DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013 is being examined under the AIA first inventor to file provisions.
Status of Claims
The following is a FINAL Office Action in response to Applicant’s amendments filed on 12/15/2025.
Claims 1, 8, 14, 18 are amended
Claim 10 is cancelled
Claims 6, 22-32 are previously cancelled
Overall, Claims 1-5, 7-9, 11-21 are pending and have been considered below.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. GB2118552.5, filed on 12/20/2021.
Examiner Note
Claims 1–5, 10, 18, and 21 recite the term “and/or.” This term will be interpreted as “or” throughout examination .
Claim Objection(s)
Claim 14 objected to because of the following informalities: Claim 14 in line 6 recites "the tokens", it should read "the token". Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 USC 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, 7-9, 11-21 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-5, 7,-9, 11-21 are directed to a system.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
Per Step 2A.1. The limitations of independent claim 1 shown in bold recite an abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below.
[A] An apparatus for recording information relating to a blockchain transaction, the apparatus comprising:
[B] a communication interface for receiving a transmission associated with a transaction, wherein the transaction is associated with the blockchain;
[C] a memory for storing smart contract information so that it is available for offline use; and
[D] a processor for:
[E] determining provenance information associated with the transaction;
[F] determining a network status of the apparatus; and
[G] when the apparatus is not connected to a network:
[H] evaluating the transaction based on the stored smart contract information; and
[I] recording the transaction and/or the provenance information on the memory based on the evaluation of the transaction.
Claim 1 recites: recording information relating to a transaction by ([A]); receiving a transmission ([B]); storing contract information offline ([C]); determining the source of the transaction information and network status ([E]-[G]); and evaluating and recoding the transaction based on the contract ([H]-[I]), which, based on the claim language and in view of the application disclosure, represents a process aimed at enabling a system for recordkeeping of transactions.
This overall combination, covers agreements in the form of contracts, fundamental economic practice of recordkeeping of transaction (i.e., accounting) because the claim language recites, receiving transaction information, evaluating transaction information, and recording the transaction based on the evaluation. Such limitation covers under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that claim 1 recites an abstract idea that corresponds to a judicial exception.
Alternatively, and/or in addition, the limitations covers determining network status and evaluating the transaction information and such activities can be performed by human using pen and paper. The human can make observation based on the information and make judgment the status and can evaluate based on information. Additionally, such limitations expresses observation, evaluation, judgement, which falls under Mental Processes, i.e., Concepts Performed in the Human Mind grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)). For example, the added elements “apparatus,” “blockchain,” “interface,” “memory,” “contract,” and “processor” recite computing elements at a high level of generality, which is equivalent to instructions to implement the abstract idea “by a computer” or “on a computer.” The additional elements do not preclude from carrying out the identified abstract idea of recordkeeping of transactions. Therefore, those additional elements do not serve to integrate the identified abstract idea into practical application.
The additional elements in the independent claims, shown not bolded above, recite: apparatus ([A], [F], [G]), blockchain ([A]-[B]), wherein the transaction is associated with the ([B]), interface ([B]), memory ([C]), contract ([C]), processor ([D]). When considered individually, they amount to nothing more than generally linking the use of the judicial exception to particular technological environment or field of use.
Therefore, the additional steps of claim 1 do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Therefore, when considered as a whole and as an ordered combination, the additional elements in the claim amount to instructions to apply the abstract idea on a computer. Moreover, as noted above, there is nothing the computing and additional elements (limitations [A]-[D]), that is significant or meaningful to the underlying abstract idea because the identified abstract idea of recordkeeping of transactions could have been reasonably performed when provided with the relevant data and/or information.
Per Step 2A.1. The limitations of independent claim 14 shown in bold recite an abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below.
[A] An apparatus for recording information relating to a blockchain transaction, the apparatus comprising:
[B] a processor for:
[C] identifying a token associated with the blockchain;
[D] identify a denomination of the token; and
[E] splitting the [token] into a plurality of new tokens of smaller denominations,
[F] wherein each of the new tokens is associated with the same provenance information as the split token;
[G] wherein the processor is arranged to clone provenance information associated with the split token and to associate this cloned provenance information with each of the new tokens.
Claim 14 recites: recording information relating to a transaction ([A]); identifying token and denomination ([C]-[D]); splitting the token ([E]), and associating token with the same information ([F]-[G]), which, based on the claim language and in view of the application disclosure, represents a process aimed at enabling a system for recordkeeping of transactions.
This overall combination, covers agreements in the form of contracts, sales activities because the claim language recites, identifying token and its denomination. And splitting the token into its denomination. Such limitation covers under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that claim 14 recites an abstract idea that corresponds to a judicial exception.
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)). For example, the added elements “apparatus,” “blockchain,” and “processor” recite computing elements at a high level of generality, which is equivalent to instructions to implement the abstract idea “by a computer” or “on a computer.” The additional elements do not preclude from carrying out the identified abstract idea of recordkeeping of transactions. Therefore, those additional elements do not serve to integrate the identified abstract idea into practical application.
The additional elements in the independent claims, shown not bolded above, recite: apparatus ([A]), blockchain ([A], [C]), processor ([B, G]), wherein the processor is arranged to [G]). When considered individually, they amount to nothing more than generally linking the use of the judicial exception to particular technological environment or field of use.
Therefore, the additional steps of claim 14 do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Claim 14 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Therefore, when considered as a whole and as an ordered combination, the additional elements in the claim amount to instructions to apply the abstract idea on a computer. Moreover, as noted above, there is nothing the computing and additional elements (limitations [A]-[C], [G]), that is significant or meaningful to the underlying abstract idea because the identified abstract idea of recordkeeping of transactions could have been reasonably performed when provided with the relevant data and/or information.
Per Step 2A.1. The limitations of independent claim 18 shown in bold recite an abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below.
