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 Applicant’s Amendment filed June 23, 2026. Claims 1-20 are pending and under examination in this case. Claims 1-2, 4-5, 8-16, and 18 are currently amended.
Response to Arguments
Applicant’s arguments, see ARGUMENTS/REMARKS, filed June 23, 2026, with respect to the rejection of claims 8-14, as directed to a transitory signal, and in view of the current amendment of said claims, have been fully considered and are persuasive. The rejection of claims 8-14, as directed to a transitory signal, has been withdrawn.
Applicant further argues, regarding claims 1-20, as currently amended, that the claims recite statutory subject matter.
Examiner respectfully disagrees.
Applicant more specifically argues that the claims, as currently amended, do not recite an abstract idea.
Examiner respectfully disagrees.
In the instant case, 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.
Applicant’s further arguments with respect to claims 1, 8, and 15, as currently amended, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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, claims 8-14 are directed to non-transitory computer-readable medium, 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 claims are not patent eligible.
Dependent claims 2-7, 9-14, 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.
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.
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.
Claim(s) 1-5, 8-12, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Molinari et al (US 2017/0011460) in view of Shannon et al (US 2022/0414649).
Regarding claims 1, 8, and 15 –
Molinari discloses a system comprising: one or more processors; (par 9, 33)
a memory storing a first set of instructions (par 32-33), which, when executed on the one or more processors, causes the system to
configure, via the one or more services, the account associated with the cryptocurrency wallet on the blockchain network to receive the securities token, wherein the configuration comprises the one or more services causing at least one function to set one or more transfer restrictions based in part on one or more blockchain addresses and one or more identified characteristics associated with the account; (par 38) and
manage, via the one or more services, requests to transfer the securities token to a recipient account associated with a regulated transfer group, wherein the management comprises determining which of the one or more transfer restrictions apply to the regulated transfer group (par 38, 53).
Shannon discloses, as Molinari does not specifically, generate, via the one or more services, a smart contract associated with a securities token (par 140);
cause the smart contract to be deployed on a blockchain network, wherein the deployed smart contract is associated with an account associated with a cryptocurrency wallet on the blockchain network; (par 140-141)
wherein the management comprises determining a blockchain address associated with the recipient account; (par 140-141)
wherein, in accordance with the one or more transfer restrictions being met, the one or more services cause execution of a transfer function associated with the smart contract on the blockchain network to transfer the securities token to the blockchain address associated with the recipient account. (par 153).
It would be obvious to one of ordinary skill in the art to combine Molinari and Shannon, for greater transaction security and in order to better keep track of transactions.
Regarding claims 2, 9, and 16 –
Molinari discloses receiving, via the one or more services, compliance credentials associated with the account; (par 8, 25, 46) and
verifying , via the one or more services, 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 first set of instructions further causes the system to:
initiate, via the one or more services, a transfer of the securities token to the recipient account; (par 45-46)
evaluate, via the one or more services, the one or more transfer restrictions; (par 45-46) and
enforce, via the one or more services, the one or more transfer restrictions by delaying the transfer of the securities token to the recipient account until a condition associated with the one or more transfer restrictions is satisfied. (par 45-46)
Regarding claims 5 and 12 –
Molinari discloses wherein the one or more transfer restrictions comprises a maximum token balance for each of the one or more blockchain addresses associated with the account, a transfer group restriction, and a lock-in period restriction. (par 70, 101, 45-46)
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.
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 CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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