DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (18/578,253) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 18/578,253, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential § 102(a)(2) prior art against the later invention.
Preliminary Amendment and Claim Status
The instant Office action is responsive to the preliminary amendment received January 10, 2024.
Claims 1–4, 6, 8, 9, 13–20, 23–25, 27, and 28 are currently pending.
Claimed Foreign Priority
Acknowledgment is made of (1) Applicants’ claim for foreign priority based on an application filed in the United Kingdom on July 14, 2021; and (2) certified copies of papers required by 37 C.F.R. § 1.55.
Information Disclosure Statement (IDS)
The IDS filed January 10, 2024 complies with the provisions of 37 C.F.R. §§ 1.97, 1.98. The IDS has been placed in the application file, and the information referred to therein has been considered.
Drawings
37 C.F.R. § 1.83(a) recites
The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
See MPEP § 608.02(d).
The drawings are objected to under 37 C.F.R. § 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the subject matter from claim 1 (i.e., the ordered sequence of blockchain transactions including at least an initial blockchain transaction and a final blockchain transaction, respective hash values, respective intermediate results, candidate block, and transaction representation) must be shown or the features canceled from claim 1.1 No new matter should be entered.
37 C.F.R. § 1.84(p)(3) recites “Numbers, letters, and reference characters must measure at least .32 cm. (1/8 inch) in height.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(p)(3) for failing to include letters measuring at least .32 cm. (1/8 inch) in height. See Fig. 6 (all text).
37 C.F.R. § 1.84(l) recites “Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(l) for failing to include letters durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. See Fig. 6 (all text).
37 C.F.R. § 1.84(q) recites “Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed.” Moreover, 37 C.F.R. § 1.84(r) recites “Arrows may be used at the ends of lines, provided that their meaning is clear, as follows: (1) On a lead line, a freestanding arrow to indicate the entire section towards which it points.”
Fig. 1, item 100 is a reference character that does not indicate a surface or cross section on which it is placed. Thus, the drawings are objected to under 37 C.F.R. § 1.84(q) for failing to include lead lines for each reference character. Moreover, because item 100 appears to indicate the entire section towards which it points, the Examiner recommends representing the lead line for item 100 as an arrow.
The Specification recites “[a] common method for representing large quantities of data in an efficient and less resource-intensive way is to store it in structure known as a hash tree.” Spec. 30:21–22. Moreover, “[t]he structure of a binary hash tree is shown in FIG. 5.” Id. at 31:11.
Thus, Figure 5 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
37 C.F.R. § 1.72(a) recites “The title of the invention may not exceed 500 characters in length and must be as short and specific as possible.”
The title of the invention is objected to under § 1.72(a) for failing to be as specific as possible. A new title is required that is clearly indicative of the invention to which the claims are directed. The following title is suggested: “CANDIDATE BLOCK CONSTRUCTION OF A BLOCKCHAIN.”
Claim Objections
The following is a quotation of 37 C.F.R. § 1.71(a):
The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
Claims 2, 13, and 14 are objected to under 37 C.F.R. § 1.71(a) for the following informalities:
(i) claim 2, line 2 should be “transactions[.]”
(ii) claim 13, line 2 should be “to link the candidate block”
Means-plus-Function Language
The following is a quotation of 35 U.S.C. § 112(f):
ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with § 112(f). The presumption that § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with § 112(f). The presumption that § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
The instant application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under § 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“processing apparatus” (claim 27, line 5).
Since the claim limitations invoke § 112(f), claim 27 has been interpreted to cover the corresponding structure described in the Specification that achieves the claimed function, and equivalents thereof—”one or more processors, e.g. one or more CPUs, GPUs, other accelerator processors, application specific processors, and/or FPGAs.” Spec. 15:19–20.
If Applicants do not intend to have the claim limitations treated under § 112(f), Applicants may amend the claims so that they will clearly not invoke § 112(f), or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of § 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011) (available at https://www.govinfo.gov/content/pkg/FR-2011-02-09/pdf/2011-2841.pdf).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
The MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id.
Claim 1–4, 6, 8, 9, 13–20, 23–25, 27, and 28 is rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
(A) claim 1, lines 8–11 recites “wherein ii) is repeated until the initial blockchain transaction has been concatenated with a respective intermediate result.” The limitation in question adds ambiguity to the claim because all previous concatenations occur between (a) a respective hash value and (b) a preceding blockchain transaction2, but the limitation in question concatenates between (a) a respective intermediate result and (b) a preceding (i.e., the initial) blockchain transaction. Thus, the Examiner is uncertain whether the limitation is question is correct.
The only interpretation the Examiner can determine which concatenates between (a) a respective intermediate result and (b) the initial blockchain transaction is represented as Interpretation I below.
