DETAILED ACTION
Status of the Claims
This office action is in response to Applicant's communications received on December 19, 2024 and March 13, 2025. Claims 2-20 are pending, have been examined and currently stand rejected.
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 .
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 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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings submitted on December 19, 2024 are acceptable.
Claim Interpretation
As best understood, claim 19 was/is intended to be independent claim covering a different statutory category. That is, although claim 19 refers to the method of claim 2, it is understood that this is merely a short-handed way to incorporate the same steps performed in the method (i.e., the method of claim 2) into a different statutory category. In order to avoid possible confusion, it is recommended that Applicant explicitly recite the steps included in the [non-transitory] computer readable medium.
Non-Functional Language:
The claim 2 and 20 phrase which recites “the contract being associated with a licence between a first user (U1) and a second user (U2), wherein the contract defines a condition which may be evaluated to true or false” is non-functional descriptive material as it only describes, at least in part, characteristics about the contract (e.g., what it is associated with, what the contract comprises). The fact that the contract has these particular characteristics fails to affect how any of the positively recited steps are performed.
The claim 3 phrase which recites “wherein the transaction further comprises a deterministic redeem script address” is non-functional descriptive material as it only describes, at least in part, characteristics about the composition of the transaction. The fact that the transaction comprises this particular information/data fails to affect how any of the positively recited steps are performed.
The claim 4 phrase which recites “wherein the contract is a smart contract” is non-functional descriptive material as it only describes, at least in part, characteristics about the contract. The fact that the contract is of a particular form (i.e., in the form of a smart contract) fails to affect how any of the positively recited steps are performed.
The claim 7 phrase which recites “wherein the further transaction comprises: an input which is the at least one unspent output (UTXO); and a redeem script comprising a signature, the metadata, an agent public key (PA) associated with the agent, and a first user public key (PU1) associated with the first user (U1)” is non-functional descriptive material as it only describes, at least in part, the composition of the further transaction. The fact that the further transaction contains this particular information/data fails to affect how any of the positively recited steps are performed.
The claim 8 phrase which recites “wherein the contract defines: at least one condition, the at least one condition relating to operation of the licence as between the first user (U1) and the second user (U2); and at least one action whose performance is dependent upon the evaluation of the condition” is non-functional descriptive material as it only describes, at least in part, characteristics of the contract. The fact that the contract comprises these details fails to affect how any of the positively recited steps are performed.
The claim 11 phrase which recites “wherein the contract comprises a Deterministic Finite Automation (DFA) to implement the contract” is non-functional descriptive material as it only describes, at least in part, characteristics the composition of the contract. The fact that the contract comprises a DFA fails to affect how any of the positively recited steps are performed.
The claim 12 phrase which recites “wherein the Deterministic Finite Automation (DFA) is defined using a codification scheme” is non-functional descriptive material as it only describes, at least in part, characteristics of the DFA. The fact that the DFA is defined using a particular scheme fails to affect how any of the positively recited steps are performed. Applicant is not positively reciting a step of defining the DFA.
The claim 13 phrase which recites “wherein the Deterministic Finite Automation is implemented as at least one of: i) a blockchain transaction or sequence of transactions; ii) an agent based process or sequence of processes; iii) a set of instructions for a smart wallet.” is non-functional descriptive material as it only describes, at least in part, characteristics the DFA. The fact that the DFA could be implemented in a particular manner fails to affect how any of the positively recited steps are performed. Applicant is not positively reciting a step where the DFA and/or the contract is implemented.
The claim 16 phrase which recites “wherein the licence between the first user (U1) and the second user (U2) relates to one or more of: computer software; and digital media, including music, videos, and electronic books” is non-functional descriptive material as it only describes, at least in part, characteristics of the license. The fact that the license is for, or relates to, a particular item (e.g., computer software) fails to affect how any of the positively recited steps are performed.
The claim 17 phrase which recites “wherein the peer-to-peer distributed ledger is the blockchain” is non-functional descriptive material as it only describes, at least in part, characteristics of the peer-to-peer distributed ledger. The fact that the peer-to-peer distributed ledger is the blockchain fails to affect how any of the positively recited steps are performed.
The claim 18 phrase which recites “wherein the cryptocurrency is bitcoin” is non-functional descriptive material as it only describes, at least in part, the particular type of cryptocurrency being used. The fact that the cryptocurrency is bitcoin fails to affect how any of the positively recited steps are performed.
It has been held that non-functional descriptive material will not distinguish the invention from the prior art in terms of patentability.
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.
Claims 6 and 7 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 6, which depends upon claim 5, recites, in part, “wherein the step of terminating the contract comprises broadcasting a further transaction to spend the at least one unspent output (UTXO).” This limitation is unclear when read in light of claim 5. Claim 5 indicates that the step of determining comprises terminating the contract in the event that the at least one unspent output (UTXO) cannot be identified from the peer-to-peer distributed ledger. It is unclear, how claim 6 could spend a UTXO when claim 5 identified that there were no UTXO’s available to spend.