[A] An apparatus for recording information relating to a blockchain transaction, the apparatus comprising:
[B] a processor for:
[C] identifying a plurality of tokens associated with the blockchain;
[D] identify a denomination of each token; and
[E] recording on the blockchain and/or on a memory of the apparatus a new token with a denomination that is equal to the sum of the denominations of the plurality of tokens;
[F] wherein the new token is associated with the same provenance information as the plurality of tokens; and
[G] wherein the processor is arranged to cause the removal of provenance information associated with the plurality of tokens from a datastore.
Claim 18 recites: recording transaction relating to a transaction ([A]); identifying token and denomination ([C]-[D]); recording the denomination of token ([E]); associating token with the same information ([F]), and removing information [G]), which, based on the claim language and in view of the application disclosure, represents a process aimed at enabling a system for recordkeeping of transactions.
This overall combination, covers agreements in the form of contracts, sales activities because the claim language recites, identifying token, denomination, and recording the denomination. And splitting the token into its denomination. Such limitation covers under Certain Methods of Organizing Human Activity, i.e., Commercial or Legal Interactions grouping of abstract ideas (see MPEP 2106.04(a)(2)).
Accordingly, it is reasonable to conclude that claim 18 recites an abstract idea that corresponds to a judicial exception.
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)). For example, the added elements “apparatus,” “blockchain,” “processor,” and “memory” recite computing elements at a high level of generality, which is equivalent to instructions to implement the abstract idea “by a computer” or “on a computer.” The additional elements do not preclude from carrying out the identified abstract idea of recordkeeping of transactions. Therefore, those additional elements do not serve to integrate the identified abstract idea into practical application.
The additional elements in the independent claims, shown not bolded above, recite: blockchain ([A], [C], [E]), processor ([B], [G]), memory ([E], wherein the processor is arranged to ([G])). When considered individually, they amount to nothing more than generally linking the use of the judicial exception to particular technological environment or field of use.
Therefore, the additional steps of claim 18 do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Claim 18 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Therefore, when considered as a whole and as an ordered combination, the additional elements in the claim amount to instructions to apply the abstract idea on a computer. Moreover, as noted above, there is nothing the computing and additional elements (limitations [A]-[C], [E], [G]), that is significant or meaningful to the underlying abstract idea because the identified abstract idea of recordkeeping of transactions could have been reasonably performed when provided with the relevant data and/or information.
Therefore, it is concluded that independent claims 1, 14, 18 are deemed ineligible.
Dependent Claims: Claims 2-5, 7-9, 11-13, 15-17, 19-20 are analyzed for subject matter eligibility. However, these claims fails to recite patent eligible subject matter for following reasons:
Claim 2, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] the apparatus is arranged to record the transaction and/or the provenance information on the blockchain when the apparatus is connected to a network.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 3, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] being a portable and/or disposable apparatus.
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)).
Claim 4, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein recording the transaction and/or the provenance information on the blockchain comprises transmitting the transaction and/or the provenance information to a node of the blockchain such that the transaction or the provenance information can thereafter be recorded on the blockchain.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 5, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] the processor and/or the communication interface is arranged to record the transaction and/or the provenance information on the blockchain; and/or
[B] the communication interface is arranged to transmit the transaction and/or the provenance information to a node of the blockchain.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 7, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the communication interface is arranged to communicate using a mobile network when the apparatus is not connected to an area network.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 8, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein: the memory is arranged to:
[B] store a total value of tokens held by an owner of the apparatus; and
[C] during a period where the apparatus is not connected to the network, the processor is arranged to:
[D] determine one or more previous transactions involving the apparatus; and
[E] record the transaction in dependence on the combined value of the transaction and the previous transactions being less than the stored total value of token.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 9, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the processor is arranged to record the transaction in dependence on the provenance information associated with the transaction and/or in dependence on provenance information stored on the memory.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 11, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the determination of provenance information is dependent on an application associated with the transaction.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 12, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein each of the tokens has a denomination, wherein the denomination is one of a set of possible denominations.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 13, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the processor is arranged to: identify a value of the denominations of one or more tokens;
[B] identify the value of the transaction;
[C] determine whether there is a combination of tokens that is equal to the value of the transaction; and
[D] split one of the tokens into a plurality of new tokens of smaller denominations in dependence on said determination;
[E] preferably wherein each of the new tokens is associated with the same provenance information as the split token.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 15, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the processor is arranged to determine a combination of tokens that is equal to the value of the transaction, which combination uses the least possible number of tokens.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 16, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the processor is arranged to: identify one or more further tokens associated with the blockchain;
[B] determine a sum of the denominations of the token and the further tokens; and
[C] record on the blockchain a new token with a denomination that is equal to the sum of denominations.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 17, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the new token is associated with the same provenance information as the token and each of the further tokens.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 19, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the processor is arranged to determine whether a condition has been met wherein the processor is arranged to record the new token in dependence on the condition being met.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 20, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the condition is associated with one or more of: a number of uses of the token;
[B] a value of the token;
[C] an age of the token;
[D] a value of transactions that have included the token; and
[E] an amount of provenance information associated with the token.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
Claim 21, recites the following bolded claim elements as abstract idea as explained in MPEP 2106.04(a). The non-bolded language are additional elements addressed further below. The claim further recites:
[A] wherein the processor is arranged to identify one or more further tokens with the same denomination as the token and/or wherein the processor is arranged to identify one or more further tokens associated with the same party as the token.
The claim further recites the abstract idea of recordkeeping of transaction. In other words, it recites limitation 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)).
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense, i.e., a computer receives information from another computer, processes that information and then sends a response based on processing results. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the computing devices are facilitating the abstract concept is not enough to confer subject matter eligibility. Overall, the further elements do not confer subject matter eligibility to the invention since their individual and combined significance are not changing the nature of the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly
more. (See MPEP 2106.05).
In sum, Claims 1-5, 7-9, 11-21 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 1-5, 7, 9, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kikinis (US 20200394626 A1), in view of Wright (US 20220129888 A1), in further view of Hron (US 11909858 B1).
