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 .
DETAILED ACTION
This communication is in response to the application filed on 02 August 2024. Claims 1-24 are currently pending. The rejections are as stated below.
Specification
The disclosure is objected to because of the following informalities:
In particular, Paragraph [0001], (cross reference to related applications) has to be updated to include the patent number of each allowed related application. Appropriate correction is required.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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Claims 1-24 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,086,796 B2, claims 1-26 of U.S. Patent No. 10,776,781 B2, claims 1-30 of U.S. Patent No. 11,068,886 B2, claims 1-28 of U.S. Patent No. 11,468,436 B2 and claims 1-25 of U.S. Patent No. 11,810,106 B2. Although the conflicting claims at issue are not identical, they are not patentably distinct from each other, because the claimed limitations from the present application and US Patents ‘781, ‘886, ‘436 and ‘106 above are significantly similar and the claimed features seem to be identical with various obvious alternate steps. The current invention and US Patents ‘796, ‘781, ‘886, ‘436 and ‘106 are drawn to a system for facilitating a transaction between a first entity and a second entity using a digital currency and have overlapping limitations. All limitations of the instant claims are substantially covered in claims 1-30 of U.S. Patent No. 12,086,796 B2, claims 1-26 of U.S. Patent No. 10,776,781 B2, claims 1-30 of U.S. Patent No. 11,068,886 B2, claims 1-28 of U.S. Patent No. 11,468,436 B2 and claims 1-25 of U.S. Patent No. 11,810,106 B2. However, certain language has been removed from the issued Patents. Therefore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
For these reasons, the claims of the instant application are not identical to claims 1-30 of U.S. Patent No. 12,086,796 B2, claims 1-26 of U.S. Patent No. 10,776,781 B2, claims 1-30 of U.S. Patent No. 11,068,886 B2, claims 1-28 of U.S. Patent No. 11,468,436 B2 and claims 1-25 of U.S. Patent No. 11,810,106 B2, but they are not patently distinct.
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 1-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 1 (exemplary) recites a series of steps for facilitating and managing a transaction between a first entity and a second entity using currency.
The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent system claim 1, recites the limitations of storing transaction information representing one or more transactions for a currency issued by a financial institution and/or a clearing house that is fixed with respect to a fiat currency, storing and maintaining a copy of a distributed ledger; receive a transaction for transferring an amount of the currency from a first entity to a second entity; generate new transaction information representing the transaction for addition to the distributed ledger; transmit the new transaction information; receive an indication of validity of the new transaction information; and based on the indication of validity, insert the new transaction information into the distributed ledger to complete the transaction for transferring the amount of the currency from the first entity to the second entity.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions (such as a fundamental economic concept or managing interactions between people), but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by a method of organizing human activity which includes commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing, or sales activities or behaviors; business relations). These limitations are directed to an abstract idea because they are commercial or legal interactions or sales activities (facilitating and processing a transaction between a first entity and a second entity using currency). If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of a computing node, a plurality of computing nodes participating in a distributed ledger to perform the steps. The processor (computing node) in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data (see Applicant’s specification ¶¶ 0124-0126). This generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.04(d). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. See MPEP 2106.05(f).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1 and 13. Furthermore, dependent claims 2-12 and 14-24 do not add limitations that meaningfully limit the abstract idea.
Dependent claims 2-12 and 14-24, recites the additional limitations of generating a new transaction block representing the transaction for addition to the distributed ledger; and inserting the new transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity; retrieving an existing transaction block from the distributed ledger; updating the existing transaction block to represent the transaction for addition to the distributed ledger; and inserting the updated transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity; generating or updating a transaction block representing transactions for the first entity to include the transaction for addition to the distributed ledger; and inserting the transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity; generating or updating a transaction block representing transactions for the second entity to include the transaction for addition to the distributed ledger; and inserting the transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity; generating or updating a first transaction block representing transactions for the first entity to include the transaction for addition to the distributed ledger; generating or updating a second transaction block representing transactions for the second entity to include the transaction for addition to the distributed ledger; and inserting the first transaction block and/or the second transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity; retrieving a transaction block from the distributed ledger; updating the transaction block to communally represent the transaction for addition to the distributed ledger, in addition to one or more other transactions; and inserting the updated transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity; truncate the transaction block after a time limit and/or a threshold number of transactions have been included in the transaction block; determine the threshold number of transactions and/or the time limit prior to truncating the transaction block; delete transaction information removed from the transaction block in storage; store transaction information removed from the transaction block in storage; delete, from the storage, transaction information removed from the transaction block based on a predetermine time, a threshold period of time, and/or a threshold size.
