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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/13/2026 has been entered.
Status of Claims
Claims 1, 20 and 27 are amended.
Claims 2-3, 6-7, 9-19, 21-22, 24-25, 28 and 30 are canceled.
Claims 1, 4-5, 8, 20, 23, 26-27, 29 and 31 are pending.
Response to Remarks
35 U.S.C. § 101
Remark 1: Applicant contends that the amended claims integrate the alleged judicial exception into a practical application because the claims apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole are more than a drafting effort designed to monopolize the exception.
Response to Remark 1: Examiner respectfully disagrees. The additional elements individually and in combination, 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 (MPEP § 2106.05(f)) and generally linking the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)). The description of the additional elements evidences that they are generic and conventional elements used as tools to perform the abstract idea (See Spec. 0043, 0055, 0071-0072, 0077, 0080-0081, 0085, 0088-0092). Accordingly, this contention is unpersuasive.
Remark 2: Applicant contends that when the claims are interpreted properly, this is not a close call, and the claims are directed to statutory subject matter.
Response to Remark 2: Applicant submits arguments in conclusory fashion without explanation. Accordingly, this contention is unpersuasive.
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 Accordingly, the previous rejections are withdrawn.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.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Regarding Claims 1 and 20, the term “first agent/intermediary” acts as a generic placeholder for the term “means”. Also, the generic placeholder is modified by functional language “tokenizing … writing … escrowing …” in claim 1, and “is configured to tokenize … is configured to write … is configured to escrow …” in claim 20. Further, the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Specifically, the claims and specification (see pre-grant publication 0030) are both silent with respect to any structure corresponding to the generic placeholder “first agent/intermediary”.
Regarding Claims 1 and 20, the term “second agent/intermediary” acts as a generic placeholder for the term “means”. Also, the generic placeholder is modified by functional language “retrieving … providing …” in claim 1, and “is configured to retrieve … is configured to provide …” in claim 20. Further, the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Specifically, the claims and specification (see pre-grant publication 0030) are both silent with respect to any structure corresponding to the generic placeholder “second agent/intermediary”.
Regarding Claim 1, the term “second collateral custodian” acts as a generic placeholder for the term “means”. Also, the generic placeholder is modified by functional language “receiving … releasing …”. Further, the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. The structure corresponding to the “second collateral custodian” may be found in at least original claim 20, which describes the hardware that comprises the “second collateral custodian” as a “computer system”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 29 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, 29 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, the collateral asset to a collateral token;
writing, by the first agent/intermediary, 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, 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, the collateral token from the distributed ledger platform;
providing, by the second agent/intermediary, 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; 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 a 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;
a first agent/intermediary is configured to tokenize the collateral asset to a collateral token;
the first agent/intermediary 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 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;
a second agent/intermediary is configured to retrieve the collateral token from the distributed ledger platform;
the second agent/intermediary 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 a 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)). Here, the additional elements individually and in combination, are recited at a high level of generality as generic and conventional elements merely serving as a tool to perform the abstract idea (MPEP § 2106.05(f)) and generally linking the use of the abstract idea to a particular technological environment (MPEP § 2106.05(h)). The description of the additional elements evidences that they are generic and conventional elements used as tools to perform the abstract idea (See Spec. 0043, 0055, 0071-0072, 0077, 0080-0081, 0085, 0088-0092). These additional elements do not improve the functioning of computers, another technology, or a technical field (MPEP §§ 2106.04(d)(1) and 2106.05(a)). They do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (MPEP § 2106.04(d)(2)). They do not implement the abstract idea with a particular machine or manufacture that is integral to the claim (MPEP § 2106.05(b)). They do not transform or reduce a particular article to a different state or thing (MPEP § 2106.05(c)). Nor do they apply the abstract idea in a meaningful way or impose a meaningful limit on it beyond linking its use to a particular technological environment (MPEP § 2106.05(e)). Such a generic computer implementation does not make the abstract idea patent eligible because 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 Specification and the claim language provide evidence that the focus of the claim is not on a specific improvement in technology but rather on a scheme, for which generic and conventional elements are invoked merely as a tool to implement the abstract idea and link it to a particular field of use. Even if the Specification describes technical improvements, they are not claimed. 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). Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the abstract idea itself. Individually, the additional elements do not amount to significantly more than the abstract idea. As discussed previously, the description of the additional elements evidences that they are generic and conventional elements used as tools to perform the abstract idea (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. As such, the additional elements merely serve as a tool to perform the abstract idea and generally link the use of the abstract idea to a particular technological environment. 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 29 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 requirement rule is written to the distributed ledger platform.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-5, 8, 20, 23, 26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Means-Plus-Function
Claims 1 and 20 invoke 35 U.S.C. 112(f) interpretation (see Claim Interpretation section). A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description (see MPEP 2181(IV)). Claims 1 and 20 are found to be indefinite under 35 U.S.C. 112(b), therefore the claims are also rejected under 35 U.S.C. 112(a) for lacking adequate written description.
