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 .
Acknowledgements
This Office Action is in response to the amendment received on 07/27/2026.
Claims 9 and 14-42 and 46-54 were previously canceled.
Claims 58 and 59 were newly introduced
Claims 1-8, 10-13, 43-45 and 55-59 are pending.
Claims 43-45 were withdrawn from consideration.
Claims 1-8, 10-13 and 55-59 were examined.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-13 and 55-57 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
According to MPEP 2106 II, It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. Further, MPEP 2103 I C establishes that the subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. Regarding the independent claims, claims 1 recites “ wherein input to the hash function comprises one or more altered terms of the smart contract”; “wherein the node is a member of a decentralized database that does not comprise a member of the blockchain”; “wherein the smart contract is recorded on the node by a unique contract code associated with the blockchain”, language directed to non-functional descriptive material. See MPEP 2111.05.
In the instant case, claims 1-8, 10-13 and 55-57 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
Specifically, the language of the claims that recite an abstract idea are marked in bold below:
a. “identifying, by a computer, the smart contract on a blockchain network”;b. “identifying original terms of the smart contract”;c. “generating a hash of the smart contract on a node using a hash function, wherein input to the hash function comprises one or more altered terms of the smart contract, wherein the node is a member of a decentralized database that does not comprise a member of the blockchain, wherein the smart contract is recorded on the node by a unique contract code associated with the blockchain;
d. “recording the hash on the node in association with the unique contract code such that the hash is linked to the smart contract on the blockchain.”
Therefore, the portions highlighted in bold above recite electronic recordkeeping, which is an abstract idea grouped within the mathematical concepts and mental processes grouping of abstract ideas in prong one of step 2A of the Alice/Mayo two-part test (see MPEP 2106.04). The claims are grouped within mathematical concepts because the steps recited describe generating codes and/or hashes, which represents a mathematical calculation. Additionally, the claims are also grouped within mental processes because the steps recited describe collecting information, analyzing it, and displaying (i.e. recording) certain results of the collection and analysis, which is a concept that can be performed in the human mind or by pen and paper. In situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP 2106.04 and 2106.05(II). Thus, the language identified in the mathematical concepts and mental processes groupings were considered as a single abstract idea. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the additional element(s) of the claims include: computer, processor, blockchain network, smart contract, node. Specifically, with respect to using a computer to perform the recited steps/functions, these additional elements performs the steps or functions such as: “identifying… contract…”, “identifying… terms…”, “generate… code…”, “generating… hash…”, “recording… hash…”. These additional elements are recited at a high-level of generality such that it represents no more than mere instructions to apply the exception using a generic computer component, which only serves to use computers as a tool to perform the abstract idea. Therefore, these elements do not integrate the abstract idea into a practical application because they require no more than a computer performing functions that correspond to acts required to carry out the abstract idea. 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. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea. The claims further recite the additional elements: blockchain network, smart contract, node. However, these elements merely serve to generally link the use of a judicial exception to a particular technological environment or field of use. 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. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.
With respect to step 2B of the analysis, 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 the integration of the abstract idea into a practical application, the additional computer elements, such as computer, processor, blockchain network, smart contract, node. The computer perform the steps/functions of “identifying… contract…”, “identifying… terms…”, “generate… code…”, “generating… hash…”, “recording… hash…”, , and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the abstract idea of electronic recordkeeping With respect to the remaining additional elements of a , these additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use.. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of electronic recordkeeping. Therefore, the claims are not eligible.
Dependent claims 2-8, 10-13 and 55-57 further recite the following additional language, in which elements which merely define the identified abstract idea are marked in bold below:
e) wherein the input to the hash function consists of the one or more altered terms. f) wherein the method further comprises, prior to (c), inputting an identification code for each party to the smart contract. g) wherein the method further comprises, (e) altering the original terms of the smart contract, the one or more altered terms of the smart contract, or both, and generating a new hash of the smart contract using the hash function, wherein input to the hash function comprises one or more further altered terms of the smart contract, and wherein the new hash is recorded on the node. h) wherein the input to the hash function for generating the new hash consists of the one or more further altered terms. i) wherein the method further comprises, prior to (e), inputting an identification code for each party to the smart contract.
j) wherein (e) is repeated. k) wherein the method further comprises retrieving the hash or the new hash on the node. l) wherein the hash and the new hash are pooled on the node by the unique contract code. m) wherein (c),(e), or both are performed 10,000 times or more in one second. n) wherein the new hash comprises less storage requirements than the original terms of the smart contract. o) wherein the method further comprises adding a block to the blockchain, wherein adding the block comprises retrieving the new hash of one or more previous blocks of the blockchain. p) wherein the method is initiated by a single user. q) wherein the original terms of the smart contract are altered by a single user. r) wherein the block to the blockchain is added by a single user.
s) wherein the method further comprises: e) checking the original terms on the blockchain and the hash on the node of the decentralized database; f) compiling an API response into a validation receipt; and g) receiving a request invoking a function in the smart contract via a first application programmable interface (API) call, redirecting the request to the decentralized database, and executing a corresponding function from the hash on the node as opposed to the function in the smart contract; h) initiating a validation on the blockchain network by triggering a second API call that checks for checkpoints on the blockchain network, using the decentralized database to check only the smart contract and the hash, and triggering an API response compiled into a validation receipt; Andi) validating an alteration to the smart contract by retrieving the hash from the node of the decentralized database without authenticating all blocks of the blockchain.
t) wherein the smart contract is a non-fungible token (NFT) smart contract.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. computer, processor, blockchain network, smart contract, node), the assessment of these elements under step 2A and step 2B for the dependent claims is inherited from the analysis of the independent claims and omitted for brevity, unless noted by Examiner below.