Applicant’s disclosure indicates that it relates to controlling performance of a contract by providing that the contract (e.g., licence) remains in effect as long as there is a valid unspent transaction output (UTXO) on the blockchain representing the contract. Spec. [0137]; [0150]. The disclosed invention accomplishes this by creating two transactions, one to publish the contract and get the transaction output representing the contract and a second one to spend that output (i.e., to terminate the contract). Spec. [0157]. The disclosure indicates that once the contract is terminated (i.e., by executing the second transaction to spend the UTXO), this will be recorded on the blockchain as a spent output. Spec. [0138]. The disclosure also indicates that the second transaction could be created ahead of time (i.e., created by not executed), and that the second transaction could be programmed/instructed to execute on a particular date and/or time. Spec. [0157-0159].
Examiner contends that the unspent output (UTXO) works like an escrow account, and as long as there is money in the escrow (i.e., indicated by the fact the ledger shows an unspent output (UTXO)) the contract is deemed valid. Once the escrow is empty (i.e., a UTXO cannot be identified on the ledger), the contract is deemed invalid. This interpretation appears to be supported by applicant’s disclosure which states “The instigator of the closure […] will check the blockchain to determine whether the contract has been cancelled or not by validating whether the previous UTXO has been spent or not […]. If it has been spent, the process ends as the contract has already been closed.” Spec. [0164-0167]. Claim 6, as currently drafted and as best understood, is essentially saying that if you determine the escrow is empty (i.e., at least one unspent output (UTXO) cannot be identified), spend money from the escrow to terminate the contract (i.e., broadcasting a further transaction to spend the at least one unspent output (UTXO)). This not only seems nonsensical, but impossible.
In order to further prosecution, Examiner has interpreted claim 6 as reciting “in response to determining that the transaction comprises at least one unspent output (UTXO), terminating the contract by broadcasting a further transaction to spend the at least one unspent output (UTXO).”
Claim 7 is also rejected under 35 U.S.C. 112(b) based on its dependency to claim 6.
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.
Claims 2-8, 10-13 and 16-20 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,217,254. Although the claims at issue are not identical, they are not patentably distinct from each other. In this instance, claim 1 of the ‘254 Patent correspond to claims 2, 19 and 20 of the instant application. Claim 2, 19 and 20 differ from claim 1 of the ‘254 patent, in part, because claims 2, 19 and 20 do not recite: that the database in which the contract is stored is a DHT table; that the contract is associated with a contract of computer software; determining, by the processing resource, a key and a key value pair based on the computer software and the contract; wherein querying a peer-to-peer distributed ledger comprises scanning the peer-to-peer distributed ledger to identify the at least one unspent output (UTXO) to determine whether the at least one unspent output (UTXO) has been spent or not; modifying, by the processing resource, performance of the contract, wherein the modifying comprises: terminating the contract in the event that the at least one unspent output (UTXO) cannot be identified from the peer-to-peer distributed ledger, or maintaining the contract in the event that the at least one unspent output (UTXO) is identified from the peer-to-peer distributed ledger, wherein the step of terminating the license comprises broadcasting a further transaction to spend the at least one unspent output (UTXO), wherein in the step of broadcasting the further transaction, the further transaction comprises an instruction to spend the at least one unspent output (UTXO) at a specified date and/or time, wherein the further transaction comprises: an input that spends the at least one unspent output (UTXO); and a redeem script comprising a signature, the metadata, an agent public key associated with the agent, and a first user public key associated with the first users.
It would have been obvious to a person of ordinary skill in the art to modify claim 1 of U.S. Patent No. 12,217,254 to achieve the recited functions found in independent claims 2, 19 and 20 of Application no. 18/987,920 (i.e., the instant application) because 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. 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.
Dependent claim 3 of the instant application corresponds to claim 2 of the ‘254 patent. Claim 3 describes characteristics about the composition of the transaction, however the fact that the transaction has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 3 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 4 of the instant application does not correspond to any of the claims in the ‘254 patent, however claim 4 is merely providing descriptive language about the contract. The fact that the contract has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 4 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 5 of the instant application describes features pertaining to the terminating or maintaining of the contract based on the at least one unspent output (UTXO). An analogous feature is found in claim 1 of the ’254 patent (i.e., “terminating the contract in the event that the at least one unspent output (UTXO) cannot be identified from the peer-to-peer distributed ledger, or maintaining the contract in the event that the at least one unspent output (UTXO) is identified”). Accordingly, claim 5 is not patentably distinct from claim 1 of the ‘254 patent.
Dependent claim 6 of the instant application describes features pertaining to broadcasting a further transaction to spend the at least one unspent output (UTXO). An analogous feature is found in claim 1 of the ’254 patent (i.e., “wherein the step of terminating the license comprises broadcasting a further transaction to spend the at least one unspent output (UTXO),”). Accordingly, claim 6 is not patentably distinct from claim 1 of the ‘254 patent.
