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 .
Acknowledgements
This Office Action is in response to the amendment received on 06/29/2026.
Claims 1, 6, and 11 were amended.
Claims 16-20 were newly introduced.
Claims 1-20 are pending.
Claims 1-20 were examined.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
According to MPEP 2106 II, It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. Further, MPEP 2103 I C establishes that the subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. Regarding the independent claims, claims 1, 6 and 11 recite “wherein the receipt comprises a cryptographically signed message with pre-agreed contents that do not indicate the state of a transfer, and wherein the pre-agreed contents are pre-agreed upon by the first computing device and the system of the specified party”, language directed to non-functional descriptive material. See MPEP 2111.05. In addition, claim 1 is a method claim and recites “wherein the system processes… and prevents… ...” language directed to not positively recited method steps.
With respect to the Eligibility Step 1 of the Alice/Mayo two-part test of the subject matter eligibility analysis (see MPEP 2106), in the instant case, claims 1-5, and 16-18 are directed to a method, claims 6-10 are directed to a system, and claims 11-15 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. “receiving an instruction at a first computing device to perform a transfer of a first quantity of a first resource type from a first resource pool to a second resource pool, wherein the first resource pool comprises a first register and the second resource pool comprises a second register”;b. “placing, by the first computing device, a hold on a second quantity of the first resource type in the first resource pool to create a held second quantity of the first resource type, wherein a condition of the hold is a receiving of a receipt from a system of a specified party, wherein the pre-agreed contents are limited so as to exclude information representative of progress, completion, failure, or status of the transfer”;c. “receiving, at the first computing device from a second computing device, a message that fulfills the condition of the hold, wherein the message that fulfills the condition of the hold is the receipt from the system of the specified party, wherein the receipt comprises a cryptographically signed message with pre-agreed contents that do not indicate the state of a transfer, and wherein the pre-agreed contents are pre-agreed upon by the first computing device and the system of the specified party”;d. “verifying, by the first computing device, the receipt from the system of the specified party using a cryptographic public key of the system of the specified party to determine that the receipt from the system of the specified party comprises a cryptographic signature created with a cryptographic private key of the system of the specified party / Claims 1 and 11 only: wherein the system processes the receipt independent of any transfer-state information and prevents intermediary computing devices from obtaining or inferring the state of the transfer based on the receipt”; e. “responsive to receiving the message from the second computing device that fulfills the condition on the hold and verifying the receipt from the system of the specified party successfully, releasing by the first computing device the hold on the held second quantity of the first resource type, decrementing by the first computing device the first register that is in the first resource pool and is associated with the first resource type by the first quantity and incrementing by the first computing device the second register that is in the second resource pool and is associated with the first resource type by the first quantity.”
Therefore, the portions highlighted in bold above recite distributing/reallocating resources, 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 escrowing, placing holds and distributing/reallocating resources. In addition, the claims are also grouped within mathematical concepts because the steps recited describe cryptographically verifying messages and distributing quantities between pools according to a formula, which represents a mathematical calculation. 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. In particular, the additional element(s) of the claims include: first, second computing devices, a storage, a processor, one or more computers and one or more storage devices, cryptographic signature verification. Specifically, with respect to using the first computing device, a storage, a processor, one or more computers and one or more storage devices to perform the recited steps/functions, these additional elements performs the steps or functions such as: “receiving… instruction…”, “placing… hold…”, “receiving… message…”, “verifying… receipt…”, “releasing the hold… decrementing… register… and incrementing… register…”. These additional elements are 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, these elements do not integrate the abstract idea into a practical application because they require no more than a computer performing functions that correspond to acts required to carry out the 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. The claims further recite the additional elements: second computing device, cryptographic signature verification. However, these elements merely serve to generally link the use of a 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.
With respect to step 2B of the analysis, the claim does 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, the first computing device, a storage, a processor, one or more computers and one or more storage devices perform the steps/functions of “receiving… instruction…”, “placing… hold…”, “receiving… message…”, “verifying… receipt…”, “releasing the hold… decrementing… register… and incrementing… register…”, 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 distributing/reallocating resources. With respect to the remaining additional element of a second computing device, and a cryptographic signature verification, these additional elements amount to more than generally linking the use of a 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 distributing/reallocating resources. Therefore, the claims are not eligible.
