DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 1/21/26.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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.
Status of Claims
Claims 1, 3-11, 13-16, 18-23 are currently pending.
Claims 1, 3-11, 13-16, 18-23 are rejected as set forth below.
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 Arguments
Priority
The priority claim regarding benefit to the prior-filled application is still not complete due to the recent claim amendments. There is no mention of holding a transaction that is pending and completing the pending transaction after the requirement has been satisfied and verified. See the 35 USC 112(a)/(b) rejections below.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claim(s) 1, 11, 16 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
In light of the recent claim amendments, new 35 USC 112(a)/(b) rejections have been introduced. Specifically, due to the unclear nature of the claim scope, the amended limitations will be interpreted as executing/completing the transaction after determining that the requirement has been satisfied. See the 35 USC 112(a)/(b) rejections below.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/591,364, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, ‘364 fails to provide adequate written description support for at least the following limitations: “determining, by the smart contract during execution of the transaction, whether the verification data recorded on the distributed ledger satisfies the requirement” and “completing the transaction after determining that the requirement has been satisfied”. There is no mention of holding a transaction that is pending and completing the pending transaction after the requirement has been satisfied and verified. See the 35 USC 112(a)/(b) rejections below.
Claim Rejections - 35 USC § 112(a)
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, 3-11, 13-16, 18-23 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 1, 11, 16, 21-23, the limitations “determining, by the smart contract during execution of the transaction, whether the verification data recorded on the distributed ledger satisfies the requirement”, “completing the transaction after determining that the requirement has been satisfied”, “determining, by the smart contract during execution of the transaction, based on an interaction history recorded on the distributed ledger and associated with the originator of the transaction, whether the originator has exceeded a permitted number of interactions within a defined time window”, “rejecting completion of execution of the transaction when the permitted number of interactions has been exceeded” fail to comply with the written description requirement. Specifically, the Specification does not disclose the claimed function of holding a transaction that is pending and completing the pending transaction after the requirement has been satisfied and verified. Instead, the Specification discloses conducing the transaction only after the requirement has been satisfied and verified. See [0042], [0060]. It is noted that executing a transaction is interpreted as being equivalent to completing a transaction. See the 35 USC 112(b) rejection. See MPEP 2163. Applicant is reminded that the written description requirement applies to both original and amended claims. See Ariad Pharmaceuticals Inc. v. Eli Lilly & Co., 94 USPQ2d 1161 (Fed. Cir. 2010): (“Requirement, in 35 U.S.C. §112, to provide separate written description of invention applies to original claims.).
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 112(b)
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, 3-11, 13-16, 18-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As per claims 1, 11, 16, 21-23, the limitations “determining, by the smart contract during execution of the transaction, whether the verification data recorded on the distributed ledger satisfies the requirement”, “completing the transaction after determining that the requirement has been satisfied”, “determining, by the smart contract during execution of the transaction, based on an interaction history recorded on the distributed ledger and associated with the originator of the transaction, whether the originator has exceeded a permitted number of interactions within a defined time window”, “rejecting completion of execution of the transaction when the permitted number of interactions has been exceeded” render the scope of the claim indefinite because they contradict each other. Executing a transaction is interpreted as being equivalent to completing a transaction (execute: “to carry (something) out fully: to put (something) completely into effect”1). Therefore, it is unclear how a transaction can be completed after it has been executed. For purposes of examination, the limitations will be interpreted as executing/completing the transaction after determining that the requirement has been satisfied.
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 9-11, 13, 16, 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. 20190334905 to Lelcuk.
