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 non-final office action is in response to the applicant’s response received on 3/23/2026 (“Amendment”).
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 after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/10/2026 has been entered.
Claim Status
Claim 1 has been amended.
Claims 2-3 and 6 have/had been canceled.
Claims 7-20 had been withdrawn.
Claims 1, 4-5, and 7-20 are pending.
Official Notice Taken in Last Office Action
As official notice was taken in the previous office action, the common knowledge or well-known in the art statement is taken to be admitted prior art because the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate (see MPEP 2144.03 C). The common knowledge or well-known in the art statement(s) in the previous office action taken to be admitted prior art includes: private blockchain network is old and well known in the art of tokenization of asset
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 and 4-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to 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 and 4-5 are directed to a method (i.e. process). Thus, the claimed invention is 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 1 recites: A method for deposit tokenization, comprising:
a) receiving, by a deposit tokenization service for a token issuer and from an authorized party, an instruction for tokenizing an amount of non-tokenized funds in a deposit account;
b) verifying, by the deposit tokenization service and using a verifiable credential registry, an identity of the authorized party using a verifiable credential issued by an issuer following Know Your Customer validation, wherein the verifiable credential attests to an identity of the authorized party;
c) screening, by the deposit tokenization service and using a screening oracle, the deposit account, wherein the screening oracle comprises an on-chain smart contract that is updated with off-chain activities;
d) screening, by the screening oracle, a wallet address for the authorized party on a blockchain network for sanctions;
e) debiting, by the deposit tokenization service, the deposit account for the amount and crediting the amount to an omnibus account;
f) tokenizing, by the deposit tokenization service, the amount of the non-tokenized funds on a blockchain network as deposit tokens, wherein the tokenizing is triggered by the debiting; and
g) crediting, by the deposit tokenization service, the wallet address on the blockchain network with the deposit tokens;
h) updating, by the deposit tokenization service, a transaction store with the amount of deposit tokens associated with the wallet address; and
i) maintaining. by the transaction store, a state of all of the deposit tokens in circulation and a placement of the deposit tokens per wallet address.
(Bold emphasis added on the additional element(s))
Under the broadest reasonable interpretation, the claim recites creation of an asset (i.e., deposit tokens) that represents a claim on a fiat currency deposit held in an omnibus account. The claim achieves this by a) receiving an instruction for tokenizing an amount of fiat in a deposit account from an authorized party; b) verifying the authorized party using a verifiable credential registry using a verifiable credential (credential that is verifiable and attest to an identity of the authorized party), wherein the verifiable credential is issued by an issuer having followed KYC validation; c) screen the deposit account (i.e., misused); d) screening destination account (destination of created asset) of the authorized party for sanctions; e) debiting the deposit account (fiat account) for the amount and credit the amount to an omnibus account; f) tokenize the amount of the fiat as assets in response to the debiting, g) credit the destination account with the assets (i.e., ledgering); g) updating a transaction store (ledger) with the amount of assets associated with the destination account; and h) maintaining by the ledger a state of all of the assets in circulation and a placement of the assets per account (ledgering). Here, token is representation of an asset, i.e., of something that is valued. As such, the claim recites a certain method of organizing human activity, i.e., financial/accounting activity and/or fundamental economic practice.
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., oracle comprising an on-chain smart contract that is updated with off-chain activities, tokens, tokenizing, wallet address on the blockchain, and blockchain network, are recited at a high-level generality such that it amounts 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 – see MPEP 2106 and/or generally linking the use of the judicial exception to a particular technology MPEP 2106.
Furthermore, the additional elements of non-fungible token amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use.
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 claim(s) 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 generally linking the use of the judicial exception to a particular technological environment or field of use. Mere instructions to implement the abstract idea on a computer, or merely using the computer as a tool to perform an abstract idea to apply the exception using a generic computer component and generally linking the use of the judicial exception to a particular technological environment or field of use 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 blockchain nor any other technology.
