DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action is in response to the Applicant’s Amendment filed January 12, 2026. Claims 10-11, 13-19, and 21-29 are pending and under examination in this case. Claims 1-9 were previously canceled, pursuant to a Requirement for Restriction issued September 29, 2024. Claims 12 and 20 are currently canceled. Claims 10, 13, 15, 16, 18, 22, and 24 are currently amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 12, 2026, has been entered.
Response to Arguments
Applicant’s arguments, see REMARKS, filed January 12, 2026,, with respect to the double-patenting rejections of the claims and in view of the Terminal Disclaimer filed January 12, 2026, have been fully considered and are persuasive. The double-patenting rejections of the claims have been withdrawn.
Applicant argues that the claims recite statutory subject matter, specifically an improvement to the functioning of a computer as in Enfish.
Examiner respectfully disagrees.
In the instant case, the claims are not similar to Enfish (Enfish LLC v. Microsoft Corp) as the claims do not improve the function of the computer itself by providing “increased flexibility, faster search times, and smaller memory requirements” (Enfish at 1690) but merely serves as creating a top-tier container for data, receiving data, lower-tier containers, creating tokens, hashing the tokens, hashing the hashed tokens in order to create a hash of transaction. Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field.
Applicant’s arguments regarding the prior art rejections of the claims, as currently amended, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 10-11, 13-19, and 21-29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 10-11, 13-14, and 21-25 are directed to a method, and claims 15-19 and 26-29 are directed to a non-transitory storage medium. Therefore, these claims fall within the four statutory categories of invention.
The claims recite creating a top-tier container for data, receiving data, lower-tier containers, creating tokens, hashing the tokens, hashing the hashed tokens in order to create a hash of transaction data, and verifying the authenticity of the various tokens, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04(a)(2)). In other words, the claims are directed to commercial or legal interactions because they describe a process for preserving the integrity of transactions. Accordingly, the claims recite an abstract idea (MPEP 2106.04(a)(2), also See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (MPEP 2106.05), the additional elements of the claims such as a processor, blockchain, network, computing system, merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the processor, blockchain, network, computing system, perform the steps or functions of the preserving the integrity of transactions. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea 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) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (MPEP 2106.05 (f) & (h)) the additional element(s) of using a processor, blockchain, network, computing system to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of preserving the integrity of a transaction.
As discussed above, taking the claim elements separately, the processor, blockchain, network, computing system perform the steps or functions of preserving the integrity of a transaction. These functions correspond to the actions required to perform the abstract idea. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claims are not patent eligible.
Dependent claims 11-14 and 16-29 further describe the abstract idea of preserving the integrity of a transaction.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10-11, 13-19, and 21-29, are rejected under 35 U.S.C. 103 as being unpatentable over Casebolt (US 2017/0255912) in view of McKenzie et al (US 2021/0248653) and in view of Shah (US 2005/0137969), Kikinis (US 2020/0219045), and Thomas, III et al (US 2024/0112767).
Regarding claims 10 and 15 -
Casebolt discloses a method implemented on a computing system having one or more processors, an object memory, and a network interface connected to a network (par 30), the method comprising:
creating, in the object memory, a top-tier container; (fig2,par 31-32)
receiving, at the computing system from a user interfaced with the network, data associated with the top-tier container; (fig2,par 31-32)
creating, by the top-tier container in the object memory, a plurality of lower-tier containers within the top-tier container (fig2,par 31-32)
Casebolt does not specifically disclose creating, by the lower-tier container, a plurality of tokens within the lower-tier container, wherein each of the tokens each include a document hash generated from the data received from the user; creating, by the lower-tier container, a plurality of ERC-721 tokens within the lower-tier container, wherein each of the tokens each include a document hash generated from the data received from the user; hashing the tokens to generate a lower-tier transaction hash stored in the lower- tier container; and hashing all transaction hashes from the plurality of lower-tier containers to generate a top-tier transaction hash stored in the top-tier container.
However, Casebolt does disclose data created in lower tier container (par 31-32) as well as upper or top tier container and generating data for top tier containers (par 31-32)
McKenzie discloses, as Casebolt does not, and in analogous art, creating a plurality of tokens, wherein each of the tokens each include a document hash generated from the data received from the user. (par 25, 32).
