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 amended claims filed on 6/2/2026, wherein:
Claims 1, 8, 15, and 19 have been amended;
Claims 2-7, 9-14, 16, 17, and 21 remain as original or previously presented;
Claims 23 is new;
Claims 18, 20, and 22 are cancelled; and
Claims 1-17, 19, 21, and 23 are currently pending and have been examined.
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 1-17, 19, 21, and 23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a system, medium, and method for storing and transferring digital assets which is considered a judicial exception because it falls under Certain Methods of Organizing Human Activity such as fundamental economic principles or practices. This judicial exception is not integrated into a practical application as discussed below and the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
This rejection follows the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed Reg 4, January 7, 2019, pp. 50-57 (“2019 PEG”)(MPEP 2106).
Analysis
Step 1 (Statutory Categories) – 2019 PEG pg. 53 (See MPEP 2106.03)
Claims 1-17, 19, 21, and 22 are directed to the statutory category of a process.
Step 2A, Prong 1 (Do the claims recite an abstract idea?) – 2019 PEG pg. 54 (See MPEP 2106.04(a)-(c))
For independent claims 1, 8, and 15, the claims recite an abstract idea of: storing and transferring digital assets. The steps of independent claim 1 recite the abstract idea (in bold below) of: A digital asset (DA) computing system for automatically transferring digital assets between electronic records based upon trigger conditions, the DA computing system comprising at least one processor in communication with at least one memory, wherein the at least one processor is programmed to: receive a plurality of identifiers for identifying a plurality of digital assets associated with a first electronic record associated with a first user, each identifier of the plurality of identifiers identifying a digital asset and granting access to the digital asset; store the plurality of identifiers as being associated with the first electronic record; receive an input associated with at least one digital asset of the plurality of digital assets, wherein the input is associated with a transfer identifier instruction configured to cause the identifier associated with the at least one digital asset to be transferred from the first electronic record to a second electronic record based upon a trigger condition occurring, where the second electronic record is not yet created and is associated with a second user; based upon the second electronic record not yet being created and the transfer identifier instruction being configured to cause the identifier associated with the at least one digital asset to be transferred to the second electronic record based upon the trigger condition occurring, automatically cause a notification to be transmitted to a user computing device associated with the second user, the notification requesting authorization for creating the second electronic record; based upon an authorization input received at the user computing device, cause the second electronic record to be created; generate a smart contract configured to automatically execute the transfer identifier instruction of transferring the identifier associated with at least one digital asset from the first electronic record to the second electronic record upon the trigger condition occurring based at least in part upon the second electronic record being created; identify that the trigger condition has occurred; and in response to the trigger condition occurring, execute, by the smart contract, the transfer identifier instruction such that the second electronic record has access rights to the at least one digital asset. Independent claims 8 and 15 recite similar steps that recite the abstract idea. Independent claims 1, 8, and 15, as drafted, are a process that, under the broadest reasonable interpretation, covers Certain Methods of Organizing Human Activity, since they recite fundamental economic principles or practices. If the claim limitations, under the broadest reasonable interpretation, covers methods of organizing human activity but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Other than reciting the abstract idea, the independent claims recite additional elements including generic computer components such as “digital asset (DA) computing system comprising at least one processor in communication with at least one memory, digital assets, a user computing device, non-transitory computer-readable storage medium with instructions stored thereon executed by at least one processor, a digital asset, and a smart contract”, and nothing in the claims precludes the steps from being performed as a method of organizing human activity. Accordingly, the independent claims recite an abstract idea.
