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 .
Acknowledgements
This Office Action addresses the response filed on 05/05/2026.
Claims 13 and 15 were amended.
Claims 1-20 are pending.
Claims 1-20 were examined.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
According to MPEP 2106 II, It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. Further, MPEP 2103 I C establishes that the subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. Regarding the independent claims, claims 1, 13 and 15 recite “transmitting… for propagation and inclusion in a block” , a statement of intended use or field use. See MPEP 2114 II.
In the instant case, claims 1-12 are directed to a method, claims 13, 14 and 16-20 are directed to a device, and claim 15 is directed to a non-transitory computer-readable medium. Therefore, these claims fall within the four statutory categories of invention. Specifically, the language of the claims that recite an abstract idea are marked in bold below:
a. “transmitting a recipient outpoint from a recipient device to a sender device”;b. “receiving, at the recipient device from the sender device, a partially-complete transaction containing the recipient outpoint as a recipient input to the partially- complete transaction and containing at least one sender input”;c. “determining that the partially-complete transaction includes one or more digital signatures applied by the sender device to the at least one sender input and fewer than all outputs”;d. “adding a recipient output script as an output to the partially-complete transaction”;e. “adding an unlocking script for the recipient outpoint using a digital signature across all input and outputs to produce a complete transaction;” andf. “transmitting the complete transaction from the recipient device to a blockchain node of a blockchain network for propagation and inclusion in a block.”
Therefore, the portions highlighted in bold above recite intermediated settlement, which is an abstract idea grouped within the certain methods of organizing human activity grouping of abstract ideas in prong one of step 2A of the Alice/Mayo two-part test (see MPEP 2106.04). The claims are grouped within certain methods of organizing human activity because the steps recited describe the fundamental economic practice of drafting and submitting a financial transaction and the commercial or legal interaction of agreements in the form of contracts. In situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP 2106.04 and 2106.05(II). Thus, the language identified in the certain methods of organizing human activity groupings were considered as a single abstract idea. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. Specifically, with respect to using computer, recipient device, sender device, one or more processors, memory to perform the recited steps/functions, these additional elements performs the steps or functions such as: “transmitting… (information)”, “receiving… partially-complete transaction…”, “determining… transaction includes signatures…”, “adding… script…”, “adding… script…”, “transmitting... transaction...”. These additional elements are recited at a high-level of generality such that it represents no more than mere instructions to apply the exception using a generic computer component, which only serves to use computers as a tool to perform the abstract idea. Therefore, these elements do not integrate the abstract idea into a practical application because they require no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional element(s) of blockchain node, blockchain network amount to generally linking the use of the judicial exception to a particular technological environment or field of use. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.
With respect to step 2B of the analysis, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional computer elements, such as computer, recipient device, sender device, one or more processors, memory, blockchain node, blockchain network. The computer, recipient device, sender device, one or more processors, memory perform the steps/functions of “transmitting… (information)”, “receiving… partially-complete transaction…”, “determining… transaction includes signatures…”, “adding… script…”, “adding… script…”, “transmitting... transaction...”, , and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the abstract idea of intermediated settlement. The additional element(s) of blockchain node, blockchain network amount to generally linking the use of the judicial exception to a particular technological environment or field of use. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of intermediated settlement. Therefore, the claims are not eligible.
