DETAILED ACTION
1. 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 .
2. Status of Application and Claims
Claims 1, 3, 5-7, 9-11, 13, 15-17, 19 and 20 are pending.
Claims 1, 3, 5-7, 10, 11, 13, 15-17, 19 and 20 were amended or newly added in the Applicant’s filing(s) on 12/10/2025.
Claims 2, 4, 8, 12, 14 and 18 were cancelled in the Applicant’s filing(s) on 12/10/2025.
This office action is being issued in response to the Applicant's filing(s) on 12/10/2025.
3. Claim Interpretation
The subject matter of a properly construed claim is defined by the terms that limit its scope when given their broadest reasonable interpretation. see MPEP §2013(I)(C). Specifically, the “broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” See MPEP §2111, citing Phillips v. AWH Corp., 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). However, “[t]hough understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim.” See MPEP §2111.01, citing Superguide Corp. v. DirecTV Enterprises, Inc., 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See MPEP §2111, citing In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984).
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. See MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. See MPEP §2013(I)(C).
As such, claim limitations that contain statement(s) such as “if,” “may,” “might,” “can,” and “could” are treated as containing optional language. See MPEP §2013(I)(C). As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted. See MPEP §2013(I)(C).
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. See MPEP §2111.04(II). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See MPEP §2143.03, citing Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009);
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble. See MPEP §2111.02;
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby.” See MPEP §2111.04;
Contingent limitations. See MPEP §2111.04(II);
Printed matter. See MPEP §2111.05; and
Functional language associated with a claim term. See MPEP §2181.
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized, underlined and/or boldened language is interpreted as not further limiting the scope of the claimed invention.
Additionally, the following italicized, underlined and emboldened language is not necessarily an exhaustive list of claim language that is interpreted as not further limiting the scope of the claimed invention. Applicant should review all claims for additional claim interpretation issues.
Claim 1 recites a method comprising:
creating, by one or more processors, a first transfer transaction by a transaction sender for an asset managed by a distributed ledger system to a transaction receiver, wherein:
the first transfer transaction comprises an output;
the asset is codified as a digital token; and
the first transfer transaction is in a pending status;
Method claims are defined by the method steps being actively performed (i.e., codifying), not method steps performed in the past (i.e., codified). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state (i.e., the asset is a token). The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 11 has similar claim interpretation issues, as Claim 11 does not recite that the computer-readable medium causes a processor to codify an asset.
Claim 20 has similar claim interpretation issues, as Claim 20 does not recite that the system is configured to codify an asset.
Additionally, all transactions are, by default, in a pending status until concluded.
Claims 11 and 20, due to similar claim language, result in a similar claim interpretation.
Claim 1 recites a method comprising:
adding, by one or more processors, a delayed auditing script to the token, wherein the delayed auditing script is a ciphertext that identifies the transaction sender and the transaction receiver the output.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. The claim, as written, does not recite that the script (i.e., a set of instructions written in a scripting language) is ever executed or that the data contained in the ciphertext is ever utilized. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III). As such, the script and data contained within the script is nonfunctional descriptive material and is not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Claims 11 and 20 have similar issues.
Claim 1 recites a method comprising:
creating, by one or more processors, a first transfer transaction by a transaction sender for an asset managed by a distributed ledger system to a transaction receiver, wherein:
the first transfer transaction comprises an output;
the asset is codified as a digital token; and
the first transfer transaction is in a pending status;
…
submitting, by one or more processors, a serial number bound to the output of the first transfer transaction by the transaction sender to the distributed ledger system, thereby committing the first transfer transaction by the distributed ledger system such that the pending status is dissolved;
Method claims performed by a computer system are defined by the method steps being actively performed by a computer system (i.e., creating a first transfer transaction or submitting a serial number to a distributed ledger system), not what the performance of the method steps means or indicates to a human being (i.e., the first transfer is in a pending status or the pending status is dissolved) or the consequences of the computer functions (i.e., submitting results in committing the first transfer transaction by the distributed ledger system).
