DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This action is in reply to the remarks and/or arguments for Application 18/720,520 filed on 14 June 2024.
Claims 6-7, 15, and 32-45 stand cancelled.
Claims 1-5, 8-14, 31, 46 and 47 of Group I have been elected in the response.
Claims 16-30 of Group II have been not been elected in the response and have been canceled.
Claims 1-5, 8-14, 31, 46 and 47 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed 14 June 2024 has been considered. An initialed copy of the Form 1449 are enclosed herewith.
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 1-5, 8-14, 31, 46 and 47 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In the instant case, representative claim 1 is directed towards securely making an atomic swap transaction. Claim 1 is directed to the abstract idea of utilizing rules and/or instructions for performing the existing commercial practice (e.g., sales activity, interaction between people) and/or concept of facilitating a transaction between two parties without intermediaries while using public-private cryptography to mitigate risk of non-delivery or performance by either party utilizing the steps of determining a secret value based on the signature message of an unpublished transaction, generating a puzzle transaction that can be unlocked by the secret and published before the secret transaction is revealed, and publishing the secret transaction to create an atomic swap between the two parties, which is grouped under the certain methods of organizing human activity – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial interactions; managing interactions between people (including social activities, teachings, following rules or instructions) as well as mathematical concepts – mathematical relationships, inasmuch as the claimed method as a whole is directed towards facilitating utilizing a mathematical model (e.g., cryptography) to perform calculations utilizing an algorithm, but for the recitation of computer-related components.
Other than the mere nominal recitation of a computer-related device – nothing in the claim element precludes the steps from the organizing human interactions and mathematical concepts groupings grouping, in prong one of step 2A. Accordingly, for these reasons, the claim recites an abstract idea.
Claim 1 recites:
“generating, by the first party, a template of a first transaction having an input based on an output from a prior transaction associated with the second party;
generating, by the first party, a message based on the template of the first transaction;
generating, by the first party, a secret based on the message;
generating, by the first party, a value based on the secret, wherein the secret cannot be derived from the value;
generating, by the first party, a first puzzle transaction, wherein a first locking script of the first puzzle transaction comprises a knowledge proof configured to require an unlocking script to comprise the secret;
publishing, by the first party, the first puzzle transaction to a first blockchain;
obtaining, by the second party, the value based on the secret;
signing, by the second party, the value based on the secret to create a signature;
sending the signature from the second party to the first party;
including, by the first party, the signature in the unlocking script of the first transaction and then sending the first transaction to a second blockchain;
determining, by the second party and from the first transaction on the second blockchain, the message and the secret; and
creating, by the second party, a second transaction which unlocks a first output of the first puzzle transaction based on the secret, and submitting the second transaction to the first blockchain”.
Based on the underlined elements above, abstract ideas and/or concepts are identified. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A, the additional elements of the claim such as a “first blockchain”, “second blockchain”, represent the use of a computer-related devices as a tool (intermediary) to perform an abstract idea and/or does no more than generally apply the abstract idea to a particular field of use. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) implement the acts of utilizing rules and/or instructions for performing the existing commercial practice (e.g., sales activity, interaction between people) and/or concept of facilitating a transaction between two parties without intermediaries while using public-private cryptography to mitigate risk of non-delivery or performance by either party utilizing the steps of determining a secret value based on the signature message of an unpublished transaction, generating a puzzle transaction that can be unlocked by the secret and published before the secret transaction is revealed, and publishing the secret transaction to create an atomic swap between the two parties.
When analyzed under step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of utilizing rules and/or instructions for performing the existing commercial practice (e.g., sales activity, interaction between people) and/or concept of facilitating a transaction between two parties without intermediaries while using public-private cryptography to mitigate risk of non-delivery or performance by either party utilizing the steps of determining a secret value based on the signature message of an unpublished transaction, generating a puzzle transaction that can be unlocked by the secret and published before the secret transaction is revealed, and publishing the secret transaction to create an atomic swap between the two parties using computer computer-related technology and/or devices that merely perform as designed to function. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Hence, claim 1 is not patent eligible.
Independent claim 31 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 31 corresponds to the subject matter of claim 1 in terms of a method (e.g., process). Therefore the reasoning provided for claim 1 applies to claim 31 accordingly.
Independent claim 46 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 46 corresponds to the subject matter of claim 1 in terms of a computer equipment (e.g., manufacture). Therefore the reasoning provided for claim 1 applies to claim 46 accordingly.
Independent claim 47 recites substantially the same limitations as claim 1 above and is ineligible for the same reasons. The subject matter of claim 47 corresponds to the subject matter of claim 1 in terms of a computer program product (e.g., manufacture). Therefore the reasoning provided for claim 1 applies to claim 47 accordingly.
