DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s response/application filed on 12/09/2024.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 2-19 are added.
Claims 1-19 are currently pending and have been examined.
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. 120 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 ofpre-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 disclosures of the prior-filed applications, Application No. 62636036, fail 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, said prior-filled applications fails to provide support for:
restricting transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied, wherein the second user belongs to a first class of users and the specified criterion is based on a maximum number of users that belong to the first class of users.
Double Patenting
The nonstatutory 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 nonstatutory double patenting rejection is appropriate where the conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12086771 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent includes all the limitations of the instant claims.
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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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 nonobviousness.
Claim(s) 1, 8, 9, 13, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 20190303887), in view of Molinari (US 20170011460), further in view of Yang (CN 108764852 A).
Regarding claim(s) 1 and 15, Wright discloses:
a non-transitory computer-readable storage medium comprising computer instructions when executed by a processor ([0294]), cause a computer system to perform those steps of:
in response to input by a first user, generating a number of cryptographic tokens that correspond to a smart contract recorded on a cryptographic ledger and associated with a first cryptographic address (By disclosing, “The present disclosure has particular application with creating tokens associated with transactions on a peer-to-peer distributed ledger such as, for example, the Bitcoin blockchain The token may be representative of a contractual right, smart contract or other form of asset.” ([0001]); “the step of receiving a request from a first user (A) for a token (T) may comprise receiving an offer or an acceptance of a contract. The step of receiving a request from a first user (A) for a token (T) may further comprise receiving at least one or more terms and conditions of a contract.” ([0024], [0015]-[0022], [0143]);
directing a first transfer, via a distributed consensus network, of a first cryptographic token of the number of cryptographic tokens from the first cryptographic address associated with the first user to a second cryptographic address associated with a second user ([0009], [0015]-[0022], [0059]-[0064], [0101, and [0120]).
Wright does not disclose:
restricting transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied, wherein the second user belongs to a first class of users and the specified criterion is based on a maximum number of users that belong to the first class of users.
However, Molinari teaches:
restricting transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied ([0101]).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Wright in view of Molinari to include techniques of restricting transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied. Doing so would result in an improved invention because this would leverage the advantages of using smart contracts (e.g. automation, cost efficiency, etc.).
And Yang teaches:
the specified criterion of a smart contract is based on a maximum number of users that belong to the first class of users. (By disclosing, using smart contract to specify the maximum number of stakeholders ([0031] of Yang)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Wright and Molinari, in view of Yang to include techniques of using smart contract to determine the maximum number of users that belong to the first class of user. Doing so would result in an improved invention because this would allow the terms of the smart contract to comply with the local rules and laws.
Regarding claim(s) 8 and 13, Wright discloses:
wherein the first cryptographic address is a multi-signature address, and wherein the first user comprises a set of users that each have a different corresponding private cryptographic key that is used to control the multi-signature address ([0127]-[0134]).
Regarding claim(s) 9, Wright discloses:
a network interface ([0293], [0294]) configured to:
communicate with a distributed network including an immutable public ledger of cryptographic assets, and transmit input by a first user to the distributed network, the distributed network being configured to generate a number of cryptographic tokens that correspond to a smart contract recorded on public ledger (By disclosing, “The present disclosure has particular application with creating tokens associated with transactions on a peer-to-peer distributed ledger such as, for example, the Bitcoin blockchain The token may be representative of a contractual right, smart contract or other form of asset.” ([0001]); “the step of receiving a request from a first user (A) for a token (T) may comprise receiving an offer or an acceptance of a contract. The step of receiving a request from a first user (A) for a token (T) may further comprise receiving at least one or more terms and conditions of a contract.” ([0024], [0015]-[0022], [0143]),
wherein further input by the first user to the distributed network causes a first cryptographic token of the number of cryptographic tokens to transfer from a first cryptographic address associated with the first user to a second cryptographic address associated with a second user ([0009], [0015]-[0022], [0059]-[0064], [0101, and [0120]).
a memory ([0294]) configured to store a current version of the public ledger and executable code associated with the smart contract (By disclosing, “A token represents a specific contract that details or defines rights conferred by a contract. The actual contract may be a file stored in a distributed manner.” ([0274])),
wherein the smart contract restricts further transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied, wherein the second user belongs to a first class of users and the specified criterion is based on a maximum number of users that belong to the first class of users.