Claims 11 and 20 have similar issues.
Claim 1 recites a method comprising:
validating, by one or more processors, the second transfer transaction, using a signature from an auditor for the first transfer transaction that is presented to the distributed ledger system, wherein the signature originated subsequent to the committing of the first transfer transaction.
The claim, as written, recites using a signature from an auditor (i.e., a person who conducts an audit) but the claim does not recite that any audit is actively performed. As such, the title assigned to the source of the signature has no patentable weight.
Claims 11 and 20 have similar issues.
Claim 3 recites a method comprising subsequent to the receiver of the asset signing a valid transaction and validating the second transfer transaction, allowing the assets received by the transaction receiver to be transferred again in the second transfer transaction.
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met. See MPEP §2111.04(II).
Usage of the term and/or phrase “subsequent to the receiver of the asset signing a valid transaction” in Claim 3 suggests that there remains the possibility that the contingent limitations are not performed as the condition(s) precedent is not met (i.e., the receiver does not sign a valid transaction). Therefore, the claim limitations based upon the condition are optional claim limitations. As a matter of linguistic precision, optional claim limitations do not narrow the scope of the invention, since they can always be omitted. See MPEP §2111.04(II).
As the Applicant does not address what happens should the optional claim limitation(s) fail, Examiner assumes that nothing happens (i.e., the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
Claim 3 recites a method comprising subsequent to the receiver of the asset signing a valid transaction and validating the second transfer transaction, allowing the assets received by the transaction receiver to be transferred again in the second transfer transaction.
Method claims are defined by the method steps being actively performed, not method steps possibly performed in the future (i.e., a potential transfer of assets in the second transfer transaction). Examiner notes that allowing or permitting a transfer does not mean that a transfer takes place. Claiming method steps in the future tense can be interpreted as the method steps possibly performed in the future are outside the scope of the claimed method.
Additionally, the claim does not recite that assets are received by the transaction receiver. As such, under the broadest reasonable interpretation, there are no assets “to be transferred again in the second transfer transaction.”
Claim 13 has similar issues.
Claim 5 recites a method wherein:
the delayed auditing script further comprises (i) metadata of the first transfer transaction and (ii) is encrypted by a public key, further comprising:
augmenting, by one or more processors, the first transfer transaction with a zero-knowledge proof that proves that encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. The claim, as written, does not recite that the script is ever executed. The claim, as written, does not recite that the metadata or zero-knowledge proof is ever utilized. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III). As such, the script, the metadata and the zero-knowledge proof is nonfunctional descriptive material and is not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
Method claims are defined by the method steps being actively performed (i.e., augmenting the first transfer transaction), not benefits to be derived from the method steps (i.e., proving that encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content). Examiner notes that, under the broadest reasonable interpretation, augmenting means storing the zero-knowledge proof with data pertaining to the first transfer transaction.
Method claims are defined by the method steps being actively performed, not method steps performed in the past (i.e., encrypted by a public key). Claiming method steps in the past tense can be interpreted as the method steps performed in the past are outside the scope of the claimed method. Alternatively stated, the scope of the claimed method are the active method steps which are building off a pre-existing state. The method steps performed for creation of the pre-existing state are outside the scope of the claimed invention.
Claim 15 has similar issues.
Claim 7 recites a method comprising maintaining, by the one or more processors, storage for digital identifiers in a form of the serial numbers and related amounts, outside the distributed ledger system.
Under the broadest reasonable interpretation, the claim, as written, is maintaining storage. The intended purpose of the maintained storage is for storage of digital identifiers in a form of the serial numbers and related amounts. The method does not recite that the method is actively storing digital identifiers in a form of the serial numbers and related amounts.
Claim 17 has similar issues.
Claim 10 recites a method comprising wherein the delayed auditing script further comprises an indication about a timeout term until which the transaction receiver has to claim a respective transaction as completed.
Claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. The claim, as written, does not recite that the script (i.e., a set of instructions written in a scripting language) is ever executed or that the indication about a timeout term is ever utilized. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III). As such, the script and data contained within the script is nonfunctional descriptive material and is not functionally involved in the steps recited. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III).
4. 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, 3, 5-7, 9-11, 13, 15-17, 19 and 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1
The claimed invention falls within one of the four statutory categories of invention (i.e., process, machine, manufacture and composition of matter). See MPEP §2106.03.
STEP 2A – PRONG ONE
The claim(s) recite(s) a method, a system to perform a method, and a computer-readable medium containing instructions to perform a method comprising:
creating, ..., a first transfer transaction by a transaction sender for an asset managed by a … ledger … to a transaction receiver, wherein:
the first transfer transaction comprises an output;
the asset is codified as a … token; and
the first transfer transaction is in a pending status;
adding, …, [information] to the token, wherein the [information] is a ciphertext that identifies the transaction sender and the transaction receiver indicative of a legitimate owner of the output;
submitting, …, a serial number bound to the output of the first transfer transaction by the transaction sender to the … ledger …, thereby committing the first transfer transaction by the … ledger … such that the pending status is dissolved;
creating, …, a second transfer transaction by the transaction receiver based upon the output;
performing, by one or more processors, a double-spending check for the second transfer transaction using the serial number; and
validating, …, the second transfer transaction, using a signature from an auditor for the first transfer transaction that is presented to the distributed ledger system, wherein the signature originated subsequent to the committing of the first transfer transaction.
These limitations, as drafted, under its broadest reasonable interpretation, covers a series of steps instructing how to process an asset transfer transaction which is a fundamental economic practice, a sub-category of certain method(s) of organizing human activity, an enumerated grouping of abstract ideas. See MPEP §2106.04(a)(2)(II)(A).
Accordingly, the claimed invention recites an abstract idea.
STEP 2A – PRONG TWO
The claimed invention recites additional elements (i.e., computer elements) of processor(s) (Claim(s) 1, 11 and 20), a digital token (Claim(s) 1, 11 and 20), a distributed ledger system (Claim(s) 1, 11 and 20) and a script (Claim(s) 1, 11 and 20).
The claimed invention does not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field; improvements to the functioning of the computer itself; are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; are not applying the judicial exception with or by use of a particular machine; are not effecting a transformation or reduction of a particular article to a different state or thing; and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP §2106.04(d).
The additional elements are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. See MPEP §2106.05(f). Alternately, the additional elements amount to no more than generally linking the exception to a particular technological environment or field of use. See MPEP §2106.05(h). Accordingly, these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claimed invention is directed to an abstract idea without a practical application.
STEP 2B
Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. See MPEP §2106.07(a)(II). The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract ideas.
DEPENDENT CLAIMS
Dependent Claim(s) 3, 5-7, 9, 10, 13, 15-17 and 19 recite claim limitations that further define the abstract idea recited in respective independent Claim(s) 1, 11 and 20. As such, the dependent claims are also grouped an abstract idea utilizing the same rationale as previously asserted against the independent claims.
Dependent Claim(s) recite additional elements (i.e., computer elements) of metadata (Claim(s) 5 and 15), a public key (Claim(s) 5 and 15) and storage for digital identifier(s) (Claim(s) 7 and 17).
In each case, the additional element(s) are recited at a high level of generality such that these additional element(s) amount to no more than mere instructions to apply the exception using a generic computer component.
The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the judicial exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination utilizing the same rationale as previously asserted against the independent claims.
Accordingly, the dependent claim(s) are also not patent eligible.
Claims 11, 13 and 15-17 are also rejected under 35 U.S.C. §101 because, in order to comply with §101, a computer program product claim must recite that the computer program product comprises a non-transitory computer readable medium having program instructions (or code) embodied thereon and said instructions are configured to control a computer to perform specific functional steps. The claim must then recite the specific functional steps performed by execution of the instructions contained on the computer-readable medium by the computer, rather than reciting the code or software itself (i.e., software per se is not patentable). A computer program product, when properly claimed, describes the method steps performed when executed by a computer system, not the code or software itself.