With respect to claim 2, the claim recites item e) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what an input to a hash consists of (i.e. description of the data). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 3, the claim recites item e) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing inputting a code. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 4, the claim recites item f) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing altering data and generating a new hash. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 5, the claim recites item g) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what an input to a hash consists of (i.e. description of the data). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claims 6, the claim recites item h) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing inputting/receiving data (i.e. code). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 7, the claim recites item i) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing repeating a step. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 8, the claim recites item j) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing retrieving data (i.e. hash). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 10, the claim recites item k) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what description of the data (i.e. hash/hashes). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 11, the claim recites item l) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing velocity of operations. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 12, the claim recites item m) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what a hash comprises (i.e. description of storage requirements). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 13, the claim recites item n) above, including adding a block to the blockchain, which further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. Further, it appears these elements merely serve to generally link the use of a judicial exception to a particular technological environment or field of use. 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. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 55, the claim recites item o) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to intended use by describing manner of initiating a method. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 56, the claim recites item p) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what contract terms are. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 57, the claim recites item q) above, including language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what description of the manner a block is added to a blockchain. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of electronic recordkeeping identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
Therefore, while the additional language f)-q) of dependent claims 2-8, 10-13 and 55-57, slightly modify the analysis provided with respect to independent claim 1, these additional elements/functions are insufficient to render the dependent claims eligible, as detailed above. Therefore, these dependent claims are also ineligible.
With respect to claim 58, the claim recites item s) above. The additional elements/functions integrate the abstract idea into a practical application by applying the judicial exception in some other meaningful way. Therefore, claim 58 is eligible under step 2A of the analysis, and claim 59 is eligible due to its dependency on claim 58.
Therefore, the additional language s) of dependent claims 58 significantly alter the analysis provided with respect to independent Claim 1. These additional elements/functions are sufficient to render this dependent claim eligible, as detailed above. Therefore, dependent claims 58 and 59 are 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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-8, 10, 12, 13 and 55-57 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wylie et al. (US 2021/0201318 A1) in view of Garagiola et al. (US 2020/0142891 A1).
With respect to claim 1, Wylie et al. teach a platform comprising: a processor configured to provide an application for managing alterations to a smart contract on a blockchain, the application comprising: a first software module; and a computer-implemented method of managing alterations to a smart contract of a blockchain (System and techniques for utilizing a smart contracts library) comprising:
a) identifying, by a computer, the smart contract on a blockchain network; (see paragraph [0020]; See also private blockchain 105, paragraph [0022]; Fig. 2, step 210, paragraph [0028]: “The example of FIG. 2 illustrates an example of a process 200 for creating a smart contract. A data storage may be provided that contains a smart contract library template identified by the received indication may be accessed. In the example process 200, a contract-creating computing device may access a smart contract library (210). The smart contract library may, for example, include a number of templates of different legal contracts in which each of the templates is implementable as a smart contract between respective parties in the smart contract. In addition, each template of the plurality of templates may include a number of sections having different contractual terms and conditions and fillable fields for specific contract terms. Also, each respective section of the number of sections may include programming code operable to enforce conformance with specific section-related contractual terms and conditions of the respective section and with any specific contract terms input to a fillable field of the respective section. At 215, the contract-creating computing device may receive a selection of a template of a smart contract from the plurality of templates in the smart contract library for implementation as a finalized smart contract. ...");
b) identifying original terms of the smart contract (see paragraph [0025]: “The smart contract server 147 may, for example, be operable to access a smart contract application storage 155 and provide a copy (or instance) of the smart contract configuration computer application 157 to a first user's computing device, such as computing device 101A, in response to a request from the first user's computing device 101A. The request of the copy or instance of the smart contract configuration computer application code may be received via a connection… see also paragraphs [0027]-[0029]; : Fig. 3, step 310, paragraph [0037]: “…FIG. 3 illustrates a flow chart of an example of a smart contract revision subprocess. In this example, the selected smart contract may include one or more sections that include terms and conditions that may be revised. In the example, process 300 may be a subprocess to process 200. The process 300 may enable one or more sections of the selected smart contract to be revised by inputting specific contract terms in the fillable field of the one or more sections of the selected template that has been selected to be revised (310).”; paragraph [0038]: “In the example, the contract-creating computing device may, prior to assembling all sections of the selected template, receive an updated section of the one or more sections from the contract-creating computing device (315) based on the revision to the inputted specific contract terms in the fillable field of the updated section or a specific section-related contractual terms. An identical section of the selected template may be replaced with the updated section for assembling (320).”);
c) generating a hash of the smart contract using a hash function (see Fig. 2, steps 235-245, hash value(s), paragraph [0029]: “….As an authentication measure and to preserve a version of the smart contract, a smart contract hash value may be generated (235). For example, a smart contract hash value may be generated using a value related to the programming code of the smart contract as an input into a hash function.”; see also paragraphs [0030], [0032] and [0036]).
