DETAILED ACTION
Acknowledgements
The amendment filed on 11/20/2025 is acknowledged.
Claims 1-21 and 23 are pending.
Claims 1-21 and 23 have been examined.
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 .
Claim Objections
Following claims contain typographical error. An appropriate correction or clarification is required.
Claims 7 and 18 recite “trust the middleware smart contract when the second result and third data match; and”
For the purpose of the examination, “third data” in this limitation has been interpreted as the “sixth data”.
Claim 23 recites “... when executed cause the electronic device to calculates the first result ...”, it should be “calculate”.
Response to Amendment/Arguments
Claim 23 is newly added.
Regarding applicant’s arguments on Claim Rejections - 35 U.S.C. §101, the arguments have been fully considered but they are not persuasive.
It is the applicant’s position that the claims do not recite an abstract idea because “no human or legal interactions are claimed... the independent claims recite operations of an electronic device with a memory and one or more processors executing specific data-processing steps involving blockchains and a middleware smart contract.” The examiner respectfully disagrees.
The claim(s) recite(s) authenticating a third party. Specifically, the claims recite “transmitting first data associated with a first ... to a second application; receiving second data associated with a second ...from the second application; transmitting the first data to a middleware smart contract; performing a first ... function using the first data and the second data to obtain a first result; receiving third data from the middleware smart contract in response to transmission of the first data to the middleware smart contract; trusting the middleware smart contract when the first result and third data match; and generating an alert when the first result and the third data do not match.” which is “commercial or legal interactions” within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps for authenticating a third party. Accordingly, the claims recite an abstract idea.
The claim is directed to authenticate a transaction intermediary (the middleware smart contract). As Fig. 1 illustrates, App B transmits a first data to App A, App B receives a second data from App A, App B transmits the first data to the middleware smart contract, App B calculates a result B based on the first data and the second data, App B receives a result M from the middleware smart contract, App B compares the result M with the result B; the middleware smart contact can be trusted if the result M equals to the result B. Fig. 1 illustrates the interactions between App B and App A, App B and the middleware smart contract. Furthermore, “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) (see MPEP 2106.04(a)(2), subsection II). Therefore, the claim is “commercial or legal interactions” within the “certain methods of organizing human activity” grouping of abstract ideas.
The applicant further argues that “the claims recite a concrete network/security protocol, not a business practice.” because “The claimed system,... is designed to detect tampering or compromise of a remote middleware smart contract and to prevent further cross-chain transactions until trust is re-established. (Specification, para. [0060])” and “Federal Circuit has been found to be patent-eligible. (Techniques for improving malware detection or protecting the integrity of a computer system; Finjan, Inc. V. Blue Coat Systems, Inc. (2018)).” The examiner respectfully disagrees.
As described above, the claims are directed to authenticate a transaction intermediary (the middleware smart contract). Prior to let the transaction intermediary take over the transaction, the transaction intermediary must be authenticated and validated. One of ordinary skill in the art would understand that this is a standard business practice. This business practice exists long before computer was invented. Specification PGPub ¶0060 describes calculating results with various functions. This is mathematical concepts. The claims are not similar to Finjan v Blue Coat System, because the case of Finjan v Blue Coat System is clearly not applicable to the instant claims, as in Finjan v Blue Coat System where court determined that using the security profile in a particular way to enable more flexible virus filtering and greater user customization. Further, security profile enables the invention to protect the user against both previously unknown viruses and obfuscated code as compared to traditional virus scanning. The instant claims involve authenticating a transaction intermediary (the middleware smart contract).
Additionally, the applicant argues that “the claimed system provides a technological improvement in blockchain interoperability.... The claims are therefore "directed to" an improvement in computer functionality and distributed ledger technology, not to an abstract concept akin to organizing human activity. See, e.g., Enfish (claims "directed to" a specific improvement in computer capabilities are not abstract); McRO (claims reciting specific rules to achieve an improved result are not abstract); Ancora (improved computer security technique eligible).” The examiner respectfully disagrees.
As described above, the claims are directed to authenticate a transaction intermediary (the middleware smart contract). It is a business process. It is not about blockchain interoperability. It does not improve functioning of computer nor the distributed ledger technology. The claims are not in any way similar to Enfish (Enfish LLC v. Microsoft Corp) as the claims do not improve the function of the computer itself by providing increased flexibility, faster search times, and smaller memory requirements (Enfish at 1690) but merely authenticate a transaction intermediary (the middleware smart contract). The claims are not in any way similar to McRo as the claims do not make any technological improvement to any algorithm in performing improvement to animation techniques. Clearly this is simply a gratuitous citation to a case that was held as eligible when the facts clearly argue against any kind of McRo improvement. The claims clearly directed to authenticate a transaction intermediary (the middleware smart contract) which is an abstract idea. With respect to Ancora Techs., Inc. v. HTC Am., Inc 908 F.3d 1343 (Fed. Cir. 2018), this case is different from the applicant claims. According to this case “Improving security—here, against a computer’s unauthorized use of a program¬—can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem. The claimed method here specifically identifies how that functionality improvement is effectuated in an assertedly unexpected way: a structure containing a license record is stored in a particular, modifiable, non-volatile portion of the computer’s BIOS, and the structure in that memory location is used for verification by interacting with the distinct computer memory that contains the program to be verified.” However, the Applicant’s claims and specification is silent with respect to description of any technique/way to solve any specific computer problem.
