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 .
Status of Claims
This action is in reply to the application filed on June 5, 2026.
Claims 5, 6, 12, 13, 19, and 20 were canceled.
Claims 1, 3, 4, 7-11, and 14-18 were amended
Claim(s) 1-4, 7-11, and 14-18 are currently pending and have been examined.
This action is made Final.
Response to Arguments
Applicant argued that Examiner’s 101 rejection was improper because features of the claimed invention are inextricably tied to computer technology and specifically to a cryptographic mechanism. Examiner disagrees. Applicant’s claimed invention is necessarily rooted in computer technology. However, it does not overcome a problem specifically arising in the realm of computer networks. Each distributed ledger is an accounting system, and Applicant’s claimed invention manages the execution of a transaction that involves assets residing within two or more accounting systems, or distributed ledgers. Because the claimed invention does not overcome a problem specifically arising in the realm of computer networks, Applicant’s claimed invention is not analogous to the patent-eligible subject matter of DDR Holdings. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the alleged abstract idea is integrated into a practical implementation. Examiner disagrees. The abstract idea in Applicant’s claimed invention is not integrated into a practical application because the additional elements of one or more processors, a first distributed ledger, a second distributed ledger, and a third distributed ledger are merely used as tools to implement the abstract idea. None of the computer elements were improved by the claimed invention and no computer technology was improved by the claimed invention. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the specific architecture of the claimed invention provides a concrete technological improvement by enabling execution of complex, multi-party transactions across multiple distributed ledgers while maintaining coordination between asset states through hash-based locking and proof-based validation, thereby improving the reliability of transaction execution across distributed ledger systems, thereby providing an improvement and technical advancement over conventional distributed ledger systems. Examiner disagrees. The computer networks, the plurality of distributed ledgers, and the cryptography technology used by Applicant were merely used as tools and were not improved by the claimed invention. Any improvement in the claimed invention lies within the abstract idea of executing a transaction across a plurality of distributed ledgers. An improvement of an abstract idea does not make the abstract idea any less abstract. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the claimed combination ensures that the shared digital collateral asset can be acted upon only when all borrowers participate, since the required input is derived from secrets provided by each borrower. Examiner disagrees. The desired result referenced by Applicant is a feature of the abstract idea recited in the claimed invention. The features of the abstract idea do not transform the abstract idea into patent-eligible subject matter. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that Examiner’s 101 rejection was improper because the features of “locking the shared digital collateral asset with the first hash for a first predetermined time period…the shared digital collateral asset is maintained in a second distributed ledger…locking a digital loan asset with the first hash for a second predetermined time period…the digital loan asset is maintained in a first distributed ledger,” as recited in amended independent claim 1 amount to significantly more than any alleged abstract idea. Examiner disagrees. The features referenced by Applicant do not amount to significantly more than the abstract idea because they represent a combination of the abstract idea and the additional elements of the claimed invention wherein the additional elements are merely used as tools to implement the abstract idea. Such an implementation is not indicative of patent-eligible subject matter. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that the prior art did not teach or suggest generating a hash by hashing a plurality of secrets corresponding to a plurality of different borrowers, where each secret of the plurality of secrets correspond to a different borrower of the plurality of borrowers. Examiner disagrees. The Chew reference discloses hashing secret keys related to a transaction, which makes obvious the limitation of generating a hash by hashing a plurality of secrets corresponding to a plurality of different borrowers, where each secret of the plurality of secrets correspond to a different borrower of the plurality of borrowers. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that the prior art did not teach or suggest using the same hash to lock a shared digital collateral asset and a digital loan asset. Examiner disagrees. The Chew reference discloses a hashed time lock contract that locks the digital assets for each counterparty in an exchange. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that the prior art did not teach or suggest obtaining proof of pledging of a digital repayment asset; providing such proof to enable claiming of another asset; and claiming an asset based a secret preimage and an independently obtained proof of pledging. Examiner disagrees. The Doney reference teaches obtaining proof of pledging of a digital repayment asset and providing such proof to enable claiming of another asset. The Chew reference teaches claiming an asset based a secret preimage and an independently obtained proof of pledging. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that the prior art did not teach or suggest maintaining different digital assets on separate distributed ledgers; maintaining a digital loan asset in a first distributed ledger; a shared digital collateral asset in a second distributed ledger; and a digital repayment asset in a third distributed ledger. Examiner disagrees. The Doney and Williams references both teach limitations to suggest maintaining different digital assets on separate distributed ledgers; maintaining a digital loan asset in a first distributed ledger; a shared digital collateral asset in a second distributed ledger; and a digital repayment asset in a third distributed ledger. Therefore, Examiner finds Applicant’s argument non-persuasive.
