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 .
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.
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Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,243,051.
Instant Application 19/039,817
U.S. Patent 12,243,051
Claim 1. A method for private management of digital assets for multiple participants of a global blockchain, comprising:
transmitting, by a sender system, to a processing server, a transfer notification for a new currency transfer between the sender system and a receiver system, the transfer notification including at least a transfer amount, and at least one unspent transaction output that pertains to a prior blockchain transaction in a private blockchain and in which currency for the prior blockchain transaction is unspent;
receiving, by a receiver of the processing server, the transfer notification sent by the sender system;
performing a successful validation of the transfer notification by (i) validating a digital signature using a public key and (ii) transmitting, by a transmitter of the processing server, a message to the receiver system requesting assurance that the receiver system approves of the new currency transfer;
in response to the successful validation,
executing, by a processor of the processing server, the new currency transfer by transferring the transfer amount from the at least one unspent transaction output to a destination address,
generating, by the processor of the processing server, a first new block for inclusion in the private blockchain, said private blockchain being accessible only by the processing server, said first new block including a transaction data value for the new currency transfer and the at least one unspent transaction output,
generating, by the processor of the processing server, a hash value by applying a cryptographic hashing function to the generated transaction data value, and
generating, by the processor of the processing server, a second new block for inclusion in a public blockchain that is accessible by the processing server, sender system and receiver system, said second new block includes the hash value; and
publishing, by the processor of the processing server, the generated first new block to the private blockchain and the generated second new block to the public blockchain.
Claim 1. A method for private management of digital assets for multiple participants of a global blockchain, comprising:
transmitting, by a sender system, a proposal message to a receiver system, wherein the proposal message includes at least an amount of digital assets that are to be transferred in a new currency transfer to be made between the sender system and the receiver system;
establishing an agreement, by the sender system and the receiver system, on the new currency transfer to be made;
subsequent to establishing the agreement, transmitting, by the sender system, to a processing server, a transfer notification for the new currency transfer between the sender system and the receiver system, the transfer notification including at least (i) a sending identifier associated with the sender system, (ii) a recipient identifier associated with the receiver system, (iii) a transfer amount, and (iv) at least one unspent transaction output that pertains to a prior blockchain transaction in a private blockchain and in which currency for the prior blockchain transaction is unspent;
receiving, by a receiver of the processing server, the transfer notification sent by the sender system;
performing a successful validation of the transfer notification by (i) validating a digital signature using a public key of a cryptographic key pair and (ii) transmitting, by a transmitter of the processing server, a message to the receiver system requesting assurance that the receiver system approves of the new currency transfer;
in response to the successful validation,
executing, by a processor of the processing server, the new currency transfer by transferring the transfer amount from the at least one unspent transaction output to a destination address;
generating, by a processor of the processing server, a transaction data value for the new currency transfer, the transaction data value including at least the sending identifier, the recipient identifier, and the transfer amount;
generating, by the processor of the processing server, a first new block for inclusion in the private blockchain, said private blockchain being accessible only by the processing server, said first new block including the transaction data value and the at least one unspent transaction output;
generating, by the processor of the processing server, a hash value that is collision-resistant by applying a cryptographic hashing function to the generated transaction data value;
generating, by the processor of the processing server, a second new block for inclusion in a public blockchain that is accessible by the processing server, sender system and receiver system, said second new block includes the collision-resistant hash value;
publishing, by the processor of the processing server, the generated first new block including the transaction data value to the private blockchain that is accessible by the processing server; and
publishing, by the processor of the processing server, the generated second new block including the collision resistant hash value to the public blockchain that is accessible by the processing server, sender system and receiver system.
Claim 2
Claim 2
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 10
Claim 10
Claim 11
Claim 11
Claim 12
Claim 12
Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar distinguishing features as highlighted above.
Claim Interpretation
The systems – sender system, receiver system, first computing system, and second computing system, are interpreted to be processors as disclosed in the instant specification, paragraph [0058], Figs. 1 and 5.
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: “the generated transaction data value” on pg. 2, line 2 and pg. 4, line 12, respectively, should be “the Appropriate correction is required.
