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 .
Detailed Action
This action is in response to the application filed on 11/30/2023.
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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
All claims are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of U.S. Patent APPLICATION 18-565-566. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims speak to a method for enabling trade of cryptocurrencies, tokenized assets and/or fiat currencies on a single distributed ledger system comprising a plurality of nodes.
Regarding claim 1, the language within this claim can be found within claim 1 of U.S. Patent No. APPLICATION 18-565-566.
Examiner has read the remarks of the applicant and respectfully disagrees and remains firm on double patent.
Claim Objections
Claims12-13 are objected to because of the following informalities:
These claims are so generic they hold little patentable weight.
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.
All claims 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
All claims 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 method Claim 1 (herein called the Primary Independent Claim) as the claim that represents the claimed invention for analysis and is similar to independent system Claim 9 and product Claim 10 (herein called Additional Independent Claims). The Primary Independent Claim recites the limitations of: A method for enabling trade of cryptocurrencies, tokenized assets and/or fiat currencies on a single distributed ledger system comprising a plurality of nodes, wherein:
at least some of the nodes are minting nodes;
at least some of the nodes are user nodes;
and at least some of the nodes are supervisory nodes;
the method comprising:
at the supervisory nodes: creating user certificates for users after successful verification that a user complies with predefined regulations;
at the minting nodes: minting digital assets, each minted digital asset comprising data on an asset type, an asset value and a first owner, wherein the asset type is selected from at least two asset types and wherein the first owner is a user having a user certificate;
at the user nodes operated by users having user certificates created by the supervisory nodes:
requesting or accepting an exchange transaction to exchange digital assets with another user, wherein the exchange transaction request includes information on the amount of the first asset type to be exchanged, the second asset type to which the first asset type is to be exchanged and an exchange rate;
checking if the exchange transaction can be performed;
confirming that the transaction can be performed;
amending the transferred digital assets by signing the transferred digital assets with user's private key as the previous owner signature; and
amending the received digital assets by adding information that the user is the current owner and signing the received digital assets with user's private key as the current owner signature.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The limitation of at least “amending the received digital assets by adding information that the user is the current owner and signing the received digital assets with user's private key as the current owner signature.” recites a fundamental economic practice. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of at least “nodes” in the Primary Independent Claim is 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. The Additional Independent Claims 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. The examiner did not find any additional elements that would cause further analysis. 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 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, all the independent claims 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 a computer hardware and software per se 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. See MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more as well as MPEP 2106.05(d). Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, all independent claims are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims, and thus correspond to Certain Methods of Organizing Human Activity and hence are abstract for the reasons presented above. The dependent claims 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, the dependent claims are directed to an abstract idea. Thus, all the claims are not patent-eligible.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries 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 1-13 listed below are rejected under 35 U.S.C. 103 as being unpatentable over Fletcher (U.S. Patent Pub 2020/0074450) in view of So (U.S. Patent 11,139,955) in view of Ing = Ingargiola (U.S. Patent Pub US 20210073913)
Re claim 1: Fletcher discloses:
A method for enabling trade of cryptocurrencies, tokenized assets and/or fiat currencies on a single distributed ledger system comprising a plurality of nodes, wherein the distributed ledger system is based on a blockchain, wherein: (see Glover, Fig 1-3)
at least some of the nodes are minting nodes; (see Glover Fig 3 item 304 + para 0021-0024)
at least some of the nodes are user nodes; (see Glover Fig 1 item 104 + para 0018)
and at least some of the nodes are supervisory nodes; (see Glover Fig 1 item 108 + para 0018)
the method comprising:
at the supervisory nodes: creating user certificates for users after successful verification that a user complies with predefined regulations; (see Glover Fig 1 item 108 + para 0016-0020)
