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 .
Status of Claims
Claims 1, 20 and 27 are amended.
Claims 2-3, 6-7, 9-19, 21-22, 24-25, and 28-30 are canceled.
Claims 1, 4-5, 8, 20, 23, 26-27, and 31 are pending.
Response to Remarks
35 U.S.C. § 101
Remark 1: Applicant contends that “Because Applicant has amended the claims as agreed to, this rejection is moot”.
Response to Remark 1: Examiner respectfully disagrees. 35 U.S.C. § 101 was not discussed during the interview of 05-07-2026. Claims 1, 4-5, 8, 20, 23, 26-27, and 31 continue to be rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
35 U.S.C. § 112(a)
Applicant’s amendments to the claims have overcome the previous rejections. Accordingly, the previous rejections are withdrawn. However, new grounds of rejection have been made.
35 U.S.C. § 112(b)
Applicant’s amendments to the claims have overcome the previous rejections. Accordingly, the previous rejections are withdrawn. However, new grounds of rejection have been made.
35 U.S.C. § 112(d)
Applicant’s amendments to the claims have overcome the previous rejections. Accordingly, the previous rejections are withdrawn. However, new grounds of rejection have been made.
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, 4-5, 8, 20, 23, 26-27, and 31 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Step 1 of the eligibility analysis asks is the claim to a process, machine, manufacture or composition of matter (See MPEP § 2106.03, subsections I and II). Claims 1, 4-5 and 8 are directed to a computer-implemented method (i.e., process). Claims 20, 23 and 26 are directed to a computer-implemented system (i.e., machine, and manufacture). Claims 27 and 31 are directed to a non-transitory computer-readable storage medium (i.e., manufacture). Therefore, these claims fall within the four statutory categories of invention.
Step 2A, Prong One
Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon (MPEP § 2106.04(II)(A)(1)). Claims 1, 20 and 27 under a broadest reasonable interpretation recite an abstract idea because the claims describe tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas (MPEP § 2106.04(a)(2), subsection II). The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas because the limitations describe fundamental economic principles or practices, including mitigating risk, describe commercial or legal interactions, including agreements in the form of contracts, and advertising, marketing or sales activities or behaviors. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
Claim 1:
A method for distributed ledger-based collateral movement, comprising:
receiving, at a first collateral custodian computer system for a first collateral custodian and from a client of the first collateral custodian, a collateral asset for a target asset held by a client of a second collateral custodian; and
posting, to a distributed ledger platform, an identification of the collateral asset;
retrieving, by the first collateral custodian computer system, a collateral requirement rule of the client of the second collateral custodian;
writing the collateral requirement rule to the distributed ledger platform;
tokenizing, by a first agent/intermediary computer system, the collateral asset to a collateral token;
writing, by the first agent/intermediary computer system, the collateral token to the distributed ledger platform;
verifying, by a smart contract executed by the distributed ledger platform, that the collateral asset is acceptable to the client of the second collateral custodian, wherein the verifying is based on an identification of the collateral asset and the collateral requirement rule of the client of the second collateral custodian;
escrowing, by the first agent/intermediary computer system, the collateral asset and the target asset after the collateral asset is tokenized and in response to the verifying that the collateral asset is acceptable;
retrieving, by a second agent/intermediary computer system, the collateral token from the distributed ledger platform;
providing, by the second agent/intermediary computer system, the collateral token to the second collateral custodian;
receiving, by the second collateral custodian, the collateral token; and
releasing by the second collateral custodian, the target asset to the first collateral custodian in response to receiving the collateral token.
