DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This is a first office action on the merits in response to the application filed on January 7, 2025, a continuation of U.S. Application No. 17/431,099.
Claims 1-19 are pending and have been examined.
Priority
The 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.
Information Disclosure Statement
The information disclosure statements (IDSs), submitted on 01/21/2025, are in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 2, 4, 14, 16, and 19 are objected to because of the following informalities:
Claim 2 recites “the second verification resource is further operative to receive, from the first verification resource, the complete Merkle path of the at least one blockchain transaction and use the complete Merkle path to verify a Merkle proof for the at least one blockchain transaction.” The phrasing, “the complete Merkle path,” should be changed to “a complete Merkle path,” because it is cited for the first time.
Claim 4 recites “wherein at least one of the first or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet or an SPV wallet.” The phrasing, “digital wallet,” should be changed to “a digital wallet.”
Claim 14 recites “or ii) the first and/or second verification resources are or comprise at least one of a smart card, digital wallet,-a lightweight wallet, or SPV wallet.” The phrasings, “digital wallet” and “SPV wallet,” should be changed to “a digital wallet” and “an SPV wallet,” respectively. Additionally, the hyphen “-” should be removed.
Claim 16 recites “wherein the executable instructions, as a result of being executed by a processor of a computer system, cause the computer system to further perform the step of sending a transaction to the blockchain upon successful verification of a Merkle proof for the at least one blockchain transaction (Tx1).” Claim 16 depends on claim 15, and claim 15 discloses “[a] non-transitory computer-readable storage medium having stored thereon executable instructions that, as a result of being executed by a processor of a computer system, cause the computer system to perform the steps of.” Therefore, the phrasing, “a processor of a computer system,” should be changed to “the processor of the computer system” for more clarity.
Claim 19 recites “or ii) the first and/or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet, or SPV wallet.” The phrasings, “digital wallet” and “SPV wallet,” should be changed to “a digital wallet” and “an SPV wallet,” respectively.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a second verification resource in claims 1-3, 5, and 9
a first verification resource in claim 9
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The specification discloses that the first and/or second verification resources may be or comprise a smart card, a digital wallet, a lightweight and/or SPV wallet (see paragraph [0044] of the specification). It is unclear whether a first verification resource and a second verification resource are hardware, firmware, or software.
If the applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,243,056 in view of Androulaki et al. (“Channels: Horizontal Scaling and Confidentiality on Permissioned Blockchains with Application on Hyperledger Fabric,” September 2018).
Claim 1:
Claim 1 of ’056 patent discloses a first verification resource comprising: complete transaction data relating to at least one blockchain transaction (Tx1) that comprises an unspent output that is spendable by an input of a payment transaction (Tx3), wherein the payment transaction is arranged to transfer the asset to the transferee; and a second verification resource operative to :i) at least one of receive and/or request, from the first verification resource, the complete transaction data relating to the at least one blockchain transaction (Tx1).
Androulaki discloses a verification resource operative to: query a mempool of the blockchain to determine whether the unspent output of the at least one blockchain transaction (Tx1) is part of the mempool; and accept the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is determined to be part of the mempool, or reject the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is not determined to be part of the mempool. (See Section 3 Asset Management in a Single Channel, pages 4-7, “[t]he UTXO pool is the list of transaction outputs that have not yet been spent…. To validate a transaction, peers check if (1) the transaction inputs refer to outputs that appear in the UTXO pool as well as (2) that the transaction’s creators own these outputs…. After these checks are successfully completed, the peers mark the outputs matching the transaction’s inputs as spent and add to the pool the freshly created outputs. Hence, the pool consistently includes ‘unspent’ outputs…. ain ← ComputeInput(out, secout, pool), where, on input an asset pool pool, an output out, and its respective secrets, the algorithm returns a representation of the asset that can be used as transaction input ain. In Bitcoin, an input of an output is a direct reference to the latter, i.e., it is constructed to be the hash of the transaction where the output appeared in the ledger, together with the index of the output…. pool′ ← ValidateTx(nspace, tx, pool), that validates transaction inputs w.r.t. pool pool, and their consistency with transaction outputs and namespace nspace…. Validity requires that a call to pool′ ← ValidateTx(tx, pool) succeeds, i.e. pool′ ̸= ⊥, and that pool′ = (pool ∖ {out}) ∪ {out′}…. Let out𝐴 ∈ 𝑝𝑜𝑜𝑙𝑐ℎ be an output owned by Alice, corresponding a description ⟨𝑛𝑠𝑐ℎ, 𝐴, 𝑡, 𝑣⟩). For Alice to move ownership of this asset to Bob, it would create a transaction tx𝑚𝑜𝑣𝑒 ← CreateTx(sec𝐴; ain𝐴, out𝐵), where ain𝐴 is a reference of out𝐴 in 𝑝𝑜𝑜𝑙𝑐ℎ.… At validation of 𝑡𝑥𝑚𝑜𝑣𝑒, 𝑝𝑜𝑜𝑙𝑐ℎ is updated to no longer consider out𝐴 as unspent…. Balance also follows from the serial execution of transactions that will spend the out the first time and return ⊥ for all subsequent calls (there is no out in the pool).” These citations indicate that the UTXO pool is searched for an unspent output of a previous transaction, which is referred by an input of the new transaction, and that the new transaction is accepted if the unspent output of the previous transaction is located in the UXO pool; otherwise, the new transaction is rejected.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the subject matter of Androulaki in the ’056 patent system. Moreover, in order to improve the efficiency of the ’056 patent system, one of ordinary skill in the art would have been motivated to verify a new transaction by checking whether the referred UTXO of a previous transaction is stored in the UTXO set, so that the new transaction can be effectively validated.
