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 March 17, 2026. Claims 1-3, 5-9, and 21-25, are pending in this case. Claims 10-20 were previously canceled via preliminary amendment. Claim 4 is currently canceled. Claims 1-3, 6-9, 21, and 23-25 are currently amended.
Response to Arguments
Applicant argues that the claims recite statutory subject matter, specifically an improvement to the functioning of a computer as in Enfish.
Examiner respectfully disagrees.
In the instant case, the claims are not similar to Enfish (Enfish LLC v. Microsoft Corp) as the claims do not improve the function of the computer itself by providing “increased flexibility, faster search times, and smaller memory requirements” (Enfish at 1690) but merely serves as receiving a document, storing the document, minting a token by hashing properties of the document into a token, storing the token, hashing the token, storing the hash, and hashing the hash to create a higher level hash. 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.
Applicant further argues, regarding claim 21, as currently amended, that nothing in the cited references teaches, discloses or suggests a dictionary of hashes stored in the lower-tier container including hashes of the tokens stored in the respective lower-tier container, wherein the dictionary of hashes in the lower-tier container verifies the plurality of tokens within the lower-tier container.
Examiner respectfully disagrees.
Casebolt teaches a dictionary of hashes stored in the lower-tier container including hashes of the tokens stored in the respective lower-tier container, wherein the dictionary of hashes in the lower-tier container verifies the plurality of tokens within the lower-tier container. See, e.g., par 31-32 “ . . . Hash trees such as a Merkle tree permit quick and efficient verification of data contained within large datasets, such as transactions and blocks of transactions.” Note that a Sparse Merkle tree for a key-value store, is also known as LSM tree in a Rust Library.
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 1-3, 5-9, and 21-25 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 1-3 and 5-9 are directed to a method, and claims 21-25 and directed to a non-transitory storage medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite receiving a document, storing the document, minting a token by hashing properties of the document into a token, storing the token, hashing the token, storing the hash, and hashing the hash to create a higher level hash, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04(a)(2)). In other words, the claims are directed to commercial or legal interactions because they describe a process for preserving the integrity of transactions. Accordingly, the claims recite an abstract idea (MPEP 2106.04(a)(2), also See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (MPEP 2106.05), the additional elements of the claims such as a processor, memory, network, network interface, computing system, merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the processor, blockchain, network, computing system, perform the steps or functions of the preserving the integrity of transactions. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment 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, 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 (MPEP 2106.05 (f) & (h)) the additional element(s) of using a processor, memory, network, network interface, computing system to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of preserving the integrity of a transaction.
As discussed above, taking the claim elements separately, the a processor, memory, network, network interface, computing system perform the steps or functions of preserving the integrity of a transaction. These functions correspond to the actions required to perform the abstract idea. 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 2-3, 5-9 and 21-25 further describe the abstract idea of preserving the integrity of a transaction.
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.
Claims 1, 2, 5, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Casebolt (US 2017/0255912) in view of Kikinis (US 2020/0219045) and in view of Shah (US 2005/0137969).
Regarding claims 1 and 21 –
Casebolt discloses a method implemented on a computing system having one or more processors, an object memory configured in a cryptographic standard, a database, and a network interface configured to connect to a network (par 30), the method comprising:
receiving, by the system, at least one document, from a computing device associated with a user; (fig2, par 31-32)
wherein the token is stored in a target object in a lowest tier of a cryptographic hierarchy in the object memory and separate from the database, wherein the target object is associated with the asset and a type of links to the document in the database; (par 31-32)
wherein the transaction hash is stored in a lower level verification structure in the target object, wherein the lower level verification structure verifies all objects within the target object; (par 31-32) and
wherein the higher level hash is stored in a higher level verification structure in a higher level container on a higher tier than the target object, wherein the higher level verification structure verifies all objects within the higher level container including the target object. (par 25,32)
Shah discloses, as Casebolt does not, and in analogous art, storing the document in the database; (par 39-43), hashing the token to generate a transaction hash. (par 48-50)
It would be obvious to one of ordinary skill in the art to combine Shah with Casebolt for a more economical use of computer/network resources.
Kikinis discloses, wherein the documents are regarding a real estate asset (par 180)
minting, in the cryptographic standard, a token including a hashing properties of the document and a location of the document in the database, (par 64-65);
hashing, in the cryptographic standard, at least one of the token, an identifier of the token, timestamp of the minting, a creator of the token, and the link to the document by the token, to generate a transaction hash. (par 64-65)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Regarding claim 2 –
Kikinis discloses wherein the information is a digital document containing a transaction or new information about the real estate asset, and wherein the transaction hash is a hash of the byte structure of the digital document. (par 180)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Regarding claim 5 –
Casebolt discloses wherein the cryptographic hierarchy contains at least three tiers. (fig2, par 31-32)
Claims 3, 6-9, and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Casebolt (US 2017/0255912) in view of Kikinis (US 2020/0219045) and in view of Shah (US 2005/0137969) and further in view of McKenzie et al (US 2021/0248653)
Casebolt in view of Kikinis and Shah discloses as above
Regarding claims 3 and 23 -
MacKenzie discloses, wherein the hashings use a SHA-2 hash function. (par 32, 33)
It would be obvious to one of ordinary skill in the art to combine the various level containers of Casebolt and the hash protocols of McKenzie for a more economical use of network resources, while better organizing data.
Regarding claims 6 and 22 –
McKenzie discloses wherein the cryptographic protocol includes the ERC protocol, wherein the target object is an ERC-1155 object storing multiple tokens, and wherein the token is an ERC-721 token. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocols and tokens of McKenzie with Casebolt in order to obtain greater security while achieving a more economical use of network resources, while better organizing data.
Regarding claim 7 –
McKenzie discloses providing, from the system to the computing device associated with the user, a URL pointing to a webpage displaying the properties and the transaction hash.( par 32)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Regarding claim 8 –
McKenzie discloses repeating the method a plurality of times each for a different user so as to create a plurality of the tokens each for a different piece of information regarding the real estate asset, wherein each of the transaction hashes are stored together in the lower level verification structure. (par 25, 32)
It would be obvious to one of ordinary skill in the art to combine Casebolt and McKenzie for a more economical use of network resources, while better organizing data.
Regarding claim 9 –
Kikinis discloses verifying authenticity of the plurality of tokens by decrypting and comparing the lower level verification structure against the properties of the information. par 64).
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Regarding claim 22 –
Casebolt discloses a blockchain manager instructing the processor to operate in the a protocol, and instructions, that when executed by the processor cause the processor to,
provide an interface to a user to receive the document; (fig2, par 31-32) and
determine a lower-tier container for the token, wherein the token is an ERC- 721 token. fig2,par 31-32).
McKenzie discloses ERC-721 protocol tokens. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Regarding claim 24 –
Kikinis discloses wherein the top-tier container stores lower-tier containers each associated with a different real estate asset, and wherein the lower-tier containers are each associated with a single real estate asset, and wherein the lower-tier containers each store only tokens for the respective real estate asset. (par 180)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
McKenzie discloses, as Casebolt and Kikinis do not, ERC-721 tokens. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Regarding claim 25 –
Kikinis discloses wherein the documents include sales, leases, taxation, and government permitting. (par 180)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Conclusion
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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