DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 04/20/2026.
Claims 1-20 are cancelled.
Claims 21, 29, and 37 are amended.
Claims 21-40 are pending.
Claims 21-40 have been examined.
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 .
Response to Arguments
Applicant's arguments filed 04/20/2026 have been fully considered but they are not persuasive.
Double Patenting
Applicant has amended the scope of the claims to add new matter in “partitioning the asset and based on a user command, the asset….” Based on the new matter not supported by the disclosure, and with no Applicant provided evidence of disclosure support for the amended claims, the double patenting rejection is reinstated.
101
Applicant argues “Applicant submits that the claims recite a practical application under step 2A- Prong 2 because the claims are directed to a novel and non-obvious way for partitioning assets (e.g., generating timed assets) on a blockchain network. That is, the claims enable generation and representation of mutually exclusive, non-overlapping time- or condition-dependent ownership states for an asset on a blockchain network.” Examiner disagrees.
First, there is no disclosure support for generating or partitioning these assets. Secondly, the transfer of ownership describes a real world abstract idea of rentals. The asset is allowed to be rented for a duration of time and then transferred to the next customer for rent for a duration of time. The blockchain is used as a storage mean. Information is transferred to the node and blockchain. The subject matter is abstract.
”With regard to the amendments, “partitioning, by the first party client device and based on a user command, the asset into at least two non- overlapping conditional assets comprising a first conditional asset and second conditional asset…” is not an additional element. According to the disclosure(¶ 43-45, 60-62, 67, 73-75), “That aspect may be analogized to conservation of mass, in that value cannot be generated out of something that does not exist, such that a traditional asset, such as $100, that is partitioned or split on a time axis is split in such a way that the resulting complementary assets may be merged back to that same $100 traditional asset … given an asset A, the owner of the asset may partition that asset into two or more timed assets (TA) for embodiments of the invention, each of which timed assets has a start-time and an expiration time. One of such timed assets may exist, for example, from now to an expiration time T, [now, T), and another of such timed assets may exist from time T onward, [T, ∞), as represented by the function A→TA[now, T), TA[T, ∞)… Thus, one of the conditional assets 412 may be the $1,500 on condition that an event does not occur (i.e., fuse “F” set to “False”) transferred by the first party to the second party, and the other conditional asset 414 may be the $1,500 on condition that the event does occur (i.e. fuse “F” set to “True”) retained by the first party.” It appears the partitioning or split does not create or generate assets, there are conditional terms that are added for the original asset, which is not itself changed nor new assets generated. The conditional assets, for example, appear to work like loaning a library book or a rental, the book being the asset and the partition being the time of the loan. When the time expires another patron can have access to the book, similar also to car rentals. The claims are drawn to an abstract idea. The rejection is maintained.
112
Due to Applicant’s amendments, prior 112 rejections are withdrawn.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (101 Analysis: Step 1). Even if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea) (101 Analysis: Step 2a(Prong 1), and if so, Identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluate those additional elements to determine whether they integrate the exception into a practical application of the exception. (101 Analysis: Step 2a (Prong 2). If additional elements does not integrate the exception into a practical application of the exception, claim still requires an evaluation of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception. If the claim as a whole amounts to significantly more than the exception itself (there is an inventive concept in the claim), the claim is eligible. If the claim as a whole does not amount to significantly more (there is no inventive concept in the claim), the claim is ineligible. (101 Analysis: Step 2b).
The 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter: a) Mathematical concepts b) Certain methods of organizing human activity and c) Mental processes
Analysis
In the instant case, claim 21 is directed to a method, claim 29 and 37 are directed to an article of manufacture.
Step 2a.1– Identifying an Abstract Idea
The claims recite the steps of “ replicating… data… partitioning… asset… and transmitting… data….” The recited limitations fall within the certain methods of organizing human activity grouping of abstract ideas, specifically, fundamental economic principles in loaning assets. Accordingly, the claims recites an abstract idea.
See MPEP 2106.