Applicant argued that dependent claims 2-4, 7, 9-11, 14, and 16-18 are not taught, suggested, or rendered obvious over the combination of Crew and Williams based at least on the dependence on the amended independent claims 1, 8, and 15. Examiner disagrees. Dependent claims 2-4, 7, 9-11, 14, and 16-18 are not rendered obvious over the prior art based at least on the dependence on the amended independent claims 1, 8, and 15 because independent claims 1, 8, and 15 are not obvious over the prior art. Therefore, Examiner finds Applicant’s argument non-persuasive.
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.
Claim(s) 1-4, 7-11, and 14-18 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1-4, 7-11, and 14-18 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent system claim 8 as the claim that represents the claimed invention for analysis and is similar to independent method Claim 1 and product Claim 15. Claim 8 recites the following limitations:
a system for automatically and digitally securing an asset, the system comprising:
[one or more processors configured to execute operations including:]
generating a first hash by hashing a plurality of secrets corresponding to a plurality of borrowers, wherein each secret of the plurality of secrets corresponds to a different borrower of the plurality of borrowers;
locking a shared digital collateral asset with the first hash for a first predetermined time period,
wherein the shared digital collateral asset is owned by the plurality of borrowers, and
wherein the shared digital collateral asset is maintained in [a second distributed ledger];
locking a digital loan asset with the first hash for a second predetermined time period,
wherein the second predetermined time period is less than the first predetermined time period, and wherein the digital loan asset is maintained in [a first distributed ledger];
releasing the digital loan asset to the plurality of borrowers based on receiving a first secret preimage prior to expiration of the second predetermined time period,
wherein the first secret preimage is generated using the plurality of secrets;
pledging a digital repayment asset that is maintained in [a third distributed ledger];
obtaining a proof of the pledging of the digital repayment asset from [the third distributed ledger];
providing the proof of the pledging of the digital repayment asset from [the third distributed ledger] to [the second distributed ledger]; and
prior to expiration of the first predetermined time period, claiming the shared digital collateral asset using the first secret preimage and the proof of the pledging of the digital repayment asset, and pledging the shared digital collateral asset for a loan term.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity because the limitations recite a commercial or legal interaction. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The one or more processors, first distributed ledger, second distributed ledger, and third distributed ledger in Claim 8 are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claim(s) 1 and 15 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of one or more processors, a first distributed ledger, a second distributed ledger, and a third distributed ledger. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim(s) 1, 8, and 15 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements do not change the outcome of the analysis when considered separately and as an ordered combination. Thus, claim(s) 1, 8, and 15 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-7, 9-14, and 16-20 further define the abstract idea that is present in their respective independent claim(s) 1, 8, and 15 and thus correspond to certain methods of organizing human activity and hence are abstract for the reasons presented above. Dependent claims 2-7, 9-14, and 16-20 do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, dependent claims 2-7, 9-14, and 16-20 are directed to an abstract idea. Thus, claim(s) 1-4, 7-11, and 14-18 are not patent-eligible.
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.
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 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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4, 7-11, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Chew (WO2021/155915) in view of Williams (US 2023/0412393 A1) in view of Doney (US 20200267020 A1).
Regarding claim(s) 1, 8, and 15:
Chew teaches:
a system for automatically and digitally securing an asset, the system comprising: one or more processors configured to execute operations including: (Chew: pg. 28, lines 15-20, “The computer program instructions may be provided to one or more processors of a general-purpose computer…”)
generating a first hash by hashing a plurality of secrets corresponding to a plurality of borrowers, wherein each secret of the plurality of secrets corresponds to a different borrower of the plurality of borrowers: (Chew: pg 9, lines 5-10, “…the application of hash functions to data, e.g. a cryptographic hash function, which is a cryptographic one-way function, to map arbitrary size input to fixed-size output hash. An important property of cryptographic hash functions is they are practically infeasible to invert, i.e. calculate/find input of a hash function from its output hash.”)
locking a shared digital collateral asset with the first hash for a first predetermined time period, (Chew: pg. 9, lines 10-15, “The cryptographic module may be used in the process of locking the digital records during an atomic swap transaction, using a set of cryptographic hash functions to prevent the owner of a digital record in an atomic swap transaction to unlock the digital assets before a set of specified conditions are met.”)
