8515DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 11/21/2025.
Claims 1, 4, 10, and 13 are amended.
Claims 7 and 16 are cancelled.
Claims 1-6, 8-15 and 17-20 are pending.
Claims 1-6, 8-15 and 17-20 have been examined.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11257077 (“Patent Document”). Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the Patent Document recites all the limitations of claim 1 of the instant application; however, claim 1 of the Patent Document differs since it further recites additional claim limitations.
Instant Application – 18/515,159
Patent Document - 11257077
A method comprising: receiving, by a computing device, a transaction request to conduct a transaction between a first account and a second account, the transaction request including metadata associated with the first account and the second account that participate in the transaction, and metadata associated with all other accounts that do not participate in the transaction;
A method comprising: storing, by a computing device, a set of entries representing a state of a platform smart contract in a blockchain network, the set of entries including at least:
a first entry comprising a first public key associated with a first account, and a first ciphertext representing a first balance of the first account;
a second entry comprising a second public key associated with a second account, and a second ciphertext representing a second balance of the second account; and
a third entry comprising a third public key associated with a third account, and a third ciphertext representing a third balance of the third account;
locking, by a platform smart contract executing on the computing device, the first account, the second account, and the other accounts to an application smart contract in a blockchain network, in response to receiving the transaction request;
locking, by the platform smart contract executing on the computing device, at least the first, second, and third accounts to an application smart contract, wherein the first account is locked in response to receiving a lock request from a user device associated with the first account, the lock request including the first public key, a smart contract address associated with the application smart contract, and a signature generated based on the smart contract address;
executing, by the computing device, the application smart contract to perform the transaction between the first account and the second account, wherein performing the transaction between the first account and the second account causes: (i) a first balance associated with the first account to be decremented by a first amount and a second balance associated with the second account to be incremented by the first amount, and (ii) a third balance associated with each of the other accounts to be updated by a second amount that is different than the first amount;
executing, by the computing device, the application smart contract to perform a transaction between the first account and the second account, the transaction causing the first balance to be decremented by a first amount and the second balance to be incremented by the first amount, and the third balance to be updated by a second amount that is different than the first amount;
unlocking, by the platform smart contract executing on the computing device, the first account, the second account, and the other accounts from the application smart contract;
unlocking, by the application smart contract executing on the computing device, at least the first, second, and third accounts from the application smart contract; and in response to the unlocking of at least the first, second, and third accounts by the application smart contract, the computing device is further programmed for:
generating, by the computing device, operand ciphertexts for the first account, the second account, and each of the other accounts, by encrypting a respective amount associated with each account using a respective public key of the account;
completing, by the computing device, the transaction between the first account and the second account based on the generating and
responsive to the unlocking by the application smart contract, updating by the computing device, respective ciphertexts corresponding to balances associated with the first account, the second account, and each of the other accounts based on respective operand ciphertexts.
updating the first ciphertext by adding a first operand ciphertext to the first ciphertext, the first operand ciphertext being generated by encrypting a negative of the first amount using the first public key;
updating the second ciphertext by adding a second operand ciphertext to the second ciphertext, the second operand ciphertext being generated by encrypting a positive of the first amount using the second public key; and
updating the third ciphertext by adding a third operand ciphertext to the third ciphertext, the third operand ciphertext being generated by encrypting the second amount using the third public key associated with the third account.
Claim 1 of the patent document contains the additional elements of “storing, by a computing device, a set of entries representing a state of a platform smart contract in a blockchain network, the set of entries including at least :a first entry comprising a first public key associated with a first account, and a first ciphertext representing a first balance of the first account; a second entry comprising a second public key associated with a second account, and a second ciphertext representing a second balance of the second account; and a third entry comprising a third public key associated with a third account, and a third ciphertext representing a third balance of the third account;… updating the first ciphertext by adding a first operand ciphertext to the first ciphertext, the first operand ciphertext being generated by encrypting a negative of the first amount using the first public key; updating the second ciphertext by adding a second operand ciphertext to the second ciphertext, the second operand ciphertext being generated by encrypting a positive of the first amount using the second public key; and updating the third ciphertext by adding a third operand ciphertext to the third ciphertext, the third operand ciphertext being generated by encrypting the second amount using the third public key associated with the third account.”
The claims in the instant application are anticipated by the Patent Document. The claims are directed to the same subject matter, perform the same method steps and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other inventions. The instant application claims are generic to the limitations in the Patent Document. Each limitation in the instant application is fully encompassed in the Patent Document claims.
Response to Arguments
Applicant's arguments filed 11/21/2025 have been fully considered but they are not persuasive.
