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 .
Priority
Continuation
This application is a continuation application of U.S. application no. 17/860,553 filed on July 8, 2022, now U.S. Patent 12,238,209 (“Parent Application”) which is a continuation-in-part (“CIP”) application of U.S. application no. 16/834,954 filed on March 30, 2020, now U.S. Patent 11,556,909. See MPEP §201.08. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Applicant’s claim for the benefit of U.S. provisional patent application 62/888,326 filed August 16, 2019 and U.S. provisional patent application 63/220,089 filed July 9, 2021 under 35 U.S.C. 119(e) is acknowledged.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/834,954, and U.S. provisional patent application 62/888,326, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The algorithm recited for the witness and the interaction between the two user devices that is being claimed does not appear to be supported by the disclosure of provisional application 62/888,326 or non-provisional patent application 16/834,954. The earliest date that Examiner can assign to this application is the disclosure provided by provisional patent application 63/220,089 filed on July 9, 2021. Therefore for prior art purposes the effective filing date is determined to be July 9, 2021.
Information Disclosure Statement
The information disclosure statements (IDS) were submitted on February 3, 2025; August 19, 2025 and September 12, 2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the second limitation of claim 1 recites “…verifying, by the server computer, an identify of the second user device” where it is clear that the intended word is “identity”. Appropriate correction is required.
Claim Interpretation
The word “witness” is used in claims 1, 4, 8, 9, 11 and 17. The written disclosure recites in paragraph 0037 “A “witness” can include evidence or proof of something. In some embodiments, a “witness” can be a term used in cryptography, that can be a tuple (or other value) that can be used to verify an expected result. A witness can be input into a condition that can evaluate the witness. For example, a witness can include proof of an event, such as transferring a resource during an interaction. A witness can act as sufficiently satisfying proof to one or more parties (e.g., two or more parties) involved in an interaction”. Paragraph 0038 recites “[0038] A “condition” can include a state of affairs that must exist or be brought about before something else is possible or permitted. A condition can be a condition function that evaluates whether or not something is permitted. A condition can accept a witness as input. A condition can be evaluated to determine whether or not a witness satisfies the condition. In some cases, a condition can be a mathematical function that takes a witness as an input and outputs a value of 1 if the witness satisfies the condition and outputs a value other than 1 if the witness does not satisfy the condition”.
Examiner found two other definitions that align with this definition.
From https://crypto.com/us/glossary/witness:
Witness
In cryptocurrency, a ‘witness’ attests to the authenticity of a specific transaction in the
form of a signature.
Key Takeaway
A ‘witness’ is a transaction signature attesting to the authenticity of a specific transaction, verifying a cryptographic claim.
From Franceschini “A Guide to Zero Knowledge Proofs”, Medium, April 21, 2023, 34 pages, retrieved from https://medium.com/@Luca_Franceschini/a-guide-to-zero-knowledge-proofs-f2ff9e5959a8:
Witness, Prover and Verifier
The witness is a piece of information that serves as evidence to prove the truth of a statement, as it satisfies a particular mathematical relation or constraint specified by the statement being proven.
In a ZKP, the prover uses the witness to construct a proof that demonstrates the truth of the statement without revealing any information about the witness. The verifier then checks the proof and confirms that the statement is true, without ever learning the contents of the witness.
As a circuit is used to represent the mathematical relation or constraint that needs to be satisfied for a statement to be true, the witness is usually taken as an input value. The output of the circuit would be typically be ‘1’ (true) or ‘0’ (false), depending on whether the input witness satisfies the constraints specified by the circuit.
