DETAILED ACTION
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 .
This is a final office action on application 18/375,638 filed on October 2, 2023 and in response to the applicant’s amendment received on June 23, 2026 (“Amendment”).
Claims 11-6, 9, 11-17, 19, and 20 have been amended. Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites in part receive, from a first computing system of a first node, a request to perform a transaction of an asset between the first node and a second node, the first node corresponding to a tokenized representation of a first physical entity in a virtual environment, the second node corresponding to a tokenized representation of a second physical entity in the virtual environment; generate a certificate for the request; sign the certificate with a private key of the system; transmit the signed certificate to the first computing system and a second computing system of the second node; receive the signed certificate from the first computing system and the second computing system; determine whether the signed certificate was validated by the first computing system and the second computing system, wherein the first computing system validates the signed certificate by signing the signed certificate with a private key of the first computing system, and wherein the second computing system validates the signed certificate by signing the signed certificate with a private key of the second computing system; generate a block comprising: i) a pointer, ii) a block identification, and iii) data associated with the transaction; transmit the block to the first computing system and the second computing system; receive, from the first computing system, a first message indicating a first validation of the transaction; receive, from the second computing system, a second message indicating a second validation of the transaction; and in response to (i) receiving the first message and the second message and (ii) determining that the signed certificate was validated by the first computing system and the second computing system, append the block onto a blockchain, the blockchain comprising a plurality of blocks each associated with a respective transaction between the first node and the second node.
The claim is rejected as the Specification finds no support for the particular sequence of functions as claimed in the claim. For example, the claim clearly suggests that a certificate that is signed with a private key of a system, i.e., the system comprising one or more processors coupled with the memory, is transmitted to a first computing system of a first node and a second computing system of a second node. Upon receiving the signed certificate from the first node, the one or more processors determines whether the signed certificate was validated by the first computing system and the second computing system (wherein the first computing system validates the signed certificate by signing the signed certificate with a private key of the first computing system and wherein the second computing system validates the signed certificate by signing the signed certificate with a private key of the second computing system). The one or more processors generates a block (comprising a pointer, a block identification, and data associated with the transaction) and transmits the block to the first computing system and the second computing system. Upon receiving from the first computing system a first message indicating a first validation of the transaction, receiving from the second computing system a second message indicating a second validation of the transaction, and determining that the signed certificate was validated by both the first computing system and the second computing system, append the block onto a blockchain.
In response to the examiner’s request for provision of citation(s) in the current specification that shows support for the claimed subject matter in the previous office action dated 3/23/2026 (see page 4 paragraph 1), the applicant submits [0029], [0033], [0034] of the specification along with Figs. 1A, 1B, and 8 of the Drawing.
[0029], [0033], and [0034] recite:
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Figs. 1A, 1B, and 8 are depicted below:
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The examiner finds that the applicant’s citations do not find support for the one or more processors coupled with memory and configured to: transmit the signed certificate to a first computing system of a first node (i.e., transaction requestor) and a second computing system of a second node; receive the signed certificate from the first computing system and the second computing system; determine whether the signed certificate was validated by the first computing system and the second computing system, wherein the first computing system validates the signed certificate by signing the signed certificate with a private key of the first computing system, and wherein the second computing system validates the signed certificate by signing the signed certificate with a private key of the second computing system; generate a block comprising: i) a pointer, ii) a block identification, and iii) data associated with the transaction; transmit the block to the first computing system and the second computing system; receive, from the first computing system, a first message indicating a first validation of the transaction; receive, from the second computing system, a second message indicating a second validation of the transaction; and in response to (i) receiving the first message and the second message and (ii) determining that the signed certificate was validated by the first computing system and the second computing system, append the block onto a blockchain, the blockchain comprising a plurality of blocks each associated with a respective transaction between the first node and the second node.
At best, the citations merely describe at high level that the arrangement of system 100 depicted in Fig. 1A and 1B along with the description that the nodes 128 may be tokenized representation (i.e., NFT) of physical entities and that the validator checker 110 is configured to validate, sign, and confirm validation of the transaction requests 112 and to act as a certificate authority (i.e., sign a certificate with a private key of the computing system 102, transmit the certificate to the nodes 128 for validation wherein the nodes 128 validate the certificate by signing the certificate with a respective private key). The validator checker may receive the certificate and determine whether the certificate (i.e., the transaction request 116) was validated by the nodes 128 by checking whether the certificate is signed by the nodes 128. If the certificate was signed, the validation checker may determine the transaction to be a valid request and send an indication to the blockchain manager to append the block 120 onto the blockchain 118.
