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 final office action is in response to the applicant’s response received on 8/17/2026 (“Amendment”).
Claim Status
Claim 1 has been amended.
Claims 2-3, 6, and 16-20 have/had been canceled.
Claims 7-15 were withdrawn.
Claims 1, 4-5, and 7-15 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 § 112
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 and 4-5 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 claim recites “the amount in fiat cash”. The scope of the claim is unclear as the claim previously recites “amount of non-tokenized funds in a deposit account”. It is unclear as to whether “the amount in fiat cash” refers to “amount of non-tokenized funds in a deposit account”, i.e., that the non-tokenized funds is in fiat cash, or “the amount” refers to something else.
The dependent claims are rejected as they depend on claim 1.
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 the blockchain network as deposit tokens, wherein the tokenizing is triggered by the debiting and the deposit tokens are evidence of a demand deposit claim by a party in possession of the deposit token against the token issuer for the amount in fiat cash;
g) crediting, by the deposit tokenization service, the wallet address on the blockchain network for the authorized party 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;
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;
j) receiving, from a holder of the deposit tokens and by the deposit tokenization service, a request to instruct a redemption of the amount of the deposit tokens from the wallet address to a banking account;
k) identifying, by the deposit tokenization service, a holder account as a burn account;
l) verifying, by the deposit tokenization service, an identity of the holder using the verifiable credential;
m) using an information oracle, performing, by the deposit tokenization service, screening on the wallet address from where deposit tokens are originating, the banking account, and/or the verifiable credential;
n) transferring, by the deposit tokenization service, the amount of deposit tokens to the holder account;
o) triggering, by the deposit tokenization service, a burn event on the holder account;
p) executing, by the deposit tokenization service, the burn event; and
q) crediting, by the deposit tokenization service, the banking account with the amount of the deposit token by debiting an omnibus account and crediting the banking account.
(Bold emphasis added on the additional element(s))
Under the broadest reasonable interpretation, the claim recites a process that turns fiat funds (i.e., non-tokenized funds) into other form of funds (i.e., deposit tokens) which is used as evidence of a demand deposit claim by a party in possession of the other form against the issuer of the other form for the amount in fiat cash that is 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 other forms in response to the debiting wherein the possession of the other forms are evidence of a demand deposit claim against the token issuer for the amount in fiat cash, g) credit the destination account with the assets (i.e., ledgering); h) updating a transaction store (ledger) with the amount of assets associated with the destination account; and i) 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. In other words, the claim recites a process of converting amount of fiat funds in a deposit account into another form of asset using accounts and crediting/debiting techniques with screening accounts and verification of the authorized party. Hence, the claim recites a certain method of organizing human activity, i.e., financial/accounting activity and/or fundamental economic practice.
The claim has been amended to recite further abstract idea of financial/accounting activity and/or fundamental economic practice of redemption of the other form of asset into amount of fiat. The claim achieves this by j) receiving from a holder of the other form of asset (token) a request to instruct a redemption of the amount of the other form of asset from the wallet address to a banking account; k) identifying a holder account as a burn account; l) verifying an identity of the holder using the verifiable credential; m) performing screening of account where the other form of asset are originating, the banking account, and/or the verifiable credential; n) transferring the amount of other form of asset to the holder account; o) triggering a burn event on the holder account; p) executing the burn event; and crediting the banking account with the amount of the other form of asset by debiting an omnibus account and crediting the banking account.
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, 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 – see MPEP 2106 and/or generally linking the use of the judicial exception to a particular technology (i.e., blockchain) MPEP 2106.
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.
Response to Argument(s)
101
The applicant asserts that amendment, i.e., specifying that the deposit tokens are evidence of a demand deposit claim by a party in possession of the token against the token issuer for the amount in fiat cash, and that this representation of fiat cash – combined with the use of the verifiable credential registry to verify the Know Your Customer validation, the screening of the deposit account and the screening of the wallet address for the authorized party for sanctions – together integrate the judicial exception into a practical by providing a representation of a demand deposit claim for fiat capital in the form of deposit tokens that have been verified. The examiner respectfully disagrees in that the creation of token that represent asset used as evidence of a demand deposit claim by a party in possession of the token against the issuer of the token for the amount in fiat cash, verifiable credential registry to verify the Know Your Customer validation, the screening of the deposit account and the screening of the wallet address (i.e., account) for the authorized party for sanctions are abstract idea as the elements recite certain methods of organizing human activity, i.e., financial/accounting activity and/or fundamental economic practice. The additional elements as identified above in the 101, 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 – see MPEP 2106 and/or generally linking the use of the judicial exception to a particular technology (i.e., blockchain) MPEP 2106. These elements do not improve the blockchain or the elements individually or in combination or to any other technology.
The applicant further asserts that the additional steps that are added in the amendment to recite that the claims use that information to redeem the audit tokens and to credit the banking account for the holder provide recitations in a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. The examiner respectfully disagree as the steps that are added in the amendments to specify using that information to redeem the audit tokens, i.e., auditing of the tokenized representation of the fiat amount, and to credit the bank account for the holder using accounting techniques, i.e., crediting one account while debiting another account, is abstract idea as the elements recite certain methods of organizing human activity, i.e., financial/accounting activity and/or fundamental economic practice. The additional elements as identified above in the 101, 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 – see MPEP 2106 and/or generally linking the use of the judicial exception to a particular technology (i.e., blockchain) MPEP 2106. These elements do not improve the blockchain or the elements individually or in combination or to any other technology.
103
The 103 rejection(s) have been withdrawn in light of the newly added limitations.
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.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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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