101
Applicant argues “the claims are not directed to a "fundamental economic activity," because the claims recite improved methods and machines that provide for conducting secure and anonymous transactions between users on a digital platform (e.g., a blockchain network)…. Additionally, the independent claims have been amended to recite: "generating operand ciphertext…”…Such actions simply cannot be performed completely in a mental manner… A problem that has plagued the general area of conducting transactions via a smart contract on a blockchain is that of keeping transactions confidential. The claimed invention provides techniques for implementing a privacy-preserving smart contract. The system can keep accounts private while not losing functionality and with only a limited performance overhead… thus, for reasons stated above, Applicant respectfully requests that the rejection of pending claims under 35 U.S.C. § 101 be withdrawn.” Examiner disagrees.
First, the generated ciphertexts are generated by encryptions. An encryption is a mathematical formulation, an abstract idea. Additionally, some encryption mathematical formulation can be performed by a human mind with pen and paper, also abstract. Applicant’s arguments highlight that the claims are drawn to the improvement of a business process with the goal of transaction security and mitigating risk of a user’s information being exposed by making them anonymous to bad actors. The arguments towards transaction security are themselves abstract and fall under certain methods of organizing human activity, specifically, mitigating risks as part of a transaction. Secondly, “it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.” MPEP 2106.05(a) (II). The confidentiality and information security are an improvement to the business process of market trading but did not improve computers or technology. The rejection is retained.
103
The claim limitations are broader than previous iterations. For example, instead of a “third account”, the limitations are amended to be directed to “other accounts”.
Dutta teaches generating, by the computing device, operand ciphertexts for the first account, the second account, and each of the other accounts, by encrypting a respective amount associated with each account using a respective public key of the account (¶ 28, 51, 53, 56-63; 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 1-6, 8-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, 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 (101 Analysis: Step 1). Even 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) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 1 is directed to a method, and claim 10 is directed to a machine.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “receiving…request… locking.. account… executing… to perform transaction… unlocking… account… generating… ciphertexts… completing… the transaction…by generating… and updating … ciphertexts….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles, for example, requesting a transaction, stopping others from transacting, transaction amount transfer, continuing others to transact and updating accounts to reflect transfer. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does currently recite an additional elements but the additional element does not integrate the judicial exception into a practical application.
Applicant’s claims recite “generating, by the computing device, operand ciphertexts for the first account, the second account, and each of the other accounts, by encrypting a respective amount associated with each account using a respective public key of the account”. From this, it explains that the generating step is the encryption of an amount. Which would fall under the abstract idea of a mathematical operation. Therefore, the additional element, being itself an abstract idea, does not integrate the abstract idea into a practical application.
The use of a distributed ledger or blockchain does not preclude the claim from reciting an abstract idea as the blockchain recites functions of a generic computer component, such as storing data.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “receiving…request… locking.. account… executing… to perform transaction… unlocking… account… and updating … ciphertexts….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice in account amount transfer as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception.
Dependent claims 2-6, 8, 9, 11-15, and 17- 20 discuss functions in more descriptive detail of the steps geared toward the abstract idea such as details about the transaction request, metadata and the recited abstract steps. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 2-6, 8, 9, 11- 15 and 17-20 are also rejected.
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.
Claim 18 is 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.
Claim 18 recites the limitation "the third account" . There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-6, 8-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bentov et al (US 2019/0156301) (“Bentov”), Winklevoss et al. (US 10915891) (“Winklevoss”) and further in view of Dutta et al (US 2003/0093667) (“Dutta”).
Regarding claims 1 and 10, Bentov discloses receiving, by a computing device, a transaction request to conduct a transaction between a first account and a second account, (¶ 112-116, 121- 123, 150, 213-217)
locking, by a platform smart contract executing on the computing device, the first account, the second account, and the other accounts to an application smart contract in a blockchain network, in response to receiving the transaction request (¶ 68, 109-111, 160);
executing, by the computing device, the application smart contract to perform the transaction between the first account and the second account, wherein performing the transaction between the first account and the second account causes: (i) a first balance associated with the first account to be decremented by a first amount and a second balance associated with the second account to be incremented by the first amount, and (ii) a third balance associated with each of the other accounts to be updated by a second amount that is different than the first amount (Figure 14, 16; ¶ 69, 74, 115-121,150, 158, 214-218, 237-243);
unlocking, by the platform smart contract executing on the computing device, the first account, the second account, and the other accounts from the application smart contract (¶ 68, 109-111, 160);
Bentov does not disclose the transaction request including metadata associated with the first account and the second account that participate in the transaction, and metadata associated with all other accounts that do not participate in the transaction; generating, by the computing device, operand ciphertexts for the first account, the second account, and each of the other accounts, by encrypting a respective amount associated with each account using a respective public key of the account; completing, by the computing device, the transaction between the first account and the second account based on the generating and responsive to the unlocking by the application smart contract, updating by the computing device, respective ciphertexts corresponding to balances associated with the first account, the second account, and each of the other accounts based on respective operand ciphertexts.
