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 .
Status of the Application
Claim 1 has been examined in this application.
The filling date of this application number recited above is 26-February-2025. Domestic Benefit/National Stage priority has been claimed for Continuation of Prior Applications 16/885,016 and 16/201,950 in the Application Data Sheet, thus the examination will be undertaken in consideration of 27-May-2020 and 27-November-2018, as the priority date, for applicable claims.
The information disclosure statement (IDS) submitted on 27-June-2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1 is rejected under 35 U.S.C. 101 because 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. The Claim is directed to an abstract idea, Mental Process and/or Certain Methods of Organizing Human Activity. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea.
As per Claim 1, the claim recites “A [storage] storing [useable instructions] that, when used by one or more [people], cause the one or more [people] to perform operations comprising:
receiving, by a [person], a first swap request from … a requestor, the received first swap request including a requestor identifier associated with the requestor, a first payment amount, and an address to a smart contract associated with a financial entity and stored on a distributed ledger, wherein the received first swap request corresponds to a received first legacy transaction included in a processing queue;
transmitting, by the [person], the received first swap request to … the financial entity, wherein the [financial entity] is configured to … sign the transmitted first swap request;
communicating, by the [person], the [signed] swap request to the [requestor] based on a receipt thereof from the [financial entity], wherein the communication enables the [requestor] to generate, for storage on the distributed ledger, a first transaction based on the [signed] swap request;
removing, by the [person], the first legacy transaction from the processing queue based on a determination that the distributed ledger includes the first transaction associated with the stored smart contract and generated based on the [signed] swap request, the generated first transaction providing a first token value corresponding to the first payment amount to the requestor identifier.”
The limitation of the claim recited above, considering the claims without the additional elements (e.g. computer, server, etc.), under its broadest reasonable interpretation (BRI), recites a mental process. The method recited above is to receive transaction data, select a contract, sign, record them on a ledger, and provide a token of corresponding value (i.e. check, cash, etc.), wherein a person would do it by head and hand is considered mental process, as explained under MPEP 2106.04(a)(2)(III):
“The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper")”.
Additionally, the claimed method is a transaction settlement process, to [0025] “mitigate risks of conventional (“legacy”) settlement technologies”, wherein risk mitigation is a fundamental economic practice, which is under Certain Methods of Organizing Human Activity. Therefore, the claim recites an abstract idea.
This judicial exception is not integrated into practical application. In particular, the claim recites an additional element of “non-transitory computer storage medium”, “computing device”, “server”, “remote computing device”, and “remote server” to perform the method recited above by instructing the abstract idea to be performed “by” these generic computer components. These general computer components are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. These additional elements are generic, off-the-shelf components available to the public, and does not require any specialized hardware or equipment to perform the claimed method, but are merely applied to perform its basic functionalities, such as: receive, transmit, communicate, and remove data. The claim is generally linked to the technology of blockchain (e.g. distributed ledger, smart contract, etc.), with mere instructions to “apply it” on a generic computer component. Mere instructions to implement the abstract idea on a generic computer system, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of integration into a practical application; see MPEP 2106.05(f). Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, transmit, communicate, or remove data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., mental process and/or certain methods of organizing human activities) 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). Accordingly, this additional element do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, the additional element of using a computer based system is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer system. The claims lack sufficient technical details to provide how these limitations may provide technological steps or technical details on how it is particularly implemented on a computer to improve its system or any of its underlying hardware or components (e.g. how it is performed on the computer, how it could improve the computer itself, how it could manipulate the computer to function in a specific way other than its generic functionality, and/or how it could improve any of the underlying technology), but merely applies the generic computer system to perform its generic functionalities. Mere instructions to implement the abstract idea on a generic computer system, or merely using the generic computer system as a tool to perform the abstract idea (e.g. mere “apply it”) is not indicative of an inventive concept (aka “significantly more”). In view of the Specification, the judicial exception is not applied with or used by a particular machine. As held in Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199 (1978) and Bancorp Services v. Sun Life, 687 F.3d 1266, 1276, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012), “the routine use of a computer to perform calculations cannot turn an otherwise ineligible mathematical formula or law of nature into patentable subject matter.” Therefore, Claim 1 is not drawn to eligible subject matter as it is directed to an abstract idea without significantly more.
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over SEGER, II (US 20170124556 A1), in view of NPL “Quora response: “When writing data to a blockchain, is new info stored only as new blocks (adding links) or is data added to existing blocks (fatter links)?”, in view of ISAACSON et al. (US 20180025442 A1), and in view of Jacobs et al. (US 20170237554 A1).