c) wherein input to the hash function comprises one or more altered terms of the smart contract (see Fig. 4, step 450, paragraph [0050]: “In the example of FIG. 4, at 450, in response to completion of a section of the smart contract, a subsequent smart contract hash value may be generated as a subsequent transaction in the private blockchain. The subsequent smart contract hash value may be generated, for example, using a value related to the programming code of the smart contract as an input into a hash function. For example, programming code of a particular section of the smart contract may receive indications from each respective party to the smart contract regarding a term or condition of the particular section of the smart contract. In a specific example, the particular section may require a transfer and receipt of funds to satisfy the respective terms or conditions of the particular section of the smart contract. Upon the transfer and receipt of the funds, the funds transferring party, the fund recipient party, or the financial institution executing the transfer may provide inputs (e.g., hash values of amount of funds, bank account numbers, routing numbers or the like) to a subsequent transaction in the private blockchain. The subsequent transaction may be associated with the smart contract address, an address of each party of the smart contract, or the like.”).
Wylie et al. do not explicitly disclose a method and platform comprising: the hash is generated "on a node"; c) wherein the node is a member of a decentralized database that does not comprise a member of the blockchain; and d) recording the hash on the node in association with the unique contract code such that the hash is linked to the smart contract on the blockchain. While this language mostly represents non-functional descriptive material and is therefore not given patentable weight, this difference is insufficient to distinguish the claims over Wylie et al. However, in the interest of compact prosecution and assuming weight was to be given to the non-functional descriptive material recitations above, Garagiola et al. disclose a method and platform (Optimizing queries and other retrieve operations in a blockchain) comprising:
the hash is generated "on a node" (see Fig. 1, paragraph [0026]: “... if consensus is reached 111, the peer may store the transaction results in the world state portion of the blockchain 113. In the event that consensus is reached, every peer generates an index on the data based on the transaction parameters and potentially on any data generated by the execution of the smart contract operation. The peer may update the index accordingly 115. Every peer that has generated the index propagates the index to the whole network. That way, peers can compare the index in an attempt to reach consensus on the resulting index. If consensus is reached every peer stores transaction results in the world state. The peers store the index data.”; Fig. 2, node of blockchain 230, paragraph [0042]: “FIG. 2 illustrates a system messaging diagram 200 for updating a smart contract according to an approved index update according to example embodiments. Referring to FIG. 2, the system 200 may include a number of components or modules which may include software, hardware or a combination of both. The components may include a first component, such as peer nodes 210 which may identify any new transactions 212, process the data in the transactions 214 and broadcast the data to the other peers 216 for approval/consensus. The consensus approval or decisions in the positive may yield updates 218 to a second component, such as smart contracts 220 to reflect the rules and policies of the index. The approved changes may be made to the index 222 and stored in a third component, such as a blockchain 230. In a further example, an actor/entity (user, system, etc.) sends an invoke transaction to a peer node that is part of the blockchain network. This transaction triggers the execution of the smart contract operation, where an index specification is generated based on the rules specified in the smart contract and using the parameters received. The resulting specification is stored in the blockchain's world state.”; );
c) wherein the node is a member of a decentralized database that does not comprise a member of the blockchain (see paragraph [0042]: “...The approved changes may be made to the index 222 and stored in a third component, such as a blockchain 230...”; paragraph [0043]: “In one embodiment, the first component, the second component and the third component may be separate devices such as servers, computers or other computational devices... The components or devices 210, 220 and 230 may be directly connected or communicably coupled to one another, in a wired or wireless manner, and may reside locally and/or remotely.”; Examiner notes peer nodes 210 and blockchain/peer nodes 230 are recited as "separate devices".); and
d) recording the hash on the node in association with the unique contract code such that the hash is linked to the smart contract on the blockchain (see Fig. 1, paragraph [0026]: “... if consensus is reached 111, the peer may store the transaction results in the world state portion of the blockchain 113. In the event that consensus is reached, every peer generates an index on the data based on the transaction parameters and potentially on any data generated by the execution of the smart contract operation. The peer may update the index accordingly 115. Every peer that has generated the index propagates the index to the whole network. That way, peers can compare the index in an attempt to reach consensus on the resulting index. If consensus is reached every peer stores transaction results in the world state. The peers store the index data.”; Fig. 3A, step 322, paragraph [0051]: “FIG. 3A illustrates a flow diagram of an example method of managing a data index in the blockchain, according to example embodiments. Referring to FIG. 3A, the method 300 includes identifying a blockchain transaction 312, storing the blockchain transaction in a blockchain 314, assigning the blockchain transaction a transaction number and a block number 316, hashing a portion of blockchain transaction data associated with the blockchain transaction 318, and updating a blockchain index based on the hashed portion of the blockchain transaction 322.”; paragraph [0052]: “The method may also include updating the blockchain index by adding a new entry to the blockchain index that includes the hashed portion of the blockchain transaction data and a block number. A declarative language is used to specify one or more functions applied to generate an index key that includes one or more of a range of values and a masked portion of the blockchain transaction data. The method may also include broadcasting the blockchain index to a plurality of