Winklevoss teaches the transaction request including metadata associated with the first account and the second account that participate in the transaction, and metadata associated with all other accounts that do not participate in the transaction (column 17, line 59-67, column 18, line 1-11).Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Bentov, and Winklevoss in order to provide a means to shield transactions and provide a high level of privacy in a blockchain (Winklevoss; column 17, line 46-67).
Dutta teaches generating, by the computing device, operand ciphertexts for the first account, the second account, and each of the other accounts, by encrypting a respective amount associated with each account using a respective public key of the account (¶ 28, 51, 53, 56-63; claim 1);
completing, by the computing device, the transaction between the first account and the second account based on the generating and (¶ 28, 51, 53, 56-63; claim 1)
responsive to the unlocking by the application smart contract, updating by the computing device, respective ciphertexts corresponding to balances associated with the first account, the second account, and each of the other accounts based on respective operand ciphertexts (¶ 28, 51, 53-63; claim 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Bentov, Winklevoss and Dutta in order to provide a means to conduct secure transaction with value objects (Dutta; ¶ 1-4).
Regarding claims 2 and 11, Bentov discloses wherein the transaction request is received during a particular epoch, and wherein locking of the first account occurs in a subsequent epoch after the particular epoch, each epoch corresponding to a predetermined number of blocks in a blockchain of the blockchain network (¶ 68, 69, 109-111, 160, 214-216).
Regarding claims 3 and 12, Bentov discloses wherein the first amount corresponds to an amount associated with the transaction request and the second amount is a zero amount (¶ 160, 178, 209, 216).
Regarding claims 4 and 13, Bentov discloses wherein the metadata included in the transaction request comprises: a first public key associated with the first account, a first operand ciphertext generated by encrypting a negative of the first amount using the first public key, a second public key associated with the second account, a second operand ciphertext generated by encrypting a positive of the first amount using the second public key, a third public key associated with a third account, and a third operand ciphertext generated by encrypting the second amount using the third public key (¶ 122, 214-216).
Regarding claims 5 and 14, Bentov discloses wherein the metadata included in the transaction request further comprises: a smart contract address associated with the application smart contract, and a signature generated based on the smart contract address (¶ 67, 103, 109, 110, 114, 116, 246, 250, 251).
Regarding claims 6 and 15, Dutta teaches wherein the updating further comprises: (1) modifying a first ciphertext representing the first balance of the first account by adding the first operand ciphertext to the first ciphertext, (2) modifying a second ciphertext representing the second balance of the second account by adding the second operand ciphertext to the second ciphertext, and (3) modifying a third ciphertext representing the third balance of the third account by adding the third operand ciphertext to the third ciphertext (¶ 28, 51, 53-63; claim 1).
Regarding claims 8 and 17, Bentov discloses wherein while the first account is locked to the application smart contract, only the application smart contract is permitted to unlock the first account (¶ 68, 109-111, 160, 214-216).
Regarding claim 9, Bentov discloses wherein the executing, and the unlocking is performed by the platform smart contract of the blockchain network executed on the computing device (¶ 68, 109-111, 160).
Regarding claim 18, Bentov discloses wherein the platform smart contract of a blockchain network executed on the computing device locks the first account, the second account, and the third account to the application smart contract (¶ 68, 109-111, 160, 214-216).
Regarding claim 19, Bentov discloses wherein the application smart contract is one of a sealed-bid auction smart contract, a payment channel smart contract, a stake voting smart contract, or a proof-of-stake smart contract (¶ 97, 98).
Regarding claim 20, Bentov discloses wherein the application smart contract is written in a cryptocurrency platform programming language (¶ 38, 218, 222, 243, 246, 250).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jayachandran et al. (2019/0028277) teaches encrypting zero.
Grajetzki (2012/0066107) teaches locking request that includes a public key
Maxwell (US2016/0358165) teaches encrypting transfer values, both the input and output values with a public key.
Back et al., (US 20160330034) teaches unlock and locked blockchain accounts for cryptocurrency transfers.
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/ILSE I IMMANUEL/
Primary Examiner, Art Unit 3699
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