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 .
Response to Amendment
This action is in response to the applicant’s communication received on 11/18/2025.
Status of the Claims
This is a Non-Final Office Action rejection prepared in response to Applicant’s amendments filed on 11/18/2025.
Claims 1-3, 5, 7-9, 11 and 13-15 are amended.
Claims 1-15 are pending.
Claim Interpretation
Intended Use language:
Regarding claim 1, the claim limitation “for…” in “a plurality of sharer terminals, provided on a sharer side, for transmitting…” consists of language disclosing an intended use, so it is considered but given no patentable weight. (see MPEP 2111.05, MPEP 2114 and authorities cited therein). The reference is provided for the purpose of compact prosecution.
Conditional language:
Claim limitations “the step of receiving the warranty … comprises: when the number of sharers are two…” in claim 9, “the step of receiving the warranty … comprises: when the number of the sharers exceed two,…” in claim 10 and “if they are the same, executing a transaction for token trading and transmitting the token to a buyer's wallet address” in claim 12 are conditional limitations that does not move to distinguish over prior art because the claimed limitations only occur when the stated condition is met.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
“a transaction generating unit configured to, when the number of the sharers are two, receive,…”, “a transaction combining unit configured to combine…” and “a communication unit configured to transmit…” in claim 3.
“the transaction generating unit repeatedly performs…” and “the transaction combining unit combines…” in claim 4.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recites sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 3-6 and 14 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.
Regarding claim 3, limitations “a transaction generating unit configured to, when the number of the sharers are two, receive,…”, “a transaction combining unit configured to combine…” and “a communication unit configured to transmit…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Here the claims and specifications are silent with respect to any structure corresponding to the generic placeholder. Therefore the claim is rejected under 35 U.S.C. 112(a) for lacking adequate written description.
Regarding claim 4, limitations “the transaction generating unit repeatedly performs…” and “the transaction combining unit combines…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Here the claims and specifications are silent with respect to any structure corresponding to the generic placeholder. Therefore the claim is rejected under 35 U.S.C. 112(a) for lacking adequate written description.
Claims 5-6 and 14 are also rejected upon rejected parent independent claim.
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 3-6 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.
Regarding claim 3, limitations “a transaction generating unit configured to, when the number of the sharers are two, receive,…”, “a transaction combining unit configured to combine…” and “a communication unit configured to transmit…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification fails to disclose sufficient corresponding structure for the claimed limitations. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre- AIA 35 U.S.C. 112, second paragraph.
Regarding claim 4, limitations “the transaction generating unit repeatedly performs…” and “the transaction combining unit combines…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification fails to disclose sufficient corresponding structure for the claimed limitations. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre- AIA 35 U.S.C. 112, second paragraph.
Claims 5-6 are also rejected upon rejected parent independent claim 4.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an
abstract idea without significantly more.
Step 1: Claims 1-7 and 14 are directed to a system (i.e., machine, and manufacture). Claims 8-12 and 15 are directed to a computer-implemented method (i.e., process). Claim 13 is directed to a computer-storage media (i.e., manufacture). Therefore, these claims fall within the four statutory categories of invention, and thus must be further analyzed at Step 2A to determine if the claims are directed to a judicial exception (See MPEP 2106.03, subsection II).
Step 2A Prong One: Claim 8, recites (i.e., sets forth or describes) an abstract idea. More specifically, the following bolded claim elements recite abstract ideas while the non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
A method of controlling a blockchain-based shared asset trading system for trading by tokenizing a shared asset, comprising the steps of:
transmitting an original warranty containing an appraisal result of the shared asset and transmitting a warranty in which a sharer's signature has been entered to the original warranty;
receiving and storing, by a blockchain network, the original warranty in a smart contract block, issuing a token based on the smart contract block and generating an electronic wallet in which the token is stored; and
receiving the warranty in which the signature has been entered and transmitting a transaction including the warranty in which the signature has been entered and a token trading request to the blockchain network.
Claim 8, recites (i.e., sets forth or describes) a method for facilitating the trade of shared assets. The claim achieves this by transmitting an original warranty, receiving the original warranty, storing the original warranty and issuing a token representing the stored original warranty; transmitting a warranty with a signature, receiving the warranty with the signature and transmitting a transaction including the received warranty with the signature and a request to trade a token. Claim 1 and 13 are significantly similar to claim 8. As such claims 1 and 13 also recite an abstract idea. Specifically, but for the additional elements, the claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas (i.e., fundamental economic practices).
Step 2A Prong Two: Because the claim recites abstract ideas, the analysis proceeds to
determine whether the claim recites additional elements that recite a practical application of the
abstract ideas. Here, the additional elements of a blockchain-based shared asset trading system, a blockchain network, a smart contract block and an electronic wallet merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). Therefore, the claim as a whole fail to recite a practical application of the abstract ideas.
