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 .
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1 and 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9, respectively, of U.S. Patent No. 10,984,473. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 10,984,473 discloses all of the elements found in the claims of the instant application (including an entity risk exchange, risk tokens, business organization having at least one department, generating an immutable ledger using blockchain to record risk transactions of the entity, tokenizing the total entity risk value via generating a plurality of risk tokens as a plurality of cryptocurrency tokens, allocating tokens to wallets in the blockchain) except determining a total entity risk value representing a risk appetite of an entity. Claim 1 in U.S. Patent No. 10,984,473, does, however, disclose determining a total entity risk value representing a risk position of an entity. Because one having ordinary skill in the art at the time of filing would expect the risk position of an entity to flow from the risk appetite of the entity, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute “risk position” of an entity with “risk appetite” of an entity. This would have been an obvious variation, since both refer to quantifying the entity’s risk-related characteristics for use in token generation and distribution. Claim 1 of the application also requires using a proof-of-trust model. It would have been obvious to implement a point of trust model to save energy and work (see page 1166, Section 3 of Leila Bahri and Sarunas Girdzijauskas. 2018. When Trust Saves Energy: A Reference Framework for Proof of Trust (PoT) Blockchains. Proceedings of the The Web Conference 2018. International World Wide Web Conferences Steering Committee, Republic and Canton of Geneva, Switzerland, 1165-1169. (Year: 2018) and thus is an obvious variation of the invention claimed in claim 1 of the patent. Accordingly, these claims are not patentably distinct from each other. Similarly, claim 9 of U.S. Patent No. 10,984,473 contains substantially the same limitations as claim 1 of the patent, but is directed to a computer-implemented method. Claim 8 of the instant application is also directed to a computer-implemented method and contains substantially the same limitations as claim 1 of the application. Accordingly, claim 8 of the application is rejected as being unpatentable over claim 8 of U.S. Patent No. 10,984,473 because they are not patentably distinct from each for the same reasons given above for Claim 1 of the application and Claim 1 of U.S. Patent No. 10,984,473.
Claims 1 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10, respectively, of U.S. Patent No. 11,847,698.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent no. 11,847,698 B2 discloses all of the elements of claim 1 of the application except for requiring a proof-of-trust model. It would have been obvious for a person having ordinary skill in the art at the time of filing to implement a point of trust model to save energy and work (see page 1166, Section 3 of Leila Bahri and Sarunas Girdzijauskas. 2018. When Trust Saves Energy: A Reference Framework for Proof of Trust (PoT) Blockchains. Proceedings of the The Web Conference 2018. International World Wide Web Conferences Steering Committee, Republic and Canton of Geneva, Switzerland, 1165-1169. (Year: 2018) and thus is an obvious variation of the invention claimed in claim 1 of the patent. Accordingly, claim 1 of the application is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11847698 B2.
The same reasoning applies to claim 8 of the application and claim 10 of the patent. Accordingly claim 8 of the application is unpatentable over claim 10 of the patent.
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 1-5, 8-12, and 15-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-5, 8-12, and 15-19 are directed to an apparatus, method, or non-transitory computer-readable medium; and so, each of falls into at least one statutory category enumerated in 35 U.S.C. § 101. However, claim 1 recites implement[ing] an entity risk exchange; determin[ing] a total entity risk value representing a risk appetite of an entity, the entity comprising a business organization having at least one department, generat[ing] an immutable ledger to record risk transactions of the entity, tokenize the total entity risk value via generating a plurality of tokens, each of the plurality of tokens having a respective token value that is a respective portion of the total entity risk value, determin[ing] a total segment risk value for the at least one department as a fraction of the total entity risk, the total segment risk value representing the respective portion of the total entity risk value allocated to the at least one department, and distribut[ing] some of the plurality of tokens to the at least one department to correspond with the total segment risk value as determined for the at least one department.