There is no support for the particular combination of functions as recited in the claim, including that the singed certificate is sent to the first computing system of the first node (i.e., requestor of the transaction) and the second computing system of the second node); the first computing system and the second computing system both validating the transaction request by signing the certificate; receive the signed certificate from the first computing system and the second computing system; determine whether the signed certificate was validated by the first computing system and the second computing system, wherein the first computing system validates the signed certificate by signing the signed certificate with a private key of the first computing system, and wherein the second computing system validates the signed certificate by signing the signed certificate with a private key of the second computing system; generate a block comprising: i) a pointer, ii) a block identification, and iii) data associated with the transaction; transmit the block to the first computing system and the second computing system; receive, from the first computing system, a first message indicating a first validation of the transaction; receive, from the second computing system, a second message indicating a second validation of the transaction; and in response to (i) receiving the first message and the second message and (ii) determining that the signed certificate was validated by the first computing system and the second computing system, append the block onto a blockchain, the blockchain comprising a plurality of blocks each associated with a respective transaction between the first node and the second node.
Claims 11 and 19 are significantly similar to claim 1, hence they are rejected also.
As per claims 4 and 15, the claims clearly recite three verification performed by the second node, i.e., verification of the signed certificate, verification of the transaction, and verification of the request. There is no support in the specification for such. Furthermore, the specification does not provide how node such as NFT is able to verify the request as NFT is merely a token.
The dependent claims are rejected as they depend on the independent claim(s) above.
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 1-20 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.
Per claim 1, the scope of the claim is unclear. The claim recites in part transmit the signed certificate to the first computing system and a second computing system of the second node; receive the signed certificate from the first computing system and the second computing system; determining whether the signed certificate was validated by the first computing system and the second computing system, wherein the first computing system validates the signed certificate by signing the signed certificate with a private key of the first computing system, and wherein the second computing system validates the signed certificate by signing the signed certificate with a private key of the second computing system … in response to (i) receiving the first message and the second message [i.e., the first message indicating a first validation of the transaction and the second message indicating a second validation of the transaction] and (ii) determining that the signed certificate was validated by the first computing system and the second computing system, append the block onto a blockchain, the blockchain comprising a plurality of blocks each associated with a respective transaction between the first node and the second node.
One of ordinary skill in the art would appreciate that the one or more processors determines that the signed certificate was validated by the first computing system and the second computing system by determining signatures (i.e., respective signatures of the first computing system and the second computing system). The claim, however, recites that one or more processors receive the signed certificate, i.e., certificate that was signed by the one or more processors with a private key of the system and transmitted to the first computing system and the second computing system. In other words, the scope of the claim is unclear as the one or more processors would not be able to determine such validations by the first computing system and the second computing system by merely receiving the signed certificate that was transmitted to the first computing system and the second computing system, rendering the claim to be indefinite.
Claims 11 and 19 are significantly similar to claim 1, hence they are rejected also.
The dependent claims are rejected as they depend on the independent claim(s) above.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
MPEP 2106 provides step(s) in determining eligibility under 35 U.S.C. § 101. Specifically, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any additional elements in the claim must integrate the judicial exception into a practical application. If not, the inquiry continues to see whether any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include mathematical concepts, mental processes, and certain methods of organizing human activities.
Under Step 1, claims 1-10 (group I) are directed to a system, claims 11-18 (group II) directed to a method (i.e. process), while claim 19-20 are directed to a non-transitory computer-readable storage medium. Thus, the claimed inventions are directed towards one of the four statutory categories under 35 USC § 101. Nevertheless, the claims also fall within the judicial exception of an abstract idea without significantly more.
Step 2A, 1st prong:
Claim 11 recites: A method comprising:
a) receiving, by one or more processors from a first computing system of a first node, a request to perform a transaction of an asset between the first node and a second node, the first node corresponding to a tokenized representation of a first physical entity in a virtual environment, the second node corresponding to a tokenized representation of a second physical entity in the virtual environment;
b) generating a certificate for the request;
c) signing the certificate with a private key of the one or more processors;
d) transmitting the signed certificate to the first computing system and a second computing system of the second node;
e) receiving the signed certificate from the first computing system and the second computing system;
f) determining whether the signed certificate was validated by the first computing system and the second computing system, wherein the first computing system validates the signed certificate by signing the signed certificate with a private key of the first computing system, and wherein the second computing system validates the signed certificate by signing the signed certificate with a private key of the second computing system;
g) generating, by the one or more processors, a block at least comprising: i) a pointer, ii) a block identification, and iii) data associated with the transaction;
h) transmitting, by the one or more processors, the block to the first computing system and the second computing system;
i) receiving, by the one or more processors from the first computing system, a first message indicating a first validation of the transaction;
j) receiving, by the one or more processors from the second computing system, a second message indicating a second validation of the transaction; and
l) in response to (i) receiving the first message and the second message and (ii) determining that the signed certificate was validated by the first computing system and the second computing system, appending, by the one or more processors, the block onto a blockchain, the blockchain comprising a plurality of blocks each associated with a respective transaction between the first node and the second node.