It is also the applicant’s position that “the claims integrate any such concept into a practical application” because the claims provide “Meaningful limits tied to a particular machine and technical field” and “Improvements to a computer-network process (security)”, the examiner respectfully disagrees.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional element(s) of the claim(s) such as the use of blockchain, processors, memories and electronic device merely use(s) a computer as a tool to perform an abstract idea. The processors and memories are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of authenticating a transaction intermediary by calculating and comparing the results) such that it amounts no more than mere instructions to apply the exception using a generic computer components. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The applicant further argues that “the claimed combination, as discussed above, amounts to significantly more than any alleged abstract idea.” The examiner respectfully disagrees.
The claims 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 element of using blockchain, processors, memories and electronic device steps amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept.
Additionally, the applicant argues that “The claims require a particular sequence of blockchain-specific operations involving first and second blockchains, specific types of data,... This concrete protocol, combined with automated trust/alert when inconsistencies are detected, provides the requisite "inventive concept" beyond any alleged abstract idea. detected, provides the requisite "inventive concept" beyond any alleged abstract idea.” The examiner respectfully disagrees.
“a particular sequence of blockchain specific operations... specific types of data” are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The combination of elements recited in the claims simply recite the concept of authenticating a transaction intermediary (middleware smart contract). The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. The use of blockchain, processors, memories and electronic device as tools to implement the abstract idea does not render the claim patent eligible because it does not provide meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment and requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The claim is not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—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 following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 23 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Insufficient Antecedent Basis
Claim 23 recites the limitation “wherein the first data is...the handshake key and handshake algorithm using the blockchain function;” in line 5 of claim 23. There is insufficient antecedent basis for this limitation in the claim.
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 1-21 and 23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Analysis
In the instant case, claims 1-11 are directed to an apparatus, claims 12-22 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claim(s) recite(s) authenticating a third party. Specifically, the claims recite “transmitting first data associated with a first ... to a second application; receiving second data associated with a second ...from the second application; transmitting the first data to a middleware smart contract; performing a first ... function using the first data and the second data to obtain a first result; receiving third data from the middleware smart contract in response to transmission of the first data to the middleware smart contract; trusting the middleware smart contract when the first result and third data match; and generating an alert when the first result and the third data do not match.” which is “commercial or legal interactions” within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps for authenticating a third party. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional element(s) of the claim(s) such as the use of blockchain, processors, memories and electronic device merely use(s) a computer as a tool to perform an abstract idea. The processors and memories are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of authenticating a 3rd party) such that it amounts no more than mere instructions to apply the exception using a generic computer components. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims 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 element of using blockchain, processors, memories and electronic device steps amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2 and 13 describe first blockchain. Dependent claims 3 and 14 describe second blockchain. Dependent claims 4 and 15 describe middleware smart contract. Dependent claims 5-8 and 16-19 describe verifying smart contract. Dependent claims 9 and 20 describe real-world data transmission. Dependent claims 10-11 and 21 describe the first data transmission. Dependent claim 23 describes the first data and the second data. These claims further recite the abstract idea of certain methods of organizing human activity. This judicial exception is not integrated into a practical application because the additional element(s) of the claim(s) such as the use of blockchain, processors, memories and electronic device merely use(s) a computer as a tool to perform an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible.
Viewed as a whole, the combination of elements recited in the claims simply recite the concept of authenticating a 3rd party. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field.
The use of a blockchain, processors, memories and electronic device as tools to implement the abstract idea does not render the claim patent eligible because it does not provide meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment and requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea.
Allowable Subject Matter
Claims 1-21 and 23 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action. The closest prior art of record is Atomic Cross-Chain Swaps (“Herlihy et al.”). Herlihy et al. teaches transmit first data associated with a first blockchain to a second application; (Figure 6); receive second data associated with a second blockchain from the second application; (Figure 6) transmit the first data to a middleware smart contract; (Figure 6); receive third data from the middleware smart contract in response to transmission of the first data to the middleware smart contract; (Figure 6). However, the prior art does not teach perform a first blockchain function using the first data and the second data to obtain a first result; trust the middleware smart contract when the first result and third data match; and generate an alert when the first result and the third data do not match.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US20200280444A1 (“Tang et al.”) discloses a system and techniques for identity and electronic signature verification that utilizes blockchain technology. An enterprise system enables computing devices to engage the enterprise and prospective users for the purposes of executing a document or a smart contract. Users may obtain a computer application from an enterprise system and may utilize the computer application to retrieve a document or select a smart contract. The identity of all users who execute the document may be verified based on an authentication by a trusted independent system. Information related to the respective signers, the document or smart contract, and the authentication may be stored as transactions in a blockchain. The transactions may be stored in the blockchain under a user's address, a document or smart contract address, or a digital wallet, if available.
US20170265238A1 (“Li et al.”) discloses a method for establishing wireless connection. The method includes: after receiving an operation instruction of a first user, generating, by a first device, connection information according to the operation instruction, and providing the connection information to a second device near the first device, so that the second device obtains a first identifier through calculation according to a first information portion of the connection information by using a preset algorithm; receiving a first message that is sent by the second device according to the connection information, where the first message carries the first identifier; determining whether the first identifier matches a second identifier of the first device, where the second identifier is equal to or corresponds to a result that is generated through calculation according to the first information portion; if the first identifier matches the second identifier, sending a second message to the second device; and establishing a wireless connection to the second device.
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGYING ZHOU whose telephone number is (571)272-5308. The examiner can normally be reached Mon - Fri 9:00am - 5:00pm ET.
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/YINGYING ZHOU/Examiner, Art Unit 3697
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