Based on the three preceding definitions Examiner is deeming the broadest reasonable interpretation of the word “witness” when used in light of the specification as understood by those skilled in the art as a piece of information that serves as proof of the truth of a statement that involves a mathematical function or relation where the mathematical function or relation may involve a cryptographic function or relation. When the witness is input into the mathematical function or relation a binary output is produced such as “True/False” or “1/0” indicative as to whether or not the mathematical function or relation in light of the witness fed into the mathematical function or relation is satisfied.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12,238,209. Although the claims at issue are not identical, they are not patentably distinct from each other because the ’209 patent claims a two-device interaction wherein: a first device generates an interaction message with an amount, expiry time, and condition, the second device creates and returns a “witness” satisfying the condition, the first device verifies the witness, and if valid/timely, signs the witness and provides it to the second device, which verifies the signature and proceeds to obtain the amount. Pending element (1): Interaction message with amount/condition and a “witness” is taught; centralizing reception at a server is an obvious architectural variation (server-mediated vs. peer-to-peer). Pending element (2): Identity/authenticity checks are implicit in ’209’s use of signatures and verification; moving identity verification to the server is routine. Pending element (3): Verifying that a witness satisfies a condition is explicitly taught in ’209. Pending elements (4)–(6): Post-verification consequences (proceeding to obtain the amount) and confirmations are standard; implementing a server-side account/balance adjustment and response message is a predictable, obvious design choice in centralized systems managing balances. Therefore pending claim 1 is an obvious server-centric variant of the ‘209 interaction/witness flow.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 16 of U.S. Patent No. 11,556,909. Although the claims at issue are not identical, they are not patentably distinct from each other because the ’909 patent claims a method where a user device: a) posts a deposit transaction with value and conditions to a blockchain, b) updates local state, c) transmits a state update to a server, d) receives a “payment complete” message from the server, e) verifies the conditions by constructing a “witness” comprising the state and evaluating to a value vs. a threshold, and f) processes a server deposit transaction on the blockchain upon verification. Pending element (1): Message including amount/conditions and a “witness” is taught; ’909 expressly constructs and uses a witness to verify conditions. Having the server receive and evaluate is an obvious centralization. Pending element (2): Identity/authorization of the device is inherent in blockchain/cryptographic transactions and server messaging; adopting standard authentication at the server is routine. Pending element (3): Verifying the witness satisfies conditions is taught via evaluating witness-derived values against a threshold. Pending elements (4)–(6): ’909 includes server interaction and confirmations (payment complete); updating an online balance and sending a success response is a predictable server-side outcome in such systems. Therefore claim 1 is an obvious variation of ‘909’s witness-based condition verification with server interaction and confirmation.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10 and 16 of U.S. Patent No. 11,995,623. The ’623 patent claims a server-mediated two-party authorization flow wherein the server: a) receives a payee authorization message including a certificate tuple and payee signature, b) receives a payer authorization message including the same certificate tuple and payer signature, c) determines the tuples match, d–e) verifies each signature using corresponding public keys, and f) transmits authorization messages to each device upon successful verification. Pending element (1) vs. ’623 step (a): Receiving from a second device an authorization/interaction message with attestations (witness/signature) and transaction parameters (amount/tuple) is taught; “witness” is an attestation artifact analogous to the “certificate signature” and tuple. Pending element (2) vs. ’623 steps (d)–(e): Identity/authenticity verification of a device via public-key signature verification is taught; verifying identity is an inherent result of signature validation. Pending element (3) vs. ’623 steps (c)–(e): Verifying that evidence satisfies a condition (tuple match + valid signatures) corresponds to determining the witness satisfies the condition; terminology differs, function is the same. Pending elements (4)–(6) vs. ’623 step (f): After verification, transmitting confirmations is taught; adjusting an online balance and sending confirmation is a routine, obvious post-verification consequence in server-centric systems. Choosing a balance update rather than sending dual authorization messages is a predictable design choice that does not confer patentable distinctness. Therefore claim 1 is an obvious variation of the ‘623 patent’s server verification/authorization workflow.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites a method and therefore meets Step 1 of the Patent Subject Matter Eligibility Guidelines (MPEP § 2106.03(II)). The analysis then proceeds to Step 2A of the Patent Subject Matter Eligibility Guidelines (MPEP § 2106.04(II)). Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Claim 1 recites operations of receiving an interaction message comprising an amount, a condition and a witness, verifying an identity of a second user device, verifying the interaction message by determining that the witness satisfies the condition, adjusting an online balance for the second user device, generating a response message that indicates that the interaction message was successfully evaluated and the amount was added to the online balance and transmitting the response message to the second user device. Verifying an identity in a transaction is a fundamental economic practice and therefore falls under one of the categories of abstract ideas (MPEP § 2106.04(a)(2)(II)(A)). Verifying the interaction message by determining that the witness satisfies the condition is an operation based on a mathematical relationship falls and therefore falls under one of the categories of abstract ideas (MPEP § 2106.04(a)(2)(I)(A)). Adjusting an online balance is also a fundamental economic practice (MPEP § 2106.04(a)(2)(II)(A)). Generating a response message that indicates that the interaction message was successfully evaluated and the amount was added to the online balance can be viewed as a mental step (MPEP § 2106.04(a)(2)(III)(B)) as a human being can observe whether particular conditions have been met by observation and evaluation. Therefore under Prong One of Step 2A claim 1 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Prong Two of Step 2A in which the claim is analyzed in order to determine whether the claim contains additional elements sufficient to form a practical application of the abstract idea (MPEP § 2106.04(d)(1)). Receiving an interaction message comprising an amount and a condition and a witness falls under the category of insignificant extra-solution activity as it involves mere data gathering (MPEP § 2106.05(g)). Generating a response message that indicates that the interaction message was successfully evaluated and the amount was added to the online balance and then transmitting the response message also falls under the category of insignificant extra-solution activity as it involves mere data outputting (MPEP § 2106.05(g)). The operations of verifying an identity of the second user device, verifying the interaction message by determining that the witness satisfies the condition, adjusting an online balance for the second user device and generating a response message that indicates that the interaction message was successfully evaluated and the amount was added to the online balance are mere instructions to apply an exception (MPEP § 2106.05(f)). The recitation of the server computer and the second user device merely tie the abstract idea to a particular technological environment (MPEP § 2106.05(h)). Therefore under Prong Two of Step 2A claim 1 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Step 2B in which the claim is evaluated in order to determine whether additional elements are present that amount to significantly more than the abstract idea (also called the inventive concept) (MPEP § 2106.05). The operations of receiving an interaction message comprising an amount and a condition and a witness and transmitting the response message are recited at a generally high level and therefore do not meaningfully limit the claim (MPEP § 2106.07(a)(II)) as the operations do not suggest anything more than generic operations of receiving and transmitting of data. The server computer and the second user device are also recited at a high level of generality and also do not meaningfully limit the claim (MPEP § 2106.07(a)(II)) as they suggest nothing more than generic computer components. Therefore under Step 2B claim 1 is deemed as being directed towards ineligible subject matter.
Claim 2 recites “…wherein the interaction message further comprises an expiry time, and wherein verifying the interaction message further comprises determining that the expiry time has not yet occurred”. The claim combines insignificant extra-solution activity (gathering data in the form of an expiry time) and making what can be viewed as a mental observation (that the expiry time has not occurred). Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 2 is also held as being directed towards ineligible subject matter.
Claim 3 recites “…wherein the interaction message further comprises a receiver certificate, and wherein verifying the interaction message further comprises determining that the receiver certificate matches a second user device certificate received from the second user device”. The claim combines insignificant extra-solution activity (gathering data in the form of a certificate) and making what can be viewed as a mental observation (that the data received from the user device certificate matches a second user device certificate received from the second user device). Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 3 is also held as being directed towards ineligible subject matter.
Claim 4 recites “…wherein the witness is digitally signed with a cryptographic key to form a witness digital signature, and wherein verifying the interaction message further comprises verifying the witness digital signature using a public key of a first user device that interacted with the second user device”. The claim combines insignificant extra-solution activity (gathering data in the form of a digitally signed witness) and performing an operation that relies on a mathematical relationship (that the digital signature can be verified with a particular public key). Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 4 is also held as being directed towards ineligible subject matter.
Claim 5 recites “…wherein the first user device transmitted the interaction message to the second user device before the interaction message is received by the server computer”. The claim only involves the outputting of data and can be viewed as being directed towards insignificant extra-solution activity. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 5 is also held as being directed towards ineligible subject matter.
Claim 6 recites “…wherein the first user device is a first mobile phone and the second user device is a second mobile phone”. The recitation only ties the abstract idea to a particular technological environment. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 6 is also held as being directed towards ineligible subject matter.
Claim 7 recites “…wherein the interaction message further comprises an index, the index being a number of interactions performed using the first user device”. The index appears to be nothing more than a form of counter similar to the numbering of paper checks and can be viewed as being a fundamental economic practice. The recitation amounts to mere instructions to apply an abstract idea. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 7 is also held as being directed towards ineligible subject matter.
Claim 8 recites “…wherein the first user device wherein the cryptographic key is a first user device private key, and wherein the first user device digitally signed the witness using the first user device private key”. The claim combines insignificant extra-solution activity (outputting data in the form of a digitally signed witness) and performing an operation that relies on a mathematical relationship (performing the digital signature with a particular private key). Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 8 is also held as being directed towards ineligible subject matter.