Dependent claims 2-7, 9-14, 16, 17, 19, 21, and 23 recite similar limitations as independent claims 1, 8, and 15; and when analyzed as a whole are held to be patent ineligible under 35 U.S.C 101 because the additional recited limitations only refine the abstract idea further. Other than reciting the abstract idea, the dependent claims recite similar additional elements including generic computer components as the independent claims, such as “the DA computing system, the at least one processor, digital assets, the at least one memory, and the at least one non-transitory computer-readable storage medium, a GUI, a first user computing device, and a smart contract”. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Step 2A, Prong 2 (Does the claim recite additional elements that integrate the judicial exception into a practical application?) – 2019 PEG pg. 54 (See MPEP 2106.04(d)-(c))
This judicial exception is not integrated into a practical application. In particular, independent claims 1, 8, and 15 only recite the additional elements of “digital asset (DA) computing system comprising at least one processor in communication with at least one memory, digital assets, a user computing device, non-transitory computer-readable storage medium with instructions stored thereon executed by at least one processor, a digital asset, and a smart contract”. A plain reading of the Figures and associated descriptions in the specification reveals that generic processors may be used to execute the claimed steps. The additional elements are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)) and limits the judicial exception to a particular environment (See MPEP 2106.05(h)). Mere instructions to apply an exception using a generic computer component and limiting the judicial exception to a particular environment doesn’t integrate the abstract idea into a practical application in Step 2A. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Hence, independent claims 1, 8, and 15 are directed to an abstract idea.
Dependent claims 2-7, 9-14, 16, 17, 19, 21, and 23, recite similar additional elements as the independent claims including generic computer components, such as “the DA computing system, the at least one processor, digital assets, the at least one memory, and the at least one non-transitory computer-readable storage medium, a GUI, a first user computing device, and a smart contract”. The judicial exception is not integrated into a practical application because the additional elements in the dependent claims are also recited at a high-level of generality such that it amounts to more no more than mere instructions to apply the exception using generic computer components. Therefore, the additional elements do not integrate the abstract idea into a practical application because they also do not impose any meaningful limits on practicing the abstract idea. Also, the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement of the functioning of a computer system itself; the claims do not effect a transformation or reduction of a particular article to a different state or thing; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) – 2019 PEG pg. 56 (See MPEP 2106.05)
Independent claims 1, 8, and 15 do not include additional elements 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 recited additional elements amount to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the function of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B.
In addition, the dependent claims 2-7, 9-14, 16, 17, 19, 21, and 23 do not include additional elements 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 the dependent claims to perform the claimed limitations, amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)). Similar to the independent claims, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Also, for the same reasoning as the independent claims, the additional elements of the limitations of the dependent claims, when considered individually and as an ordered combination, together do not offer significantly more than the sum of the functions of the elements when each is taken alone and the dependent claims as a whole, do not amount to significantly more than the abstract idea itself. For these reasons, the dependent claims also are not patent eligible.
Subject Matter Overcoming 35 USC §102/§103
Claims 1-17, 19, 21, and 23 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 101 set forth in this Office Action.
Examiner’s statement of reasons for subject matter of independent clams 1, 9, and 15 overcoming the prior art rejections under 35 USC §102/§103 was previously given in the nonfinal rejection dated 3/2/2016 and is hence not repeated here.
Response to Arguments
Applicant’s arguments with respect to the rejection of claims 1-17, 19, 21, and 23 under 35 USC 101 have been fully considered by the Examiner. However, the Examiner does not find the Applicant’s arguments persuasive, and therefore the rejections of claims 1-17, 19, 21, and 23 under 35 USC 101 are maintained.
The Applicant argues that under Prong 1 of Step 2A of the 2019 PEG, the claims do not recite an abstract idea that falls within Certain Methods of Organizing Human Activity, because the claims are directed to technical improvements in the field of digital asset transfers. The Applicant further states on pages 11-14 of their remarks, that the limitations of the independent claims under Prong 2 of Step 2A are indicative of integration into a practical application because they improve computer efficiency and avoid wasting computer resources based upon the smart contract efficiently executing transfer identifier instructions upon death as an automatic executor service. Applicant further argues on pages 14 and 15 of their Remarks that the present claims also satisfy Step 2B because it is not well understood, routine or conventional in the art to perform the steps of the independent claims. Applicant further states on page 14 that the present claims are analogous to claim 2 of Example 35 because the combination of steps in claim 1 perform digital asset transfer in a nonconventional and non-generic way.