at the minting nodes: minting digital assets, each minted digital asset comprising data on an asset type, an asset value and a first owner, wherein the asset type is selected from at least two asset types and wherein the first owner is a user having a user certificate; (see Glover Fig 3 item 304 + para 0021-0024)
wherein each minted digital asset is stored in the distributed ledger system as a digital-asset sidechain comprising:(i) a genesis block and (ii) one or more subsequent blocks corresponding to ownership transfers, wherein the genesis block includes:(a) an asset serial number,(b) the asset type,(c) the asset value,(d) an issuing minting node identifier,(e) a minting node signature generated using a minting node private key,(f) a prove key signature generated using a prove key, and(g) a first owner signature generated using a first owner private key, and wherein the minted digital asset is treated as valid in the distributed ledger system only when the genesis block includes at least the minting node signature, the prove key signature, and the first owner signature, (see Glover Fig 3 item 304 + para 0021-0024)
at the user nodes operated by users having user certificates created by the supervisory nodes: (see Glover Fig 1 item 104 + para 0018)
requesting or accepting an exchange transaction to exchange digital assets with another user, wherein the exchange transaction request includes information on the amount of the first asset type to be exchanged, the second asset type to which the first asset type is to be exchanged and an exchange rate; (see Glover Fig 1 item 104 + para 0020-0022, 0034, 0069-0070)
checking if the exchange transaction can be performed; (see Glover Fig 3 item 304-306 + para 0020-0022)
confirming that the transaction can be performed; (see Glover Fig 3 item 304-306 + para 0020-0022)
amending the transferred digital assets by signing the transferred digital assets with user's private key as the previous owner signature; and (see Glover Fig 3 item 304-306 + para 0020-0022)
wherein confirming that the transaction can be performed includes validating each received digital asset by verifying, from the digital-asset sidechain of the received digital asset:(i) the minting node signature,(ii) the prove key signature,(iii) the first owner signature, and(iv) a chain of ownership-transfer signatures in the one or more subsequent blocks; (see Glover Fig 3 item 304-306 + para 0020-0022)
amending the received digital assets by adding information that the user is the current owner and signing the received digital assets with user's private key as the current owner signature (see Glover Fig 3 item 304-306 + Fig 1 + para 0020-0022)
wherein amending the transferred digital assets and amending the received digital assets comprises appending, to the digital-asset sidechain, a block including the previous owner signature, a current owner identifier, and a current owner signature. (see Glover Fig 3 item 304-306 + para 0020-0022)
While examiner believes, Fletcher teaches the features of applicant, should the limitations be argued and for the sake of compact prosecution additional reference, So and Ing additionally teaches the limitations of the applicant. Specifically Ing teaches “per asset” para 0210.
Therefore it would have been obvious to one of ordinary skill in the art at the effect filling date was made to modify Fletcher by adapting any features of So.
It is clear that one would be motivated to combine prior art elements according to know methods to yield predictable results. Specifically both Fletcher and So both relate to same subject area of Cryptocurrency.
A method for enabling trade of cryptocurrencies, tokenized assets and/or fiat currencies on a single distributed ledger system comprising a plurality of nodes, wherein: (see So Fig 1, 65A, Fig 57-59)
at least some of the nodes are minting nodes; (see So Fig 1 item 150, column 42 lines 1-23)
at least some of the nodes are user nodes; (see So Fig 66A item S6602, Fig 59A item T3-T8)
and at least some of the nodes are supervisory nodes; (see So Fig 64H item 6450, Fig )
the method comprising:
at the supervisory nodes: creating user certificates for users after successful verification that a user complies with predefined regulations; (see So Fig 64H item 6450, Fig, column 22 line 9-20)
at the minting nodes: minting digital assets, each minted digital asset comprising data on an asset type, an asset value and a first owner, wherein the asset type is selected from at least two asset types and wherein the first owner is a user having a user certificate; (see So Fig 60 item S6004-S6008,)
at the user nodes operated by users having user certificates created by the supervisory nodes: (see So Fig 59 item T1, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
requesting or accepting an exchange transaction to exchange digital assets with another user, wherein the exchange transaction request includes information on the amount of the first asset type to be exchanged, the second asset type to which the first asset type is to be exchanged and an exchange rate; (see So Fig 59 item T1, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
checking if the exchange transaction can be performed; (see So Fig 59 item T2-T3, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
confirming that the transaction can be performed; (see So Fig 59 item T2-T3, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
amending the transferred digital assets by signing the transferred digital assets with user's private key as the previous owner signature; and (see So Fig 59 item T3-T6, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