(Emphasis added on the additional element(s))
The claim recites a process of that facilitates a transaction of an asset between two entities (i.e., first and second entities) and conditionally recording of the transaction on a ledger based on validation of a certificate and the transaction by the both entities, particularly the claim recites a) receiving from a first entity a request for the transaction (transaction of an asset between the first entity and a second entity); b) generating a certificate (i.e., document containing a certifying statement) for the request, c) signing the certificate (i.e., certifying the document); d) transmitting the signed certificate to the first entity and the second entity, e) receiving the signed certificate from the first entity and the second entity; f) determining whether the signed certificate was validated by the first entity and the second entity, wherein the first entity validates the signed certificate by signing the signed certificate (i.e., the first entity also certifies the document by signing the document) and wherein the second entity validates the signed certificate by signing the signed certificate; g) generating a block (record) at least comprising: i) a pointer, ii) a block identification, and iii) data associated with the transaction; e) transmitting the block (record) to the first entity and the second entity; f) receiving from the first entity, a first message indicating a first validation of the transaction; g) receiving from the second entity a second message indicating a second validation of the transaction; and h) in response to receiving the first message and the second message and determining that the signed certificate was validated by the first entity and the second entity, appending the block (record) onto a ledger, the ledger comprising plurality of records each associated with a respective transaction between the first and the second entity. As such, the claim recites a certain method of organizing human activity (i.e., commercial or legal interactions and/or fundamental economic principles in facilitation of transactions).
In regards to the signing using private key(s), the examiner finds that the concept is mental practice/mathematical concepts. As such, the claim further recites abstract idea.
Independent claims 1 and 19 are significantly similar to claim 11. As such, claims 1 and 19 also recite abstract idea.
Under the Step 2A (prong 2), this judicial exception is not integrated into a practical application. Specifically, the additional elements in the claim(s), i.e., processor(s) coupled to a memory, computing system(s) of node(s), description of what nodes correspond to, blockchain comprising a plurality of blocks, a non-transitory computer-readable storage medium storing computer program, amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular technology (i.e., blockchain in ledgering of transaction between entities) – see MPEP 2106.05(f). These limitation, e.g. abstract idea as described above, do not represent: Improvements to the functioning of the one or more processor(s), computing system(s) of nodes, or blockchain individually or in combination or to any other technology or technical field - see MPEP 2106.05(a).
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). Here, the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the claims as a whole, taken individually and in combination, do not provide an inventive concept. As explained above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular technology (i.e., blockchain in ledgering of transaction of asset). Mere instructions to implement the abstract idea on computer(s), or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as a combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of the elements improves the functioning of the recited one or more processor(s), computing system(s) of node(s), and/or blockchain individually or in combination.
For these reasons, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Dependent claims 2, 12, and 20 further recite the judicial exception of sharing of the ledger with the first and the second entities without recitation of further additional element(s) other than the ones identified above in the independent claims.
Dependent claims 3 and 14 merely recite what the request received from the first entity comprises. As such the claims do not recite further additional element(s) other than the ones identified above in the independent claims.
Dependent claims 4 and 15 further recite verifying of the signature of the request using a public key and transmitting the request to a second entity. However, these recitations fall under the judicial exception, i.e., abstract idea, i.e., mental process and mathematical concepts, hence further expanding on the abstract idea. The claims do not recite further additional element(s) other than the ones identified above in the independent claims.
Dependent claims 5 and 16 further recite the abstract idea of receiving a message comprising the request and a second signature, transmitting the message to each of the entities, and receiving the message that is signed by the each of the entities. The concept of signature associated with private key is a mental practice/mathematical concept, hence further expanding on the abstract idea. The claims do not recite further additional element(s) other than the ones identified above in the independent claims.
Dependent claims 6 and 17 further recite what the physical entities and what at least one of the first node or the second node may represent, i.e., ATM, cash vault, etc. These additional elements are recited at high level amounting no more than generally linking the use of the judicial exception to a particular technological environment. These additional elements individually and in combination do not provide an inventive concept.