This is a semantic problem. The preamble for a computer program product has to state that (1) the product is stored on a non-transitory computer-readable medium (which is not present), (2) the product can be executed on a computer (which is not present) and (3) when executed the product causes the computer to perform a method (which is not present) where the further claim limitations are written as method steps. It is the actual the method being performed by the computer which is patentable, rather than the software itself.
Appropriate correction is requested.
5. Claim Rejections - 35 USC § 112(b)
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 5 and 15 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.
Claim 5 recites a method comprising:
the delayed auditing script further comprises (i) metadata of the first transfer transaction and (ii) is encrypted by a public key, further comprising:
augmenting, by one or more processors, the first transfer transaction with a zero-knowledge proof that proves that encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content.
What is encrypted?
Claim 5, as written, recites that the delayed auditing script (i.e., the script itself is encrypted).
However, Claim 5 also recites that the “encrypted plaintext relating to the ciphertext.” Claim 1 recites that the delayed auditing script contains ciphertext (i.e., encrypted plaintext).
Does Claim 5 refer to the ciphertext (i.e., a subcomponent of the delayed auditing script) being encrypted by a public key or the delayed auditing script (i.e., the script itself, in its entirety, including the ciphertext and the metadata) being encrypted with a public key?
Additionally, Claim 5 recites a method comprising:
the delayed auditing script further comprises (i) metadata of the first transfer transaction and (ii) is encrypted by a public key, further comprising:
augmenting, by one or more processors, the first transfer transaction with a zero-knowledge proof that proves that encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content.
Claim 5, as written, contains terms that are subjective or determinations of whether the claim limitations are satisfied are subjective. Specifically, said claims contain terminology such as whether “encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content.” Claims are indefinite in circumstances where a claim contains a term that is completely dependent on a person’s subjective opinion. See MPEP §2173.05(b)(IV). As such, claims containing the cited claim limitations are rejected under §112, 2nd paragraph.
Claim 15, due to similar claim language, result in a similar claim rejection
Appropriate correction is requested.
6. Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6 and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 recites a method comprising:
submitting, by one or more processors, a serial number bound to the output of the first transfer transaction by the transaction sender to the distributed ledger system, thereby committing the first transfer transaction by the distributed ledger system such that the pending status is dissolved.
Based upon Claim 1, as written, the first transfer transaction is committed (i.e., completed) once a serial number is submitted to the distributed ledger.
However, Claim 6 recites a method comprising:
committing the first transfer transaction further comprises verifying, by one or more processors, a zero-knowledge proof of the first transfer transaction in the distributed ledger system.
Based upon Claim 6, as written, the first transfer transaction is not committed (i.e., completed) once a serial number is submitted to the distributed ledger, as recited in Claim 1, as there are additional requirements for committing the first transfer transaction.
Claim 16, due to similar claim language, results in a similar claim rejection
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
7. 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 7, 9, 11, 13, 14, 17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Youb (US Patent 11,893,626) in view of Assadipour (US PG Pub. 2022/0391474).