This is a fundamental economic principle or practice of mitigating risk and commercial interaction of marketing or sales activities or behaviors which falls under the grouping of Certain Methods of Organizing Human Activity because it involves the sale or exchange of tokens corresponding to risk (see MPEP § 2106.04(a)(2), subsections II.A and II.B)
This judicial exception is not integrated into a practical application because the additional elements include a storage device and circuitry (having logic implemented therein) coupled to the storage device, using a blockchain based on a proof-of-trust model (to record transactions), cryptocurrency (tokens), and a cryptocurrency wallet.
These computer elements are recited at a high level of generality. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not represent improvements to the functioning of a computer, or to any other technology or technical field. The claims do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment of a computer or cryptocurrency environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (holding claim that limits price optimization method to the e-commerce setting is directed to an abstract idea). “using a blockchain based on a proof-of-trust model to record transactions” and generating a cryptocurrency are additional limitations. However, these limitations are recited at a high level of generality and do not integrate the abstract idea into a practical application or provide significantly more as it amounts to merely using a computer as tool to perform the abstract idea. The specification lists using “proof-of-trust” for consensus as one of five generic examples of interchangeable consensus algorithms at ¶[0030].
Because of the generic recitation, the claims invoke computers and computer components mainly as a tool to carry out the performance of the abstract idea (see MPEP § 2106.05(f)).Thus, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea or merely using a computer as a tool to perform the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately or in combination, they do no more than limit the above-identified abstract idea to the particular technological environment of computers or cryptocurrency, as discussed above with regard to whether the abstract idea is integrated into a practical application. Limitations that merely confine the use of the abstract idea to a particular technological environment fail to add an inventive concept to the claims (see MPEP 2106.05(h) discussing Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253, 120 USPQ2d 1201 (Fed. Cir. 2016) (particular technological environment of cellular telephones). Mere instructions to apply an exception using generic computer components do not provide significantly more (see MPEP 2106.05(f)). Claims 8 and 15 contain substantially the same limitations but independent claim 8 recites computer-implementation of a method to implement the invention and independent claim 15 recites a non-transitory computer-readable medium having instructions executed by a processor to implement the invention. Claims 8 and 15 recite the same abstract idea as claim 1, discussed above. These additional elements are recited at a high level of generality and do not integrate the abstract idea into a practical application or provide significantly more and are rejected for the same reason as claim 1.
Claim(s) 2, 9, and 16 recite determining at least one risk transaction value associated with at least one risk event, the at least one risk event comprising at least one of a function of the at least one department or a business decision of the at least one department. This is part of the abstract idea identified above as it involves risk. The claims do not recite additional limitations and so do not integrate the abstract idea into a practical application or provide significantly more.
Claim(s) 3, 10, and 17, recite performing a risk transaction via exchanging a portion of the plurality of tokens of the at least one department for assignment of the at least one risk event to the at least one department. This is part of the abstract idea identified above as it involves risk and exchange. The claims do not recite additional limitations and so do not integrate the abstract idea into a practical application or provide significantly more.
Claims (s) 4, 11, and 18 recite providing an amount of the plurality of risk tokens to the entity responsive to determining that the entity has alleviated a risk event, the amount equal to a transaction value associated with the risk event. This is part of the abstract idea identified above as it involves risk and exchange. The claims do not recite additional limitations and so do not integrate the abstract idea into a practical application or provide significantly more.
Claim(s) 5, 12, and 19, recite presenting a risk exchange interface on at least one computing device in communication with the apparatus, the risk exchange interface to facilitate monitoring of transactions on the entity risk exchange, and generate a notification indicating a change in a risk posture for the at least one department responsive to a change in risk information comprising at least one of market conditions, updated entity risk posture, or market forecasts. This is part of the abstract idea because it involves monitoring exchange transactions and generating notifications based on risk information. An interface is recited which is an additional limitation. However, this limitation is recited at a high level of generality and does not integrate the abstract idea into a practical application or provide significantly more.