locking a digital loan asset with the first hash for a second predetermined time period, (Chew: pg. 7, lines 20-25, “…and locking the exchanged digital records in the corresponding initiator and collaborator DLT platforms…”)
wherein the second predetermined time period is less than the first predetermined time period…; (Chew: pg. 15, lines 20-25, “In general, the state of a DLT platform represents an evolving sequence of transactions in discrete time slots…”)
releasing the digital loan asset to the plurality of borrowers based on receiving a first secret preimage prior to expiration of the second predetermined time period, (Chew: pg. 7, lines 25-30, “…to transfer to the at least one initiator party and at least one collaborator party a key to release the exchanged digital records in the corresponding DLT platforms.”)
wherein the first secret preimage is generated using the plurality of secrets; (Chew: pg. 9, “…is configured to lock the exchanged digital records using a state hash value key generated by means of the cryptographic module from a hash function…”)
prior to expiration of the first predetermined time period, claiming the shared digital collateral asset using the first secret preimage and the proof of the pledging of the digital repayment asset, and pledging the shared digital collateral asset for a loan term. (Chew: pg 9, lines 10-20, “For example, in Hashed Time Lock Contract (HTLC), which is type of smart contract on DLTs that is used to perform atomic swaps, the digital assets to be swapped may be locked to users with time-bounds using hash locks and time locks…”; “…wherein the connector module is communicatively coupled to an escrow module configured to lock the digital records involved in the atomic swap transaction…”)
Chew does not teach, however, Williams teaches:
wherein the shared digital collateral asset is owned by the plurality of borrowers, and (Williams: pgh 49, “An AMM may take in and store different forms of digital assets, such as loans, to be used as collateral in future exchanges on the platform. Such assets may be aggregated within a collateral pool…”)
wherein the shared digital collateral asset is maintained in a second distributed ledger; (Williams: pgh 49, “Liquidity may be provided using underlying collateral. An AMM may take in and store different forms of digital assets, such as loans, to be used as collateral in future exchanges on the platform. Such assets may be aggregated within a collateral pool…”; pgh 87, “Further, communication network may take a variety of forms, including but not limited to, a blockchain network, a distributed ledger network…”)
…and wherein the digital loan asset is maintained in a first distributed ledger (Williams: pgh 15, “The method may further include facilitating, via the hybrid multisignature digital wallet, a transaction between the first blockchain network and a second blockchain network. The transaction may involve the digital asset stored by the hybrid multisignature digital wallet.”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Chew to include the teachings of Williams to make the management of collateral assets more secure (Williams: pgh 7). Chew/Williams does not teach the remaining limitations. However, Doney teaches:
pledging a digital repayment asset that is maintained in a third distributed ledger; (Doney: pgh 5, “More complex transactions (purchases, loans, etc.) almost always involve more than one ledger. Examples of common transactions that involve multiple ledgers and/or accounting balances include…Remittances (Cross border payments) which transfer value between payment networks…”)
obtaining a proof of the pledging of the digital repayment asset from the third distributed ledger; (Doney: pgh 40, “The overarching transaction and all sub-transactions can be recorded on a ledger, that may be distinct from the ledgers involved n sub-transactions. The independent ledger may utilize zero knowledge proofs to provide immutability while maintaining transaction privacy.”)
providing the proof of the pledging of the digital repayment asset from the third distributed ledger to the second distributed ledger; and (Doney: pgh 44, “Chained transfer handler module executes the sub-transactions (with Zero Knowledge Proofs, as desired to protect privacy) as a sequence of network transfers, confirmations, and bridge traversals…”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified Chew/Williams to include the teachings of Doney to “…efficiently support transactions that cross multiple ledgers or other communications networks…” (Doney: pgh 17).
Regarding claim(s) 2, 9, and 16:
The combination of Chew/Williams/Doney, as shown in the rejection above, discloses the limitations of claims 1, 8, and 15, respectively. Chew further teaches:
wherein the operations further comprise transferring an interest in the shared digital collateral asset from a first borrower of the plurality of borrowers to a transferee, the transferring including: (Chew: pg. 9, lines 25-35, “…wherein the connector module is communicatively coupled to an escrow module configured to lock the digital records involved in the atomic swap transaction.”)