Claim 10: Although claim 10 of this application and claim 7 of ’056 patent are not identical, the claimed subject matter of this application is not patently distinct from ’056 patent in view of Androulaki.
Claim 15: Although claim 15 of this application and claim 10 of ’056 patent are not identical, the claimed subject matter of this application is not patently distinct from ’056 patent in view of Androulaki.
The mapping of claims 2-9, 11-14, 16-19 of this application with claims 2-6, 8-9, and 11-12 of ’056 patent is as follow:
This Application
Patent No. 12,243,056
Claim 2:
the second verification resource is further operative to receive, from the first verification resource, the complete Merkle path of the at least one blockchain transaction and use the complete Merkle path to verify a Merkle proof for the at least one blockchain transaction.
Claim 1:
the second verification resource is operative to: …
and the complete Merkle path for the at least one blockchain transaction (Tx1); use the Merkle path and the complete transaction data relating to the at least one blockchain transaction (Tx1) to provide a Merkle proof for the at least one transaction
Claim 3:
wherein the second verification resource is further operative to send a transaction to the blockchain upon successful verification of the Merkle proof.
Claim 1:
upon successful verification of the Merkle proof, send the payment transaction (Tx3) to the blockchain network to transfer the asset from the transferor to the transferee.
Claim 4:
wherein at least one of the first or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet or an SPV wallet.
Claim 2:
wherein at least one of the first or second verification resources are or comprise at least one of a smart card, digital wallet and lightweight wallet or an SPV wallet.
Claim 5:
wherein the second verification resource is operative to at least one of receive or request, from the first verification resource, the complete transaction data and the complete Merkle path using an off-chain communication.
Claim 3:
wherein the second verification resource is operative to at least one of receive or request, from the first verification resource, the complete transaction data and the complete Merkle path for the at least one transaction (Tx) using an off-chain communication.
Claim 6:
use the complete Merkle path to verify a Merkle proof for the at least one blockchain transaction and, upon successful verification, send a transaction to the blockchain.
Claim 4:
use the complete Merkle path to verify a Merkle proof for the at least one blockchain transaction and, upon successful verification, send the payment transaction (Tx3) to the blockchain network.
Claim 7:
wherein the system further comprises a plurality of second verification resources, and a coordination component operative to communicate with the plurality of second verification resources.
Claim 5:
wherein the system further comprises a plurality of second verification resources, and a coordination component operative to communicate with the plurality of second verification resources.
Claim 8:
wherein the first verification resource is the transferor of the asset and the second verification resource is the transferee of the asset.
Claim 1:
to facilitate a transfer of an asset on or over a blockchain that is maintained by a blockchain network between a first verification resource of a transferor and a second verification resource of a transferee
Claim 9:
wherein the second verification resource is also operative to at least one of receive or request from the first verification resource, or the first verification resource is also operative to send to the second verification resource at least one of: a signature for spending an output of the at least one blockchain transaction; a transfer value; or a public key address.
Claim 6:
wherein the second verification resource is also operative to at least one of receive or request from the first verification resource, or the first verification resource is also operative to send to the second verification resource at least one of: a signature for spending an output of the at least one blockchain transaction; a transfer value; or a public key address.
Claim 11:
sending the payment transaction (Tx3) to the blockchain upon successful verification of a Merkle proof for the at least one blockchain transaction (TxI).
