DETAILED ACTION
The present application, filed on 3/19/2024 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 10/14/2025.
a. Claims 1, 8, 10, 17-19, 21, 26, 27 are amended
Overall, Claims 1-27 are pending and have been considered below.
Information Disclosure Statement (IDS)
The information disclosure statement (IDS) submitted on 10/14/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, such IDS is being considered by Examiner.
Claim Rejections - 35 USC § 101
35 USC 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-27 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-9 are directed to a computer implemented method, claims 10-18 are directed to a system, and claims 19-27 are directed to computer executable instructions stored on a non-transitory storage medium.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
[INDEPENDENT CLAIMS]
Per Step 2A.1. Independent claim 1, (which is representative of independent claims 10, 19) is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 1 (which is representative of independent claims 10, 19) recite an abstract idea, shown in bold below:
[A] A system for accessing an asset comprising: one or more memories; and at least one processor coupled to the one or more memories, …
[B] acquiring an asset identifier for one or more second systems, via at least one processor, based on a corresponding asset identifier for a first system; and
[C] wherein the asset identifier for the one or more second systems includes a domain name of the one or more second systems and the corresponding asset identifier for the first system includes a domain name of the first system, and
[D] wherein the first system and the one or more second systems are each one of an on-chain system and an off-chain system and the first system is of a different type than each of the one or more second systems
[E] linking, via the processor, the corresponding asset identifier for the first system and the asset identifier for the one or more second systems to enable access of an asset of the corresponding asset identifier on the first system using the asset identifier for the one or more second systems by setting a record stored on the first system for the domain name of the first system to include the domain name of the one or more second systems.
[F] accessing, via the at least one processor, an asset of the domain name of the one or more second systems using the domain name of the first system linked to the domain name of the one or more second systems.
Independent claim 1 (which is representative of independent claims 10, 19) recites: linking the asset identifier for the first system with that for the second system ([E]) and accessing an asset from the second system using the domain name of the first system ([F]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “using asset domain names from one system to access assets in a different system and vice versa.”.
This is a combination that, under its broadest reasonable interpretation, covers reasonable performance of limitations expressing observation, evaluation, in the human mind. Nothing in the claim elements precludes the steps from being practically performed in the human mind. For instance, a human can have a cross index (index translator) which allows to find assets based on foreign addresses/domain names. These limitations fall under the Mental Processes, i.e., Concepts Performed in the Human Mind grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that independent claim 1 (which is representative of independent claims 10, 19) recites an abstract idea that represents a judicial exception.
[INDEPENDENT CLAIMS – ADDITIONAL STEPS]
The additional steps in the independent claims, shown not bolded above, recite: acquiring an asset identifier ([B]). When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is concluded that these claim elements do not integrate the identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) into a practical application (see MPEP 2106.05(f)(2)).
[INDEPENDENT CLAIMS – QUALIFIERS]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the added elements “via a processor,” “via at least one processor” recite computing elements at a high level of generality, generally linking the use of a judicial exception to a particular technological environment (see MPEP 2106.05(h)), or merely using a computer as a tool to perform an abstract idea (MPEP 2106.05(f)).
Further, the qualifiers “wherein the asset identifier for the one or more second systems includes a domain name of the one or more second systems and the corresponding asset identifier for the first system includes a domain name of the first system”; “wherein the first system and the one or more second systems are each one of an on-chain system and an off-chain system and the first system is of a different type than each of the one or more second systems” as applied to the asset identifier, and to the first system, are nothing more than (a) descriptive limitations of claim elements, such as describing the nature, structure and/or content of other claim elements, or (b) general links to the computing environment, which amount to instructions to “apply it,” or equivalent (MPEP 2106.05(f)).
These qualifiers of the independent claims do not preclude from carrying out the identified abstract idea “using asset domain names from one system to access assets in a different system and vice versa.”, and do not serve to integrate the identified abstract idea into a practical application.
[INDEPENDENT CLAIMS – ADDITIONAL STEPS]
The additional steps in the independent claims, shown not bolded above, recite: acquiring an asset identifier for one or more second systems, via at least one processor, based on a corresponding asset identifier for a first system ([B]). When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is concluded that these claim elements do not integrate the identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) into a practical application (see MPEP 2106.05(f)(2)).
Therefore, the additional claim elements of independent claim 1 (which is representative of independent claims 10, 19) do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Independent claim 1 (which is representative of claims independent 10, 19) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 10, 19 are deemed ineligible.
