in our system of commerce and taught in any introductory accounting class. MPEP § 2106.04(a)(2)(II)(A).
Step 2A, Prong Two: Rep. Claim 11 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception. MPEP § 2106.05(f) and/or (2) generally links the judicial exception to a particular technological environment, i.e., the blockchain. MPEP § 2106.05(h). The additional elements are limited to the computer components and indicated in bold, supra. The additional elements are: A system, comprising: a memory having executable instructions, and a processor; a blockchain; transmitter wallet; receiver wallet; wrapped token (token), and base token.
Regarding the system, comprising: a memory having executable instructions, and a processor; a blockchain; transmitter wallet; and receiver wallet; wrapped token (token), and base token, Applicant’s Specification does not otherwise describe them or describes them using exemplary language as a general-purpose computer, as a part of a general-purpose computer, or as any known and exemplary (generic) computer component known in the prior art. Thus, Applicant takes the position that such hardware/software is so well known to those of ordinary skill in the art that no explanation is needed under 35 U.S.C. § 112(a). Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984) (citing In re Meyers, 410 F.2d 420, 424 (CCPA 1969) (“[T]he specification need not disclose what is well known in the art”). E.g., Spec. ¶ 76 (“The various illustrative logical blocks, modules and circuits described in connection with the present disclosure may be implemented or performed with a general purpose processor … A general-purpose processor may be a microprocessor, but in the alternative, the processor may be any commercially available processor, controller, microcontroller, or state machine.”); ¶ 77 (“The processor may be implemented with one or more general-purpose and/or special-purpose processors”); ¶ 78 (“the computer-readable media, or any portion thereof, may be integrated into the processor, such as the case may be with cache and/or general register files.”); ¶ 79 (“One or more cache lines may then be loaded into a general register file for execution by the processor.”); ¶ 72 (“changes may be made in the function and arrangement of elements discussed without departing from the scope of the disclosure. Various examples may omit, substitute, or add various procedures or components as appropriate.”); ¶ 77 (“The bus may also link various other circuits such as timing sources, peripherals, voltage regulators, power management circuits, and the like, which are well known in the art, and therefore, will not be described any further … Those skilled in the art will recognize how best to implement the described functionality for the processing system depending on the particular application and the overall design constraints imposed on the overall system.”); ¶ 80 (“All structural and functional equivalents to the elements of the various aspects described throughout this disclosure that are known or later come to be known to those of ordinary skill in the art are expressly incorporated herein by reference and are intended to be encompassed by the claims.”); ¶ 51 (“network 690 (which may be a local network, an intranet, the internet, or any other group of computing devices communicatively connected to each other)”); ¶ 56 (“at any time prior to an expiry time defined based on a timestamp associated with the transaction”); ¶ 72 (“an apparatus may be implemented or a method may be practiced using any number of the aspects set forth herein … It should be understood that any aspect of the disclosure disclosed herein may be embodied by one or more elements of a claim.”); ¶ 75 (“the various operations of methods described above may be performed by any suitable means capable of performing the corresponding functions”); ¶ 76 (“A processor may also be implemented as a combination of computing devices, e.g., a combination of a DSP and a microprocessor, a plurality of microprocessors, one or more microprocessors in conjunction with a DSP core, or any other such configuration.”); ¶ 77 (“The bus may include any number of interconnecting buses and bridges”); ¶ 78 (“Software shall be construed broadly to mean instructions, data, or any combination thereof”); ¶ 78 (“Computer-readable media include both computer storage media and communication media, such as any medium that facilitates transfer of a computer program from one place to another.”); ¶¶ 16, 19, Fig. 1 (known and generic (exemplary) blockchain), ¶¶ 17, 19, 20, 21, 22 (any known and exemplary token and wrapped token encapsulating a base token —all described by their function), ¶¶ 22, 24, 25, Fig. 1 (known and generic (exemplary) wallet). The generic processor, here, appears to perform functions that are programmed by software. Spec. ¶¶ 75, 77, 78. This is a computer doing what it is designed to do—performing directions it is given to follow.
