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 .
Status of Claims
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/15/2026 has been entered.
This application claims priority from PCT/US24/53383 filed on 10/29/2024, filed on 10/31/2023.
Claims 1, 11 and 20 being independent have also been amended and claims and 2-9, 12-18 & 21-22 are dependent claims.
Claims 1-9, 11-18 & 20-22 are currently pending and have been examined.
Claim Objections
Claim 4 is objected to because it depends form a rejected base claim, but would be allowable over the 35 USC 101 rejection if rewritten in independent form including all of the limitations of the base claim and any intervening claims because claim 4 recites sufficient additional limitations to integrate the judicial exception into a practical application.
Response to Arguments
Applicant’s arguments, see pages 10-13, filed 04/15/2026, with respect to the rejection of claims 1-9, 11-18 & 20-22 under 35 U.S.C. § 102 have been fully considered, however, the examiner respectfully disagree.
Applicant argues that, in view of the amendments, independent claim 1 recites an improvement in the functioning of a computer system because the amended claim expressly recites how functioning of the computer system is improved (e.g., that the computer system automatically manages certain information, which occurs without user input, the information including for example ownership and value of the tokens). Applicant further argues that the claims recite a clear improvement in the functioning of the computer system.
Applicant’s argument is not persuasive. Although the amended claims recite that the computer system automatically manages ownership and value information without user input, the recited automatic management merely automates the underlying token generation, ownership management, and transaction administration process. The claims do not recite an improvement to the functioning of the computer itself or to another technology or technical field. Rather, the computer is used as a tool to perform the recited abstract idea more efficiently. Accordingly, the additional limitations do not integrate the judicial exception into a practical application.
Applicant further argues that amended claim 20 now recites both a cryptographic process as well as a block structure, specifically citing the recitations of creating a block header comprising both a cryptographic hash of transaction data and a previous block hash and adding the block with the block header to the token transaction ledger, such that recorded transactions are immutable. Applicant further asserts that these limitations recite a technical result of this cryptographic block structure.
Applicant’s argument is not persuasive. While amended claim 20 now recites additional blockchain-related limitations, including a block header comprising a cryptographic hash of transaction data and a previous block hash, these limitations merely employ known blockchain structures to record token transactions associated with the recited token administration process. The claims do not recite an improvement to blockchain technology, cryptographic processing, ledger architecture, or another technological field. Rather, the additional limitations use blockchain technology as a tool for implementing the abstract idea and therefore do not integrate the judicial exception into a practical application.
Applicant further relies on the 2024 Guidance Update on Patent Subject Matter Eligibility, asserting that the amended claims improve the functioning of a computer system and therefore are eligible under Step 2A.
Applicant’s reliance on the Guidance is acknowledged but is not persuasive. As discussed above, the amended claims do not recite a technological improvement to the functioning of a computer or another technology. Instead, the claims recite using generic computer components and blockchain technology to automate the abstract idea of generating, administering, transferring, and recording ownership of security tokens. Accordingly, the claims remain directed to a judicial exception that is not integrated into a practical application.
For the foregoing reasons, independent claim 1 remains ineligible under 35 U.S.C. § 101, and the rejection of claims 1-9, 11-18 & 20-22 is maintained.
Applicant’s arguments, see pages 14-16, filed 04/15/2026, with respect to the rejection of claims 1-9, 11-18 & 20-22 under 35 U.S.C. § 102 have been fully considered, however, the examiner respectfully disagree.
