DETAILED ACTION
Status of Claims
This action is in reply to the amendment filed on 22 October 2025.
Claims 1, 9, and 17 have been amended.
Claims 1-20 are currently pending and have been examined.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/597619 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are anticipated by claims 1-20 of Application No. 18/597619.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-8; 9-16; and 17-20 are rejected under 35 USC § 101
Claims 1-8; 9-16; and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites:
receiving an order to swap an input token in exchange for an output token without the user paying a gas fee, wherein the order specifies a set of parameters comprising: the input token; an amount of the input token; the output token; a maximum swap threshold comprising a starting amount of the output token; a minimum swap threshold; a time threshold; and a swap approval;
providing the order to a plurality of whitelisted resolvers to fulfill via a private Dutch auction that reflects the set of parameters in the order, each whitelisted resolver of the plurality of whitelisted resolvers corresponding to a set of platform tokens, wherein the order is inaccessible to non-whitelisted resolvers, and wherein the private Dutch auction comprises an auction price that begins at the maximum swap threshold and decreases to the minimum swap threshold by the time threshold;
receiving, from a whitelisted resolver of the plurality of whitelisted resolvers, instructions for the settlement to fulfill the order at the auction price, wherein the whitelisted resolver pays a gas fee on behalf of the user for fulfilling the order; and
causing the amount of the input token in a wallet of the user to be swapped for an amount of the output token.
Therefore, the claim is directed to “fulfilling an order via a private Dutch auction”, which is an abstract idea because it is a method of organizing human activity. “Fulfilling an order via a private Dutch auction” is considered to be is a method of organizing human activity because it is a sales activity where an order is fulfilled at the auction price.
This judicial exception is not integrated into a practical application. In particular, claim 1 recites the following additional element(s): a user device of a user; a settlement smart contract; and a set of platform tokens that is locked via a staking contract over a lock period. The additional elements individually or in combination do not integrate the exception into a practical application because the additional elements do no more than generally link the use of a judicial exception to a particular technological environment of blockchain technology (see MPEP 2106.05(h)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claim 1 is directed to an abstract idea.
Claim 1 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 individually and in combination do no more than generally link the use of a judicial exception to a particular technological environment of blockchain technology. Accordingly, claim 1 is ineligible.
Dependent claims 5-6 and 8 merely further limit the abstract idea and are thereby considered to be ineligible.
Dependent claim(s) 2-4 and 7 further recite the additional element(s): digitally signed (claim 2); digital signature (claim 3); a smart contract (claim 4); a frontend application operating on the user device (claim 7). These additional elements do no more than generally link the use of a judicial exception to a particular technological environment of blockchain technology. Accordingly, claims 2-4 and 7 are ineligible.
Claims 9-16 are parallel in nature to claims 1-8. Accordingly claims 9-16 are rejected as being directed towards ineligible subject matter based upon the same analysis above.
Claims 17-20 are parallel in nature to claims 1-4. Accordingly claims 17-20 are rejected as being directed towards ineligible subject matter based upon the same analysis above.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action.
Response to Arguments
Applicant's arguments filed 22 October 2025, with respect to 35 USC § 101, have been fully considered but they are not persuasive. In regard to claims 1, 9, and 17, the applicant argues that the off-chain whitelisted resolver architecture provides a technical solution to a technical problem in blockchain systems-namely the vulnerability of on-chain transactions to Miner Extractable Value exploitation.
In response to the argument of claims 1, 9, and 17, the Examiner respectfully disagrees. The concept of only allowing vetted users to participate in an auction, thereby creating a private auction, would be performed similarly in the real-world as it would in a blockchain environment. The use of whitelisted resolvers only allows vetted users that meet specific requirements such as having sufficient funds or maintaining assets to cover fees to participate in the auction, thereby preventing individuals who do not meet the requirements to participate. Allowing only participants who have enough funding to cover fees and/or having sufficient funds to purchase an item solves the problem of a participant defaulting on a payment and incurring debts, which is a problem that can arise in any type of auction regardless of the environment being in the real-world or occurring on a blockchain and is therefore, a solution to the abstract idea. A set of platform tokens corresponding to the plurality of whitelisted resolvers generally applies the abstract idea of the auction onto a blockchain environment and is described at a high level of generality. Therefore, the Examiner maintains that the claims are ineligible. The dependent claims do not remedy the deficiencies noted in the independent claims and therefore remain ineligible.
With respect to the rejection under 35 USC § 103, the examiner agrees that neither Mahajan, Schouppe, nor Day teach the newly amended features in claims 1, 9, and 17. Moreover, even assuming arguendo that the features of the claims exist individually, the combination of features as claimed would not have been obvious to one of ordinary skill in the art because any combination of the evidence obtained to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias. Therefore, the art rejection has been removed.
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.
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/RESHA DESAI/Supervisory Patent Examiner, Art Unit 3628