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 10, 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and the fee set forth in 37 CFR § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR § 1.114.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 10, 2025 has been entered.
Status of the Claims
This office action is prepared in response to claim amendments and Remarks submitted by Applicant on December 10, 2025 relating to U.S. Patent Application No. 18/492,424 filed on October 23, 2023. This Application claims the benefit of U.S. Provisional Patent Application Nos. 63/380,573, filed October 23, 2022, and 63/381,125, filed on October 26, 2022. Claims 1, 4, 8, 12 and 15 have been amended. Claims 1-20 are pending and have been examined. This action is non-final.
Information Disclosure Statement
The Information Disclosure Statement submitted by the Applicant on November 8, 2025 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner.
Response to Arguments
The Remarks submitted by Applicant on December 10, 2025 have been fully considered, however, are not persuasive.
With respect to the Section 101 Rejection, Applicant asserts, citing to the Specification (Par. 47) that amended independent Claims 1 and 12, when viewed as a whole, are directed to an improvement in distributed ledger technology rather than a method of organizing human activity in that the claims not only recite an origination and creation of an asset, but rather a specific way of achieving this in a distributed ledger environment that with a specific configuration of computing components that provides advantages over prior configurations. Applicant asserts that the recited combination of steps improves on the efficiency of prior distributed ledger systems by reducing the amount of data stored in the distributed ledger and reducing the risk of inconsistent definitions existing on the ledger and, as such, recites a practical application of any abstract idea. (Remarks, pp. 9-12). Examiner respectfully disagrees. The additional elements recited in amended independent Claims 1 and 12 are recited at a high level of generality and are used as tools to implement the abstract idea. They do not provide improvements to the functioning of a computer or to technology and thus do not integrate the abstract idea into a practical application or constitute significantly more under Step 2B. (See the 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 1-20 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 1-11 are directed to a method. Claims 12-20 are directed to a non-transitory computer-readable medium. Therefore, on its face, each of the claims are directed to a statutory class of invention.
Step 2A, Prong 1 – Abstract Idea
Claim 12 recites receiving an origination request for a new type of asset; retrieving asset origination information describing the new type of asset; storing, in an origination contract on a ledger, a description of the new type of asset that is derived from the asset origination information, the origination contract not denoting ownership of instances of the new type of asset; receiving one or more asset issuance requests identifying the new type of asset; retrieving, responsive to the one or more asset issuance requests, the description of the new type of asset from the origination contract on the ledger; and creating, responsive to the one or more issuance requests and using the description of the new type of asset, a plurality of tokens on the ledger representing a new instance of the new type of asset on the ledger, wherein each of the plurality of tokens includes a reference to the origination contract but does not include the description of the new type of asset. Claim 12 recites the abstract idea of identifying and storing origination information about an asset and creating the asset pursuant to an issuance request which amounts to commercial interactions falling under Certain Methods of Organizing Human Activity enumerated in MPEP 2016.04(a). Claim 1 recites the same abstract idea.
Step 2A, Prong 2 – Practical Application
Claim 12 recites a non-transitory computer-readable medium comprising stored instructions, a computing system, a digital asset, a smart contract, a distributed ledger and tokens. The additional elements are recited at a high level of generality and are being used as tools to implement the abstract idea. They do not integrate the abstract idea into a practical application. They do not provide improvements to the functioning of a computer or to technology. The claims do not invoke a particular machine as our guidance is clear that a generic computer is not the particular machine envisioned, they do not transform matter as they only manipulate data which is not matter.
Step 2B – Significantly more
As set forth in the discussion in Step 2A, Prong 2, above, the additional elements are recited at a high level of generality and are being used as tools to implement the abstract idea. They do not integrate the abstract idea into a practical application. They do not provide improvements to the functioning of a computer or to technology because they only manipulate financial data. Based on the aforementioned, the additional elements do not add significantly more to the abstract idea.
Dependent claims
Claims 2 and 13 (receiving a definition of the new type of digital asset; and creating, using the definition, the origination smart contract, wherein storing the description of the new type of digital asset comprises committing the asset origination smart contract to the distributed ledger), Claims 3 and 14 (retrieving the description of the digital asset comprises: receiving an identifier of the origination smart contract; and querying the distributed ledger using the identifier of the origination smart contract to identify the description of the digital asset), Claims 4 and 15 (creating the plurality of tokens on the distributed ledger comprises: creating an asset deposit smart contract in an account of the issuer; and creating an issuance smart contract in a securities issuance account), Claims 5 and 16 (verifying that an amount of instances of the new type of digital asset indicated in the account of the issuer matches an amount of instances of the new type of digital asset indicated in the securities issuance account), Claims 6 and 17 (requesting approval of the origination request from a registrar; and receiving approval of the origination request by the registrar, wherein the description of the new type of digital asset is stored in response to receiving the approval of the origination request), Claims 7 and 18 (requesting the approval of the origination request comprise creating an approval smart contract and receiving approval of the origination smart contract comprises receiving an indication that the registrar has signed the approval smart contract), Claims 8 and 19 (requesting approval of the asset issuance request from a registrar; and receiving approval of the asset issuance request by the registrar, wherein the plurality of tokens are created in response to receiving the approval of the asset issuance request), Claims 9 and 20 (requesting the approval of the asset issuance request comprise creating an approval smart contract and receiving approval of the asset issuance smart contract comprises receiving an indication that the registrar has signed the approval smart contract), Claim 10 (the distributed ledger comprises a blockchain) and Claim 11 (the asset origination smart contract is a digital asset modeling language (DAML) smart contract) further define and merely add specificity to the abstract idea.
As such, Claims 1-20 are not patent eligible.
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 at 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