DETAILED ACTION
Status of Claims
Applicant has amended claims 1 and 6-8. No claims have been added or canceled. Thus, claims 1-8 remain pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendments filed on 15 December 2025 with respect to:
objection to specification,
rejections of claims 1 and 6-8 under U.S.C. § 112(a),
rejections of claims 1-5 under U.S.C. § 112(b),
rejection to claims 1-8 under U.S.C. § 101,
rejections of claims 1 and 6-8 under 35 U.S.C. § 102(a)(1) as being anticipated by Yu (US Pub. No. 20200313902 A1),
rejections of claims 2-4 under 35 U.S.C. § 103 as being unpatentable over Yu in view of Qui (US Pub. No. 20200177572 A1),
rejections of claim 5 under 35 U.S.C. § 103 as being unpatentable over Yu in view of Qui, in further view of Vukich et al (US Patent No. 11,741,082 B2).
have been fully considered. Amendments to claims and specifications have been entered.
Examiner acknowledges amendments to paragraph [0038] (office action incorrectly cited [0039]) of Applicant’s specification to overcome objection to specification and, in turn, withdraws objection.
Examiner acknowledges amendments to, and arguments regarding, claims to overcome 35 U.S.C. § 112(a) and 35 U.S.C. § 112(b) rejections and, in turn, withdraws rejections.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One contending that the Examiner has mischaracterized the invention as an abstract idea of a 'commercial transaction,' ignoring the specific technical problem it solves: the high cost and inefficiency of maintaining monolithic blockchain-interfacing software [remarks page 7]. Applicant further contends that the invention is a specific computer system architecture that improves the system's own functionality. Examiner respectfully disagrees.
As conveyed in the revised 101 rejections herein, the recited claim steps merely recite generating transaction information on crypto-assets, relaying information through a relaying program - i.e. communicate data between an “application” and a “blockchain network”, and updating the relay program. No improvements to technology are cited in as much as claims only recite
Regarding the comments regarding solving inefficiency, the Examiner respectfully disagrees. Examiner cites MPEP 2106.05(a) which notes that accelerating an analyzing process, where the increased speed comes solely from the capabilities of a general purpose computer, has been found to be insufficient to show an improvement in computer-functionality.
Rejections have been clarified herein in view of the claim amendments and the January 2019 Patent Subject Matter Eligibility Guidance – 2019 PEG.
Applicant's arguments filed with respect to claims regarding the 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 rejections have been fully considered but they are moot in view of new ground(s) of rejection.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application, filed on 01 July 2024 is a National Stage entry of PCT/JP2023/000096, with an International Filing Date of 05 January 2023 which claims foreign priority to Japanese Application No. 2022-000469, filed on 05 January 2022.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claim Interpretation
Regarding claims 1-8, phrases such as “to adapt the relay program to a change in a specification of the blockchain network” are merely statements of intended use which do not further limit the claim.
A recitation of intended use or purpose of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use or fulfilling said purpose, then it meets the claim.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP § 2111.04.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In the instant case, claims 1-5 are directed to a “system” which is one of the four statutory categories of invention.
Claims are directed to the abstract idea of making a commercial transaction which is grouped under methods of organizing human activity.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
generating transaction information on crypto-assets;
using a “relay program” to make a relay - i.e. communicate data - between an “application” and a “blockchain network” in which the transaction information is recorded; and
updating in the relay program.
Limitations such as:
to adapt the relay program to a change in a specification of the blockchain network.
is merely a statement of intended use which does not further limit the claim.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a hardware processor; a non-transitory computer-readable medium, an application, and a relay program represent the use of a computer as a tool to perform an abstract idea. Each component does no more than generally link 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) the acts of “collecting information and analyzing the information”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. 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)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of making a commercial transaction using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claim 6 otherwise styled as a method, claim 7 styled as a device, and claim 8 styled as a computer readable medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (US Pub. No. 20200313902 A1) in view of Vijayaraghavan (US Patent No. 11,900,339 B1).
Regarding claims 1 and 6, Yu teaches a relay system including a multi-node cluster that is used to retrieve publicly available data and/or services from external data sources in a verifiable and highly available manner [0008]. He teaches:
a hardware processor – [0010] and [0011];
a non-transitory computer-readable medium storing instructions – [0011], that, when executed by the hardware processor, cause the system to implement:
an application execution unit configured to execute an application that generates transaction information on crypto-assets – [0034], [0035], [0038], [0039] and [0043];
a relay unit configured to execute a relay program that makes a relay between the application and a blockchain network in which the transaction information is recorded – [0009] “a relay system”, and [0053] “a relay agent to retrieve external data”; and
an update unit configured to execute an update in the relay program – [0026], [0037] and [0050].
