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 .
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.
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Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,141,328.
Although the claims at issue are not identical, they are not patentably distinct from each other. For example, patented claim 1 recites: A computer-implemented method for maintaining a blockchain of transactions relating to a plurality of smart contracts, the blockchain maintained by a plurality of nodes connected via a network, the method comprising:
receiving, at a first node of the plurality of nodes and from a particular node of the plurality of nodes, a transaction indicative of at least one settlement condition associated with a particular smart contract of the plurality of smart contracts;
verifying, by the first node, that a permission level associated with the particular node indicates that the particular node has permission to report the at least one settlement condition;
obtaining, by the first node from a blockchain management node of the plurality of nodes, a private key for the particular smart contract in response to the blockchain management node determining that the first node is authorized to view data maintained on the blockchain and associated with the particular smart contract;
compiling, by the first node, the transaction into a block of transactions;
distributing, by the first node, the block to the plurality of nodes to form a consensus on an update to the blockchain;
decrypting, by the first node, encrypted smart contract data included in the transaction using the private key for the particular smart contract;
routing, by the first node, the transaction to the particular smart contract;
automatically directing, by the first node, execution of an action the particular smart contract directs should be performed in response to the at least one settlement condition being satisfied, including generating a fund transfer transaction as indicated by the particular smart contract;
distributing, by the first node, the fund transfer transaction to the plurality of nodes to form a consensus on the fund transfer transaction;
in response to forming the consensus on the fund transfer transaction, detecting, by a second node of the plurality of nodes, the fund transfer transaction;
verifying, by the second node, that the fund transfer transaction includes the at least one settlement condition; and
executing, by the second node, the fund transfer transaction utilizing an electronic wire service interconnected to the second node.
Patented claim 1 differs since it further recites additional claim limitations including: settlement conditions; verifying, by the first node, that a permission level associated with the particular node indicates that the particular node has permission to report the at least one settlement condition; routing, by the first node, the transaction to the particular smart contract; automatically directing, by the first node, execution of an action the particular smart contract; and verifying, by the second node, that the fund transfer transaction includes the at least one settlement condition. However, it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. See In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
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 1-10 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 6 recite limitations directed to a “consensus mechanism” (e.g. “updating, via a consensus mechanism, the blockchain”). However, it is unclear whether the structure of the consensus mechanism is hardware or software and whether the mechanism is implemented by the first node, second node, or plurality of nodes as a whole. Therefore, the scope of the claims is unclear.
Claims 1 and 6 further recite, “decrypting...encrypted smart contract data...to determine an action the particular smart contract directs should be performed based on at least a portion of the decrypted smart contract data, wherein the action includes generating a fund transfer transaction; updating...the blockchain to include the fund transfer transaction.” However, the claims do not positively recite generating a fund transfer transaction, instead merely reciting that the smart contract is decrypted to determine the action of generating a fund transfer transaction. Therefore, it is unclear how the blockchain is updated in the following step to include the fund transfer transaction when the transaction has not yet been generated.
Claims 2-5 and 7-10 are also rejected due to their dependence on at least claims 1 or 6.
Similarly, claim 2 recites, “wherein performing the action further comprises...” However, there is no corresponding “performing” step for the action in the independent claim.
Claims 3-4 are also rejected due to their dependence on at least claim 2.
Claims 3 and 8 recite, “in response to forming consensus, via the consensus mechanism, on the fund transfer transaction, causing the amount of funds to be transferred from an account associated with a payor to an account associated with a payee.” It is unclear whether “the fund transfer transaction” refers to the first fund transfer transaction recited in claims 1 and 6 or the second fund transfer transaction recited in claims 2 and 7. Furthermore, it is unclear whether the step of “causing the amount of funds to be transferred” is performed by the first node, second node, or the consensus mechanism.
Claims 4 and 9 recite the limitations “the private key for the first node” and “the private key for a node associated with the one or more processors” in “...the digital signature being generated based upon the private key for the first node” and “...the digital signature being generated based upon the private key for a node associated with the one or more processors,” respectively. There is insufficient antecedent basis for these limitations in the claims.
Allowable Subject Matter
Claims 1-10 recite allowable subject matter not found in the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art generally discloses a single server/node obtaining a private key for a smart contract and decrypting encrypted smart contract data using said key to generate and execute transactions. However, the prior art does not disclose, neither singly nor in combination, in a reasonable number of references: obtaining, by the first node from a blockchain management node of the plurality of nodes, a private key for the particular smart contract in response to the blockchain management node determining that the first node is authorized to view data maintained on the blockchain associated with the particular smart contract; decrypting, by the first node, encrypted smart contract data included in the transaction using the private key for the particular smart contract to determine an action the particular smart contract directs should be performed based on at least a portion of the decrypted smart contract data, wherein the action includes generating a fund transfer transaction; in response to forming consensus, via the consensus mechanism, on the fund transfer transaction, detecting, by a second node of the plurality of nodes, the fund transfer transaction; and executing, by the second node, the fund transfer transaction utilizing an electronic wire service interconnected to the second node.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Janin et al. (US 20170262594) generally discloses reimbursement transactions via a wire transfer performed by a second computing device upon receiving an updated transaction ledger (see e.g. 0071-0074).
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/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697