Claim 20:
A system, comprising:
a first collateral custodian computer system for a first collateral custodian comprising a first collateral custodian computer processor and a first collateral custodian memory;
a second collateral custodian computer system for a second collateral custodian comprising a second collateral custodian computer processor and a second collateral custodian memory;
a first agent/intermediary computer system;
a second agent/intermediary computer system; and
a distributed ledger platform;
wherein:
the first collateral custodian computer system is configured to receive, from a client of the first collateral custodian, a collateral asset for a target asset held by a client of the second collateral custodian;
the first collateral custodian computer system is configured to post, to the distributed ledger platform, an identification of the collateral asset;
the first collateral custodian computer system is configured to retrieve a collateral requirement rule of the client of the second collateral custodian;
the first collateral custodian computer system is configured to write the collateral requirement rule to the distributed ledger platform;
the first agent/intermediary computer system is configured to tokenize the collateral asset to a collateral token;
the first agent/intermediary computer system is configured to write the collateral token to the distributed ledger platform;
a smart contract executed by the distributed ledger platform is configured to verify that the collateral asset is acceptable to the client of the second collateral custodian, wherein the verifying is based on an identification of the collateral asset and a collateral requirement rule of the client of the second collateral custodian;
the first agent/intermediary computer system is configured to escrow the collateral asset and the target asset after the collateral asset is tokenized and in response to the verifying that the collateral asset is acceptable;
the second agent/intermediary computer system is configured to retrieve the collateral token from the distributed ledger platform;
the second agent/intermediary computer system is configured to provide the collateral token to the second collateral custodian;
the second collateral custodian computer system is configured to receive the collateral token; and
the second collateral custodian computer system is configured to release the target asset to the first collateral custodian in response to receiving the collateral token.
Claim 27:
A non-transitory computer readable storage medium, including instructions stored thereon, which when read and executed by one or more computer processors, cause the one or more computer processors to perform steps comprising:
receiving, from a client of a first collateral custodian, a collateral asset for a target asset held by a client of a second collateral custodian;
posting, to a distributed ledger platform, an identification of the collateral asset;
retrieving a collateral requirement rule of the client of the second collateral custodian;
writing the collateral requirement rule to the distributed ledger platform;
tokenizing the collateral asset to a collateral token;
writing the collateral token to the distributed ledger platform;
verifying that the collateral asset is acceptable to the client of the second collateral custodian, wherein the verifying is based on an identification of the collateral asset and a collateral requirement rule of the client of the second collateral custodian;
escrowing the collateral asset and the target asset after the collateral asset is tokenized and in response to the verifying that the collateral asset is acceptable;
retrieving the collateral token from the distributed ledger platform;
providing the collateral token to the second collateral custodian;
receiving, from the distributed ledger platform, the collateral token; and
releasing the target asset to the first collateral custodian in response to receiving the collateral token.
Step 2A, Prong Two
Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application (MPEP § 2106.04(II)(A)(2)). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h). Here, the non-underlined claim limitations above recite additional elements. The additional elements do not improve the functioning of computers, another technology, or a technical field (MPEP §§ 2106.04(d)(1) and 2106.05(a)). The Specification does not assert that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. The claim does not purport to improve computer capabilities, but rather invokes computers merely as a tool by adding general purpose computers post-hoc to an abstract idea. A commonplace business method being applied on a general-purpose computer is not sufficient to show an improvement to technology. The claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. The Specification and the claim language provide evidence that the focus of the claim is on a scheme. An improvement in the abstract idea itself is not an improvement in technology. Even if the Specification describes technical improvements, they are not claimed. The additional elements do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (MPEP § 2106.04(d)(2)). The additional elements do not implement the abstract idea with a particular machine or manufacture that is integral to the claim (MPEP § 2106.05(b)). A general-purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. The additional elements do not transform or reduce a particular article to a different state or thing (MPEP § 2106.05(c)). The claim does not recite any transformation of an article where the article changes to a different state or thing. Nor do the additional elements apply the abstract idea in a meaningful way or impose a meaningful limit on it beyond linking its use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e)). The additional elements generally link the use of the judicial exception to a particular technological environment. A wholly generic computer implementation is not generally the sort of additional feature that provides any practical assurance that the process is more than a drafting effort designed to monopolize the abstract idea itself. The additional elements individually and in combination, merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). Implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application. The additional elements are being used in their ordinary capacity. The additional elements do no more than merely invoke computers or machinery as a tool to perform an existing process. The additional elements generally link the use of the abstract idea to a particular technological environment or field of use (MPEP § 2106.05(h)). Limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception cannot integrate a judicial exception into a practical application. Thus, the additional elements do not integrate the abstract idea into a practical application. Accordingly, the claims are directed to the abstract idea identified above.