Yu teaches managing, updating, and maintaining one or more blockchains by broadcasting, verifying and validating transactions [0026] and [0037]. Yu does not explicitly disclose:
an update unit configured to execute an update in the relay program to adapt the relay program to a change in a specification of the blockchain network.
However, Vijayaraghavan teaches decentralized computer systems for hyperledger-based payment transactions, alerts, and dispute settlement, using smart contracts [col. 2 line 21-53]. He teaches storing the transaction data of the transaction attributes for the transaction, in data structures for transaction attributes of the transaction in a Smart contract generated or updated by a Smart contract application [Id.]. He teaches an acquirer and/or merchant relaying dispute information, transaction information, and disputed attributes of the transaction to the blockchain applications serve [col. 23 line 42-col. 24 line 19]. He teaches deploying, subsequently, an updated smart contract into one or more blockchain networks and/or their respective ledgers [Id.].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Yu’s disclosure to include deploying an updated Smart contract application subsequent to relaying dispute information as taught by Vijayaraghavan since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 7 is a device substantially similar to, but less limiting than, the system of claim 1 and is hence, rejected for the same reasons.
Claim 8 is a computer-readable recording medium substantially similar to, but less limiting than, the system of claim 1 and is hence, rejected for the same reasons.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Vijayaraghavan, and in further view of Qui (US Pub. No. 20200177572 A1).
Regarding claim 2, neither Yu nor Vijayaraghavan explicitly discloses the relay unit as receiving specification of a first blockchain platform and making a request to register transaction data that is generated based on the transaction information to a first blockchain network corresponding to the first blockchain platform among a plurality of blockchain networks.
However, Qui teaches a method for sending a cross-chain authenticatable message, where sending a cross-chain authenticatable message refers to sending the authenticatable message from a first account in a first blockchain network to the outside, the first blockchain network is connected to the relay [0006]. He teaches applications on a blockchain network as including cryptocurrency [0003]. He teaches receiving an invocation request, obtaining a first account that initiates the invocation, combining the first account, a pre-determined identifier of a first blockchain network, and obtaining input parameters including the identifier of the second blockchain network, the second account, and message content into an authenticatable message in a pre-determined format [0055].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Yu’s disclosure to include receiving an invocation request to transfer cryptocurrency between accounts as taught by Qui since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 3, neither Yu nor Vijayaraghavan explicitly discloses the relay unit receiving specification of a second blockchain platform to which a change is made from the first blockchain platform and making a request to register transaction data that is generated based on the transaction information to a second blockchain network corresponding to the second blockchain platform.
However, Qui teaches a first blockchain network connected to a second blockchain network via a relay, wherein the second blockchain network receives object information from the first block chain network using a pre-determined protocol [0006]. The receiving object information includes a receiving blockchain identifier and a receiving account that respectively correspond to an identifier of the second blockchain network and a second account in the second blockchain network [0015].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Yu’s disclosure to include a pre-determined protocol for sending information from a first blockchain network to a second blockchain network as taught by Qui since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 4, neither Yu nor Vijayaraghavan explicitly discloses the relay unit transmitting a request to register transaction data that the first blockchain network records in a blockchain until specification of the second blockchain platform is received to the second blockchain network.
However, Qui teaches this at [0006] and [0015] as discussed in the rejection of claim 3. Accordingly, this claim is rejected for the same reasons. [0015].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yu in view of Vijayaraghavan, and in further view of Qui, in further view of Vukich et al (US Patent No. 11,741,082 B2).
Regarding claim 5, Yu teaches the relay unit as generating a list of users based on the transaction data that the first blockchain network records in the blockchain [0030]. Neither Yu , Vijayaraghavan nor Qui explicitly discloses transmitting a request to generate wallets of the respective users based on the list of the users to the second blockchain network.
However, Vukich teaches a method of recovering blockchain wallet items [col. 1 lines 55-60]. He teaches using a recovery agent initiating recovery logic in a smart wallet to transfer assets to recovery wallet [col. 4 line 63-col. 5 line 17]. He teaches the recovery agent maintaining a list of wallets [Id.].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Yu’s disclosure to include maintaining a list of wallets as taught by Vukich so that users can recover crypto-currency assets when storage is lost or corrupted in blockchain wallets – Vukich [col. 1 lines 30-40].
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
XIE et al: “METHOD FOR ESTABLISHING COMMUNICATION CONNECTION”, (US Pub. No. 20210135901 A1).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692