Limitation A describes the generic processor, executable instructions, and memory communicating in some way to perform the steps of the claimed invention, which merely invokes computers or other machinery in its ordinary capacity to receive, store, or transmit data. MPEP § 2106.05(f)(2). Limitations B–H describe the processor, memory, and instructions performing the steps of the claimed invention, which represents the abstract idea exception itself. Performing the steps of the abstract idea exception itself simply adds a general-purpose computer after the fact to an abstract idea exception, MPEP § 2106.05(f)(2), or generically recites an effect of the judicial exception. MPEP § 2106.05(f)(3).
The claims further describe using a blockchain to perform a transaction, which generally links the abstract idea exception identified supra to a particular technological environment (i.e., the blockchain). MPEP 2106.05(h). Employing generic computer functions to execute the abstract idea exception, even when limiting the use of the idea to one particular environment (i.e., the blockchain), does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient. MPEP 2106.05(h).
Therefore, the claim as a whole, looking at the additional elements individually and in combination, are no more than mere instructions to apply the exception using generic computer components and is not a practical application. MPEP § 2106.05(f). Each computer component is used in a way it ordinarily would be used to apply the abstract idea. The additional elements do not integrate the abstract idea exception into a practical application because they do not impose any meaningful limits on the abstract idea exception. Accordingly, Rep. Claim 11 is directed to an abstract idea.
Rep. Claim 11 is not substantially different than Independent Claims 1 and 20 and includes all the limitations of Rep. Claim 11. Independent Claims 1 and 20 contain no additional elements. Therefore, Independent Claims 1 and 20 are also directed to the same abstract idea.
The claims do not provide an inventive concept.
Step 2B: Rep. Claim 11 fails Step 2B because the claim as whole, even when considering the additional elements individually and in combination, does not amount to significantly more than the recited judicial exception. As discussed with respect to Step 2A, Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer and generic computer components. See MPEP § 2106.05(f). The same analysis applies here in Step 2B. Mere instructions to apply a judicial exception on a computer and/or with basic computer components do not provide an inventive concept. MPEP § 2106.05(I).
The additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the identified judicial exception.
The pending claims’ combination of additional elements is not inventive. First, as explained above, the claims are directed to an abstract idea. Second, each additional element represents currently available generic computer technology, used in a conventional manner (individually generic). Third, Applicant’s Specification discloses that the combination of additional elements relies on conventional computer components and functions. Spec. ¶ 75 (method steps may be performed in any order); Spec. ¶¶ 76–79 (describing implementation using general purpose processors, DSPs, ASICs, FPGAs, software modules, and computer-readable media as generic and interchangeable); Spec. ¶ 51 (describing the system as comprising a conventional CPU, memory, network interface, and interconnect); Fig. 1 (depicting the system architecture using standard computing and network components)..
Accordingly, the additional elements of Rep. Claim 11 (“a memory having executable instructions stored thereon” and “a processor configured to execute the executable instructions”) are elements that have been recognized, based on Applicant’s own disclosure3, as well-understood, routine, and conventional (“WURC”) components used in their ordinary capacity. See, Spec. ¶¶ 51–54, 76–79, Fig. 1; MPEP § 2106.05(d). The functional limitations of “create a wrapped token by encapsulating a base token with a recoverability status indicator and a frozen status indicator,” “increment a running total of tokens in the receiver wallet that are in a recoverable state,” “determine… whether the transaction has been frozen based on the frozen status indicator,” and “decrement… and increment a running total of tokens… in a non-recoverable state” are instructions to perform functional operations using abstract data and do not specify any structural improvement to the computer or blockchain system itself. Spec. ¶ 17 (describing the improvement as a benefit in security outcomes, not as an improvement to the functioning of the computer itself).
There is no indication in the claim language or in the Specification that the combination of elements improves the functioning of a computer itself or improves any other technology or technical field beyond the abstract idea of managing conditional token state transitions. The additional elements simply implement the abstract idea on a conventional computer system at a high level of generality. Looking at the additional elements in combination adds nothing not already present when looking at the elements individually. Thus, Rep. Claim 11 does not provide an inventive concept.
