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 .
Response to Amendment
The amendment filed 03/06/2026 has been entered. Claims 1-21 have been amended. No Claims have been newly added. No Claims has been/remains canceled. Claims 1-21 remain pending in the application.
Applicant amendments to the Claims have overcome the objections previously set forth in the Non-Final Office Action mailed on 12/12/2025. The objection has been withdrawn in view of the amended Claims.
Applicant amendments to the Claims have overcome the 35 U.S.C 112(b) rejection previously set forth in the Non-Final Office Action mailed on 12/12/2025. The rejection has been withdrawn in view of the amended Claims.
Applicant amendments to the Claims have overcome the 35 U.S.C 101 rejection previously set forth in the Non-Final Office Action mailed on 12/12/2025. The rejection has been withdrawn in view of the amended Claims.
Response to Arguments
Regarding Applicant’s arguments, on page 9-17 of the remark filed on 03/06/2025, on the limitations of independent Claims 1: “the plurality of computer nodes on the blockchain are configured to direct the request message to an off-chain computer, wherein the off-chain computer is configured to include a rules engine comprising different sets of rules directed to providing dynamic evaluation of transfer request messages, and.”, arguments are not persuasive.
Applicant argues on Page 12 that the cited references fail to teach computer nodes on the blockchain directing request messages to an off-chain computer. Applicant’s interpretation of the reference has been noted; however, examiner respectfully disagrees. Witham teaches on Par. (0086) an off-chain with authorized participants of a blockchain and a transferring of data to an off-chain to be verified.
Applicant argues on Page 13 that the cited references fail to teach nodes configured to receive request for blockchain audit data. Applicant’s interpretation of the reference has been noted; however, examiner respectfully disagrees. Lai teaches on Par. (0063) and (0074) nodes in blockchain providing and receiving proofs and data from other blockchain nodes that further validate transactions.
Applicant argues on Page 13 that the cited references fail to teach proceeding when users identities become known. Applicant’s interpretation of the reference has been noted; however, examiner respectfully disagrees. Witham teaches on Par. (0019, identifying parties requesting to transmit and receive a token, the identities known correspond to the identified parties. Witham further teaches on Par. (0107 and 0110-0112) a request to transfer the token to an identity of users and identified parties. Witham teaches on Par. (0119) identities being known by the service server.
Applicant argues on Page 16 that the cited references fail to teach intercepting blockchain bound data for off-chain storage. Applicant’s interpretation of the reference has been noted; however, examiner respectfully disagrees. Soundararajan teaches on Par. (0215-0216) an interception of messages by captured time series data to the blockchain and directs of transmits the time series data to an off-chain for external storage. Therefore, the rejection is maintained.
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 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 1-5, 8-12 and 15-19, is/are rejected under 35 U.S.C. 103 as being unpatentable over Witham et al. (U.S Pub. No. 20230119843, hereinafter referred to as “Witham”) further in view of Lai et al. (U.S Pub. No. 20200344233, hereinafter referred to as “Lai”)
In regards to Claim 1, Witham teaches a system comprising, a plurality of computer nodes, each node comprising at least one processor and anon- transitory computer readable medium, that are configured to be private computers and to form a blockchain that operates cooperatively in accordance with a decentralized peer-to-peer blockchain consensus protocol that governs creating, transferring, and maintaining a history of a particular token type resident on that blockchain; (Par. (0018-0020); peer network of nodes with consensus rules in blockchain that receive, record and transmit digital tokens)), (Par. (0010-0011); particular token type resident on that blockchain (digital token with complex split values, i.e digital token base 2, base 3 etc.)), (Figure 1 labels 104, 106; processor and memory))
a service server that is configured to receive information from a plurality of electronic software applications, (Par. (0056); server service (devices) receive information (send and receive transaction and broadcast transaction data, token) from plurality of electronic software applications (nodes in network)), (Par. (0119); server computer system with software applications))
wherein the plurality of electronic software applications are configured to securely store user data as an electronic container and the user data includes encryption keys that are assigned to a user of at least one of the plurality of electronic software application to control access in association with the particular token type on that blockchain and, (Par. (0087-0088 and 0099)); software applications (nodes/owners in blockchain with software applications) securely store user data [..] includes encryption keys (stores digital tokens, identities of users and cryptographic keys), (Par. (0119); client devices with software applications))
wherein the blockchain is configured receive a new token transfer request message and, to proceed when the identity of the user that sent the request message and receiving user are known by the service server; (Par. (0019); identify parties requesting to transmit and receive a same digital token value, and exchange the same digital token value between the identified parties. Or see also Par. (0107 and 0110-0112); request to transfer digital token corresponding to identity of user(s) and identified parties)), (Par. (0119); known by the service server (server computer system with software applications))