As per claims 1, 11, 16, Lelcuk teaches:
A method for verifying a human actor in a distributed ledger transaction, the method comprising: receiving, by a smart contract on a distributed ledger, a request to engage in a transaction, wherein the smart contract requires an originator of the transaction to prove that it satisfies a requirement that is verifiable by an authority in order to complete the transaction, wherein the requirement is that the originator of the transaction proves that it is not a bot; ([0020]-[0021], “According to the disclosed embodiments, a method and system for blockchain-based anti-bot protection are provided. In an example embodiment, a game is used to control access to protected entities. Specifically, a game is a mechanism by which the bias is established and henceforth access rights and privileges are gained, exchanged, or otherwise used. The game, when executed, can also reveal the behavior of the client (or its user). A bias is determined based on the results of the game. Based on the bias, a determination can be made if a client accessing a protected entity is, for example, a bot. That is, drift or deviation from the expected or previously established bias would be indicative of a bot.”; [0034], “In another embodiment, the trust broker 160 may be implemented as a smart contract using the crypto EVM capabilities.”)
associating, by the smart contract, verification data recorded on the distributed ledger with the request to engage in the transaction, wherein the verification data indicates that the authority has verified that the originator satisfies the requirement; determining, by the smart contract during execution of the transaction, whether the verification data recorded on the distributed ledger satisfies the requirement; and completing the transaction after determining that the requirement has been satisfied. ([0039], “Each game is designed to allow the trust broker 160 to establish a bias for the client 120. The bias is established as the client 120 progresses with the game, at the completion of the game, or both. In an embodiment, a game is used to establish a behavior bias using risks represented as access tokens.”; [0047]-[0050], “The trust broker 160 is configured to allow or deny access to the protected entity 140 based on the bias or any deviation thereof. The trust broker 160 may further provide a recommendation as whether to allow admission or not. Specifically, the granting of the access tokens is recorded as a transaction included in a block of a blockchain maintained by the blockchain network 130. Upon requesting an access to the protected entity 140 by the client 120, the client 120 “pays” the protected entity 140 the required number of access tokens. This may be performed by revoking (spending) access tokens granted to the client 120 to gain access. In other words, the use of the access tokens is recorded as a transaction and included in a block of the blockchain maintained by the blockchain network 130. Thus, the validation of the transaction (access request) is performed through the blockchain network 130. The validation can be performed prior to admitting an access to the protected entity 140.”)
As per claims 3, 13, 18, Lelcuk teaches:
wherein the token signed by the authority is written in a standard format for tokens from the authority, the method further comprising: further determining that the token signed by the authority matches a standard structure of tokens from the authority; ([0057]; [0039], “The tokens may be proprietary tokens or based on standard virtual currencies (e.g., Bitcoins) or contracts.”)
As per claim 9, Lelcuk teaches:
wherein verification data recorded on the distributed ledger is stored in a registry of the authority, and wherein the smart contract queries the registry during execution of the transaction to determine whether the requirement has been satisfied. ([0047]-[0050])
As per claim 10, Lelcuk teaches:
wherein the requirement that is verifiable by the authority also includes proof that the originator of the transaction has completed a know-your-customer (KYC) process, or proof that the transaction was originated from a particular user interface; ([0036], “According to the disclosed embodiments, any client, e.g., the client 120, attempting to access the protected entity 140 is required to execute a game as defined by an access policy provided by the trust broker 160 for the protected entity 140 or one of its resources being accessed. The game and the game scope is defined in an access policy selected by the trust broker 160.”)
Claim Rejections - 35 USC § 103
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 5-8, 15, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20190334905 to Lelcuk in view of United States Patent Application Publication No. 20240179020 to Green.
As per claims 5, 15, 20, Lulcuk does not explicitly teach, but Green teaches:
wherein the authority is an oracle that operates in concert with a test provider, wherein the test provider is used to prove the requirement, and the oracle verifies that the requirement has been determined to be satisfied by the test provider; ([0096], “Identity assertions associated with a verified user may be integrated into the decentralized private credential, and a verification zero-knowledge proof may verify the identity assertion. The policy enforcement system may be verified on a compliance layer of a blockchain, which may be implemented on a trusted platform module, a hardware security module, an oracle, or a virtual machine.”; [0106])
One of ordinary skill in the art would have recognized that applying the known technique of Green to the known invention of Lelcuk would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such oracle features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention so wherein the authority is an oracle that operates in concert with a test provider, wherein the test provider is used to prove the requirement, and the oracle verifies that the requirement has been determined to be satisfied by the test provider, results in an improved invention because applying said technique ensures that the authority that is determining whether a requirement has been satisfied is a separate entity that is trusted and credentialed, thus improving the overall security of the invention.