locking, for a third predetermined time period, a digital payment asset of the transferee using a second hash, (Chew: pg. 10, lines 5-10, “Digital record locking may be performed by an escrow module…” ; pg 9, lines 10-15, “The cryptographic module may be used in the process of locking the digital records during an atomic swap transaction, using a set of cryptographic hash functions to prevent the owner of a digital record in an atomic swap transaction to unlock the digital assets before a set of specified conditions are met.”)
wherein the second hash is generated using a second secret preimage from the first borrower and the third predetermined time period is less than a remaining portion of the loan term; (Chew: pg 16, lines 30-35, “For example, the locking of digital assets may be performed by means of a secret key and timeout using hash lock and time locks.”)
locking a pledge state of the shared digital collateral asset using the second hash; (Chew: pg. 16, lines 25-30, “Locking asset to another party: the ECM module 330 is configured to lock assets to another party with pre-defined conditions using a LocktoParty method…”)
claiming, for the first borrower, the digital payment asset using the second hash prior to expiration of the third predetermined time period; and (Chew: pg. 18, lines 25-30, “…initiator parties unlock their new assets by releasing newState value and reference to the Global consensus state…”)
claiming, for the transferee, the pledge state on the shared digital collateral asset using the second secret preimage, (Chew: pg. 18, lines 25-30 “…collaborator parties unlocks their assets using the newState value to unlock their new assets.”)
wherein the first borrower is replaced with the transferee in the plurality of borrowers. (Chew: pg. 10, lines 1-10, “The connector module enables the locking of the digital records to be swapped to the corresponding party.”)
Regarding claim(s) 3, 10, and 17:
The combination of Chew/Williams/Doney, as shown in the rejection above, discloses the limitations of claims 2, 9, and 16, respectively. Chew further teaches:
wherein the pledging of the digital repayment asset is for an amount of time that exceeds the loan term; (Chew: pg. 9, lines 30-35, “The escrow module comprising a smart contract programme operating on each connected DLT platform, which is configured to lock the digital records with time-bounds using hash lock and time locks…”)
and wherein the providing of the proof of the pledging of the digital repayment asset is prior to expiration of the loan term, the operations further comprising: (Chew: pg. 18, lines 25-30, “…initiator parties unlock their new assets by releasing newState value and reference to the Global consensus state…”)
claiming the digital repayment asset by providing a proof of the claiming of the shared digital collateral asset prior to expiration of a fourth predetermined time period. (Chew: pg. 18, lines 25-30 “…collaborator parties unlocks their assets using the newState value to unlock their new assets.”)
Regarding claim(s) 4, 11, and 18:
The combination of Chew/Williams/Doney, as shown in the rejection above, discloses the limitations of claims 1, 8, and 15, respectively. Chew further teaches:
wherein the pledging of the digital repayment asset is for an amount of time that exceeds the loan term; (Chew: pg. 9, lines 30-35, “The escrow module comprising a smart contract programme operating on each connected DLT platform, which is configured to lock the digital records with time-bounds using hash lock and time locks…”)
and wherein the providing of the proof of the pledging of the digital repayment asset is prior to expiration of the loan term, the operations further comprising: (Chew: pg. 18, lines 25-30, “…initiator parties unlock their new assets by releasing newState value and reference to the Global consensus state…”)
claiming the digital repayment asset by providing a proof of the claiming of the shared digital collateral asset prior to expiration of a fourth predetermined time period. (Chew: pg. 18, lines 25-30 “…collaborator parties unlocks their assets using the newState value to unlock their new assets.”)
Regarding claim(s) 7 and 14:
The combination of Chew/Williams/Doney, as shown in the rejection above, discloses the limitations of claims 1 and 8, respectively. Chew further teaches:
wherein the operations further comprise: releasing the shared digital collateral asset from the pledging based on expiration of the loan term. (Chew: pg. 7, lines 25-30, “…upon receiving a confirmation from the corresponding DLT communication module that the atomic swap transaction is validly processed by the global consensus module, to transfer to the at least one initiator party and at least one collaborator party a key to release the exchanged digital records…”; pg. 9, lines10-20, “For example, in Hashed Time Lock Contract (HTLC), which is type of smart contract on DLTs that is used to perform atomic swaps, the digital assets to be swapped may be locked to users with time-bounds using hash locks and time locks, by exploiting cryptographic techniques such as cryptographic hash functions and cryptographic signatures.”)
Conclusion
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Filter (US 2023/0376949) discloses a digital asset-based interaction system.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event of a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JOHN O PRESTON/Examiner, Art Unit 3693
August 25, 2026
/ELIZABETH H ROSEN/Primary Examiner, Art Unit 3693
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