DETAILED ACTION
Introduction
This Office action is responsive to the amendments filed March 19, 206. Claims 1 and 11 were amended. Claims 1-20 are pending.
Response to Arguments
1. Applicant amended the claims, thereby overcoming the 35 U.S.C. 112(b) rejection.
2. Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive.
Applicant asserts that the claims are not directed to an abstract idea, but instead “provides an interface to an enterprise user so that the enterprise user can obtain information on a digital asset from a DTL, execute a contract surrounding the asset, and integrate that digital asset into the enterprise system by updates a general ledger of assets belonging to the enterprise user. Finally the system provides a system and method for allowing the enterprise users to record the digital asset in their traditional enterprise system under the specific particulars required by their system of governance.”
However, the examiner respectfully disagrees. Claim1 recites a system for integrating digital asset transactions with an enterprise where “information on the digital asset from the DTL” is obtained and compared. A smart contract is signed and recorded, data is manipulated and a “confirmation of the execution of the transaction” is provided. The system is gathering information and eventually provides a “confirmation of the execution of the transaction. Therefore, the claims are directed to the abstract idea of “providing a confirmation for a transaction.”
As per the rejection under 35 U.S.C. 103, Applicant submits that Nieto’s system differs from the claimed invention as it is utilizes “NFT to represent a physical asset and thereby control and coordinate ownership and movement of the physical asset, the current claims are directed to a system and method for integrating a digital asset (NFT or currency) into a traditional banking or financial system.”
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “integrating a digital asset (NFT or currency) into a traditional banking or financial system”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
In the instant case, claims 1-10 are directed to a system. Claims 11-20 are directed to method claims. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of providing a confirmation for a transaction. The claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain methods of organizing human activity abstract idea grouping is defined as concepts related to fundamental economic principles or practices, commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas as they relate to providing a confirmation for a transaction. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
A system for integrating digital asset transactions with an enterprise governance system comprising: a processor; and a memory for storing computer executable instructions, the processor configured to execute the instructions to:
processor; and
a memory for storing computer executable instructions, the processor configured to execute the instructions to:
a) provide to an enterprise user, via a processor, an interface for requesting a transaction relating to a digital asset within a distributed transaction ledger (DTL);
b) obtain, via the processor, information on the digital asset from the DTL and comparing the information to a general ledger of assets belonging to the enterprise user and updating the general ledger, if needed;
c) obtain, via the processor, any required keys for executing the required transaction;
d) generate, via the processor, a smart contract for executing the transaction on the DTL;
e) sign, via the processor, the smart contract and recording the smart contract on the DTL;
f) update, via the processor, any key(s) associated with the digital asset;
g) update, via the processor, the status of the digital asset in the general ledger of assets belonging to the traditional ledger user; and
h) provide, via the interface, confirmation of the execution of the transaction.
Independent claim 11 recites similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the enterprise governance system, processor, memory, DTL, smart contract, and digital asset are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of providing a confirmation for a transaction. Viewed as a whole, the use of enterprise governance system, processor, memory, DTL, smart contract, and digital asset as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the enterprise governance system, processor, memory, DTL, smart contract, and digital asset to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of providing a confirmation for a transaction. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of providing a confirmation for a transaction. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as determine, via the processor, if the enterprise has sufficient liquidity to purchase the requested digital asset and record, via the processor, activity and transaction logs to support regulatory compliance and audit requirements.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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, 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 1-3, 5, 7, 10-13, 15, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2023/0110817 to Nieto et al. (“Nieto”) in view of U.S. Publication No. 2025/0038997 to Wong (“Wong”).
As per claim 1, Nieto discloses a processor; and a memory for storing computer executable instructions, the processor configured to execute the instructions to: processor; and a memory for storing computer executable instructions, the processor configured to execute the instructions to (paragraph [0065]): a) provide to an enterprise user, via a processor, an interface for requesting a transaction relating to a digital asset within a distributed transaction ledger (DTL) (Fig. 6 and paragraph [0006]); b) obtain, via the processor, information on the digital asset from the DTL and comparing the information to a general ledger of assets belonging to the traditional ledger user and updating the general ledger, if needed (Fig. 6; paragraph [0145]); c) obtain, via the processor, any required keys for executing the required transaction (paragraph [0130]); d) generate, via the processor, a smart contract for executing the transaction on the DTL (Fig. 9); g) update, via the processor, the status of the digital asset in the general ledger of assets belonging to the traditional ledger user (paragraph [0056]); and h) provide, via the interface, confirmation of the execution of the transaction (paragraph [0137]).