In addition, claims 1 and 31 are further rejected under 35 U.S.C. § 101 as no computer processor device is recited to carry out the recited functionality of the invention. In this instance, it is not clear whether any of the instructions are in executable form and therefore there is no practical application.
As such, the claims are non-statutory because the body of the claims do not contain any limitations indicating the structure of the device and do not recite any machine or transformation (insufficient recitation of a machine or transformation either express or inherent) – no specific computer or processing device recited to carry out the claimed steps or execute computer code instructions is recited. See Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos (Federal Register / Vol. 75, No. 143 / Tuesday, July 27, 2010 / Notices).
Dependent claims 2-5 and 8-14add further details and contain limitations that narrow the scope of the invention. However, these details do not result in significantly more than the abstract idea itself. As explained in the December 16, 2014 Interim Eligibility Guidance from the USPTO (in reference to the BuySAFE, Inc. v. Google, Inc. decision), further narrowing the details of an abstract idea does not change the § 101 analysis since a more narrow abstract idea does not make it any less abstract.
The step(s) recited are a further refinement of methods of organizing human activity – – fundamental economic principles, practices or concepts; sales activity; following set of instructions; commercial or legal interactions (agreements in the form of contracts; business relations); managing interactions between people (including social activities, teachings, following rules or instructions), because it merely describes intermediate steps and/or rules/instructions of the process.
Viewed individually and in combination, these additional elements do not provide meaningful limitations to transform the abstract idea such that the claims amount to significantly more than the abstraction itself.
Accordingly, the present pending claims are not patent eligible and are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-5, 8-14, 31, 46 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Fang et al., US 11,354,657 B2 (“Fang”), in view of Noam et al., US 2020/0374113 A1 (“Noam”).
Re Claim 1: (Original) Fang discloses a method performed in a system comprising a first party and a second party, the method comprising:
generating, by the first party, a template of a first transaction having an input based on an output from a prior transaction associated with the second party; (Abstract: “identifying a first transaction in a first blockchain network that is a first Hash Time Locked Contract (HTLC) transaction in the first blockchain network, identifying a second transaction in a second blockchain network that is a second HTLC transaction in the second blockchain network different from the first blockchain network … determining that the first HTLC transaction and the second HTLC transaction are associated with each other and related to a cross-chain transaction”; C4 L5-10: “first party … second party …”; C53 L57-58: “perform operations by operating on input data and generating output”)
generating, by the first party, a message based on the template of the first transaction; (C18 L7-9: “messages are transmitted between consensus nodes, and each consensus nodes proves that a message is received from a specified peer node …”)
generating, by the first party, a secret based on the message; (C19 L47-48: “the HTLC protocol can define a hash of a redeemable secret as a hash lock …”)
generating, by the first party, a value based on the secret, wherein the secret cannot be derived from the value; (C22 L26-29: “A condition can be configured for the first HTLC where one knowing the secret can use the secret as a proof to obtain the H value …”; L43-45: “… within the expiration time, anyone who provides the secret as the proof can get the to-be-transferred value …”)
Regarding the limitations comprising:
generating, by the first party, a first puzzle transaction, wherein a first locking script of the first puzzle transaction comprises a knowledge proof configured to require an unlocking script to comprise the secret;
publishing, by the first party, the first puzzle transaction to a first blockchain;
Noam, however, makes this teaching in a related endeavor ([0026] “Bitcoin utilizes technologies such as the process/implementation of Proof of Work to solve the problem of consensus on a decentralized ledger”; [0112] “One solution is proof of work (PoW), in which suffrage is subject to spending computer resources and energy on solving a cryptographic puzzle”; [0113] A PoW ledger arrives at consensus over time: anyone can be the public verifier for a set of transactions (usually, a "block"), if they are first to solve a PoW puzzle”; [0194] “The signed transaction is propagated across the peer-to-peer network and reaches miners who verify its validity, and if valid, include it in a block candidate. Each miner then looks for a solution to the Po W puzzle on the block candidate. Eventually, one miner will solve the puzzle and publish the closed block”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Noam to the invention of Fang as described above for the motivation of enabling verification of a transaction’s validity in a secure manner.