Step 2a.2 – Identifying a Practical Application
The claim does not currently recite any additional elements or combination of additional elements that integrate the judicial exception into a practical application. The use of a distributed ledger or blockchain does not preclude the claim from reciting an abstract idea as the blockchain recites functions of a generic computer component, such as storing records.
According to the disclosure(¶ 43-45, 60-62, 67, 73-75), “That aspect may be analogized to conservation of mass, in that value cannot be generated out of something that does not exist, such that a traditional asset, such as $100, that is partitioned or split on a time axis is split in such a way that the resulting complementary assets may be merged back to that same $100 traditional asset … given an asset A, the owner of the asset may partition that asset into two or more timed assets (TA) for embodiments of the invention, each of which timed assets has a start-time and an expiration time. One of such timed assets may exist, for example, from now to an expiration time T, [now, T), and another of such timed assets may exist from time T onward, [T, ∞), as represented by the function A→TA[now, T), TA[T, ∞)… Thus, one of the conditional assets 412 may be the $1,500 on condition that an event does not occur (i.e., fuse “F” set to “False”) transferred by the first party to the second party, and the other conditional asset 414 may be the $1,500 on condition that the event does occur (i.e. fuse “F” set to “True”) retained by the first party.” It appears the partitioning or split does not create or generate assets, there are conditional terms that are added for the original asset, which is not itself changed nor new assets generated. The conditional assets, for example, appear to work like loaning a library book, the book being the asset and the partition being the time of the loan. When the time expires another patron can have access to the book.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Mere instructions to apply the exception using generic computer components and limitations to a particular field of use or technological environment do not amount to practical applications. The claim in directed to an abstract idea.
Step 2b
The claim limitations recite “ replicating… data… partitioning … asset… and transmitting… data….” are not additional elements and they amount to no more than mere instructions to apply the exception using a generic computer component. For the same reason these elements are not sufficient to provide an inventive concept. This is also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs, court decision cited in MPEP 2106.05(d)(II) indicates that mere receipt or transmission of data over a network is a well-understood, routine and conventional function when it is claimed in a merely generic manner, as it is here. Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim and thus the claim is not eligible.
Viewed as a whole, instructions/method claims recite the concept of a fundamental economic practice as performed by a generic computer. The claims do not currently recite any additional elements or combination of additional elements that amount to significantly more than the judicial exception. The elements used to perform the claimed judicial exception amount to no more than mere instructions to implement the abstract idea in a network, and/or merely uses a network as a tool to perform an abstract idea and/or generally linking the use of the judicial exception to a particular environment.
Claims 22-28, 30-36 and 38-40 provide descriptive language surrounding the abstract idea. As such, these elements do not provide the significantly more to the underlying abstract idea necessary to render the invention patentable.
The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Therefore, based on case law precedent, the claims are claiming subject matter similar to concepts already identified by the courts as dealing with abstract ideas. See Alice Corp. Pty. Ltd., 573 U.S. 208 (citing Bilski v. Kappos, 561, U.S. 593, 611 (2010)).
The claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. See Alice Corp. Pty. Ltd., 573 U.S. 208. Mere instructions to apply the exception using a generic computer component and limitations to a particular field of use or technological environment cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. 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(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Conclusion
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to another technology or technical filed; the claim does not amount to an improvement to the functioning of a computer system itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Dependent claims do not resolve the deficiency of independent claims and accordingly stand rejected under 35 USC 101 based on the same rationale.