Step 2B: Determines whether the claim as a whole amount to significantly more than the exception itself. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Here, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely serve as a tool to perform an abstract idea. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims: Claims 2-7, 9-12 and 14-15 have also been analyzed for subject matter
eligibility. However, claims 2-7, 9-12 and 14-15 also fail to recite patent eligible subject matter for the
following reasons:
Claim 2 recites the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
a distributed storage in which the original warranty is stored, wherein the distributed storage includes a local storage, a IPFS and a cloud, and is selected as any one of the local storage, the IPFS and the cloud by at least one sharer terminal.
The claim further recites the abstract idea of a method for managing and facilitating the transfer of assets by storing appraisal and warranty information, associating the information with a token, and conducting transactions involving the token. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 3 and 9 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
when the number of the number of the sharers are two, receiving, from a sharer terminal provided on a first sharer side, share information of the shared asset of the first sharer side and a warranty in which the signature of the first sharer side has been entered so as to generate a first transaction;
transmitting the share information of the shared asset of the first sharer side and the warranty in which a signature of the first sharer side has been entered to a sharer terminal provided on a second sharer side,
receiving, from the sharer terminal provided on the second sharer side, the share information of the shared asset of the second sharer side and a warrant in which a signature of the second sharer side has been entered so as to generate a second transaction;
combining the first transaction and the second transaction; and
transmitting the combined first and second transactions to blockchain network.
The claim further recites the abstract idea of a method for managing and facilitating the transfer of assets by storing appraisal and warranty information, associating the information with a token, and conducting transactions involving the token. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 4 and 10 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
when the number of the sharers exceed two, repeatedly performing a process of generating the transactions so as to generate transactions for all sharers;
combining the generated plurality of transactions; and
transmitting the combined transaction to the blockchain network.
The claim further recites the abstract idea of a method for managing and facilitating the transfer of assets by storing appraisal and warranty information, associating the information with a token, and conducting transactions involving the token. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 5, 11 and 14-15 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
each sharer’s signature is entered with the sharer’s private key to the original warranty, and each of the plurality of sharer terminals transmit a public key of the respective sharer to the blockchain network
The claim further recites the abstract idea of a method for managing and facilitating the transfer of assets by storing appraisal and warranty information, associating the information with a token, and conducting transactions involving the token. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claims 6, 11 and 14-15 recite the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
decrypting the combined first and second transactions with the public key;
comparing the decrypted warranty with a warranty stored in the smart contract block to verify whether they are the same;
if they are the same, executing a transaction for token trading and transmitting the token to a buyer's wallet address
The claim further recites the abstract idea of a method for managing and facilitating the transfer of assets by storing appraisal and warranty information, associating the information with a token, and conducting transactions involving the token. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Claim 7 recites the following bolded claim elements as abstract ideas while the
non-bolded claim elements recite additional elements according to MPEP 2106.04(a).
the at least one sharer terminal select a range of intellectual property rights such that only rights are transferred to buyers.
The claim further recites the abstract idea of a method for managing and facilitating the transfer of assets by storing appraisal and warranty information, associating the information with a token, and conducting transactions involving the token. In other words, it recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The non-bolded additional elements fail to recite a practical application or significantly more than the abstract idea because it merely serves as a tool to perform the abstract idea (MPEP §2106.05(f)). Further, the additional elements, taken individually and in combination, do not result in the claim as a whole, amounting to significantly more than the judicial exception. Thus, there is no inventive concept in the claim and thus the claim is not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
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.
Claims 1, 8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tang (US 20220029810 A1) in view of Yoon (US 2022/0147961 A1).
Regarding claim 1, 8 and 13, Tang discloses:
transmitting an original warranty containing an appraisal result of the shared asset and (¶0056, In an example process, second user and first user may decide that they want to enter into a contract or want to sign a document that requires both their signatures (such as an assignment of their rights to a patent or the like). A document or smart contract may be generated (Step 390), such as digital document or smart contract 310. The document may be generated using word processing software and may be written in any language or format. The document may be revised by both second user and first user until both are satisfied with the terms and conditions in the document. After the document is completed, both second user and first user may agree that the document should be e-signed. ¶0059, The transactions may indicate who originated the transaction (i.e., FROM) and the information that is in the transaction. For example, the information may be simply a hash value (i.e., a hash) that represents the information that the user intended to upload to the blockchain. The hash and/or the information may be encrypted or unencrypted. In addition to the specific example transactions (e.g., 312, 353, 354, 357 and 358), there appear to be several transactions stored on the blockchain. For example, user's uploaded identifying documents (that may or may not be encrypted), and/or a hash (i.e., hash value) of those documents; one or more trusted third-party servers leaving an ownership document endorsement token (ODET); signatures on the document as user's sign the document; metadata including information such as who is supposed to sign it and when the contract offer expires. ¶0072, In some examples, the electronic signature computer application may cause the computing device processor to generate a hash value related to the document. The electronic signature computer application may cause the processor to store an initial hash value indicating the presence of a document at the document address as an initial transaction in the blockchain associated with the document address (425). ¶0073, At 430, the computing device may generate a document associated with the document address for review by a user. The generated document may include a textual document and document execution requirements. The textual document may be a contract or some other document that requires validation by obtaining signatures of parties named in the document (i.e., execution of the document). In an example, a smart contract may allow a document to be generated based on attributes of the smart contract.)
