DETAILED ACTION
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.
This Office Action is in response to the communication filed on 1/10/2025.
Claims 1-15 are pending for consideration.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/9/2025, 9/4/2025 and 6/15/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 2-13 are objected to because of the following informalities:
Regarding claims 2-13, claims 2-13 recite the limitation “A method according to claim”. It should be changed to “The method according to claim” for consistency. Appropriate correction is required.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12231574. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose the same subject matter, such as, a method in accordance with the invention may be used for associating or linking data stored within (separate/different) blockchain transactions to enable the identification, retrieval and/or sharing of data stored therein. Additionally, or alternatively, it facilitates identification of transactions (TX) in a blockchain which store content/data that needs to be shared, transmitted, stored and/or accessed by a user. Such a method comprises the step of mapping a mnemonic to: 1) a public key (PK) associated with the transaction (TX); and 2) the transaction ID (TXID) of the transaction (TX).
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 19016857
Patent Application 12231574
Claim 1:
A method of identifying a transaction (TX) in a blockchain having a blockchain protocol, the method comprising the step of: mapping a mnemonic to a unique index specified by a blockchain-based search protocol, the unique index comprising a combination of: a public key (PK) associated with the transaction (TX) and comprising a portion of text that can be interpreted or understood directly by a human user; and a transaction ID (TXID) of the transaction (TX) that is a required part of the blockchain protocol.
Claim 1:
A computer-implemented method of identifying a blockchain transaction (TX) in a blockchain having a blockchain protocol, and the blockchain transaction comprising: i) a transaction ID (TXID) that is a required part of the blockchain protocol, and ii) a search protocol flag indicative that the blockchain transaction is formed in accordance with a blockchain-based search protocol; the method comprising the steps of: using a computer system to map a mnemonic to a unique index for identifying the blockchain transaction, and the unique index being specified by the blockchain-based search protocol; and identifying, using a computer-implemented search application, the blockchain transaction on the blockchain based on the search protocol flag and the unique index that maps to the mnemonic, wherein the search protocol flag and the unique index are provided in an output of the blockchain transaction, and the unique index comprises a combination of: a public key (PK) associated with the blockchain transaction (TX); and the transaction ID (TX.sub.ID) of the blockchain transaction (TX).
Claim 5: The method according to claim 1, wherein: i) the public key (PK) comprises a human-readable prefix; and/or ii) the unique index and/or flag is provided in the output following an OP_RETURN opcode or opcode for marking the output as invalid for subsequent use as an input to a subsequent blockchain transaction.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 Statutory Category:
Claims 1-15 are directed to a process.
Step 2A Prong 1 Judicial exception:
The following claim limitations have been identified as reciting a Mental Process organizes human activities.
Claim 1: mapping a mnemonic to a unique index specified by a blockchain-based search protocol, the unique index comprising a combination of:
a public key (PK) associated with the transaction (TX) and comprising a portion of text that can be interpreted or understood directly by a human user; and
a transaction ID (TXID) of the transaction (TX) that is a required part of the blockchain protocol.
under the broadest reasonable interpretation, the claims recite the abstract idea of storing, finding and sharing content using a human-friendly mnemonic or name, rather than only by a long transaction hash. Therefore, the claims fall under “commercial or legal interactions” relating to certain methods of organizing human activity and also falls under “concepts performed in the human mind” relating to a “Mental processes” i.e. including an observation, evaluation, judgment, opinion.
Step 2A Prong 1 Judicial exception:
This judicial exception is not integrated into a practical application because the combination of additional element(s) of claims 1 and 14-15, “a blockchain protocol”, “a human user”, “a computer-implemented system”, “memory”, “a processor” and “a non-transitory computer-readable storage medium” for mapping a mnemonic to a unique index specified by a blockchain-based search protocol are recited at a high level of generality i.e., as a generic processor performing a generic computer function of processing data. These additional elements describe how to generally “apply” the judicial exception in a computer environment to automate the process without providing significantly more. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea, see MPEP 2106.05 (f).