As per claim 6, Green teaches:
wherein the oracle is a service that is operable with a plurality of test providers to verify that requirements were determined to be satisfied by one of the plurality of test providers; ([0096], [0106])
As per claim 7, Lelcuk teaches:
wherein the test provider is a Completely Automated Public Turing test to tell Computers and Humans Apart (CAPTCHA) test provider; ([0020]-[0021])
Green teaches:
the oracle is a service that verifies that the test was passed by the originator of the transaction using an address unique to the originator of the transaction; ([0096], [0106])
As per claim 8, Lelcuk teaches:
wherein the CAPTCHA test is presented within a game; ([0020]-[0021])
Claims 4, 14, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20190334905 to Lelcuk in view of United States Patent Application Publication No. 20190251573 to Toyota.
As per claims 4, 14, 19, Lelcuk does not explicitly teach, but Toyota teaches:
wherein the data written to the distributed ledger includes a time-to-live (TTL), and the determining that the requirement of a smart contract is satisfied includes determining that the TTL has not expired; ([0046], “Secure authentication module 210 includes functionality for authenticating users to issuer computer system 202. This authentication process allows only those that are authorized to access the issuer computer system 202 and thus provide validation for certificates that are stored on the blockchain of the blockchain computer system 206.”; [0104], “The pilot smart contract may also include logic to automatically check for certificate expiration.”)
One of ordinary skill in the art would have recognized that applying the known technique of Toyota to the known invention of Lelcuk would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such digital certificate features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the data in the block written to the distributed ledger to include a time-to-live and modifying the step of verifying that the requirement of a smart contract is satisfied to include determining that the TTL has not expired results in an improved invention because applying said technique ensures that the verification data is valid and not expired, thus improving the overall security of the invention.
Claims 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20190334905 to Lelcuk in view of United States Patent Application Publication No. 20210133304 to Larson.
As per claims 21-23, Lelcuk teaches:
a smart contract that determines, based on an interaction history recorded on the distributed ledger and associated with the originator of the transaction, a requirement; ([0034], [0047]-[0050])
Lelcuk does not explicitly teach, but Larson teaches:
wherein determining that the requirement has been satisfied further comprises: determining whether the originator has exceeded a permitted number of interactions within a defined time window; and rejecting completion of execution of the transaction when the permitted number of interactions has been exceeded; ([0018], “The user is given a predetermined amount of time to pass the challenge and/or a pre-configured amount of attempts. When the user fails the challenge after a threshold number of attempts within the allotted time frame, the user is denied any further interactions with the website and suspected of being a non-human user.”)
One of ordinary skill in the art would have recognized that applying the known technique of Larson to the known invention of Lelcuk would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such authentication features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the step of determining that the requirement has been satisfied by the smart contract so the determining is based on whether the originator has exceeded a permitted number of interactions within a defined time window and rejecting completion of execution of the transaction when the permitted number of interactions has been exceeded results in an improved invention because applying said technique ensures that the transaction is being performed by a human by requiring stricter restrictions, thus improving the overall security of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20170048235 to Lohe discloses Crypto Captcha and Social Aggregating, Fractionally Efficient Transfer Guidance, Conditional Triggered Transaction, Datastructures, Apparatuses, Methods and Systems (“SOCOACT”) that transforms login request, external feature add request, verification response inputs via SOCOACT components into verification request, verification confirmation outputs. An external feature add request that identifies an external feature may be obtained from an authenticated user. Verification data parameters may be determined based on a determined verification standard. The verification data parameters may include a specification of one or more crypto tokens to be transferred. A crypto verification request may be generated and provided to the authenticated user. A crypto verification response that comprises a verification transaction in a socially aggregated blockchain datastructure may be obtained from the authenticated user. A participant account data structure may be modified to indicate association with the external feature based on determining that the verification transaction satisfies the specified verification data parameters.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/JAY HUANG/Primary Examiner, Art Unit 3619
1 “Execute.” Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/execute. Accessed 3 Feb. 2026.