transmitting a warranty in which a sharer's signature has been entered to the original warranty; (¶0062, For example, in response to determining that the first user's wallet signature is required, the electronic signature application 342 via the first user's digital wallet 352 may generate commands to sign the document, sign a hash of the document (i.e., the document hash) or some other form of indicating by applying the first user's signature that the first user agrees to the terms of the document at step 393. In response to the first user signing the document hash #ABCD 312, a refreshed hash value is generated from the first user's signing of the document hash #ABCD 357 and is stored in the document digital wallet as a transaction in ledger 365 from the first user's digital wallet 352. When the second user signs the refreshed hash value of the first user's signing of the document hash #ABCD, another hash value is generated as the Hash from Second User's signing of Refreshed Hash of First User's signing of document #ABCD 358. The hash of the second user's signing of the document hash #ABCD 358 may be stored at 394 via the second user's digital wallet 351 in the ledger 365 of the document digital wallet 360. The generation of a new or refreshed hash value after each user signs the document or document hash prevents a subsequent user from submitting a signature on an old copy of the document. ¶0076, At 460, in response to electronically executing the document via the computing device of the second user, an executed document hash value of a version of the generated document electronically executed by the second user may be generated.)
receiving and storing, by a blockchain network, the original warranty in a smart contract block, (¶0006, An initial hash value of a document at the document address may be stored as an initial transaction in the blockchain associated with the document address. ¶0057, Once the contents of the document are agreed upon, a hash function, such as SHA-256 or the like, may be applied to the document (Step 391). A hash function is any function that can be used to map input data of arbitrary size to a hash value of a fixed size. The document hash may be applied to the document by the smart contract, an electronic signature application, such as 141A-C, or the like executing on a user device that generated the document. Alternatively, the document may be provided to another system, such as the identity and e-signature verification system 140, for application of the hash function. ¶0074, After the document is generated, an authentication document hash value by applying a hash function to the generated document may be obtained from or by the electronic signature computer application (435). The authentication document hash may be stored as a subsequent transaction at the document address in the blockchain (440). ¶0072, In some examples, the electronic signature computer application may cause the computing device processor to generate a hash value related to the document. The electronic signature computer application may cause the processor to store an initial hash value indicating the presence of a document at the document address as an initial transaction in the blockchain associated with the document address (425).)
generating an electronic wallet in which the token is stored; and (¶0071, A document address may be generated (420) via an electronic signature computer application being executed by a computer processor of a computing device.)
receiving the warranty in which the signature has been entered and (¶0006, In response to electronically executing the document via the computing device of the second user, an executed document hash value of a version of the generated document electronically executed by the second user may be generated. The executed document hash value may be stored as another subsequent transaction at the document address in the blockchain. ¶0075, In addition, a final version of the document may be identified for electronic execution by the first and the second user. A hash value of the identified final version of the document may be generated, and the identified final version hash value may be maintained in the blockchain associated with the document address. In an example that utilizes a smart contract, a copy of the identified final version of the document inputting into the smart contract and the smart contract may be forwarded to the second user for electronic signature. ¶0076, The second user computing device may, for example, be installed with an electronic signature application instance, such as 141C of FIG. 1. At 460, in response to electronically executing the document via the computing device of the second user, an executed document hash value of a version of the generated document electronically executed by the second user may be generated. ¶0078, The executed document hash value may be stored as another subsequent transaction at the document address in the blockchain (470).)
Tang further discloses:
A computer-readable storage medium (¶0008, An example of non-transitory computer-readable storage medium storing computer-readable program code executable by a processor is also disclosed. The non-transitory computer-readable storage medium storing computer-readable program code executable by a processor execution of the computer-readable program code may cause the processor to present a menu of smart contracts available from a smart contract repository.)
