DETAILED ACTION
Status of Claims
Claims 1, 5, and 18 have been amended.
Claims 1-21 are currently pending and have been considered by the examiner.
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
101 Rejection:
Applicant’s arguments have been considered and have been deemed unpersuasive based upon the rationale provided in the following 101 Rejection.
Prior Art Rejection:
Applicant’s arguments have been considered and are moot in view of new grounds for rejection.
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 1-21 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, claim 1-7 are directed towards a method, claims 15-21 are directed to a system/apparatus, and claim 8-14 are directed towards a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites the following:
A computer-implemented method for execution of user operations in chain networks, comprising:
receiving, by a trusted signing service that is executed in an off-chain network, a user operation;
signing, by the trusted signing service, the user operation to provide a signed user operation, the signed user operation comprising a signature that is at least partially generated using an address within a chain network;
receiving, by a paymaster that is executed in a chain network, a call to verify, the call comprising at least a signature of the signed user operation; and
verifying, by the paymaster within the chain network, that the signature of the signed user is valid by determining a recovered address from the signature using an Ethereum Virtual Machine (EVM) ecrecover cryptographic primitive and determining that the recovered address is the same as the address configured within the paymaster;
in response to determining that the signature of the signed user operation is valid, providing, by the paymaster and to an entrypoint that is executed in the chain network, a response to the call indicating that the paymaster is verified, the user operation being executed in the chain network at least partially in response to determining that the signature of the signed user operation is valid and computational transaction fees incurred by the execution are settled directly by the entrypoint utilizing a pre-allocated native cryptocurrency deposit maintained by the paymaster on the entrypoint without native token conversion transactions by an account initiating the user operation..
Regarding Step 2A Prong One, the claims recite the abstract idea of performing a mental process. Specifically, the claims recite the limitations underlined above which recite steps directed towards method steps which can reasonably be performed by the human mind using a pen and/or paper which is grouped within the Mental Processes grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP § 2106.04) because the claims involve the process of performing method steps which can reasonably be performed by the human mind using a pen and/or paper. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
Regarding Step 2A Prong Two, the recited abstract idea is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP § 2106.04(d)), the additional element(s) of the claim(s) such as a “computer”, “chain network”, “off-chain network” and other nonunderlined elements merely use(s) a computer as a tool to perform an abstract idea. Specifically, the “computer”, “chain network”, or “off-chain network” and other nonunderlined elements perform(s) the steps or functions underlined above. The use of a processor/computer as a tool to implement the abstract idea 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 claim(s) 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 (See MPEP § 2106.05), the additional element(s) of a “computer”, “chain network”, or “off-chain network” and other nonunderlined elements amounts to no more than using a computer or processor to automate and/or implement the abstract idea. As discussed above, taking the claim elements separately, the “computer”, “chain network”, or “off-chain network” and other nonunderlined elements perform(s) the steps or functions underlined above. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite risk mitigation. 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(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-7, 9-14, and 16-21 further describe the recited abstract idea. 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. Specifically:
Claims 2, 9, and 16 merely further describes a method step directed towards the recited mental process.
Claims 3, 10, and 17 merely further describes the contents of the signature generated by the recited mental process.
Claims 4, 6, 11, 13, 18, and 20 are directed towards additional method steps which can reasonably be performed by the human mind and thus are also directed towards the recited abstract idea.
Claims 5, 12, and 19 merely further describe the specific values used to perform the recited abstract idea.
Claims 7, 14, and 21 recite the additional element of a programmable wallet which does not place the recited abstract idea into practical application nor amount to significantly more.
Therefore, as the dependent claims do not include additional elements that integrate the abstract idea into a practical application nor provide significantly more than the abstract idea, the dependent claims are also not patent eligible.
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) 1-6, 8-13, and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khalil et al. (US 20190139037 A1) in view of Arnold et al. (US 20240346493 A1) in further view of Kim (KR 20200017646 A).
