DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This communication is A Fina Office Action in response to Applicant’s amendment filed on February 17, 2026.
Claims 1-20 have been examined in this application.
No new information disclosure statement (IDS) has been filed.
Response to Arguments
Applicant's arguments filed February 17, 2026, regarding objection to drawings have been fully considered but are not fully persuasive. The newly filed drawings are clear and legible; however, the drawings do not include numberings to each element and/or system. For example, Figure 1 does not indicate that as a whole it captures a system, in example called 100, and a number to each of the elements within that system 100. The Specification seems to recite the same language as the drawings without any numbering. As a result, the Examiner is requesting appropriate correction by including numberings to all elements / system(s) and including such in the Specification to comply with 37 CFR 1.84.
Applicant's arguments filed February 17, 2026, regarding claim rejections under 35 U.S.C. 112 have been fully considered and are persuasive.
Applicant's arguments filed February 17, 2026, regarding claim rejections under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant argues that the claims capture a technical solution that enables “secure auditability and observability of encrypted blockchain transactions without breaking end-to-end encryption or altering protocol logic;” id., 8. Applicant also argues that the claims have been examined inconsistently based on “the Memo,” referring to the August 4, 2025 memorandum.
The Examiner respectfully disagrees. Examiner notes that the Memo further highlights what is already set forth in MPEP 2106, including the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and the Berkheimer Memo. The analysis applied does not go against the analysis set forth in MPEP 2106 or the Memo because the Examiner properly analyzed the claims accordingly to determine their patent eligibility. The burden is on the Applicant to ensure compliance with the patent eligibility requirements under 35 U.S.C. 101 and for the Applicant to not simply argue that their claims are eligible because they involve an exception, are directed to a technical solution that improve a technology or technical field or device and that the claimed scope as a whole cannot be performed in the human mind. Applicant must recite and argue the claims in light of MPEP 2106 to show proof of the above and not merely provide a general statement of the claims being directed to patent eligible subject matter.
Applicant’s attempt to provide such support for eligibility are not persuasive. First, Applicant argues that the claims are directed to a “digital exchange blockchain that processes digital assets based on a consensus network protocol via end-to-end encryption using a first encryption key.” Such a blockchain is high level and generic, failing to amount to a practical application. The Applicant didn’t invent the concept of the blockchain, encryption or a manner in which the storing and processing of assets is carried out in a manner that results in an improvement to a technology, device, or field.
Likewise Applicant points to the T3 service provider and all the limitations it carries out before arguing that the claimed scope is rooted in the technical field of blockchain and computer network security. Applicant points to Example 39 and 47 and argues that the instant claims are eligible under the same rational as the examples.
The Examiner respectfully disagrees. The T3 provider is simply a device and a device that provides a second key, collects data and stores data and is independent of the blockchain. Just because another device is recited in the claims does not mean that the device in addition or without the blockchain is patent eligible since it provides another key to a third and different entity. In fact, the claims fail to capture any of Applicant’s argued improvements, failing to clearly recite the technical improvement, if any, because the claimed scope is based on storing and processing assets, done by the blockchain, and provisioning data to so other entity, done by T3. Accessing data based on “secure auditability and observability of encrypted blockchain transactions without breaking end-to-end encryption or altering protocol logic” is not found in the claimed scope that is only directed to storing, processing, provisioning, collecting, and storing data again. Per argued examples, the claims are very much distinct from the examples. The claims are not directed to artificial intelligence technical elements, or include a neural network that provides a technical solution to a technical problem. The claims are not directed to some unique technical algorithms that actually capture a technical solution to a technical problem. Applicant admits that the claims are directed to mere data handling, which is true, but arguing that the claims capture a practical network-architecture workflow that preserves encryption, avoids consensus modification as improving computer-network security is not persuasive. Data handling using encryption and different keys is not patent eligible.
Applicant argues Step-2A, Prong II prior to first addressing Step-2A, Prong I as required by MPEP 2106 patent eligibility determination. Applicant restates the above arguments overall to argue that even if an abstract idea is recited, that the claims amount to a practical application because they provide an improved architecture and allow data access without altering the blockchain’s consensus protocol. These arguments are not persuasive. As noted above, the additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as storing data, processing data, sending / provisioning data to another entity, receiving and storing/updating data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. In other words, the argues architecture and additional elements are merely used to automate the abstract idea. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore, the claims arguable add insignificant extra-solution acidity to the judicial exception of storing provisioned data based on transaction information; MPEP 2106.05(g). The claims also simply link the use of the judicial exception to a particular technological environment or field of use; MPEP 2106.05(h).
