DETAILED ACTION
This Office Action is in response to the application 19/034,865 filed on 01/23/2025.
Claims 1- have been examined and are pending in this application.
This application is a continuation of U.S. Patent Application No. 17/297341, filed 26 May 2021, entitled "SYSTEMS AND METHODS FOR EFFICIENT AND SECURE PROCESSING, ACCESSING AND TRANSMISSION OF DATA VIA A BLOCKCHAIN NETWORK," which is a 371 National Stage of International Patent Application No. PCT/IB2019/059793, filed 14 November 2019, which claims priority to United Kingdom Patent Application No. 1819290.6, filed 27 November 2018, United Kingdom Patent Application No. 1819286.4, filed 27 November 2018, United Kingdom Patent Application No. 1819284.9, filed 27 November 2018, United Kingdom Patent Application No. 1819297.1, filed 27 November 2018, United Kingdom Patent Application No. 1819299.7, filed 27 November 2018, United Kingdom Patent Application No. 1819291.4, filed 27 November 2018, United Kingdom Patent Application No. 1819293.0, filed 27 November 2018.
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 .
Election/Restrictions
For the record, the Examiner acknowledges that NO restrictions warranted at applicant’s initial time of filing for patent.
Priority
This application is a continuation of U.S. Patent Application No. 17/297341, filed 26 May 2021, entitled "SYSTEMS AND METHODS FOR EFFICIENT AND SECURE PROCESSING, ACCESSING AND TRANSMISSION OF DATA VIA A BLOCKCHAIN NETWORK," which is a 371 National Stage of International Patent Application No. PCT/IB2019/059793, filed 14 November 2019, which claims priority to United Kingdom Patent Application No. 1819290.6, filed 27 November 2018, United Kingdom Patent Application No. 1819286.4, filed 27 November 2018, United Kingdom Patent Application No. 1819284.9, filed 27 November 2018, United Kingdom Patent Application No. 1819297.1, filed 27 November 2018, United Kingdom Patent Application No. 1819299.7, filed 27 November 2018, United Kingdom Patent Application No. 1819291.4, filed 27 November 2018, United Kingdom Patent Application No. 1819293.0, filed 27 November 2018.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 03/19/2025, 04/09/2025and 02/25/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Oath/Declaration
For the record, the Examiner acknowledges that the Oath/Declaration submitted on 01/23/2025 has been accepted.
Drawings
For the record, the Examiner acknowledges that the drawings filed on 01/23/2025 has been accepted.
Specification
For the record, the Examiner acknowledges that the Applicant's specification filed on 01/23/2025 has been accepted.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim[s] 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Applying the Subject Matter Eligibility Test as outlined in MPEP § 2106 to claims 1, 10 and their corresponding dependent claims:
Step 1: Statutory Category: Yes
Claims 1 – 11, A computer-implemented method including the step of identifying, within a blockchain, and is a process.
Thus, the examination turns to Step 2A Prong 1.
Step 2A, Prong 1 (whether the claim recites a judicial exception):
Under MPEP §2106.04(a) and the 2019 PEG, claim 1 recites abstract idea from two enumerated groupings: (i) mental processes (concepts performed in the human mind). Offending clauses and explicit category mapping:
Mental processes (observations, evaluations, judgments that can be performed in the human mind)
generating a statement representing an input and an output of the trusted computing environment; (Category: observation/data gathering. Rationale: receiving/reading data at intake and output that can be done mentally or by consulting a log/record; MPEP §2106.04(a)(2)(III).)
Conclusion for Prong 1: Claim 1 recites abstract ideas in the “mental processes” groupings. Prong 1. See MPEP §2106.04(d); Versata, 793 F.3d 1306.
Thus, the examination turns to Step 2A Prong 2.
Step 2A, Prong 2 (whether the claim integrates the exception into a practical application): The claim does not integrate the exceptions into a practical application. See MPEP §§2106.04(d), 2106.05(a)–(h).
No improvement to computer functionality or another technology (MPEP §2106.05(a)). The specification asserts benefits (e.g., A blockchain is a peer-to-peer, electronic ledger which is implemented as a computer-based decentralised, distributed system made up of blocks which in turn are made up of transactions; Spec ¶[0004]) but claim 1 does not recite any specific technical mechanism effecting such improvements. Such validing in accordance with a first blockchain protocol found eligible in Enfish, McRO, Finjan, or SRI.
No particular machine (MPEP §2106.05(b)). The claim’s “the step of identifying…” (claim 1 or 10), and “A computer-implemented method” is generic.
No transformation (MPEP §2106.05(c)). The steps of identifying, signing, exporting do not transform an article.
Mere instructions to apply the exception (MPEP §2106.05(f)). Recitations such as “A computer-implemented method including the step of identifying…” are generic in nature, thus elements implement the abstract idea on a computer.
Insignificant extra-solution activity (MPEP §2106.05(g)). Steps such as “A computer-implemented method including the step of identifying….” are data gathering or post-solution actions that append/apply the result of the mathematical/ mental determination.
Field-of-use (MPEP §2106.05(h)). Limiting the concept to a “A computer-implemented method including the step of identifying…” merely ties the abstract idea to a technological field without a meaningful limitation.
Dependent claims (2-10) add use-case outcomes—e.g., further the portion of data, reference to the portion of data, the protocol flag, the discretionary public key (DPK) and/or the discretionary transaction ID (DTxID) —that further fall within “mathematical concepts,” and do not add a specific technological mechanism that changes how the computer or trusted computing environment operates.
Accordingly, Step 2A, Prong 2 is not satisfied.
Thus, the examination turns to Step 2B.
Step 2B (whether the claim recites “significantly more” than the exception):
Evaluated as an ordered combination, the additional elements do not amount to significantly more than the abstract ideas. The elements are well-understood, routine, and conventional (WURC) at the time of filing. See Berkheimer Memorandum; MPEP §2106.05(d), (f).
Appropriate action 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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,238,222. Although the claims at issue are not identical, they are not patentably distinct from each other because both patent application relates generally to improvements for data communication and exchange across an electronic network, and in particular a peer-to-peer network such as a blockchain network.
Allowable Subject Matter
Claims 1-13 contain allowable subject matter, however, as allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The examiner notes that once applicant overcomes the 101 - Alice rejection, and the DP rejection and eTD approved by the office. the claims can pass to issue.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YONAS A BAYOU whose telephone number is (571)272-7610. The examiner can normally be reached Monday-Friday 7AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Chea can be reached at 571-272-3951. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YONAS A BAYOU/Primary Examiner, Art Unit 2499 06/03/2026
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