Claim 9 recites “…wherein the witness is digitally signed using the first user device private key in a secure element on the first user device”. The recitation of a secure element merely ties the claim to a particular technological environment. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 9 is also held as being directed towards ineligible subject matter.
Claim 10 recites “…wherein the first user device and the second user device interacted with each other in an offline manner when the first user device transmitted the interaction message to the second user device”. The recitation with regard to the “offline manner” merely ties the claim to a particular technological environment. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 10 is also held as being directed towards ineligible subject matter.
Claim 11 recites a method and therefore meets Step 1 of the Patent Subject Matter Eligibility Guidelines (MPEP § 2106.03(II)). The analysis then proceeds to Step 2A of the Patent Subject Matter Eligibility Guidelines (MPEP § 2106.04(II)). Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Claim 1 recites operations of receiving an appeal request message comprising an indication that a first user device has not properly provided a signed witness and requests an appeal of an interaction involving the first user device, the second user device and an interaction message comprising an amount and a condition, determining a random nonce, transmitting the random nonce, receiving an appeal interaction message comprising the interaction message, a witness, and the random nonce, evaluating the interaction message and the witness and providing an appeal interaction response message comprising an indication of whether or not the appeal was successful. Receiving an appeal request message comprising an indication that a first user device has not properly provided a signed witness and requests an appeal of an interaction involving the first user device, the second user device and an interaction message comprising an amount and a condition is a form of entering a dispute with regard to a transaction and can be viewed as a fundamental economic practice (MPEP § 2106.04(a)(2)(II)(A)). Determining a random nonce can either involve use of an algorithm involving a mathematical relationship (MPEP § 2106.04(a)(2)(I)(A)) or alternatively gathering data from a table. Evaluating the interaction message and the witness and forming an indication as to whether or not the appeal was successful can be viewed as a mental step (MPEP § 2106.04(a)(2)(III)(B)) as a human being can observe whether particular conditions have been met by observation and evaluation and form a conclusion. Therefore under Prong One of Step 2A claim 11 is deemed as being directed towards ineligible subject matter.
Receiving an appeal request message comprising an indication that a first user device has not properly provided a signed witness and requests an appeal of an interaction involving the first user device, the second user device and an interaction message comprising an amount and a condition falls under the category of insignificant extra-solution activity as it involves mere data gathering (MPEP § 2106.05(g)). Determining a random nonce can either be mere instructions to apply an exception (MPEP § 2106.05(f)) if a random number generation algorithm is used or insignificant extra-solution activity (MPEP § 2106.05(g)) if the random nonce is collected from a table. Transmitting the random nonce is also insignificant extra-solution activity (MPEP § 2106.05(g)) as is receiving an appeal interaction message comprising the interaction message, a witness, and the random nonce. Evaluating the interaction message and the witness and forming an indication as to whether or not the appeal was successful are mere instructions to apply an exception (MPEP § 2106.05(f)). Providing (transmitting) an appeal interaction response message is also insignificant extra-solution activity (MPEP § 2106.05(g)). The recitation of the server computer, the first user device and the second user device merely tie the abstract idea to a particular technological environment (MPEP § 2106.05(h)). Therefore under Prong Two of Step 2A claim 11 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Step 2B in which the claim is evaluated in order to determine whether additional elements are present that amount to significantly more than the abstract idea (also called the inventive concept) (MPEP § 2106.05). The operations of receiving an appeal request message comprising an indication that a first user device has not properly provided a signed witness and requests an appeal of an interaction involving the first user device, the second user device and an interaction message comprising an amount and a condition, determining a random nonce, transmitting the random nonce and providing an appeal interaction response message are recited at a generally high level and therefore do not meaningfully limit the claim (MPEP § 2106.07(a)(II)) as the operations do not suggest anything more than generic operations of receiving and transmitting of data. The server computer, the first user device and the second user device are also recited at a high level of generality and also do not meaningfully limit the claim (MPEP § 2106.07(a)(II)) as they suggest nothing more than generic computer components. Therefore under Step 2B claim 11 is deemed as being directed towards ineligible subject matter.
Claim 12 recites “…wherein the appeal was successful and the method further comprises: modifying a second user device online balance according the amount”. The modification of an account balance after an appeal is resolved is a fundamental economic practice. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 12 is also held as being directed towards ineligible subject matter.