Dependent claims 22-28, 30-36 and 38-40 are also rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 21, 29 and 37 recite “partitioning, by the first party client device and based on a user command, the asset into at least two non- overlapping conditional assets comprising a first conditional asset and second conditional asset… wherein one or more of the plurality of network nodes generate the at least two non-overlapping conditional assets by writing the cryptographically signed data to the blockchain.” Also recited in claims 24 and 32, “wherein generating two non- overlapping timed assets further comprises…” and claims 28 and 36, “wherein generating the at least two non-overlapping conditional assets of the first party further comprises a partition by the first party…” According to the disclosure(¶ 43-45, 60-62, 67, 73-75), “That aspect may be analogized to conservation of mass, in that value cannot be generated out of something that does not exist, such that a traditional asset, such as $100, that is partitioned or split on a time axis is split in such a way that the resulting complementary assets may be merged back to that same $100 traditional asset … given an asset A, the owner of the asset may partition that asset into two or more timed assets (TA) for embodiments of the invention, each of which timed assets has a start-time and an expiration time. One of such timed assets may exist, for example, from now to an expiration time T, [now, T), and another of such timed assets may exist from time T onward, [T, ∞), as represented by the function A→TA[now, T), TA[T, ∞)… Thus, one of the conditional assets 412 may be the $1,500 on condition that an event does not occur (i.e., fuse “F” set to “False”) transferred by the first party to the second party, and the other conditional asset 414 may be the $1,500 on condition that the event does occur (i.e. fuse “F” set to “True”) retained by the first party.” The disclosure does not provide for partitioning, by the first party client device and/or the partitioning being based on a user command nor for nodes that generate any assets. There is no written description for the limitation “partitioning, by the first party client device and based on a user command, the asset into at least two non- overlapping conditional assets comprising a first conditional asset and second conditional asset… wherein one or more of the plurality of network nodes generate the at least two non-overlapping conditional assets by writing the cryptographically signed data to the blockchain.” Additionally, partitioning or split does not create or generate assets, there are conditional events for the original asset. There is no written description for the limitation “generating, by the first party client device by partitioning the asset and based on a user command, at least two non-overlapping conditional assets comprising a first conditional asset and second conditional asset… wherein one or more of the plurality of network nodes generate the at least two non-overlapping conditional assets by writing the cryptographically signed data to the blockchain.” Dependent claims 22-28, 30-36 and 38-40 are also rejected.
Claim Rejections - 35 USC § 103
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.
Claim(s) 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Needham et al. (US10095549) (“Needham”), and further in view of Andrade (US 20180240107) (“Andrade”).
Regarding claims 21, 29 and 37, Needham discloses replicating, to a plurality of network nodes of a blockchain by a first party client device, data representing ownership of an asset associated with a first party (Figure 6; column 12, line 54-67, column 13, line 1-27, column 16, line 56-67, column 17, line 1-17, column 19, line 1-67, column 30, line 63-67, column 31, line 1-13, column 32, line 55-67, column 33, line 1-24);
Needham - the event driven function 640 a may use the virtual computing service's API to push a notification message to a defined push notification service 670 to send individual messages or to fan-out messages to large numbers of recipients, such as to alert approver 615 b and/or other appropriate entities to the effect that object 620 has been written to virtual computing bucket 630 a… In action 711, if approver/ customer 715 b, 715 n, and/or 715 c decides to allow object 720 to pass through the workflow 700, they invoke event driven function 740 b via an internet web page command line interface (CLI) and/or software development kit (SDK) interface which in turn calls the virtual computing service API, with an “approve” message including the key to object 720 in virtual computing buckets 730 b… The maintainers may be those entities in the ownership transfer service, such as a law firm, a solicitor, a notary, a bank, insurance entity, a management company, receivers, an appointed arbiter, and/or a consortium thereof of the ownership transfer service The event driven function 740 c may then make a record (in data warehouse 750 as per action 707, or elsewhere as configured) of the fact that object 720's passage through the workflow 700 has been approved and the write to virtual computing bucket 730 c that may be the output of virtual computing bucket 730 b. Once object 720 has been deleted from virtual computing buckets 730 c, the action 713 may end. (column 12, line 54-67, column 13, line 1-27, column 19, line 1-67)