The claim(s) does/do not include additional elements individually or in combination that are sufficient to amount to significantly more than the judicial exception because as discussed with respect to Step 2A Prong Two, the additional elements in the claim, as mentioned above, amount to no more than mere instructions to “apply” the judicial exception using a generic computer component. The steps in the claims are all well-understood, routine and conventional in the realm of data storage, access, retrieval and processing, and more particularly to such data-related activities on a blockchain.
Step 2B Significantly more:
The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim is ineligible. Independent claims 14 and 15 are recite analogous limitations and interpreted under the same premise.
The dependent claims 2-15 provide further descriptive limitations of elements. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the claimed invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. The claims further limit the abstract idea without significantly more. For these reasons, claims 2-15 are ineligible under 35 USC 101.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Phan et al. (US 20150269570) (hereinafter Phan) in view of Hamel et al. (US 20180062835) (hereinafter Hamel).
Regarding claim 1, Phan discloses a method of identifying a transaction (TX) in a blockchain having a blockchain protocol, the method comprising the step of: mapping a mnemonic to (Phan: paragraphs 0005 and 0044-0046, “the label generation module 520 can generate the first label 155”… “first label 155 can include information in the form of text, a bar code, a QR code, an NFC tag, RFID, or any other representation of the information”): a public key (PK) associated with the blockchain transaction (TX) and comprising a portion of text that can be interpreted or understood directly by a human user (Phan: paragraphs 0005 and 0044-0046, “cause the first transaction ID, the manufacturer's signature and the first public key to be recorded in the digital transaction chain (and in the digital block chain as a block chain insert), thus effectively assigning the first transaction ID to whomever controls first secret key 160. The manufacturer-digital signature is received by authentication server 110 for inclusion with the first item information and the first transaction ID in the first label 155”); and a transaction ID (TXID) of the transaction (TX) that is a required part of the blockchain protocol (Phan: paragraphs 0044-0045, “cause the first transaction ID, the manufacturer's signature and the first public key to be recorded in the digital transaction chain (and in the digital block chain as a block chain insert), thus effectively assigning the first transaction ID to whomever controls first secret key 160. The manufacturer-digital signature is received by authentication server 110 for inclusion with the first item information and the first transaction ID in the first label 155”).
Phan does not explicitly disclose with following limitations which are disclosed by Hamel, mapping a mnemonic to a unique index specified by a blockchain-based search protocol (Hamel: paragraph 0133, “the transactions are grouped by request ID for complete sets. For example, transactions that are part of a complete set according to a request identifier (ID) are grouped together. In 1008, a Merkle tree is generated. For example, a request key transaction, a release key transaction, and a consume key transaction are grouped by request identifier (e.g., as associated with a request to store data or a request to retrieve data) and are hashed and stored in a Merkle tree.”).
Phan and Hamel are analogous art because they are from the same field of endeavor, blockchain network. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Phan and Hamel before him or her, to modify the system of Phan to include mapping a mnemonic to a unique index for identifying a blockchain transaction of Hamel. The suggestion/motivation for doing so would have been to securely store the information by enforcing policies to manage the users and the use of the data (Hamel: paragraph 0001).
Hamel further discloses the unique index comprising a combination of: a public key (PK) associated with the transaction (TX) (Hamel: paragraph 0133, “the transactions are grouped by request ID for complete sets. For example, transactions that are part of a complete set according to a request identifier (ID) are grouped together. In 1008, a Merkle tree is generated. For example, a request key transaction, a release key transaction, and a consume key transaction are grouped by request identifier (e.g., as associated with a request to store data or a request to retrieve data) and are hashed and stored in a Merkle tree. In some embodiments, a Merkle tree is a tree in which every non-leaf node is labeled with the hash of the labels or values (in case of leaves) of its child nodes. Merkle trees allow efficient and secure verification of the contents of large data structures”).
Regarding claim 14, the claim 14 discloses a system claim that is substantially equivalent to the method of claim 1. Therefore, the arguments set forth above with respect to claim 1 are equally applicable to claim 14 and rejected for the same reasons.
