DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Related Application(s) – Prior Art of Record
2. The instant application is a continuation application (CON) of parent application 17/407,888 (now USPN 11,961,136). In accordance with MPEP §609.02 A.2 and §2001.06(b) (last paragraph), the prior art cited in the above parent application has been considered, and all documents cited or considered ‘of record’ in that application are considered cited or ‘of record’ in this application.
Claim Rejections - 35 USC §112
3. 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.
4. Claims 1-20 are 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.
Regarding claim 1, the recited term, “a second off-chain exchange” is introduced in the third limitation. However, the same term, “a second off-chain exchange”, is introduced again in the fifth limitation, where that same limitation also twice recites “the second off-chain exchange”. It is not clear whether the recitation of the term “a second off-chain exchange” in the fifth limitation refers back to the “second off-chain exchange” of the third limitation or to another off-chain exchange. Similarly, it is unclear in the fifth limitation that the recitation twice of “the second off-chain exchange” refers back only to the “second off-chain exchange” of the fifth limitation (whatever that is) or whether it refers back also to the “second off-chain exchange” of the third limitation.
Since claims 9 and 17 are substantially directed to the subject matter of claim 1 and therefore have the substantially same issue as claim 1, claims 9 and 17 are rejected for the grounds and rationale used to reject claim 1.
Since claims 2-8, 10-16 and 18-20 include the respective limitations of claim 1, 9 or 17 since they depend therefrom, these claims are rejected for the grounds and rationale used to reject claims 1, 9 and 17.
Appropriate correction and/or clarification of the issues in these claims is required. No new matter may be added.
Claim Rejections - 35 USC §101
5. 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.
6. Claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory patent ineligible subject matter. (See, Alice and MPEP §2106)
In sum, claims 1-20 are rejected under 35 U.S.C. §101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. (MPEP §2106)
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter) (MPEP §2106.03). Here, the claims are directed to the statutory category of a process (claims 1-8), a machine (claims 9-16) and a manufacture (claims 17-20). Therefore, we proceed to Step 2A, Prong 1. (MPEP §2106)
Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. (MPEP §2106.04) Here, the independent claims, at their core, recite the abstract idea of:
receiving, … , a data object originating from … a first end user and defining a cryptocurrency digital asset transfer between the first end user and a second end user, wherein the data object indicates a cryptocurrency digital asset and a defined number of cryptocurrency digital asset units for the cryptocurrency digital asset transfer;
retrieving, … , a first account balance data object corresponding to a first cryptocurrency digital asset user account associated with the first end user;
retrieving, … , a second account balance data object corresponding to a second cryptocurrency digital asset user account associated with the second end user;
executing, … , a first off-chain transaction to debit the defined number of cryptocurrency digital asset units from the first cryptocurrency digital asset user account associated with the first end user;
generating and transmitting, … , a transfer execution … query … identifying a second cryptocurrency digital asset user account, wherein the transfer execution … query is configured to cause the defined number of cryptocurrency digital asset units to be credited to a central operating account … via an on-chain transaction, wherein the defined number of cryptocurrency digital asset units are credited to the second cryptocurrency digital asset user account via a second off-chain transaction … ; and
subsequent to executing the first off-chain transaction to debit the defined number of cryptocurrency digital asset units from the first cryptocurrency digital asset user account,
updating, … , the first account balance data object to describe a resulting balance of the first cryptocurrency digital asset user account, and
updating, … , the second account balance data object to describe a resulting balance of the second cryptocurrency digital asset user account.
Here, the recited abstract idea falls within one or more of the three enumerated categories of patent ineligible subject matter (MPEP §2106.04), to wit: certain methods of organizing human activity, which includes sub-categories of fundamental economic practices or principles and/or commercial interactions involving sales activities or behaviors (e.g., in the claims: processing a digital asset transfer between a first end use and a second end user, including analyzing, debiting, crediting and updating account balances for the end users in accordance with the digital asset transfer).
Under Step 2A, Prong 2 the recited additional elements are evaluated to determine whether they provide an integration of the recited abstract idea into a practical application. (i.e., whether they provide a technological solution). (MPEP §2106.04) Here, the recited additional elements, such as: one or more “processor”, an “application programming interface” or “API”, one or more “client device”, one or more “off-chain exchange”, one or more memory “storage area”, and a “computer-readable storage medium” storing computer-readable program code to accomplish various functions, do not amount to an inventive concept since the claims are simply using each of these additional elements, which are recited in the claims at a high degree of generality, as a tool to carry out the recited abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, on a display device or user interface, or on another computing device listed above, and/or via software programming, where the additional elements simply perform generic computer data receipt and processing/analysis steps, data storage and communication steps, sensing steps and/or outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network. Thus, the claims do not provide an integration into a practical application.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed. (i.e., provide an inventive concept). (MPEP §2106.05) Here, the recited additional elements, identified above in the Step 2A, Prong 2 analysis, do not amount to an inventive concept since, as stated above in the Step 2A, Prong 2 analysis, the claims are simply using the additional elements as a tool to carry out the abstract idea (i.e., “apply it”) on a computer, using a memory device and/or a database, on a data or communication network, or on another computing device listed above, and/or via software programming, where the additional elements are specified at a high level of generality as simply facilitating and/or performing generic computer data receipt and processing/analysis steps, data inputting steps, data storage and communication steps, sensing steps, and/or data outputting/displaying steps such as those typically used in a general purpose computer, a computing system, a display or user interface, and/or a computer or communication network, where the additional elements are being used in the claims to simply implement the abstract idea and are not themselves being technologically improved, and therefore do not provide something “significantly more.” (See e.g., MPEP §2106.05 I.A.)