blockchain peers for consensus approval in certain instances. The one or more functions applied to generate the index key may provide a cryptographic hash function. The method may also include a subset of index entries of the blockchain index which are encrypted with a same or different cryptographic key. The method may also include storing the blockchain index in the blockchain.”; paragraph [0044]: “At a later time, a different actor/entity, which could be an external actor, a process of the same system and/or a scheduled action, triggers the execution of the generateIndex( ) operation. The specification created previously is read from the world state and deleted. Based on the data contained in this specification, an index is computed and returned. The generated index could be stored in the same blockchain as part of the world state, in an external system, or in an external blockchain.”; as an example, see paragraph [0045]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the blockchain indexing mechanism as disclosed by Garagiola et al. in the method and platform of Wylie et al., the motivation being to optimize the speed of data retrieval from a blockchain (see Garagiola et al., paragraph [0029]).
With respect to the BRI of the claims, Examiner notes that claim 1 recites “wherein input to the hash function comprises one or more altered terms of the smart contract”; “wherein the node is a member of a decentralized database that does not comprise a member of the blockchain”; “wherein the smart contract is recorded on the node by a unique contract code associated with the blockchain”, language directed to non-functional descriptive material. See MPEP 2111.05.
With respect to claim 2, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method and platform as described above with respect to claim 1. Furthermore, Garagiola et al. disclose a method and platform wherein the input to the hash function consists of the one or more altered terms (see Fig, 2, updating a smart contract, paragraph [0042] Examiner notes the update inherently comprises altered terms). Regarding the BRI of the claims, Examiner notes that claims 2 and 44 recite “wherein the input to the hash function consists of the one or more altered terms”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 3, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 1. Furthermore, Wylie et al. disclose a method wherein the method further comprises, prior to (c), inputting an identification code for each party to the smart contract (see Fig. 4, step 450, indications from each respective party, i.e. bank account numbers, paragraph [0050]: “In the example of FIG. 4, at 450, in response to completion of a section of the smart contract, a subsequent smart contract hash value may be generated as a subsequent transaction in the private blockchain. The subsequent smart contract hash value may be generated, for example, using a value related to the programming code of the smart contract as an input into a hash function. For example, programming code of a particular section of the smart contract may receive indications from each respective party to the smart contract regarding a term or condition of the particular section of the smart contract. In a specific example, the particular section may require a transfer and receipt of funds to satisfy the respective terms or conditions of the particular section of the smart contract. Upon the transfer and receipt of the funds, the funds transferring party, the fund recipient party, or the financial institution executing the transfer may provide inputs (e.g., hash values of amount of funds, bank account numbers, routing numbers or the like) to a subsequent transaction in the private blockchain. The subsequent transaction may be associated with the smart contract address, an address of each party of the smart contract, or the like.”). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 4, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 1. Furthermore, Wylie et al. disclose a method wherein the method further comprises, (e) altering the original terms of the smart contract, the one or more altered terms of the smart contract, or both, and generating a new hash of the smart contract using the hash function, wherein input to the hash function comprises one or more further altered terms of the smart contract, and wherein the new hash is recorded on the node (see paragraph [0048]; paragraph [0049]: “The completion of respective sections of the smart contract may be monitored by one or more processes. For example, the smart contract may be set as a state machine, where there are variables keeping track of progress. For instance, if one is trying to enter into a home loan contract, there are several stages involved here, including: finding a home, getting prequalified, signing contract with a seller, loan origination/providing identity and income verification, title company paperwork, and loan company servicing. The smart contract may be operable to monitor a user's progress through all of the above stages. There may be programming code that implements stipulations in each section of the contract related to the above stages, and the implemented stipulations may look for signatures to be provided, or assets to be transferred into a digital wallet belonging to the smart contract. In addition, different functions may be called in order to perform an action on the smart contract. For example, one or more of the functions may pertain to one specific step but may be operable to ensure that all the steps before the specific step have been successfully fulfilled and that any related subsequent steps or future steps have not been completed already (unless the smart contract allows steps to be performed out of order or the like). For example, each time a function is called, the function may be operable to validate a status of a respective section of the smart contract (and possibly other sections). In response to the respective section being successfully completed, other functions related to this particular section and previous sections may be blocked from executing again if so desired by the users. For example, a master controller may also run functions periodically on the smart contract in order to enact mechanisms that should happen monthly or on some periodic basis (e.g., notification of an upcoming payment due date, or the like).”). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 5, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. Furthermore, Garagiola et al. disclose a method wherein the input to the hash function for generating the new hash consists of the one or more further altered terms (see paragraph [0045]: “Using the declarative syntax, a smart contract developer may indicate how data and which data will be used to generate the index. An example provides a smart contract which is created to declare an updateCreditScore( ) operation. In this example, the smart contract is deployed (installed) to a blockchain network. When an entity (user, system, etc.) submits a transaction to trigger the execution of the updateCreditScore( ) operation, the code of the operation uses the index specification to generate ‘indexSpec’ that will be used to compute the index at a later step. In this particular case, by using the predefined rules, the result may yield taking the last four numbers of the social security number, normalizing the credit score to one of the following ranges: 0 to 100, 101 to 300 or 301 to 600, and populating the phone number with blanks. This data is stored in the world state by the updateCreditScore( ) code. Later, the generateIndex( ) operation is invoked, this operation reads the world state to recover the indexSpec data generated previously and then computes an index by using one of the options, such as imperfect hash functions, bloom filters, zkSnarks, etc. The generated index data includes a hash on the data and the block number where the transaction is contained. This index data could be stored in the same blockchain, as part of the world state, in an external structure or even in an external blockchain. Every time the updateCreditScore( ) operation is invoke the flow described previously takes place, updating the whole index by appending new entries”). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 6, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method and platform as described above with respect to claim 4. Furthermore, Wylie et al. disclose a method and platform wherein the method further comprises, prior to (e), inputting an identification code for each party to the smart contract (see Fig. 4, step 450, indications from each respective party, i.e. bank account numbers, paragraph [0050]: “In the example of FIG. 4, at 450, in response to completion of a section of the smart contract, a subsequent smart contract hash value may be generated as a subsequent transaction in the private blockchain. The subsequent smart contract hash value may be generated, for example, using a value related to the programming code of the smart contract as an input into a hash function. For example, programming code of a particular section of the smart contract may receive indications from each respective party to the smart contract regarding a term or condition of the particular section of the smart contract. In a specific example, the particular section may require a transfer and receipt of funds to satisfy the respective terms or conditions of the particular section of the smart contract. Upon the transfer and receipt of the funds, the funds transferring party, the fund recipient party, or the financial institution executing the transfer may provide inputs (e.g., hash values of amount of funds, bank account numbers, routing numbers or the like) to a subsequent transaction in the private blockchain. The subsequent transaction may be associated with the smart contract address, an address of each party of the smart contract, or the like.”). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 7, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. Furthermore, Garagiola et al. disclose a method wherein (e) is repeated (see paragraph [0044]: “At a later time, a different actor/entity, which could be an external actor, a process of the same system and/or a scheduled action, triggers the execution of the generateIndex( ) operation. The specification created previously is read from the world state and deleted. Based on the data contained in this specification, an index is computed and returned. The generated index could be stored in the same blockchain as part of the world state, in an external system, or in an external blockchain.”; as an example, see paragraph [0045].). Regarding the BRI of the claim, Examiner notes that claim 7 is a method claim and recites “wherein (e) is repeated...”, language directed to not positively recited method steps. Further, Examiner notes claim 7 is directed to repeating a functions disclosed in claim 1. "Mere duplication of parts has no patentable significance unless new and unexpected result is produced " See In re Harza, 124 USPQ 378 (CCPA 1960). Therefore, claim 7 is also rendered obvious based on the rejection disclosed in conjunction with the functions recited in claim 1 and repeated in claim 7). Regarding the BRI of the claim, Examiner further notes that claim 7 is a method claim and recites “wherein (d) is repeated...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 8, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. Furthermore, Garagiola et al. disclose a method wherein the method further comprises retrieving the hash or the new hash on the node (see paragraph [0050]: “The index key is referring to a unique identifier used to lookup inside the index table to find the which blocks can contain a specific value. In one example, if a user is searching for transactions with a social security number ending in 1111, then the value 1111 needs to be hashed hash(1111)=790, and that value is then used to look inside the index and retrieve the blocks where the transactions could be found, in this specific example, block 7 and block 516. The search could be described as having the operations which include user C wanting to find transactions which social security number ending in 1111, user C's user device hashes the value 1111, by performing hash(1111)=790. Using the hashed value, the user device accesses the entry with key (identifier) 790 from the index table. User C accesses the content of the entry and finds out that transactions with social security numbers ending in 1111 can be found at blocks 7 and 20. Instead of searching the entire blockchain of transactions to find the ones with social security number ending in 1111, the searcher just needs to access the transactions stored in block 7 and block 20, reducing the time required to solve this particular query.”;). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 10, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 9. Furthermore, Garagiola et al. disclose a method wherein the hash and the new hash are pooled on the node by the unique contract code (see paragraph [0050]: “The index key is referring to a unique identifier used to lookup inside the index table to find the which blocks can contain a specific value. In one example, if a user is searching for transactions with a social security number ending in 1111, then the value 1111 needs to be hashed hash(1111)=790, and that value is then used to look inside the index and retrieve the blocks where the transactions could be found, in this specific example, block 7 and block 516. The search could be described as having the operations which include user C wanting to find transactions which social security number ending in 1111, user C's user device hashes the value 1111, by performing hash(1111)=790. Using the hashed value, the user device accesses the entry with key (identifier) 790 from the index table. User C accesses the content of the entry and finds out that transactions with social security numbers ending in 1111 can be found at blocks 7 and 20. Instead of searching the entire blockchain of transactions to find the ones with social security number ending in 1111, the searcher just needs to access the transactions stored in block 7 and block 20, reducing the time required to solve this particular query.”;). Regarding the BRI of the claim, Examiner notes that claim 10 is a method claim and recites “wherein the hash and the new hash are pooled on the node by the unique contract code...