Wright does not disclose:
wherein the smart contract restricts further transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied, wherein the second user belongs to a first class of users and the specified criterion is based on a maximum number of users that belong to the first class of users.
However, Molinari teaches:
restricting transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied ([0101]).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Wright in view of Molinari to include techniques of restricting transfers of the first cryptographic token from the second cryptographic address based on a specified criterion of the smart contract wherein transfers are cryptographically prevented from executing while the specified criterion is unsatisfied. Doing so would result in an improved invention because this would leverage the advantages of using smart contracts (e.g. automation, cost efficiency, etc.).
And Yang teaches:
the specified criterion of a smart contract is based on a maximum number of users that belong to the first class of users. (By disclosing, using smart contract to specify the maximum number of stakeholders ([0031] of Yang)).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the invention of Wright and Molinari, in view of Yang to include techniques of using smart contract to determine the maximum number of users that belong to the first class of user. Doing so would result in an improved invention because this would allow the terms of the smart contract to comply with the local rules and laws.
Claim(s) 2, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 20190303887), in view of Molinari (US 20170011460), further in view of Yang (CN 108764852 A), and Sukhija (US 20200097968).
Regarding claim(s) 2 and 16, Wright discloses:
directing a second transfer, via a distributed consensus network, of the first cryptographic token of the number of cryptographic tokens from the second cryptographic address associated with the second user to a third cryptographic address associated with a third user (Fig. 12 item 390, [0092]).
Wright does not expressly disclose, but Sukhija teaches:
verifying, according to the specified criterion, that the third user associated with the third cryptographic address is included on an allowlist associated with the smart contract ([0027]).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Wright, Molinari, and Yang, in view of Sukhija to include techniques of verifying, according to the specified criterion, that the third user associated with the third cryptographic address is included on an allowlist associated with the smart contract. Doing so would result in an improved invention because this would prevent fraudulent transactions.
Claim(s) 3, 4, 10, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 20190303887), in view of Molinari (US 20170011460), further in view of Yang (CN 108764852 A), and Nuzzi (US 20190205844).
Regarding claim(s) 3 and 10, Wright does not expressly disclose, but Nuzzi teaches:
wherein the input is first input, the method further comprising: in response to a second input by the first user, directing a reversal of the first transfer. (By disclosing, a refund ([0017], [0041]-[0042])).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Wright, Molinari, and Yang, in view of Nuzzi to include techniques of wherein the input is first input, the method further comprising: in response to a second input by the first user, directing a reversal of the first transfer. Doing so would result in an improved invention because this would allow the system to conduct a dispute resolution.
Regarding claim(s) 4 and 17, Wright does not expressly disclose, but Nuzzi teaches:
verifying, in accordance with the specified criterion, that a vesting date associated with the smart contract has occurred ([0037]-[0038]); and
in response to said verifying, directing a second transfer, via a distributed consensus network, of the first cryptographic token of the number of cryptographic tokens from the second cryptographic address associated with the second user to a third cryptographic address associated with a third user ([0041]).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Wright, Molinari, and Yang, in view of Nuzzi to include techniques of verifying, in accordance with the specified criterion, that a vesting date associated with the smart contract has occurred; and in response to said verifying, directing a second transfer, via a distributed consensus network, of the first cryptographic token of the number of cryptographic tokens from the second cryptographic address associated with the second user to a third cryptographic address associated with a third user. Doing so would result in an improved invention because this would expand the functionality of the system.
Claim(s) 5, 6, 11, 14, 18, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 20190303887), in view of Molinari (US 20170011460), further in view of Yang (CN 108764852 A), and Cheng (US 20200104958).
