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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1, 4-6, 8, 17, 18 and 20, drawn to a method and system comprising one or more computers, classified in class 709, subclass 238.
II. Claims 9, 10, 12-14 and 16, drawn to a computer implemented system comprising a computing device, classified in class 705, subclass 75.
The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as multiple devices (i.e. a receiving device, a sending device and one or more intermediary devices) cooperating to implement a proposed transfer. Subcombination II has separate utility such as a computing device (i.e. a receiving device) individually participating in a transfer. See MPEP § 806.05(d).
The Examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1, 4-6, 8, 17, 18 and 20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Acknowledgements
This Office Action addresses the response filed on 11/25/2025.
Claims 1, 9, 12 and 17 were amended.
Claims 2, 3, 7, 11, 15 and 19 were canceled.
Claims 1, 4-6, 8, 17, 18 and 20 were withdrawn.
Claims 9, 10, 12-14 and 16 are pending.
Claims 9, 10, 12-14 and 16 were examined.
Claim Objections
Claims 9, 13 and 14 are objected to because of the following informalities: Claims 9, 13 and 14 recite both "one-way function" and "one way function". Examiner interprets the language as the same function. Examiner recommends adopting precise nomenclature throughout the claims by adopting one of the two recited terms. Appropriate correction is required.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 10, 12-14 and 16 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 9, 10, 12-14 and 16 are directed to a system. Therefore, these claims fall within the four statutory categories of invention.
Specifically, the language of the claims that recite an abstract idea are marked in bold below:
a. “a computing device that receives a message comprising a proposed transfer using a blockchain, wherein the proposed transfer comprises a source transfer of a quantity of a resource type from a first resource pool to a second resource pool, the computing device being any one of a sending device, a receiving device, and one or more intermediary devices, each of which being involved in the transfer”;b. “the computing device receives a secret value and generates a derived value by applying a one-way function to the secret value”;c. “the computing device placing a hold on the resource type in the first resource pool, wherein the receiving device sends at least one message associated with the performance of the destination transfer comprising the secret value, each of the sending device and the at least one of one or more intermediary devices applying the one way function to the secret value to generate a second derived value; each of the sending device and the at least one of one or more intermediary devices determining that the second derived value is equivalent to the derived value indicating that the secret value fulfills the condition of the hold of the quantity of the first resource type in the first resource pool”, and
d. “the computing device sends an instruction to execute the source transfer of the quantity of the resource type from the first resource pool to the second resource pool on the blockchain.”
Therefore, the portions highlighted in bold above recite input based resource reallocation, which is an abstract idea grouped within the certain methods of organizing human activity and mathematical concepts grouping of abstract ideas in prong one of step 2A of the Alice/Mayo two-part test (see MPEP 2106.04). The claims are grouped within certain methods of organizing human activity because the steps recited describe the fundamental economic practice of placing holds and reallocating resources. In addition, the claims are also grouped within mathematical concepts because the steps recited describe determining that two values are "equivalent", which represent a mathematical relationship. In situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP 2106.04 and 2106.05(II). Thus, the language identified in the certain methods of organizing human activity and mathematical concepts groupings were considered as a single abstract idea. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. Specifically, with respect to using computing device (i.e. a receiving device) to perform the recited steps/functions, this additional element perform the steps or functions such as: “receives… message…”, “receives… value..”, “placing a hold”, “sends… instruction…”. This additional element is recited at a high-level of generality such that it represents no more than mere instructions to apply the exception using a generic computer component, which only serves to use computers as a tool to perform the abstract idea. Therefore, this element 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 element(s) of a blockchain amount to generally linking the use of the judicial exception to a particular technological environment or field of use. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.
With respect to step 2B of the analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional computer elements, such as computing device (i.e. a receiving device), a blockchain. The computing device (i.e. a receiving device) performs the steps/functions of “receives… message…”, “receives… value..”, “placing a hold”, “sends… instruction…”, , and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the abstract idea of input based resource reallocation. The additional element(s) of a blockchain amount to generally linking the use of the judicial exception to a particular technological environment or field of use.. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of input based resource reallocation. Therefore, the claims are not eligible.Dependent claims 10, 12-14 and 16 further recite the following additional language, in which elements which merely further define the identified abstract idea are marked in bold below:
e) wherein the derived value, the secret value, and the one way function are received from a system of a specified party. f) wherein the one way function is a hash function, and wherein the derived value and the second derived value are hashes. g) wherein one or more of the derived value, the one way function, and the secret value are received in one or more messages from a system of a specified party. h) wherein one or more of the derived value, the one way function, and the secret value are received from a location to which they were published. i) wherein the resource type comprises a currency, cryptocurrency, financial instrument, commodity, physical good, specific item or items, or computational resource.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. computing device (i.e. a receiving device)), the assessment of these elements under step 2A and step 2B for the dependent claims is inherited from the analysis of the independent claims and omitted for brevity, unless noted by Examiner below.