Applicant argues that Sliwka does not disclose the amended limitations because paragraphs 272, 325, 326, 336, and 362 relate to appraisal and safekeeping workflows rather than transferring a set of tokens to the third party wherein the number of tokens in the set of tokens is less than a total number of the generated tokens and receiving a notification to generate a request for capital representing a requirement for capital to be paid by the third party. The argument is not persuasive. The rejection has been updated to rely on the portions of Sliwka that specifically disclose the amended limitations. In particular, Sliwka teaches generating a total set of tokens and transferring one or more of those generated tokens to a purchaser or recipient while generating a larger total set of tokens (see ¶¶ [84, 113, 120, 122 & 133-140]), thereby teaching that the transferred set contains fewer tokens than the total generated tokens. Sliwka further teaches a borrower submitting a loan request specifying a requested loan amount, one or more lenders providing funding in response to that request, and notifications associated with the loan process (see ¶¶ [307, 314, 328, 340 and 350]), thereby teaching the claimed notification to generate a request for capital representing a requirement for capital to be paid by a third party. Accordingly, the amended limitations are disclosed by Sliwka, and Applicant’s arguments are not persuasive.
For the above reasoning, the 35 U.S.C. § 102 rejection of the claims 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 1-3, 5-9, 11-18 & 20-22 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without practical application or significantly more. The claims fall within at least one of the four categories of patent eligible subject matter because independent claim 1 is directed to a process, claim 11 is directed to a system and claim 20 is directed to a non-transitory computer readable medium; Step 1-yes.
Under Step 2A, Prong 1, representative claim 1 recites a series of steps for minting a set of tokens (i.e. business relation), and thus grouped as a certain method of organizing human activity. As such, the claim as a whole and the limitations in combination recite an abstract idea(s). Specifically, the limitations of representative claim 1, stripped of all additional elements, recite the abstract idea as follows:
receiving instructions to create a first resource source;
receiving variables related to the first resource source;
creating, a set of protocols based on the variables;
generating tokens based on the received variables and protocol;
wherein generating the tokens includes:
generating and recording a first transaction; and
administering a portion of the tokens, the administering further including:
receiving a request for a purchase of a portion of the tokens;
verifying payment for the portion of the tokens;
minting a set of tokens, the set of tokens being equivalent in amount to the portion of the tokens requested;
transferring the set of tokens, wherein a number of tokens in the set of tokens is less than a total number of the generated tokens; and
destroying the portion of the tokens,
wherein the minting the set of tokens, transferring the set of tokens, and destroying the set of tokens includes recording the minting, transferring, and destroying as a block;
receiving a notification to generate a request for capital representing a requirement for capital to be paid by the third party, wherein a total request for capital is provided by the first resource source, and the capital required to be paid by the third party is a percentage of the total request for capital corresponding to a percentage that the portion of the tokens is of a total number of tokens; and
upon receiving verification of a payment associated with the request for capital, initiating a new block in the token transaction ledger to update a value of each token of the portion of the tokens, automatically manages ownership and value of the tokens.
The claimed limitations, identified above, recite a system that, under its broadest reasonable interpretation, covers performance of a commercial or legal interaction and managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components. There is nothing in the claim element which takes the steps out of the methods of organizing human activity abstract idea groupings. Thus, claim 1 recites an abstract idea.
Under step 2A, Prong 2, this judicial exception is not integrated into a practical application. In particular, the claim only recites using generic, commercially available, off-the-shelf computing devices, i.e. processors suitable programmed communicating of a generic network, to perform the steps of receiving, creating, generating, verifying, minting, transferring and destroying data. The computer components are recited at a high-level of generality (i.e. as generic processors with memory suitably programmed communication information over a generic network, see at least paragraphs [0045]-[0046] & [0108]-[0117] of the specifications) such that it amounts no more than adding the words “apply it” (the abstract idea or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea across generic computing technology, or merely uses computer as a tool to perform the abstract idea, see MPEP 2106.05(f). Accordingly, the additional elements claimed do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claims 1, 11 & 20 are directed to an abstract idea.
Under step 2B, the claim does not include additional elements, i.e. “account server”, “transaction coordinator system”, and “short-range network” 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 of using generic computer processors with memory suitably programmed communicating over a generic network to perform the limitation steps amounts no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea, see MPEP 2106.05(f) and generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h). Mere instructions to apply an exception using generic computer components interacting in a conventional manner cannot provide an inventive concept. Claims 1, 13 & 20 are not patent eligible.