Dependent claims 2-12, 14 and 16-20 further recite the following additional language, in which elements which merely further define the identified abstract idea are marked in bold below:
g) wherein determining further includes determining that the partially-complete transaction does not contain a signature across all outputs; h) wherein determining that the partially-complete transaction includes one or more digital signatures applied by the sender device to the at least one sender input and fewer than all outputs includes determining that the partially-complete transaction permits addition of the recipient output script without invalidating the one or more digital signatures applied by the sender device. i) wherein determining that the partially-complete transaction includes one or more digital signatures applied by the sender device to the at least one sender input and fewer than all outputs includes determining that all signatures applied by the sender device are of type SIGHASH_SINGLE or SIGHASH_NONE. j) wherein determining includes determining that no signature applied by the sender device is of type SIGHASH_ALL (Claim 5) / wherein the instructions, when executed, are to cause the one or more processors to determine that the partially-complete transaction includes one or more digital signatures applied by the sender device to the at least one sender input and fewer than all outputs by determining that no signature applied by the sender device is of type SIGHASH_ALL (Claim 18); k) further comprising the recipient device providing the sender device with a maximum condition relating to sender inputs and sender outputs. l) further comprising the recipient device determining a count of sender inputs and sender outputs in the partially-complete transaction and confirming the count of sender inputs and sender outputs is not greater than a maximum value set by the maximum condition. m) further comprising determining a byte-size of the sender inputs and sender outputs in the partially-complete transaction and confirming that the byte-size is not greater than a maximum size set by the maximum condition. n) wherein transmitting the recipient outpoint from the recipient device to the sender device includes generating and sending a transaction template containing the recipient outpoint as an input to the transaction template. o) wherein the transaction template further contains an output script referencing a recipient output address as one output and designates a transfer quantity to that one output. p) further comprising, at the recipient device: determining a transaction fee; determining an excess quantity from a difference between a stored quantity associated with the recipient outpoint and the transaction fee; and designating the excess quantity to the recipient output script. q) further comprising, at the sender device, generating the partially-complete transaction by: selecting the at least one sender input such that an aggregate quantity associated with the at least one sender input is equal to or greater than a transfer quantity; attaching to the partially-complete transaction, a digital signature for each sender input that signs a respective portion of the partially-complete transaction that includes fewer than all outputs; and transmitting the partially-complete transaction to the recipient device. r) wherein the computing device comprises a point of sale terminal.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. computer, recipient device, sender device, one or more processors, memory), the assessment of these elements under step 2A and step 2B for the dependent claims is inherited from the analysis of the independent claims and omitted for brevity, unless noted by Examiner below.
With respect to the eligibility analysis of claim 2, the claim recites item g) above, which represents the additional elements/functions of determining message contents. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 3 and 16, the claims recite item h) above, which represents the additional elements/functions of determining message contents. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 4 and 17, the claims recite item i) above, which represents the additional elements/functions of determining message contents. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 5 and 18, the claims recite item j) above, which represents the additional elements/functions of determining message contents. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 6 and 19, the claims recite item k) above, which represents the additional elements/functions of providing a condition. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 7 and 20, the claims recite item l) above, which represents the additional elements/functions of determining message contents. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claim 8, the claim recites item m) above, which represents the additional elements/functions of determining message contents and confirming conditions apply. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claim 9, the claim recites item n) above, which represents the additional elements/functions of generating and sending a transaction template. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 10, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the transaction template contains. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claim 11, the claim recites item p) above, which represents the additional elements/functions of determining a fee and a balance. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claim 12, the claim recites item q) above, which represents the additional elements/functions of details of partially-complete transaction generation and contents. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 14, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the device comprises (i.e. a "terminal"). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of intermediated settlement identified in the analysis of independent claims 1, 13 and 15. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
Therefore, while the additional language g)- r) of dependent claims 2-12, 14, and 16-20 slightly modify the analysis provided with respect to independent claims 1, and 13, these additional elements/functions are insufficient to render the dependent claims eligible, as detailed above. Therefore, these dependent claims are also ineligible.
Response to Arguments/Amendments
Claim rejections - 35 USC § 112(b)
Applicant’s amendments and arguments (see remarks, pages 7-9, filed on 05/05/2026), with respect to the rejection of claims 13-20 under 35 USC § 112(b) have been fully considered. Examiner finds Applicant's arguments persuasive in view of the submitted amendments, therefore the rejection was withdrawn.
Claim rejections - 35 USC § 101
Applicant’s amendments and arguments (see remarks, pages 9-12, filed on 05/05/2026), with respect to the rejection of claims 1-20 under 35 USC § 101 as being directed to an abstract idea have been fully considered but are not persuasive.