Regarding Claims 1, 8, and 15, Khalil discloses:
A computer-implemented method for execution of user operations in chain networks (), comprising:
receiving, by a trusted signing service that is executed in an off-chain network, a user operation (See Khalil: Para. [0075] – “First, Entity-A creates an IOU, without signatures, and requests the current payment hub S.sub.H's signature on the IOU”);
signing, by the trusted signing service, the user operation to provide a signed user operation (See Khalil: Para. [0094] – “The server 504 signs both updated states and gives its respective signatures to both users 501, 502.”);
receiving, by a paymaster that is executed in a chain network, a call to verify, the call comprising at least a signature of the signed user operation (See Khalil: Para. [0087] – “A smart contract is deployed to an on-chain digital ledger, which then creates the off-chain digital ledger. In an embodiment using a NOCUST™ brand structure, the underlying smart contract effectively acts as a means of efficient dispute resolution.”; See Khalil: para. [0116] – “In an embodiment 1100, two eons after the withdrawal request, the user is allowed to confirm the withdraw call, but not before a slack period after the second eon started (after step 7). That is to ensure that no challenges related to the previous eon were successful.”); and
in response to determining that the signature of the signed user operation is valid, providing, by the paymaster and to an entrypoint that is executed in the chain network, a response to the call indicating that the paymaster is verified (See Khalil Para. [0079] – “In an embodiment, by using trusted execution environments, the operations of the payment hub can be further secured. For example, if SC.sub.H is scheduled to only accept checkpoint C.sub.H.sup.eon that are signed by an enclave whose public key is registered in SC.sub.H and whose code may only output correct state updates.”), the user operation being executed in the chain network at least partially in response to determining that the signature of the signed user operation is valid (See Khalil: Para. [0116] – “That is to ensure that no challenges related to the previous eon were successful. Specifically, the user is spending allocated funds via off-chain transactions in step 2 of FIG. 11, which are later consolidated within a checkpoint in step 4. In step 5, however, the user attempts to call the withdrawal function while claiming that no spendings occurred (the user tries to double-spend). The payment hub server S.sub.H can then slash the withdrawal of the client, because S.sub.H has access to the signed off-chain transactions of the user.”). and computational transaction fees incurred by the execution are settled directly by the entrypoint utilizing a pre-allocated native cryptocurrency deposit maintained by the paymaster on the entrypoint without native token conversion transactions by an account initiating the user operation (The examiner has determined that the aforementioned claim limitation constitutes a recitation of nonfunctional descriptive material. Specifically, the examiner asserts that the aforementioned limitation merely describes the process by which the determination of validity of the user operation is explicitly performed. However, the examiner asserts that the BRI of the claims is directed towards merely providing a response to a detected valid signature. The means by which said valid signature is produced imparts no functional limitation on the claimed step of providing. Thus, as the limitation does not impart any functional limitation to the claimed function, the examiner must conclude that the limitation constitutes nonfunctional descriptive material and thus cannot be given patentable weight).
Khalil fails to explicitly disclose:
the signed user operation comprising a signature that is at least partially generated using an address within a chain network;
verifying, by the paymaster within the chain network, that the signature of the signed user operation is valid by determining a recovered address from the signature and determining that the recovered address is the same as the address
However, in a similar field of endeavor, Arnold discloses:
the signed user operation comprising a signature that is at least partially generated using an address within a chain network (See Arnold: Para. [0025] – “Many blockchains or distributed ledgers require a transaction to include a sender's address, receiver's address, a value, and one or more signatures of the sender which can be used to verify the sender is authentic.”);
verifying, by the paymaster within the chain network, that the signature of the signed user operation is valid by determining a recovered address from the signature and determining that the recovered address is the same as the address configured within the paymaster (See Arnold: Para. [0025] – “Many blockchains or distributed ledgers require a transaction to include a sender's address, receiver's address, a value, and one or more signatures of the sender which can be used to verify the sender is authentic.”)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the signed user operation of Khalil to utilize the method of including addresses for later verification as disclosed by Arnold yielding the predictable result of an increase in the security strength of the invention.
However, the combination of Khalil and Arnold fails to explicitly disclose:
using an Ethereum Virtual Machine (EVM) ecrecover cryptographic primitive
However, in a similar field of endeavor, Kim discloses:
using an Ethereum Virtual Machine (EVM) ecrecover cryptographic primitive (See Kim: pg. 4 - “In this model, Ethereum, a public blockchain platform, can be used. Unlike Bitcoin, which supports Turing incomplete scripts that can only perform simple operations, Ethereum supports the creation and distribution of smart contracts for DApp (Decentralized Application) development. Smart contracts written in Solidity, a Turing-complete language, and recorded on a distributed ledger ensure automated execution and integrity of results. Smart contracts written in Solidity are compiled and stored in the form of Ethereum virtual machine byte code (EVM Byte Code) to ensure the integrity of the contract contents. It is possible to replace authentication and information storage in a decentralized way by operating a smart contract without an Ethereum client on a website that can be generally accessed through a metamask, which will be described later.”)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to determination step of Khalil and Arnold to utilize the EVM cryptographic primitive disclosed by Kim yielding the predictable result of an increase in the security strength of the invention.
Regarding Claims 2, 9 and 16, Khalil discloses:
wherein signing the user operation comprises calling a key management service that provides the signature (See Khalil: Para. [0091] – “At initialization of the NOCUST™ brand hub or when a new user joins, the following setup operations are performed: hub setup and user registration. In an embodiment, in hub setup, a hub is initiated by deploying the smart contract on-chain and by having the operator's server initialize the first genesis checkpoint on-chain. In an embodiment, in user registration, given its private key, a user signs a registration message and sends this message to the operator server. In an embodiment, a user registers off-chain with a NOCUST™ brand hub server, thus without an on-chain transaction costs”; See Khalil: Para. [0078-0079], [0084])
Regarding Claims 3, 10 and 17, Khalil discloses:
wherein the signature is generated using a portion of the user operation (See Khalil: Para. [0075-0076] – “In an embodiment, other unique payment hub features are possible. For example, in an embodiment, an instant withdrawal feature is provided which allows a payment hub user to withdraw the funds of the SC.sub.H directly, that is, at the speed of at least one era. An embodiment of an instant withdrawal by Entity-A, can include one or more of the following steps. First, Entity-A creates an IOU, without signatures, and requests the current payment hub S.sub.H's signature on the IOU. Next, Entity-A submits the IOU, with only online server S.sub.H's signature on the IOU, to a second smart contract with a separate collateral pool, which reserves the funds for withdrawal until a certain timeout period. Entity-A then signs the IOU and submits the signature to that second smart contract, effectively broadcasting both IOU signatures (i.e., the Entity-A signature and the S.sub.H's signature).”, [0078-0080], [0091-0094], and [0110]).
