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 .
This Office Action is in response to the Application filed March 28, 2024. Claims 1-20 are pending in this case.
Priority
This patent application claims priority to U.S. Provisional Patent Application Serial No. 63/455,205, filed on March 28, 2023, entitled "TOKEN STANDARD IMPLEMENTATION FOR TOKENIZED SECURITIES". The priority is acknowledged.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1-20 –
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-7 are directed to a system or apparatus, while claims 15-20 are direct to a method. Therefore, these claims, on their face fall within the four statutory categories of invention.
The claims recite managing transfer of assets. Specifically, the claims recite managing transfer of an asset according to certain rules and is therefore grouped within the within the “certain methods of organizing human activity”, or legal or commercial activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as the processor and electronic wallet, merely use a computer as a tool to perform an abstract idea. Specifically, the processor and electronic wallet perform the steps or functions of setting rules or restrictions and transferring assets according to those rules. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, or amount to extra solution activity, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional element(s) of using processor and electronic wallet to perform the steps amounts to no more than using a computer to automate and/or implement the abstract idea of transferring assets. As discussed above, taking the claim elements separately, the processor and electronic wallet perform the steps or functions of setting rules or restrictions and transferring assets according to those rules. These functions 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 transferring assets according to certain rules. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-7 and 16-20 further describe the abstract idea of transferring assets. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claims 8-14 are additionally rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter.
Claims 8-14 are directed to a transitory signal as it recites a "computer-readable storage media." As recited, the "computer-readable storage media" is broad enough to read on a transitory signal.
Transitory signals are defined according to the "Microsoft Press Dictionary Definition" or "IEEE Definition". According to MPEP § 2106, however, there are four categories of invention: process, machine, article of manufacture or composition of matter. Therefore, as "transitory signals" are neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter. In re Nuijten, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007) (slip. op. at 18).n the abstract idea.
Further, claims 9-14 are rejected under similar criteria as each depends from claim 8 and each recites “computer-readable storage media”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 8-12, and 15-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Molinari et al (US 2017/0011460).
Regarding claims 1, 8, and 15 –
Molinari discloses a system comprising:
one or more processors; (par 9, 33)
a memory storing a plurality of instructions (par 32-33), which, when executed on the one or more processors, causes the system to:
configure an account associated with a cryptocurrency wallet to receive a securities token, wherein the configuration comprises setting one or more transfer restrictions based in part on one or more identified characteristics associated with the account(par 38); and
manage requests to transfer the securities token to a recipient account associated with a regulated transfer group (par 38, 53).
Regarding claims 2, 9, and 16 –
Molinari discloses wherein the plurality of instructions further causes the system to:
receive compliance credentials associated with the account (par 8, 25, 46) ; and
verify the compliance credentials associated with the account (par 8, 25, 46).
Regarding claims 3, 10, and 17 –
Molinari discloses wherein the compliance credentials comprise anti-money laundering (AML) and know your customer (KYC) credentials associated with the account (par 45-46).
Regarding claims 4, 11, and 18 –
Molinari discloses wherein the plurality of instructions further causes the system to:
initiate the transfer of the securities token to the account (par 45-46);
evaluate the one or more transfer restrictions (par 45-46); and
enforce the one or more transfer restrictions. (par 45-46)
Regarding claims 5 and 12 –
Molinari discloses wherein the one or more transfer restrictions comprises a transfer group restriction and a lock-in period restriction. (par 70, 101, 45-46)
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 6-7, 13-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Molinari et al (US 2017/0011460).
Regarding claims 6, 13, and 19 -
Molinari fails to expressly disclose that the lock-in period is enforced based on a UNIX timestamp value.
However, the difference between enforcing the lock-in period based on a UNIX time=stamp value or any other value are only found in the non-functional descriptive material and are not functionally involved in the steps recited. The various steps would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Ngai, 70 USPQ2d 1862 (CAFC 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant’s invention to enforcing the lock-in period based on a UNIX time=stamp value or any other value because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Regarding claims 7, 14, and 20 -
Molinari fails to expressly disclose enforcing the lock-in period based on the regulated transfer group.
However, the difference between enforcing the lock-in period based on a regulated transfer group or any other value are only found in the non-functional descriptive material and are not functionally involved in the steps recited. The various steps would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Ngai, 70 USPQ2d 1862 (CAFC 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant’s invention to enforcing the lock-in period based on a regulated transfer group or any other value because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Winklevoss et al (US 9,892,460) disclose SYSTEMS , METHODS , AND PROGRAM PRODUCTS FOR OPERATING EXCHANGE TRADED PRODUCTS HOLDING DIGITAL MATH - BASED ASSETS.
Reddy (WO 2024/057164 A1) discloses SYSTEM AND METHOD FOR TRADING AND MANAGEMENT OF DIGITAL ASSET.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697