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 12, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. Furthermore, Garagiola et al. disclose a method wherein the new hash comprises less storage requirements than the original terms of the smart contract (see paragraph [0037]: “The index structure could be defined as a record with an identifier for value X and a list of blocks that could contain the value X. For example, Hash(X)=Block1, Block3, Block10, Block22, . . . . The index could be used to return a smaller set of data on which the “X” value would be found. It may contain enough information to access directly to the block containing the “X” value. The structure described previously accommodates for both options. In the case of option 1, not all the listed blocks will contain the ‘X’ value but at least one of the blocks will. For the second option, only blocks containing the X value will appear in the list. Hash(X) is a function that takes the value X and returns a binary representation of it. This representation could be unique or not. One example for the hash function could be a Bloom Filter.”;). Regarding the BRI of the claim, Examiner notes that claim 12 recites “wherein the new hash comprises less storage requirements than the original terms of the smart contract”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 13, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. Furthermore, Garagiola et al. disclose a method wherein the method further comprises adding a block to the blockchain, wherein adding the block comprises retrieving the new hash of one or more previous blocks of the blockchain (see paragraph [0052]: “The method may also include updating the blockchain index by adding a new entry to the blockchain index that includes the hashed portion of the blockchain transaction data and a block number. A declarative language is used to specify one or more functions applied to generate an index key that includes one or more of a range of values and a masked portion of the blockchain transaction data. The method may also include broadcasting the blockchain index to a plurality of blockchain peers for consensus approval in certain instances. The one or more functions applied to generate the index key may provide a cryptographic hash function. The method may also include a subset of index entries of the blockchain index which are encrypted with a same or different cryptographic key. The method may also include storing the blockchain index in the blockchain.”;). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 55, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 1. Furthermore, Wylie et al. disclose a method wherein the method is initiated by a single user (see Fig. 2, step 220, paragraph [0029]: “At 220, a private cryptographic key may be obtained. The private cryptographic key may be assigned to a first user of the contract-creating computing device…"). Regarding the BRI of the claim, Examiner notes that claim 55 recites “wherein the method is initiated by a single user.”, language directed to non-functional descriptive material. Lastly, claim 55 is a method claim and recites “wherein the method is initiated by a single user...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 56, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. Furthermore, Wylie et al. disclose a method wherein the original terms of the smart contract are altered by a single user (see Fig. 2, step 220, paragraph [0029]: “At 220, a private cryptographic key may be obtained. The private cryptographic key may be assigned to a first user of the contract-creating computing device. The private cryptographic key is associated with a public cryptographic key. A first user address associated with the contract-creating computing device in a private blockchain may be generated (225). The first user address is based on the private cryptographic key and is associated with the first user in the private blockchain. A smart contract address may be generated, at 230, for the finalized smart contract using the first user address and a nonce value. As an authentication measure and to preserve a version of the smart contract, a smart contract hash value may be generated (235). For example, a smart contract hash value may be generated using a value related to the programming code of the smart contract as an input into a hash function.”). Regarding the BRI of the claim, Examiner notes that claim 56 is a method claim and recites “wherein the original terms of the smart contract are altered by a single user...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 57, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 13. Furthermore, Wylie et al. disclose a method wherein the block to the blockchain is added by a single user (see Fig. 2, step 240, paragraph [0031]: “At 240, the smart contract hash value may be stored as a transaction in the private blockchain. In an example, the transaction may be associated with the smart contract hash value and the first user address in the private blockchain.”). Regarding the BRI of the claim, Examiner notes that claim 57 is a method claim and recites “wherein the block to the blockchain is added by a single user...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Wylie et al. (US 2021/0201318 A1), in view of Garagiola et al. (US 2020/0142891 A1), in view of Sowell et al. (US 2019/0318327 A1)
