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 action is in response to the application filed November 20, 2024. Claims 1-20 are pending and examined.
Specification
Applicant is required to update the status (pending, allowed, etc.) of all parent priority applications in the first line of the specification. The status of all citations of US filed applications in the specification should also be updated where appropriate.
Information Disclosure Statement
An initialed and dated copy of Applicant’s IDS form 1449 filed November 20, 2024, is attached to the instant Office action.
Claim Rejections - 35 USC § 101 Utility
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 1-15 and 17 are rejected under 35 U.S.C. 101. Based upon consideration of all of the relevant factors with respect to the claim as a whole, these claims are held to claim an abstract idea, and is/are therefore rejected as ineligible subject matter under 35 U.S.C. 101. In light of the recent Supreme Court decision in Bilski v. Kappos, 561 U.S. ___ (2010), the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. 101. Factors weighing toward eligibility include:
Recitation of a machine or transformation (either express or inherent).
The claim is directed toward applying a law of nature.
The claim is more than a mere statement of concept.
Factors weighing against eligibility include:
No recitation of a machine or transformation (either express or inherent).
Insufficient recitation of a machine or transformation.
The claim is not directed to an application of a law of nature.
The claim is a mere statement of a general concept.
An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps. Thus, to qualify as a § 101 statutory process, the claim could positively recite the other statutory class (the thing or product) to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example by identifying the material that is being changed to a different state. Furthermore, the use of a particular machine or transformation of a particular article must involve more than insignificant extra-solution activity.
In light of the factors in the Supreme Court decision, Applicant’s method steps do not meet the requirements of 35 U.S.C. 101. Claims 1 and 9 don’t explicitly include structural elements to execute the method. The closest they come are “mining nodes in a blockchain network” which could be argued as software. (Examiner’s Note: The processor and memory from claim 16 could be added to claims 1 and 9 to remove this rejection.) Claim 17 has a ”computer-readable medium” which arguably includes a signal which is intangible and therefore not one of four classes of invention. (Examiner’s Note: changing it to a “tangible computer-readable medium” would preclude it being a signal making it patent eligible.) None of the dependent claims of the rejected independent claims has a structural element or other grounds to change the analysis so they are also rejected but would also be patentable subject matter if the independent claims from which they depend were made
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 of this title, 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 9, 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 111,131,218 A) in view Fletch (U.S. 11,799,637 B2).
As per claim 9 Hu teaches:
A computer-implemented method of freezing digital assets at mining nodes in a blockchain network, the method comprising:
generating a freeze request message (is the “proposal information” in Hu cite below) at a freeze administration service, the freeze request message including one or more digital asset identifiers; (see at least Hu page 5 Example one “S1: receiving the proposal information generated by some network nodes in the blockchain of the network node, and the generating the proposal information to the first node, and the block chain in addition to other network nodes outside of the first node as the second node; authenticating the first node and generating a verification result, the gray list the proposal information written in the block chain of according to the verification result, wherein the gray list is a historical database storing proposal information, the proposal information is user entered suspect information unfair suspicion to the network node through the user terminal;”)
transmitting the freeze request message to a plurality of the mining nodes; (the “second nodes” in the above Hu cite.)