Claims 4 and 5 recite that the blockchain network comprises a public blockchain network and a private blockchain network respectively. However, the additional element(s) of private and public blockchain(s) mere “apply it” and does not improve upon the blockchain network. These additional elements alone or in combination of other additional elements do not provide inventive concept.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 10,540,640 (“James”) in view of US Patent Publication No. 2021/0006410 (“Uhr”) and US Patent Publication No. 2024/0007284 (“Osborn”).
Per claim 1, James teaches a method for deposit tokenization, comprising:
receiving, by a deposit tokenization service for a token issuer and from an authorized party, an instruction for tokenizing an amount of non-tokenized funds in a deposit account (c2, ll-33-37, buyer can provide the trusted entity with a fixed sum of fiat and in return be issued a corresponding sum of SVCoin; c3, ll20-22; c47, ll50-61);
screening, by the deposit tokenization service, the deposit account (claims 1 and 2) (c26, ll25-51, regulatory activity … anti-money laundering verification; c37, ll26-30, compliance with anti-money laundering laws and/or regulations; c38, ll38-52; c45, ll26-30, exchange may comply with rules and regulations promulgated by a self-regulatory organization; c47, l64 – c48, l11, checks to see whether the user have sufficient fiat in the system);
debiting, by the deposit tokenization service, the deposit account for the amount and crediting the amount to an omnibus account (c6, ll20-24, sum of fiat is deposited in one or more bank accounts; c27, ll25-28, corresponding amount of US Dollar is debited from the user’s fiat account with the exchange; c37, l65-c38,l3, manage omnibus or pooled accounts for holding customer funds …);
tokenizing, by the deposit tokenization service, the amount of the non-tokenized funds on a blockchain network as deposit tokens wherein the tokenizing is triggered by the debiting (c1, l45-50, generating and distribution of a stable value digital asset token; c2, ll10-14, generating and distribution of a stable asset token; c27, ll 25-31, arranged to issue new stable value tokens to the customer at the specified asset exchange in response to the debit; c48, ll12-15, generating the requested token SVCoin);
crediting, by the deposit tokenization service, a wallet address on the blockchain network for the authorized party with the deposit tokens (c3, ll37-41, the stable value digital asset tokens have been obtained and transferred to the first request public key based on reference to the blockchain; c27, ll 25-31, arranged to issue new stable value tokens to the customer at the specified asset exchange in response to the debit; c34, ll1-6, destination wallet);
updating, by the deposit tokenization service, a transaction store with the amount of deposit tokens associated with the wallet address; and maintaining, by the transaction store, a state of all of the deposit tokens in circulation and a placement of the deposit tokens per wallet address (c21,ll22-35, state information may be maintained; c27, ll 25-31, arranged to issue new stable value tokens to the customer at the specified asset exchange in response to the debit)(furthermore, updating of the blockchain ledger of transaction(s) and maintaining the status and placement of the deposit token per wallet address are inherent functions of the blockchain ledger as the ledger is updated with blocks with transactions).
James does not particularly teach verifying, by the deposit tokenization service using a verifiable credential registry, an identity of the authorized party using a verifiable credential issued by an issuer following Know Your Customer validation, wherein the verifiable credential attests to an identity of the authorized party; screening, by the screening oracle, a wallet address for the authorized party on a blockchain network for sanctions.
Uhr, however, teaches verifying using a verifiable credential registry, an identity of an authorized party using a verifiable credential issued by an issuer following Know Your Customer validation, wherein the verifiable credential attests to an identity of the authorized party ([0068], decrypting the receiver’s VC to thereby verify the receiver’s KYC information); and screening a wallet address for the authorized party on a blockchain network for sanctions ([0032], checking the asset address against whitelist).
As James teaches a technique of verifying the identity of an authorized party using credentials (c39, ll 28-31, ensure the identity is verified; c26, ll44-51, login credentials), it would have been obvious to one of ordinary skill in the art prior to the effective filing of instant claim to substitute any known technique, i.e., verifiable credential, as taught by Uhr as a technique of authenticating/verifying the identity of user in James as the simple substitution of one known technique for another produces a predictable result, rendering the claim obvious.