Tang does not disclose, however Yoon teaches:
issuing a token based on the smart contract block and (Yoon ¶0069, …the online transaction server 100 may generate an ownership token contract for distributing the collectable ownership at a step of S202. Yoon ¶0072, Specifically, the ownership token structure may include information on the collectable, information on an ownership token ID, and a cardinal number of issued ownership tokens. Yoon ¶0078, …in response to verifying the first server signature value, register the ownership token contract, included in the contract registering transaction, in the blockchain network 200…)
transmitting a transaction including the warranty in which the signature has been entered and a token trading request to the blockchain network (Yoon ¶0091, Furthermore, the online transaction server 100 may generate an ownership transferal transaction which includes the ownership token contract ID, the ownership transferal information acquired by referring to the ownership distribution participation information, a second server signature value, which is a signature value of the online transaction server, and the first administrator signature value to the k-th administrator signature value, at a step of S210, and broadcast the ownership transferal transaction to the blockchain network 200, at a step of S211… ¶0111, … generate an ownership token transferal transaction which includes the ownership token contract ID, a new buyer's digital wallet address, a new cardinal number of the ownership tokens to be transferred, and a specific buyer signature value which is acquired by signing (ii-1-1) at least one of the ownership token contract ID, the new buyer's digital wallet address, and the new cardinal number of the ownership tokens to be transferred with a specific buyer private key of the specific buyer, or (ii-1-2) at least one third hash value of at least one of the ownership token contract ID, the new buyer's digital wallet address, and the new cardinal number of ownership tokens to be transferred with the specific buyer private key of the specific buyer, at a step of S302…)
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify Tang disclosure with Yoon‘s teaching. One of ordinary skills in the art would have been motivated to combine these elements in order to enable secure tokenization and transfer of assets.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Tang and Yoon as applied to claim 1, in further view of Shii (US 2021/0382966 A1).
Regarding claim 2, the combination of Tang and Yoon does not disclose, however Shii teaches:
a distributed storage in which the original warranty is stored, wherein the distributed storage includes a local storage, a IPFS and a cloud, and is selected as any one of the local storage, the IPFS and the cloud by at least one sharer terminal. (Shii ¶0070, FIG. 2, ownership on the BCN and access to the data of the artwork itself can be managed by being directly linked online. For example, cooperation between the IPFS (Interplanetary File System), which is a distributed storage mechanism, and the BCN according to this embodiment is also possible. In this case, it is also possible to link to the original image data (not shown). Shii ¶0234, The BCN certificate information can be shared with services participating in the BCN around the world and can therefore also be linked to the services of other companies. Cooperation between an IPFS (file storage), which is a distributed storage mechanism, and the BCN is also possible. In this case, it is also possible to link to the original image data (not shown). Shii ¶0239, A-(2) denotes distributed storage (IPFS or the like) for managing both artwork certificates and the large-volume artwork data of digital artworks on the BCN.)
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify Tang and Yoon’s combination with Shii‘s teaching. One of ordinary skills in the art would have been motivated to combine these elements in order to enhance the system scalability and accessibility to large accessed data along while continuing to use blockchain for data integrity and immutability.
Claims 3-6, 9-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tang and Yoon as applied to claim 1, 8 and 13, in further view of Scott (US 2016/0335629 A1).
Regarding claims 3 and 9, the combination of Tang and Yoon does not disclose, however Scott teaches:
when the number of the number of the sharers are two, (Scott ¶0287, Two or more participants, who are known to each other, construct transaction blocks 140)
receiving, from a sharer terminal provided on a first sharer side, share information of the shared asset of the first sharer side and a warranty in which a signature of the first sharer side has been entered so as to generate a first transaction; (Scott ¶0067, receiving a first block of data digitally signed by a first owner and having a first holding transfer certificate digitally signed by the first owner, the first block of data describing a first holding offered by a first owner in exchange for a requested second holding; See claim 20)
transmitting the share information of the shared asset of the first sharer side and the warranty in which the signature of the first sharer side has been entered to a sharer terminal provided on a second sharer side, (Scott ¶0288, Two or more participants, who are not known to each other, construct transaction blocks 140. Blocks are transferred to a TTP (an intermediary within the exchange 14 or the exchange itself) who then in the same transaction will transfer them to the intended recipient.)