Regarding claim 15, the claim 15 discloses a medium claim that is substantially equivalent to the method of claim 1. Therefore, the arguments set forth above with respect to claim 1 are equally applicable to claim 15 and rejected for the same reasons.
Regarding claim 2, Phan as modified discloses wherein the mapping step comprises: using the public key (PK) and the transaction ID (TXID) as operands to an operation to produce an output, and mapping the mnemonic to the output. (Hamel: paragraph 0133); and mapping the mnemonic to the output (Hamel: paragraphs 0007 and 0133, “the transactions are grouped by request ID for complete sets. For example, transactions that are part of a complete set according to a request identifier (ID) are grouped together. In 1008, a Merkle tree is generated. For example, a request key transaction, a release key transaction, and a consume key transaction are grouped by request identifier (e.g., as associated with a request to store data or a request to retrieve data) and are hashed and stored in a Merkle tree.”). The same motivation to modify Phan in view of Hamel, as applied in claim 1 above, applies here.
Regarding claim 3, Phan as modified discloses further comprising the step of: hashing the output prior to mapping the mnemonic (Hamel: paragraphs 0007 and 0133, “the transactions are grouped by request ID for complete sets. For example, transactions that are part of a complete set according to a request identifier (ID) are grouped together. In 1008, a Merkle tree is generated. For example, a request key transaction, a release key transaction, and a consume key transaction are grouped by request identifier (e.g., as associated with a request to store data or a request to retrieve data) and are hashed and stored in a Merkle tree.”). The same motivation to modify Phan in view of Hamel, as applied in claim 1 above, applies here.
Regarding claim 4, Phan as modified discloses wherein the operation is a concatenation operation (Phan: paragraph 0046, “an example set of label data is depicted according to embodiments of the invention. The example set of label data includes description 305, serial number 310, number of recommended uses/sales 315, transaction ID 320, transaction index 325, and digital signature 330. Description 305 can include, for example, the name of the manufacturer, the name of the item, the item style/type, item creation and/or expiration date, etc. Transaction index 325 can be included, for example, when multiple copies of the same item are produced”).
Regarding claim 6, Phan as modified discloses further comprising the step of: searching the blockchain for the transaction (TX) (Phan: paragraph 0053, “in accordance with embodiments of the invention, authentication server 110, using the configured processor 180, can query database of digital block chains by searching for the first transaction ID 320, which was recorded in the digital block chain at step 220 above”).
Regarding claim 7, Phan as modified discloses further comprising the step of identifying one or more further transactions having the same public key as the transaction (Tx) (Phan: paragraphs 0007 and 0046, “Each digital block chain includes at least one link that defines a temporal relationship between an initial transaction block that identifies the item or service and one or more subsequent transaction blocks that identify the same item or service”… “Transaction index 325 can be included, for example, when multiple copies of the same item are produced. In this case, all other label data may be the same, thus making a hash of the label data the same for each copy. By including a transaction index in the set of label data, and changing (e.g., incrementing) the transaction index for each set of label data, the manufacturer's digital signature of each label is guaranteed to be unique to that label, and thus unique to that item”).
Regarding claim 8, Phan as modified discloses wherein: the public key of the transaction (Tx) is provided in an input of the transaction (Tx) (Phan: see figure 2A; and paragraphs 0041-0044, “the key generation module 510, can generate a first secret key (e.g., secret key 160) and a corresponding first public key for the item, and provide the first public/secret key pair to manufacturer server 120. It should be noted that one set of item information may require the generation of multiple public/secret key pairs. For example, if a manufacturer is producing an order of five boxes, with each box containing two of the items, authentication server 110 can be configured to automatically generate ten public/secret key pairs, one pair for each item, and provide the public/secret key pairs to manufacturer server 12”); and the public key of the one or more further transactions is provided in an input of the one or more further transactions (Phan: see figure 2A, item 220, Transaction ID).