Examiner notes that in accordance with MPEP 2106.04(d)(III), the “specification… must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner… the examiner should not determine the claim improves technology. Second, if the specification sets for an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.” Emphasis added, MPEP 2106.04(d).” Emphasis added. The Examiner does not deem any alleged improvement recited in the Specification as being captured by the claims.
Per Step-2A, Prong I, which is a vital and important analysis of the claims prior to any further analysis, the claims are directed to two of the abstract idea groupings. Applicant hints at the claims not being directed to mental processes but fails to argue explicitly why not. The claims are classified under mental processes and certain methods of organizing human activity. A human can store data in a peer-to-peer network based on multiple humans coming together to act as the claimed “blockchain.” These humans can store data in their mind or on a paper using a pen. Likewise, these humans can come to an agreement to process a transaction involving funds such as cash or products. The settlement of the transaction can be done using encryption techniques including an encryption key. Another human can server as the claimed T3. This another human can provision a second encryption key that is different to the first key but allows some access to some data used in the transaction settlement carried out by the humans in the peer-to-peer network. Just as a child can have a passcode to watch some channels, access some files, etc. the second key here is nothing more than a limited access key for someone to use to access some data and not ALL data. The another human can collect data regarding the transaction involving the peer-to-peer network of human by communicating with them and acquiring the data, communicating in a verbal, written, and/or secure encrypted manner using basic encryption techniques. The another human can store the data in their mind or on paper using a pen. Based on the above, the claimed scope as a whole is achieved. Even if said mental processes was not an abstract idea grouping, the claims based on the above explanation, clearly capture commercial interactions such as sales activities, and business relations.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include reference sign(s). See Patent 12450600 for reference. The drawings do not include numberings to each element and/or system. For example, Figure 1 does not indicate that as a whole it captures a system, in example called 100, and a number to each of the elements within that system 100. The Specification seems to recite the same language as the drawings without any numbering. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1-3 are objected to instead of being rejected under 35 U.S.C. 112(b) because of the following informalities and based on the belief that proper support in the Specification and amendments can be made to overcome the objection. Failure to overcome the objection would result in a rejection under at least 112(b) in subsequent communications and that such a rejection under this objection basis will not be deemed a new rejection because of the above notice. A rejection under 112(a) would also be deemed appropriate and not considered new rejection if support for amendments is not found in the Specification / pointed to.
Claims 1-3 attempt to capture Beauregard language for 4 entities, (i) a digital exchange blockchain, (ii) a trusted transparent transaction (T3), (iii) an off-ramp provider, and (iv) an on-ramp provider. However, all of these entities share the same “processors and memory storing instructions that when executed, cause the processors to perform operations comprising…” It’s not clear whether the four entities share the same processors and same memory and same instructions. If so, then support is requested. It is more appropriate to determine that these four entities are standalone entities that have distinct and separate structure based on at least Figure 1. As a result, each entity must capture its own distinct structure. This can be done by adding the term first to the structure linked to the first entity. For example, the claim can read:
A digital exchange blockchain comprising a first processors and first memory storing first instructions that when executed, cause the first processors to perform operations comprising. Such amendment would need to be made to all entities in order to distinguish their structure from one another.
Appropriate correction is required.
Claims 1 and 14 recite provisioning the second key twice.
Claim 1 is not parallel to claim 14. Claim 1 does not include a “user platform” positively as claim 14 does. Claim 14 must be amended to include the user platform or claim 14 must be amended accordingly to avoid any potential restrictions based on potential future amendments.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Per claims 1 and 14, the claims recite “processing… digital assets” and “collecting transaction data associated with a digital asset transfer transaction between the user platform and the digital exchange blockchain.” It’s not clear whether the processing of the digital assets includes data linked to the “a digital asset transfer transaction” or whether said data of the digital asset transfer transaction is different than data linked to the processed digital assets. Examiner believes that the data collected is based on one of the transactions including digital assets, therefore, appropriate amendments are required to link the collected data to the processed transactions. Based on the instant claim language, the claims are ambiguous. All dependent claims are rejected under the same rational and for mere dependency on the rejected claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-20 fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter).
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of storing data based on a transaction and provisioning of data without significantly more.
The abstract idea is categorized under certain methods of organizing human activity, including sales activities or behaviors, and business relations. The settlement of a transaction between entities, collecting data regarding the transaction, storing the data, and providing a key to another entity clearly captures the above abstract idea and its related sub-categories. Likewise, the claims are also directed to mental processes, including concepts performed in the human mind such as observation, evaluation, judgement, and opinion. All of the claimed limitations can be, under the broadest reasonable interpretation, carried out by humans using their mind and pen-and-paper. The additional elements, as later will be discussed, merely automate the abstract idea/remove the humans to carry out the abstract idea.