Independent Claim 20 is a computer-readable medium claim whose instructions cause a system to perform the same abstract processing and generic computer operations recited in Rep. Claim 11. Independent Claim 1 is a method claim whose steps perform the same abstract processing and generic computer operations recited in Rep. Claim 11. Independent Claims 1 and 20 add no additional elements beyond those of Rep. Claim 11 that would amount to significantly more than the abstract idea. Therefore, Independent Claims 1 and 20 also do not recite an inventive concept under Step 2B.
Dependent Claims Not Significantly More
The dependent claims have been given the full two-part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. § 101. Dependent claims are dependent on Independent Claims and include all the limitations of the Independent Claims. Therefore, all dependent claims recite the same Abstract Idea. Dependent claims do not contain additional elements that integrate the abstract idea exception into a practical application or recite an inventive concept because the additional elements: (1) are mere instructions to apply the abstract idea exception; and/or (2) further limit the abstract idea exception of the Independent Claims. The abstract idea itself cannot provide the inventive concept or practical application. MPEP §§ 2106.05(I), 2106.04(d)(III).
Dependent Claims 2, 3, 10, 13, 19, and 21 recite additional limitations that form part of the same abstract idea exception as recited in Independent Claims for the same reasons articulated supra, and contain no additional elements. Regarding Claim 2, the determining step is a mental process that are practically performed in the human mind or with pen and paper because it requires mere “observation, evaluation, judgment, and/or opinion” to determine whether a transaction is “frozen” and incrementing tokens. Regarding Claims 3 and 13, the claimed “defined governance source” is merely a label and does not impart structure. Dependent Claims 10 and 19 recite a determining step. Applicant’s Specification teaches that “determining” may be “receiving information.” Spec. ¶ 74. Thus, receiving a first amount of tokens in any particular state from the blockchain, merely invokes computers or other machinery in its ordinary capacity to receive, store, or transmit data. MPEP § 2106.05(f). Regarding Claim 21, the unwrapping (converting one token to another) under certain conditions covers any solution to “unwrapping” with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result. MPEP § 2106.05(f)(1). Unwrapping is similarly conventional because as it is not limited by any particular data structure, may be formatted in any computer readable format, and may comprise any information sufficient to identify the relevant information, such as descriptive text, proprietary codes, pointers. MPEP 2106.05(f). Storing the unwrapped base token merely invokes computers or other machinery in its ordinary capacity to receive, store, or transmit data. MPEP § 2106.05(f)(2). An inventive concept or practical application cannot be furnished by an abstract idea exception itself. MPEP §§ 2106.05(I), 2106.04(d)(III).
Dependent Claims 5, 6, 7, 8, 9, 12, 14, 15, 16, 17, and 18 all recite “wherein” clauses or limitations that further limit the abstract idea of the Independent Claims and contain no additional elements. An inventive concept or practical application cannot be furnished by an abstract idea exception itself. MPEP §§ 2106.05(I), 2106.04(d)(III).
Conclusion
Claims 1–21 are therefore drawn to ineligible subject matter as they are directed to an abstract idea without significantly more. The analysis above applies to all statutory categories of invention. As such, the presentment of Rep. Claim 11 otherwise styled as another statutory category is subject to the same analysis.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1–10 and 21 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention based on NPL: Wang, et al., “ERC-20R and ERC-721R: Reversible Transactions on Ethereum” (Oct. 11, 2022) [“NPL Wang”]
Regarding Claim 1, NPL Wang discloses:
A computer-implemented method, comprising: creating a wrapped token [ERC-20R] by encapsulating a base token ERC-20], with a recoverability status indicator and a frozen status indicator, a base token [ERC-20], wherein the base token [ERC-20] is exchanged in transactions on the blockchain;
(See at p.1, “In this paper we propose reversible versions of ERC-20 and ERC-721 … This paper explores these challenges and proposes a design for our ERC-20R and ERC-721R standards, the reversible versions of ERC-20 and ERC-721 ” “That is, the standard ERC-20 transfer function now comes in two flavors: transfer() and Rtransfer().)”) p.4. “The frozen structure indicates if a particular tokenID is frozen. If frozen[tokenID] is true then the asset is frozen, and cannot be transferred.” p.6)
receiving a request to execute a transaction on a blockchain, wherein the request comprises a request to transfer a quantity of a token on the blockchain from a transmitter wallet to a receiver wallet identified in the request, wherein the token comprises the wrapped token [ERC-20R];
(See at least p.3, “Suppose Alice holds tokens in an ERC-20R (an R-token) and she wishes to exchange them for ETH or for some other ERC-20 (a non-R-token). Bob is willing to do the ETH-for-token exchange with Alice and they agree on the exchange rate.”)
