DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, 19/047,807, filed 02/07/2025, is a Continuation of 17/443,696, filed 07/27/2021, now U.S. Patent 12,243,032, which in turn is a Continuation of 17/204,665, filed 03/17/2021, now U.S. Patent 11,568,376, which in turn is a Continuation in Part of 17/014,624, filed 09/08/2020, now abandoned.
The effective filing date is after the AIA date of March 16, 2013, and so the application is being examined under the “first inventor to file” provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of the Application
This Non-Final Office Action is in response to Applicant’s communication of 02/07/2025.
Claims 1-14 are pending, of which claims 1 and 8 are independent.
All pending claims have been examined on the merits.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 02/07/2025 has been considered.
Claim Interpretation
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 8-14 in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. However, the broadest reasonable interpretation of claim limitations in claims 8-14 is limited by the description in the specification, because 35 U.S.C. § 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f):
(A) the claim limitation uses the term “means”, “step”, or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means”, “step”, or the generic placeholder, is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means”, “step”, or the generic placeholder, is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step for”, or a nonce term) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that 35 U.S.C. § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”, or a nonce term) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f). However, the presumption that 35 U.S.C. § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”, or a nonce term) are presumed to invoke 35 U.S.C. § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”, or a nonce term) are presumed not to invoke 35 U.S.C. § 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f), because the claim limitation(s) uses a generic placeholder (a nonce term) that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) in claims 8-14 are: “first memory element”, “second memory element”, and “third memory element”.
Because these claim limitations are being interpreted under 35 U.S.C. § 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
More specifically, the claimed features “first memory element”, “second memory element”, and “third memory element” are being interpreted according to paragraph [0293] of the application’s US-2025/0190962-A1:
[0293] As may also be used herein, the terms “processing module”, “processing circuit”, “processor”, “processing circuitry”, and/or “processing unit” may be a single processing device or a plurality of processing devices. Such a processing device may be a microprocessor, micro-controller, digital signal processor, microcomputer, central processing unit, field programmable gate array, programmable logic device, state machine, logic circuitry, analog circuitry, digital circuitry, and/or any device that manipulates signals (analog and/or digital) based on hard coding of the circuitry and/or operational instructions. The processing module, module, processing circuit, processing circuitry, and/or processing unit may be, or further include, memory and/or an integrated memory element, which may be a single memory device, a plurality of memory devices, and/or embedded circuitry of another processing module, module, processing circuit, processing circuitry, and/or processing unit. Such a memory device may be a read-only memory, random access memory, volatile memory, non-volatile memory, static memory, dynamic memory, flash memory, cache memory, and/or any device that stores digital information.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. § 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. § 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. § 112(f).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 8-14 are provisionally rejected on the ground of obviousness-type nonstatutory double patenting as being unpatentable over claims 10-18 of parent U.S. Patent No. 12,243,032 B2.
Independent claim 8 of the present application is an obvious variations of independent claim 10 of parent U.S. Patent No. 12,243,032 B2. Although the independent claims at issue are not identical, the present claims are obvious variations of the parent U.S. patent, due to shared claim language.
“A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960). See also MPEP § 2131.02.
The table below underlines and bolds phrases that are different between a claim in the pending application and its respective claim (in another patent application).
U.S. Application No. 19/047,807
(Present Application)
U.S. Patent No. 12,243,032 B2
8. A computer readable memory comprises:
10. A non-transitory computer readable memory comprises:
a first memory element that stores operational instructions that, when executed by a digital asset custodial device, causes the digital asset custodial device to:
a first memory element that stores operational instructions that, when executed by one or more computing devices, causes the one or more computing devices to:
store assignable tokens to an address of a two-dimensional array structure,
create a two-dimensional array data structure,
wherein a first dimension of the two-dimensional array structure represents addresses, and
wherein a first dimension of the two-dimensional array structure represents addresses, and
wherein a second dimension of the two-dimensional array structure represents partitions;
wherein a second dimension of the two-dimensional array structure represents partitions;
assign a partition of the partitions to a network computing device of a cryptocurrency payment system;
determine to assign conditional access rights to an amount of assignable tokens of the assignable tokens to a network computing device of a cryptocurrency payment system to back certain interactions of the cryptocurrency payment system,
establish a self-enforcing smart contract to assign an amount of the assignable tokens to the partition in accordance with a self-enforcing contract;
establish the self-enforcing smart contract to define conditional access rights regarding the amount of the assignable tokens assigned to the partition,
wherein the conditional access rights are in accordance with a set of conditions;
wherein the conditional access rights are in accordance with a set of conditions,
a second memory element that stores operational instructions that, when executed by the digital asset custodial device and in accordance with the self-enforcing smart contract, causes the digital asset custodial device to:
a second memory element that stores operational instructions that, when executed by a digital asset custodial device of the one or more computing devices, causes the digital asset custodial device to:
lock the amount of the assignable tokens in the address;
store assignable tokens in a first partition of a plurality of partitions of a first address of the two-dimensional array structure; and
provide the conditional access rights to the amount of the assignable tokens to the network computing device via the partition; and
provide the conditional access rights to the amount of the assignable tokens to the network computing device,
wherein the assignment of the conditional access rights is a self-enforcing smart contract embedded in an assignable token distributed ledger, and
wherein the self-enforcing smart contract is operable to verify one or more aspects of the certain interactions;
a third memory element that stores operational instructions that, when executed by the network computing device and in accordance with the conditional access rights, causes the network computing device to:
a third memory element that stores operational instructions that, when executed by the digital asset custodial device and in accordance with the self-enforcing smart contract, causes the digital asset custodial device to:
lock at least a portion of the amount of the assignable tokens in the partition to back one or more cryptocurrency-based payments of the cryptocurrency payment system.