Step 2B
Step 2B determines whether the claim as a whole amount to significantly more than the abstract idea itself (MPEP § 2106.05). In Step 2B examiners carry over their identification of the additional element(s) in the claim from Step 2A Prong Two; carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a)-(c), (e), (f) and (h); re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d). The additional elements individually and in combination, merely serve as a tool to perform the abstract idea (MPEP § 2106.05(f)). The additional elements generally link the use of the abstract idea to a particular technological environment or field of use (MPEP § 2106.05(h)). Individually, the additional elements do not amount to significantly more than the abstract idea. Here, the additional elements simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Here, the specification of the application indicates that additional elements are well-known or conventional (See Spec. 0043, 0055, 0071-0072, 0077, 0080-0081, 0085, 0088-0092). There is nothing in the specification to indicate that the operations recited in the claims require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. The ordered combination recites no more than the individual elements do. Thus, the additional elements are not significantly more than the abstract idea. Accordingly, the claims are directed to the abstract idea identified above without significantly more. The claims are not eligible, warranting a rejection for lack of subject matter eligibility and concluding the eligibility analysis.
Dependent Claims
Claim 4 recites an abstract idea because the claim describes tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements do not integrate the abstract idea into a practical application because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. The additional elements are not significantly more than the abstract idea because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. Therefore, the claim is not eligible. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
wherein the collateral asset and the target asset are the same type of asset.
Claim 5 recites an abstract idea because the claim describes tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements do not integrate the abstract idea into a practical application because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. The additional elements are not significantly more than the abstract idea because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. Therefore, the claim is not eligible. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
wherein the collateral asset and/or the target asset are bonds.
Claim 8 recites an abstract idea because the claim describes tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements do not integrate the abstract idea into a practical application because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. The additional elements are not significantly more than the abstract idea because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. Therefore, the claim is not eligible. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
wherein the target asset is a physical asset.
Claim 23 recites an abstract idea because the claim describes tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements do not integrate the abstract idea into a practical application because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. The additional elements are not significantly more than the abstract idea because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. Therefore, the claim is not eligible. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
wherein the collateral asset and the target asset are the same type of asset.
Claim 26 recites an abstract idea because the claim describes tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements do not integrate the abstract idea into a practical application because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. The additional elements are not significantly more than the abstract idea because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. Therefore, the claim is not eligible. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
wherein the target asset is a physical asset.
Claim 31 recites an abstract idea because the claim describes tokenizing collateral to secure asset exchange, then releasing target asset upon receiving collateral token, grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The additional elements do not integrate the abstract idea into a practical application because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. The additional elements are not significantly more than the abstract idea because individually and in combination, the additional elements are recited at a high level of generality as generic and conventional computers and components merely serving as a tool to perform the abstract idea and generally linking the use of the abstract idea to a particular technological environment. Therefore, the claim is not eligible. The following underlined claim limitations recite the abstract idea. The non-underlined claim limitations recite additional elements.
wherein the target asset is a physical asset.
Claims Free of Art
The closest prior art of record is Non-Patent Literature “How Can Collateral Management Benefit from DLT?” by Deutsche Bundesbank (hereinafter “Deutsche Bundesbank”). Deutsche Bundesbank teaches:
receiving, at a first collateral custodian computer system for a first collateral custodian and from a client of the first collateral custodian, a collateral asset for a target asset held by a client of a second collateral custodian; (Page 6 “… eligible collateral which is safekept in accounts at custodians”; Page 6 “… the securities need only to be moved once from the collateral giver’s account to the account of the TTP”; Page 8 “… a client needs to transfer securities to the TTP at the custodian level … the TTP maintains the securities for the client … The TTP and its clients can maintain accounts with different custodians and are hence able to mobilize and combine client holdings from different depository locations into one token”; Page 14 “The TTP … holds securities on behalf of the beneficial owners at one or even multiple custodians …”)
posting, to a distributed ledger platform, an identification of the collateral asset; (Page 6 “… or through triparty services offered by the custodian”; Page 2 “Token transfers are recorded on an immutable ledger which is shared between relevant parties”; Page 8 “… recording of token transfers amongst participants”; Page 8 “The Collateral Token Layer is a DLT-based peer-to-peer network which maintains the registry of issued tokens and tracks token transfers”)