However, if the limitation in question was intended to concatenate between (a) a respective hash value and (b) a preceding blockchain transaction, then Interpretation II below is applicable.3 Moreover, if Interpretation II is correct, the limitation in question would recite “wherein ii) is repeated until the initial blockchain transaction has been concatenated with a respective hash value to obtain a respective intermediate result.”
Claims 20, 27, and 28 by analogy.
Interpretation I
[AltContent: rect][AltContent: rect][AltContent: rect][AltContent: textbox (initial blockchain
transaction (BT1))][AltContent: textbox (2nd blockchain
transaction (BT2))][AltContent: textbox (4th (final) blockchain
transaction (BT4))][AltContent: rect][AltContent: textbox (3rd blockchain
transaction (BT3))]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (hash)][AltContent: arrow][AltContent: arrow][AltContent: textbox ((BT3))]
[AltContent: textbox (hash value (HBT4))]
[AltContent: rect][AltContent: rect][AltContent: textbox ((BT3))][AltContent: textbox ((HBT4))]
[AltContent: textbox (intermediate result 1 (IR1))]
[AltContent: textbox (hash)][AltContent: arrow][AltContent: arrow]
[AltContent: textbox (hash value (IR1))]
[AltContent: rect][AltContent: rect][AltContent: textbox ((BT2))][AltContent: textbox ((IR1))]
[AltContent: textbox (intermediate result 2 (IR2))]
[AltContent: arrow][AltContent: arrow]
[AltContent: textbox (hash)]
[AltContent: rect][AltContent: rect][AltContent: textbox ((BT1))][AltContent: textbox ((IR2))]
[AltContent: textbox (intermediate result 3 (IR3))]
[AltContent: arrow][AltContent: textbox (hash)][AltContent: arrow]
[AltContent: textbox (transaction representation)]
[AltContent: textbox (candidate block)][AltContent: arrow]
Interpretation II
[AltContent: textbox (hash)][AltContent: textbox (hash)][AltContent: textbox (hash)]
[AltContent: arrow][AltContent: arrow][AltContent: arrow]
[AltContent: rect][AltContent: rect][AltContent: rect][AltContent: textbox (initial blockchain
transaction (BT1))][AltContent: textbox (2nd blockchain
transaction (BT2))][AltContent: textbox (4th (final) blockchain
transaction (BT4))][AltContent: rect][AltContent: textbox (3rd blockchain
transaction (BT3))]
[AltContent: textbox ((BT1))][AltContent: arrow][AltContent: textbox (hash value
(HBT2))][AltContent: arrow][AltContent: textbox ((BT2))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (hash value
(HBT3))][AltContent: textbox ((BT3))][AltContent: arrow][AltContent: textbox (hash value
(HBT4))]
[AltContent: rect][AltContent: rect][AltContent: textbox ((BT2))][AltContent: textbox ((HBT3))][AltContent: rect][AltContent: rect][AltContent: textbox ((BT1))][AltContent: textbox ((HBT3))][AltContent: rect][AltContent: rect][AltContent: textbox ((BT3))][AltContent: textbox ((HBT4))]
[AltContent: textbox (intermediate result 3
(IR3))][AltContent: textbox (intermediate result 1
(IR1))][AltContent: textbox (intermediate result 2
(IR2))]
[AltContent: arrow][AltContent: textbox (hash)][AltContent: arrow][AltContent: textbox (hash)][AltContent: arrow][AltContent: textbox (hash)][AltContent: arrow]
[AltContent: arrow][AltContent: arrow]
[AltContent: textbox (transaction representation (HIR3))][AltContent: textbox (hash value (HIR2))][AltContent: textbox (hash value (HIR1))]
[AltContent: arrow]
[AltContent: textbox (candidate block)]
It is assumed for examination purposes that the limitation in question refers to Interpretation I. See MPEP § 2173.06 (citing Packard, 751 F.3d at 1312).
(B) claim 14, lines 1–2, “the respective block header of the previous block” lacks clear antecedent basis.
(C) claim 14, line 2, “the block header” adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to the block header introduced in claim 13, line 2 or claim 14, lines 1–2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20230084490-A1; US-20200285634-A1; US-20200320490-A1; US-20170236121-A1; WO-2020084418-A1; WO-2021079224-A1; and WO-2021079225-A1.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 If either of Interpretation I or Interpretation II provided in the instant Office action below is correct, the Examiner invites Applicants to provide a drawing similar to the drawings of Interpretation I or Interpretation II.
2 See claim 1, lines 8–9 reciting “ii) concatenating the respective hash value with a preceding blockchain transaction in the ordered sequence to obtain a respective intermediate result”.
3 The Examiner finds Interpretation II more consistent with the Specification’s description of a Merkle tree. See Spec. 30–34; Figs. 5–6.