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 .
Continued Examination Under 37 CFR § 1.114
A request for continued examination under 37 CFR § 1.114, including the fee set forth in 37 CFR § 1.17(e), was filed in this application on December 22, 2025. Since this application is eligible for continued examination under 37 CFR § 1.114, and the fee set forth in 37 CFR § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR § 1.114. Applicant's submission filed on December 22, 2025 has been entered.
Status of the Application
This office action is prepared in response to claim amendments and Remarks submitted by Applicant on December 22, 2025 relating to U.S. Patent Application No. 18/481,613, filed on October 5, 2023. This application is a continuation of U.S. Patent Application 16/718,567, filed on December18,2019, now U.S. Patent 11,816,733, which claims priority to U.S. Provisional Application 62/781,199, filed on December 18, 2018. Independent Claims 1, 20 and 21 have been amended. Claims 1-39 are pending and have been examined. This action is non-final.
Response to Arguments
The Remarks submitted by Applicant on December 22, 2025 have been fully considered.
With respect to the Double Patenting rejection, although Applicant requested that the double patenting rejection be held in abeyance until at least one claim is found to be allowable, (Remarks, p. 10), Applicant, has made amendments to the independent claims of the instant application, particularly the addition of a validating step, which upon further review distinguish the claims from the independent claims of the ‘733 patent. The Double Patenting Rejection is withdrawn.
With respect to the Section 101 rejection, Applicant has amended the independent claims and asserts that the amendments clarify details related to technical implementation which are not methods of organizing human activity. (Remarks, p. 10). Applicant further asserts that recording progress as third transactions on the blockchain allows for utilizing such progress transactions to execute a smart contract, thereby ensuring that the claimed process is performed using accurate data and allowing the process to be performed more accurately and that by basing transfers on a third type of transaction that records progress on the decentralized ledger, the claims provide specific features demonstrating how an improvement is realized that amounts to more than simply reciting application of decentralized ledgers and further that by validating the third transactions based on the blocks and reciting that the blocks are chained together via hashes, the claims provide further specific technical details about how the process is realized. (Remarks, p. 11). Applicant also asserts that the additional claim limitations do not recite the equivalent of "apply it" by demonstrating the particular details which provide the computer improvement of improving execution of the smart contract, as well as by increasing the particularity of the claimed solution. (Remarks, p. 12). Examiner respectfully disagrees. The amendments which have been added by Applicant to the independent claims recite additional technical limitations which generally link the claims to blockchain, decentralized ledger and tokenization technology and are being used as tools to implement the abstract idea. They do not provide a technical improvement such as to computer functionality or to technology or to a technical field. Thus, the claims do not integrate the abstract idea into a practical application. (See Section 101 Rejection below). The Section 101 rejection 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 - 39 are rejected pursuant to 35 USC § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 - Statutory Class
Claims 1-19 are directed to a method. Claim 20 is directed to a non-transitory computer readable medium having stored thereon instructions for causing a processing circuitry to execute a process. Claims 21-39 are directed to a system. Therefore, on its face, each of Claims 1-39 is directed to a statutory class of invention.
Step 2A, Prong 1 – Abstract Idea
Claim 21 recites store data of a first transaction indicating ownership of a token, validate at least one third transaction specifying progress with respect to project parameters, record at least one second transaction, wherein each second transaction includes a respective transfer via the token issued to the user. Claim 21 recites the abstract idea of commercial interactions including agreements, legal obligations and business relations falling under “Certain Methods of Organizing Human Activity” enumerated in MPEP 2106.04(a). Claims 1 and 20 recite the same abstract idea.
Step 2A, Prong 2 – Practical Application
Amended Claim 21 recites a system comprising processing circuitry, a memory containing instructions, a decentralized ledger including a series of blocks chained together via hashes, a plurality of nodes and a decentralized network. The amended claim also recites additional technical limitations including: “wherein the plurality of nodes is connected to one another”, “wherein each node is configured to execute an agent to access the ledger and to communicate with other nodes of the plurality of nodes”, “wherein the at least one portion of code is executed via at least one node of the plurality of nodes”, “wherein each of the at least one third transaction has a corresponding portion of code among the at least one portion of code”, “wherein the decentralized ledger includes a series of blocks that are chained together via hashes, wherein the series of blocks stores data of a first transaction indicating ownership of a token”, “wherein the at least one third transaction is validated according to the corresponding portion of code”, “wherein the at least one third transaction is recorded by the plurality of nodes”, “wherein recording the at least one third transaction further comprises adding a new block to the series of blocks, wherein the new block is chained to at least one other block of the series of blocks, wherein the new block includes data of the at least one third transaction” and “wherein the at least one second transaction is recorded by the plurality of nodes”. When the operation of these additional technical limitations is considered as a whole, along with the additional elements, these limitations generally recite basic blockchain, decentralized ledger and tokenization operations and are being used as tools to implement the abstract idea. The amended claims do not provide technical improvements such as to the functioning of a computer or to technology or to a technical field and thus they do not integrate the abstract idea into a practical application.
Step 2B – Significantly more
As set forth in the discussion in Step 2A, Prong 2, above, the additional elements and additional technical limitations and are used as tools to implement the abstract idea. The amended claims do not integrate the abstract idea into a practical application and they do not add significantly more to the abstract idea.
Dependent claims
Claims 2 and 22 (the at least one portion of code is configured to record at least one transaction via the decentralized ledger), Claims 3 and 23 (the at least one third transaction indicates at least one milestone of the impact project that has been achieved, wherein the at least one second transaction includes transferring at least one prize based on the at least one milestone achieved), Claims 4 and 24 (each of the at least one milestone corresponds to one of the at least one portion of code), Claims 5 and 25 (the at least one third transaction indicates at least one metric of the impact project that has been met, wherein the at least one second transaction includes transferring based on the at least one metric that has been met), Claims 6 and 26 (each of the at least one metric corresponds to one of the at least one portion of code), Claims 7 and 27 (the at least one second transaction includes transferring at least a portion of a prize based on the at least one metric that has been met), Claims 8 and 28 (the at least one second transaction includes transferring value based on the at least one metric that has been met), Claims 9 and 29 (the token has a value, wherein the value is backed by at least one external asset), Claims 10 and 30 (the at least one external asset is real estate, wherein the value of the token is based on a value of the real estate caused by the impact project), Claims 11 and 31 (the value of the token is based further on a change in value of the real estate caused by the impact project), Claims 12 and 32 (the value of the token is based further on a prevention of loss of the real estate caused by the impact project), Claims 13 and 33 (the impact project is a climate change project), Claims 14 and 34 (the impact project includes repurposing of at least one drug for a new disease indication), Claims 15 and 35 (the at least one drug includes a plurality of drugs at a plurality of stages of development), Claims 16 and 36 (the respective transfer included in each second transaction is a transfer of value), Claims 17 and 37 (the at least one second transaction includes transferring at least a portion of a prize), Claims 18 and 38 (the token is at least partially backed via crowdfunding or crowdsourcing) and Claims 19 and 39 (a value of the token is at least partially based on a savings) further define and merely add specificity to the abstract idea. Thus, the dependent claims fail to add significantly more to the abstract idea.
As such, Claims 1 - 39 are not patent eligible.
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.
Claims 1-39 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.
Independent Claims 1, 20 and 21 each recites in pertinent part “… wherein each second transaction includes a respective transfer via the token issued to the user …”. There is insufficient antecedent basis for the limitation “a respective transfer via the token issued to the user” in each of the respective claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE PROIOS whose telephone number is (571)272-4573. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett M Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE N. PROIOS/Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694