receiving and validating acceptance messages (is the “voting information” in the below Hu cite.) in reply to the freeze request message from a set of the plurality of the mining nodes, each acceptance message being associated with one mining node in the set of the plurality of mining nodes; (see at least Hu page 5 Example One “S2: receiving the second node whether the voting information of the proposal information generated into blacklist to vote and identifies the second node and the voting information of the second node successfully verified as normal voting information”)
determining that the set of the plurality of the mining nodes represent more than a consensus threshold quantity (is “all the second nodes” in the below Hu cite.) of hash power in the blockchain network; (see at least Hu page 5 Example One “S2: receiving the second node whether the voting information of the proposal information generated into blacklist to vote and identifies the second node and the voting information of the second node successfully verified as normal voting information” and Page 7 “S301, when all of the second node are finished verification and voting information of all second node generates is set to normal voting information”) and
in response, generating and sending a freeze order (“blacklist” in the below Hu cite) to the plurality of mining nodes to cause rejection of new blocks containing transactions that use any of the one or more digital asset identifiers. (see at least Hu Page 5 Example One “S3: The normal voting information and generating the normal weight of the voting information in the second node, calculating the normal voting information in said grey list to obtain the voting result, if the voting result is, then blacklist the proposal information and the voting result is written into the block chain, if the voting result is no, then the proposal information and the voting result retained in the grey list, wherein the black list stored in the block of the block chain for storing proposal information;”)
While Hu required votes from all nodes to be received Fletcher teaches an action being enforced when a requisite threshold number of shares reach a consensus. (see at least Fletcher column 16 lines 19-30 “Since a threshold signature scheme is used with the congress public key, an individual node acting alone cannot transfer another congress member's deposit of digital assets away from the congress pool (e.g., to an unspendable address). Rather, the digital assets can only be confiscated by transfer when a threshold number of private key shares are 25 used by their respective members to generate a valid signature to transfer the digital asset( s) to another address or when a group of members having at least a threshold number of private key shares reach consensus to suspend a member (at operation 503), which causes any withdrawal request from the suspended member to be automatically ignored.”) Therefore it would have obvious to a person of ordinary skill in the art of block chain to only require a consensus of a threshold quantity of voters since it is solving a known problem in a known way.
As per claim 10 while Hu is not explicit about the digital asset identifiers including a transaction outpoint identifier Fletcher teaches an intended recipient being a part of the transaction. (see Fletcher column 31 lines 51-column 32 line 23 “When a consensus has been reached on the main blockchain that the event has occurred, a ghost chain may be deployed to generate a decryption key that may be used to decrypt the encrypted message. In general, for on-chain events, consensus is reached that the event has occurred, whereas for off-chain events, consensus may be reached that a threshold number of attestations have been observed. Accordingly, a ghost chain may be deployed. The ghost chain may be in accordance with those described elsewhere in this disclosure, such as those discussed in connection with FIGS. 9 to 13. The ghost chain 904 may be instantiated with a genesis block that is the final block from a previous instantiation of the ghost chain. A number of blocks are added to the ghost chain by miners to derive the decryption key.
The blocks added to the ghost chain may be used to construct a decryption key that is usable to decrypt the encrypted message. Upon inclusion of the necessary quantities into the ghost chain blocks ( e.g., when the decryption key can be generated), a final transaction may be constructed and signed whose effect will be to distribute funds on the main blockchain 902-for example, nodes that participate in mining of the ghost chain may be paid to construct the decryption key. In some cases, the decryption key may be encrypted using a public key associated with an intended recipient and submitted to the ghost chain 904 in an encrypted format. The intended recipient may use the corresponding private key to cryptographically derive the decryption key. In some cases, this information may be published to the main blockchain. After the final transaction is constructed and signed, the 15 ghost chain 904 terminates and the constructed transaction is mined into the main blockchain 902. Since the ghost chain 904 terminates, it is unlike a typical blockchain in that it has a terminal block. This terminal block, which is the last block in the ghost chain 904 occurs upon deriving the decryption key or completion of other operations that may be specified and the resulting transaction which distributes funds on the main blockchain 902, distributes funds to remunerate miners of the ghost chain, etc., is validly signed.”) Therefore it would have been obvious to a person of ordinary skill in the art blockchain transactions since it was solving a known problem in a known way with an expectation of success. In addition having a transaction recipient is part of what makes a transaction without something being exchanged to some recipient it is not a transaction.