Dependent claim 7 of the instant application describes features pertaining to the composition of the further transaction. An analogous feature is found in claim 1 of the ’254 patent (i.e., “the further transaction comprises: an input that spends the at least one unspent output (UTXO); and a redeem script comprising a signature, the metadata, an agent public key associated with the agent, and a first user public key associated with the first users”). Accordingly, claim 7 is not patentably distinct from claim 1 of the ‘254 patent.
Dependent claim 8 of the instant application corresponds to claim 4 of the ‘254 patent. Claim 8 describes characteristics about the composition of the contract, however the fact that the contract has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 8 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 10 of the instant application describes the type of database in which the contract is stored (i.e., a DHT). An analogous feature is found in claim 1 of the ’254 patent (i.e., “storing a contract in a Distributed Hash Table (DHT) comprising a plurality of key-value pairs”). Accordingly, claim 10 is not patentably distinct from claim 1 of the ‘254 patent.
Dependent claim 11 of the instant application corresponds to claim 7 of the ‘254 patent. Claim 11 describes characteristics about the composition of the contract, however the fact that the contract has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 11 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 12 of the instant application corresponds to claim 8 of the ‘254 patent. Claim 8 describes characteristics about the composition of the contract and/or the DFA within the contract, however the fact that the contract, and/or the DFA, has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 12 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 13 of the instant application does not correspond to any of the claims in the ‘254 patent, however claim 13 is merely providing descriptive language about the DFA within the contract. The fact that the DFA has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Applicant is not positively reciting a step where the contract is “implemented.” Likewise, Applicant is not positively reciting a step reciting wherein the method further comprises implementing the DFA. Accordingly, claim 13 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 16 of the instant application recites wherein the licence between the first user (U1) and the second user (U2) relates to one or more of: computer software; and digital media, including music, videos, and electronic books. An analogous feature is found in claim 1 of the ’254 patent (i.e., “the contract being associated with a contract of computer software”). Accordingly, claim 16 is not patentably distinct from claim 1 of the ‘254 patent.
Dependent claim 17 of the instant application corresponds to claim 12 of the ‘254 patent. Claim 17 describes characteristics about the peer-to-peer distributed ledger, however the fact that the peer-to-peer distributed ledger has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 17 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
Dependent claim 18 of the instant application corresponds to claim 13 of the ‘254 patent. Claim 18 describes characteristics about the cryptocurrency, however the fact that the cryptocurrency has these characteristics fails to explicitly affect how any of the positively recited steps are performed. Accordingly, claim 18 will not distinguish the claimed invention from the invention claimed in the ‘254 patent since these characteristic fail to further refine/limit how any of the positively recited steps are performed.
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 2-20 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined at Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that claims 2-18 are directed to the statutory category of a process and claim 20 is directed to the statutory category of a machine. As further explained below, claim 19 is not directed to a statutory category because it is directed to a “computer software program” not embodied or executed on any physical storage media (i.e., the claim is directed to software per se, which is not patent eligible). Accordingly, claim 19 does not pass step 1 of the analysis, however, in order to further prosecution, claim 19 has been further analyzed under steps 2A and 2B (seen below).
Under the Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 2 is selected as being representative of the independent claims in the instant application. Claim 2 recites:
A computer-implemented method for controlling the performance of a contract, the method comprising:
storing a contract on or in a computer-based repository, the contract being associated with a licence between a first user (U1) and a second user (U2), wherein the contract defines a condition which may be evaluated to true or false;
receiving over a communications network, a transaction comprising a transfer of a token from an agent (A) to the first user (U1) or the second user (U2), the transaction comprising metadata that includes an identifier indicative of a location where the contract is stored;
querying a peer-to-peer distributed ledger to determine whether the transaction comprises at least one unspent output (UTXO); and
responsive to querying the peer-to-peer distributed ledger, determining whether to modify performance of the contract.
Here, the claims recite the abstract idea, or combination of abstract ideas, of storing and collecting information associated with a contract and determining whether to modify the contract based on the collected information. This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a commercial or legal interaction (e.g., managing interactions between entities associated with the contract, and/or a commercial/legal interaction of managing a contract associated with a license, etc.). Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. Furthermore, the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F .3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear that the claim(s) focus on an abstract idea, and not on any improvement to technology and/or a technical field. It is further noted that, the performance of the one or more process steps using a generic computer component (e.g., “computer-implemented”, a processing device, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In this instance, claim 2 recites the additional elements of a computer (i.e., computer-implemented) and a communications network. Similarly, claims 19 and 20 both recite the additional elements of a processing device and a communications network.
