DETAILED ACTION
Acknowledgements
The claims filed 11/12/2024 are acknowledged.
Claims 1 is pending.
Claims 1 has been examined.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,816,664 (“‘664 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘664 Patent are narrower and more specific than claim 1 of the present application, and thus anticipate the claims of the present application, as shown in the table below.
Claim 1 of Present Application
Language from Claim of ‘664 Patent
1.
A system, comprising:
a distributed blockchain environment, comprising:
a plurality of nodes storing a plurality of smart contracts programmed to:
update one or more respective distinct data items based on each respective task to be performed by one or more software routines within the plurality of smart contracts;
generate a plurality of tokens respectively associated with the one or more physical assets, and
manage the plurality of tokens in a plurality of eWallets hosted at the plurality of nodes.
Claim 1:
“A system comprising:
a distributed blockchain environment, comprising:
i) a plurality of externally owned presence (EOP) member nodes comprising one or more non-transitory storage media; the one or more non-transitory storage media of the one or more computers of each of the EOP member nodes storing: . . . v) a plurality of self-contained self-executing software containers (SESCs) . . .”
“the plurality of SESCs comprising: . . . 2) One or more second-type SESCs, comprising one or more task-specific software routines that, when executed by the one or more computers of each of the EOP member nodes, causes the one or more computers to perform the operations of: updating one or more respective distinct transaction records with the distinct data items of the plurality of data objects so as to record, on the one or more cryptographically-secured distributed ledgers, a state of the one or more first-type SESCs upon each respective execution of each respective at least one transaction”
“3) One or more third-type SESCs, comprising one or more token-specific software routines that, when executed by the one or more computers of each of the EOP member nodes, causes the one or more computers to perform the operations of: splitting a respective token of the plurality of DLC tokens into a first DLC token and a DLC second token, wherein the splitting comprises generating the first DLC token and second DLC token each having a unique entity-identifying cryptographic hash”
“1) One or more first-type SESCs, comprising a plurality of transaction-specific software routines that, when executed by the one or more computers of each of the EOP member nodes, causes the one or more computers to perform the operations of: a) creating plurality of immutable data objects on the one or more cryptographically-secured distributed ledgers, storing distinct data items for at least one transaction between a plurality of entities in the one or more cryptographically-secured distributed ledgers, wherein the at least one transaction involves an exchange of one or more assets, b) executing the at least one transaction according to the distinct data items to exchange the one or more assets, c) updating the distinct data items for the at least one transaction in one or more respective data objects according to the exchange, and d) storing the plurality of DLC tokens in respective data records of at least one first party and at least one second party, each of the plurality of DLC tokens comprising at least one unique entity-identifying cryptographic hash”
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claim 1 is directed to a system comprising a distributed blockchain environment comprising a plurality of nodes. This reads on software per se, and therefore does not fall within the four statutory categories of invention, as described in the separate rejection below. However, the abstract idea analysis is provided here because it would be applicable to the claim if it were amended to fall within the four statutory categories of invention.
The claim recites updating a record of transactions based on tasks being performed according to contracts, and generating and managing currency or notes representing assets, which is an abstract idea. Specifically, the claim recites “update one or more respective distinct data items based on each respective task to be performed by . . . the plurality of . . . contracts,” “generate a plurality of tokens respectively associated with the one or more physical assets,” and “manage the plurality of tokens in a plurality of [accounts] . . .,” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (MPEP 2106.04 & 2106.04(a)) because the claim describes a system that carries out steps that update a record a transactions based on tasks being performed according to contracts, and generating and managing currency or notes representing physical assets, which is a commercial interaction and a fundamental economic activity. Accordingly, the claim recites an abstract idea (See MPEP 2106.04(a)).