Claim 14, in pertinent part, recites:
A method comprising:
establishing a data connection between… [a first and second entity]:
storing… assets and processing, based on a consensus network protocol, the… assets through an end-to-end communication that is encrypted using a first encryption protocol, and
and (iii) a Trusted Transparent Transaction (T3) service provider;
provisioning a second key that is independent and different from the first encryption key for use by an institution to access transaction data collected by the T3 service provider;
collecting transaction data associated with a… asset transfer transaction between the… [first and second entity], wherein the transaction data is generated based on the… asset transfer and without compromising the end-to-end communication that is encrypted using the first encryption key;
storing the transaction data in a database associated with the T3 service provider; and
providing the second key to the institution to access the transaction data in the database associated with the T3 service provider,
wherein the T3 service provider operates independent of the… [second entity] and links to on-chain data without altering the consensus network protocol of the… [second entity].
The judicial exception is not integrated into a practical application. The claims recite the following additional elements: a user platform, (ii) a digital exchange blockchain comprising processors and memory storing instructions, digital assets, a Trusted Transparent Transaction (T3) service provider, and a digital asset transfer transaction. The additional elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions such as generating data, receiving data, storing data, and provisioning data. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself, apply the abstract idea with, or by use of, a particular machine (not a generic computer, not adding the words "apply it" or words equivalent to "apply the abstract idea", not mere instructions to implement an abstract idea on a computer, adding insignificant extra solution activity to the judicial exception, generally linking the user of the judicial exception to a particular technological environment or field of use), effects a transformation or reduction of a particular article to a different state or thing, or adds meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. The dependent claims fail to recite additional elements that would amount to a practical application or amount to significantly more than the judicial exception as discussed above. The dependent claims include an offramp provider, an onramp provider, a wallet service, and an API. These elements are recited at a high level of generality, wherein the claims merely amount to an abstract idea that is implemented using generic computers, performing generic computer functions. These additional elements amount to nothing more than mere instructions to apply the exception using generic computer components or a generic device. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The dependent claims further describe the abstract idea.
The claims are not patent eligible.
Additional References
Other references sited further elaborate on the Applicant’s claimed scope. See for example Japanese Patent Application Publication JP2018525729, which teaches a blockchain transaction data audit device. The apparatus has a blockchain recording component, a matrix transformation component, and a Bloom filter component to generate a list representation of a matrix, each input to the list being a source wallet address, a destination wallet address, a transaction amount and has a tuple with a timestamp. Process 2900 begins when user 106 enters and sends a transaction query including, for example, an address corresponding to the audit target user via client 106a (step 2902).
In response, SOCOACT determines whether there is an entry corresponding to the address (step 2906). SOCOACT can do this by applying the address to the Bloom filter to determine if the wallet address is recorded without actually looking up the database. Alternatively, SOCOACT can search the physical address database 5819p to determine if there is an entry for the wallet address. If no entry exists, the process 29000 proceeds to step 2918 below where the audit result indicates that the required wallet is not involved in the transaction. Otherwise, SOCOACT retrieves the corresponding wallet address and performs a lookup in the LIL (step 2908).
Next, the SOCOACT determines whether the transaction record tuple in the LIL includes the queried wallet address (step 2912). If not, processing proceeds to step 2918 below. If a corresponding tuple is found, SOCOACT instead retrieves the transaction amount and timestamp value from the corresponding transaction record tuple (step 2914).
Optionally, in step 2916, SOCOACT identifies the appropriate blockchain recorded during the transaction identified in the tuple and uses the query target address (see, eg, the process described above with respect to FIG. 7). The corresponding transaction is searched from the appropriate block chain by searching (step 2916).
Once all transaction information has been retrieved from the blockchain, the query results are sent to the client via SOCOACT for display to the querying user (step 2918). Thereafter, process 2900 ends for each query (step 2920).
In accordance with the above, FIG. 30 is a schematic diagram of an input / output data structure for a bitcoin-like transaction performed by SOCOACT. Like BTC, SOCOACT uses the previous transaction hash added to the blockchain for verification purposes, reducing the possibility of unauthorized transaction intrusion. The SOCOACT data structure may include a previous transaction hash field, which may be a dual SHA-256 hash of the previous transaction record with an exemplary field length of 32 bytes. The transaction record data structure may also include a 4-byte previous transaction out field that stores a non-negative integer that indexes the output of the transaction to be used. The 1-9 byte transaction script length field contains a non-negative integer representing the data structure length of the accompanying script for transmission verification purposes. Finally, a 4 byte sequence number field may be present to record the serial number of this SOCOACT processed transaction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on for PTO-892.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EL MEHDI OUSSIR whose telephone number is (571)270-0191. The examiner can normally be reached M-F 9AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NEHA PATEL can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/EL MEHDI OUSSIR/Primary Examiner, Art Unit 3699
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