Claim 7:
and use the Merkle proof to verify, at the second verification resource and without interaction with the blockchain network, that the at least one blockchain transaction (Tx1) has been processed by the blockchain network and mined into a block on the blockchain; sending the payment transaction (Tx3) to the blockchain network upon successful verification of the Merkle proof, to transfer the asset from the transferor to the transferee.
Claim 12:
wherein the following steps are performed off-chain: i) verification of the Merkle proof; and/or ii) receiving or requesting the complete transaction data and Merkle path from the first verification resource.
Claim 8:
wherein the following steps are performed off-chain: i) verification of the Merkle proof; and/or ii) receiving or requesting the complete transaction data and Merkle path of the at least one transaction (Tx1) from the first verification resource.
Claim 13:
wherein the first verification resource is the transferor of the asset and the second verification resource is the transferee of the asset.
Claim 7:
to facilitate a transfer of an asset on or over a blockchain that is maintained by a blockchain network between a first verification resource of a transferor and a second verification resource of a transferee
Claim 14:
wherein at least one of: i) the second verification resource is operative to send the payment transaction to the blockchain upon successful verification of the Merkle proof;
or ii) the first and/or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet, or SPV wallet.
Claim 1:
and use the Merkle proof to verify, at the second verification resource and without interaction with the blockchain network, that the at least one blockchain transaction (Tx1) has been processed by the blockchain network and mined into a block on the blockchain; sending the payment transaction (Tx3) to the blockchain network upon successful verification of the Merkle proof, to transfer the asset from the transferor to the transferee.
Claim 9:
wherein the first and/or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet, or SPV wallet.
Claim 16:
sending a transaction to the blockchain upon successful verification of a Merkle proof for the at least one blockchain transaction (Tx1).
Claim 10:
using the complete Merkle path and the complete transaction data of the at least one transaction (Tx1) to provide a Merkle proof for the at least one blockchain transaction … sending a further transaction (Tx3) to the blockchain upon successful verification of the Merkle proof
Claim 17:
wherein the following steps are performed off-chain: i) verification of the Merkle proof; and/or ii) receiving or requesting the complete transaction data and Merkle path from the first verification resource.
Claim 11:
wherein the following steps are performed off-chain: i) verification of the Merkle proof; and/or ii) receiving or requesting the complete transaction data and complete Merkle path of the at least one transaction (Tx1) from the first verification resource.
Claim 18:
wherein the first verification resource is a transferor of an asset and the second verification resource is a transferee of the asset.
Claim 10:
receiving, at a second verification resource of an asset transferee: i) data relating to a payment transaction (Tx3) that comprises an output that transfers the asset to the transferee on or over a blockchain … the payment transaction to transfer the asset from the transferor to the transferee over the blockchain network.
Claim 19:
wherein at least one of: i) the second verification resource is operative to send the payment transaction to the blockchain upon successful verification of the Merkle proof;
or ii) the first and/or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet, or SPV wallet.
Claim 1:
verifying, at the second verification resource and without interaction with the blockchain network, that the at least one blockchain transaction (Tx1) has been processed by the blockchain network … sending a further transaction (Tx3) to the blockchain upon successful verification of the Merkle proof
Claim 12:
wherein the first and/or second verification resources are or comprise at least one of a smart card, digital wallet, a lightweight wallet, or SPV wallet.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a second verification resource operative to: i) at least one of receive and/or request, from the first verification resource, the complete transaction data relating to the at least one blockchain transaction (Tx1); ii) query a mempool of the blockchain to determine whether the unspent output of the at least one blockchain transaction (Tx1) is part of the mempool; and iii) accept the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is determined to be part of the mempool, or reject the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is not determined to be part of the mempool”; claim 2 recites “wherein: the second verification resource is further operative to receive, from the first verification resource, the complete Merkle path of the at least one blockchain transaction and use the complete Merkle path to verify a Merkle proof for the at least one blockchain transaction”; claim 3 recites “wherein the second verification resource is further operative to send a transaction to the blockchain upon successful verification of the Merkle proof”; claim 5 recites “wherein the second verification resource is operative to at least one of receive or request, from the first verification resource, the complete transaction data and the complete Merkle path using an off-chain communication”; and claim 9 recites “wherein the second verification resource is also operative to at least one of receive or request from the first verification resource, or the first verification resource is also operative to send to the second verification resource at least one of: a signature for spending an output of the at least one blockchain transaction; a transfer value; or a public key address.” The specification does not provide an adequate structure to perform the claimed functions listed above. The specification does not demonstrate that the applicant has made an invention that achieves the claimed function because the invention is not described in sufficient details such that one of ordinary skill in the art can reasonably conclude that the inventor has possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 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 1 recites “a second verification resource operative to: i) at least one of receive and/or request, from the first verification resource, the complete transaction data relating to the at least