The computer, processing device and communications network are all recited at a high-level of generality such they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component. See MPEP 2106.05(f). The claims’ use of the processing device and/or communications network does not transform the claimed subject matter into a patent-eligible application because the claims do not require any nonconventional computer components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for the performance of the abstract idea on a generic computing/processing device. Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL 3514158, at *6-7 (Fed. Cir. June 27, 2016). Additionally, Examiner finds no indication in the Specification, that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any specialized programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). Furthermore, there is no indication in the claim(s) that the computing components in combination with the abstract idea leads to an improvement of the computing components, or another technology, or to a technical field. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a generic computing component (e.g., a computer, a processing device, a communications network, etc.) to implement the abstract idea amounts to no more than mere instructions to apply the exception using a generic computer component and/or system. Mere instructions to apply an exception using a generic computer component and/or system cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 2, 19 and 20 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2-18 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claim 3 refines the abstract idea by describing the composition of the transaction. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 4 refines the abstract idea by describing the form of the contract. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 5 refines the abstract idea by describing the conditions under which the contract is terminated or maintained. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 6 refines the abstract idea by describing how the contract is terminated. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 7 refines the abstract idea by the composition of the further transaction. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 8 refines the abstract idea by the composition of the contract. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 9 refines the abstract idea by the type of information that is collected in order to check the contract, or the status thereof. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 10 refines the abstract idea by describing the type of database where the contract is stored (e.g., in a DHT). This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 11 refines the abstract idea by describing the composition of the contract. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 12 refines the abstract idea by describing characteristics about the DFA (i.e., how it is defined). This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 13 refines the abstract idea by describing characteristics about the DFA (i.e., how the DFA could be implemented). This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 14 recites the additional abstract idea of renewing the contract. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 15 recites the additional abstract idea of generating a second/sub contract and then storing the second/sub contract and its associated information. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 16 refines the abstract idea by describing what the license pertains to (e.g., computer software). This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 17 refines the abstract idea by describing characteristics about the peer-to-peer distributed ledger. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 18 refines the abstract idea by describing the particular type of currency/cryptocurrency used in implementing the abstract idea. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Claim 19 is further rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 19 is directed to a “computer software program” not embodied or executed on any physical storage media. The rationale for this finding is that claim 19 does not appear to have any structural elements (i.e., any physical or tangible form). Since the claimed computer software program does not have a physical or tangible form, Examiner has interpreted claim 19 as reciting software per se (i.e., program code not stored or processed on any physical media). Functional descriptive material such as a computer program (e.g., logic) must be structurally and functionally interrelated with a medium to allow its intended uses to be realized. Accordingly, claim 19 is directed to software per se is not patentable subject matter because it does not fall within at least one of the four categories of patent eligible subject matter. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1760 (Fed. Cir. 1994). See MPEP § 2106.03 for further guidance and discussion on computer-related non-statutory subject matter. In order to overcome this non-statutory issue, Examiner recommends amending claim 19 to recite “A non-transitory computer-readable medium having stored thereon instructions that, when executed by at least one processor, are operable to perform the steps of: [then write the steps recited in the method claim] (e.g., storing […]; receiving […]; querying […]; and responsive to […].).”
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 2, 4-6, 8, 9 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over McCoy et al. (US 2016/0323109 A1) (hereinafter “McCoy”) in view of McConaghy et al. (US 2016/0203572 A1) (hereinafter “McConaghy”).Regarding Claims 2, 19 and 20: McCoy discloses:
Claim 2: A computer-implemented method for controlling the performance of a contract, the method comprising:
Claim 19: A computer software program comprising machine-readable instructions to cause a processing device to implement the method of claim 2 (See at least McCoy [0184]; [0187]).
Claim 20: A computer system for controlling the performance of a contract, the system comprising a processing device configured to (See at least McCoy [0183-0184]; [0187]; Fig. 19 item 1910):
storing a contract on or in a computer-based repository, the contract being associated with a licence between a first user (U1) and a second user (U2), wherein the contract defines a condition which may be evaluated to true or false (See at least McCoy [0035]; [0081-0082]; [0116-0117]; [0136]; [0143-0144]. McCoy discloses storing a contract (i.e., contract/digital contract) on or in a computer-based repository (i.e., a database, e.g., a public ledger, the blockchain), the contract being associated with a licence (i.e., associated with one or more rights) between a first user (U1) and a second user (U2), wherein the contract defines a condition (e.g., a lock time for a lease) which may be evaluated to true or false (e.g., is the lease time is less than a year).);
receiving over a communications network, a transaction comprising a transfer of a token from an agent (A) to the first user (U1) or the second user (U2), the transaction comprising metadata that includes an identifier indicative of a location where the contract is stored (See at least McCoy [0037]; [0059]; [0064]; [0077]; Fig. 4. McCoy discloses receiving over a communications network, a transaction comprising a transfer of a token (i.e., an amount of Satoshi representing a digital content right) from an agent (A) (i.e., from entity 0, e.g., the content management system) to the first user (U1) (i.e., to entity 1) or the second user (U2), the transaction comprising metadata that includes an identifier indicative of a location where the contract is stored (i.e., data identifying the contract representing the right to the digital content item).);
querying a peer-to-peer distributed ledger to determine whether the transaction comprises at least one unspent output (UTXO) (See at least McCoy [0047]; [0065]; [0074]; [0077]; [0092]. McCoy discloses querying a peer-to-peer distributed ledger (e.g., when tracking/tracing transactions as representations of right transfers in public ledgers and other block chains) to determine whether the transaction comprises at least one unspent output (UTXO) (i.e., determine whether the transaction has an unspent balance).).