Fang further discloses:
obtaining, by the second party, the value based on the secret; (C22 L26-29: “A condition can be configured for the first HTLC where one knowing the secret can use the secret as a proof to obtain the H value …”; L43-45: “… within the expiration time, anyone who provides the secret as the proof can get the to-be-transferred value …”)
signing, by the second party, the value based on the secret to create a signature; (C23 L14-15: “CHECKSIG implements the requirement of a designated entity's signature”; C18 L56-60: “a node can digitally sign a message, and another node can confirm that the message was sent by the node based on the digital signature of Participant A. Digital signatures can also be used to ensure that messages are not tampered with in transit …”)
sending the signature from the second party to the first party; (C18 L64-66: “Participant A appends the digital signature to the message, and sends the message with digital signature to Participant B”)
including, by the first party, the signature in the unlocking script of the first transaction and then sending the first transaction to a second blockchain; (C12 L65-67, C13 L1-3: “techniques described in this specification can perform data mining on the published blockchain transactions to determine, for example, what transactions ( e.g., atomic swaps or cross-chain transactions) a party of interest is involved in in the multiple blockchain networks”; C30 L27-30: “retrieve the transferred value using the secret … create an encrypted digital lockbox that can be opened only by the secret and the designated entity's unique key (e.g., a signature or other unique identifier)”)
determining, by the second party and from the first transaction on the second blockchain, the message and the secret; (C19 L47-48: “the HTLC protocol can define a hash of a redeemable secret as a hash lock …”)
creating, by the second party, a second transaction which unlocks a first output of the first puzzle transaction based on the secret, and submitting the second transaction to the first blockchain. (C2 L7-12: “determining that the first HTLC transaction in the first blockchain network is associated with the second HTLC transaction in the second blockchain network and that the first HTLC transaction and the second HTLC transaction are related to a cross-chain transaction by the computing system; “C30 L27-30: “retrieve the transferred value using the secret … create an encrypted digital lockbox that can be opened only by the secret and the designated entity's unique key (e.g., a signature or other unique identifier)”)
Re Claim 2: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein an output of the first transaction is locked to a public key of the first party. (C18 L40-48: “Asymmetric encryption uses keys pairs that each include a private key, and a public key, the private key being known only to a respective node, and the public key being known to any or all other nodes in the blockchain network. A node can use the public key of another node to encrypt data, and the encrypted data can be decrypted using other node's private key”; C30 L27-30: “retrieve the transferred value using the secret … create an encrypted digital lockbox that can be opened only by the secret and the designated entity's unique key …”)
Re Claim 3: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein the first puzzle transaction is locked to a public key of the second party. (C30 L27-30: “… an encrypted digital lockbox that can be opened only by the secret and the designated entity's unique key …”)
Re Claim 4: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein obtaining, by the second party, the value based on the secret, comprises:
obtaining, by the second party, the value based on the secret from the first puzzle transaction;
wherein the method comprises: receiving, by the second party and from the first party, a candidate value for the value based on the secret from the first puzzle transaction;
checking, by the second party, that the candidate value and the value based on the secret from the first puzzle transaction are equal.
(C19 L39-41: “The HTLC protocol can be configured to lock a given transaction with a hash
and time and to only execute the transaction if specified conditions are met”; C30 L27-30: “retrieve the transferred value using the secret … create an encrypted digital lockbox that can be opened only by the secret and the designated entity's unique key (e.g., a signature or other unique identifier)”; C19 L42-49: “the HTLC protocol can use one or more hash locks ( or
hashlocks) and time locks ( or timelocks) to require parties of a transaction to perform certain operation; or otherwise the transaction will not be fully performed or part of performed operations of the transaction can be rolled back or forfeited. In some embodiments, the HTLC protocol can define a hash of a redeemable secret as a hash lock …”; L43-45: “… within the expiration time, anyone who provides the secret as the proof can get the to-be-transferred value …”)
Re Claim 5: (Previously Presented) Fang in view of Noam discloses the method of claim 1.
wherein the secret comprises: an input and corresponding output of the first transaction; all inputs and all outputs of the first transaction; or an input of the first transaction and none of the outputs of the first transaction. (C53 L57-58: “perform operations by operating on input data and generating output”; C10 L22-25: “determining that the transaction is executed according to the HTLC protocol includes: determining that information of the transaction comprises a secret hash as a hash lock”)
Re Claims 6-7: (Cancelled)
Re Claim 8: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein an input of the first transaction unlocks a multiple signature output of the prior transaction, wherein the multiple signature output is locked to one or more public keys of: the first party; and/or the second party. (C18 L40-48: “Asymmetric encryption uses keys pairs that each include a private key, and a public key, the private key being known only to a respective node, and the public key being known to any or all other nodes in the blockchain network. A node can use the public key of another node to encrypt data, and the encrypted data can be decrypted using other node's private key”; C30 L27-30: “retrieve the transferred value using the secret … create an encrypted digital lockbox that can be opened only by the secret and the designated entity's unique key …”)
Re Claim 9: (Previously Presented) Claim 9, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 1. Accordingly, claim 9 is rejected in the same or substantially the same manner as claim 1.
Re Claim 10: (Previously Presented) Fang in view of Noam discloses the method of claim 9. Regarding the limitation comprising:
wherein the first puzzle transaction and second puzzle transaction are independent puzzle transactions.