one blockchain transaction (Tx1); ii) query a mempool of the blockchain to determine whether the unspent output of the at least one blockchain transaction (Tx1) is part of the mempool; and iii) accept the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is determined to be part of the mempool, or reject the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is not determined to be part of the mempool”; claim 2 recites “wherein: the second verification resource is further operative to receive, from the first verification resource, the complete Merkle path of the at least one blockchain transaction and use the complete Merkle path to verify a Merkle proof for the at least one blockchain transaction”; claim 3 recites “wherein the second verification resource is further operative to send a transaction to the blockchain upon successful verification of the Merkle proof”; claim 5 recites “wherein the second verification resource is operative to at least one of receive or request, from the first verification resource, the complete transaction data and the complete Merkle path using an off-chain communication”; and claim 9 recites “wherein the second verification resource is also operative to at least one of receive or request from the first verification resource, or the first verification resource is also operative to send to the second verification resource at least one of: a signature for spending an output of the at least one blockchain transaction; a transfer value; or a public key address.” The specification discloses that the first and/or second verification resources may be or comprise a smart card, a digital wallet, a lightweight and/or SPV wallet (see paragraph [0044] of the specification). It is unclear whether a first verification resource and a second verification resource are hardware, firmware, or software. If the digital wallet is a software wallet, it is unclear how the included software/instructions are executed because the system claim does not comprise any processors to execute software/instructions.
The limitations, which recite a second verification resource in claims 1-3, 5, and 9 and a first verification resource in claim 9, invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which structures perform the claimed functions. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If the applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, the applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In this instance, claims 1-9 are directed to a blockchain implemented system, claims 10-14 are directed to a method, and claims 15-19 are directed to a non-transitory computer-readable storage medium. Therefore, claims 1-19 fall within the four statutory categories of invention.
Claim 1 as a whole is directed to processing a payment transaction. In particular, the claim recites receiving and/or requesting transaction data, querying for the unspent output of a previous transaction, and accepting or rejecting the payment transaction based on the query result. In other words, the claim falls under the “Certain Methods of Organizing Human Activity” and/or “Mental Processes” groupings of abstract ideas in Step 2A Prong One (MPEP 2106.04(a)(d)) because the claim involves the steps for processing a payment transaction based on the validation, which is a process related to fundamental economic practices and/or commercial interactions. Additionally, the steps of querying for the unspent output and accepting or rejecting the payment transaction based on the query result can be performed by the human mind. More specifically, the following underlined claim elements recite an abstract idea while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
Claim 1 recites “[a] blockchain implemented Simplified Payment Verification system operative to facilitate a transfer of an asset on a blockchain between a transferor and a transferee, comprising: a first verification resource comprising: complete transaction data relating to at least one blockchain transaction (Tx1) that comprises an unspent output that is spendable by an input of a payment transaction (Tx3), wherein the payment transaction is arranged to transfer the asset to the transferee; and a second verification resource operative to: i) at least one of receive and/or request, from the first verification resource, the complete transaction data relating to the at least one blockchain transaction (Tx1); ii) query a mempool of the blockchain to determine whether the unspent output of the at least one blockchain transaction (Tx1) is part of the mempool; and iii) accept the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is determined to be part of the mempool, or reject the payment transaction (Tx3) if the unspent output of the at least one blockchain transaction (Txl) is not determined to be part of the mempool.”
This judicial exception is not integrated into a practical application because, when analyzed under Step 2A Prong Two (MPEP 2106.04(d)), the non-underlined additional elements — a blockchain implemented SPV system, a first verification resource, a blockchain, a second verification resource, and a mempool in claim 1 — perform processing a payment transaction. These additional elements are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. Merely adding generic computer components to perform the abstract idea does not integrate the abstract idea into a practical application. Additionally, the additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. 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)); the claim does not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)); and the claim does not apply or use the abstract idea in some other meaningful ways 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. Claim 1 as a whole, judging from the additional elements individually and in combination, does not integrate the judicial exception into a practical application. Therefore, claim 1 as a whole fails to recite a practical application of the abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under Step 2B (MPEP 2106.05), using a blockchain implemented SPV system, a first verification resource, a blockchain, a second verification resource, and a mempool to perform processing a payment transaction amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the recited abstract idea. Additionally, the additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. As discussed above, taking the additional elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Therefore, the additional claim elements, when considered individually and in combination, fail to recite significantly more than the abstract idea.