further wherein, the plurality of computer nodes on the blockchain are configured to direct the request message to an off-chain computer, wherein the off-chain computer is configured to include a rules engine comprising different sets of rules directed to providing dynamic evaluation of transfer request messages, and (Par. (0086); off-chain with rule of only authorized participants and data then transferred to off-chain to be verified)), (Par. (0097-0098); authorized participants of off-chain rule corresponding to smart contract and satisfying of consensus rule))
wherein, the system implements an automatically executable set of code stored and executable on the blockchain, (Par. (0037-0038 and 0073); executable code in blockchain)), (Par. (0119); client and server computer system with software applications))
wherein the automatically executable set of code is configured to receive an output of the rules engine and is configured to have the system select one of blocking or proceeding with a new token transfer as specified in the new token transfer request message and (Par. (0049, 0108); received broadcast of transaction and set of rules either disregards data or if satisfies rules data included and updated in database)), (Par. (0119); client and server computer system with portions of code and software applications executed))
wherein, in response to determining to proceed, the blockchain uses a consensus protocol defined in the decentralized peer-to-peer blockchain consensus protocol to record on the blockchain the new token transfer; and (Par. (0094 and 0097-0098); determining the consensus rules is satisfied proceeding with transfer of particular amount of digital tokens; once satisfied the including of the transaction and transfer of digital token in blockchain))
Witham does not explicitly teach wherein the service server is configured to store user registration and user identification and is further configured to store a corresponding identification tier from a plurality of tiers; wherein a portion of the rules are structured to vary as a function of the identification tier of a user that sent the request message or receiving user, and another set of rules are configured to apply other rules controlled by external electronic access to the rules engine; and further wherein the consensus protocol configures the nodes to respond to requests to receive blockchain audit data sent from a public computer.
Wherein Lai teaches wherein the service server is configured to store user registration and user identification and is further configured to store a corresponding identification tier from a plurality of tiers; (Par. (0044 and 0123); service server (servers storing data)), (Par. (0101-0103); storing new user registration information in server of construction blockchain)), (Par. (0172-0174); mapped user ID stored in blockchain corresponding to roles/entity with permissions)), (Par. (0114 and 0144);identification tiers from a plurality of tiers (hierarchy of level roles and permissions))
wherein a portion of the rules are structured to vary as a function of the identification tier of a user that sent the request message or receiving user, and another set of rules are configured to apply other rules controlled by external electronic access to the rules engine; and further (Par. (0144); rules assignment with roles for users in combination with hierarchy and level roles)), (Par. (0114); hierarchy roles and permission levels for certain users i.e administrator and users with not administrator access with levels/rules))
wherein the consensus protocol configures the nodes to respond to requests to receive blockchain audit data sent from a public computer. (Par. (0074); public node participants providing proofs and data)), (Par. (063); validating transactions with nodes from public blockchain))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Witham to incorporate the teaching of Lai to utilize the above feature because of the analogous concept of tokenization using blockchain technologies, with the motivation of implementing role based access, tiers and rules to transfer token and cryptocurrency more effectively to relate and allotted rightful access to authorized users and maintain integrity of system (Lai Par. (0003-0006 and 0114-0115))
In regards to Claim 2, the combination of Witham and Lai teach the system of claim 1, Witham further teaches the system of claim 1, wherein the service server is configured to administer the plurality of computer nodes. (Par. (0119); server computer system with group of processors), (Par. (0045-0046); system with network nodes communicatively connected with processors that are administered with nodes operations))
In regards to Claim 3, the combination of Witham and Lai teach the system of claim 1, Lai further teaches wherein the consensus protocol configures the nodes to send data stored on the blockchain to a requesting public computer. (Par. (0216-0220 and 0235); nodes in blockchain transmitting metadata to customer of public blockchain seeking access to data on blockchain))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Witham to incorporate the teaching of Lai for the reasons discussed in independent claim 1 stated above.
In regards to Claim 4, the combination of Witham and Lai teach the system of claim 1, Lai further teaches wherein the public computer is the service server. (Par. (0123 and0125-0126); servers storing data in system), (Figure 4B labels 400 and 416; servers in computing system)), (Par. (0249); public blockchain with nodes in system))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Witham to incorporate the teaching of Lai for the reasons discussed in independent claim 1 stated above.