[DEPENDENT CLAIMS]
Dependent claim 7, which is representative of dependent claims 16, 25, recites:
[A] acquiring an alternative asset identifier for a second system in response to the asset identifier being unavailable on the second system, wherein the alternative asset identifier partially matches the corresponding asset identifier.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “using asset domain names from one system to access assets in a different system and vice versa.”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”).
Therefore, dependent claim 7 (which is representative of dependent claims 16, 25) is deemed ineligible.
Dependent claim 8, which is representative of dependent claims 17, 26, recites:
[A] accessing, via the at least one processor, an asset of the domain name of the first system using the domain name of the one or more second systems linked to the domain name of the first system.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “receiving or transmitting data over a network, e.g., using the Internet to gather or provide data”. The elements in this dependent claim are comparable to “storing and retrieving information in/from memory”, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) into a practical application (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”).
Therefore, dependent claim 8 (which is representative of dependent claims 17, 26) is deemed ineligible.
Dependent claim 9, which is representative of dependent claims 18, 27, recites:
[A] storing an indication of the on-chain domain name in a Domain Name System (DNS) record for the off-chain domain name; and
[B] conducting a transaction for the on-chain system using the off-chain domain name by retrieving the on-chain domain name from the Domain Name System (DNS) record for the off-chain domain name.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “using asset domain names from one system to access assets in a different system and vice versa.”. The elements in this dependent claim are comparable to receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is reasonable to conclude that these claim elements do not integrate the identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”).
Therefore, dependent claim 9 (which is representative of dependent claims 18, 27) is deemed ineligible.
Dependent claims 2-6, which are representative of dependent claims 11-15, 20-24, respectively, recite:
wherein the first system includes an off-chain system and the corresponding asset identifier includes an off-chain domain name, and
wherein the one or more second systems each include an on-chain system and the asset identifier includes an on-chain domain name corresponding to the off-chain domain name.
wherein the on-chain system includes a blockchain and the on-chain domain name includes a blockchain domain name, and
wherein the off-chain system includes a Domain Name System (DNS) and the off-chain domain name includes a Domain Name System (DNS) domain name.
wherein the one or more second systems include a plurality of second systems.
wherein the first system includes an on-chain system and the corresponding asset identifier includes an on-chain domain name, and
wherein a second system includes an off-chain system and the asset identifier includes an off-chain domain name corresponding to the on-chain domain name.
wherein the on-chain system includes a blockchain and the on-chain domain name includes a blockchain domain name, and
wherein the off-chain system includes a Domain Name System (DNS) and the off-chain domain name includes a Domain Name System (DNS) domain name.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements – the first system; the second system; the off-chain system – and as such, cannot change the nature of the identified abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 2-6, which are representative of dependent claims 11-15, 20-24, respectively are deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claims of the instant application, considered individually, or as a as a whole, as an ordered combination, do not amount to significantly more (see MPEP 2106.07(a)II).
In sum, Claims 1-27 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20230245080 A1 ANDERSON; Michael Convergent Consensus Method for Distributed Ledger Transaction Processing - A computer system and computer-implemented method for efficiently achieving convergent consensus in a distributed network of nodes that maintains a decentralised database or ledger with immutable data storage. Via transactions, client nodes request updates to the ledger that are verified by a set of peer nodes to achieve a new agreed consensus across the whole network. The process involves a Belief Merge Function and a State Transition Function that rapidly converge to consensus. The convergence method uses peers' “proof of stake” to avoid the high cost of “proof of work” alternatives that have unsustainable energy requirements. Embodiments of the system have a capacity for tens of thousands of transactions per second.
US 20200005282 A1 Kim; Peter Jihoon WALLET RECOVERY METHOD - Systems and methods for blockchain wallet recovery, including: receiving a wallet recovery request from a user; sending a signed recovery transaction to the wallet, the signed recovery transaction comprising recovery instructions; and providing wallet access to the user, according to the recovery instructions, when a recovery condition is met. In examples, the recovery transaction is signed by a recovery key, different from a set of old wallet owner keys, that is associated with the wallet; the recovery instructions include new owner address(es) associated with a set of new owner keys; and providing wallet access includes activating the new owner addresses for the wallet after the recovery transaction is verified as signed by the recovery key.
US 20210182314 A1 HANCOCK; Walter J. SYSTEMS AND METHODS FOR ON-CHAIN / OFF-CHAIN STORAGE USING A CRYPTOGRAPHIC BLOCKCHAIN - A data management method includes performing a CRUD function on data in accordance with a received data envelope and with respect to a database, and storing a hash value on a block of a blockchain, wherein the hash value indicates a location of the data in a permanent storage.