lock the amount of the assignable tokens in the first partition of the first address of the two-dimensional array structure, wherein the first address is associated with the digital asset custodial device;
associate the amount of assignable tokens with the first partition, wherein the first partition is associated with the network computing device;
…
wherein the network computing device does not store the amount of the assignable tokens.
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 8-14 are rejected under 35 U.S.C. 101 because the claimed “computer readable medium” is sufficiently broad to encompass a “transitory computer readable medium”. However, “a transitory, propagating signal does not fall within any statutory category”. See MPEP §2106.03(I), and In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007).
Claims 1-14 are rejected under 35 U.S.C. §101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to an abstract idea, without “significantly more”.
Based on the flowchart in MPEP § 2106, Step 1 of the Alice/Mayo analysis is: “Is the claim to a process, machine, manufacture or composition of matter?”
In regards to Step 1 of the Alice/Mayo analysis, independent claim 1 is a method claim, and independent claim 8 is an article of manufacture claim or product by process claim (“computer readable medium”).
For the sake of compact prosecution, we continue with the Alice/Mayo “abstract idea” analysis.
Step 2A, prong 1 of the Alice/Mayo analysis is: “Does the claim recite a law of nature, a natural phenomenon (product of nature), or an abstract idea?”
In regards to Step 2A, prongs 1 and 2 of the Alice/Mayo analysis, the abstract idea elements recited in independent claim 8 are shown in italic font. (The “additional elements” and “extra solution steps” are shown in italic and underlined font):
1. A method comprises:
storing, by a digital asset custodial device, assignable tokens to an address of a two-dimensional array structure,
wherein a first dimension of the two-dimensional array structure represents addresses, and
wherein a second dimension of the two-dimensional array structure represents partitions;
assigning, by the digital asset custodial device, a partition of the partitions to a network computing device of a cryptocurrency payment system;
establishing, by the digital asset custodial device, a self-enforcing smart contract to assign an amount of the assignable tokens to the partition in accordance with a self-enforcing contract;
establishing, by the digital asset custodial device, the self-enforcing smart contract to define conditional access rights regarding the amount of the assignable tokens assigned to the partition, wherein the conditional access rights are in accordance with a set of conditions;
locking, by the digital asset custodial device and in accordance with the self-enforcing smart contract, the amount of the assignable tokens in the address;
providing, by the digital asset custodial device and in accordance with the self-enforcing smart contract, the conditional access rights to the amount of the assignable tokens to the network computing device via the partition; and
locking, by the network computing device and in accordance with the conditional access rights, at least a portion of the amount of the assignable tokens in the partition to back one or more cryptocurrency-based payments of the cryptocurrency payment system.
More specifically, claims 1-14 recite an abstract idea: “Certain Methods of Organizing Human Activity", specifically “Fundamental Economic Principles or Practices (including Hedging, Insurance, Mitigating Risk)”, “Commercial or Legal Interactions (Including Agreements in the form of Contracts; Legal Obligations; Advertising, Marketing, or Sales Activities or Behaviors; Business Relations)”, or “Managing Personal Behavior or Relationships or Interactions Between People (Including Social Activities, Teaching, and Following Rules or Instructions)” as discussed in MPEP §2106(a)(2) Parts (I) and (II), and in the 2019 Revised Patent Subject Matter Eligibility Guidance.
The “Commercial or Legal Interactions” elements include:
“establishing … a self-enforcing smart contract to assign an amount of the assignable tokens to the partition in accordance with a self-enforcing contract”.
“establishing … the self-enforcing smart contract to define conditional access rights regarding the amount of the assignable tokens assigned to the partition, wherein the conditional access rights are in accordance with a set of conditions”.
The “additional elements” include: “a digital asset custodial device”, “a network computing device”, and “a cryptocurrency payment system”.
Moreover, “additional extra-solution elements” include: “storing … assignable tokens to an address of a two-dimensional array structure, wherein a first dimension of the two-dimensional array structure represents addresses, and wherein a second dimension of the two-dimensional array structure represents partitions”, and “providing … in accordance with the self-enforcing smart contract, the conditional access rights to the amount of the assignable tokens to the network computing device”.
Step 2A, prong 2 of the Alice/Mayo analysis is “Does the claim recite additional elements that integrate elements that integrate the judicial exception into a practical application?”