Regarding claim 9, Phan as modified discloses wherein the public key of the transaction (Tx) is provided within an input of the transaction (Phan: see figure 2A, item 220, Transaction ID); and the public key of the one or more further transactions is provided in an output of the one or more further transactions ( Phan: see figure 2A; and paragraphs 0041-0044, “the key generation module 510, can generate a first secret key (e.g., secret key 160) and a corresponding first public key for the item, and provide the first public/secret key pair to manufacturer server 120. It should be noted that one set of item information may require the generation of multiple public/secret key pairs. For example, if a manufacturer is producing an order of five boxes, with each box containing two of the items, authentication server 110 can be configured to automatically generate ten public/secret key pairs, one pair for each item, and provide the public/secret key pairs to manufacturer server 12”).
Regarding claim 10, Phan as modified discloses wherein the public key of the transaction (Tx) is provided within an output of the transaction (Phan: see figure 2A); and he public key of the one or more further transactions is provided in an input of the one or more further transactions (Phan: see figure 2A; and paragraphs 0041-0044, “the key generation module 510, can generate a first secret key (e.g., secret key 160) and a corresponding first public key for the item, and provide the first public/secret key pair to manufacturer server 120. It should be noted that one set of item information may require the generation of multiple public/secret key pairs. For example, if a manufacturer is producing an order of five boxes, with each box containing two of the items, authentication server 110 can be configured to automatically generate ten public/secret key pairs, one pair for each item, and provide the public/secret key pairs to manufacturer server 12”).
Regarding claim 11, Phan as modified discloses wherein: the public key of the transaction (Tx) is provided in an output of the transaction (Phan: paragraph 0048, “first label 155 is provided by the manufacturer. In some implementations, the label 155 is affixed to a second portion of the item so as to be visible and/or accessible without having to be revealed. In some embodiments, affixing may include stitching, sticking, fastening, embroidering, printing, inserting, or otherwise placing first label 155 in a location within, on, or proximate to item 150 such that first label 155 is visible and/or readily scannable.”); and the public key of the one or more further transactions is provided in an output of the one or more further transactions (Phan: paragraph 0048, “first label 155 is provided by the manufacturer. In some implementations, the label 155 is affixed to a second portion of the item so as to be visible and/or accessible without having to be revealed. In some embodiments, affixing may include stitching, sticking, fastening, embroidering, printing, inserting, or otherwise placing first label 155 in a location within, on, or proximate to item 150 such that first label 155 is visible and/or readily scannable.”).
Regarding claim 12, Phan as modified discloses comprising the step of :inspecting the transaction (TX) and the one or more further transactions to determine which is the most recent transaction in accordance with the protocol of the blockchain (Phan: paragraphs 0053 and 0066, “can query database of digital block chains by searching for the first transaction ID 320, which was recorded in the digital block chain at step 220 above. Similarly, the configured processor can verify that the manufacturer-digital signature 330 is included in the digital block chain. If either first transaction ID 320 or manufacturer-digital signature 330 are not located by authentication server 110 in the digital block chain, then, in accordance with some embodiments of the invention, at step 260, authentication server 110 will reject the first authentication request.”).
Regarding claim 13, Phan as modified discloses wherein the most recent transaction is determined by: block height; or proof of work; or transaction ordering within a block (Phan: paragraph 0070, “hashing also provides "proof of work" and deters the introducing of fake transactions by any one individual, as providing the requisite amount of proof of work would require out-pacing the entire peer-to-peer network, which would involve spending a large amount of time and require prohibitive computing power.” ).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Phan in view of Hamel, and further in view of ZHANG (US 20200044860) (hereinafter ZHANG).
Regarding claim 5, Phan in view of Hamel does not explicitly disclose the following limitation which is disclosed by ZHANG, wherein: the public key (PK) comprises a human-readable prefix; Phan in view of Hamel and ZHANG are analogous art because they are from the same field of endeavor, data protection. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Phan in view of Hamel and ZHANG before him or her, to modify the system of Phan in view of Hamel to include a public key that includes a human-readable prefix of ZHANG. The suggestion/motivation for doing so would have been to ensure that transactions can only be requested by their rightful owners (ZHANG: paragraph 0015).
Conclusion
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/TRANG T DOAN/Primary Examiner, Art Unit 2431
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