As per Claims 1 and 15, Seger discloses a non-transitory computer storage medium storing computer-useable instructions that, when used by one or more computing devices, cause the one or more computing devices to perform operations comprising ([0067] "Electronic storage 146 may comprise non-transitory storage media that electronically stores information" and see Figure 1 for hardware which [0031] "FIG. 1 illustrates a system 100 configured for providing a cryptographic platform for exchanging information, in accordance with one or more embodiments"):
receiving, by a server, a first swap request from a remote computing device associated with a requestor, the received first swap request including a requestor identifier associated with the requestor, a first payment amount, and an address to a smart contract associated with a financial entity and stored on a distributed ledger, wherein the received first swap request corresponds to a received first legacy transaction included in a processing queue ([0104] “A submitter may identify an event to be stored 505 (e.g., a user may initiate a transaction at a client 410, and the client 410 may recognize that data associated with the transaction is to be stored in the distributed ledger). An event may be any set of information (which may be verified and/or validated) pertaining to an activity conducted at a point in time (e.g., the transaction) … This information may include a verifiable fact about the event (e.g., user identity, credit card number, etc.)” wherein [0105] "Each event may include a header (e.g., including an ID and the IDs of involved parties) as well as the data (e.g., the transaction amount, a pdf of the contract, an instant message, etc.)" see Figure 5 block 505);
…
communicating, by the server, the digitally-signed swap request to the remote computing device based on a receipt thereof from the remote server, wherein the communication enables the remote computing device to generate, for storage on the distributed ledger, a first transaction based on the digitally-signed swap request (([0104 lines 17-19] "The fact may be passed from the node 405 to a validation subsystem 415 for verification 520 (and/or may verify the fact itself)" see Figure 5 block 520, wherein the validation system for verification would obviously sign the request as “validated” for subsequent processing. See also [0038] “requiring that the intended party participate in the initial generation of the information transaction/recording of the information (e.g., requiring that the intended party cryptographically sign the message for it be entered into the ledger)”);
removing, by the server, the first legacy transaction from the processing queue based on a determination that the distributed ledger includes the first transaction associated with the stored smart contract and generated based on the digitally-signed swap request, the generated first transaction providing a first token value corresponding to the first payment amount to the requestor identifier ([0102] "In either case, the submission may be used to codify a new block 430 for a blockchain 450 (i.e., a distributed ledger). The new block 455 (e.g., block N) may be added the latest block in the blockchain 450 and thus the latest entry in the ledger" and [0111] "If all hashes agree 660, the block may be written, codifying the set of events within 670. If not, events may be re-queued for the next block 665" wherein a token value is provided during the process, see example in Figure 7 as disclosed [0115] “The points may be exchanged as specified by the user (e.g., the user's acres may be transferred to a party Z holding pepperonis 725, and party Z's pepperonis may be transferred to the user in exchange 730). The transfer may be performed by writing the transaction to the distributed ledger (e.g., via 545-580 of FIG. 5 and/or the process 600 of FIG. 6). The node 405 may notify the client 410 that the exchange has been completed, and the new points balances may be displayed to the user 735” see also [0028] “In some embodiments, for example, the various applications may include: storing and exchanging transaction-specific payment tokens”).