In regards to Step 2A, prong 2 of the Alice/Mayo analysis, this abstract idea is not integrated into a practical application, because:
The claim is directed to an abstract idea with additional generic computer elements. The generically recited computer elements (“a digital asset custodial device”, “a network computing device”, and “a cryptocurrency payment system”) do not add a meaningful limitation to the abstract idea, because they amount to simply implementing the abstract idea on a computer. The claim amounts to adding the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.
The extra-solution activities (“storing … assignable tokens to an address of a two-dimensional array structure, wherein a first dimension of the two-dimensional array structure represents addresses, and wherein a second dimension of the two-dimensional array structure represents partitions”, and “providing … in accordance with the self-enforcing smart contract, the conditional access rights to the amount of the assignable tokens to the network computing device”) do not add a meaningful limitation to the method, as they are insignificant extra-solution activity;
The combination of the abstract idea with the additional elements (generically recited computer elements), and/or with the extra-solution activities, does not integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo analysis is: “Does the claim recite additional elements that amount to significantly more than the judicial exception?”
In regards to Step 2B of the Alice/Mayo analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea, because:
When considering the elements "alone and in combination" (“a digital asset custodial device”, “a network computing device”, and “a cryptocurrency payment system”), they do not add significantly more (also known as an "inventive concept") to the exception, because they amount to simply implementing the abstract idea on a computer. Instead, they merely add the words "apply it" (or an equivalent) with the abstract idea, or mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea.
In regards to the extra solution activities (“storing … assignable tokens to an address of a two-dimensional array structure, wherein a first dimension of the two-dimensional array structure represents addresses, and wherein a second dimension of the two-dimensional array structure represents partitions”, and “providing … in accordance with the self-enforcing smart contract, the conditional access rights to the amount of the assignable tokens to the network computing device”), these are recognized as such by the court decisions listed in MPEP § 2106.05(d).
More specifically, in regards to the “storing” step, see the court cases Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory); and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (storing and retrieving information in memory).
More specifically, in regards to the “providing” step, see the court cases OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network) and (presenting offers and gathering statistics), OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Moreover, in regards to “apply it”, according to MPEP § 2106.05(f)(2):
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).
In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The Examiner holds that the independent claims “use a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data)” or “simply add a general purpose computer or computer components after the fact to an abstract idea”.
Independent claim 8 is rejected on the same grounds as independent claim 1. Independent claim 8 is also rejected on the grounds that it recites a computer-readable medium, which is merely another generic computer component.
All dependent claims are also rejected, because they merely further define the abstract idea.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US-2022/0351163-A1 to Filter et al.
See Abstract: “A method includes sending, by a trader computing device, an amount of a first digital asset to a digital asset exchange device for an exchange of the amount of the first digital asset to an amount of a second digital asset. The trader computing device includes a trader wallet that stores assignable tokens. The method further includes determining to assign conditional access rights to an amount of the assignable tokens to the digital asset exchange device to back the exchange, locking the amount of the assignable tokens, and providing the conditional access rights to the amount of the assignable tokens to the digital asset exchange device. The method further includes exchanging, by the digital asset exchange device, the amount of the first digital asset to the amount of the second digital asset and sending the amount of the second digital asset to the trader computing device.”
US 2022/0076334 A1 to Filter et al.
See Abstract: “A method includes determining, by a digital asset custodial device, to assign conditional access rights to an amount of assignable tokens stored in a digital asset custodial device account of the digital asset custodial device to a network computing device of a cryptocurrency payment system to back certain interactions of the cryptocurrency payment system. The conditional access rights are in accordance with a set of conditions. The assignment of the conditional access rights is a self-enforcing smart contract embedded in an assignable token distributed ledger. The method further includes locking, by the digital asset custodial device and in accordance with the self-enforcing smart contract, the amount of the assignable tokens stored in the digital asset custodial device account and providing the conditional access rights to the amount of the assignable tokens to the network computing device. The network computing device does not store the amount of the assignable tokens.”
US-2022/0076331-A1 to Filter et al.
See Abstract: “A method includes initiating, by a first computing device, an interaction with a second computing device. The first computing device includes a first digital asset unit and the second computing device includes a second digital asset unit. The first digital asset unit stores assignable tokens. The method further includes determining to assign conditional access rights to an amount of the assignable tokens to the second digital asset unit where the conditional access rights are in accordance with a set of conditions. The assignment of conditional access rights is a self-enforcing smart contract embedded in an assignable token distributed ledger technology. The method further includes locking the amount of the assignable tokens stored in the first digital asset unit and providing the conditional access rights to the amount of the assignable tokens to second digital asset unit. The second digital asset unit does not store the amount of the assignable tokens.”
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Any inquiry concerning this communication or earlier communications should be directed to Examiner Ayal Sharon, whose telephone number is (571) 272-5614, and fax number is (571) 273-1794. The Examiner can normally be reached from Monday to Friday between 9 AM and 6 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SPE Christine Behncke can be reached at (571) 272-8103 or at christine.behncke@uspto.gov. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sincerely,
/Ayal I. Sharon/
Examiner, Art Unit 3695
February 18, 2026