As indicated above, McCoy discloses tracking/tracing transactions in a public ledger (e.g., a blockchain) in order to determine whether the transaction has an unspent balance. McCoy [0047]; [0065]; [0074]; [0077]; [0092]. McCoy indicates that a proof-of-existence for a right may be defined by a node address having an unspent balance that is associated with a transaction containing a reference to the right(s), digital contract, and the digital item. McCoy [0074]. McCoy also discloses that, in order to maintain the contracts, the contract module may may modify, amend, or change digital contracts that define the rights assigned to the digital content items in response to performed bitcoin transactions. McCoy [0045]. However, McCoy does not explicitly disclose responsive to querying the peer-to-peer distributed ledger, determining whether to modify performance of the contract.
McConaghy, on the other hand, teaches responsive to querying the peer-to-peer distributed ledger, determining whether to modify performance of the contract (See at least McConaghy [0055-0056]; [0064-0065]; Fig. 3 steps 306 and 308; Fig. 4 steps 406 and 408. McConaghy teaches responsive to querying the peer-to-peer distributed ledger (e.g., in order to affirm ownership), determining whether to modify performance of the contract (e.g., determine whether to transfer ownership of the artwork).).
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 teachings of McConaghy into McCoy’s method of modifying, amending, or changing digital contracts that define the rights assigned to the digital content items in response to performed bitcoin transactions. One of ordinary skill in the art would have been motivated to include such features in order to affirm and transfer ownership of a digital asset (McConaghy [0017]).
Regarding Claim 4: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the contract is a smart contract (See at least McConaghy [0028] “smart contract execution environments for regulating usage
and payments of fees and royalties for use of digital content”).
It is also noted that, the claim 4 phrase which recites “wherein the contract is a smart contract” is non-functional descriptive material as it only describes, at least in part, characteristics about the contract. The fact that the contract is of a particular form (i.e., in the form of a smart contract) fails to affect how any of the positively recited steps are performed.
Regarding Claim 5: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the step of determining comprises:
terminating the contract in the event that the at least one unspent output (UTXO) cannot be identified from the peer-to-peer distributed ledger (See at least McCoy [0074]; [0077]. McCoy discloses terminating the contract (i.e., ending/terminating the one or more rights) in the event that the at least one unspent output (UTXO) cannot be identified from the peer-to-peer distributed ledger (i.e., when the entire balance is spent).); or
maintaining the contract in the event that the at least one unspent output (UTXO) is identified from the peer-to-peer distributed ledger (See at least McCoy [0074]; [0077]. McCoy discloses maintaining the contract (i.e., maintaining the right) in the event that the at least one unspent output (UTXO) is identified from the peer-to-peer distributed ledger (i.e., when the address has an unspent balance).).
Regarding Claim 6: The combination of McCoy and McConaghy discloses the method of claim 5. McCoy further discloses wherein the step of terminating the contract comprises broadcasting a further transaction to spend the at least one unspent output (UTXO) (See at least McCoy [0068]; [0074]; [0077]. McCoy discloses wherein the step of terminating the contract comprises broadcasting a further transaction (i.e., a subsequent rights transfer transaction) to spend the at least one unspent output (UTXO) (i.e., transfer the entire unspent balance to a new address).).
Regarding Claim 8: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the contract defines:
at least one condition, the at least one condition relating to operation of the licence as between the first user (U1) and the second user (U2) (See at least McCoy [0081-0082]. McCoy discloses wherein the contract defines at least one condition, the at least one condition relating to operation of the licence as between the first user (U1) and the second user (U2) (e.g., an amount of time the right may be used by another entity).); and
at least one action whose performance is dependent upon the evaluation of the
condition (See at least McCoy [0081-0082]. McCoy discloses wherein the contract defines at least one action (e.g., terminating the lease right via the second transaction) whose performance is dependent upon the evaluation of the condition (i.e., is dependent upon the set lock time).).
Regarding Claim 9: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the step of querying the peer-to-peer distributed ledger further comprises: checking whether the contract has been terminated by determining whether the at least one unspent output (UTXO) is present in a list of unspent transaction outputs for the peer-to-peer distributed ledger (See at least McCoy [0047]; [0065]; [0074]; [0077]; [0092]).
