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
Status of Claims
Claims 1-6 are pending.
Response to Arguments
Applicant’s arguments regarding the 101 rejection of the claims have been considered but are not persuasive.
Applicant argues:
Applicant respectfully submit that under Step 2A, Prong Two, the claims integrate any alleged judicial exception into a practical application. According to the MPEP, a claim integrates a judicial exception into a practical application if an element in the claim "appl[ies] or us[es] 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 is more than a drafting effort designed to monopolize the exception." MPEP 2106.04(d). The MPEP continues, stating that an element in a claim is meaningful if it "sufficiently limit[s] the use" of the abstract idea. MPEP 2106.04(e). Once such "meaningful limitation" is found when the limitation "can employ the information provided by the judicial exception," as discussed in Example 46 provided with the October 2019 PEG (emphasis added).
Here, the additional elements of "minting, by the fund administrator or other service provider, a total fund token balance to a blockchain address for the fund manager on the digital assets blockchain," "enriching, by a fund distribution/servicing application, the investor level capital call details to include fields/details that are specific to a distributor," "moving, by the distributor, funds for each investor to on-chain investor accounts," "minting, by the distributor or other service provider, blockchain-based cash tokens to blockchain addresses on the digital assets blockchain for each of the investors," "transferring, by a digital assets blockchain, the blockchain-based cash tokens from the blockchain address for each of the investors to the blockchain address for the fund manager," "transferring, by the digital assets blockchain, the total fund token balance from the blockchain address for the fund manager to the blockchain address for each of the investors" and "redeeming, by the fund administrator or other service provider, the blockchain-based cash tokens into cash, wherein the blockchain- based cash tokens are burned as a result of the redemption" all employ the information provided by the alleged judicial exception to eliminate or reduce a number of reconciliations needed, see Appl'n, 0022, and also provide a mechanism by which fund administrators can receive capital for capital calls using blockchain-based cash tokens. The blockchain-based cash tokens are burned as a result of the capital call, thereby preventing double use of the cash represented by the cash tokens. This improves security and prevents double-use.
In addition, on August 4, 2025, the Deputy Commissioner for Patents issued a memorandum entitled "Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101." Notably, the reminders included the following: Examiners are reminded that if it is a "close call" as to whether a claim is eligible, they should only make a rejection when it is more likely than not (i.e., more than 50%) that the claim is ineligible under 35 U.S.C. 101.20 A rejection of a claim should not be made simply
because an examiner is uncertain as to the claim's eligibility. In order to make a rejection of a claim under any of the statutory bases (i.e., 35 U.S.C. 101, 102, 103, 112), unpatentability must be established by a preponderance of the evidence. Memorandum at 5 (emphasis added).
Applicant respectfully submits that, when the claims are interpreted properly, this is not a close call, and the claims are directed to statutory subject matter.
The Office asserts that the claims recite a business transaction using established mechanisms and not a technical improvement as asserted. The Office disagrees with the applicant’s assertion that transferring and burning tokens, etc., “employs information”. Unlike example 46, which calculates a specific technical threshold to control physical or technical hardware, the present claim uses financial data (call info) to execute a financial transaction including minting, moving and burning cash tokens.
The blockchain address, cash token, fund token are merely proxies for traditional bank accounts, cash and fund shares. The financial transaction is merely performed in a a particular technological environment.
Regarding the prevention of double use, the Office asserts that the blockchain itself prevents double use therefore the claimed limitations add no further technological advantage to this solution.
The Office asserts that the claims do not represent a close call as they merely automate the implementation of a financial transaction in a particular technological environment.
The 112 rejections are withdrawn in view of the claim amendments.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
1. A method, comprising:
receiving, by a fund administrator, capital needs from a fund manager;
accessing, by the fund administrator, an investor register on a digital assets blockchain and retrieving, for each investor, an amount committed, an amount called, an amount unfunded, and an amount distributed;
establishing, by the fund administrator, investor level capital call details for each investor based on the amount committed, the amount called, the amount unfunded, and the amounts distributed;
minting, by the fund administrator or other service provider, a total fund token balance to a blockchain address for the fund manager on the digital assets blockchain;
enriching, by a fund distribution/servicing application, the investor level capital call details to include fields/details that are specific to a distributor;
sharing, by the fund distribution/servicing application, the enriched investor level capital call details with the distributor;
moving, by the distributor, funds for each investor to on-chain investor accounts;
minting, by the distributor or other service provider, blockchain-based cash tokens to blockchain addresses on the digital assets blockchain for each of the investors;
transferring, by a digital assets blockchain, the blockchain-based cash tokens from the blockchain address for each of the investors to the blockchain address for the fund manager;
transferring, by the digital assets blockchain, the total fund token balance from the blockchain address for the fund manager to the blockchain address for each of the investors; and
redeeming, by the fund administrator or other service provider, the blockchain-based cash tokens into cash, wherein the blockchain-based cash tokens are burned as a result of the redemption.
The underlined portions of the claim represent certain methods of organizing human activity, fundamental economic principles, because the claims are directed toward capital calls and distribution of funds of an investment in a private equity fund concepts relating to the economy and commerce.
This judicial exception is not integrated into a practical application because the abstract idea is merely applied by generic computer elements; the blockchain and associated elements such as on-chain accounts, tokens, blockchain addresses, and a fund distribution/servicing application. These limitations merely describe a process of allocating funds to investors using blockchain based tokens. The minting of cash tokens for the fund manager and investors is similar to issuing shares. The shares can similarly be redeemed and bought back (burned). Therefore, the claim limitations simply add the words “Apply it”, or the like to the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the reasons noted above.
The dependent claims only narrow the abstract idea by further describing the sharing of capital call details, the capital call details themselves, fields and details specific to the investor and a notification of the capital call details.
As a whole and in combination, the claims merely comprise the abstract idea and the words “apply it”, or the like.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E RANKINS whose telephone number is (571)270-3465. The examiner can normally be reached on 9-530 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bennett Sigmond can be reached on 303-297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E RANKINS/Primary Examiner, Art Unit 3694
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