incrementing a running total of tokens in the receiver wallet that are in a recoverable state by the quantity of the token identified in the request based on the recoverability status indicator of each token;
(See at least p.4, “When an account owner sends funds from its own account to another account (say, to fulfill an exchange of assets), the account owner specifies how much to take out of the Rbalance and how much to take out of the NRbalance. That is, the standard ERC-20 transfer function now comes in two flavors: transfer() and Rtransfer(). The former transfers from the nonreversible balance, while the latter transfers from the reversible balance. Either way, the transferred funds are added to the Rbalance of the recipient”)
determining, after a threshold amount of time from a timestamp associated with the received request, whether the transaction has been frozen based on the frozen status indicator of each token; and
(See at least p. 1, “a transaction is eligible for reversal for a short period of time after it has been posted on chain. After the dispute period has elapsed, the transaction can no longer be reversed.” See also, Fig. 1. “The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.” p.4)
based on determining that the transaction has not been frozen: decrementing the running total of tokens in the receiver wallet that are in the recoverable state by the quantity of the token, and incrementing a running total of tokens in the receiver wallet that are in a non-recoverable state by the quantity of the token.
(See at least p. 4, “The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.”)
Regarding Claim 2, NPL Wang discloses:
The method of Claim 1,
NPL Wang further discloses
further comprising based on determining that the transaction has been frozen, incrementing a running total of tokens in the receiver wallet that are in a frozen state by the quantity of the token.
(See at least p. 4, “The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.”)
Regarding Claim 3, NPL Wang discloses:
The method of Claim 2,
NPL Wang further discloses
further comprising: receiving, from a defined governance source, an indication that the transaction is to be reversed; and based on the received indication, restoring the quantity of the token to the transmitter wallet.
(See at least Figs. 1, 2)
Regarding Claim 4, NPL Wang discloses:
The method of Claim 3 and restoring the quantity of the token to the receiver wallet
NPL Wang further discloses
wherein restoring the quantity of the token to the receiver wallet comprises: identifying a chain of wallets, including the receiver wallet, in which tokens associated with the transaction were transferred based on timestamps associated with a series of transactions such that a total amount of tokens frozen across the chain of wallets equals the quantity of the token; and transferring tokens from the chain of wallets to the transmitter wallet.
(See at least p.4–5, “ freeze(): calculates the amounts to freeze on the attacker’s address as well as potential downstream addresses, and freezes those amounts. For ERC-20R it returns a claimID that points to an on-chain list of (account,amount) pairs. The list identifies all the accounts that contain frozen assets associated with the complaint, and the amount frozen in each.” “reverse(): sends all frozen assets associated with the claimed theft back to the original owner.” p.5.)
Regarding Claim 5, NPL Wang discloses:
The method of Claim 4 and the series of transactions
NPL Wang further discloses
wherein the series of transactions comprises a chain of transactions ordered sequentially in time and performed subsequent to the transaction.
(See at least Fig. 3 and associated text § 2.1.2)
Regarding Claim 6, NPL Wang discloses:
The method of Claim 1 and incrementing the running total of tokens in the receiver wallet that are in the recoverable state
NPL Wang further discloses
wherein incrementing the running total of tokens in the receiver wallet that are in the recoverable state comprises transferring, from the transmitter wallet to the receiver wallet, the quantity of the token into a portion of the receiver wallet in which tokens in the recoverable state are stored.
(See at least p. 4, “The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.”)
Regarding Claim 7, NPL Wang discloses:
The method of Claim 6 and transferring the quantity of the token
NPL Wang further discloses
wherein transferring the quantity of the token comprises transmitting the quantity of the token from tokens in the non-recoverable state in the transmitter wallet.
