DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed 09/18/2025.
Claims 1-20 are cancelled.
Claims 21, 23, 24, 28, 29, 31, 32, 36 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 09/18/2025 have been fully considered but they are not persuasive.
Double Patenting
Applicant has amended the scope of the claims to add new matter in “generating, by the first party client device by partitioning the asset and based on a user command, at least two non-overlapping conditional assets….” Based on the new matter, the double patenting rejection is withdrawn.
101
With regard to the amendments, “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,…” 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, 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… generating,…by 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… generating,… data… 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 in product inventory and distribution 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 “replicating, to a plurality of network nodes of a blockchain by a first party client device, data representing ownership of an asset that is controlled by a first party digital wallet….” According to the disclosure(¶ 8, 65), “ replicating the cryptographically signed data representing ownership of at least one asset of a first party having a predefined monetary value stored on the first party digital wallet … It is to be understood that the notion of fuses and conditional assets for embodiments of the invention may be easily expanded to support, for example, a single fuse that controls multiple assets or to support fuses with non-Boolean discrete states (e.g., Red, Blue, Green, etc.).” The disclosure provides no support for the data or asset being “controlled” by a first party digital wallet. There is no written description for the limitation “replicating, to a plurality of network nodes of a blockchain by a first party client device, data representing ownership of an asset that is controlled by a first party digital wallet….” Dependent claims 22-28, 30-36 and 38-40 are also rejected.
Claims 21, 29 and 37 recite “generating, by the first party client device by partitioning the asset and based on a user command, at least two non-overlapping conditional assets….” 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 generated conditional assets nor the conditional assets being based on a “user command”. The partitioning or split do 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….” Dependent claims 22-28, 30-36 and 38-40 are also rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 21, 29 and 37 recite “replicating, to a plurality of network nodes of a blockchain by a first party client device, data representing ownership of an asset that is controlled by a first party digital wallet….”Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). It is unclear what the term “controlled by” in claims is used by the claim to mean. The term is indefinite because the specification does not clearly redefine the term. Dependent claims 22-28, 30-36 and 38-40 are also rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
15/145,422
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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