partitioning, by the first party client device and based on a user command, the asset into at least two non- overlapping conditional assets comprising a first conditional asset and second conditional asset, wherein the first conditional asset expires upon an occurrence of a condition and the second conditional asset becomes effective upon the occurrence of the condition, and wherein the first conditional asset is used by a first party after the asset is partitioned and before the condition occurs and the second conditional asset is used by a second party after the condition occurs; and (column 4, line 1-20, column 5, line 1-65, column 6, line 1-67, column 7, line 1-25, column 10, line 10-67, column 11, line 1-16, column 28, line 38-61, column 33, line 14-67; Claim 17)
Needham - Access to the computing resources may be terminated upon one or more triggering events from the pre-defined set of triggers which initiate the workflows. In one aspect, the pre-defined set of triggers may be a vote amongst the controlling and transferring customers, an expiration of a predetermined period of time, a financial event (e.g. payment of money through service provider environment or another payment service), loading of legal documents, and/or events outlined or defined within a third party ownership transfer account agreement. The access to the computing resources may also be terminated upon expiration of another predetermined time period… The transfer of control from each of the controlling and transferring customers 120 to just one of the controlling and transferring customers or a receiving customer may be permanent or temporary (e.g., a transfer may have a timed based expiry before reverting back to the controlling customers 110 or “multi-party control” via the ownership account transfer service). These limitations may be set in the rules or the workflow/rules engine 130. For example, the allocation may mean handing over permanent control of the items of value, such as the computing resources 120, and then transferring the items of value back to the originating customer accounts. In addition, for receiving accounts, a new transfer may be submitted to the ownership account transfer service and a new ownership account transfer service construct may then be put in place … Upon the expiration of a predetermined time, such as, for example, upon the expiration of 20 minutes, the exclusive control may revert back to the ownership account transfer service 20 in the service provider environment 205 with the controlling and transferring customers 210 resuming exclusive control over the computing resources 220. (column 4, line 1-20, column 5, line 59-65, column 6, line 1-20, column 7, line 1-25).
transmitting, by the first party client device, cryptographically signed data comprising the at least two non-overlapping conditional assets to one or more of the plurality of network nodes, wherein one or more of the plurality of network nodes generate the at least two non-overlapping conditional assets by writing the cryptographically signed data to the blockchain (Figure 4; column 10, line 10-67, column 11, line 1-16, column 12, line 16-41, column 13, line 35-63, column 14, line 9-67, column 15, line 1-22, column 16, line 1-38, column 23, line 50-61, column 28, line 38-61, column 33, line 14-67; Claim 17)
Needham - In one aspect, a write operation may be performed by an application programming interface (API) of the virtual computing environment, which may constrain a set of authenticated customers authorized to write objects to the virtual computing bucket 630 and require that write operations be cryptographically signed with a secret access key of the virtual computing bucket 630 via a policy in a security and authentication system. The virtual computing bucket 630 may not be owned by the same account as customer 615 a, who is the submitter. That is, a property of the bucket 630 is that a customer 615 in an account other than the account which owns the buckets 630 can make writes to the bucket 630 if appropriate permissions on the bucket 630 are in place… which wraps the copy of object 620 in a cryptographically-strong timestamp signed with a nominated pre-stored key in the HSM 680 and returns the wrapped copy of object 620 to computing instance 660… In one aspect, Internet-based records service 890 provides a web interface to a bitcoin like blockchain, where the blockchain may be a highly-distributed, highly-resilient mechanism of a record for bitcoin transactions. (column 12, line 16-29, column 13, line 35-43, column 23, line 50-61).
Needham does not disclose digital wallet.
Andrade teaches digital wallet (Abstract; ¶ 317, 319, 272, 354)
Andrade - If the credential submitted by the client wallet to the central approval servers (401) is valid (220, 409) and that requested transaction is not considered as suspicious according to predefined criteria (501, 502), it gets the signature from the client wallet (i.e., the client private key) (308) and the signatures (i.e., the approval private key(s)) (406, 411) from one of the central approval servers to approve the transaction (410, 412)… only a registered user with his/her legal identity stored in the database can transfer any coins from his/her wallet addresses to other wallet addresses upon submission of a valid credential. (¶ 317, 319)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Needham and Andrade in order to provide verification for cryptography based transactions (Andrade; ¶ 2-4).
Regarding claims 22, 30 and 38, Needham discloses wherein the cryptographically signed data further represents a transfer of the ownership of the second conditional asset to the second party (column 12, line 16-41, column 13, line 35-63, column 14, line 9-67, column 15, line 1-22, column 16, line 1-38, column 23, line 50-61).