Applicant asserts “Applicant's claimed subject matter addresses a specific technological problem in the field of blockchain technology and transfers by avoiding the "blank cheque" problem specific to UTXO-model blockchain networks”. Applicant further asserts: “Specifically, in Applicant's claimed subject matter, a recipient outpoint is transmitted to a sender device, which then returns a partially-complete transaction which includes sender outputs, allowing for the recipient device to insert an output script, without allowing any changes to the outputs attached by the sender to the partially complete transactions. As such, Applicant's claimed subject is able to complete the transfer while covering the gas and without exposing any of the sender's or the recipient's data through the use of a 'blank cheque'. As such, Applicant's claimed subject matter increases the data security of output based blockchain transfers, while overcoming a technological hurdle in the field. As such, Applicant's claimed subject matter solves a technical challenge unique to the field of UTXO-based blockchain networks, which is overcoming the restrictive gas required for blockchain transfers and the use of a "black cheque" by providing a new set of computer-implemented operations.” Examiner respectfully disagrees with the claim interpretation provided by Applicant. The rejection is clear in defining language directed to intended use, i.e. “transmitting the complete transaction from the recipient device to a blockchain node of a blockchain network for propagation and inclusion in a block”. Therefore, Examiner disagrees the claim encompass a technological problem, as the claimed subject matter does not encompass or require the implementation of the claimed protocol in a blockchain. In other words, the claims are directed to a device interacting with other devices (i.e. a sender device, a node) in order to build and transmit a transaction. Therefore, Examiner is still in the position that the claims recite an intermediated settlement, in which the receiver device intermediates a transaction from a sender device to a node. The claims are grouped within certain methods of organizing human activity because the steps recited describe the fundamental economic practice of drafting and submitting a financial transaction and the commercial or legal interaction of agreements in the form of contracts. Therefore, Examiner is in the position that the claim scope is directed to an entity drafting a transaction in conjunction with another entity and submitting this transaction to a third entity (i.e. “a node”). Examiner does not interpret the claims as encompassing the incorporation of this message into a blockchain as this is merely recited as the intended use of the transmission step (i.e. “for propagation and inclusion…”). This contrasts with Applicant’s position that the “claimed subject is able to complete the transfer while covering the gas and without exposing any of the sender's or the recipient's data through the use of a 'blank cheque'” (emphasis added) as no transfer to the blockchain network is required, and therefore, gas fees are outside of the scope of the claims. Following the “blank check” analogy, the claims would be the equivalent of two entities writing and signing a check and mailing the cheque to a third entity for cashing the check at a bank. Similarly, drafting and mailing a check does not necessarily require that the check will be cashed/processed by the bank, even though this is the intended goal of drafting and mailing. Therefore, Applicant’s arguments directed to the claims being directed to addressing a problem specific to blockchain networks unpersuasive, as the claims merely recite constructing a message and transmitting this message to a node.
Applicant further asserts: ”Applicant's claimed subject matter amounts to significantly more than the judicial exception itself, as Applicant's claimed subject provided an ordered combination of elements which are not conventional to UTXO-based blockchain networks, and are instead a mechanism by which transfer security and technological usability are improved.” Once again Examiner respectfully disagrees, as the blockchain networks are outside of the scope of the claims, as detailed above. Further, the additional elements are recited at a high-level of generality such that it represents no more than mere instructions to apply the exception using generic computer components, which only serves to use computers as a tool to perform the abstract idea.
Lastly, Applicant asserts: “Applicant's claimed subject matter includes limitations… that add specific limitations that, in combination, are not well-understood, routine, conventional activity in the field of blockchain transfers and thus define unconventional steps that confine the claim to a particular useful application.” As discussed above, Examiner disagrees with Applicant’s interpretation of the Broadest Reasonable interpretation of the claims as encompassing “blockchain transfers”. The claims are merely directed to an entity constructing a transaction in cooperation with a second entity (i.e. a sender) and transmitting the complete transaction to a third entity (i.e. a node). Examiner is unpersuaded by Applicant’s arguments that the recited steps/functions “confine the claim to a particular useful application”, as the additional elements of a blockchain node, a blockchain network, recited at a high level of generality, amount to generally linking the use of the identified judicial exception to a particular technological environment or field of use.
Therefore, Examiner is in the position that the amended claims do not offer significantly more than the abstract idea itself, and therefore the claims are still rejected under 35 USC § 101 as further detailed above.
Claim rejections - 35 USC § 103
Applicant’s amendments and arguments (see remarks, pages 12-16, filed on 05/05/2026), with respect to the rejection of claims 1-20 under 35 USC § 103 have been fully considered. Examiner finds Applicant's arguments regarding the combination of references persuasive; therefore the rejection was withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Non-patent Literature
McCorry (NPL 2020, listed in PTO-892 as page 1, reference "U") disclose How to build a relay as a service in Bitcoin, including implementing a relayer in Bitcoin, in which it is the relayer, not the user, who pays for the network fee.
Sood (NPL 2018, listed in PTO-892 as page 1, reference "V") disclose Bitcoin Signature Types - SIGHASH, including a number of different ways that Bitcoin transactions can be signed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
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