Applicant has leveraged generic computing elements to perform the abstract idea of without significantly more. The dependent claims 2-3, 5-9, 12-18 & 21-22 when analyzed as a whole an in an ordered combination are held to be patent ineligible under 35 USC 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional recited limitations in the dependent claims only refine the abstract idea. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
The claims merely amount to the application or instructions to apply the abstract idea (i.e. series of steps for minting a set of tokens) on one or more computers, and are considered to amount to nothing more than requiring a generic computer system (e.g. processors suitably programmed and communicating over a network) to merely carry out the abstract idea itself. As such, the claims, when considered as a whole, are nothing more than the instruction to implement the abstract idea (i.e. series of steps for minting a set of tokens) in a particular, albeit well-understood, routine and conventional technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claims that transform
the judicial exception into a patent eligible application such that the claims amount to significantly more than the
judicial exception itself or integrate the judicial exception into a practical application.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9, 11-18 & 20-22 are rejected under 35 U.S.C. 102 (a)(1) & (a)(2) as being anticipated by Lukasz Jakub Sliwka et al. (US 2022/0358580 A1, herein Sliwka).
As per claim 1, Sliwka teaches a method for improving a computer system that generates and administers a security token representing a resource source, the method comprising:
receiving as input by the computer system through an application programming interface (API), instructions to create a first resource source on a platform (see Sliwka ¶¶ [76, 78 & 93]);
receiving as input, variables related to the first resource source (Sliwka ¶¶ [65, 143, & 199]);
creating a set of protocols based on the variables (Sliwka ¶¶ [65 & 199]);
generating tokens based on the received variables and protocol, (Sliwka ¶¶ [75, 80, 173, 247, 327, 337, 351 & 363]);
wherein generating the tokens includes generating and recording a first transaction in a token transaction ledger (Sliwka ¶¶ [81, 84, 116-117 & 124]); and
administering a portion of the tokens to a third party (Sliwka ¶¶ [84, 113 & 133-140], also see ¶¶ [233, 295, 303, 307 & 364]), the administering further including:
receiving a request for a purchase of a portion of the tokens (Sliwka ¶ [303]);
verifying payment for the portion of the tokens (Sliwka ¶¶ [303-304]);
minting a set of tokens, the set of tokens being equivalent in amount to the portion of the tokens requested (Sliwka ¶¶ [152 & 154-156]);
transferring the set of tokens to the third party (Sliwka ¶¶ [133-140]), wherein a number of tokens in the set of tokens is less than a total number of the generated tokens (Sliwka ¶¶ [84, 120 & 122], wherein Sliwka discloses that the platform generates a total set of tokens (e.g., 100 tokens or N tokens), and subsequently transfers one or more of those generated tokens to a purchaser or recipient. Accordingly, the transferred set necessarily comprises fewer than the total number of generated tokens when only a subset of the generated tokens is transferred.);
destroying the portion of the tokens from the platform, wherein the minting the set of tokens, transferring the set of tokens, and destroying the set of tokens includes recording the minting, transferring, and destroying as a block in the token transaction ledger (Sliwka ¶¶ [80, 154-156, 178 & 248]);
receiving a notification to generate a request for capital representing a requirement for capital to be paid by the third party, wherein a total request for capital is provided by the first resource source, and the capital required to be paid by the third party is a percentage of the total request for capital corresponding to a percentage that the portion of the tokens is of a total number of tokens (Sliwka ¶¶ [307, 314, 328-330, 340-342, 350 & 352-353] disclose that the tokenization platform provides a notification associated with the loan process, in response to which a loan request specifying a requested loan amount is generated and communicated to one or more lenders. The requested loan amount represents the total request for capital requested by the first resource source, and the amount to be funded by one or more third-party lenders corresponds to the capital required to be paid by the third party, which may represent a proportional amount of the collateral/tokenized asset.); and
upon receiving verification of a payment associated with the request for capital, initiating a new block in the token transaction ledger to update a value of each token of the portion of the tokens, such that the computer system automatically manages ownership and value of the tokens (Sliwka ¶¶ [233, 290, 293, 307 & 314-315]).