Regarding Claim 1, Youb discloses a computer-implemented method comprising:
creating, by one or more processors, a first transfer transaction (token transferring process) by a transaction sender (from A) for an asset (token or bitcoin) managed by a distributed ledger system to a transaction receiver (to B). (see col. 21, lines 25-54; col. 30, lines 36-46), wherein:
the first transfer transaction comprises an output (a new state in B’s account). (see col., lines 36-46);
the asset is codified as a digital token. (see col. 20, lines 13-30); and
the first transfer transaction is in a pending status. (see col. 65, lines 49-64);
adding, by one or more processors, a delayed auditing script (script) to the token, wherein the delayed auditing script is a ciphertext (encrypted data) that identifies the transaction sender (sending account) and the transaction receiver (receiving account) of the output. (see col. 10, lines 4-9; col. 35, line 4 – col. 36, line 2; col. 36, line 60 – col. 38, line 25);
submitting, by one or more processors, a serial number (token ID or unique identifier) bound to the output of the first transfer transaction by the transaction sender to the distributed ledger system, thereby committing (recording) the first transfer transaction by the distributed ledger system such that the pending status is dissolved. (see col. 19, line 57 – col. 20, line 12; col. 21, lines 25-54; col. 22, line 67 – col. 23, line 24);
creating, by the processors, a second transfer transaction by the transaction receiver (receiving account holder transfers tokens to another account holder) based upon the output (receiving account holder receiving tokens from original account holder). (see col. 75, lines 29-41);
performing, by the one or more processors, a double spending check for the second transaction (to confirm that each unit of value is transferred only once). (see col. 2, line 55- col. 3, line 8; col. 4, lines 11-28); and
validating, by the one or more processors, a first transaction, using a signature for the first transaction that is presented to the distributed ledger system. (see col. 30, line 35 – col. 31, line 21).
Youb does not explicitly teach a method wherein the signature originated subsequent to the committing of the first transfer transaction. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Youb to change the order for performance of the method steps wherein the change of order fails to produce a new or unexpected result. see MPEP §2144.04 (IV)(C).
Youb does not teach a method wherein the signature is a signature from an auditor; or validating the second transfer transaction, using a signature from an auditor for the first transfer transaction.
Assadipour discloses a method comprising:
validating, by one or more processors, a transaction using a signature from an auditor (validator). (see para. 64); and
validating, by the one or more processors, a second transaction (future transaction), using a signature from an auditor (validator) for the first transaction (original transaction). (see para. 70).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Youb by incorporating validation based upon past auditor signatures, as disclosed by Assadipour, as the validity of each transaction builds upon the validity of the previous transaction.
Regarding Claim 3, Youb discloses a method comprising subsequent to the receiver of the asset signing a valid transaction and validating the second transfer transaction, allowing the assets received by the transaction receiver to be transferred again in the second transfer transaction. (see col. 75, lines 29-41).
Regarding Claim 7, Youb does not teach a method comprising maintaining, by the one or more processors, storage for digital identifiers in a form of the serial numbers and related amounts, outside the distributed ledger system.
Assadipour discloses a method a method comprising maintaining, by the one or more processors, storage for digital identifiers in a form of the serial numbers and related amounts, outside the distributed ledger system. (see para. 101).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Youb and Assadipour by incorporating additional means of data storage, as disclosed by Assadipour, thereby providing protection from potential data loss. Regarding Claim 9, Youb does not teach a method comprising generating, by one or more processors, an issue transaction comprising the signature from the auditor.
Assadipour discloses a method comprising generating, by one or more processors, an issue transaction (valid transaction) comprising the signature from the auditor (validator). (see para. 46).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Youb and Assadipour by incorporating a signature from an auditor, as disclosed by Assadipour, thereby utilizing a conventional and standard parameter pertaining to a distributed ledger.
Regarding Claims 11-13, 17, 19 and 20, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 5, 6, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Youb and Assadipour, as applied to Claim 1 and 11 above, and further in view of Avetisov (US PG Pub. 2021/0044976).
Regarding Claim 5, Youb discloses a method wherein the delayed auditing script (i) further comprises metadata; and (ii) is encrypted by a public key (see col. 23, lines 33-52; col. 77, lines 25-46).
Youb does not teach a method comprising augmenting, by one or more processors, the first transfer transaction with a zero-knowledge proof that proves that encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content.
Avetisov discloses a method wherein the delayed auditing script (i) further comprises metadata and (ii) is encrypted by a public key. (see para. 100 and 219).
Avetisov discloses a method comprising augmenting, by one or more processors, the first transfer transaction with a zero-knowledge proof that proves that encrypted plaintext relating to the ciphertext is compatible with a transfer transaction content. (see para. 42, 45, 52, 54, 67 and 186).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Youb and Assadipour by incorporating a zero-knowledge proof, as disclosed by Avestisov, as a zero-knowledge proof is a common protocol utilized in distributed ledger transactions in which one party (the prover) can convince another party (the verifier) that some given statement is true, without conveying to the underlying sensitive data.