receiving, from the sharer terminal provided on the second sharer side, the share information of the shared asset of the second sharer side and a warrant in which a signature of the second sharer side has been entered so as to generate a second transaction; (Scott ¶0067, receiving a second block of data digitally signed by a second owner and having a second holding transfer certificate digitally signed by the second owner, the second block of data describing a third holding offered by the second owner in exchange for a requested fourth holding. See claim 20)
combining the first transaction and the second transaction; and transmitting the combined first and second transactions to blockchain network. (Scott ¶0062, Preferably, the system may further comprise a transaction assembler configured to assemble two or more blocks of data into a single transaction. Scott ¶0222, The transaction 150 is sent as a single message into the transaction server 18, which, as an atomic operation… Scott ¶0288, The exchange or transaction assembler 14 will build the overall transaction and submit it the transaction server 18. Scott ¶0287, One of the participants takes responsibility for building the overall transaction message 150 and submitting it to the transaction server 18. See claim 17)
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify Tang and Yoon’s combination with Scott‘s teaching. One of ordinary skills in the art would have been motivated to combine these elements in order to perform reliable multi signature/user transactions in which each user transaction signs, validates and transaction and then they are combined into one single transaction that is then executed in the blockchain.
Regarding claims 4 and 10, Scott further teaches:
when the number of the sharers exceed two, repeatedly performing a process of generating the transactions so as to generate transactions for all sharers; (Scott ¶0076, receiving a third block of data digitally signed by a third owner and having a third holding transfer certificate digitally signed by the third owner, the third block of data describing a fifth holding offered by the third owner in exchange for a requested sixth holding; Scott ¶0288, Two or more participants, who are not known to each other, construct transaction blocks 140.)
combining the generated plurality of transactions; and transmitting the combined transaction to the blockchain network. (Scott ¶0062, Preferably, the system may further comprise a transaction assembler configured to assemble two or more blocks of data into a single transaction. Scott ¶0222, The transaction 150 is sent as a single message into the transaction server 18, which, as an atomic operation… Scott ¶0288, The exchange or transaction assembler 14 will build the overall transaction and submit it the transaction server 18. Scott ¶0287, One of the participants takes responsibility for building the overall transaction message 150 and submitting it to the transaction server 18. See claim 17)
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify Tang and Yoon’s combination with Scott‘s additional teaching. One of ordinary skills in the art would have been motivated to combine these elements in order to perform reliable multi signature/user transactions with more than 2 users in which each user transaction is signed, validated and then combined into one single transaction that is then executed in the blockchain.
Regarding claims 5, 11 and 14-15, the combination of Tang and Yoon further discloses:
each sharer’s signature is entered with the sharer’s private key to the original warranty, and (Yoon ¶0081, Furthermore, the online transaction server 100 may generate the first server signature value by electronically signing the ownership token contract with a transaction server private key of the online transaction server 100,)
The combination of Tang and Yoon do not disclose, however Scott teaches:
each of the plurality of sharer terminals transmit a public key of the respective sharer to the blockchain network (Scott ¶0051, Optionally, the ownership log may further record the public keys of all previous owners of each holding and data indicating which of the public keys identifies the latest owner of the holding. Scott ¶0072, The first and second owners may have one or more public keys (associated with different holding transfer certificates) stored in the ownership log.
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify Tang and Yoon’s combination with Scott‘s teaching. One of ordinary skills in the art would have been motivated to combine these elements because it is a fundamental requirement for blockchain systems to enable signature verification.
Regarding claims 6 and 12, the combination of Tang and Yoon further discloses:
comparing the decrypted warranty with a warranty stored in the smart contract block to verify whether they are the same; (Tang ¶0111, fter the hash function is applied, the resulting hash value may be compared to the signed document hash values in the blockchain network record. Based on the result of the comparison, the verification of the document as being unaltered may be confirmed, and in response to the confirmation, the smart contract may be marked as complete.
decrypting the combined first and second transactions with the public key; (Yoon ¶0099, Furthermore, the online transaction server 100 may instruct the blockchain nodes 200-1, 200-2, . . . , 200-n to (i-1) (i-1-1) (i-1-1-1) decrypt the second server signature value and the first administrator signature value to the k-th administrator signature value by using a transaction server public key of the online transaction server 100 and each of public keys of the first administrator to the k-th administrator,… or (i-1-2) (i-1-2-1) decrypt the second server signature value and the first administrator signature value to the k-th administrator signature value by using the transaction server public key and each of the public keys of the first administrator to the k-th administrator)
if they are the same, executing a transaction for token trading and transmitting the token to a buyer's wallet address (Yoon ¶0100, Moreover, in response to verifying the second server signature value and the first administrator signature value to the k-th administrator signature value, the online transaction server 100 may instruct the blockchain nodes 200-1, 200-2, . . . , 200-n to (i) execute the ownership token contract, to thereby check whether the ratio of (1) the target multi-signers for comparison corresponding to the first administrator to the k-th administrator to (2) the standard multi-signers corresponding to the first administrator to the m-th administrator satisfies the predetermined ratio, and (ii) if the predetermined ratio is satisfied, transfer the first cardinal number of the ownership tokens to be transferred to the n-th cardinal number of the ownership tokens to be transferred respectively to the first buyer's digital wallet address to the n-th buyer's digital wallet address.)
