DETAILED ACTION
Status of Claims
Applicant has elected Group I – claims 1-9 and 11, in response to Restriction/ Election Requirement mailed 03 September 2025. Claims 1-11 are pending, wherein claim 10 is withdrawn from consideration. Applicant is requested to cancel unelected claim. Objections and rejection are recited below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application, 18/666,917, filed 17 May 2024, claims foreign priority from Japanese Application 2023-100850, filed 20 June 2023. Accordingly, this application is given priority from 20 June 2023.
Claim Interpretation
Regarding claims 1-9 and 11, clauses such as “(a third blockchain) managed by the information processing device and is issued by the first blockchain in response to a request from a user who has the first address” in representative claim 1, are merely a description of data which do not affect the method step of “detect, based on the first address included in the obtained request, a first transaction that includes the first address and a third address on a third blockchain”. Similar phrasing will be interpreted accordingly.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
USPTO personnel must consider all claim limitations when determining patentability of an invention over the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ401, 403-04 (Fed. Cir. 1983). Since a claim must be read as a whole, USPTO personnel may not disregard claim limitations comprised of printed matter. See Gulack, 703F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004). The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists. See In re Kao, 639 F.3d1057, ___, 98 USPQ2d 1799, 1811-12 (Fed. Cir. 2011); King Pharmaceuticals Inc. v. Eon Labs Inc., 616 F.3d1267, ___, 95 USPQ2d 1833, 1842 (Fed. Cir. 2010). See MPEP § 2111.05.
Claim Objections
Claim 11 is objected to because, in the limitation:
detect, based on the first address included in the obtained request, a first transaction that includes the first address and a third address on a third blockchain managed by the information processing device and is issued by the first blockchain in response to a request from a user who has the first address;
“the information processing device” appears to be a typo and should recite “the information processing program” as recited in the preamble. Also, being “managed by the information processing device and is issued by the first blockchain in response to a request from a user who has the first address” does not affect the method step of “detecting a first transaction”, the phrase “managed by …” will be given limited patentable weight.
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 1-9 and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 1-9 are directed to a “device” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of determining to associate data which is grouped under a method of organizing human activity
in prong one of step 2A (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]). Claims recite:
obtain a request that includes a first address on a first blockchain and a second address on a second blockchain and requests association of the first address with the second address;
detect, based on the first address included in the obtained request, a first transaction that includes the first address and a third address on a third blockchain managed by the information processing device and is issued by the first blockchain in response to a request from a user who has the first address;
detect, based on the second address included in the obtained request, a second transaction that includes the second address and a fourth address on the third blockchain and is issued by the second blockchain in response to a request from the user who has the second address; and
determine to associate the first address with the second address when the third address and the fourth address match, and determine not to associate the first address with the second address when the third address and the fourth address do not match based on the detected first transaction and the detected second transaction.
Accordingly, the claim recites an abstract idea (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a processor coupled to a memory represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than link the computer to the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022]), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities amount to comparing data and making calculations which are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of determining to associate data using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2-9 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
For example, claims 2-9 are silent as to “additional elements” which integrate the abstract idea into a practical application of a judicial exception, or that are sufficient to amount to significantly more than the judicial exception. They merely further describe the abstract idea of determining to associate data.
Accordingly, none of the dependent claims add a technological solution to the method of organizing human activity in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claim 11 otherwise styled as a non-transitory computer-readable recording medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Additional Comments
Regarding claims 1-9 and 11, in view of pending rejections, the Examiner is unable to locate prior art references that anticipate the claimed invention or renders it obvious.
The closest art of record is Campos et al (US Pub. No. 20240378593 A1).
Campos teaches systems, techniques, and methods directed to linking blockchain wallets via entangled parity-tokens [0001]. He teaches a user-device allowing a server to communicatively couple to a first wallet of a user with a signed transaction in blockchain network [0055]. The signed transaction may include a wallet address of a first wallet. The wallet address serves as a network identifier of first wallet in the blockchain network. The server may mint a plurality of parity-tokens to first wallet such that all individual parity-tokens in plurality of parity-tokens share a common ID [0057]. In various embodiments, minting parity-tokens comprises: (i) assigning tokens in contract to the wallet address of first wallet and (ii) broadcasting the minting transaction to the blockchain network, which may (iii) validate the transaction suitably, and (iv) add it to a blockchain of blockchain network.
In view of independent claim 1, the prior art of record does not teach:
determining to associate the first address with the second address when the third address and the fourth address match, and determine not to associate the first address with the second address when the third address and the fourth address do not match based on the detected first transaction and the detected second transaction.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Vijayan et al: “Systems And Methods For Instant NFTs And Protection Structure, Detection Of Malicious Code Within Blockchain Smart Contracts, Tokens With Transfer Limitations, Mirror Tokens And Parallel Addresses, Smart Contract Risk Scoring Method, And Cross-Device Digital Rights Management”, (US Pub. No. 20230325814 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692