(See at least p. 4, “The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.”)
Regarding Claim 8, NPL Wang discloses:
The method of Claim 6 and transferring the quantity of the token
NPL Wang further discloses
wherein: transferring the quantity of the token comprises transmitting a first quantity of the token from tokens in the recoverable state in the transmitter wallet before transmitting a second quantity of the token from tokens in the non-recoverable state, a sum of the first quantity of the token and the second quantity of the token equals the quantity of the token; and the first quantity of the token is less than the quantity of the token.
(See at least p.4, “When an account owner sends funds from its own account to another account (say, to fulfill an exchange of assets), the account owner specifies how much to take out of the Rbalance and how much to take out of the NRbalance. That is, the standard ERC-20 transfer function now comes in two flavors: transfer() and Rtransfer(). The former transfers from the non reversible balance, while the latter transfers from the
reversible balance. Either way, the transferred funds are added to the Rbalance of the recipient.” It would be obvious to try “the first quantity of the token is less than the quantity of the token because both reversible and non-reversible tokens may be used for transactions and the first quantity of the tokens is limited to a finite number od predictable solutions (more than, equal to, of less than the quantity of token) to complete the transaction, each with a reasonable expectation of success. Further, a PHOSITA at the time of filing would understand that each token type (reversible and non-reversible) would each have an exchange rate, NPL Wang, p.3 (“Bob is willing to do the ETH-for-token exchange with Alice and they agree on the exchange rate.”) where the value exchanged would be the same regardless of the combination of reversible and non-reversible tokens.
Regarding Claim 9, NPL Wang discloses:
The method of Claim 6 and transferring the quantity of the token
NPL Wang further discloses
wherein a policy associated with the receiver wallet identifies whether the quantity of the token can be withdrawn from a portion of the transmitter wallet in which tokens in the recoverable state are stored.
(See at least p. 4, “The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.”)
Regarding Claim 10, NPL Wang discloses:
The method of Claim 1
NPL Wang further discloses
further comprising determining, based on records stored on the blockchain, a first amount of tokens in a non-recoverable state in the transmitter wallet and a second amount of tokens in a recoverable state in the transmitter wallet, wherein the second amount of tokens in the recoverable state are identified based on transaction records on the blockchain associated with transactions for which the threshold amount of time has not elapsed.
(See at least p. 4, “Recall that an ERC-20 contract manages the balances of many accounts. In our ERC-20R contract, an account balance is a pair of numbers we call Rbalance and NRbalance. The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.”)
Regarding Claim 21, NPL Wang discloses:
The method of Claim 1
NPL Wang further discloses
further comprising: unwrapping the base token from the wrapped token based on the incrementing of the running total of tokens in the receiver wallet that are in the non-recoverable state; and storing the unwrapped base token in a base token store, wherein the unwrapped base token is retrieved from the base token store and used to generate a subsequent wrapped token in association with a subsequent transaction.
(See at least p. 4, “Recall that an ERC-20 contract manages the balances of many accounts. In our ERC-20R contract, an account balance is a pair of numbers we call Rbalance and NRbalance. The NRbalance is the current account balance due to incoming transactions whose dispute window has elapsed. Funds in the NRbalance are non-reversible: they are no longer subject to a potential freeze and reversal. • The Rbalance is the account balance due to recent incoming transactions. Funds in the Rbalance are subject to reversal. As the dispute window elapses, funds move from the Rbalance to the NRbalance. This is done using the clean function discussed below.” Wrapped or reversible tokens are created from base tokens (irreversible tokens) and become base tokens again after the expiration of the time window. As explained above, either or both reversible tokens and non-reversible token can be used to compete a transaction.)
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 11–20 are rejected under 35 U.S.C. 103 as being unpatentable over NPL: Wang, et al., “ERC-20R and ERC-721R: Reversible Transactions on Ethereum” [“NPL Wang”] in view of Krasnyansky (U.S. Pat. Pub. No. 2021/0383334) [“Krasnyansky”].