Claim 7 is objected to because of the following informalities: “to the public” on pg. 4, line 17 should be “to the public blockchain.” Appropriate correction is required.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Claims 1-12 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 1 have been denoted with letters by the Examiner for easy reference. Independent claim 7 recites similar distinguishing features as claim 1, therefore, the following eligibility analysis shall apply to all independent claims. The judicial exceptions recited in claim 1 are identified in bold below:
a method for private management of digital assets for multiple participants of a global blockchain, comprising:
transmitting, by a sender system, to a processing server, a transfer notification for a new currency transfer between the sender system and a receiver system, the transfer notification including at least a transfer amount, and at least one unspent transaction output that pertains to a prior blockchain transaction in a private blockchain and in which currency for the prior blockchain transaction is unspent;
receiving, by a receiver of the processing server, the transfer notification sent by the sender system;
performing a successful validation of the transfer notification by (i) validating a digital signature using a public key and
(ii) transmitting, by a transmitter of the processing server, a message to the receiver system requesting assurance that the receiver system approves of the new currency transfer;
in response to the successful validation, executing, by a processor of the processing server, the new currency transfer by transferring the transfer amount from the at least one unspent transaction output to a destination address,
generating, by the processor of the processing server, a first new block for inclusion in the private blockchain, said private blockchain being accessible only by the processing server, said first new block including a transaction data value for the new currency transfer and the at least one unspent transaction output,
generating, by the processor of the processing server, a hash value by applying a cryptographic hashing function to the generated transaction data value, and
generating, by the processor of the processing server, a second new block for inclusion in a public blockchain that is accessible by the processing server, sender system and receiver system, said second new block includes the hash value; and
publishing, by the processor of the processing server, the generated first new block to the private blockchain and the generated second new block to the public blockchain.
Under the broadest reasonable interpretation, A-G and I-J recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, B-F can be grouped under commercial or legal interactions in the form of sales activities. Validating transfers and transferring currency are sales activities. A, G, and I-J can be grouped under managing personal behavior or relationships or interactions between people. Generating blocks that include transaction information and publishing the blocks are analogous to tracking financial transactions between entities, i.e. bookkeeping. H recites a mathematical concept because generating a hash value by applying a cryptographic hashing function is a mathematical calculation. Therefore, the claimed limitations recite abstract ideas under multiple groupings and sub-groupings as highlighted above.
Claims 1 and 7 recite at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above. Claim 7 also recites “a first computing system,” “a second computing system,” “a processing server,” “a receiver,” and “a processor” as additional elements. The additional elements have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract ideas, the claims amount to no more than mere software instructions to implement the abstract ideas on a computer, or merely uses a computer as a tool to perform the abstract ideas. These additional elements do not integrate the abstract ideas into a practical application because they do not impose any meaningful limits on practicing the abstract ideas.
Furthermore, the additional elements “global blockchain,” “private blockchain,” “said private blockchain being accessible only by the processing server,” “public blockchain,” and “in a public blockchain that is accessible by the processing server” amount to no more than general usage of a data structure. When these additional elements are considered individually and as an ordered combination with the abstract ideas, the claims amount to no more than mere steps to implement the abstract ideas on a data structure. These additional element do not integrate the abstract ideas into a practical application because they do not impose any meaningful limits on practicing the abstract ideas.
Claims 1 and 7 do not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract ideas into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Dependent Claims
Claims 2-4, 6, 8-10, and 12 elaborate on the abstract ideas above without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Claims 5 and 11 recite the additional element “performed by a smart contract.” This additional element has been recited at a high-level of generality such that it is no more than generally linking the use of the judicial exception to a particular technological environment or field of use. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract ideas into a patent eligible application such that the abstract ideas amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-12 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Daruwalla et al. U.S. Patent 11,568,374 (herein as “Daruwalla”) in view of Noonan U.S. 2020/0366480, and further in view of Mercuri et al. U.S. 2019/0013933 (herein as “Mercuri”).
Re Claim 1, Daruwalla discloses a method for private management of digital assets for multiple participants of a global blockchain, comprising:
transmitting, by a sender system, to a processing server, a transfer notification for a new currency transfer between the sender system and a receiver system, the transfer notification including at least a transfer amount Col. 12, lines 11-13: “the originator 104 may enter the transaction details to initiate the transaction request,” Col. 3, lines 39-42 – “transaction data, such as…a transaction amount” […];
receiving, by a receiver of the processing server, the transfer notification sent by the sender system Col. 12, lines 6-7: “the originating FI computing system 108 receives a transaction request”;
performing a successful validation of the transfer notification by […] (ii) transmitting, by a transmitter of the processing server, a message to the receiver system requesting assurance that the receiver system approves of the new currency transfer Col. 13, lines 1-2: “transmits the notification message to the recipient device,” lines 11-17: “a return notification received from the recipient device…includes an indication from the recipient regarding at least part of the transaction data and is provided to the global transaction processing circuit 128…if the return notification…indicates that the transaction details are correct, the transaction is validated”;
in response to the successful validation,
executing, by a processor of the processing server, the new currency transfer by transferring the transfer amount […] to a destination address Col. 10, lines 14-16: “Upon validating the transaction request, the transaction request is settled and the recipient gains access to the funds.”