Regarding Claims 4, 11, and 18, Khalil discloses:
further comprising identifying, by the trusted signing service, a policy that is applicable to the user operation at least partially using an entity identifier of an entity that is sponsoring transaction fees for execution of the user operation, signing of the user operation to provide the signed user operation being performed in response to determining that the user operation conforms to the policy (See Khalil: Para. [0080] – “FIG. 3 shows an embodiment of the present invention in which there is an intuition underlying the performed steps 300 for transferring a payment from one user to another off-chain through the payment hub. Entity B 301 and Entity A 302 initially have a balance of 1 Ether each. Entity B 301 first sends an IOU 312 to Entity A 302 having 0.1 Ether. Entity B also provides the IOU 312 to pay for the transaction fee of 1% to the Liquidity.Network™ brand server 303 or overall system server.”, [0054-0060], [0075-0076], [0086], [0104], [0112]).
Regarding Claims 5, 12, and 19, Khalil discloses:
wherein the policy provides one or more of a maximum transaction fee, a maximum total of transaction fees for a period, and a maximum number of users operations to be sponsored for the period (See Khalil: Para. [0086-0087] and [0112-0115] – “FIG. 11 shows an embodiment of the present invention of withdrawal of funds from the smart contract payment hub. In an embodiment, after the call for withdrawal, and the current eon elapsed, S.sub.H issues a new checkpoint. This checkpoint's upper bound is required to cover only funds which are currently not pending. The system can be set to require at least one full eon to pass after this first checkpoint following the withdrawal call, such that it can be ensured that everyone's balances were consolidated correctly”).
Regarding Claims 6, 13, and 20, Khalil discloses:
further comprising: determining an amount of cryptocurrency owed by an entity for transaction fees including a transaction fee for execution of the user operation (See Khalil: Para. [0080] – “FIG. 3 shows an embodiment of the present invention in which there is an intuition underlying the performed steps 300 for transferring a payment from one user to another off-chain through the payment hub. Entity B 301 and Entity A 302 initially have a balance of 1 Ether each. Entity B 301 first sends an IOU 312 to Entity A 302 having 0.1 Ether. Entity B also provides the IOU 312 to pay for the transaction fee of 1% to the Liquidity.Network™ brand server 303 or overall system server.”; See Khalil: Para. [0052-0060], and [0086]); and transmitting a request for the amount of cryptocurrency to the entity (See Khalil: Para. [0075-0080] – “See Khalil: Para. [0080] – “FIG. 3 shows an embodiment of the present invention in which there is an intuition underlying the performed steps 300 for transferring a payment from one user to another off-chain through the payment hub. Entity B 301 and Entity A 302 initially have a balance of 1 Ether each. Entity B 301 first sends an IOU 312 to Entity A 302 having 0.1 Ether. Entity B also provides the IOU 312 to pay for the transaction fee of 1% to the Liquidity.Network™ brand server 303 or overall system server.”” and [0086]).
Claim(s) 7, 14, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Khalil in view of Arnold in further view of Kim and Gonsalves et al. (US 20240095721 A1).
Regarding Claims 7, 14, and 21, Khalil discloses the method of claim 1 but fails to explicitly disclose:
wherein the user operation is received by the trusted signing service from a programmable wallet that is executed on-chain.
However, in a similar field of endeavor, Gonsalves discloses:
wherein the user operation is received by the trusted signing service from a programmable wallet that is executed on-chain (See Gonsalves: Para. [0017-0020] – “The facility facilitates transactions used for interaction with Web3 applications to which the wallet is connected via a smart contract … By performing in some or all of the ways described above, the facility automates the creation and management of cryptocurrency wallets and transactions for users' interaction with Web3 applications. For example, by using meta-transactions, such as those used on the Ethereum blockchain, the facility is able to significantly reduce gas fees and the time and computing resources necessary to obtain native tokens used for interacting with Web3 applications.”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the system of Khalil to incorporate the programmable wallet disclosed by Gonsalves as the source of user transactions yielding the predictable result of an increase in the efficiency of the invention by potentially offloading processing tasks to the programmable smart wallets rather than the central system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS K PHAN whose telephone number is (571)272-6748. The examiner can normally be reached M-F 1 pm-9 pm EST.
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/NICHOLAS K PHAN/Examiner, Art Unit 3699
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