Although the prior art does not explicitly disclose that the first legacy transaction (i.e. event) is removed from the processing queue, it would have been obvious to one of ordinary skilled in the art that the event is removed from the queue once the block has been created, because once the block has been finalized, the queue is moved to the next event to create a next block. As disclosed in Figure 6 – blocks 660, 665, and 670, and [0111], the events are “re-queued for the next block” if the block hashes do not agree, wherein an event being “re-queued” would be interpreted as it is removed from the queue and then placed in to the queue again. But if the block hashes agree, then a block is written, and it’s also obvious that the event would be removed from the queue. As one of ordinary skilled in the art would understand, that since existing blocks cannot be edited with new data, as disclosed in the NPL ("When writing data to a blockchain, is new info stored only as new blocks (adding links) or is data added to existing blocks (fatter links)?", Quora, 22 May 2017), the first legacy transaction data would be removed once the block has been created, and the queue moves onto the next block for the next event. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the teachings of the Quora response to implement the blockchain embodiment of Seger by known methods in the art to yield predictable results of handling the processing queue. Moreover, for the purposes of compact prosecution, Examiner provides an additional prior art reference Jacobs, which also teaches:
communicating, by the server, the digitally-signed swap request to the remote computing device based on a receipt thereof from the remote server, wherein the communication enables the remote computing device to generate, for storage on the distributed ledger, a first transaction based on the digitally-signed swap request ([0010] “The method further comprises validating the digital asset and generating a second digital signature for the digital asset” as further disclosed [0029] “The issuer node can generate and digitally sign the digital asset. The issuer node can also obtain approval and a second digital signature from an administrative node (e.g., a central administrator for the network)” and see also [0030] “In alternative embodiments, the digital asset can be generated and/or signed by an interaction platform (instead of the issuer node)”);
removing, by the server, the first legacy transaction from the processing queue based on a determination that the distributed ledger includes the first transaction associated with the stored smart contract and generated based on the digitally-signed swap request, the generated first transaction providing a first token value corresponding to the first payment amount to the requestor identifier ([0192] "After settlement, the digital asset can be destroyed (e.g., deleted or marked as settled). Also, the digital asset can be digitally signed to indicate that settlement was completed, and the transaction record can be stored (e.g., in a database list or a blockchain ledger)").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize digital signature and removing the legacy transaction as in Jacobs in the system executing the method of Seger with the motivation of offering to [0020 lines 3-6] "allow digital assets to be sent quickly and directly to a recipient through a transparent process, regardless of the location and identities of the sender and receiver" as taught by Jacobs over that of Seger.
Seger may not explicitly disclose, but Isaacson teaches the following:
transmitting, by the server, the received first swap request to a remote server associated with the financial entity, wherein the remote server is configured to digitally sign the transmitted first swap request (See Figure 13 – step 1316 “present payment methods” as disclosed [0177] “In one example, the merchant site could indicate that it takes bitcoin, Paypal and visa. The browser 1308 can determine that the buyer can pay with visa or bitcoin. An interface can be presented 1316 to the shopper with the overlapping payment methods available at the merchant site 1304 and available to the user 1302” wherein [0300] “Underlying the payment request API could be a host or a group of smart contracts that from which the appropriate smart contract could be selected based on the data communicated in the API. For example, if the intersect between available payment options at the merchant and the payment options available for the user only includes bitcoin, then the bitcoin product sale and delivery smart contract could be selected and utilized for that transaction”);
communicating, by the server, the digitally-signed swap request to the remote computing device based on a receipt thereof from the remote server, wherein the communication enables the remote computing device to generate, for storage on the distributed ledger, a first transaction based on the digitally-signed swap request (See Figure 13 – steps 1318 to 1326 as disclosed [0177] “Assume that the user selects bitcoin 1318. Inasmuch as a cryptocurrency has been selected, the browser API must initiate the necessary processes to enable the shopper wallet 1310 to be able to send the appropriate amount of bitcoin to the merchant wallet 1306. As part of the API, the merchant can send data 1320 identifying the recipient public key, email address, or other identifying data for the merchant wallet 1306. The browser 1308 can receive this data. The browser can initiate the shopper wallet 1310 in step 1322. The browser 1308 can transmit the amount associated with the purchase in dollars or cryptocurrency, the merchant wallet 1306 address, or any other necessary data to the shopper wallet 1310 in step 1324. The browser API can initiate the transaction from the shopper wallet 1310 such that the cryptocurrency transaction 1326 occurs and gets initiated on the Blockchain such that the crypto currencies transferred to the merchant wallet 1306”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to utilize smart contract selection and remote server authorization as in Isaacson in the system executing the method of Seger with the motivation of offering to [0034] “improve the purchasing experience of users on the Internet” as taught by Isaacson over that of Seger.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
HOROSZCZAK et al. (US 20240257243 A1) discloses [0029] “The method may further comprise, at the minting nodes, upon deposition of blockchain-based assets, updating the data of the primary blockchain of the deposited assets to indicate the minting node as the new owner of the deposited assets, and upon redemption of blockchain-based assets, updating the data of the primary blockchain of the redeemed assets to indicate the user as the new owner of the redeemed assets and removing the corresponding redeemed minted assets from the distributed ledger system. This allows efficient usage of blockchain resources, as the primary blockchain(s) are updated only upon minting new assets at the distributed ledger system of the invention and upon redeeming the assets from the distributed ledger system of the invention”;
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H JUNG whose telephone number is (571)270-5018. The examiner can normally be reached Mon - Fri 9:30 - 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christine M Tran (Behncke) can be reached at (571) 272-8103. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HENRY H JUNG/ Examiner, Art Unit 3695
/CHRISTINE M Tran/ Supervisory Patent Examiner, Art Unit 3695
Prosecution Insights