Claims 4-5, 8, 23 and 26 are also rejected per dependency upon a rejected claim.
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, 4-5, 8, 20, 23, 26-27, 29 and 31 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 pre-AIA the applicant regards as the invention.
Means-Plus-Function
Claims 1 and 20 invoke 35 U.S.C. 112(f) interpretation (see Claim Interpretation section). To satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function (see MPEP 2181(III)). Here, the claims and specification (see pre-grant publication 0030) are both silent with respect to any structure corresponding to the generic placeholders “first agent/intermediary” and “second agent/intermediary”. Therefore, these claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 4-5, 8, 23 and 26 are also rejected per dependency upon a rejected claim.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Lack of Antecedent Basis
Claims 20, 27 and 29 recite "the distributed ledger platform" without proper antecedent basis. Appropriate correction is needed.
Therefore, these claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 23, 26, 29 and 31 are also rejected per dependency upon a rejected claim.
Unclear Scope
Claim 20 is directed to a product (e.g., "A system, comprising: ...”). For products, the claim limitations will define discrete physical structures or materials (See MPEP 2103(I)(C)). Here, claim 20 recites that the "system" comprises structural recitations of the "first collateral custodian computer system …", the “second collateral custodian computer system …” and the “distributed ledger platform”. However, claim 20 also after the “comprising:” language, recites other structural recitations and associated functions (e.g., “a first agent/intermediary is configured to tokenize the collateral asset to a collateral token; the first agent/intermediary 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 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; a second agent/intermediary is configured to retrieve the collateral token from the distributed ledger platform; the second agent/intermediary is configured to provide the collateral token to the second collateral custodian”). Therefore, it is unclear whether claim 20 is directed to structural recitations of the “first collateral custodian computer system …", the “second collateral custodian computer system …” and the “distributed ledger platform”, or directed to a combination of structural recitations of the "first collateral custodian computer system …", the “second collateral custodian computer system …”, the “distributed ledger platform”, the “first agent/intermediary”, the “second agent/intermediary” and the “smart contract”. Therefore, the claim is indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
See In re Zletz, 893 F.2d 319, 13USPQ2d 1320 (Fed. Cir. 1989) and MPEP 2173.02 (III)(B) which states “Examiners should bear in mind that "[a]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.”
Claims 23 and 26 are also rejected per dependency upon a rejected claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 29 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 29 recites “wherein the collateral requirement rule is written to the distributed ledger platform.” The claim contains a reference to a previous claim in the same application, that being claim 27, thus the claim is a dependent claim. However, the claim fails to further limit the subject matter of the claim upon which it depends because the limitation “writing the collateral requirement rule to the distributed ledger platform” is already recited in the previous claim. Therefore, the claim is rejected under 35 U.S.C. 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. “When examining a dependent claim, the examiner should determine whether the claim complies with 35 U.S.C. 112(d), which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and include all the limitations of the previous claim.” See MPEP 608.01(n) III.
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, 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, 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, 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, the collateral token from the distributed ledger platform; providing, by the second agent/intermediary, 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.
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/ARI SHAHABI/Primary Examiner, Art Unit 3697