US 20230385822 A1 SHANMUGAM; Saravana Perumal et al. METHOD AND SYSTEM FOR PROCESSING AN ASSET SWAP ACROSS TWO BLOCKCHAINS - A swap check oracle receives a transfer request from a user or smart contract on a first blockchain indicating a first digital asset to be transferred. The swap check oracle verifies the authenticity of the user and/or digital asset and instructs the smart contract to transfer the first digital asset to a custodial blockchain address on the first blockchain. Another swap check oracle performs the same process for a second digital asset from a second user on a second blockchain. A central processing server is notified of the successful transfer of the digital assets to the custodial addresses on both blockchains, verifies the holding of the digital assets by the custodial addresses, and then initiates a release of the digital assets to the new parties on both of the blockchains.
US 20210110386 A1 Meyer; Jonas et al. SYSTEM AND METHOD FOR UNIVERSAL ASSET TOKENS - System and method for creating, buying, and selling universal asset tokens that represent one or more assets. There is a need in the computer networking field to create new and useful systems and methods for managing assets using blockchains. This disclosure provides such new and useful systems and methods.
US 20050256881 A1 Harrison, Mark et al. Method and system for distributed serverless file management - A method for serverless data management includes receiving an asset identifier in a first system, receiving data associated with the asset identifier in the first system, determining a resource in a storage network for storage of the asset data, in response to a path algorithm and the asset identifier, wherein the determination is made substantially free of interaction with the storage network, storing the asset data on the resource, creating a link between the asset identifier and the resource in the first system, receiving the asset identifier in a second system, determining the storage resource where the asset data is stored, in response to the path algorithm and the asset identifier, wherein the determination is made substantially free of interaction with the storage network and the first system, and creating a link between the asset identifier and the resource in the second computer system.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions. Further, Applicant is of the opinion that the prior art fails to teach Applicant’s invention.
Examiner respectfully disagrees with the former remark.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “Linking domain names across different systems by setting records on those different systems indicating the domain name from the other system, and accessing an asset of a domain name of a system using the linked domain name of the other system are clearly not directed to a mental process and do not fall into any of the above subject matter groupings of abstract ideas (mathematical concepts, methods of organizing human activity, and mental processes). Accordingly, since the claims do not fall into any of the above subject matter groupings of abstract ideas, the claims are not directed to a judicial exception, and are considered to comply with 35 U.S.C. §101.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant Office Action has determined that elements of the independent claim(s) are directed to an abstract idea (“using asset domain names from one system to access assets in a different system and vice versa.”), that can be characterized as “cross indexing.” A human can have a cross index (index translator) which allows to find assets based on foreign addresses/domain names.
Therefore, it is concluded that elements of the independent claim(s) can be performed in the human mind, which corresponds to one of the abstract ideas grouping, as defined in MPEP 2106.04.
Thus, the rejection is proper and has been maintained.
Applicant submits “However, even if the claims can somehow be construed to recite a judicial exception that falls within the above subject matter groupings, the claims integrate the judicial exception into a practical application to render the claims statutory.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “Further, present invention embodiments provide enhanced manners of accessing an asset, and enable use of asset identifiers (and access of corresponding assets) across different networks (e.g., DNS and blockchain, etc.).”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See responses here above.
Thus, the rejection is proper and has been maintained.
Applicant submits “In addition, present invention embodiments enable transactions using any of the corresponding off-chain and on-chain identifiers or domain names, thereby providing new functionality to an identifier of a network that are absent on that network (e.g., send cryptocurrency to a Web2 domain name, access/perform transactions on blockchains with domain names of other blockchains, etc.)”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See responses here above.
Thus, the rejection is proper and has been maintained.
Applicant submits “Thus, the claimed features clearly improve technical fields ( or functioning of a computer) with respect to cross-network functionality and access capabilities.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See responses here above.
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
The rejection is withdrawn, as a result of the amendments. The identified prior art does not disclose:
wherein the asset identifier for the one or more second systems includes a domain name of the one or more second systems and the corresponding asset identifier for the first system includes a domain name of the first system, and wherein the first system and the one or more second systems are each one of an on-chain system and an off-chain system and the first system is of a different type than each of the one or more second systems;
linking, via the at least one processor, the asset identifier for the one or more second systems to the corresponding asset identifier for the first system by setting a record stored on the one or more second systems for the domain name of the one or more second systems to include the domain name of the first system;
Examiner has reviewed and considered all of Applicant’s remarks. The rejection is maintained, necessitated by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Radu Andrei/
Primary Examiner, AU 3698