Regarding Claim 14: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses further comprising the step of renewing the contract by performing the steps of:
generating a sub-key relating to a previous key associated with the contract (See at least McCoy [0056]. McCoy discloses generating a sub-key (i.e., generates the child address node) relating to a previous key (i.e., parent address node) associated with the contract.);
generating a further redeem script comprising the sub-key, the location of the contract, and a hash of the contract (See at least McCoy [0055-0056]; [0059]; [0074]. McCoy discloses generating a further redeem script (i.e., transaction) comprising the sub-key (i.e., the receiving/child node address), the location of the contract (i.e., data identifying the contract), and a hash of the contract (i.e., a hash of a digital contract that describes the right).); and
paying a quantity of a cryptocurrency (C) to the further redeem script (See at least McCoy [0046]; [0055-0056]. McCoy discloses paying a quantity of a cryptocurrency (C) to the further redeem script (i.e., transfers digital currency from the parent address node to the child address node of the recipient).).
Regarding Claim 15: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses generating a sub-contract derived from the contract, wherein the sub-contract is associated with a deterministic address (See at least McCoy [0055-0057]; [0067-0068]. McCoy discloses generating a sub-contract (i.e., cloned right) derived from the contract (i.e., derived from the right).) and is generated by performing the steps of:
using a new public key derived using a seed (See at least McCoy [0055-0057]. McCoy discloses using a new public key (i.e., a new digital currency address, e.g., child address) derived using a seed.);
storing the sub-contract in or on the computer-based repository with a reference to the contract (See at least McCoy [0057]; [0060]. McCoy discloses storing the sub-contract (i.e., cloned right) in or on the computer-based repository with a reference to the contract (i.e., reference to the parent address).);
broadcasting a sub-contract transaction to the peer-to-peer distributed ledger, the subcontract transaction including the reference to the contract (See at least McCoy [0057]; [0060]; [0065]. McCoy discloses broadcasting a sub-contract transaction (i.e., transaction transferring from the parent to the child) to the peer-to-peer distributed ledger (i.e., to the public ledger), the subcontract transaction including the reference to the contract (i.e., by referencing the parent node address, e.g., to track provenance).); and
adding, to the metadata associated with the contract, a reference to the sub-contract (See at least McCoy [0045]; [0059]. McCoy discloses adding (i.e., modify/amend), to the metadata associated with the contract (i.e., to the identifying information), a reference to the sub-contract (i.e., a reference to the performed transaction).).
Regarding Claim 16: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the licence between the first user (U1) and the second user (U2) relates to one or more of:
computer software; and
digital media, including music, videos, and electronic books (See at least McCoy [0027] “digital content, such as digital documents, images, multimedia”; [0039] “digital media (e.g., text-based content, audio-based content, video-based content, image-based content, and so on)”.).
Regarding Claim 17: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the peer-to-peer distributed ledger is the blockchain (See at least McCoy [0047]; [0065]; [0092]. McCoy further discloses wherein the peer-to-peer distributed ledger is the blockchain (i.e., block chain).).
Regarding Claim 18: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the cryptocurrency is bitcoin (See at least McCoy [0042] “In some embodiments, the transaction module 220 is configured and/or programmed to perform bitcoin or other digital currency transactions to generate public ledger entries that represent rights transfers of the digital content items between providers and recipients.”; Fig. 3 step 320; Fig. 11A).
Claims 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over McCoy in view of McConaghy, as applied above, and further in view of Andreas M. Antonopoulos ("Mastering Bitcoin", Publisher: O'Reilly Media, Inc., Release Date: December 2014) (hereinafter “Antonopoulos”).
Regarding Claim 3: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses wherein the transaction further comprises an address (e.g., the transferring and receiving node addresses). McCoy [0059]; [0064]. However, the combination of McCoy and McConaghy does not explicitly disclose wherein the transaction further comprises a deterministic redeem script address.
Antonopoulos, on the other hand, teaches wherein the transaction further comprises a deterministic redeem script address (See at least Antonopoulos Page 128, “The five standard types of transaction scripts are Pay-to-Public-Key-Hash (P2PKH), Public-Key, Multi-Signature (limited to 15 keys), Pay-to-Script-Hash (P2SH) and Data Output (OP_RETURN), which are described in more detail below.”).
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 teachings of Antonopoulos into McCoy’s method which includes addresses in the transaction. One of ordinary skill in the art would have been motivated to include such features in order to include a script that must be evaluated to match certain conditions (Antonopoulos Page 129).
It is also noted that, the claim 3 phrase which recites “wherein the transaction further comprises a deterministic redeem script address” is non-functional descriptive material as it only describes, at least in part, characteristics about the composition of the transaction. The fact that the transaction comprises this particular information/data fails to affect how any of the positively recited steps are performed.
Regarding Claim 7: The combination of McCoy and McConaghy discloses the method of claim 6. McCoy further discloses, wherein the further transaction comprises:
an input which is the at least one unspent output (UTXO) (See at least McCoy [0077]. McCoy discloses wherein the further transaction comprises an input which is the at least one unspent output (UTXO) (i.e., the entire unspent balance).).