Dependent claims 2-5, 7-10 and 11-15 further recite the following additional language, in which elements which merely further define the identified abstract idea are marked in bold below:
f) wherein the hold placed by the processor is responsive to the receipt from the system of the specified party that… (claims 7 and 12) / wherein the specified party is either a receiving party in a transfer chain, an intermediate party delegated responsibility by the receiving party, a party that operates a resource tracking system and is delegated responsibility by the receiving party, or a third party delegated responsibility by the receiving party. g) further comprising verifying the receipt comprises applying a one-way function on the cryptographically signed message including the pre-agreed contents before releasing the hold on the second quantity of the first resource type. h) wherein the receipt is signed by a private cryptographic key of the specified party. i) further comprising, after placing the hold, sending a prepared transfer receipt indicating that the hold has been placed.
j) wherein the receipt is evaluated only to determine whether the pre-agreed contents are present and valid, and execution of the transfer is performed without determining or accessing any state of the transfer;
k) wherein intermediary computing devices receive the cryptographically signed message, and are unable, based on the pre-agreed contents, to determine whether the transfer has been initiated, is pending, or has been completed.
l) wherein the receipt does not include any explicit or implicit indication of transfer completion or progress, and the system performs the transfer solely in response to receipt of the cryptographically singed message without communicating transfer- state information between computing devices.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. first, second computing devices, a storage, a processor, one or more computers and one or more storage devices, cryptographic signature verification), 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 claims 2, 7 and 12, the claims recite item f) above, which do not introduce additional elements/functions. The additional language merely represents statements directed to non-functional descriptive material by describing what the hold “is” (claims 7 and 12) and what a party "is" (i.e. description of a party). Those statements are insufficient to significantly alter the eligibility analysis.
With respect to the eligibility analysis of claims 3, 8 and 13, the claims recite item g) above, which do not introduce additional elements/functions. The additional language merely represents statements directed to non-functional descriptive material by describing what the receipt comprises (i.e. pre-agreed contents). Those statements are insufficient to significantly alter the eligibility analysis.
With respect to the eligibility analysis of claims 4, 9 and 14, the claims recite item h) above, which do not introduce additional elements/functions. The additional language merely represents statements directed to non-functional descriptive material by describing what the receipt is/comprises (i.e. "is signed", comprises a signature). Those statements are insufficient to significantly alter the eligibility analysis.
Therefore, the additional language f)-h) of dependent claims 2-4, 7-9, and 12-14 do not alter the analysis provided with respect to independent claims 1, 6 and 11. In other words, the claims do not introduce additional elements that would alter the analysis with respect to Steps 2A or 2B above in any meaningful way. Therefore, these dependent claims are also ineligible.
With respect to the eligibility analysis of claims 5, 10 and 15, the claims recite item i) above, which represents the additional elements/functions of sending a receipt. This language further elaborates the abstract idea of distributing/reallocating resources identified in the analysis of independent claims 1, 6 and 11. 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. Examiner notes that sending a receipt is considered a part of the abstract idea of distributing/reallocating resources.
With respect to the eligibility analysis of claims 16, 19 and 20, and regarding the BRI of the claims, Examiner notes that claims 16, 19 and 20 recite “execution of the transfer is performed without determining or accessing any state of the transfer”, language directed to non-functional descriptive material. In addition, claims 16, 19 and 20 recite “wherein the receipt is evaluated only to determine whether the pre-agreed contents are present and valid” , statements of intended use or field use. See MPEP 2114 II. Lastly, claim 16 is a method claim and recites “the receipt is evaluated…...”; “execution of the transfer is performed…...”; language directed to not positively recited method steps. Claims 16, 19 and 20 recite item j) above, which further elaborates the abstract idea of distributing/reallocating resources identified in the analysis of independent claims 1, 6 and 11. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 6 and 11. 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 17, and regarding the BRI of the claim, Examiner notes that claim 17 is a method claim and recites “devices receive… and are unable... to determine...”; language directed to not positively recited method steps. Claim 17, the claim recites item k) above, which further elaborates the abstract idea of distributing/reallocating resources identified in the analysis of independent claim 1. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1. 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 18 and regarding the BRI of the claim, Examiner notes that claim 18 recites “wherein the receipt does not include any explicit or implicit indication of transfer completion or progress”, language directed to non-functional descriptive material. See MPEP 2111.05. Claim 18 is also a method claim and recites “the system performs the transfer...” language directed to not positively recited method steps. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the receipt is/comprises (i.e. "does not include"). Therefore, claim 18 recites item l) above, language which does not introduce additional elements/functions. In other words, the statements in claim 18 are insufficient to significantly alter the eligibility analysis. Therefore, this language does not significantly alter the analysis with respect to the independent claim 1. 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 i)- l) of dependent claims 5, 10 and 15-20 slightly modify the analysis provided with respect to independent claims 1, 6 and 11, 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 1-5, 11-15 and 20 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.