Regarding Claim 11, NPL Wang discloses
create a wrapped token by encapsulating a base token, with a recoverability status indicator and a frozen status indicator, wherein the base token is exchanged in transactions on the blockchain; receive a request to execute a transaction on a blockchain, wherein the request comprises a request to transfer a quantity of a token on the blockchain from a transmitter wallet to a receiver wallet identified in the request, wherein the token comprises the wrapped token; increment a running total of tokens in the receiver wallet that are in a recoverable state by the quantity of the token identified in the request based on the recoverability status indicator of each token; determine, after a threshold amount of time from a timestamp associated with the received request, whether the transaction has been frozen based on the frozen status indicator of each token; and based on a determination that the transaction has not been frozen: decrement the running total of tokens in the receiver wallet that are in the recoverable state by the quantity of the token, and increment a running total of tokens in the receiver wallet that are in a non-recoverable state by the quantity of the token.
(See rejection Claim 1)
NPL Wang does not disclose but Krasnyansky discloses:
A system, comprising: a memory having executable instructions stored thereon; and a processor configured to execute the executable instructions in order to cause the system to:
(See at least ¶ 90, “each server computing device may include at least a processing unit
and a system memory for executing computer-readable instructions (e.g., a contingency
payment system and contingency payment tracking system application) for implementing
the contingent payment system 124 and tracking system 530.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have combined A system, comprising: a memory having executable instructions stored thereon; and a processor configured to execute the executable instructions in order to cause the system to as explained in Krasnyansky, to the known invention of NPL Wang, in the same field of invention, with the motivation to permit a “contingent transfer of value”. Krasnyansky, ¶¶ 4, 18.
The remaining limitations of Claims 12, 13, 14, 15, 16, 17, 18, and 19 are not substantively different than those presented in Claims 2, 3, 4, 6, 7, 8, 9, and 10, respectively, and are therefore, rejected, mutatis mutandis, based on NPL Wang and Krasnyansky for the same rationale presented in Claims 2, 3, 4, 6, 7, 8, 9, and 10, respectively, supra.
Regarding Claim 20, NPL Wang discloses
create a wrapped token by encapsulating a base token with a recoverability status indicator and a frozen status indicator, wherein the base token is exchanged in transactions on the blockchain receiving a request to execute a transaction on a blockchain, wherein the request comprises a request to transfer a quantity of a token on the blockchain from a transmitter wallet to a receiver wallet identified in the request, wherein the token comprises the wrapped token; incrementing a running total of tokens in the receiver wallet that are in a recoverable state by the quantity of the token identified in the request based on the recoverability status indicator of each token; determining, after a threshold amount of time from a timestamp associated with the received request, whether the transaction has been frozen based on the frozen status indicator of each token; and based on determining that the transaction has not been frozen: decrementing the running total of tokens in the receiver wallet that are in the recoverable state by the quantity of the token, and incrementing a running total of tokens in the receiver wallet that are in a non-recoverable state by the quantity of the token.
(See Rejection Claim 1)
NPL Wang does not disclose but Krasnyansky discloses:
A non-transitory computer-readable medium having instructions stored thereon which, when executed by a processor, performs an operation comprising:
(See at least Claim 19)
The resolution of the remaining Graham factual inquiries to support a conclusion of obviousness that a particular known technique was recognized as part of the ordinary skill in the pertinent art is substantively the same as that presented in Claim 11 supra, and is incorporated in its entirety herein, mutatis mutandis, to support the rejection of Claim 20.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES H MILLER whose telephone number is (469)295-9082. The examiner can normally be reached M-F: 10- 4 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, Bennett M Sigmond can be reached at (303) 297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES H MILLER/Primary Examiner, Art Unit 3694
1 Statements of intended use fail to limit the scope of the claim under BRI. MPEP § 2103(I)(C).
2 Examiner replaces the claim language with [bracketed interpretations] as identified in the Claim Interpretations point heading for ease in understanding how a computer is used as a tool. MPEP § 2106.05(f).
3 See Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), 3-4, https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF (April, 18, 2018) (That additional elements are well-understood, routine, or conventional may be supported by various forms of evidence, including "[a] citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).").
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