Regarding Claim 1. Kikinis discloses:
An apparatus for recording information relating to a blockchain transaction, the apparatus comprising: [see at least (0098) Both phones (i.e. apparatus) (or the consumer phone and the merchant phone and/or point of sale) will then keep a record of this transaction and try at the next opportunity to send this transaction over the network backbone to a blockchain.]
a processor for: determining provenance information associated with the transaction;[see at least (0098) Both phones (or the consumer phone and the merchant phone and/or point of sale) will then keep a record of this transaction and try at the next opportunity to send this transaction over the network backbone to a blockchain.]
determining a network status of the apparatus; and [see at least (0098), trusted devices on a P2P network, they may send an encrypted copy of their mutual transactions to the trusted devices, thereby enabling the encrypted copy to be transmitted over the network backbone to a blockchain as quickly as possible via repeated attempts by one or more trusted devices that may have better connectivity than the original sending device.]
when the apparatus is not connected to a network: evaluating the transaction …; and [see at least (0089) The buyer validates (in a closed and trusted app) the merchant identity and transaction details and approves to send the required digital money from his wallet to the merchant. In those cases where there is no network available (i.e., offline), the buyer may present an encrypted barcode to the merchant. The merchant then reads the barcode via the merchant wallet app (closed and trusted app) and validates the correctness of the transaction. The merchant sends approval via another encrypted barcode to the buyer that summarizes the transaction, so the two sides have both evidence and a receipt that the transaction has been completed.]
recording the transaction [or] the provenance information on the memory based on the evaluation of the transaction. [see at least (0098) Both phones (or the consumer phone and the merchant phone and/or point of sale) will then keep a record of this transaction and try at the next opportunity to send this transaction over the network backbone to a blockchain.]
Kikinis discloses performing transaction, however, it does not disclose:
a communication interface for receiving a transmission associated with a transaction, wherein the transaction is associated with the blockchain;
a memory for storing smart contract information so that it is available for offline use; and
… the stored smart contract information
Nonetheless, Wright discloses:
a communication interface for receiving a transmission associated with a transaction, wherein the transaction is associated with the blockchain; [see at least Fig. 5, (0022) An advantage of the SPV wallet … enables power and storage constrained devices such as phones and laptops to operate within the Bitcoin ecosystem because it only needs to check that a transaction has been included in a verified by the network.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis to include the features of Wright. One of ordinary skill in the art would perform transaction as taught by Kikinis and using the interface for receiving information as taught by Wright to accurately perform the transaction. Kikinis discloses performing transaction. Wright teaches receiving transaction information associated with the blockchain. Because both Kikinis as well as Wright are implemented in the field of performing transaction using blockchain environment and both references address performing transaction as taught by Kikinis with the technique of receiving information as taught by Wright to accurately perform transaction. Moreover, since the elements disclosed by Kikinis, as well as Wright would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Kikinis/Wright.
The combination of Kikinis in view of Wright discloses performing transaction. However, the above combination Kikinis, Wright does not disclose:
a memory for storing smart contract information so that it is available for offline use; and
… the stored smart contract information
However, Hron discloses:
a memory for storing smart contract information so that it is available for offline use; and [see at least (2/43-45) Once the smart contract is generated, it may be stored on various media and the smart contract code can be executed on a local device]
… the stored smart contract information [see at least (2/43-45) Once the smart contract is generated, it may be stored on various media and the smart contract code can be executed on a local device]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis, Wright to include the features of Hron. One of ordinary skill in the art would perform transaction as taught by Kikinis, Wright and using the stored smart contract information as taught by Hron to accurately perform the transaction. Kikinis, Wright discloses performing transaction. Hron teaches storing generated smart contract in a local device. Because both Kikinis, Wright as well as Hron are implemented in the field of performing transaction using blockchain environment and both references address performing transaction as taught by Kikinis, Wright with the smart contract information of Hron to accurately perform transaction. Moreover, since the elements disclosed by Kikinis, Wright, as well as Hron would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Kikinis, Wright/Hron.
Regarding Claim 2. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
wherein using the communication interface, the apparatus is arranged to record the transaction [or] the provenance information on the blockchain when the apparatus is connected to a network. [see at least (0096) Both phones keep a record of this transaction and make repeat attempts to send this information to the backbone. If neither phone can connect to the backbone, said phones will send an encrypted copy of their transaction to a known, trusted device on the network. This trusted device serves as a proxy and transmits the copied transaction to the backbone as soon as it is able to connect.]
Regarding Claim 3. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
The apparatus of claim 1, being a portable and/or disposable apparatus. [see at least (0098) Both phones (i.e., portable device) (or the consumer phone and the merchant phone and/or point of sale) will then keep a record of this transaction]
Regarding Claim 4. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
wherein recording the transaction and/or the provenance information on the blockchain comprises transmitting the transaction [or] the provenance information to a node of the blockchain such that the transaction or the provenance information can thereafter be recorded on the blockchain. [see at least (0098) Both phones (or the consumer phone and the merchant phone and/ or point of sale) will then keep a record of this transaction and try at the next opportunity to send (i.e., transmit) this transaction over the network backbone to a blockchain.]
Regarding Claim 5. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
the processor [or] the communication interface is arranged to record the transaction and/or the provenance information on the blockchain; [or] [see at least [0096] Both phones keep a record of this transaction and make repeat attempts to send this information to the backbone.]
the communication interface is arranged to transmit the transaction [or] the provenance information to a node of the blockchain. [see at least (0096) trusted device serves as a proxy and transmits the copied transaction to the backbone as soon as it is able to connect.]
Regarding Claim 7. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
wherein the communication interface is arranged to communicate using a mobile network when the apparatus is not connected to an area network. [see at least (0098) In some cases a system for transacting in an environment without connectivity between a network backbone and a blockchain … each time such a client or merchant devices encounters other known, trusted devices on a P2P network, they may send an encrypted copy of their mutual transactions to the trusted devices, thereby enabling the encrypted copy to be transmitted over the network backbone to a blockchain as quickly as possible via repeated attempts by one or more trusted devices that may have better connectivity than the original sending device.]
Regarding Claim 9. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
wherein the processor is arranged to record the transaction in dependence on the provenance information associated with the transaction [or] in dependence on provenance information stored on the memory. [see at least (0096) Both phones keep a record of this transaction and make repeat attempts to send this information to the backbone. If neither phone can connect to the backbone, said phones will send an encrypted copy of their transaction to a known, trusted device on the network. This trusted device serves as a proxy and transmits the copied transaction to the backbone as soon as it is able to connect.]