Accordingly, claim 1 is rejected as being directed toward patent-ineligible subject matter.
Claim 10 recites the abstract idea similar to that discussed above in connection with claim 1. As analyzed above, the additional elements of a first verification resource, a blockchain, a second verification resource, and a mempool are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. Additionally, the additional element of a database generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claim 15 recites the abstract idea similar to that discussed above in connection with claim 1. As analyzed above, the additional elements of a non-transitory computer-readable storage medium, a computer system, a processor, a first verification resource, a blockchain, a second verification resource, and a mempool are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. Additionally, the additional element of a database generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claims 2-9, 11-14, and 16-20 have also been considered for subject-matter eligibility. However, these claims fail to recite patent-eligible subject matter for the following reasons:
Claim 2 recites receiving the complete path of the at least one transaction and using the complete Merkle path to Merkle verify a proof for the at least one transaction, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” and/or “Mental Processes” groupings of abstract ideas. The additional elements of a first verification resource and a second verification resource are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. The additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claims 3 and 11 recite sending a transaction upon successful verification of the Merkle proof, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” and/or “Mental Processes” groupings of abstract ideas. The additional element of a second verification resource is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claim 4 recites an additional element of wherein at least one of the first or second verification resources are or comprise at least one of a smart card, a digital wallet, a lightweight wallet or an SPV wallet. The additional element fails to recite patent-eligible subject matter as it simply describes the characteristics of the first or second verification resource. The additional element is insufficient to integrate the abstract idea into a practical application and does not offer significantly more than the abstract idea because the additional element merely recites additional instructions to implement the abstract idea.
Claim 5 recites receiving or requesting the complete transaction data and the complete Merkle path using an off-chain communication, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” grouping of abstract ideas. The additional elements of a first verification resource and a second verification resource are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claim 6 recites using the complete Merkle path to verify a Merkle proof for the at least one transaction and, upon successful verification, sending a transaction, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” and/or “Mental Processes” groupings of abstract ideas. The additional element of a system is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claim 7 recites an additional element of wherein the system further comprises a plurality of second verification resources, and a coordination component operative to communicate with the plurality of second verification resources. The additional element fails to recite patent-eligible subject matter as it simply describes the characteristics of the system. The additional element is insufficient to integrate the abstract idea into a practical application and does not offer significantly more than the abstract idea because the additional element merely recites additional instructions to implement the abstract idea.
Claims 8, 13, and 18 recite an additional element of wherein the first verification resource is the transferor of the asset and the second verification resource is the transferee of the asset. The additional element fails to recite patent-eligible subject matter as it simply describes the characteristics of the first verification resource and the second verification resource. The additional element is insufficient to integrate the abstract idea into a practical application and does not offer significantly more than the abstract idea because the additional element merely recites additional instructions to implement the abstract idea.
Claim 9 recites receiving or requesting, or sending at least one of: a signature for spending an output of the at least one transaction; a transfer value; or a public key address, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” grouping of abstract ideas. The additional elements of a first verification resource and a second verification resource are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. The additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claims 12 and 17 recite performing verification of the Merkle proof and/or receiving or requesting the complete transaction data and Merkle path off-chain, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” grouping of abstract ideas. The additional element of a first verification resource is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The additional element does not integrate the judicial exception into a practical application and fails to recite significantly more than the abstract idea.
Claims 14 and 19 recite sending the payment transaction upon successful verification of the Merkle proof, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” grouping of abstract ideas. The additional element of a second verification resource is recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. Additionally, claim 14 recites an additional element of wherein the first and/or second verification resources are or comprise at least one of a smart card, a digital wallet, a lightweight wallet, or an SPV wallet. This additional element fails to recite patent-eligible subject matter as it simply describes the characteristics of the first verification resource and/or the second verification resource. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claim 16 recites sending a transaction upon successful verification of a Merkle proof for the at least one transaction, which further limits the identified abstract idea and falls under the “Certain Method of Organizing Human Activity” and/or “Mental Processes” groupings of abstract ideas. The additional elements of a processor and a computer system are recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using generic computer components. The additional element of a blockchain generally links the use of the judicial exception to a particular technological environment or field of use. These additional elements do not integrate the judicial exception into a practical application and fail to recite significantly more than the abstract idea.
Claim Rejections - 35 USC § 103
In the event the determination of the status