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 .
Status of Claims
This action is in response to remarks received 10/20/2025.
This application claims earliest priority from Provisional Application 63178144, filed 04/22/2021.
Claims 1, 2, 4, 5, 7-10 have been amended, claims 11-13 newly added, and claim 6 cancelled.
Claims 1, 9 & 10 being independent and claims 2-5, 7-8 & 11-13 dependent claims.
Claims 1-5 & 7-13 are currently pending and have been examined.
Examiner’s Note Regarding Prior Art
The pending claims have been rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter as seen below. No rejections under 35 U.S.C. §§ 102 or 103 are made at this time.
Although certain references of record disclose the use of multiple ledgers and smart contracts, the art does not disclose or suggest the specific limitations recited in claim 1 of:
in response to executing the first smart contract recorded in the first blockchain, identifying, using the data identifier identifying the provision data, a second smart contract recorded in a second blockchain different from the first blockchain, the second smart contract being a second payment smart contract for transferring a second value for the provision data from the first account of the first user to a third account held by the third user, the second payment smart contract including (i) the first account address identifying the first account held by the first user, (ii) a third account address identifying the third account held by the third user, (iii) the data identifier identifying the provision data, and (iv) the second value of the provision data, the second value being at least a portion of the first value; and
in response to identifying the second smart contract, executing the second smart contract recorded.
In particular, the cited references do not teach or suggest:
(i) Execution-triggered discovery logic; the claims require that execution of the first smart contract programmatically triggers identification of a second smart contract. The references that disclose multiple ledgers treat smart contract operations as parallel, pre-linked or externally orchestrated, rather than conditionally discovered in response to execution of another contract.
(ii) Identifier-driven contract resolution; the claims further require using a data identifier identifying provision data as a lookup key to identify the second smart contract. The cited art does not disclose or suggest using a shared data identifier embedded in transaction data as a lookup key to dynamically resolve and select a corresponding smart contract instance on another blockchain.
(iii) Dependent, sequential smart contract execution; the claims require a two-stage execution flow in which the second smart contract is executed only after it is identified as a result of execution of the first smart contract. The references that disclose multiple ledgers do not teach this dependency chain or execution ordering based on a provision-data identifier.
Accordingly, while multiple ledgers and smart contract are known in the art, the specific combination of (i) Execution-triggered discovery logic, (ii) Identifier-driven contract resolution, and (iii) Dependent, sequential smart contract execution is not disclosed or suggested by the art of record. For this reason, no prior art rejection is applied at this stage, and examination is presently limited to the subject matter eligibility issues under 35 U.S.C. §101.
Response to Arguments
Under Step 2A, Prong One – The claims are directed to an Abstract Idea.
Applicant argues that the claims are not directed to an abstract idea because conventional techniques allegedly cannot jointly execute two different types of smart contracts for transferring value. This argument is not persuasive.
When considered as a whole, the claims are directed to coordinating and controlling value transfer transactions using smart contracts, which constitutes a method of organizing human activity and commercial interactions. The recited steps—including acquiring transaction data, executing a first smart contract on a first blockchain, identifying a second smart contract, and executing the second smart contract on a second blockchain—reflect rules for conducting and coordinating transactions, rather than a technological improvement.
Although the claims reference first and second blockchains and smart contracts, these elements are invoked functionally and at a high-level of generality. The claims do not recite how the smart contracts are technically structured, synchronized, or executed in a manner that changes how the blockchains or computing systems operate. Thus, the focus of the claims remains on the business objective of jointly executing value-transfer agreements, not on improving blockchain technology itself.
Accordingly, the claims are directed to an abstract idea.
Under Step 2A, Prong Two – No Practical Application.
Applicant further argues that the claims integrate the abstract idea into a practical application by enabling the joint execution of two different types of smart contracts. The Examiner disagrees.
The additional elements—such as a first blockchain, a second blockchain, and generated smart contracts—are applied in their inherent and conventional capacities to automate the abstract idea. The claims do not impose any specific technological requirement that alters how blockchains record transactions, how smart contracts are executed, or how cross-chain coordination is technically achieved.
As described in the specification, the two smart contracts are separately recorded on different blockchains and are “jointly executed” by performing each contract in accordance with predefined transaction rules. This represents parallel or coordinated execution of known processes, which courts have recognized as abstract when used to implement business logic rather than to improve computer functionality.
