DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a non-final, first office action in response to the application filed 6 February 2025.
The applicant's claim for benefit of a CON of US 18112756 filed 2/22/23 (US 12248983, issued 3/11/25) has been received and acknowledged.
Claims 1-20 are currently pending and have been examined.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4,7, 15-16 and 18 ( US Application 18112756) now U.S. Patent No. US 12248983 (issued 3/11/2025). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter is substantially similar and recited elements are the same.
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 non-statutory subject matter.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
(1) In the instant case, the claims are directed towards a method, non-transitory computer readable medium, and the system of verifying credit. In the instant case, Claims 1-8 are directed to a process. Claims 9-16 are directed to a system. Claims 17-20 are directed to a non-transitory computer readable medium.
(2a) Prong 1: Verifying credit is categorized in/akin to the abstract idea subject matter grouping of: methods of organizing human activity [organizing human activity (commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)]. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include:
Claim 1. A method for verifying credit of an investment manager using a distributed ledger maintained by a plurality of participants, the method comprising:
… at … of an executing broker from an investment manager, a request to execute a trade of an asset;
monitoring, …, a … maintained by a plurality of participants in a … for a token representing a line of credit provided by a clearing broker to the investment manager, the token including a credit amount, a name of the clearing broker providing the line of credit, and a duration;
in response to (i) identifying the token representing the line of credit provided by the clearing broker to the investment manager, (ii) receiving the token, (iii) determining that the name included in the token matches the name of the clearing broker, (iv) determining that the credit amount is sufficient to cover a cost of the trade, and (v) determining that the token has not expired, placing, by the one or more processors, a fulfillment order for the trade by the investment manager; and
…, …, the token to a burn address to burn the token.
9. A … for verifying credit of an investment manager using a distributed ledger maintained by a plurality of participants, the … comprising:
…; and
a … and … … to:
…, at an executing broker from an investment manager, a request to execute a trade of an asset;
monitor a …maintained by a plurality of participants in a … for a token representing a line of credit provided by a clearing broker to the investment manager, the token including a credit amount, a name of the clearing broker providing the line of credit, and a duration;
in response to (i) identifying the token representing the line of credit provided by the clearing broker to the investment manager, (ii) receiving the token, (iii) determining that the name included in the token matches the name of the clearing broker, (iv) determining that the credit amount is sufficient to cover a cost of the trade, and (v) determining that the token has not expired, place a fulfillment order for the trade by the investment manager; and
…the token to a burn address to burn the token.
17. A … to:
…, at an executing broker from an investment manager, a request to execute a trade of an asset;
monitor a … maintained by a plurality of participants in a … for a token representing a line of credit provided by a clearing broker to the investment manager, the token including a credit amount, a name of the clearing broker providing the line of credit, and a duration;
in response to (i) identifying the token representing the line of credit provided by the clearing broker to the investment manager, (ii) receiving the token, (iii) determining that the name included in the token matches the name of the clearing broker, (iv) determining that the credit amount is sufficient to cover a cost of the trade, and (v) determining that the token has not expired, place a fulfillment order for the trade by the investment manager; and
… the token to a burn address to burn the token.
As stated above, this abstract idea falls into the (b) subject matter grouping of: methods of organizing human activity .
Prong 2: When considered individually and in combination, the instant claims are do not integrate the exception into a practical application because the steps of monitoring… placing… do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. receiving… transmitting… storing…) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use ( See MPEP 2106.05 (f) and (g)).
(2b) In the instant case, Claims 1-8 are directed to a process. Claims 9-16 are directed to a system. Claims 17-20 are directed to a non-transitory computer readable medium.
Additionally, the claims (independent and dependent) do not include additional elements that individually or in combination are sufficient to amount to significantly more than the judicial exception of abstract idea (i.e. provide an inventive concept). As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of: (processors, distributed ledger, distributed ledger network, computing device, non-transitory
computer readable medium, instructions ) merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d), (f) and (g)) (Specification, [19-21] distributed ledger, distributed ledger network [31-35]
processor, network)
The dependent claims have also been examined and do not correct the deficiencies of the independent claims. It is noted that claim (2-7, 10-16, and 18-20) introduce the additional elements of wherein clauses further defining elements such as: the line of credit … (Claims 2, 10 and 18) ; … the token… (Claims 5 and 13); …the determining… (Claim 7 and 15) and steps.. . monitoring… (Claims 3, 11 and 19) ; … transmitting… (Claim 4, 12 and 20);…receiving… (Claims 6 and 14); augmenting… (Claims 8 and 16); This element is not a practical application of the judicial exception because these limitations merely recite: “apply it” (or an equivalent) or merely include instructions to implement an abstract idea on a computer or merely uses a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or generally link the use of the judicial exception to a particular technological environment or field of use. (See MPEP 2106.05 (f) and (g)) Further these limitations taken alone or in combination with the abstract do not amount to significantly more than the abstract idea alone because these elements amounts to mere use of a computer as a tool to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception or merely uses generic computing elements to perform well known, routine, and conventional functions. (See MPEP 2106.05 (d), (f) and (g)) (Specification, [19-21] distributed ledger, distributed ledger network [31-35]
processor, network)
Therefore, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Prior Art
The closest prior art of record US 20210073913 A1, Ingargiola hereafter referred to as Ingargiola (disclosing trading assets using a blockchain network including tokens) in view of non-patent literature, Henry F. Minnerop, The Role and Regulation of Clearing Brokers - Revisited, 75 Bus. LAW. 2201 (2020) hereinafter referred to as Minnerop.( teaches generally about the subject of clearing brokers including the task of extending credit to investors) in combination generally disclose concept of lines of credit used in a blockchain networks and the function of clearing brokers. US 11823180 B1, Trinh hereinafter referred to as Trinh (teaches the use of a distributed ledger for the tracking of a assets and actions taken (such as trades) on/with those assets. US 20180006831 A1, Toll et al, hereinafter referred to as Toll (discussing at [18-21] clearing process and its assumption of risk of settlement failures through ‘novation’; also teaching the use of blockchain technology (i.e. distributed computerized ledger system) to record/store transactional data .)
Even though the prior art of record discloses the general concepts cited above, the prior art of record fails to teach the specific combination of monitoring of a distributed ledger including a specific limited duration token with a representative line of credit by a clearing broker device for equities trading and the use said token to settle said trades. The specific claim language that the prior art of record fails to teach is:
receiving, at one or more processors of an executing broker from an investment manager, a request to execute a trade of an asset;
monitoring, by the one or more processors, a distributed ledger maintained by a plurality of participants in a distributed ledger network for a token representing a line of credit provided by a clearing broker to the investment manager, the token including a credit amount, a name of the clearing broker providing the line of credit, and a duration; (
in response to (i) identifying the token representing the line of credit provided by the clearing broker to the investment manager, (ii) receiving the token, (iii) determining that the name included in the token matches the name of the clearing broker, (iv) determining that the credit amount is sufficient to cover a cost of the trade, and (v) determining that the token has not expired, placing, by the one or more processors, a fulfillment order for the trade by the investment manager; and
transmitting, by the one or more processors, the token to a burn address to burn the token.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20230186301 A1, Tokenization of the appreciation of assets
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/ASHA PUTTAIA H/Primary Examiner, Art Unit 3691