Regarding claims 23 and 31, Needham discloses wherein replicating the data representing the ownership of the asset further comprises replicating the data having a predefined monetary value to a plurality of other party on other party client devices, including at least one second party on a second party client device that is associated with a plurality of other party network nodes (column 12, line 54-67, column 13, line 1-27, column 16, line 56-67, column 17, line 1-17, column 19, line 1-67, column 30, line 63-67, column 31, line 1-13, column 32, line 55-67, column 33, line 1-24). Andrade teaches digital wallet (Abstract; ¶ 317, 319, 272, 354). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Needham and Andrade in order to provide verification for cryptography based transactions (Andrade; ¶ 2-4).
Regarding claims 24 and 32, Needham discloses wherein generating two non- overlapping timed assets further comprises receiving an entry of cryptographically signed data on the first party representing the asset into two non-overlapping complementary assets of the first party and a transfer of the ownership of one of the two non-overlapping complementary assets to the second party (column 4, line 1-20, column 5, line 1-65, column 6, line 1-67, column 7, line 1-25, column 10, line 10-67, column 11, line 1-16, column 28, line 38-61, column 33, line 14-67; Claim 17). Andrade teaches digital wallet (Abstract; ¶ 317, 319, 272, 354). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Needham and Andrade in order to provide verification for cryptography based transactions (Andrade; ¶ 2-4).
Regarding claims 25, 33 and 39, Needham discloses wherein the cryptographically signed data on the first party represents a partition by the first party of the asset of the first party into a first complementary timed asset of the first party valid for a first predetermined period of time and a second complementary timed asset of the first party valid for a second non- overlapping predetermined period of time (Figure 4; column 10, line 10-67, column 11, line 1-16, column 12, line 16-41, column 13, line 35-63, column 14, line 9-67, column 15, line 1-22, column 16, line 1-38, column 23, line 50-61, column 28, line 38-61, column 33, line 14-67; Claim 17). Andrade teaches digital wallet (Abstract; ¶ 317, 319, 272, 354). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Needham and Andrade in order to provide verification for cryptography based transactions (Andrade; ¶ 2-4).
Regarding claims 26, 34 and 40, Needham discloses wherein the second non- overlapping predetermined period of time commences at an expiration of the first predetermined period of time and transfer of the ownership of the second complementary timed asset of the first party to the second party commences at the expiration of the first predetermined period of time (column 4, line 1-20, column 5, line 1-65, column 6, line 1-67, column 7, line 1-25, column 10, line 10-67, column 11, line 1-16, column 28, line 38-61, column 33, line 14-67; Claim 17).
Regarding claims 27 and 35, Needham discloses wherein the cryptographically signed data on one of the first party digital wallet and a second party represents a merging of a first non-overlapping asset with a second non-overlapping asset into an equivalent of the asset (column 4, line 1-20, column 5, line 1-65, column 6, line 1-67, column 7, line 1-25, column 10, line 10-67, column 11, line 1-16, column 28, line 38-61, column 33, line 14-67; Claim 17). Andrade teaches digital wallet (Abstract; ¶ 317, 319, 272, 354). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Needham and Andrade in order to provide verification for cryptography based transactions (Andrade; ¶ 2-4).
Regarding claims 28 and 36, Needham discloses wherein generating the at least two non-overlapping conditional assets of the first party further comprises a partition by the first party of the asset of the first party on a non-value conditional axis into a first non-overlapping asset valid only for a first entity-owner of the first conditional asset, a second non-overlapping asset valid only for a second entity-owner, and a switch or fuse with predetermined parameters validating the ownership of one of the first non-overlapping asset and the second non-overlapping asset and nullifying the ownership of an invalid conditional asset of the first non- overlapping asset and the second non-overlapping asset (column 4, line 1-20, column 5, line 1-65, column 6, line 1-67, column 7, line 1-25, column 10, line 10-67, column 11, line 1-16, column 12, line 16-41, column 13, line 35-63, column 14, line 9-67, column 15, line 1-22, column 16, line 1-38, column 23, line 50-61, column 28, line 38-61, column 33, line 14-67).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schanen (US9152453) teaches ownership transfer after expiration of duration.
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/ILSE I IMMANUEL/Primary Examiner, Art Unit 3699
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