These limitations further define the abstract idea and are rejected under the same rational of claim 1. The claims merely amounts to the application or instructions to apply the abstract idea on a generic processor, and is considered to amount to nothing more than requiring a generic computer to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
The dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer.
Accordingly, claims 1-24 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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 1-7 and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker et al. (US 20150332395 A1), hereinafter “Walker”.
Regarding claims 1 and 13, Walker discloses a system and a corresponding digital wallet, for facilitating a transaction between a first entity and a second entity using a digital currency, one or more pairs of public and private keys for a user holding one or more digital currencies (abstract, ¶¶ 0022 and 0025-0027) comprising: a computing node, wherein the computing node is included in a plurality of computing nodes participating in a distributed ledger for a financial institution and/or a clearing house, wherein the distributed ledger for the financial institution and/or the clearing house stores transaction information representing one or more transactions for a digital currency issued by the financial institution and/or the clearing house that is fixed with respect to a fiat currency, and wherein at least one computing node in the plurality of computing nodes (abstract, ¶¶ 0003-0004, 0014 and 0020-0026) is configured to: store and maintain a copy of the distributed ledger; receive a transaction for transferring an amount of the digital currency from a first entity to a second entity; generate new transaction information representing the transaction for addition to the distributed ledger; transmit the new transaction information to the plurality of computing nodes; receive, from the plurality of computing nodes, an indication of validity of the new transaction information; and based on the indication of validity, insert the new transaction information into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (abstract, ¶¶ 0004, 0014-0015 and 0023-0026).
Regarding claims 2 and 14, Walker discloses generating a new transaction block representing the transaction for addition to the distributed ledger; and inserting the new transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (¶¶ 0023-0026).
Regarding claims 3 and 15, Walker discloses retrieving an existing transaction block from the distributed ledger; updating the existing transaction block to represent the transaction for addition to the distributed ledger; and inserting the updated transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (¶¶ 0023-0026).
Regarding claims 4 and 16, Walker discloses generating or updating a transaction block representing transactions for the first entity to include the transaction for addition to the distributed ledger; and inserting the transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (¶¶ 0020, 0022 and 0025-0026).
Regarding claims 5 and 17, Walker discloses generating or updating a transaction block representing transactions for the second entity to include the transaction for addition to the distributed ledger; and inserting the transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (¶¶ 0020, 0022 and 0025-0026).
Regarding claims 6 and 18, Walker discloses generating or updating a first transaction block representing transactions for the first entity to include the transaction for addition to the distributed ledger; generating or updating a second transaction block representing transactions for the second entity to include the transaction for addition to the distributed ledger; and inserting the first transaction block and/or the second transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (¶¶ 0020, 0022 and 0025-0026).
Regarding claims 7 and 19, Walker discloses retrieving a transaction block from the distributed ledger; updating the transaction block to communally represent the transaction for addition to the distributed ledger, in addition to one or more other transactions; and inserting the updated transaction block into the distributed ledger to complete the transaction for transferring the amount of the digital currency from the first entity to the second entity (¶¶ 0025-0027).
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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AlA) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 8-12 and 20-24 are rejected under 35 U.S.C. 103 as being unpatentable over Walker.
Regarding claims 8-12 and 20-24, Walker discloses that nodes maintain and update ledger/block structures. However, Walker fails to disclose the steps of truncate the transaction block after a time limit and/or a threshold number of transactions have been included in the transaction block, determine the threshold number of transactions and/or the time limit prior to truncating the transaction block, delete transaction information removed from the transaction block in storage, store transaction information removed from the transaction block in storage and delete, from the storage, transaction information removed from the transaction block based on a predetermine time, a threshold period of time, and/or a threshold size.
Official notice is hereby taken that blockchain techniques of limiting block size, number of transactions and the storing and archiving data and deleting older data is old and well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Walker to include the steps of truncate the transaction block after a time limit and/or a threshold number of transactions have been included in the transaction block, determine the threshold number of transactions and/or the time limit prior to truncating the transaction block, delete transaction information removed from the transaction block in storage, store transaction information removed from the transaction block in storage and delete, from the storage, transaction information removed from the transaction block based on a predetermine time, a threshold period of time, and/or a threshold size for enhancing the functionality of the system by greatly improving the performance/accuracy of the system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tunnell et al. US 20170053249 A1 discloses “Systems, methods and machines related to conducting a crypto-currency transaction. A method comprises creating a full block chain representing a plurality of past crypto-currency transactions, forwarding the full block chain to a first processing component for use in executing a new crypto-currency transaction, the first processing component forwarding an original local block chain to a second processing component, the second processing component executing the transaction and generating an updated local block chain with details related to the transaction, and forwarding the updated local block chain to the first processing component”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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