amending the received digital assets by adding information that the user is the current owner and signing the received digital assets with user's private key as the current owner signature. (see So Fig 59 item T3-T6, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
Re claim 2: see claim 1 +
wherein the minting node is operated by a trusted entity that satisfies system-defined regulatory requirements. (see Glover Fig 1 item 108 + para 0016-0020, Fig 3 item 304 + para 0021-0024, So Fig 60 item S6004-S6008)
Re claim 3: see claim 1 +
wherein the supervisory node is operated by a trusted entity that satisfies system-defined regulatory requirements. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 4: see claim 1 +
wherein the minting node and the supervisory node are integrated within a single minting and supervisory node. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 5: see claim 1 +
comprising minting digital assets at the minting node upon receiving a notification of deposit of funds or cryptocurrency or certificate of an asset by a user to an entity that governs the minting node. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 6: see claim 1 +
wherein verification of a user at the supervisory node includes performing Know Your Customer and/or Anti Money Laundering procedures. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 7: see claim 1 +
wherein checking if the exchange transaction can be performed includes checking if the other user has enough digital assets to perform the transaction. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 8: see claim 1 +
wherein checking if the exchange transaction can be performed includes checking if the other user has available transaction in/out limits. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 9: see claim 1 +
further comprising providing information on user wallet after completion of the exchange transaction and distributing user wallet information to the distributed ledger system, wherein the information on the user wallet comprises one or more entries defining an asset type and currently owned amount of that asset in the wallet. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 10: see claim 1 +
wherein the distributed ledger system is based on a blockchain and the information on digital assets and user wallets is stored as sidechains. (see Glover Fig 1 item 108 + para 0016-0020, So Fig 64H item 6450, Fig, column 22 line 9-20)
Re claim 11: see claim 1 +
further comprising, at the minting nodes, upon deposition of blockchain-based assets, updating the data of the primary blockchain of the deposited assets to indicate the minting node as the new owner of the deposited assets, and upon redemption of blockchain-based assets, updating the data of the primary blockchain of the redeemed assets to indicate the user as the new owner of the redeemed assets and removing the corresponding redeemed minted assets from the distributed ledger system. (see So Fig 59 item T1, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
Re claim 12: see claim 1 +
A computer system comprising:- at least one nontransitory processor-readable storage medium that stores at least one of processor-executable instructions or data; and at least one processor communicably coupled to the at least one nontransitory processor-readable storage medium, wherein the at least one processor is configured to perform the steps of the method of any of previous claims of claim 1corresponding to the functionality of the minting node, the supervisory node, the minting and supervisory node or of the user node. (see So Fig 59 item T1, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
Re claim 13: see claim 1 +
A computer program product comprising instructions which, when executed on a computer, cause the computer configured as the minting node, the supervisory node, the minting and supervisory node or as the user node to perform the corresponding steps of the method of any of claims 1-11. (see So Fig 59 item T1, Fig 58 item 5702, 5904, Fig 56 item S5616-S5618)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kilroe et al., U.S. Patent Pub 2021/0027281, discloses a computer-implemented method for managing cryptocurrency is disclosed. A plurality of users are provided with an in-marketplace wallet suitable for storing linked digital tokens that are linked in value to cryptocurrency tokens and are required to transact on a digital marketplace platform. A cryptocurrency reserve is provided for storing cryptocurrency tokens.
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.
Response to Arguments
Applicant’s arguments have been fully considered and are not persuasive. Answers to the arguments on the amended limitations which change the scope of the claims, will be addressed in the action above. Applicant's art arguments are considered moot due to new grounds of rejection.
Applicant's arguments have been fully considered but they are not persuasive.
In particular, and respect to Claim 1 the Applicant argued 1st: prior art does not teach “per-asset side chain structure”
First the Examiner would like to note that these language “per-asset” or “side chain structure” is their own interpretation words and this claim language is not found in the independent claim. The Examiner refutes the argument made by the Applicant and draws the attention to Ing teaches “per asset” para 0210 and Glover Fig 1 item 104 + Fig 3 + para 0020-0022, 0034, 0069-0070.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kirsten Apple whose telephone number is (571)272-5588. The examiner can normally be reached on M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Anderson can be reached on (571) 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KIRSTEN S APPLE/Primary Examiner, Art Unit 3693