With respect to the eligibility analysis of claim 10, Further, the claim recites item e) above, which represents the additional elements/functions of description of system from which data is received (system of a specified party). This language further elaborates the abstract idea of input based resource reallocation identified in the analysis of independent claim 9. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application generally linking the use of the judicial exception to a particular technological environment. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 12, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the one-way function "is" and what the values "are" (i.e. hashes). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of input based resource reallocation identified in the analysis of independent claim 9. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 13, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what is the manner in which the values and function are "received" (i.e. in a single message or in multiple messages) . Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of input based resource reallocation identified in the analysis of independent claim 9. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claim 14, Further, the claim recites item h) above, which represents the additional elements/functions of description of the location from which the function and values are received. This language further elaborates the abstract idea of input based resource reallocation identified in the analysis of independent claim 9. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application generally linking the use of the judicial exception to a particular technological environment. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 16, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the resource type "comprises" . Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of input based resource reallocation identified in the analysis of independent claim 9. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
Therefore, while the additional language e) - i) of dependent claims 10, 12-14 and 16 slightly modify the analysis provided with respect to independent claim 9, these additional elements/functions are insufficient to render the dependent claims eligible, as detailed above. Therefore, these dependent claims are also ineligible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9, 10, 12-14 and 16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites “the computing device being any one of a sending device, a receiving device, and one or more intermediary devices”. This language is unclear as it is unclear the manner in which a (single) computing device being (multiple - i.e. "one or more") intermediary devices.. For purposes of Examination, the "computing device" is interpreted as "the receiving device". Dependent claims 10, 12-14 and 16 are also rejected since they depend on claim 9.
Claim 9 recites “the at least one of one or more intermediary devices”. This language is unclear as the claim was amended to introduce "one or more intermediary devices". Therefore, it is unclear which specific intermediary device the claims attempt to describe.. Dependent claims 10, 12-14 and 16 are also rejected since they depend on claim 9.
Claim 9 recites “the transfer”. There is insufficient antecedent basis for this language in the claim since it is unclear which “a proposed transfer"; "a source transfer” the claim is referring to (Claim 9 introduces “a proposed transfer"; "a source transfer” more than once, in lines 3 and 4, respectively). See MPEP 2173.05(e): “… if two different levers are recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended”. Examiner notes one of ordinary skill in the art would not be able to reasonable determine if the term "the transfer" refers to the proposed transfer, the source transfer or a combination of these transfers (i.e. an overarching transfer). Examiner suggests amending the claim to clearly identify which element represents "the transfer". Dependent claims 10, 12-14 and 16 are also rejected since they depend on claim 9.
Claim 9 is indefinite because it is unclear to one of ordinary skill in the art whether Applicants are claiming the subcombination of a “a computing device” or the combination of a “a computing device”, “receiving device”, “a sending device” and “one or more intermediary devices”. If it is Applicants’ intent to claim only the subcombination, the body of the claims must be amended to remove any positive recitation of the combination. If it is Applicants’ intent to claim the combination, the preamble of the claim must be amended to be consistent with the language in the body of the claim. Examiner notes there is a significant claim scope issue regarding the language "the computing device being any one of a sending device, a receiving device, and one or more intermediary devices" followed by the recitation of functions performed by the "computing device", the "receiving device", "each of the sending device and the at least one or more intermediary devices". Dependent claims 10, 12-14 and 16 are also rejected since they depend on claims 9, respectively.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9, 10, 12-14 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Arnold et al. (US 2016/0260169 A1), hereinafter Arnold, in view of Yago (US 2015/0206106 A1).
With respect to claim 9, Arnold teaches a computer-implemented system comprising: a computing device (Systems and methods for updating a distributed ledger based on partial validations of transactions) comprising:
a computing device that receives a message comprising a proposed transfer using a blockchain, wherein the proposed transfer comprises a source transfer of a quantity of a resource type from a first resource pool to a second resource pool, the computing device being any one of a sending device, a receiving device, and one or more intermediary devices, each of which being involved in the transfer (see Fig. 5, step 502, paragraph [0058] "collect from the clients and may store information about the requested transaction, such as the assets involved in the transactions, the ledger balances to be transferred or exchanged, as well as any other pertinent information needed for processing the transaction."; FIg. 7, foreign exchange trade);
the computing device receives a secret value and generates a derived value by applying a one-way function to the secret value (see Fig. 6, signed data 652 and paragraph [0071]: "It includes the received signed data 652, which is composed of the original data 654 of the transaction, and the encrypted signature 656 generated in accordance with diagram 600." [0072]: "Signed data 652 received by the authenticating party is separated into two fragments. The first data fragment 654 corresponds to the original data describing the transaction solicited by the party seeking authentication"; Fig. 6, one way hash 658 is applied to data 654 of signed data 652, paragraph [0072]: "Once isolated, the transaction data 654 is hashed by the hash function 658, which is identical to hash function 604, used in diagram 600 to generate the encrypted signature 610. This produces a hash 662.");
wherein the receiving device sends at least one message associated with the performance of the destination transfer comprising the secret value, each of the sending device and the at least one of one or more intermediary devices applying the one way function to the secret value to generate a second derived value; each of the sending device and the at least one of one or more intermediary devices determining that the second derived value is equivalent to the derived value indicating that the secret value fulfills the condition of the hold of the quantity of the first resource type in the first resource pool (see Fig. 5, steps 508 and 510, request signatures of additional parties, paragraph [0060]: "Accordingly, ledger administration server 310 may identify the type of transaction requested and send a request for any missing signatures"; Fig. 6, one way hash 658 is applied to data 654 of signed data 652, paragraph [0072]: "Once isolated, the transaction data 654 is hashed by the hash function 658, which is identical to hash function 604, used in diagram 600 to generate the encrypted signature 610. This produces a hash 662."; Fig. 6, paragraph [0072]: "The decryption of the signature using the public key produces a second hash, 664, which is compared with hash 662. The authentication is successful if 662 and 664 are identical. If this is not the case, the authentication process is marked as invalid and the requested transaction is rejected"); and
the computing device sends an instruction to execute the source transfer of the quantity of the resource type from the first resource pool to the second resource pool on the blockchain (see Fig. 7, steps 720-722, paragraphs [0079]-[0081]: "At step 722, after updating the local ledger of asset validation server 707 (which for this example is in USD), asset validation server 704 signs and sends a validation approval message to ledger administration server 702. The approval message may include an acknowledgment flag that marks the asset validation process as successful.").