James/Uhr does not specifically teach that the screenings are performed using a screening oracle, wherein the screening oracle comprises an on-chain smart contract that is updated with off-chain activities.
Osborn, however, teaches using a oracle for performing screenings, wherein the screening oracle comprises an on-chain smart contract that is updated with off-chain activities ([0004], smart contracts are designed to receive off-chain data from oracles; [0030], using smart contracts and oracles; [0048], oracles may enforce policies and for performing anti-money laundering and/or know your customer checks).
Hence, as James/Uhr teaches screening functions as described above, it would have been obvious to one of ordinary skill in the art before the effective filing of instant claim any known technique, including using an information oracle as taught by Osborn, as a screening technique in James. Thus, the simple substitution of one known technique for another producing a predictable result renders the claim obvious.
The applicant is also reminded that the description of what the screening oracle comprises is non-functional descriptive material that does move to distinguish over prior art.
Furthermore, the claim limitation of issued by an issuer following Know Your Customer validation does not move to distinguish over prior art as the limitation is descriptive of verifiable credential and does not affect the verifying step performed by the deposit tokenization service, i.e., the steps recited in the claim are those performed by the deposit tokenization service.
As per claim 4, James/Uhr/Osborn further teaches wherein the blockchain network comprises a public blockchain network (James: c2, ll55-60, distributed public transaction ledger).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over James/Uhr/Osborn as applied to claim 1 above, and further in view of Admitted Prior Art (“APA”).
As per claim 5, James/Uhr/Osborn does not specifically teach wherein the blockchain network comprises a private blockchain network.
APA, however, discloses that private blockchain network in the art of tokenization of asset.
Hence, as James/Uhr/Osborn teaches a blockchain network, it would have been obvious to one of ordinary skill in the art to any known type of blockchain, i.e., private blockchain network, as the blockchain network in James/Uhr/Osborn or substitute blockchain network in James/Uhr/Osborn.
Response to Argument(s)
101
The applicant asserts that claim 1 as amended integrates the alleged judicial exception into a practical application by using the verifiable credential – which is issued by an issuer following Know Your Customer validation and attests to an identity of the authorized party – to verify the identity of the authorized party and that the verifiable credential is checked against a verifiable credential registry to continue the process.
The examiner respectfully disagrees as the concept of using verifiable credential (that attests to an identity of an authorized party) that is issued by an issuer following Know Your Customer validation and checking against a verifiable credential registry in verifying the authorized party in the process of exchange is an abstract idea, i.e., certain method of organizing human activity, as described above in the 101 section.
103
The applicant’s arguments have been fully considered, however, are moot in light of the new grounds of rejection that addresses the arguments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Patent Publication No. 20150332256 discloses one or more exchanges that provides for the purchase and sale of, respectively, cryptocurrency and assets that are held in the system's reserve of assets. An asset may be fiat currency, security (i.e., stock or bond), commodity, or a cryptocurrency. An exchange accepts fiat currency for the purchase of the asset or cryptocurrency. For example, exchanges include cryptocurrency exchanges, stock exchanges, commodity exchanges, currency exchanges, etc. The reserve assets of the system could include fiat currency held in a bank account, or securities and commodities held in a brokerage account, or physical precious metals, and/or fiat currency bank notes held in a vault. The assets in the system's reserve differ from the virtual assets credited by the system to its users' accounts in that the assets in the reserve have value outside the system whereas the virtual assets in users' accounts only have value within the system.
US Patent No. 11,620,645 discloses tokenizing of amount of funds and writing the amount of funds to a token wallet for intercompany netting process.
Permission Blockchain Network based Central Bank Digital Currency discloses generation of digital tokens, i.e., conversion of fiat/stable currency into digital tokens using distributed ledger technology that can be either public or private blockchain.
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.
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, Patrick McAtee can be reached at 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN S KIM/Primary Examiner, Art Unit 3698
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