Regarding Claim 11. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
wherein the determination of provenance information is dependent on an application associated with the transaction. [see at least Fig. 1, (0075) A sender 101 initiates a transaction request 102, which includes the sender’s digital signature 103, a deposit of a digital asset 104 such as an amount of cryptocurrency, and the recipient’s public encryption key 105. (0098) a merchant device such as a phone or point of sale offers or transmits a set of credentials for an ad hoc network to close the transaction (by offering or transmitting an embedded set of optional ways to connect an ad hoc network between a buyer phone and a merchant phone or point of sale), and allows a direct exchange of multiple handshakes to secure the transaction]
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kikinis, in view of Wright, in further view of Hron, as applied to claim 1 above, in further view of DeCastro (US 20150170112 A1).
Regarding Claim 8. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
the memory is arranged to: store a total value of tokens held by an owner of the apparatus; and [see at least (0088) During the transaction, the buyer's phone camera 2512 receives 2520 QR code 2502 and sends 2530 payment information 2511 to the merchant's phone via the network. (if no carrier or Wi-Fi network is available, other network methods can be employed, as discussed below.) The transaction is complete once the payment has been sent to the merchant's phone and shows up in his/her increased balance 2504. (0089) The merchant sends approval via another encrypted barcode to the buyer that summarizes the transaction, so the two sides have both evidence and a receipt that the transaction has been completed. When the receipt of the merchant or the receipt of the buyer is sent and received on appropriate servers, the transaction may be added to a blockchain ledger and the transaction declared completed.]
Note: MPEP 2144.01 sets forth that it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. Here, it is reasonable to infer that the value is stored in the apparatus to complete the transaction. And, therefore one of skill in the art would have understood the reference to teach the limitation.
The combination of Kikinis in view of Wright, in further view of Hron discloses performing transaction. However, the above combination of Kikinis, Wright, Hron does not disclose:
during a period where the apparatus is not connected to the network, the processor is arranged to: determine one or more previous transactions involving the apparatus; and
record the transaction in dependence on the combined value of the transaction and the previous transactions being less than the stored total value of token.
Nonetheless, DeCastro discloses:
during a period where the apparatus is not connected to the network, the processor is arranged to: determine one or more previous transactions involving the apparatus; and [see at least (0048) The device 10 can also quickly download the owner's complete account information, including information relating to and resulting from previous transactions, or of the activity by transacting parties who are in privity with owner, and the like. (0072) A first function comprises means for storing balance information relating to an account, including digital currency accounts and fiat currency accounts, such as those provided on a cryptocurrency network and those provided by a bank that offers electronic banking services, respectively. Data may be stored in hot storage or cold storage … while cold storage comprises means for storing data offline where there is no communication means linking the memory element where the data are stored and the system, network, and devices of the invention unless and until a gap is closed by direct physical human action.]
record the transaction in dependence on the combined value of the transaction and the previous transactions being less than the stored total value of token. [see at least (0048) An amount spent via the device may be deducted, for example, from the currency balance stored in the device and then wait for a connection to the network to update it centrally. The device 10 can also quickly download the owner's complete account information, including information relating to and resulting from previous transactions, or of the activity by transacting parties who are in privity with owner, and the like.]
Note: MPEP 2144.01 sets forth that it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. One of skill in the art can conclude for a transaction to be completed the user needs to have the appropriate amount (i.e., the amount being greater than value of the transaction and previous transaction) because, amount being less than the transaction value will cause the transaction to fail as the user does not have the appropriate amount to complete the transaction. And, therefore one of skill in the art would have understood the reference to teach the limitation.
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis, Wright, Hron to include the features of DeCastro. One of skill in the art would use the technique of performing transaction as taught by Kikinis, Wright, Hron with the recordkeeping technique as taught by DeCastro to accurately keep records of transaction. Kikinis, Wright, Hron discloses performing transaction. DeCastro teaches recording token transaction(s). Because both Kikinis, Wright, Hron as well as DeCastro performs transaction, and then updated the blockchain ledger once its connected to the network, and both references addresses performing transaction as taught by Kikinis, Wright, Hron with the recordkeeping technique of DeCastro to accurately keep records of transactions. Moreover, since the elements disclosed by Kikinis, Wright, Hron, as well as DeCastro would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Kikinis, Wright, Hron/DeCastro.
Claims 12-13, 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kikinis, in view of Wright, in further view of Hron, as applied to claim 1 above, in further view of Coughlan (US 20240211904 A1).
Regarding Claim 12. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis, Wright further discloses:
wherein each of the tokens has a denomination, [see at least (0060) They are single-unit in that there is a denominated unit (often referred to as a “coin” or “token”) which is the unit of value for all transactions. Fractions of a denominated unit may be transferred, but the denominated unit never changes.]
The combination of Kikinis in view of Wright, in further view Hron discloses performing transaction. However, the above combination of Kikinis, Wright, Hron does not disclose:
wherein the denomination is one of a set of possible denominations.
Nonetheless, Coughlan discloses:
wherein each of the tokens has a denomination, wherein the denomination is one of a set of possible denominations. [see at least Figs. 3-4 (0017) each token is of a denomination selected from among a defined ordered set of denominations]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis, Wright, Hron to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis, Wright, Hron with the denomination of currency as taught by Coughlan. Kikinis, Wright, Hron discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis, Wright, Hron as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis, Wright, Hron with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the features disclosed by Kikinis, Wright, Hron as well as Coughlan would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Kikinis, Wright, Hron/Coughlan.
Regarding Claim 13. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
identify a value of the denominations…; [see at least (0060) there is a denominated unit (often referred to as a “coin” or “token”) which is the unit of value for all transactions]
The combination of Kikinis in view of Wright, in further view of Hron discloses performing transaction. However, the above combination of Kikinis, Wright, Hron does not disclose:
identify a value of the denominations of one or more tokens;
identify the value of the transaction;
determine whether there is a combination of tokens that is equal to the value of the transaction; and
split one of the tokens into a plurality of new tokens of smaller denominations in dependence on said determination; preferably wherein each of the new tokens is associated with the same provenance information as the split token.