retrieving, by the first collateral custodian computer system, a collateral requirement rule of the client of the second collateral custodian; (Page 2 “These tokens can then be transferred instantly between the participants in the network and thus be used as collateral”; Page 5 “once a token has been created it can be directly exchanged between the collateral giver and the collateral taker”; Page 6 “… representative tokens can be transferred”; Page 8 “When a token is transferred from one participant to another …”; Page 14 “… through the transfer of tokens”)
writing the collateral requirement rule to the distributed ledger platform; (Page 6 “… or through triparty services offered by the custodian”; Page 2 “Token transfers are recorded on an immutable ledger which is shared between relevant parties”; Page 8 “… recording of token transfers amongst participants”; Page 8 “The Collateral Token Layer is a DLT-based peer-to-peer network which maintains the registry of issued tokens and tracks token transfers”)
tokenizing, by a first agent/intermediary computer system, the collateral asset to a collateral token (Page 6 “… or through triparty services offered by the custodian”; Page 2 “creates representative tokens”; Page 5 “once a token has been created”; Page 5 “… creates representative tokens.”; Page 6 “Once the securities are tokenized …”; Page 8 “… creation and loading of tokens on receipt of securities”; Page 19 “Tokenization …”)
writing, by the first agent/intermediary computer system, the collateral token to the distributed ledger platform (Page 6 “… or through triparty services offered by the custodian”; Page 2 “Token transfers are recorded on an immutable ledger which is shared between relevant parties”; Page 8 “… recording of token transfers amongst participants”; Page 8 “The Collateral Token Layer is a DLT-based peer-to-peer network which maintains the registry of issued tokens and tracks token transfers”)
escrowing, by the first agent/intermediary computer system, the collateral asset and the target asset after the collateral asset is tokenized and in response to the verifying that the collateral asset is acceptable; (Page 6 “… eligible collateral which is safekept in accounts at custodians”; Page 6 “… the securities need only to be moved once from the collateral giver’s account to the account of the TTP”; Page 8 “… a client needs to transfer securities to the TTP at the custodian level … the TTP maintains the securities for the client … The TTP and its clients can maintain accounts with different custodians and are hence able to mobilize and combine client holdings from different depository locations into one token”; Page 14 “The TTP … holds securities on behalf of the beneficial owners at one or even multiple custodians …”)
retrieving, by a second agent/intermediary computer system, the collateral token from the distributed ledger platform; providing, by the second agent/intermediary computer system, the collateral token to the second collateral custodian; receiving, by the second collateral custodian, the collateral token (Page 2 “These tokens can then be transferred instantly between the participants in the network and thus be used as collateral”; Page 5 “once a token has been created it can be directly exchanged between the collateral giver and the collateral taker”; Page 6 “… make collateral available to the respective counterparties.”; Page 6 “eligible collateral which is safekept in accounts at custodians is transferred from the collateral giver to the collateral taker”; Page 6 “… representative tokens can be transferred”; Page 8 “When a token is transferred from one participant to another …”; Page 9 “To use a token as collateral, a token transfer from the collateral giver to the collateral taker has to be processed … token has to be released to the collateral taker”; Page 14 “… through the transfer of tokens”)
releasing by the second collateral custodian, the target asset to the first collateral custodian in response to receiving the collateral token. (Page 2 “These tokens can then be transferred instantly between the participants in the network and thus be used as collateral”; Page 5 “once a token has been created it can be directly exchanged between the collateral giver and the collateral taker”; Page 6 “… representative tokens can be transferred”; Page 8 “When a token is transferred from one participant to another …”; Page 14 “… through the transfer of tokens”)
Therefore, the prior art does not teach, neither singly nor in combination the following:
verifying, by a smart contract executed by the distributed ledger platform, that the collateral asset is acceptable to the client of the second collateral custodian, wherein the verifying is based on an identification of the collateral asset and the collateral requirement rule of the client of the second collateral custodian;
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11,522,700 B1 to Auerbach et al. discloses: The present invention relates to a method, system, and program product for depositing, holding and/or distributing collateral in the form of a stable value token for a security token, the tokens being on the same underlying blockchain. Furthermore, the present invention relates to methods, systems, and program products for lending digital assets, such as crypto currency and other related products.
US 2020/0042989 A1 to Ramadoss et al. (hereinafter “Ramadoss”) discloses systems and methods are disclosed to tokenize an asset by: documenting a value for the asset by a promoter of the asset, generating a plurality of cryptocurrency coins/tokens corresponding to the value of the asset; embedding in the cryptocurrency coins/tokens a smart contract one or more investment terms including asset description, payment and timing; obtaining subscriptions and payments for the asset from a crowd; holding subscription payments from the crowd in escrow until a predefined condition is met; and releasing the coins/tokens to the promoter and recording ownership interest from the crowd.
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 Ari Shahabi whose telephone number is (571)272-2565. The examiner can normally be reached M-F: 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARI SHAHABI/Primary Examiner, Art Unit 3697
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