McCoy does not explicitly disclose wherein the further transaction comprises a redeem script comprising a signature, the metadata, an agent public key (PA) associated with the agent, and a first user public key (PU1) associated with the first user (U1). Antonopoulos, on the other hand, teaches wherein the further transaction comprises a redeem script comprising a signature, the metadata, an agent public key (PA) associated with the agent, and a first user public key (PU1) associated with the first user (U1) (See at least Antonopoulos Pages 135-136, “When Mohammed wants to spend this UTXO, they must present the original redeem script (the one whose hash locked the UTXO) and the signatures necessary to unlock it, like this: <Sig1> <Sig2> <2 PK1 PK2 PK3 PK4 PK5 5 OP_CHECKMULTISIG>.”, Pages 221-222 “using the OP_RETURN bitcoin operator to encode transaction metadata.”. Where Antonopoulos teaches wherein the further transaction comprises a redeem script (i.e., redeem script) comprising a signature (e.g., Sig1), the metadata (i.e., the OP_Return, e.g., OP_Checkmiltisig), an agent public key (PA) associated with the agent (e.g., PK1), and a first user public key (PU1) associated with the first user (U1) (e.g., PK2).).
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 teachings of Antonopoulos into McCoy’s method which broadcasts a further transaction (i.e., a subsequent rights transfer transaction) to spend the at least one unspent output (UTXO) (i.e., transfer the entire unspent balance to a new address). One of ordinary skill in the art would have been motivated to include such features in order to shift the transaction fee cost of a long script from the sender to the recipient who has to include the long redeem script to spend it (Antonopoulos Page 137).
It is also noted that, the claim 7 phrase which recites “wherein the further transaction comprises: an input which is the at least one unspent output (UTXO); and a redeem script comprising a signature, the metadata, an agent public key (PA) associated with the agent, and a first user public key (PU1) associated with the first user (U1)” is non-functional descriptive material as it only describes, at least in part, the composition of the further transaction. The fact that the further transaction contains this particular information/data fails to affect how any of the positively recited steps are performed.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over McCoy in view of McConaghy, as applied above, and further in view of Lin et al. (US 2005/0188085 A1) (hereinafter “Lin”)
Regarding Claim 10: The combination of McCoy and McConaghy discloses the method of claim 2. As indicated above, McCoy discloses storing a contract (i.e., contract/digital contract) on or in a computer-based repository (i.e., a database, e.g., a public ledger, the blockchain). McCoy [0035]; [0116-0117]; [0136]; [0143-0144]. However, McCoy does not explicitly disclose wherein the contract is stored in a Distributed Hash Table (DHT).
Lin, on the other hand, teaches wherein [data] is stored in a Distributed Hash Table (DHT) (See at least Lin [0037-0041]. Lin teaches wherein data (e.g., contents of a file) is stored in a Distributed Hash Table (DHT).).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate wherein the contract is stored in a Distributed Hash Table (DHT), as taught/suggested by Antonopoulos, into McCoy’s method which stores a digital contract on or in a database. One of ordinary skill in the art would have been motivated to include such features in order to provide a network where nodes may enter and leave the network without disrupting the network (Lin [0039]).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over McCoy in view of McConaghy, as applied above, and further in view of Szabo et al. (US 2015/0262009 A1) (hereinafter “Szabo”)
Regarding Claim 11: The combination of McCoy and McConaghy discloses the method of claim 2. McCoy further discloses implementing the contract based on various decisions (e.g., based on a lock time). McCoy [0081-0082]. However, McCoy does not explicitly disclose wherein the contract comprises a Deterministic Finite Automation (DFA) to implement the contract.
Szabo, on the other hand, teaches wherein the contract comprises a Deterministic Finite Automation (DFA) to implement the contract (See at least Szabo [0004-0005] “two types of finite automata can be distinguished. Deterministic Finite Automata, DFA, and Nondeterministic Finite Automata, NFA.”; [0009] “an apparatus for detecting data patterns in a data stream is provided comprising a plurality of data symbols representing characters of an alphabet. The apparatus executes a deterministic finite automata”; [0016] “the apparatus executes the finite automata according to the destination state and triggers the transition thereto”; [0031] “the computer executing a deterministic finite automata comprising a compressed state transition register comprising a plurality of states including a start state and at least one accepting state, and state transitions from an initial state to a destination state triggered by a data symbol of the data stream”. Szabo teaches wherein the contract comprises a Deterministic Finite Automation (DFA) (i.e., finite automata, e.g., DFA) to implement the contract.).
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 teachings of Szabo into McCoy’s method which implements the contract based on various decisions. One of ordinary skill in the art would have been motivated to include such features in order to detecting data patterns by executing finite automata (Szabo [0006]).
It is also noted that, the claim 11 phrase which recites “wherein the contract comprises a Deterministic Finite Automation (DFA) to implement the contract” is non-functional descriptive material as it only describes, at least in part, characteristics the composition of the contract. The fact that the contract comprises a DFA fails to affect how any of the positively recited steps are performed.