Nonetheless, Coughlan discloses:
identify a value of the denominations of one or more tokens; [see at least Fig. 4 (0031) a token system could tokenize a fiat currency, each token representing a certain denomination of banknote, like $20, $10, $5, as defined by the currency denominations.]
identify the value of the transaction; [see at least (0100) If the node has sufficient tokens to meet the transfer instructions, but cannot sum available tokens to match the selected token quantity, then it needs to split one of the tokens into a smaller denomination. As an example, if the selected token quantity is $20 and the node only has tokens in the $50 denomination, then it must split one of them into two $20 tokens and a $10 token. (reads on: initial selected token is the transaction value)]
determine whether there is a combination of tokens that is equal to the value of the transaction; and [see at least Fig. 4]
split one of the tokens into a plurality of new tokens of smaller denominations in dependence on said determination; (see Fig. 7 (0134)-(0135) In the above expression, the candidate root ID is Root ID.sub.recomb, the hash function is H(.Math.), N is the number of tokens being consolidated, Root IDi refers to the root ID of the ith token, and n is the length of the root ID bit-space.]
preferably wherein each of the new tokens is associated with the same provenance information as the split token. [see at least [0035] One of the user nodes, such as the first user node 104, may take possession or ownership of a plurality of tokens and may transfer one or more tokens to another user node, such as the second user node 106. The underlying transfer protocol, whether blockchain-based or not, may govern the mechanism for securely transferring possession and/or ownership of a token. (reads on: ownership of polarity of tokens can be transferred)]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis, Wright, Hron to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis, Wright, Hron with the denomination of currency as taught by Coughlan. Kikinis, Wright, Hron discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis, Wright, Hron as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis, Wright, Hron with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claim 19. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
…wherein the processor is arranged to record the new token… [see at least (0087) In a system where payments are done using tokens representing a currency, these tokens may be transacted on a blockchain and sometimes moved among banks, possibly resulting in an imbalance of bank FIAT accounts. In such cases, from time to time one or more banks may require a transfer on an RTGS system to correct an such an imbalance … (0096) the merchant phone and the buyer phone connect via an ad hoc network. Both phones keep a record of this transaction and make repeat attempts to send this information to the backbone.
The combination of Kikinis in view of Wright, in further view of Hron discloses performing transaction. However, the above combination of Kikinis, Wright, Hron does not disclose:
wherein the processor is arranged to determine whether a condition has been met wherein the processor is arranged to record the new token in dependence on the condition being met
Nonetheless, Coughlan discloses:
wherein the processor is arranged to determine whether a condition has been met wherein the processor is arranged to record the new token in dependence on the condition being met. [see at least (0109) a condition may be imposed within the transaction or as part of the transaction validation that the issue node validate that the root ID is valid and that either the input tokens are active or that the split output tokens are active (for example, if the sending node has already notified the issuer node of its intention to split the token)]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis, Wright, Hron to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis, Wright, Hron with the denomination of currency as taught by Coughlan. Kikinis, Wright, Hron discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis, Wright, Hron as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis, Wright, Hron with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claim 20. Kikinis, Wright, Hron Coughlan discloses the limitations of Claim 19. Kikinis further discloses:
wherein the condition is associated with one or more of: a number of uses of the token; a value of the token; an age of the token; a value of transactions that have included the token; and an amount of provenance information associated with the token. [see at least (0087) In a system where payments are done using tokens representing a currency, these tokens may be transacted on a blockchain (i.e., value of token) and sometimes moved among banks, possibly resulting in an imbalance of bank FIAT accounts. In such cases, from time to time one or more banks may require a transfer on an RTGS system to correct an such an imbalance. (0113) blockchains use a 256 bit address space 1001. While this is sufficient for existing blockchains with infinite token lifespan (e.g. Bitcoin, ETHEREUM®), 256 bits insufficient for use of single use token technology where the creation and destruction of each coin must be recorded]
Regarding Claim 21. Kikinis, Wright, Hron discloses the limitations of Claim 1. Kikinis further discloses:
wherein the processor is arranged to identify … denomination … [see at least (0060) there is a denominated unit (often referred to as a “coin” or “token”) which is the unit of value for all transactions]
The combination of Kikinis in view of Wright, in further view of Hron discloses performing transaction. However, the above combination of Kikinis, Wright, Hron does not disclose:
wherein the processor is arranged to identify one or more further tokens with the same denomination as the token [or] wherein the processor is arranged to identify one or more further tokens associated with the same party as the token.
Nonetheless, Coughlan discloses:
wherein the processor is arranged to identify one or more further tokens with the same denomination as the token [or] wherein the processor is arranged to identify one or more further tokens associated with the same party as the token. [see at least (0100) in operation 716, the node splits one of the available tokens (a “first” token) into two or more tokens of smaller denominations. It does so by generating new serial numbers for the two or more tokens of smaller denominations based on the serial number of the first token. That is, the two or more tokens of smaller denomination share the same flags and the same root id and leaf identifier, if any, from the first token]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis, Wright, Hron to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis, Wright, Hron with the denomination of currency as taught by Coughlan. Kikinis, Wright, Hron discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis, Wright, Hron as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis, Wright, Hron with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Claims 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kikinis (US 20200394626 A1), in view of Coughlan (US 20240211904 A1).
Regarding claim 14. Kikinis discloses:
a processor for: identifying a token associated with the blockchain; [see at least (0087) where payments are done using tokens representing a currency, these tokens may be transacted on a blockchain and sometimes moved among banks, possibly resulting in an imbalance of bank FIAT accounts.]
Kikinis discloses performing transaction. However, Kikinis does not disclose:
identify a denomination of the token; and
splitting the tokens into a plurality of new tokens of smaller denominations,
wherein each of the new tokens is associated with the same provenance information as the split token;
wherein the processor is arranged to clone provenance information associated with the split token and to associate this cloned provenance information with each of the new tokens.