Claims 1 and 11 were amended to recite: “verifying, by the first computing device, the receipt from the system of the specified party using a cryptographic public key of the system of the specified party to determine that the receipt from the system of the specified party comprises a cryptographic signature created with a cryptographic private key of the system of the specified party, wherein the system processes the receipt independent of any transfer-state information and prevents intermediary computing devices from obtaining or inferring the state of the transfer based on the receipt”. The newly introduced “wherein” clause attempts to further limit the step of “verifying, by the first computing device, the receipt from the system…” by reciting what the “system” performs (i.e. “processes the receipt independent…”). However, this newly introduced language is unclear due to the disconnect between the claimed step/function of “verifying”, performed by a first computing device, and the “system”. For instance it is unclear whether the “system” refers to a system which comprises the first computing device or whether is directed to the “system of the specified party”, which is distinct from the “first computing device” (i.e. a system with its own private key). In other words, it is unclear whether “processes the receipt” further limits the claimed step function of “verifying” or whether it describes actions performed by a system outside of the scope of the claimed invention. This duality renders the scope of the language unclear. For Examination purposes, Examiner adopts the latter, especially since this is the only plausible construction regarding method claim 1.
Claim 11 recites “the system” in line 21. There is insufficient antecedent basis for this language in the claim since it is unclear which “system” the claim is referring to (Claim 11 introduces “a system” / “a system of the specified party”, in lines 1 and 10). 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”. Dependent claims 12-15 and 20 are also rejected since they depend on claims 11, respectively.
Prior Art Analysis
The prior art of record does not appear to reasonably disclose the subject matter of independent claims 1, 6 and 11. Therefore Claims 1, 6 and 11 appear to be allowable if rewritten to overcome the pending rejections under 35 U.S.C. §101 and 35 U.S.C. §112(b).
Examiner notes that further search and consideration will be required upon presentation of the rewritten claims. Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14. Claims 2-5, 7-10 and 12-20 would also be allowable upon allowance of claims 1, 6 and 11, due to their dependency.
Response to Arguments/Amendments
Claim rejections - 35 USC § 101
Applicant’s amendments and arguments (see remarks, pages 8-11, filed on 06/29/2026), with respect to the rejection of claims 1-20 under 35 USC § 101 as being directed to an abstract idea have been fully considered but are not persuasive. As an initial matter, Examiner notes claim 6 was not amended to include the language “wherein the system processes the receipt independent of any transfer-state information and prevents intermediary computing devices from obtaining or inferring the state of the transfer based on the receipt, therefore Applicant’s arguments appear to be directed to claims 1 and 11, only. Specifically, Applicant asserts “These limitations render the message contents functionally operative and integral to system behavior, rather than merely descriptive.” Examiner respectfully disagrees. With respect to the language “wherein the pre-agreed contents are limited so as to exclude information representative of progress, completion, failure, or status of the transfer” of claims 1, 6 and 11, this language merely describe what the “contents” are not (i.e. what the contents “exclude”).
Examiner is in the position that such recitation is insufficient to significantly alter the BRI of the claims. Applicant further asserts “Because the system is expressly required to operate without access to such state information, and to prevent intermediaries from deriving that information, the claimed limitation changes how the system processes messages and coordinates execution across multiple computing devices.” Examiner disagrees with Applicant’s interpretation of the BRI of claims 1 and 11. Examiner notes this language was introduced as a “wherein” clause further attempting to narrow the step/function of “verifying, by the first computing device, the receipt from the system of the specified party…” In the context of the claims, the description of what the “system (of the specified party)” performs is insufficient to significantly alter the BRI of the claims, directed to steps/functions performed by a “first computing device”. Therefore, Examiner is unpersuaded that the newly introduced language is sufficient to significant alter the BRI of the claims, and therefore the claims are still rejected under 35 U.S.C. § 101. With respect to steps 2A, Prong Two and step 2B, Examiner is unpersuaded that Applicant’s arguments directed to the newly introduced language are persuasive, as the language is insufficient to alter the BRI of the previously examined claims. An updated eligibility analysis is provided addressing these issues in addition to newly presented claims 16-20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Non-Patent Literature
Hao et al. (NPL 2008, listed in PTO-892 as page 1, reference "U") disclose A Real-Time Payment Scheme for SIP Service Based on Hash Chain, including a hash-chain-based micro-payment mechanism to peer-to-peer SIP payment model.
Gerhardt et al. (NPL 2012, listed in PTO-892 as page 1, reference "V") disclose Homomorphic Payment Addresses and the Pay-to-Contract Protocol, including a payment protocol for customer merchant relations. Merchants are identified by a public key which is their pseudonym. The pseudonym not only founds the reputation of the merchant, but it also specifies where funds addressed to the merchant are to be sent..
R. Martínez-Peláez and F. J. Rico-Novella (NPL 2006, listed in PTO-892 as page 1, reference "W") disclose New electronic cash model: a script anonym, including a new online electronic cash based on the combination of hash chain function and script that allows offering anonymity and privacy to the customers.
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.
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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
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