Regarding Claim 6, Youb does not teach a method wherein committing the first transfer transaction also comprises verifying, by one or more processors, a zero-knowledge proof of the first transfer transaction in the distributed ledger system.
Avestisov discloses a method comprising verifying, by one or more processors, a zero-knowledge proof at a transaction verification time of the first transfer transaction in the distributed ledger system. (see para. 42, 45, 52, 54, 67 and 186).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Youb and Assadipour by incorporating a zero-knowledge proof, as disclosed by Avestisov, as a zero-knowledge proof is a common protocol utilized in distributed ledger transactions in which one party (the prover) can convince another party (the verifier) that some given statement is true, without conveying to the underlying sensitive data.
Regarding Claims 15 and 16 such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
Claim(s) 10 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Youb and Assadipour, as applied to Claim 1 and 11 above, and Harrison (US PG Pub. 12,265,953).
Regarding Claim 10, Youb does not teach a method wherein the delayed auditing script comprises an indication about a timeout term until which the transaction receiver has to claim a respective transaction as completed.
Harrison discloses a method wherein he delayed auditing script comprises an indication about a timeout term (e.g., one hour) until which the transaction receiver has to claim a respective transaction as completed. (see col. 9, lines 13-30).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Youb and Assadipour by incorporating a timeout term, as disclosed by Harrison, thereby ensuring that the same digital assets are not being utilized in two different transactions.
Regarding Claim 18, such claim(s) recite substantially similar limitations as claimed in previously rejected claim(s) and, therefore, would have been obvious based upon previously rejected claim(s).
8. Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered. Some arguments have been rendered moot based upon new references utilized in the current rejection. However, some arguments remain relevant, as they apply to a reference and/or rejection still utilized in the current rejection. Such arguments have been fully considered but are not persuasive and are addressed below.
§101 Rejection
Step 2A Prong One
Applicant argues that the claimed invention does not recite a judicial exception and, as such, satisfies Step 2A Prong One of the §101 Guidelines. See Arguments, pp. 11-13.
Specifically, Applicant argues:
Applicant respectfully asserts that, at least, "adding, by one or more processors, a delayed auditing script to the token, wherein the delayed auditing script is a ciphertext that identifies the transaction sender and the transaction receiver of the output" is subject matter that is not directed to mathematical concepts, certain methods of organizing human activity, or mental processes. Specifically, such elements do not fall under "fundamental economic principles or practices (including hedging, insurance, mitigating risk); a commercial or legal interaction (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions.
Therefore, the claims do not recite matter that falls within these enumerated groupings of abstract ideas, and therefore should not be treated as reciting abstract ideas. See Arguments, p. 13.
The Examiner respectfully disagrees.
Assuming that Applicant’s assertion is true and the claim limitation of "adding, by one or more processors, a delayed auditing script to the token, wherein the delayed auditing script is a ciphertext that identifies the transaction sender and the transaction receiver of the output" does not constitute a recitation of an abstract idea, inclusion of a claim limitation that does not constitute an abstract idea does not negate portions of the claimed invention that do recite an abstract idea.
That claim limitation (i.e., the claim limitation that does not recite an abstract idea) would be examined as an additional element, an element recited in addition to the judicial exception, under Step 2A Prong Two.
As noted in the Claim Interpretation section, the argued claim elements pertain to nonfunctional descriptive material and are not functionally involved in the steps recited. The claim, as recited, does not recite that the script (i.e., a set of instructions written in a scripting language) is ever executed or that the data contained in the ciphertext is ever utilized. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See MPEP §2111.05 (III). As such, the script is a nonfunctional descriptive material and is not functionally involved in the steps recited. See MPEP §2111.05 (III).