Nonetheless Coughlan discloses:
identify a denomination of the token; and [see at least Fig. 4 (0031) a token system could tokenize a fiat currency, each token representing a certain denomination of banknote, like $20, $10, $5, as defined by the currency denominations.]
splitting the tokens into a plurality of new tokens of smaller denominations, wherein each of the new tokens is associated with the same provenance information as the split token. [see at least Fig. 7 (0035) One of the user nodes, such as the first user node 104, may take possession or ownership of a plurality of tokens and may transfer one or more tokens to another user node, such as the second user node 106. The underlying transfer protocol, whether blockchain-based or not, may govern the mechanism for securely transferring possession and/or ownership of a token. (0134)-(0135) In the above expression, the candidate root ID is Root ID.sub.recomb, the hash function is H(.Math.), N is the number of tokens being consolidated, Root IDi refers to the root ID of the ith token, and n is the length of the root ID bit-space. (reads on: ownership of polarity of tokens can be transferred)]
wherein the processor is arranged to clone provenance information associated with the split token and to associate this cloned provenance information with each of the new tokens.[ see at least Fig. 7 (0035) One of the user nodes, such as the first user node 104, may take possession or ownership of a plurality of tokens and may transfer one or more tokens to another user node, such as the second user node 106. The underlying transfer protocol, whether blockchain-based or not, may govern the mechanism for securely transferring possession and/or ownership of a token. (0134)-(0135) In the above expression, the candidate root ID is Root ID.sub.recomb, the hash function is H(.Math.), N is the number of tokens being consolidated, Root IDi refers to the root ID of the ith token, and n is the length of the root ID bit-space]
Note: The above combination of Kikinis, Coughlan does not expressly disclose wherein the processor is arranged to clone provenance information. However this limitation represents non-functional descriptive material and does not affect how the claimed method functions (i.e., the descriptive material does not have any claim function in the claimed method; see MPEP 2106.01). A “wherein” clause does not function to actively limit the claim language. Therefore, the claim element is considered, but given no patentable weight. (MPEP 2111.05). The reference is provided for the purpose of compact prosecution.
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis with the denomination of currency as taught by Coughlan. Kikinis discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the features disclosed by Kikinis as well as Coughlan would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over Kikinis/ Coughlan.
Regarding Claim 15. Kikinis, Coughlan discloses the limitations of Claim 14. Coughlan further discloses:
wherein the processor is arranged to determine a combination of tokens that is equal to the value of the transaction, which combination uses the least possible number of tokens. [see at least Fig. 4]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis with the denomination of currency as taught by Coughlan. Kikinis discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claim 16. Kikinis, Coughlan discloses the limitations of Claim 14. Coughlan further discloses:
wherein the processor is arranged to: identify one or more further tokens associated with the blockchain; [see at least (0100) in operation 716, the node splits one of the available tokens (a “first” token) into two or more tokens of smaller denominations. It does so by generating new serial numbers for the two or more tokens of smaller denominations based on the serial number of the first token. That is, the two or more tokens of smaller denomination share the same flags and the same root id and leaf identifier, if any, from the first token]
determine a sum of the denominations of the token and the further tokens; and [see at least Fig. 4]
record on the blockchain a new token with a denomination that is equal to the sum of denominations. [see at least (0034) The issuer node 102 is coupled to a data store 110 within which it stores and maintains data regarding tokens. The issuer node 102 generates tokens in accordance with its governing protocol and maintains a record of generated tokens in the data store 110. Each token is uniquely identifiable by way of its serial number. The data store 110 maintains a record of all validly issued tokens.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis with the denomination of currency as taught by Coughlan. Kikinis discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claim 17. Kikinis, Coughlan discloses the limitations of Claim 16. Coughlan further discloses:
wherein the new token is associated with the same provenance information as the token and each of the further tokens. [see at least (0035) One of the user nodes, such as the first user node 104, may take possession or ownership of a plurality of tokens and may transfer one or more tokens to another user node, such as the second user node 106. The underlying transfer protocol, whether blockchain-based or not, may govern the mechanism for securely transferring possession and/or ownership of a token.]
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis with the denomination of currency as taught by Coughlan. Kikinis discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old elements, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Regarding Claim 18. Kikinis discloses:
a processor for: identifying a plurality of tokens associated with the blockchain; [see at least (0087) where payments are done using tokens representing a currency, these tokens may be transacted on a blockchain and sometimes moved among banks, possibly resulting in an imbalance of bank FIAT accounts.]
Kikinis discloses performing transaction. However, Kikinis does not disclose:
identify a denomination of each token; and
recording on the blockchain and/or on a memory of the apparatus a new token with a denomination that is equal to the sum of the denominations of the plurality of tokens;
wherein the new token is associated with the same provenance information as the plurality of tokens; and
wherein the processor is arranged to cause the removal of provenance information associated with the plurality of tokens from a datastore.
Nonetheless Coughlan discloses:
identify a denomination of the token; and [see at least Fig. 4 (0031) a token system could tokenize a fiat currency, each token representing a certain denomination of banknote, like $20, $10, $5, as defined by the currency denominations.]
recording on the blockchain and/or on a memory of the apparatus a new token with a denomination that is equal to the sum of the denominations of the plurality of tokens; [see at least (0104) operation 720, the node prepares and sends a transaction to the recipient node transferring the tokens, including one or more of the new tokens, that sum to the selected token quantity.]
wherein the new token is associated with the same provenance information as the plurality of tokens. [see at least (0035) One of the user nodes, such as the first user node 104, may take possession or ownership of a plurality of tokens and may transfer one or more tokens to another user node, such as the second user node 106. The underlying transfer protocol, whether blockchain-based or not, may govern the mechanism for securely transferring possession and/or ownership of a token.]
wherein the processor is arranged to cause the removal of provenance information associated with the plurality of tokens from a datastore. [see at least (0075) the token database stores token data in addition to the token serial number. In some cases, the token database only stores token serial numbers. In some implementations, the database may contain a field or flag indicating whether a token or serial number is “active” or “inactive”. In some implementations, the database may only store active serial numbers or tokens, such that any token or serial number in the database is implicitly “active” by virtue of being in the database, and deactivation of a token or serial number is effected through removal of that token or serial number from the database]
Note: MPEP 2144.01 sets forth that it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. Here, it is reasonable to infer that removal of inactive token is same as removal of provenance information. And, therefore one of skill in the art would have understood the reference to teach the limitation.