The claims therefore merely apply the abstract idea using generic computing technology or limit the idea to a particular technological environment (blockchains). Such use does not integrate the abstract idea into a practical application, nor does it address or solve a technological problem in blockchain systems.
Under Step 2B – No Inventive Concept.
Applicant argues that the inventive concept lies in the ordered combination of executing two smart contracts across different blockchains. This argument is not persuasive.
Individually and in combination, the recited elements—acquiring transaction data, executing smart contracts, and recording transactions on blockchains—are well-understood, routine, and conventional. The ordered combination does not reflect a non-conventional technical arrangement, but rather a logical sequencing of business rules implemented using generic computing components.
The claims do not indicate that the purported joint execution reduces processing time, lowers power consumption, improves consensus mechanisms, or otherwise enhances the functioning of the underlying computing systems. There is no disclosure that the processor workload, memory usage, or network efficiency of a management system incorporating the claimed invention is improved.
Accordingly, the claims do not recite significantly more than the abstract idea itself and do not provide an inventive concept under Step 2B.
For the above reasoning, the 35 U.S.C. § 101 rejection of the claims is maintained.
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 1-5 & 7-13 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to a process, claim 9 is directed to a system and claim 10 directed to a non-transitory computer-readable recording medium; Step 1-yes.
Under Step 2A, Prong 1, representative claim 1 recites a series of steps for acquiring transaction data and executing smart contracts, i.e. sales activities or behaviors, and thus grouped as “Certain Methods of Organizing Human Activity”. The claim as a whole and the limitations in combination recite this abstract idea. Specifically, the limitations of representative claim 1, stripped of all additional elements, recite the abstract idea as follows:
A method comprising:
acquiring transaction data that includes value information regarding a value for provision data to be transferred from a second user to a first user, the transaction data including a data identifier identifying the provision data;
executing a first smart contract by recording the transaction data, the first smart contract being a first payment smart contract for transferring a first value for provision data from a second account of the second user to a first account held by the first user, the first payment smart contract including (i) a first account address identifying the first account held by the first user, (ii) a second account address identifying the second account held by the second user, (iii) the data identifier identifying the provision data, and (iv) the first value of the provision data;
in response to executing the first smart contract recorded in the first blockchain, identifying, using the data identifier identifying the provision data, a second smart contract recorded in a second blockchain different from the first blockchain, the second smart contract being a second payment smart contract for transferring a second value for the provision data from the first account of the first user to a third account held by the third user, the second payment smart contract including (i) the first account address identifying the first account held by the first user, (ii) a third account address identifying the third account held by the third user, (iii) the data identifier identifying the provision data, and (iv) the second value of the provision data, the second value being at least a portion of the first value; and
in response to identifying the second smart contract, executing the second smart contract recorded.
The claimed limitations, identified above, recite a process that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction, but for the recitation of generic computer components. There is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea grouping. Thus, claims 1, 9 and 10 recite an abstract idea.
Under step 2A, Prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitably programmed communicating over a generic network, to perform the steps of acquiring, executing and transferring data. The computer components are recited at a high-level of generality (i.e.as generic processors with memory suitably programmed communication information over a generic network, see at least page 9 paragraphs 5-35 and page 10 paragraphs 5-35 of the specifications) such that it amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h). Furthermore, the step for “transferring at least a portion of the value to be transferred” is considered adding insignificant extra-solution activity to the judicial exception, see MPEP 2106.05(g). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1, 9 and 10 are directed to an abstract idea.
Under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05 (h). Furthermore, the step for “transferring at least a portion of the value to be transferred” is considered adding insignificant extra-solution activity to the judicial exception, see MPEP 2106.05(g). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 1, 9 and 10 are not patent eligible.
Applicant has leveraged generic computing elements to perform the abstract idea of without significantly more. Dependent claims 2-5, 7-8 & 11-13, when analyzed individually or as a whole an in an ordered combination are held to be patent ineligible under 35 USC 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional recited limitations in dependent claims 2-5, 7-8 & 11-13 only refine the abstract idea. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. a series of steps for acquiring transaction data and executing smart contracts) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. a series of steps for acquiring transaction data and executing smart contracts) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself or integrate the judicial exception into a practical application.
Conclusion
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 TONY P KANAAN whose telephone number is (571)272-2481. The examiner can normally be reached Monday- Friday 7:30am - 3:30 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, Matthew Gart can be reached at 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.P.K./Examiner, Art Unit 3696
/MATTHEW S GART/Supervisory Patent Examiner, Art Unit 3696