The dependent claims simply further refine and limit the abstract idea recited by the independent claims, from which these claims respectively directly or indirectly depend, where the abstract idea is described above.
Claims 2, 5, 10, 13 and 18 simply further refine the abstract idea by requiring that the data object is received in response to a certain transfer query initiated as a request by the second end user for a certain number of digital assets, or that the data object indicates a particular alternative digital asset based on a selection by the second user where the credited digital assets are of the alternative digital assets, which is simply using rules/conditions to execute and define the digital asset transfer and account balances, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 3, 11 and 19 simply further refine the abstract idea by requiring that the first and second account balance data are retrieved based on a certain time condition, which is simply the use of rules to implement account balance maintenance, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 4, 12 and 20 simply further refine the abstract idea by requiring that various alternative digital assets for transfer are identified to the second end user based on various second end user personal data, which is simply using data analysis and various rules to identify the alternative digital assets, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 6 and 14 simply further refine the abstract idea by requiring that the various account balance data is retrieved using certain encrypted data associated with the first or second end user, which is simply data analysis and data encryption being used to retrieve various account balance data, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 7 and 15 simply further refine the abstract idea by requiring that the first off-chain transaction of digital asset transfer is carried out based on asset transfer conditions, or a digital asset balance sufficiency condition, or a transaction time limit condition being satisfied, which is simply data analysis and use of rules to determine a condition, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Claims 8 and 16 simply further refine the abstract idea by requiring that the defined number of digital assets for transfer is based on a conversion rate between a fiat currency value and a value for the digital assets, which is simply the use of data analysis and rules to determine a value to transfer between the parties, and these claims do not add any element or feature that provides an integration into a practical application by providing a technological solution to a technological problem or by technologically improving any recited additional element (which is simply being used to carry out the abstract idea as a “tool” under Step 2A, Prong 2), or include any element or feature that is significantly more than the recited abstract idea (i.e., a technological inventive concept under Step 2B). (See MPEP §§2106.04, 2106.05)
Thus, neither the independent claims nor the dependent claims, viewed individually and as a whole, including consideration of all the limitations of each claim viewed both individually and in combination, add any additional element or provide any subject matter that provides a technological improvement (i.e., an integration into a practical application) that results in the claims being directed to patent eligible subject matter, nor do the claims provide something significantly more than the recited abstract idea to which the claims are directed.
Prior Art Not Relied Upon
7. The following relevant prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. (See, MPEP §707.05) The examiner considers the following reference(s) pertinent for disclosing various, but not all, features or combination of features of the claimed invention:
Bellamy et al. (US Patent Publication 2022/0067718 A1) discloses a system and various methods for performing a user transaction between a user and an entity (e.g., a financial institution) over a distributed ledger system, where there are various on-chain and off-chain transactions and activities performed that are associated with the user transaction, including updating account balances of the user.
Auerbach et al. (USPN 11,522,700 B1) discloses a system and various methods for managing a cryptocurrency exchange, including transfers of cryptocurrency assets to/from an exchange from/to users, including the use of crediting, debiting and updating account balances of users of the exchange based on the transfers.
However, these references appear to fail to disclose, at a minimum, the following claimed limitations:
retrieving, using the one or more processors and from a second off-chain exchange, a second account balance data object corresponding to a second cryptocurrency digital asset user account associated with the second end user; and
generating and transmitting, by the first off-chain exchange, a transfer execution API query to a second off-chain exchange identifying a second cryptocurrency digital asset user account, wherein the transfer execution API query is configured to cause the defined number of cryptocurrency digital asset units to be credited to a central operating account of the second off-chain exchange via an on-chain transaction, wherein the defined number of cryptocurrency digital asset units are credited to the second cryptocurrency digital asset user account via a second off-chain transaction executed by the second off-chain exchange.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph W. King whose telephone number is (571) 270 -5776. The examiner can normally be reached Mon - Thur 7 AM - 3 PM ET. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Matthew Gart, can be reached at (571) 272-3955. The examiner’s fax phone number is (571) 270-6776.
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/JOSEPH W. KING/Primary Examiner, Art Unit 3696