Arnold does not explicitly disclose a system comprising: the computing device placing a hold on the resource type in the first resource pool.
However, Yago discloses a system (Method for creating, issuing and redeeming payment assured contracts based on mathematically and objectively verifiable criteria) comprising:
the computing device placing a hold on the resource type in the first resource pool (see Fig. 5, steps 6-7, hold and paragraph [0066]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the holding procedures as disclosed by Yago in the system of Arnold, the motivation being to provide for the transaction to be (near) instant and secure while simultaneously having the settlement to be delayed (see Yago, paragraph [0005]).
With respect to claim 10, the combination of Arnold and Yago teaches all the subject matter of the system as described above with respect to claim 9. Furthermore, Arnold disclose a system wherein the derived value, the secret value, and the one way function are received from a system of a specified party (see paragraph [0075]: "The data block 602 in this case, may contain as a header the signed data block 652 which may be sent by the API running in the device that the client used to request the transaction."). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 12, the combination of Arnold and Yago teaches all the subject matter of the system as described above with respect to claim 9. Furthermore, Arnold disclose a system wherein the one way function is a hash function, and wherein the derived value and the second derived value are hashes (see Fig. 6, hash function 658, hashes 662 and 664, paragraph [9972]). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims. Regarding the BRI of the claim, Examiner notes that claim 12 recites “wherein the one way function is a hash function, and wherein the derived value and the second derived value are hashes”, language directed to non-functional descriptive material. See MPEP 2111.05. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 13, the combination of Arnold and Yago teaches all the subject matter of the system as described above with respect to claim 9. Furthermore, Arnold disclose a system wherein one or more of the derived value, the one way function, and the secret value are received in one or more messages from a system of a specified party (see signed data 652 comprising at least portions 654 and 656, paragraph [0072]). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 14, the combination of Arnold and Yago teaches all the subject matter of the system as described above with respect to claim 9. Furthermore, Arnold disclose a system wherein one or more of the derived value, the one way function, and the secret value are received from a location to which they were published (see values and functions are received from the party that generated signed data, shown in Fig. 6, 612 and paragraphs [0069]-[0070].). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claim 16, the combination of Arnold and Yago teaches all the subject matter of the system as described above with respect to claim 9. Furthermore, Arnold disclose a system wherein the resource type comprises a currency, cryptocurrency, financial instrument, commodity, physical good, specific item or items, or computational resource (see paragraph [0037]: "For example, each of validation servers 130 and 132 may be associated with an asset (e.g., a fiat currency such as U.S. dollars or Euros, a crypto-currency such as bitcoins or ripples, or any other suitable type of asset such as bonds)"). The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Response to Arguments/Amendments
Claim rejections - 35 USC § 101
Applicant’s amendments and arguments (see remarks, page 8, filed on 11/25/2025), with respect to the rejection of claims 9, 10, 12-14 and 16 under 35 USC § 101 as being directed to an abstract idea have been fully considered but are not persuasive. Examiner respectfully disagrees with Applicant’s broad statements regarding eligibility. Examiner is still in the position that the amended claims are ineligible under 35 U.S.C. §101. The new and amended claims do not offer significantly more than the abstract idea itself, therefore the claims are still rejected under 35 USC § 101 and a detailed analysis is provided above.
Claim rejections - 35 USC § 103
Applicant’s amendments and arguments (see remarks, page 9, filed on 11/25/2025), with respect to the rejection of claims 9, 10, 12-14 and 16 under 35 USC § 103 have been fully considered, but are moot because the arguments do not apply to the references being used in the current rejection of the amended claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698