Step 2A Prong Two
Applicant argues that the claimed invention recites a practical application, specifically “an improvement in the functioning of a computer, or an improvement to other technology or technical field,” and, as such, satisfies Step 2A Prong Two of the §101 Guidelines. See Arguments, pp. 13-15.
Specifically, Applicant argues:
The above quoted element(s) reflect an improvement in the functioning of a computer or technology by improving "distributed ledger system[s]" and "the bottleneck problem of an active auditing setup[.] (Specification, [0035], [0037]). See Arguments, p. 15.
The Examiner respectfully disagrees.
Specification, para. 35, recites:
Embodiments of the present invention recognize that in order to increase trust and stability of blockchain based asset transactions, an active auditing may be required for the transactions, i.e., each transaction has to be validated before it gets committed to the ledger system. Embodiments of the present invention recognize that, in such a scenario, if the transaction is not signed by the auditor, the transaction gets rejected. Furthermore, an active auditor has to keep track of all transactions audited so far in what is denoted as the audit database. However, if the auditor did not, for any reason, confirm the transaction, the transaction finally gets rejected. Accordingly, embodiments of the present invention recognize that, the auditor or the active auditing process represents a real bottleneck in the approach. If the auditor is not fast enough, the usability of the digital cash system may suffer significantly. See para. 35 – emphasis added.
MPEP §2106.05(a) recites:
If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. – emphasis added.
However, the specification does not provide any evidence that the claimed invention results in an improvement to the functioning of a computer, an improvement to conventional technology or technological processes, or is addressing a technology-based problem.
The specification does not provide any evidence that there is even a technical (i.e., technology-based) problem to be solved. For example, according to the specification, the auditing process is optional (i.e., active auditing may be required) and active auditing represents a bottleneck. See para. 35. If the auditing process is optional then there is no technical problem. Optional processes can always be eliminated, thereby removing the bottleneck.
The specification does not provide any evidence that existing technology was incapable of performing the claimed functions but for the claimed technical solution. For example, assuming that the auditing process was restructured to remove the bottleneck, there is no evidence that the auditing process could not have been restructured utilizing existing technology. If the auditing process could be restructured on existing technology, then there is no technology-based problem.
MPEP §2106.04(d) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); [and]
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner asserts that the additional elements amount to merely (1) including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, or alternatively, (2) merely links the use of a judicial exception to a particular technological environment or field of use.
Step 2B
Applicant argues that the additional elements amount to “significantly more” than the abstract idea as the additional elements are not “well-understood, routine, conventional activity previously known to the industry” and, as such, satisfies Step 2B of the §101 Guidelines. See Arguments, pp. 15-17.
Specifically, Applicant argues:
A first reason why claims 1, 9, and 17, as presented, are patent eligible is that the claims are clearly directed to adding a specific limitation other than what is well-understood, routine, and conventional in the field, or adding unconventional steps that confine the claims to a particular useful application that improves the functionality of a computing device, and provides an improvement to the particular technological field of delayed auditing in a distributed ledger system. (Emphasis added). See Arguments, p. 16.
Examiner assumes that the Applicant is arguing that “the field” to be utilized in Step 2B analysis is limited to the field of “delayed auditing in a distributed ledger system.”
The Examiner respectfully disagrees with this narrow interpretation.
Step 2B analysis is premised on determining whether a computer function is conventional activity previously known to the relevant field. Examiner asserts that the recited computer functions are conventional activity previously known to the field, the computer field. The field is not limited to auditing systems or distributed ledger systems.
To qualify as “significantly more” than the abstract idea, computer implementation must involve more than performance of “well-understood, routine, [and] conventional activities” previously known in the computer industry. However, the functions performed by the computer system in the claimed invention are well-understood, routine and conventional computer functions.
9. 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 JASON M. BORLINGHAUS whose telephone number is (571)272-6924. The examiner can normally be reached M-F 9-5.
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, RYAN D. DONLON can be reached at (571)270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jason M. Borlinghaus/Primary Examiner, Art Unit 3692 April 24, 2026
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