In regards to Claim 5, the combination of Witham and Lai teach the system of claim 1, Witham further teaches the system of claim 1, wherein an application program interface is implemented on personal devices to participate in an operation on the blockchain. (Par. (0045-0048); user interface with network nodes in blockchain performing operation of consensus rules and proofs with digital token)), P(ar. (0050); personal devices of users))
In regards to Claims 8-12 and Claim 15-19, claims 8-12 and 15-19 are method and computer readable medium claims that recite similar limitations to claims 1-5 and the teachings of Witham and Lai address all the teachings discussed in claims 1-5 and are thereby rejected under the same grounds.
Claims 6, 13 and 20, is/are rejected under 35 U.S.C. 103 as being unpatentable over Witham et al. (U.S Pub. No. 20230119843, hereinafter referred to as “Witham”) and Lai et al. (U.S Pub. No. 20200344233, hereinafter referred to as “Lai”) further in view of Soundararajan et al. (U.S Pub. No. 20200036712, hereinafter referred to as “Soundararajan”)
In regards to Claim 6, the combination of Witham and Lai do not explicitly teach wherein the system includes a computer that is configured to intercept messages sent to the blockchain and directs one or more the messages to the off-chain computer.
Wherein Soundararajan teaches wherein the system includes a computer that is configured to intercept messages sent to the blockchain and directs one or more of the messages to the off-chain computer. (Par. (0215-0216); intercept messages sent to blockchain (captured time series data to the blockchain) and directs one or messages to off-chain (transmits time series data to off-chain for external storage))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Witham and Lai to incorporate the teaching of Soundararajan to utilize the above feature because of the analogous concept of tokenization using blockchain technologies, with the motivation of implementing off-chain and intercepting of messages with storage to assure verifiers and preapproved users that digital attestation is done remotely and storage using off-chain can securely save private data more effectively. (Soundararajan Par. (0158-0160))
In regards to Claim 13 and 20, claims 13 and 20 recite similar limitations to dependent claim 6 and the teachings of Witham, Lai and Soundararajan address all the limitations discussed in dependent claim 6 and are thereby rejected under the same grounds.
Claims 7, 14 and 21, is/are rejected under 35 U.S.C. 103 as being unpatentable over Witham et al. (U.S Pub. No. 20230119843, hereinafter referred to as “Witham”) and Lai et al. (U.S Pub. No. 20200344233, hereinafter referred to as “Lai”) further in view of Frusina et al. (U.S Pub. No. 20210297929, hereinafter referred to as “Frusina”)
In regards to Claim 7, the combination of Witham and Lai do not explicitly teach wherein the system is configured to include a plurality of separate different rules engines that are controlled or defined by different external computers.
Wherein Frusina teaches wherein the system is configured to include a plurality of separate different rules engines that are controlled or defined by different external computers. (Par. (0118-0120); plurality of remote and local rule engines reporting back to remote command center)), (Figure labels 20 and 10; rule engines with remote computers))
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Witham and Lai to incorporate the teaching of Frusina to utilize the above feature because of the analogous concept of secure transfer of data using blockchain technologies, with the motivation of utilizing remote and rule engines to create a tamper proof method of storage and assure user integrity of data in blockchain without fear of change. (Frusina Par. (0105))
In regards to Claim 14 and 21, claims 14 and 21 recite similar limitations to dependent claim 7 and the teachings of Witham, Lai and Frusina address all the limitations discussed in dependent claim 6 and are thereby rejected under the same grounds.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Padmanabhan; Prithvi Krishnan (U.S Pub. No. 20200374106) “SYSTEM OR METHOD TO IMPLEMENT RECORD LEVEL ACCESS ON METADATA DRIVEN BLOCKCHAIN USING SHARED SECRETS AND CONSENSUS ON READ”. Considered this reference because it addressed token data and transfer of cryptocurrency and secrets using blockchain.
Lang; Ulrich (U.S Pub. No. 20180069899) “METHOD AND SYSTEM FOR POLICY MANAGEMENT, TESTING, SIMULATION, DECENTRALIZATION AND ANALYSIS”. Considered this application because it relates to policy and rules with tier in a blockchain network.
Smith; Robert (U.S Pub. No. 20200044485) “RECEIVER DEVICE FOR FACILITATING WIRELESS POWER RECEPTION”. Considered this application because it addressed registering of devices and levels of access in network.
Conclusion
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.
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/H.A.H./Examiner, Art Unit 2497
/ELENI A SHIFERAW/ Supervisory Patent Examiner, Art Unit 2497
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