In addition, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art, to modify the features of Kikinis to include the features of Coughlan. A person a having the ordinary skill in the art would have been motivated to perform transaction accurately by using the technique of Kikinis with the denomination of currency as taught by Coughlan. Kikinis discloses performing transaction between merchant and buyer. Coughlan teaches denominating currency. Because both Kikinis as well as Coughlan are implemented through field of performing transaction and both references addresses performing transaction as taught by Kikinis with the denomination of currency technique as taught by Coughlan to accurately per from transaction with the correct denomination. Moreover, since the subject matter is merely a combination of old features, and in the combination each element would have performed the same function it performed separately, one having ordinary skill in the art before the effective filing date would have recognized that the results of the combination were predictable.
Response to Amendments/Arguments
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits: “Claims 1-5, 7-21 are rejected under 35 USC§101. Applicant disagrees and traverses the rejections. The Office Action found that these claims are directed to a statutory category of invention under step 1. The Office Action Step 2 prong 2 holds that the claim is directed to an abstract idea of Certain Methods of Organizing Human Activity - Commercial or Legal Interactions (e.g. agreements in form of contracts, legal obligations, advertising, marketing, sales activities or behaviors, business relationships)" grouping of abstract ideas. However, amended claim 1 is directed to Claim 1 of this application defines an apparatus for recording information relating to a blockchain transaction where this apparatus is arranged to record a transaction or provenance information on a local memory when the apparatus is not connected to a network. Therefore, this claim defines an apparatus that provides efficient data storage, in particular to store information on a blockchain where a network connection is available or to store information on a local memory when the network connection is not available. This enables this information to be recorded on the blockchain at a later date, instead of simply being lost. This is not an abstract idea. On the contrary this is an apparatus for data recording and transmission that provides an improved computer device and an improved method of data storage.”
Examiner Responds: : Examiner has fully considered, but doesn’t find Applicant’s argument persuasive. Examiner respectfully disagree with the applicant, the amended claim language of claims 1, 14 and 18 recites identify process of recordkeeping of transaction. Additionally, the claims recites such as “recording the transaction” (Claim 1); “identifying token” (Claim 14); “recording on the blockchain” (Claim 18). These limitations recites sales activity. As one of ordinary skill in the art would record transaction to keep records of all the transaction, and one would also make sure they have enough token to complete transaction (i.e., identifying token and its value). See updated rejection above. Thus the rejection is proper and has been maintained.
Applicant submits: “The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)). Applicant disagrees with this determination. As stated above the claim permits efficient processing of information where the device is unable to communicate with the blockchain server without the loss of data. As in Ex parte Desjardins, Appeal 2024-000567 (Decided September 26, 2025), the U.S. Patent and Trademark Office's (USPTO's) Appeals Review Panel (ARP), the Office Action ignores the practical application. The practical application is a more accurate blockchain based on network activity. Similarly, claims 14 and 18 define methods of storing information (tokens) on a computer device where this method is linked to specific operations of the computer device. These claims define concrete steps of manipulating tokens of a blockchain to maintain and manipulate electronic data stored on the blockchain. This method of manipulating stored data and updating an immutable record (of a blockchain) is not comparable to a conventional commercial activity. This is not least because conventional cash (that might have different denominations) is not inherently linked to electronically stored data in the same way as a blockchain token. With a conventional cash transaction, there is no recording of data that is an inherent feature of that transaction. In contrast, with a blockchain, there is inherently an amount of data stored during this transaction. The methods of claims 14 and 18 provide methods of manipulating this stored data and so provide a technical method of data storage and processing that is not an abstract idea under Step 2 prong 1. With regard to Step 2A prong 2, claims 14 and 18 as amended. Describe a practical application. For example, as described on page 21, claim 14 provides a method in which "When tokens are combined, a new token is typically issued. This new token may reference each of the previous tokens. For example, each of the previous tokens may be transferred to a single address of a UTXO blockchain to provide a new token. In this situation, the new token still comprises a reference to the provenance information of each of the old tokens. Therefore, no provenance information is lost by the combination of tokens." Similarly as described on page 20, claim 18 provides a method that addresses a problem in which "Over time large denomination tokens will be split into parts in order to perform various transactions. This carries the risk of combinatorial explosion, where the amount of provenance stored rapidly grows (since each token is associated with provenance information, the use of many small tokens requires the recording of more information than the use of a single large token)." These disclosures are encompassed in amended claims 14 and 18 and therefore are a practical application. Therefore claims 14 and 18 are patent eligible. It is respectfully requested that in view of the improvement of data handling for blockchain and token splits, that the rejections under section 101 be removed.”
Examiner Responds: Examiner has fully considered, but doesn’t find Applicant’s argument persuasive. Examiner respectfully disagree with the applicant, the MPEP 2106.04(d) discloses that “an important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement.” (Emphasis added) “That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity.” (Emphasis added). Thus, the rejection is proper and has been maintained.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 103.
Applicant submits: “Kikinis therefore only provides a way to reconnect, but does not operate offline. The primary reference Kikinis lacks the amended features and Wright also does not supply these features. Therefore, claims 1-5, 7, 11, and claims dependent on them are not obvious over Kikinis in view of Wright.”
Examiner response: Examiner has fully considered, but doesn’t find Applicant’s argument persuasive. Examiner respectfully disagree with the applicant, the applicant’s arguments are directed towards the amended claim language and not original set of claims. Furthermore, the Kikinis reference does disclose offline transaction. The Kikinis reference on [0098] discloses “Both phones (or the consumer phone and the merchant phone and/or point of sale) will then keep a record of this transaction and try at the next opportunity to send this transaction over the network backbone to a blockchain.” One of ordinary skill in the art can conclude, the record of the transaction is recorded when it is not connected to a network, and the ledger is updated once it is connected to a network. See updated rejection above. See updated rejection above. Thus the rejection is proper and has been maintained.