Noam, however, makes this teaching in a related endeavor ([0026] “Bitcoin utilizes technologies such as the process/implementation of Proof of Work to solve the problem of consensus on a decentralized ledger”; [0112] “One solution is proof of work (PoW), in which suffrage is subject to spending computer resources and energy on solving a cryptographic puzzle”; [0113] A PoW ledger arrives at consensus over time: anyone can be the public verifier for a set of transactions (usually, a "block"), if they are first to solve a PoW puzzle”; [0194] “The signed transaction is propagated across the peer-to-peer network and reaches miners who verify its validity, and if valid, include it in a block candidate. Each miner then looks for a solution to the Po W puzzle on the block candidate. Eventually, one miner will solve the puzzle and publish the closed block”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Noam to the invention of Fang as described above for the motivation of enabling verification of a transaction’s validity in a secure manner.
Re Claim 11: (Previously Presented) Fang in view of Noam discloses the method of claim 9. Regarding the limitation comprising:
wherein the first puzzle transaction comprises the second puzzle transaction.
Noam, however, makes this teaching in a related endeavor ([0026] “Bitcoin utilizes technologies such as the process/implementation of Proof of Work to solve the problem of consensus on a decentralized ledger”; [0112] “One solution is proof of work (PoW), in which suffrage is subject to spending computer resources and energy on solving a cryptographic puzzle”; [0113] A PoW ledger arrives at consensus over time: anyone can be the public verifier for a set of transactions (usually, a "block"), if they are first to solve a PoW puzzle”; [0194] “The signed transaction is propagated across the peer-to-peer network and reaches miners who verify its validity, and if valid, include it in a block candidate. Each miner then looks for a solution to the Po W puzzle on the block candidate. Eventually, one miner will solve the puzzle and publish the closed block”). It would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the teachings of Noam to the invention of Fang as described above for the motivation of enabling verification of a transaction’s validity in a secure manner.
Re Claim 12: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein the first blockchain and the second blockchain are different blockchains. (C7 L7-15: “managing transactions in multiple blockchain networks includes: accessing transaction data stored in the multiple blockchain networks by a computing system, the transaction data including transactions published in the multiple blockchain networks, each of the multiple blockchain networks being different from each other; identifying, based on the transactions published in the multiple blockchain networks, multiple cross-chain transactions across the multiple blockchain networks”)
Re Claim 13: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein the first blockchain and the second blockchain are the same blockchain. (C16 L33-39: “Each participant ( e.g., user, enterprise) participates in a blockchain network 212 provided as a peer-to-peer network including multiple nodes 214, at least some of which immutably record information in a blockchain 216 … a single blockchain 216 is schematically depicted within the blockchain network 212”)
Re Claim 14: (Previously Presented) Fang in view of Noam discloses the method of claim 1. Fang further discloses:
wherein the secret is generated by hashing the message and/or by using an R-puzzle. (C10 L22-25: “determining that the transaction is executed according to the HTLC protocol includes: determining that information of the transaction comprises a secret hash as a hash lock”)
Re Claim 15: (Cancelled)
Re Claims 16-30: (Cancelled)
Re Claim 31: (Original) Claim 31, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 1. Accordingly, claim 31 is rejected in the same or substantially the same manner as claim 1.
Re Claims 32-45: (Cancelled)
Re Claim 46: (Previously Presented) Claim 46, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 1. Accordingly, claim 46 is rejected in the same or substantially the same manner as claim 1.
Re Claim 47: (Previously Presented) Claim 47, as best understood by the Examiner, encompasses the same or substantially the same scope as claim 1. Accordingly, claim 47 is rejected in the same or substantially the same manner as claim 1.
Conclusion
The prior art(s) made of record and not relied upon is/are considered pertinent to applicant's disclosure.
Camenisch et al. (US 2010/0142704 A1) discloses cryptographic encoding and decoding of secret data. Methods and apparatus are provided for cryptographically encoding secret data in a data processing system. The secret data is encoded in accordance with a verifiable encryption process to produce a cryptographic construction (8) having a decryption constraint dependent on the occurrence of a predetermined event. An event-dependent decryption constraint is thereby built into the cryptography, so that there is an intrinsic restriction on the ability to decrypt the encoded secret data which is dependent on occurrence of the predetermined event. Decoding apparatus for such a cryptographic construction is also provided, as well as distributed trust data processing systems providing accountable privacy based on use of such cryptographic constructions.
Claims 1-5, 8-14, 31, 46 and 47 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Clifford Madamba whose telephone number is 571-270-1239. The examiner can normally be reached on Mon-Thu 7:30-5:00 EST Alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin Hewitt II, can be reached at 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLIFFORD B MADAMBA/Primary Examiner, Art Unit 3692