Dependent claims 7 and 18 recite description of data without reciting further additional element other than the ones identified above in the independent claims.
Dependent claim 8 recites that each block is encrypted by a key established using a quantum key distribution. The encryption technique using a quantum key distribution is a mathematical concept. Even if the element is considered as additional element, the quantum key distribution is recited at high level generality amounting to “apply it”.
Dependent claims 9 and 13 recite that each of the first and second nodes comprises a proof of identity, therefore, do not recite further additional element rather further expand on abstract idea.
Dependent claim 10 recites what the transaction comprises, i.e., a transfer of the asset between the entities. Hence, the claim does not recite further additional element(s) other than the ones identified above in the independent claims.
Response to the Argument(s)
112
Claims remain rejected under 112(a) and 112(b) for the reasons outlined above in the 112 sections.
101
The applicant asserts that amended claims integrate the alleged judicial exception into a practical application because the claims recite a technical improvement to ‘systems and methods for virtual and physical tracking assets”. To support the applicant’s assertion, the applicant points to [0017]-[0018] of the specification, particularly pointing to recitation, “Because each physical entity may include an independent system and logic for performing and managing transactions, performing a transaction at different physical entities may be challenging to efficiently track the transactions and asset availability … The physical entities may communicate with each other to reconcile potential differences in the respective records for each client, which may result in complex interfaces, decreased transparency and traceability, increased operational cost, replicated data (e.g. leading to multiple false transactions), among other deficiencies … This technical solution can overcome the aforementioned technical deficiencies … For example, each physical entity may correspond to a node, with an identity of each physical entity back by a digital certificate.” (see pages 13-14 of the Amendment).
In response, MPEP 2106.04(d)(1) states in part “In short, first the specification should be evaluated to determine if the disclosure provides 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. Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., “thereby increasing the bandwidth of the channel”).
Here, the claim itself does not reflect the alleged improvements. Rather, the claim merely recites judicial exceptions as described in the 101 section above and the additional element(s) as identified above amount to no more than mere instructions to implement the abstract idea and/or merely uses a computer as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular technology (i.e., blockchain in ledgering of transaction between entities), i.e., performing the judicial exception using computer component(s) and applying the judicial exception on blockchain. The additional elements individually and in combination do not provide inventive concept as the claim(s) do not improve upon the additional element(s) individually or as a whole.
Regards to the applicant’s citation of [0019], the examiner submits that the immutable nature of blockchain is blockchain’s inherent feature. The allegedly integration into a virtual landscape such as a metaverse is merely apply it or generally linking the use of the judicial exception in the metaverse environment.
Regards to the applicant’s citation of [0033] in the specification, the examiner submits that the use of PKI and certificate to validate, sign, and confirm validation is itself an abstract idea as described above in the 101 section.
Accordingly, the rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure
US Patent Publication No. 20150089215 discloses a system that utilizes PKI along with certificate. The publication discloses an apparatus that creates a certificate using information and self-signs the certificate. The signed certificate is sent to another apparatus that validates the certificate by digitally signing the received certificate and sends the originally received certificate along with the digital signature to the apparatus.
US Patent No. 11880228 discloses a method and system for processing a blockchain. A transaction request indicating a sale made by an agent of the entity may be received at a first node. A block including a sales record indicating the sale made by the agent may be added to a blockchain and transmitted to another node for validation. The patent discloses assignment of a public/private key for a node when the node joins the blockchain. The node sends a message to another node of the blockchain by including digital signature using the private key of the node.
US Patent Publication No. 20200186506 discloses a technique in which data is verified by a server then the server creates a signed certificate signifying or acknowledging the attestation to the source data. The signed certificate allows a verifying recipient device to confirm that the source data has been attested to by the server based on the signed certificate.
US Patent Publication No. 20190394047 discloses a method for mining a block in a decentralized blockchain consensus network and signing a block of a blockchain.
US Patent Publication No. 20090158414 and 20140013107 discloses twice signing of digital certificate.
US Patent Publication No. 20080141033 discloses use of digital certificates including signatures of multiple parties.
Applied Cryptography discloses uses of digital certificate and signatures.
The cited references, however, do not teach the particular step(s) as a whole in the claim.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN S KIM whose telephone number is (571)270-5287. The examiner can normally be reached Monday -Friday: 7:00 - 3:30.
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/STEVEN S KIM/ Primary Examiner, Art Unit 3698
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