DETAILED ACTION
Status of Claims
Applicant has amended claims 1-3 and 11. No claims have been added or canceled. Thus, claims 1-11 remain pending in this application, wherein claim 10 is withdrawn from consideration. 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 and amendments filed on 11 June 2026 with respect to
objection to claim 11,
rejection to claims 1-9 and 11 under U.S.C. § 101,
have been fully considered. Amendments to claims have been entered.
Examiner acknowledges amendments to claim 11 to overcome claim objection and, in turn, withdraws objection.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One contending that the claims do not recite a judicial exception [remarks page 9]. Specifically, Applicant argues that the claimed invention:
“is not a human decision-making process or a conventional business practice; rather, it is a specialized technical procedure designed to overcome the limitations of existing blockchain systems by ensuring cryptographic verification of user intent across disparate digital ledgers. Therefore, the claimed invention is not merely an abstract ‘method of organizing human activity’ but a concrete technological process”.
[remarks pages 9 and 10]. Examiner respectfully disagrees in as much as the result of the method steps is “associating data” which based on the broadest reasonable interpretation, is merely a method of performing human activity.
Applicant argues subject matter eligibility in that claims are integrated into a practical application of a judicial exception in that, inter alia, “the claimed invention here represents an improvement not merely to the abstract concept of ‘associating data”, but to the technology of cross-blockchain address verification” [remarks page 11]. Examiner respectfully disagrees in as much as the claims are recited at a high level of generality - i.e. detecting a condition based on a “signal”, and comparing data – such that the claims are not indicative of a practical application of an abstract idea.
Applicant argues subject matter eligibility under Prong Two of Step 2A in that the claimed invention here represents an improvement not merely to the abstract concept of "associating data," but to the technology of cross-blockchain address verification, citing the Ex Parte Desjardins decision [remarks page 11]. Examiner respectfully disagrees.
The Ex Parte Desjardins decision affirmed eligibility based on claimed improvements to the machine learning model itself, whereas Applicant’s claims merely recite, as stated supra, detecting a condition based on a “signal”, and comparing data – such that the claims are not indicative of a practical application of an abstract idea.
Applicant argues subject matter eligibility under Step 2B in that the ordered combination represents an unconventional and non-generic arrangement of known elements (multiple blockchains, request signals, transactions, addresses) to solve a specific technical problem in a new way [remarks pages 12 and 13], and the inventive concept lies in the specific structured interaction among three distinct blockchains to achieve trusted address verification, which is not a "well-understood, routine, conventional activity" for validating cross-blockchain address equivalency [remarks page 13]. Examiner disagrees in as much as Applicant’s claims merely recite, as stated supra, detecting a condition based on a “signal”, and comparing data.
As with determining a practical application to an abstract idea, types of limitations indicative of an inventive concept (aka “significantly more”) – subject matter eligibility under Step 2B - include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b),
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c),
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Further, limitations also indicative of an inventive concept include:
Adding a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
Examiner maintains that the claimed invention does not contain any of these “types” of aforementioned limitations.
Limitations that are not indicative of an inventive concept include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f),
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g),
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h),
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo.
Examiner maintains that the claimed invention merely appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. These conventional activities include detecting a condition based on a “signal” and comparing data.
Rejections have been clarified herein in view of the claim amendments and the current MPEP 2106 Patent Subject Matter Eligibility Requirements.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
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 and 11, in the representative limitation:
detecting, based on the first address included in the obtained request signal, a first transaction that includes the first address and a third address being an address on a third blockchain, the third blockchain being a blockchain managed by the information processing device, the first transaction being a transaction issued by the first blockchain in response to a request transmitted from a user who has the first address and the second address;
phrases such as “the third blockchain being a blockchain managed by the information processing device” and “the first transaction being a transaction issued by the first blockchain in response to a request transmitted from a user who has the first address and the second address” are not clearly claiming method steps such as “managing the third blockchain by the information processing device” and “issuing, by the first blockchain, the first transaction in response to a request transmitted from a user who has the first address and the second address” respectively. Accordingly, such phrases will be given limited patentable weight.
Specification
The following is a quotation of the first paragraph of 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.
The specification is objected to under 35 U.S.C. § 112, first paragraph, as failing to support the subject matter set forth in the claims. The specification, as originally filed, does not provide support for the invention as now claimed.