As per claims 11 & 20, the claims recite analogous limitations as claim 1 above and rejected under the same premise.
As per claim 2, Sliwka teaches the method of claim 1, Sliwka further teaches: wherein the variables related to a fund includes a monetary value of the fund, a number of tokens to create, a name of the fund, and a set of terms and conditions for the fund (Sliwka ¶¶ [84, 106, 108-109 & 152]).
As per claim 12, the claim recites analogous limitations as claim 2 above and rejected under the same premise.
As per claim 3, Sliwka teaches the method of claim 2, Sliwka further teaches: wherein the one or more token includes a single token for each dollar value of the monetary value of the fund (Sliwka ¶¶ [152 & 160]).
As per claim 13, the claim recites analogous limitations as claim 3 above and rejected under the same premise.
As per claim 4, Sliwka teaches teach the method of claim 3, Sliwka further teaches: wherein the set of protocols define a smart contract and the smart contract defines a set of terms for the fund (Sliwka ¶¶ [154, 175, 177-178, 189, 215 & 229]).
As per claim 14, the claim recites analogous limitations as claim 4 above and rejected under the same premise.
As per claim 5, Sliwka teaches teach the method of claim 1, Sliwka further teaches: further comprising;
transferring accounting records of the one or more tokens to an accounting platform automatically upon the minting, transferring, or destroying of the one or more tokens (Sliwka ¶¶ [154 & 156]).
As per claim 15, the claim recites analogous limitations as claim 5 above and rejected under the same premise.
As per claim 6, Sliwka teaches teach the method of claim 1, Sliwka further teaches: wherein the amount of the one or more tokens remains the same before and after administering a portion of the one or more tokens to a third party (Sliwka ¶¶ [151, 233, 325-326 & 348]).
As per claim 16, the claim recites analogous limitations as claim 6 above and rejected under the same premise.
As per claim 7, Sliwka teaches teach the method of claim 1, Sliwka further teaches: wherein the first transaction includes the variables related to a new monetary fund (Sliwka ¶¶ [108-109, 152, 296 & 358]).
As per claim 17, the claim recites analogous limitations as claim 7 above and rejected under the same premise.
As per claim 8, Sliwka teaches teach the method of claim 1, Sliwka further teaches: wherein the first resource source represents a private market fund (Sliwka ¶¶ [81 & 117]).
As per claim 9, Sliwka teaches the method of claim 1, Sliwka further teaches: wherein the one or more tokens includes a commitment variable, wherein the commitment variable corresponds to a legal value owed by the third party of the one or more tokens to the first resource source (Sliwka ¶¶ [84, 109-110 & 120]).
As per claim 18, the claim recites analogous limitations as claim 9 above and rejected under the same premise.
As per claim 21, Sliwka teaches the method of claim 20, Sliwka further teaches:
wherein the variables related to a fund includes a monetary value of the fund, a number of tokens to create, a name of the fund, and a set of terms and conditions for the fund, and wherein the set of protocols define a smart contract and the smart contract defines a set of terms for the fund (Sliwka ¶¶ [84, 106, 108-109, 118, 120, 122, 133, 215, 286, 289-290, 295 & 358]).
As per claim 22, Sliwka teaches the method of claim 20, Sliwka further teaches:
wherein the tokens include a commitment variable, wherein the commitment variable corresponds to a legal value owed by the third party to the first resource source (Sliwka ¶¶ [358, 364 & 366]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TONY P KANAAN whose telephone number is (571)272-2481. The examiner can normally be reached Monday- Friday 7:30am - 3:30 pm EST.
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/T.P.K./Examiner, Art Unit 3696
/WILLIAM J JACOB/Examiner, Art Unit 3696
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