Claims 21 and 23 are part of the abstract idea because each recites satisfying a condition and do not provide significantly more or integrate the abstract idea into a practical application.
Claims 22 and 24 recite recording a transaction in a data block, calculating a hash value, and adding the data block to the block chain which are generic features of distributed ledgers (see Applicant’s Specification at ¶[0031], ¶ [0041], and ¶[0042] and does not integrate the abstract idea into a practical application or provide significantly more.
Claim 25 combines the features of claims 21/23 and 22/24 and is rejected for the same reasons as 21-24.
Accordingly, claims 1-5, 8-12, and 15-19 and 21-25 are rejected under 35 U.S.C. § 101 as being directed to an abstract idea without significantly more.
Response to Arguments
Double Patenting
Applicant's traversal at page 7 of the Remarks filed 12/12/2025 concerning the double patenting rejection over patents US 10984473 B2 and US 11847698 B have been fully considered but they are not persuasive. A double patenting rejection is issued herein.
35 U.S.C. § 101
At pages 10 of Applicant’s remarks filed 12/12/2025, Applicant argues that the claims recite a practical application because the claims advantageously ensure that risk decisions may be tracked and logged on a perpetual blockchain solution based on a proof-of-trust model which would provide a clear audit trail of both macro and micro risk decisions for an entity. This argument has been considered but is unpersuasive. The proof-of-trust model that the amended claims recite has been selected from a list of at least five known consensus algorithms listed in the Specification at ¶[0030] which states that “Non-limiting examples of consensus algorithms may include proof-of-work, Byzantine fault-tolerant replication, proof-of-stake, proof-of-trust, multi-signature, and/or the like”. The claims allocate total entity risk among subsets of an entity and record the allocated risk. The allocated risk is recorded as a cryptocurrency token, stored in a blockchain and allocated to a digital wallet. The claims do no more than generally link the use of the judicial exception to the particular technological environment of cryptocurrencies or use a computer as a tool to perform the abstract idea.
At page 11 of Applicant’s remarks, Applicant argues that the limitations are “not a routine or conventional combination” that provides a risk trading platform for an entity and segments of the entity to trade risk while maintaining an overall risk position of the entity with certain important safeguards, such as providing an immutable record of risk decisions, limiting the amount of risk a segment, activity, or other element may take on, and these elements amount to significantly more than an abstract idea. This argument has been considered but is unpersuasive. The claims allocate total entity risk among subsets of an entity and record the allocated risk. The allocated risk is recorded as a cryptocurrency token, stored in a blockchain and allocated to a digital wallet. The claims do no more than generally link the use of the judicial exception to the particular technological environment of cryptocurrencies or use a computer as a tool to perform the abstract idea.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20190385157 A1 teaches intercompany netting within an organization using tokenized funds and wallets and allowing a subsidiary to receive cash for surrender of tokens
US 10755202 B1 teaches that according to a typical management hierarchy of a company, each division includes one or more management personnel responsible for addressing risks pertaining to their particular division. It also discloses a user device that may receive the internal risk information from one or more sources includes different divisions across the business and indicators or risk that are particular to business divisions.
US 10755202 B1 teaches risk and risk indicators of each division is monitored and provided to other divisions
US 20210342836 A1 teaches that cryptocurrency tokens may be owned by and distributed to a team within an organization
US 20200327473 A1 teaches using smart contracts and tokens to facilitate transactions between different units of the same organization.
US 20200311816 A1 to Calvin, R. W. teaches at ¶ [0077] using APIs from data stored on the blockchain to combine with centralized risk parameter suggestions which help users govern the amount of capital allocation to a single project and at ¶ [0187] teaches a network that has a total risk budget, for which the market has a fixed capital budget. If the market has reached its risk budget, greenlighted projects are put in the queue. In one embodiment, operators must post cryptocurrency collateral for a certain amount of oilfield development work.
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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BOLKO HAMERSKI
Examiner
Art Unit 3694
/BOLKO M HAMERSKI/Examiner, Art Unit 3694
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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