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify Tang and Yoon’s combination with Yoon‘s additional teaching. One of ordinary skills in the art would have been motivated to combine these elements in order to ensure integrity and prevent fraud.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Tang, Yoon and Shii as applied to claim 2, in further view of Scott (US 2016/0335629 A1).
Regarding claim 7, the combination of Tang, Yoon and Shii do not disclose, however Scott teaches:
the at least one sharer terminal selects a range of intellectual property rights such that only rights within that preset range of intellectual property rights are transferred to buyers. (Scott ¶0117, The use of eligibility criteria within the terms of the right enables improved flexibility, allowing issuers to set eligibility criteria appropriate to the terms of the right being issued, without requiring the maintenance of a complex central data model. Some rights may need no criteria and these may be held completely anonymously. In other cases, an issuer can obtain the identities of some or all parties holding its right. This may leverage the natural synergies that exist because certain organizations already collect data to evaluate eligibility in the course of other business activities. Scott ¶0189, A conditions section in the right certificate 110 may contain general conditions, that could apply to any instrument and which are used by the system 10 to ensure that only legitimate transactions are performed. Example conditions include: [0190] Eligibility: Are there eligibility requirements or not? Can this instrument be exchanged with anyone or not? [0191] Limit of Transfers: Are there any limits on the number of times the holding can be transferred? [0192] Time Limit: Is there a time limit on when the holding can be transferred? [0193] Divisibility: Can a fractional quantity of the right be held or does the right always need to be held as numbers of whole units? [0194] Tax: Is there a requirement to include transaction tax payments or exemptions in any transfer?)
It would have been obvious to one of ordinary skill in the art, before the effective filing date
of the claimed invention, to have modify the combination of Tang, Yoon and Shii with Scott‘s teaching. One of ordinary skills in the art would have been motivated to combine these elements in order to ensure legal compliance, reduce disputes and provide business flexibility by restricting and defining the scope of the rights being transferred.
Response to Arguments
Claim Objections
Claim objections in the previous non-final action dated 08/27/2025 are withdrawn in light of the claim amendments.
Claim Rejections – 35 U.S.C. § 112
Claim rejections 35 U.S.C. § 112(a) and 35 U.S.C. § 112(b) in regards to claim 1 have been withdraw in light of the applicant’s argument and claim amendments.
Claim rejections 35 U.S.C. § 112(a) and 35 U.S.C. § 112(b) in regards to claims 3 and 4 are maintained. The specifications merely state that the ‘transaction generating unit” receives information and generates transactions, the “transaction combining unit” combines a plurality of transactions and the “communication unit” receives information from the sharer terminals and transmits the combined transaction to the blockchain network. These statements simply restate the claimed function of the units without disclosing how the transactions are generated, combined or transmitted. Accordingly the claims are indefinite under 112(b) because the specification does not provide sufficient structure corresponding to the claimed function. Further the claims are rejected under 112(a) because the specification fail to enable or adequately describe how the claimed functions are described.
Claim rejections 35 U.S.C. § 112(b) in regards to claim 5, 11 and 14-15 have been withdraw in light of the claim amendments.
Claim Rejections – 35 U.S.C. § 101
The applicant asserts that the claims are directed to a specific improvement in blockchain-based asset trading technology and not an abstract idea. The applicant follows with several assertions in regards to each specific step of the Alice test. The basis of these assertions are based on the applicant’s argument on pages 11-13.