Regarding claim(s) 5, 14, and 18, Wright does not expressly disclose, but Cheng teaches:
receiving, from an authorized user, cryptographically signed instructions to modify the specified criterion (By disclosing, “A registered user initiates a smart contract either by manually authoring the smart contract by an on-line editor, or by accessing a smart contract template from the data repository, the new contract, submitted to blockchain, being associated with a Mithra token defining all contract terms, and wherein, with the issuing token in place, the contract issuer engages one or more counterparties to join the smart contract, a counterparty, by active engagement creating a counter token defining rights and obligations under the contract for the counterparty, and, through the communication service the initiator and the counterparties negotiate contract terms to agreement, and the contract is signed and published to either a public store or a private store” ([0015], [0004]);
in response to receiving a cryptographically signed authorization by the authorized user, implementing the cryptographically signed instructions to modify the specified criterion of the smart contract that impose new conditions on transfers of cryptographic tokens that are not in possession of the first user, the new conditions associated with the receiving user of the cryptographic token, wherein authorization from any other user is not required to implement the cryptographically signed instructions. (By disclosing, “Each participant carries permissions and rights at various levels to enable certain operations such as contract edit, review, sign, attach document or transfer token…. Permissions for all to the created object (Everyone) are configured when an object is created (all false) and changed by the user having the right to do so. They can be adjusted by user actions with this object.” ([0132]-[0136])).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Wright, Molinari, and Yang, in view of Cheng to include techniques of receiving, from an authorized user, cryptographically signed instructions to modify the specified criterion; and in response to receiving a cryptographically signed authorization by the authorized user, implementing the cryptographically signed instructions to modify the specified criterion of the smart contract that impose new conditions on transfers of cryptographic tokens that are not in possession of the first user, the new conditions associated with the receiving user of the cryptographic token, wherein authorization from any other user is not required to implement the cryptographically signed instructions. Doing so would result in an improved invention because this would allow the users to edit the smart contract when necessary.
Regarding claim(s) 6, 19, Wright discloses:
wherein the authorized user is any of: the first user; or an administrative user that does not own any of the number of cryptographic tokens (First user (A), Second user (B), [0037] of Wright).
Regarding claim(s) 11, Wright does not expressly disclose, but Cheng teaches:
transmit cryptographically signed instructions causing a modification of the specified criterion. (By disclosing, “A registered user initiates a smart contract either by manually authoring the smart contract by an on-line editor, or by accessing a smart contract template from the data repository, the new contract, submitted to blockchain, being associated with a Mithra token defining all contract terms, and wherein, with the issuing token in place, the contract issuer engages one or more counterparties to join the smart contract, a counterparty, by active engagement creating a counter token defining rights and obligations under the contract for the counterparty, and, through the communication service the initiator and the counterparties negotiate contract terms to agreement, and the contract is signed and published to either a public store or a private store” ([0015], [0004], [0132]-[0136])).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Wright, Molinari, and Yang, in view of Cheng to include techniques of transmit cryptographically signed instructions causing a modification of the specified criterion. Doing so would result in an improved invention because this would allow the users to edit the smart contract when necessary.
Claim(s) 7, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US 20190303887), in view of Molinari (US 20170011460), further in view of Isaacson (US 20190306137).
Regarding claim(s) 7 and 12, Wright does not expressly disclose, but Isaacson teaches:
in response to second input by the first user, prompting owners of cryptographic tokens to make a choice on a voting platform ([0024]).
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to modify the combination of Wright, Molinari, and Yang, in view of Isaacson to include techniques of in response to second input by the first user, prompting owners of cryptographic tokens to make a choice on a voting platform. Doing so would result in an improved invention because this would provide users an option to select his intended account.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11012242 to Griffin for disclosing updating a smart contract chain code.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DUAN ZHANG whose telephone number is (571)272-4642. The examiner can normally be reached Mon - Fri 10 AM-5 PM.
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/DUAN ZHANG/Primary Examiner, Art Unit 3699