Applicant submits: “Coughlan therefore discloses methods of splitting and combining tokens. However, Coughlan does not consider the processing of provenance information associated with these tokens. Indeed, Coughlan does not mention provenance information at all. Coughlan does not disclose any method of cloning provenance information and applying this information to a plurality of new tokens following the splitting of a token as required by present claim 14. Furthermore, Coughlan does not disclose any method of storing provenance information in a datastore and so Coughlan does not disclose any method of removing provenance information from a datastore following the combining of a plurality of tokens. Therefore, present claims 14 and 18 are also novel and nonobvious over the cited prior art. The claims dependent on these claims are therefore also nonobvious. It is respectfully requested that the rejections for obviousness be removed. For clarity, Applicant is describing the teachings of the cited references individually, but are traversing the rejection with respect to the combination of these references, infra. That is, the Applicant is not attacking the references individually, rather addressing the combinations of references as set forth in the instant Office Action.”
Examiner response: Examiner has fully considered, but doesn’t find Applicant’s argument persuasive. Examiner respectfully disagree with the applicant, the applicant argues the Coughlan reference does not disclose cloning province information. However, the examiner would like to emphasize the applicant’s specification does not specify what criterion is included in the provenance information. Furthermore, the specification fails to discloses how the “cloning” step is performed. Furthermore, the Coughlan does disclose the ownership information associated with the token. See updated rejection above. Thus the rejection is proper and has been maintained.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20200151718 A1 2020-05-14 YAO; Zhongxiao SYSTEM AND METHOD FOR IMPROVING SECURITY OF SMART CONTRACT ON BLOCKCHAIN - In some implementations, a method is provided. The method includes receiving a request to establish a provenance of a digital asset. The digital asset includes a set of signatures. The method also includes generating a hash of the digital asset. The method further includes updating a distributed ledger of a blockchain system with the hash of the digital asset to establish the provenance of the digital asset.
US 20210256070 A1 Tran; Bao et al. NON-FUNGIBLE TOKEN (NFT) - A device to securely access a digital asset with an asset blockchain address on a blockchain, including a processor in the mobile body and associated with a processor blockchain address, and a sensor coupled to the body to authenticate a user, wherein selected user events are placed on the blockchain, wherein the processor sends an access request to the digital asset upon authentication based on the blockchain address and events on the blockchain, wherein the digital asset contractual details, access right, and ownership rights are stored on a decentralized ledger, and wherein the processor uses the ledger to record or manage property right for the digital asset.
US 20210224334 A1 Shrinivasan; Yedendra et al. CONFLICT-FREE VERSION CONTROL - An example operation may include one or more of receiving from a user node, by a blockchain processor node, a document access request containing a document ID, acquiring, by the blockchain processor node, from a blockchain ledger an encrypted URL of the document and a source hash of the document based on the document ID, verifying, by the blockchain processor node, a document received from a document owner's node storage based on a decrypted URL of the document and, in response to the verification, transmitting the document received from the document owner's node storage to the user node.
US 20200084045 A1 Cohen; Andrew et al. ESTABLISHING PROVENANCE OF DIGITAL ASSETS USING BLOCKCHAIN SYSTEM - In some implementations, a method is provided. The method includes receiving a request to establish a provenance of a digital asset. The digital asset includes a set of signatures. The method also includes generating a hash of the digital asset. The method further includes updating a distributed ledger of a blockchain system with the hash of the digital asset to establish the provenance of the digital asset.
US 20190034926 A1 DAVIS; Steven Charles METHOD AND SYSTEM FOR TRANSACTION PROCESSING WITH COMPLETE CRYPTOGRAPHIC AUDITABILITY - A method for processing of a cryptographically auditable transaction includes: receiving payment data, wherein the payment data includes at least a primary account number; transmitting the primary account number to a computing system; receiving a confirmation associated with the primary account number from the computing system; transmitting a payment request to the computing system, wherein the payment request includes at least a reference value associated with a payment transaction; receiving an acceptance request from the computing system, wherein the acceptance request includes at least the reference value, an acceptance address, one or more fee values, and a first digital signature generated by a third party; generating a second digital signature using at least the acceptance address; and transmitting at least the second digital signature to the computing system.
US 20210248603 A1 WU; Ching Song et al. BLOCKCHAIN-BASED TRANSACTION PROCESSING METHOD AND APPARATUS - A block chain-based transaction processing method and apparatus are disclosed, in which an intermediate computing device receives and validates a first block record from, and generates and sends a second block record to, a first computing device; receives a third block record generated by a second computing device after validating the second block record from the intermediate computing device; generates and sends a fourth block record to the second computing device after validating the third block record, receives from the first computing device a fifth block record generated by the first computing device after validating the fourth block record from the intermediate computing device; receives from the second computing device a sixth block record generated by the second computing device after validating the fifth block record from the intermediate computing device; and broadcasts the first to sixth block records to other computing devices after validating the fifth and sixth block records.
US 20190050855 A1 Martino; William et al. BLOCKCHAIN-BASED SYSTEMS, METHODS, AND APPARATUS FOR SECURING ACCESS TO INFORMATION STORES - Systems, apparatus, methods, and articles of manufacture are described herein for allowing secured access as a service to information in a distributed ledger system (e.g., a blockchain).
US 20220084015 A1 Fawzy; Camelia Magdalena et al. METHODS AND SYSTEMS FOR ETHICAL CRYPTOCURRENCY MANAGEMENT - Some embodiments are directed to methods and systems for a cause-based eco-system that includes a platform supporting cryptocurrency transactions between users and organizations, the embedding of ethical constraints in the cryptocurrency as part of the transactions, and a marketplace to facilitate and manage the transactions. The eco-system also includes a lending and investment marketplace platform that allows users to invest in ethically or socially conscious organizations, and to borrow/lend against those investments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.S.H./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698