First the applicant assert in regards to Step 2A prong one that “While the claims involve asset trading, they are not directed to a mere abstract economic practice or mental process. Instead, they recite a concrete series of technical steps in a distributed computing environment. For example, claim 8 requires using a blockchain network to store a certified appraisal ("original warranty"), issuing a cryptographic token, and using multi-signature verification (by requiring each sharer's private key signature) to authorize a token transaction. This is fundamentally a cryptographic network security process that facilitates asset transfer in a new way - it is not something that can be performed in the human mind or by pen and paper, nor is it a long-standing fundamental economic practice. The necessity of all co-owners' digital signatures and the use of a smart contract block for verification are specific to computer technology (distributed ledgers and public-key cryptography). In other words, the claim is focused on improving the security and trust of blockchain transactions (preventing any token trade unless all designated parties cryptographically approve). This is analogous to improvements in computer security that courts have found to be patent-eligible (as they are not abstract but rather specific solutions to computer-centric problems). Therefore, viewed as a whole, the claims are not directed to an abstract idea such as an "organizing human activity" in the general sense - instead, they are directed to a technical solution in the realm of computer networks.” The examiner finds them not persuasive and respectfully disagrees. The claims remain directed to an abstract idea of managing and facilitating the transfer of assets among multiple parties which falls under “certain methods of organizing human activity” grouping of abstract ideas (i.e., fundamental economic practices). The steps of storing a warranty, issuing a token and requiring all co-owners signatures represent data processing and storing which courts have consistently held to fall within the category of abstract ideas. Therefore, there is no improvement on the blockchain technology or computer itself or a solution to a technical problem. As per MPEP 2106.04(a), in step 2A prong one to determine whether a claim recites an abstract idea, the specific limitations in the claim under examination must be identified and analyzed to determine whether they fall within at least one of the recognize groupings of abstract ideas. If one of the limitations in the examined claim falls within one of the groups, it is reasonable to conclude that the claims recite an abstract idea and the examination continues to step 2A prong two
Second, the applicant asserts in regards to Alice Step 2 prong 2 that “The claims recite additional elements that apply any purported abstract idea in a notably practical way. The blockchain network, smart contract block, digital signatures, and verification steps are not generic extras, but are specifically arranged to enforce a multi-party approval mechanism. This is a practical application of cryptographic consensus in a distributed ledger. For instance, the blockchain network uses the sharers' public keys to decrypt and verify the signatures against the stored original warranty data, and only upon a full match does it execute the token transfer. This ensures that if even one co-owner has not signed, the token transaction will not execute, thereby programmatically enforcing unanimous consent. Such an implementation effectively provides a tamper-proof, automated trust system for shared assets - a real-world improvement in how blockchain ledgers handle multi-signature requirements. It is not merely using a computer as a passive tool; the network and server are actively performing novel validation steps that solve a problem unique to blockchain asset sharing (namely, preventing unauthorized sales without all owners' approval).” The examiner finds them not persuasive and respectfully disagrees. The claim merely implements a fundamental economic principle as described above. In response, the examiner finds that a method of managing and facilitating the transfer of assets among multiple parties using generic computing components such as distributed ledgers, tokens and smart contracts does not provide any specific improvement to the functioning of the computer or technology. Tokens and smart contract block as recited in the claim are just additional elements use to implement the abstract idea in the blockchain environment. Further, the applying of the abstract idea does not improve upon the computing device nor does it improve upon the distributed ledger (i.e., blockchain). Therefore, the claim does not recite any technological advancement or inventive integration beyond applying these tools to an abstract concept and thus fail to impose any meaningful limit that would transform the abstract idea into a practical application under the second prong of step 2A of the subject matter eligibility framework.
Finally, the applicant asserts in regards to Alice Step 2 prong 2 that “the claims include
inventive elements that amount to "significantly more" than that idea. The ordered combination of features here was not conventional, well-understood, or routine. For example, requiring all co-owners' digital signatures for a blockchain token transfer, and implementing that via multiple sequential transactions combined into one, was not a standard practice. Neither was the concept of storing an appraisal certificate on-chain and using it as a basis to validate later transactions. Indeed, the closest prior art required an unorthodox combination of references to approximate these features (as seen in the §103 analysis), indicating that the solution is not trivial or routine. The claims specify an unconventional coordination of devices and actions: multiple user terminals providing signatures, a specialized server combining multi-sig transactions, and a blockchain smart contract verifying data integrity and multi-signature authenticity before execution. This yields an inventive result - a secure token transfer protocol that reduces risk of malicious or unilateral action. The individual components (blockchains, digital signatures, etc.) may have been known, but their particular arrangement here was not. There is no indication that, prior to this invention, blockchain systems inherently prevented shared asset token transfers without unanimous keys as claimed.” The examiner finds them not persuasive and respectfully disagrees. The claim arrangement does not improve the functioning of the blockchain or computer system itself. It rather uses conventional blockchain and cryptography techniques to automate approval and verification steps. The fact that the specific combination claimed may not have been previously disclosed in the prior art does not demonstrate an inventive concept under Alice Step 2B. Further, the applicant argues that the claimed steps are not routine or conventional, however the rejection under 35 U.S.C. 101 was not based on the determination that the recited steps are routine or conventional. Rather, the claims are directed to an abstract idea and do not recite additional elements that integrate the abstract idea into a practical application. Therefore, whether the claimed steps are routine or unconventional does not overcome the rejection. Even assuming, arguendo, that the steps are not routine or conventional, the claim still recites the abstract idea implemented using generic computer components and do not amount to significantly more than the underlining abstract idea.
As such the claims remain within an abstract idea and rejection is maintained based on the
newly amended claims.