However, Daruwalla does not expressly disclose
the transfer notification including at least one unspent transaction output that pertains to a prior blockchain transaction in a private blockchain and in which currency for the prior blockchain transaction is unspent;
validating a digital signature using a public key;
the transfer amount from the at least one unspent transaction output.
Noonan discloses systems and methods for blockchain transactions with offer and acceptance. Specifically, Noonan discloses
the transfer notification including at least one unspent transaction output that pertains to a prior blockchain transaction in a private blockchain and in which currency for the prior blockchain transaction is unspent [0015] – “create…an issuing transaction that spends an unspent transaction output (UTXO) on the blockchain,” [0068] – “blockchain 200 may be a private blockchain,” [0047] – “including in a transaction, outputs of specific types and values”;
validating a digital signature using a public key [0088] – “a public key can comprise a verified attribute for an entity…certification certificate 300 may associate and authenticate address 210 and/r public key 301 with a trusted entity”;
the transfer amount from the at least one unspent transaction output [0015] – “create…an issuing transaction that spends an unspent transaction output (UTXO) on the blockchain.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Daruwalla’s prepayment validation system and method with the teachings of including at least one unspent transaction output and in which currency in the transaction and validating a digital signature using a public key in Noonan. One would be motivated to make this combination to prevent double spending and to provide a more secure financial transaction by enabling parties to authenticate the identity of other parties in the transaction Noonan, [0069], [0076].
However, Daruwalla in view of Noonan do not explicitly teach
generating, by the processor of the processing server, a first new block for inclusion in the private blockchain, said private blockchain being accessible only by the processing server, said first new block including a transaction data value for the new currency transfer and the at least one unspent transaction output,
generating, by the processor of the processing server, a hash value by applying a cryptographic hashing function to the generated transaction data value, and
generating, by the processor of the processing server, a second new block for inclusion in a public blockchain that is accessible by the processing server, sender system and receiver system, said second new block includes the hash value; and
publishing, by the processor of the processing server, the generated first new block to the private blockchain and the generated second new block to the public blockchain.
Mercuri discloses blockchain object deployment and synchronization across blockchains. Specifically, Mercuri discloses
generating, by the processor of the processing server, a first new block for inclusion in the private blockchain, said private blockchain being accessible only by the processing server, said first new block including a transaction data value for the new currency transfer and the at least one unspent transaction output [0063] – “generate a new block for the first blockchain 120X,” [0116] – “the first blockchain 120X may be a private blockchain.”
Examiner notes the content of first new block is nonfunctional descriptive language. The content of first new block does not meaningfully limit how the first new block is generated and/or how the digital assets for multiple participants of a global blockchain is privately managed. Therefore, the content of first new block cannot be given patentable weight.
generating, by the processor of the processing server, a hash value by applying a cryptographic hashing function to the generated transaction data value [0187] – “the system 100 may generate a hash of the first blockchain object 108X using the hashing service 144,” [0058] – “The hashing service 144 may use an SHA (Secure Hashing Algorithm) or any suitable cryptographic function to generate a hash of an input.”
Examiner recognizes that claim 7 specifies a “hash value that is collision-resistant.” The instant specification suggests that hashing algorithm, such as SHA-256, generates hash values of sufficient complexity to be collision-resistant [0032]. Therefore, since Mercuri discloses the hashing service may use “an SHA…or any suitable cryptographic function,” Mercuri at least suggests that the generated hash would also be collision-resistant.
generating, by the processor of the processing server, a second new block for inclusion in a public blockchain that is accessible by the processing server, sender system and receiver system, said second new block includes the hash value [0116] – “the second blockchain 120Y may be a public blockchain. The second blockchain 120Y may be a hash of the first blockchain object 108X deployed on the first blockchain 120X”; and
publishing, by the processor of the processing server, the generated first new block to the private blockchain and the generated second new block to the public blockchain [0152] – “The blockchain object 108X-B and/or 108X-C may be deployed to blockchains 120X (i.e. private blockchain) and/or 120Y (i.e. public blockchain) in a new block and published to peers on the peer-to-peer network by the node.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Daruwalla in view of Noonan’s prepayment validation system and method with the teachings of generating first and second new blocks and publishing the first and second new blocks to the private blockchain and public blockchain, respectively, in Mercuri. One would be motivated to make the combination to provide an immutable record of events, such as cryptocurrency transfers, while compartmentalizing access to information and thereby improving overall information security Mercuri, [0003], [0082].