With respect to claim 11, the combination of Wylie et al. and Garagiola et al. teaches all the subject matter of the method as described above with respect to claim 4. The combination of Wylie et al. and Garagiola et al. does not explicitly teach a method wherein (c),(e), or both are performed 10,000 times or more in one second. However, Sowell et al. discloses a method (Systems, methods, and computer programs for using a blockchain marketplace) wherein (c),(e), or both are performed 10,000 times or more in one second (see paragraph [0032]: “In one embodiment, the one or more nodes may be manually managed, for example, through manual interaction of a miner and/or developer. Alternatively, the one or more nodes may be automatically optimized and/or actions automatically taken. For example, if electricity rates for a particular node increased, the blockchain marketplace may automatically allocate the hashing power for the associated blockchain offer to another node. Such automatic action may be based on pre-determined thresholds and/or criteria inputted by the developer and/or miner. In another embodiment, an approval and/or authorization must be received by the developer and/or miner before the automatic action is implemented by the blockchain marketplace.”; paragraph [0036]: “The blockchain marketplace 202 may enable an environment where pricing is based off blockchain offers (as dictated, e.g., by providers 204 and/or developers 206) rather than being set by an external source (such as the centralized blockchain marketplace). Such a marketplace would provide therefore a real market (subject to supply/demand type constraints) for blockchains, including private blockchains. For example, the marketplace may include any number of different private blockchains offering pay for processing power. Such an offer may be set at a price dictated by providers, developers, users, and/or miners of the blockchain market. A first company may offer $50/MH for three years where another company may offer $48/MH for the same period. As such, a natural environment may be established for the exchange of offers relating to blockchains.”; Examiner notes a MH/s equals one million hashes per second.).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the pre-allocated amount of available resources for each of the one or more nodes, the pre-allocated amount of available resources including hashing power as disclosed by Sowell et al. in the method of Wylie et al. and Garagiola et al., the motivation being to allocate specific resources (e.g. hashing power) for blockchain use, improving the overall efficiency of using hardware and integrated circuits for mining blockchain technology (see Sowell et al., paragraphs [0004]; [0006] and [0012]).
Regarding the BRI of the claim, Examiner notes that claim 11 is a method claim and recites “wherein (c), (de), or both are performed 10,000 times or more in one second...”, language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Prior Art Analysis
Claims 58 and 59 are objected to as being dependent upon a rejected base claim, but appear to be allowable if rewritten in independent form including all of the limitations of the base claim. The prior art of record does not appear to reasonably disclose the subject matter of claim 58 in addition to the subject matter of independent claim 1. Particularly, steps f)-i), in combination with steps a)-e) were not found in the prior art. Examiner notes that further search and consideration will be required upon presentation of the rewritten claims. Claim 59 would also be allowable upon allowance of claim 58, due to its dependency.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments/Amendments
Election by original presentation
Applicant’s arguments (see remarks filed on 07/27/2026, pages 7-9) with respect to the withdrawal of claims 43-45 is acknowledged. It appears Applicant overlooks a significant distinction between independent claims 1 and 43. In claim 1, step d) is directed to “recording the hash on the node in association with the unique contract code such that the hash is linked to the smart contract on the blockchain”, while in claim 43 this function is omitted. In addition, claim 43 recites function c) of “generate a unique contract code for the smart contract” in addition to functions performed by a second software module, i.e. “pool the one or more hashes by the unique contract codes for the one or more smart contracts whereby the generated hash is recorded on the node in association with the unique contract code such that the hash is linked to the smart contract on the blockchain.” Therefore, Examiner is still in the position that those embodiments represent inventions that are independent or distinct and there would be a serious search and examination burden if restriction were not required because of the reasons listed in the previous office action. At least reason (c) applies to the current claims, as the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries). In view of the above, the serious search burden was clearly established. The requirement is still deemed proper and is therefore made FINAL.
Claim rejections - 35 USC § 101
Applicant’s amendments and arguments (see remarks filed on 07/27/2026, pages 10-15), with respect to the rejection of claims 1-8, 10-13 and 55-57 under 35 USC § 101 as being directed to an abstract idea have been fully considered but are not persuasive. With respect to claim 1, Applicant asserts “The claims reflect this improvement.” (see pages 10-12). Examiner respectfully disagrees. A method claim is defined by a series of specific, ordered steps (actions or steps) rather than physical structure. Therefore, it appears Applicant places undue weight to the language “wherein the node is a member of a decentralized database that does not comprise a member of the blockchain” in the method claim, as this language merely describes what a “node” is. In addition, the language “wherein the smart contract is recorded on the node by a unique contract code associated with the blockchain” is directed to a not positively recited method step. Therefore, Examiner is unpersuaded that patentable weight should be given to these limitations. Examiner reminds Applicant that claim 1 does not require the step of “recording a smart contract”, but rather describes what a smart contract “is”. Given the BRI of the claims, Examiner is unpersuaded that the independent claim reflects any improvements recited in the specification as filed. Under BRI, the steps recited in claim 1 are performed by "a computer” (i.e. a generic computer). Therefore, Examiner is unpersuaded by Applicant's arguments that the claim amendments represent an improvement to technology or computer. Further, Applicant is in the position that “The Examiner committed a legal error in classifying the structural network topology limitation ("wherein the node is a member of a decentralized database that does not comprise a member of the blockchain") as non-functional descriptive material under MPEP 2111.05.” Examiner respectfully disagrees. As discussed above, a method claim is defined by a series of specific, ordered steps (actions or steps) rather than physical structure. Applicant further asserts “This limitation defines a specific, structural network topology, a two-tier architecture separating the blockchain from an off- chain database, not the informational content of data. This structural limitation must be given patentable weight.” Examiner respectfully disagrees, especially in the context of a process claim.