It would be obvious to one of ordinary skill in the art to combine the various level containers of Casebolt and the tokens of McKenzie for a more economical use of network resources, while better organizing data.
Additionally, Shah discloses, as Casebolt and McKenzie do not,
hashing the tokens to generate a transaction hash stored in the container; (par 39-43) and
hashing all transaction hashes from the plurality of containers to generate a transaction hash. (par 48-50)
It would be obvious to one of ordinary skill in the art to combine Shah with McKenzie and Casebolt for a more economical use of computer/network resources.
McKenzie further discloses as Casebolt does not, an ERC protocol, as well as ERC tokens. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocols and tokens of McKenzie with Casebolt in order to obtain greater security while achieving a more economical use of network resources, while better organizing data.
Kikinis teaches, as Casebolt does not, wherein the top-tier transaction hash provides a record to verify all the tokens and the data received for all the lower-tier containers within the top-tier container, and wherein the lower-tier transaction hash provides a record to verify all the tokens in the lower-tier container. (par 64).
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Thomas discloses , as Casebolt does not, verifying the authenticity of the tokens from different lower-tier containers by comparing the top-tier transaction hash to the tokens from different lower-tier containers (par 109, also 144 disclosing tokens)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Thomas for a more economical use of network resources, while better organizing data.
Regarding claims 11 and 17 –
McKenzie discloses that the hashings are performed with a SHA-2 hash function. (par 32, 33))
It would be obvious to one of ordinary skill in the art to combine the various level containers of Casebolt and the hash protocols of McKenzie for a more economical use of network resources, while better organizing data.
Regarding claim 13 –
Kikinis discloses that the document hash is generated from file properties of a file of the data
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Regarding claim 14 –
Kikinis discloses that the asset is a real-estate asset, and wherein the file is a digital document describing the real estate asset. (par 180)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
McKenzie discloses, as Casebolt does not, hash the received data to generate a document hash and create the plurality of tokens in the lower-tier container from the received data. (par 25,32)
It would be obvious to one of ordinary skill in the art to combine Casebolt and McKenzie for a more economical use of network resources, while better organizing data.
Regarding claim 16 –
Casebolt discloses a blockchain manager instructing the processor to operate in the at least one ERC protocol; and instructions, that when executed by the processor cause the processor to,
provide an interface to a user to receive data associated with the top-tier container; (fig2, par 31-32) and
determine a lower-tier container for the data, (fig2,par 31-32).
Regarding claim 18 –
Kikinis discloses wherein the top-tier container is associated with a real-estate asset, and wherein the lower-tier containers are each associated with a distinct type of transaction with the real-estate asset, and wherein the lower-tier containers each store only tokens for the respective distinct type of transaction. (par 180)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
McKenzie discloses, as Casebolt and Kikinis do not, ERC-721 tokens. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Regarding claim 21 –
Shah discloses, storing the data received in a file system separate from the top-tier and lower-tier containers. (par 39-43)
It would be obvious to one of ordinary skill in the art to combine Shah with McKenzie and Casebolt for a more secure storage of data.
Regarding claims 22 and 27 –
Mckenzie discloses wherein the creating the plurality of tokens further includes creating a URL that serves the document hash and a record of the data received used in generating the document hash. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Regarding claims 23 and 27 –
Kikinis discloses wherein the hashing the tokens to generate the lower-tier transaction hash further includes hashing the URL into the lower-tier transaction hash. (par 64-65)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Regarding claims 24 and 29 –
Mckenzie discloses receiving a transaction query from a querying user regarding the data received and used in the creating the plurality of ERC-721 tokens; (par 25, 32) and
providing transaction data to the querying user from only the top-tier transaction hash. (par 32)
It would be obvious to one of ordinary skill in the art to combine the protocol and tokens of McKenzie with Casebolt in order to obtain greater security.
Regarding claim 25 –
McKenzie teaches storing the top-tier transaction hash into a Merkle tree. (par 25, 32)
It would be obvious to one of ordinary skill in the art to combine Casebolt and McKenzie for a more economical use of network resources, while better organizing data.
Regarding claim 26 –
Kikinis discloses a file system separate from the blockchain manager and the top-tier and lower-tier containers storing the received user data. (par 64-65)
It would be obvious to one of ordinary skill in the art to combine Casebolt and Kikinis for a more economical use of network resources, while better organizing data.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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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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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
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