Re Claim 2, Daruwalla in view of Noonan and Mercuri teach the method of claim 1, and Daruwalla in view of Noonan and Mercuri further teach further comprising:
transmitting, by a transmitter of the processing server, an approval message in response to the received transfer notification Daruwalla, Col. 10, lines 40-41 – “the notification message includes a status of the transaction request,” lines 43-44 – “the status can indicate an estimated time of completion of the transaction,” Col. 8, lines 65-66 – “the global transaction processing circuit 128 is configured to provide the notification message.”
Re Claim 3, Daruwalla in view of Noonan and Mercuri teach the method of claim 1, and Daruwalla in view of Noonan and Mercuri further teach wherein
validating the new currency transfer includes verifying that each of the at least one unspent transaction output is unspent Daruwalla, Col. 14, lines 1-2 – “determining that the originator has sufficient funds or credit to fulfill the transaction request,” the unspent transaction output is unspent is analogous to currency that still remains, i.e. unspent, therefore, determining that the originator having sufficient funds is analogous to determining that there is currency that still remains, i.e. unspent, and is available to be spent.
Re Claim 4, Daruwalla in view of Noonan and Mercuri teach the method of claim 3, and Daruwalla in view of Noonan and Mercuri further teach further comprising:
identifying, by the processor of the processing server, a new transaction output, wherein the new transaction output is included in the transaction data value Daruwalla, Col. 10, lines 57-59 – “indicate estimated fees that will be incurred by the originator and recipient during the payment process,” the estimated fees are analogous to a new transaction output. The limitation following the “wherein” does not limit the claim scope because the claim language does not require any steps to be performed, or limit the claim to a particular structure. It does not give meaning and purpose to the manipulative steps, i.e. the new transaction output being included in the transaction data value does not meaningfully limit how the new transaction output is identified. Furthermore, the content of the transaction data value is nonfunctional descriptive language. The content of transaction data value does not meaningfully limit how the first new block is generated. Therefore, the limitation “the new transaction output is included in the transaction data value” cannot be given patentable weight. See MPEP 2111.04.
Re Claim 5, Daruwalla in view of Noonan and Mercuri teach the method of claim 1, and Daruwalla in view of Noonan and Mercuri further teach wherein the generating and publishing steps are performed by a smart contract executed by the processor of the processing server Mercuri, [0005-6], [0022], [0029], [0137].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Daruwalla in view of Noonan’s prepayment validation system and method with the teachings of performing steps by executing a smart contract in Mercuri. One would be motivated to make this combination to regulate interaction between two or more participants for a specified objective, thereby improving the efficiency of regulatory processes Mercuri, [0023], [0123].
Re Claim 6, Daruwalla in view of Noonan and Mercuri the method of claim 1, and Daruwalla in view of Noonan and Mercuri further teach wherein the transfer amount is an amount of blockchain currency Daruwalla, Col. 17, lines 29-33 – “Any foregoing references to currency or funds are intended to include…math-based currencies (often referred to as cryptocurrencies). Examples of math-based currencies include Bitcoin, Litecoin, Dogecoin, and the like.”
Examiner notes the content of the transfer amount is nonfunctional descriptive language. The content of the transfer amount does not meaningfully limit how the digital assets for multiple participants of a global blockchain are privately managed. Therefore, the content of the transfer amount cannot be given patentable weight. However, for purposes of compact prosecution, prior art is provided above.
Re Claims 7-12, they are the system claims of method claims 1-6, respectively. They recite similar distinguishing features as claims 1-6. Furthermore, Daruwalla discloses a first computing system Fig. 1, 104, a second computing system Fig. 1, 110, a processing server Fig. 1, 106, a receiver Fig. 106, 124, and a processor Col. 4, line 53. Therefore, claims 7-12 are rejected for the same reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hari et al. U.S. 2020/0334677 directed to transparent blockchain sidechains to support blockchain processing heterogeneity. See at least [0033], [0035-36].
Madisetti et al. U.S. 20190018887 directed to a method of processing and validating transactions on a multi=chain network. See at least [0036-37].
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/CHRISTINE DANG/Examiner, Art Unit 3698