Regarding Claim 12: The combination of McCoy, McConaghy and Szabo discloses the method of claim 11. McCoy and McConaghy fail to explicitly disclose wherein the Deterministic Finite Automation (DFA) is defined using a codification scheme.
Szabo, on the other hand, further teaches wherein the Deterministic Finite Automation (DFA) is defined using a codification scheme (See at least Szabo [0068]; [0083]. Szabo teaches wherein the Deterministic Finite Automation (DFA) (i.e., finite automata, e.g., DFA) is defined using a codification scheme (i.e., a code scheme, e.g., ASCII code scheme).).
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 teachings of Szabo into McCoy’s method which implements the contract based on various decisions. One of ordinary skill in the art would have been motivated to include such features in order to detecting data patterns by executing finite automata (Szabo [0006]).
It is also noted that, the claim 12 phrase which recites “wherein the Deterministic Finite Automation (DFA) is defined using a codification scheme” is non-functional descriptive material as it only describes, at least in part, characteristics of the DFA. The fact that the DFA is defined using a particular scheme fails to affect how any of the positively recited steps are performed. Applicant is not positively reciting a step of defining the DFA.
Regarding Claim 13: The combination of McCoy, McConaghy and Szabo discloses the method of claim 11. McCoy and McConaghy fail to explicitly disclose wherein the Deterministic Finite Automation is implemented as at least one of: i) a blockchain transaction or sequence of transactions; ii) an agent based process or sequence of processes; iii) a set of instructions for a smart wallet.
Szabo, on the other hand, further teaches wherein the Deterministic Finite Automation is implemented as at least one of:
i) a blockchain transaction or sequence of transactions;
ii) an agent based process or sequence of processes (See at least Szabo [0024-0025]; [0060-0062]; [0086]. Szabo teaches wherein the Deterministic Finite Automation is implemented as an agent based process (i.e., unit based process, e.g., units 34 and 35) or sequence of processes (e.g., evaluating a sequence of data symbols, re-using processes, etc.).);
iii) a set of instructions for a smart wallet.
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 teachings of Szabo into McCoy’s method which implements the contract based on various decisions. One of ordinary skill in the art would have been motivated to include such features in order to detecting data patterns by executing finite automata (Szabo [0006]).
It is also noted that, the claim 13 phrase which recites “wherein the Deterministic Finite Automation is implemented as at least one of: i) a blockchain transaction or sequence of transactions; ii) an agent based process or sequence of processes; iii) a set of instructions for a smart wallet.” is non-functional descriptive material as it only describes, at least in part, characteristics the DFA. The fact that the DFA could be implemented in a particular manner fails to affect how any of the positively recited steps are performed. Applicant is not positively reciting a step where the DFA and/or the contract is implemented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Herbert et al. (“A Novel Method for Decentralised Peer-to-Peer Software License Validation Using Cryptocurrency Blockchain Technology”, Proceedings of the 38th Australasian Computer Science Conference, January 2015) discloses that the blockchain can be utilized to provide a record of all software licenses owned by an end user. Through the decentralized peer-to-peer blockchain architecture, any software developer or vendor can allocate licenses to users easily and cost effectively. The principle of decentralized software license validation is to use bitcoins held by the owner to represent entitlement to software. Herbert Section 5, 5.1. Herbert discloses an example where a Master bitcoin is transferred from a master address to a user address. Herbert indicates that the transaction itself confers the ownership of the bitcoin, and the end user now has the bitcoin in the user’s associated wallet. Hence, the user’s ownership of a bitcoin from master address confers entitlement to the Software application, and is a transaction publicly verifiable on the blockchain. Herbert Section 5.1.
Kakavand et al. (US 2018/0341648 A1) discloses a system and method that relates to the construction, processing, storage, and management of digital contracts. Kakavand [0002]. Kakavand indicates that counter-parties construct a contract specifying contract constraints. The contract is then stored by the system with metadata in a private repository (e.g., a distributed version control system) that is accessible via a URL to entities with the necessary credentials. The system and method also stores contract data and metadata on a Distributed Ledger. The system and method generates and submits records that contain the encoded URL and a reference to the contract data. For example, the system and method generates and submits Bitcoin transactions that contain the encrypted URL and cryptographic hash of the contract data. These records are subsequently placed on a Distributed Ledger, e.g., on the Bitcoin Blockchain. Kakavand [0041]; [0055]; [0063-0064].
Yago (US 2015/0206106 A1) discloses a method that receives a contract and specific tracking instructions. A monitoring module surveys the public ledger for specific words, keys, identifiers and/or events (e.g., specific asset transfer types). When the determination is positive, another module will be notified. When the determination is negative, it will be further determined whether the contract has expired. Yago [0069-0070].
Van Rooyen et al. (US 2015/0120567 A1) discloses a method that monitors a shared public ledger to determine whether a transaction against a store of value has occurred. If it is determined that a transaction against a store of value has occurred, a restricted item is designated as accessed by a third party. Van Rooyen [0026-0027].
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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