Examiner respectfully disagrees with Applicant’s argument that the claimed limitations do not recite any of the groupings of abstract ideas. Under Prong 1 of the 2019 PEG, the claims do fall under the abstract idea of Certain Method of Organizing Human Activity. If a claim limitation, under its broadest reasonable interpretation, covers fundamental economic principles or practices, but for the recitation of additional elements including generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Under the broadest reasonable interpretation, the claims recite fundamental economic principles or practices. Transferring assets from one person to another is a fundamental economic principle or practice.
Examiner respectfully disagrees with Applicant’s argument that the claimed limitations are indicative of integration into a practical application under Prong 2 of Step 2A of the PEG. Using a computer to: determine if a trigger condition has occurred (such as a proof of death), identify digital assets of a first user to be transferred, request a second user to authorize an account to be created to receive the digital assets, create the second electronic record, generate a smart contract to transfer the digital asset based on the trigger condition occurring, and transferring the asset; is nothing more than executing instructions to apply the exception to a computer. This is interpreted by the Examiner as using a computer as a tool to perform an abstract idea (See MPEP 2106.05(f)). The additional elements of “digital asset (DA) computing system comprising at least one processor in communication with at least one memory, digital assets, a user computing device, non-transitory computer-readable storage medium with instructions stored thereon executed by at least one processor, and a smart contract” are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components (See MPEP 2106.05(f)). There is no improvement to the claimed computer elements, or to any other technology or technical field. The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. Therefore, the claimed limitations do not meet the criteria or considerations as indicative of integration into a practical application.
Examiner respectfully disagrees with Applicant’s further argument under Step 2B of the PEG, that the amended claim limitations are patent eligible. As stated previously, using a computer to: determine if a trigger condition has occurred (such as a proof of death), identify digital assets of a first user to be transferred, request a second user to authorize an account to be created to receive the digital assets, create the second electronic record, generate a smart contract to transfer the digital asset based on the trigger condition occurring, and transferring the asset; is nothing more than executing instructions to apply the exception to a computer. The additional elements of “a digital asset (DA) computing system comprising at least one processor in communication with at least one memory, digital assets, a user computing device, non-transitory computer-readable storage medium with instructions stored thereon executed by at least one processor, and a smart contract” amount 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. Examiner respectfully disagrees with Applicant further arguments that the claimed limitations are now well understood, routine, or conventional. The claimed limitations under MPEP 2106.05(d)(ii) amount to well-understood routine and conventional activities of: receiving and transmitting data over a network, the performance of repetitive calculations, electronic recordkeeping, and storing and retrieving information in memory.
Examiner respectfully disagrees with Applicant’s argument that the claims are similar to Example 35, because the combination of the steps in Example 35, such as “the ATM providing a random code, the mobile communication device’s generation of the image having encrypted code data in response to the random code, the ATM’s decryption and analysis of the code data, and the subsequent determination of whether the transaction should proceed based on the analysis of the code data” was a non-generic way to ensure that the customer’s identity is verified in a secure manner that is more than the conventional verification process employed by the ATM alone”. The combination of obtaining information from the mobile communications device instead of the ATM keypad, and using the image instead of a PIN to verify a customer’s identity describes a process that differs from the routine and conventional sequence of events normally conducted by ATM verification using a PIN; and the combination of steps set up a sequence of events that addressed unique problems associated with bank cards and ATMs. Unlike claim 35, the Applicant has not supplied sufficient support for their argument that the claimed combination of elements is different from the routine and conventional sequence of events or for how the claimed limitations address a unique problem. The only similarity between the Applicant’s claimed limitations and Example 35 is that they both use well known computer components. Therefore, the rejections of the claims pursuant to 35 USC 101 are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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 nonprovisional extension fee (37 CFR 1.17(a)) 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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/PAUL S SCHWARZENBERG/Primary Examiner, Art Unit 3695 8/24/2026
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