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 November 22, 2023.
Claim(s) 1-20 are currently pending and have been examined.
This action is made Non-Final.
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) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim(s) 1-20 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:]
locking a shared digital collateral asset with a first hash for a first predetermined time period,
wherein the shared digital collateral asset is owned by a plurality of borrowers, and
wherein the first hash is generated by hashing a plurality of secrets corresponding to the plurality of borrowers;
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;
releasing the digital loan asset to the plurality of borrowers in response to 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; and
prior to expiration of the first predetermined time period, claiming the shared digital collateral asset using the first secret preimage 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 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. 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) 1-20 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chew (WO2021/155915) in view of Williams (US 2023/0412393 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…”)
locking a shared digital collateral asset with a 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.”)
wherein the first hash is generated by hashing a plurality of secrets corresponding to the plurality of borrowers; (Chew: pg. 10, lines 10-15, “The smart contract may lock the digital records with time-bounds using hash locks and time locks generated from cryptographic hash functions…”)
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 in response to 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; and (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 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 a 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…”)
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).
Regarding claim(s) 2, 9, and 16:
The combination of Chew/Williams, as shown in the rejection above, discloses the limitations of claims 1, 8, and 15, respectively. Chew further teaches:
wherein the one or more processors are configured to execute operations further comprising 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, as shown in the rejection above, discloses the limitations of claims 2, 9, and 16, respectively. Chew further teaches:
wherein the one or more processors are configured to execute operations further comprising: pledging a digital repayment asset 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…”)
claiming the shared digital collateral asset by obtaining proof of the pledging of the digital repayment asset and providing the proof prior to expiration of the loan term; 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 the digital repayment asset by providing proof the claim on 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, as shown in the rejection above, discloses the limitations of claims 1, 8, and 15, respectively. Chew further teaches:
wherein the one or more processors are configured to execute operations further comprising: pledging a digital repayment asset 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…”)
claiming the shared digital collateral asset by obtaining proof of the pledging of the digital repayment asset and providing the proof prior to expiration of the loan term; 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 the digital repayment asset by providing proof the claim on 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) 5, 12, and 19:
The combination of Chew/Williams, as shown in the rejection above, discloses the limitations of claims 1, 8, and 15, respectively. Williams further teaches:
wherein the digital loan asset is maintained in a first distributed ledger and the shared digital collateral asset is maintained in a second distributed ledger. (Williams: pgh 9, “The hybrid multisignature digital wallet is further be configured to facilitate multiple transactions between multiple blockchain networks including the first blockchain network and a second blockchain network.”)
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).
Regarding claim(s) 6, 13, and 20:
The combination of Chew/Williams, as shown in the rejection above, discloses the limitations of claims 5, 12, and 19. Williams further teaches:
wherein a digital repayment asset provided prior to expiration of the loan term is maintained in a third distributed ledger. (Williams: pgh 59, “The hybrid multisignature wallet may enable transactions such as token swaps, and may facilitate transfer of tokens across multiple networks.”)
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).
Regarding claim(s) 7 and 14:
The combination of Chew/Williams, as shown in the rejection above, discloses the limitations of claims 1 and 8, respectively. Chew further teaches:
wherein the one or more processors are configured to execute operations further comprising: in response to expiration of the loan term, the shared digital collateral asset is automatically freed from the pledging. (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…”)
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.
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/JOHN O PRESTON/Examiner, Art Unit 3698
February 27, 2026
/ELIZABETH H ROSEN/ Primary Examiner, Art Unit 3693