Claim 13 recites “…wherein the interaction message further comprises an index, the index being a number of interactions performed using the first user device”. The index appears to be nothing more than a form of counter similar to the numbering of paper checks and can be viewed as being a fundamental economic practice. The recitation amounts to mere instructions to apply an abstract idea. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 13 is also held as being directed towards ineligible subject matter.
Claim 14 recites “…wherein the interaction message further comprises an expiry time, and wherein evaluating the interaction message further comprises: determining that the expiry time has not yet occurred”. The claim combines insignificant extra-solution activity (gathering data in the form of an expiry time) and making what can be viewed as a mental observation (that the expiry time has not occurred). Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 14 is also held as being directed towards ineligible subject matter.
Claim 15 recites “…wherein the interaction is an offline interaction between the first user device and the second user device”. The recitation with regard to the “offline interaction” merely ties the claim to a particular technological environment. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 15 is also held as being directed towards ineligible subject matter.
Claim 16 recites a method and therefore meets Step 1 of the Patent Subject Matter Eligibility Guidelines (MPEP § 2106.03(II)). The analysis then proceeds to Step 2A of the Patent Subject Matter Eligibility Guidelines (MPEP § 2106.04(II)). Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Claim 16 recites operations of receiving a reversal interaction message to reverse an interaction between the first user device and a second user device, obtaining a random nonce, transmitting the random nonce, receiving a reverse interaction message comprising an interaction message and a log entry, evaluating the interaction message and the log entry, generating an appeal response message that indicates whether or not the reversal was successful from the server computer and transmitting the appeal response message. Receiving a reversal interaction message to reverse an interaction between the first user device and a second user device is a form of entering a dispute with regard to a transaction and can be viewed as a fundamental economic practice (MPEP § 2106.04(a)(2)(II)(A)). Obtaining a random nonce can either involve use of an algorithm involving a mathematical relationship (MPEP § 2106.04(a)(2)(I)(A)) or alternatively gathering data from a table. Evaluating the interaction message and the log entry and forming an indication as to whether or not the reversal was successful can be viewed as a mental step (MPEP § 2106.04(a)(2)(III)(B)) as a human being can observe whether particular conditions have been met by observation and evaluation and form a conclusion. Therefore under Prong One of Step 2A claim 16 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Prong Two of Step 2A in which the claim is analyzed in order to determine whether the claim contains additional elements sufficient to form a practical application of the abstract idea (MPEP § 2106.04(d)(1)). Receiving a reversal interaction message to reverse an interaction between the first user device and a second user device falls under the category of insignificant extra-solution activity as it involves mere data gathering (MPEP § 2106.05(g)). Obtaining a random nonce can either be mere instructions to apply an exception (MPEP § 2106.05(f)) if a random number generation algorithm is used or insignificant extra-solution activity (MPEP § 2106.05(g)) if the random nonce is collected from a table. Transmitting the random nonce is also insignificant extra-solution activity (MPEP § 2106.05(g)) as is receiving a reverse interaction message comprising the interaction message and the log entry. Evaluating the interaction message and log entry and forming an indication as to whether or not the reversal was successful are mere instructions to apply an exception (MPEP § 2106.05(f)). Transmitting the appeal response message is also insignificant extra-solution activity (MPEP § 2106.05(g)) as it merely involves outputting data. The recitation of the server computer, the first user device and the second user device merely tie the abstract idea to a particular technological environment (MPEP § 2106.05(h)). Therefore under Prong Two of Step 2A claim 16 is deemed as being directed towards ineligible subject matter.
The analysis then proceeds to Step 2B in which the claim is evaluated in order to determine whether additional elements are present that amount to significantly more than the abstract idea (also called the inventive concept) (MPEP § 2106.05). The operations of receiving a reversal interaction message to reverse an interaction, obtaining a random nonce, transmitting the random nonce, receiving a reverse interaction message comprising an interaction message and a log entry and transmitting the appeal response message are recited at a generally high level and therefore do not meaningfully limit the claim (MPEP § 2106.07(a)(II)) as the operations do not suggest anything more than generic operations of receiving and transmitting of data. The server computer, the first user device and the second user device are also recited at a high level of generality and also do not meaningfully limit the claim (MPEP § 2106.07(a)(II)) as they suggest nothing more than generic computer components. Therefore under Step 2B claim 16 is deemed as being directed towards ineligible subject matter.