Applicant further asserts “Examiner addresses the technological improvement mentioned in paragraph [0035] but does not address the technological improvement mentioned in paragraph [0017], which was mentioned in the prior response. For the reasons stated above, Applicant submits that the recited steps provide the technological improvement mentioned in paragraph [0017].” Paragraph [0017] states:
[017] To improve the current inefficient and non-scalable system, an NFT addendum, also known as a smart contract addendum, can be employed. A platform comprising of a decentralized database that can be used to keep track of only the changes, rather than the complete blockchain. Instead of tracking and authenticating one block at a time, the platform easily accesses only the versioning (also referred to as hash) of changes in a new block via the records of the decentralized database for authentication. This introduces energy efficiency to blockchain marketplaces. The addendum not only improves transactions in NFT marketplaces, but also improves other blockchain transactions that are token-based. In some instances, token-based transactions may comprise cryptocurrency (e.g., Bitcoin, Ethereum, Litecoin, Cardano, Chainlink, etc.).
Examiner is in the position that the description of such “platform” is not reflected in the method claims. The claims do not encompass a “smart contract addendum” Method claim 1, is directed to a method comprising the steps of “identifying a smart contract…; identifying…terms; generating… hash” and “recording…hash”, which squarely fall into the abstract idea of electronic recordkeeping as indicated in the rejection above.
Applicant further asserts “Claiming the novel architecture that produces the benefit is sufficient for Step 2A Prong 2.” However, such “architecture” is not found in independent method claim 1, as the BRI of the claim does not encompass such structural elements.
With respect to newly introduced claims 58 and 59, Examiner is persuaded by Applicant’s arguments and therefore these claims are not rejected under 35 U.S.C. § 101 by virtue of the combination of the subject matter of claims 1 and 58. Claim 59 is eligible due to its dependency on claim 58, therefore while claims 1-8, 10-13 and 55-57 are rejected under 35 USC § 101, as they do not offer significantly more than the abstract idea itself, claims 58 and 59 are deemed eligible.
Claim rejections - 35 USC § 112(b)
Applicant’s amendments and arguments (see remarks filed on 07/27/2026, pages 9 and 10), with respect to the rejection of claim 11 under 35 USC § 112(b) have been fully considered and are persuasive, therefore the rejection was withdrawn.
Claim rejections - 35 USC § 103
Applicant’s amendments and arguments (see remarks filed on 07/27/2026, pages 16-17), with respect to the rejection of claims 1-8, 10-13 and 55-57 under 35 USC § 103 have been fully considered. Examiner respectfully disagrees with Applicant’s arguments regarding Independent claim 1. A method claim is defined by a series of specific, ordered steps (actions or steps) rather than physical structure. Therefore, it appears Applicant places undue weight to the language “wherein the node is a member of a decentralized database that does not comprise a member of the blockchain” in the method claim. As indicated in the rejection, this language merely describes a “node”. Even if weight should be given to this language, the language recites the node as a member of “a decentralized database” and that this “decentralized database” does not comprise a member of the blockchain. In other words, the broadest reasonable interpretation of the claims recite the member being a member of a database and that this database do not comprise members of the blockchain, i.e. does not store such members. Secondly, It appears Applicants artificially narrows this language to be directed as being equivalent of the node not being a member of the blockchain. Examiner, however, disagrees with this interpretation in view of the BRI of the claims. Therefore, Examiner is unpersuaded that the current references are insufficient to render the claimed invention obvious to one of ordinary skill in the art and therefore the rejections under 35 U.S.C. § 103 were maintained.
With respect to Applicant’s arguments directed to newly introduced claim 58, Examiner is persuaded by Applicant’s arguments in view of the newly introduced language in addition to the subject matter of claim 1 in view of the prior art of record, as indicated above. Therefore, those claims are objected to as being dependent upon a rejected base claim (Independent claim 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Literature
Kass (US 2020/0076625 A1) discloses high precision timestamps in blockchain, including sending a hash to a timestamp authority (TSA) to be time stamped.
Non-Patent Literature
Dua et al. (NPL 2020, listed in PTO-892 as page 1, reference "U") disclose Trustful: A Decentralized Public Key Infrastructure and Identity Management System, including a transactions and interactions manager responsible for all interactions with a smart contract and for doing all logic computations. It interacts with the smart contract using the Web3 API and with IPFS and PGP using respective utility modules.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