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 elements of the claim such as a system comprising a distributed blockchain environment comprising a plurality of nodes storing a plurality of smart contracts programmed to perform the functions, as well as the use of the software routines of the plurality of smart contracts and eWallets hosted at the plurality of nodes, merely use a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the steps or functions of “update one or more respective distinct data items based on each respective task to be performed by . . . the plurality of . . . contracts,” “generate a plurality of tokens respectively associated with the one or more physical assets,” and “manage the plurality of tokens in a plurality of [accounts] . . . .” Viewed as a whole, the use of a processor/computer as a tool to implement the abstract idea 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 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 claim does 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 claim does not, for example, purport to improve the functioning of a computer. Nor does it 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 claim is directed to an abstract idea.
The claim does 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 elements of using a system comprising a distributed blockchain environment comprising a plurality of nodes storing a plurality of smart contracts programmed to perform the functions, as well as the use of the software routines of the plurality of smart contracts and eWallets hosted at the plurality of nodes to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of updating a record of transactions based on tasks being performed according to contracts, and generating and managing currency or notes representing assets. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions of “update one or more respective distinct data items based on each respective task to be performed by . . . the plurality of . . . contracts,” “generate a plurality of tokens respectively associated with the one or more physical assets,” and “manage the plurality of tokens in a plurality of [accounts] . . . .” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claim merely recite the concept of updating a record of transactions based on tasks being performed according to contracts, and generating and managing currency or notes representing assets. 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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to software per se.
Claim 1 is directed to software per se as it recites “a system comprising: a distributed blockchain environment, comprising: a plurality of nodes storing a plurality of smart contracts . . . .” Here, the only elements of the “distributed blockchain environment” are the “plurality of nodes.” Additionally, the claim does not require that the “plurality of nodes” include any structural elements. The term “node” is a broad term that can encompass both devices, data, and software (See, Definition of “node”, IEEE 100 The Authoritative Dictionary of IEEE Standard Terms (Seventh Edition), p. 731, IEEE Press (December 2000)), Therefore, the “plurality of nodes” are broad enough to read on software. According to MPEP § 2106, however, there are four categories of invention: process, machine, article of manufacture or composition of matter. Therefore, as "software" is neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter (In re Nuijten, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007)(slip. op. at 18)).
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.
Claim 1 is 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 1 recites the limitation "the one or more physical assets" in lines 7-8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Aronson (US 2018/0240191).
Regarding claim 1, Aronson discloses a system, comprising:
a distributed blockchain environment (Aronson ¶¶ 103-104), comprising:
a plurality of nodes storing a plurality of smart contracts (Aronson ¶¶ 85-86, 103-104) programmed to:
update one or more respective distinct data items based on each respective task to be performed by one or more software routines within the plurality of smart contracts (Aronson Figures 5, 7-8; ¶¶ 7, 67, 75-81, 82-84, 106, 110, 114);
generate a plurality of tokens respectively associated with the one or more physical assets (Aronson Figure 6; ¶¶ 3, 62, 64, 73, 89), and
manage the plurality of tokens in a plurality of eWallets hosted at the plurality of nodes (Aronson Figure 7-8; ¶¶ 25, 65, 82-84, 89-98).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Li (US 2018/0260909) discloses a distributed blockchain environment, comprising: a plurality of self-contained self-executing software containers (SESCs) or smart contract within one or more cryptographically-secured distributed ledgers (Li ¶¶ 15-18, 80-81, 87, 96), wherein the plurality smart contract comprise one or more persistent task-specific software routines configured to update one or more respective distinct data items of at least one transaction based on each respective task to be performed by one or more persistent software routines based on a plurality of resources (Li ¶¶ 17, 23, 30-31, 33, 36, 38-40, 44, 59-60, 75, 83, 94).
Sheng, et al. (US 2017/0109735) (“Sheng”) Sheng discloses performing tasks based on tokens comprising at least one unique entity-identifying cryptographic hash (Sheng ¶¶ 125-126, 129, 153, 157, 212, 220, 288, 330).
Stradling, et al. (US 2018/0091316) (“Stradling”) discloses a smart contract configured to generate a respective amount of DLC tokens (Stradling ¶¶ 76-77).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697