As per claim 18 Hu teaches:
A computing device freezing digital assets at mining nodes in a blockchain network, the computing device including:
one or more processors; (see at least Hu page 4 lines 30-32 “The present invention also provides a computer system including a plurality of computer devices, each computer device includes a memory and a computer program stored on the memory and executable on the processor, wherein the processors of the plurality of computer devices”)
memory;
computer-executable instructions stored in the memory that, when executed by the one or more processors, cause the processors to:
generate a freeze request message (is the “proposal information” in Hu cite below) at a freeze administration service, the freeze request message including one or more digital asset identifiers; (see at least Hu page 5 Example one “S1: receiving the proposal information generated by some network nodes in the blockchain of the network node, and the generating the proposal information to the first node, and the block chain in addition to other network nodes outside of the first node as the second node; authenticating the first node and generating a verification result, the gray list the proposal information written in the block chain of according to the verification result, wherein the gray list is a historical database storing proposal information, the proposal information is user entered suspect information unfair suspicion to the network node through the user terminal;”)
transmit the freeze request message to a plurality of the mining nodes; (the “second nodes” in the above Hu cite.)
receive and validate acceptance messages (is the “voting information” in the below Hu cite.) in reply to the freeze request message from a set of the plurality of the mining nodes, each acceptance message being associated with one mining node in the set of the plurality of mining nodes; (see at least Hu page 5 Example One “S2: receiving the second node whether the voting information of the proposal information generated into blacklist to vote and identifies the second node and the voting information of the second node successfully verified as normal voting information”)
determine that the set of the plurality of the mining nodes represent more than a consensus threshold quantity (is “all the second nodes” in the below Hu cite.) of hash power in the blockchain network; (see at least Hu page 5 Example One “S2: receiving the second node whether the voting information of the proposal information generated into blacklist to vote and identifies the second node and the voting information of the second node successfully verified as normal voting information” and Page 7 “S301, when all of the second node are finished verification and voting information of all second node generates is set to normal voting information”) and
in response, generate and send a freeze order (“blacklist” in the below Hu cite) to the plurality of mining nodes to cause rejection of new blocks containing transactions that use any of the one or more digital asset identifiers. (see at least Hu Page 5 Example One “S3: The normal voting information and generating the normal weight of the voting information in the second node, calculating the normal voting information in said grey list to obtain the voting result, if the voting result is, then blacklist the proposal information and the voting result is written into the block chain, if the voting result is no, then the proposal information and the voting result retained in the grey list, wherein the black list stored in the block of the block chain for storing proposal information;”)
While Hu required votes from all nodes to be received Fletcher teaches an action being enforced when a requisite threshold number of shares reach a consensus. (see at least Fletcher column 16 lines 19-30 “Since a threshold signature scheme is used with the congress public key, an individual node acting alone cannot transfer another congress member's deposit of digital assets away from the congress pool (e.g., to an unspendable address). Rather, the digital assets can only be confiscated by transfer when a threshold number of private key shares are 25 used by their respective members to generate a valid signature to transfer the digital asset( s) to another address or when a group of members having at least a threshold number of private key shares reach consensus to suspend a member (at operation 503), which causes any withdrawal request from the suspended member to be automatically ignored.”) Therefore it would have obvious to a person of ordinary skill in the art of block chain to only require a consensus of a threshold quantity of voters since it is solving a known problem in a known way.
Examiner’s Note: The rest of the claims include directly or depend from a claim that incudes “wherein new transactions received over the blockchain network that include identifiers on the pending blacklist are rejected by the mining node but new blocks received over the blockchain network that include identifiers on the pending blacklist are acceptable” and validating a freeze order. This does not appear to be standard validating any proposal information on the blacklist would be normal. For this reason those claims do not have an art rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure:
Aspler-Yaskil et al. (U.S. Patent 12,476,819 B2)
Chan (U.S. Patent 12,177,364 B2)
Cheng (USPG 2021/0176,058 A1)
Any inquiry concerning this communication from the examiner should be directed to Scott S. Trotter, whose telephone number is 571-272-7366. The examiner can normally be reached on 8:30 AM – 5:00 PM, M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart, can be reached on 571-272-3955.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
The fax phone number for the organization where this application or proceeding is assigned are as follows:
(571) 273-8300 (Official Communications; including After Final Communications labeled “BOX AF”)
(571) 273-7366 (Draft Communications)
/SCOTT S TROTTER/Primary Examiner, Art Unit 3696