Claim 17 recites “…wherein the reversal interaction message indicates that the first user device never received a witness from the second user device”. The nature of the message is simply non-functional descriptive material (MPEP § 2111.05(II)(B)) and is not an element that would alter the analysis under Prong Two of Step 2A or under Step 2B. Therefore claim 17 is also held as being directed towards ineligible subject matter.
Claim 18 recites “…wherein the interaction message comprises an expiry time, and wherein evaluating the interaction message determines that the expiry time has not yet occurred”. The claim combines insignificant extra-solution activity (gathering data in the form of an expiry time) and making what can be viewed as a mental observation (that the expiry time has not occurred). Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 18 is also held as being directed towards ineligible subject matter.
Claim 19 recites “…wherein the appeal response message indicates that the reversal was successful, and wherein the method further comprises: adjusting, by the server computer, an online balance of the first user device using an amount in the interaction message”. The modification of an account balance after an appeal is resolved is a fundamental economic practice. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 19 is also held as being directed towards ineligible subject matter.
Claim 20 recites “…wherein the interaction is an offline interaction between the first user device and the second user device”. The recitation with regard to the “offline interaction” merely ties the claim to a particular technological environment. Given the level of generality at which the claim is expressed no practical application of the abstract idea is present per Prong Two of Step 2A nor does the claim amount to significantly more under Step 2B. Therefore claim 20 is also held as being directed towards ineligible subject matter.
Statement Regarding the Prior Art
Wentz (U.S. Patent Publication 2020/0351657) appears to be closest prior art reference as it pertains to claim 1. Wentz discloses that a peer-to-peer asset transfer from a user device to a recipient device may be initiated at a verifying node by receiving an asset transfer request from a user device (0013). The asset transfer request may then be authenticated by the verifying node by authenticating certain aspects of a user device, such as for example by calculating confidence levels in the user device and calculating heuristics of trust. Wentz discloses that a peer-to-peer transfer from a user device to a recipient device may include a secure proof demonstrating possession of a secret (0087) and a digital signature (0088). Wentz also discloses the possible use of a zero-knowledge proof included in the secure proof (0092). The asset transfer request is authenticated by a verifying node (0096) which may include determining a geographic location of the user device which may include determination of proximity to a second verifying node (0097). Upon authenticating the user device a verifying node generates a transfer authorization token (0111) which may include a digital signature which may further include a secure proof (0113) and a temporal limit (0114). The verifying node provides the transfer authorization token to the recipient device (0118) which proves that the user device has been authenticated and/or granted some type of privilege to engage in an asset transfer. Wentz has many of the primitives of the claimed invention but does not fairly teach or suggest that the second user device (i.e. recipient of the obtained amount) sends in an interaction message that includes the witness as this is done by the providing node in Wentz and furthermore Wentz discloses that the second user device (recipient) receives a transfer authorization token that allows the recipient to claim the asset being transferred instead of passing on a message including a witness, an amount and a condition as this interaction is performed between the requesting node and the verifying node. No prior art was found in Examiner’s search that alone or in combination would cure these deficiencies including the references cited during examination of the parent application. Bentov et al. reference (“How to Use Bitcoin to Design Fair Protocols”, February 19, 2014, 38 pages) is the closest non-patent literature revealed in Examiner’s search where Bentov teaches an ideal functionality between a sender of bitcoins and a recipient of bitcoins in section 2.1 and in appendix F teaches use of this ideal functionality in performing a transaction. In this example the recipient reveals a witness, broadcasts the reveal to the Bitcoin network along with a signature of an output script designating an address controlled by the recipient and will receive the coins that the sender deposited if the reveal and the recipient’s signature are accepted by the Bitcoin network. However Bentov must also be viewed as deficient as even if the Bitcoin network were viewed as a substitute for the server of the claim Bentov requires that the recipient reveal the witness in order to claim the bitcoins and does not provide a clear teaching on the claim as there is no teaching of a condition or amount being sent to the Bitcoin network with the witness. With regard to independent claims 11 and 16 the same witness structure is employed in these claims as recited in claim 1 in order to evaluate the witness and therefore Wentz and Bentov are also deficient with regard to these claims. As none of these references alone or in combination fairly teach or suggest each and every element of the claim Examiner deems that claims 1-20 are not taught by the prior art.
Conclusion
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/JAMES D NIGH/ Senior Examiner, Art Unit 3699