Nieto does not expressly disclose update, via the processor, any key(s) associated with the digital asset and sign, via the processor, the smart contract and recording the smart contract on the DTL.
Wong discloses update, via the processor, any key(s) associated with the digital asset and sign, via the processor, the smart contract and recording the smart contract on the DTL (paragraph [0021]).
The claims recite the conditional /optional language “--if needed." Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Wong into Nieto. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 2, Nieto in combination with Wong disclose a processor to execute instructions to: automate, via the processor, key creation, storage, retrieval, and destruction (see claim 1 above; also see Nieto at paragraphs [0074], [0082], and [0116] ; Wong at paragraphs [0004] and [0021]).
As per claim 3, Nieto discloses require, via the processor, compliance with security protocols dictated by the enterprise governance system prior to granting access of the user to the interface (paragraphs [0085] and [0088]).
As per claim 5, Nieto in combination with Wong disclose wherein the interface also provides information on one or more of portfolios, accounts, transactions and balances (Nieto – paragraph [0085]; Wong – paragraph [0067]).
As per claim 7, Nieto discloses determine via the processor, whether the enterprise governance system has set transactions thresholds for the users; and if so, generate, via the processor, a notification, in real time, if those thresholds are exceeded (paragraph [0086]).
The claims recite the conditional /optional language “--if so." Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation."
As per claim 10, Nieto discloses record, via the processor, activity and transaction logs to support regulatory compliance and audit requirements (paragraph [0089]).
Functional recitation(s) using the word "for" or other functional language (e.g. "to support") have been considered, but does not patentable distinguish the claim from the prior art because they are regarded as intended use language. A recitation of the intended use of the claimed product must result in a structural difference between the claimed product and the prior art in order to patentably distinguish the claimed product from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself."); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP §§ 2114 and 2115.)
Claims 11-13, 15, 17, and 20 are rejected on the same rationale as claims 1-3, 7, and 10, respectively.
Claims 4, 6, 8, 14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nieto and Wong as applied to claims 1 and 11 above, and further in view of U.S. Publication No. 2025/0267,010 to Kapoustin et al. (“Kapoustin”).
As per claim 4, Nieto in combination with Wong disclose the system of claim 1. The references do not expressly disclose requiring single sign-on. Kapoustin discloses using single-on (see paragraph [0114]). The examiner also notes that it is a matter of design choice to require only single sign on for authentication.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Kapoustin into the system of Nieto in combination with Wong. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 6, Nieto in combination with Wong discloses prior to generating the smart contract, determine, via the processor, whether the requested transaction complies with regulatory requirements (see claim 1 and Wong at paragraph [0065]). Kapoustin discloses generate, via the processor, a notice displayed on the interface (paragraph [0060]). The references do not expressly disclose that the notice regarding compliance. This is considered nonfunctional descriptive material that is not functionally involved in the system. The process of generating a notice would be performed the same would be performed the same regardless of the data including in the notice. Hence, this descriptive material will not distinguish the claimed invention from the prior art in term of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983): In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
As per claim 8, Nieto in combination with Wong disclose system of claim 1. Kapoustin discloses determine, via the processor, whether the enterprise governance system requires multi-signature approval for the transaction; and if so, generate, via the processor, a notification, in real time, requesting the additional signature(s) (paragraphs [0068]-[0071]).The claims recite the conditional /optional language “--if so." Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation."
Claims 14, 16, and 18 are rejected on the same rationale as claims 4, 6, and 8, respectively.
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nieto and Wong as applied to claim 1 above, and further in view of U.S. Patent No. 12/354,139 to Kurani et al. (“Kurani”).
As per claim 9, Nieto in view of Wong disclose the system of claim 1. Kurani discloses determine, via the processor, if the enterprise has sufficient liquidity to purchase the requested digital asset; and generate, via the process, a notification on the interface regarding liquidity. Col. 72, ll. 54-64.
The claims recite the conditional /optional language “--if." Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation.”
Claim 19 is rejected on the same rationale as claim 9 above.
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 JALATEE WORJLOH whose telephone number is (571)272-6714. The examiner can normally be reached Monday-Friday 6:00am-2:00pm.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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