Claim Rejections – 35 U.S.C. § 103
Applicant’s arguments with respect to claims 1, 8 and 13 have been considered but are moot because the new ground of rejection.
Regarding applicant’s arguments with respect to claims 2, 5 and 7, the examiner has carefully reviewed and considered the following applicant’s remarks and respectfully disagrees.
“claim 2's distributed storage (IPFS/local/cloud selection) is taught by Shii only in a different context (digital artwork storage) and not in connection with an appraisal warranty document as here.” The reference disclosure of distributed storage for digital artwork demonstrate the general use of a distributed storage for asset related digital data. The different on the content being stored does not establish a patentable distinction. It would’ve been obvious to use the same storage mechanism utilize for digital artwork for storage of warranty document or any other information.
“Claim 5 requires that each sharer (co-owner) signs the original warranty with their private key (and only then will the token trade execute). Yoon's multi-signature process is fundamentally different. Neither Yoon nor Cho suggests modifying Yoon to require every co-owner's signature. Yoon's focus on admin signatures would lead away from the idea of using multiple user signatures (since Yoon's owner is passive after sending the item). Additionally, Cho does not remedy this - Cho (US 2020/0058018) is concerned with warranty payments in smart contracts, not multi-party ownership approvals. Thus, this claim element is non-obvious in view of the cited art.” Yoon teaches the use of digital signatures and multi signature validation in a blockchain system. The specific identity of the signers (administrator or co-owner) does not change the underlining multi signature process and is just an implementation choice.
“Claim 7's restriction of transfer to a preset range of intellectual property rights finds a tenuous parallel in Scott's discussion of rights criteria, but Scott does not specifically teach sharer terminals selecting such a range for a token transfer - it discusses eligibility conditions generally in a rights certificate. The motivation to combine these teachings with Yoon's system is weak, and certainly not provided by the references except with hindsight.” Scott teaches defining and enforcing limited right in digital in digital certificates which can be applied to token transfers in blockchain (¶0057). Combining Yoon with Scott would’ve been obvious to control and enforce assets rights and restrictions.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
US 20210248616 A1 to Foster discloses: The present disclosure involves systems and methods for establishing an auditable and tamperproof record of warranty activities among parties to an associated digital warranty file. A blockchain or other distributed ledger may be used to encrypt, seal, and authenticate data associated with a warranty and stored with a warranty management system. Milestones and decisions associated with the digital warranty file may be encrypted and sealed on the blockchain to provide a fully auditable and non-repudiable record of the warranty process, thereby creating a trustworthy validation of warranty file activity as it moves through a warranty claim process. The blockchain based seals allow all participating parties to confidently rely on the information shared. Blockchain based seals of a warranty file or other data may assure the information cannot be tampered with, while reducing costs for researching and verifying each transaction.
US 20200153607 A1 to Shi discloses: Methods, systems, and apparatus, including computer programs encoded on computer storage media, for digital asset transfer. One of the methods includes: obtaining a request for transferring a quantity of a digital asset from a first blockchain account associated with a blockchain to a second blockchain account associated with the blockchain, wherein the request identifies a tangible asset corresponding to the digital asset; determining a blockchain contract that is deployed on the blockchain and that corresponds to the tangible asset identified in the request; generating, based on the obtained request, a blockchain transaction for transferring the quantity of the digital asset from the first blockchain account to the second blockchain account, wherein the blockchain transaction invokes the determined blockchain contract; and sending the generated blockchain transaction to a blockchain node for adding to the blockchain.
US 20190222418 A1 to O’Brien discloses: Exemplary embodiments of the present disclosure are related to a system for key exchange in a blockchain based system associated with warranty-ownership of physical objects. Embodiments of the key exchange system can include user terminal devices, one or more non-transitory computer-readable media, and a computing system.
US 20200265516 A1 to Xu discloses: Embodiments relate to providing trusted tokenized transactions in a blockchain system. In one embodiment, a tokenization request may include identification information. A fiduciary server may apply a cryptographic private key to a hash of the identification information to generate a digital signature. An exchange server may cause a transmission of the digital signature to a blockchain. The blockchain includes a set of code instructions that verify the digital signature. The verification may include applying the public key corresponding to the cryptographic private key to decrypt the digital signature to re-generate the hash of the identification information. The hash may ensure the integrity of the identification information. The code instructions recorded on the blockchain, when executed, cause a computer to generate a blockchain unit. The tokenized transactions are traceable to the digital signature of the fiduciary server. This may provide a trusted transaction for users of the blockchain regarding the tokenized transactions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE LOZA whose telephone number is (571)270-3979. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/J.L./Examiner, Art Unit 3698
/STEVEN S KIM/Primary Examiner, Art Unit 3698