The test to be applied under the written description portion of 35 U.S.C. § 112, first paragraph, is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of later claimed subject matter. Vas-Cat, Inc. v. Mahurkar, 935 F. 2d 1555, 1565, 19 USPQ2d 111, 1118 (Fed. Cir. 1991), reh'rg denied (.Fed. Cir. July 8, 1991) and reh'rg, en banc, denied (Fed. Cir. July 29, 1991).
Claims 1 and 11 include the representative limitation:
detecting, based on the first address included in the obtained request signal, a first transaction that includes the first address and a third address being an address on a third blockchain, the third blockchain being a blockchain managed by the information processing device, the first transaction being a transaction issued by the first blockchain in response to a request transmitted from a user who has the first address and the second address;
However, the specification does not provide a written description disclosure to support a “request signal”. Examiner notes that the instant specification does discuss detecting requests throughout, but the specifics of such detection are not disclosed.
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.
Claims 1 and 11 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 11, in the representative limitation:
detecting, based on the first address included in the obtained request signal, a first transaction that includes the first address and a third address being an address on a third blockchain, the third blockchain being a blockchain managed by the information processing device, the first transaction being a transaction issued by the first blockchain in response to a request transmitted from a user who has the first address and the second address;
Examiner finds no evidence of a “request signal”. To overcome this rejection, Applicant should identify where in the specification the request signal is disclosed, or otherwise, cancel such matter from the claims.
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.
Claims 1-9 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claims 1 and 11, in the representative limitations:
detecting, based on the first address included in the obtained request signal, a first transaction that includes the first address and a third address being an address on a third blockchain, the third blockchain being a blockchain managed by the information processing device, the first transaction being a transaction issued by the first blockchain in response to a request transmitted from a user who has the first address and the second address;
and:
detecting, based on the second address included in the obtained request signal, a second transaction that includes the second address and a fourth address being an address on the third blockchain, the second transaction being a transaction issued by the second blockchain in response to a request transmitted from the user;
it is not clear if the “a request transmitted from a user” in the fist limitation is the same as, or different from “a request transmitted from the user” in the second limitations; the antecedent issues are not clear.
Moreover, the Examiner finds that because particular claims are rejected as being indefinite under 35 U.S.C. § 112(b), it is impossible to properly construe claim scope at this time (See Honeywell International Inc. v. ITC, 68 USPQ2d 1023, 1030 (Fed. Cir. 2003) “Because the claims are indefinite, the claims, by definition, cannot be construed.”). However, in accordance with MPEP § 2173.06 and the USPTO’s policy of trying to advance prosecution by providing art rejections even though the claims are indefinite, the claims are construed and the art is applied as much as practically possible.
Claims 2-9 are rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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:
obtaining … a request signal that includes a first address being an address on a first blockchain and a second address being an address on a second blockchain, the request signal indicating a request to associate the first address and the second address;
detecting, based on the first address included in the obtained request signal, a first transaction that includes the first address and a third address being an address on a third blockchain, the third blockchain being a blockchain managed by the information processing device, the first transaction being a transaction issued by the first blockchain in response to a request transmitted from a user who has the first address and the second address;
detecting, based on the second address included in the obtained request signal, a second transaction that includes the second address and a fourth address being an address on the third blockchain, the second transaction being a transaction issued by the second blockchain in response to a request transmitted from the user;
comparing the third address included in the first transaction and the fourth address included in the second transaction; and
executing, based on a comparison result obtained by the comparing, at least one of:(a) associating, based on the request signal, the first address with the second address when the comparison result indicates that the third address and the fourth address match, or(b) rejecting the request signal not to associate the first address with the second address when the comparison result indicates that the third address and the fourth address do not match
Accordingly, the claim recites an abstract idea (See MPEP 2106 Patent Subject Matter Eligibility [R-10.2019]).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-07.2022]), the additional elements of the claim such as:
a processor and a memory coupled with the processor, and
a client computer
represent the use of a computer as a tool to perform an abstract idea and do no more than generally link 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 a computerized system to the method steps corresponding to automating 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. Such functions include:
obtaining request signals,
detecting request signals,
comparing data, and
associating or rejecting a signal.
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 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.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
Dennis: “Correcting Blockchain Transactions With Cryptocurrency Type Mistakes”, (US Patent No. 11,038,685 B1).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692
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