DETAILED ACTION
This is office action on the merits in response to the application filed on 06/12/2026.
Claims 1-20 have been filed by the applicant.
Claims 1, 5, 8, 12, 15-20 are currently amended.
Claims 1-20 are currently pending and have been examined.
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 .
Notice of Pre-AIA or AIA Status
Double Patenting rejection:
The examiner acknowledged that the applicant declined at this time to file a Terminal Disclaimer. The examiner notes that although the amendment changed the scope of the claims, the double patenting rejection still stands, see revised double patenting rejection below.
Rejection under 101:
Previous 101 rejection regarding claims 15-20 are withdrawn based on amendment.
The applicant argues that the claims do not recite abstract idea. The examiner respectfully disagrees. The claims recite a process of receiving event information, determining proposed change to a first table and applying proposed change, which is an abstract idea of managing personal behavior or interactions. The use of the recitation of “off-chain” and “distributed ledger” is generally linking the use of the judicial exception to a particular technological environment. The claims do not recite how distributed ledger are implemented in a non-conventional way or how they improve computer or network functionality. Instead, they are used in the claims for their expected purpose of maintaining records.
The applicant further cited DDR Holdings, LLC v. Hotels.com, L.P., and argues the reasoning of DDR applies to the claims to overcome a problem specifically arising in the realm of computer networks. The examiner respectfully disagrees. DDR is directed to solving problems specific to generating a webpage, but the current claims, as stated above, recite personal interactions. Therefore, they are in different fields of endeavor, the reasoning cannot be applied.
Therefore, 101 rejection is maintained.
Rejection under 103:
The applicant argues that Bougalis does not disclose “group attribute state” because Bougalis’s transaction state is tied to a proposed ledger modification instead of attribution change to a plurality of addresses. The examiner respectfully disagrees. Bougalis discloses updating ledger based on a transaction state change [0084-0088], so Bougalis discloses the same changes as recited in the claims. In addition, Bougalis is not cited to teach plurality of addresses.
Applicant' s other arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 8 and 15 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 18 and 35 of copending Application No. 18961993. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is anticipated by claim 2 of copending Application No. 18961993.
Claim 8 is anticipated by claim 19 of copending Application No. 18961993.
Claim 15 is anticipated by claim 35 and claim 19 of copending Application No. 18961993.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 therefore, 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 an abstract idea without significantly more.
In the instant case, claims 1-7 are directed to a system comprising a memory and a processor, claims 8-14 are directed to a method and claims 15-20 are directed to non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
The limitations of independent claim 1, which is representative of independent claims 15 and 16, have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
An apparatus for generating attribution data associated with transactions, the apparatus comprising: at least one memory; and at least one processor coupled to the at least one memory and configured to:
receive a notification of an event associated with a transaction in a network;
determine, based on the event, a proposed change to a group attribution state by obtaining first data related to a listing of group addresses in which each member in the listing of group addresses has at least one respective member address and second data from a first table comprising the group attribution state, wherein the first table having the group attribution state is maintained off-chain from a distributed ledger of the network, and wherein the group attribution state represents current attribution data, for a plurality of addresses, of tokenized assets to one or more groups associated with the listing of group addresses; and
apply the proposed change to the group attribution state to the first table to obtain a second table with a new attribution state.
Limitations A through D under the broadest reasonable interpretation covers steps or functions of managing personal behavior. Other than reciting generic computer hardware in limitation A and B, nothing in the claim element differentiates the limitation from processes of following instructions. Therefore, limitations A through D recite an abstract idea, as highlighted above, that is consistent with the following instructions aspects of certain method of organizing human activities.
Accordingly, claim 1, and by analogy similar claims 8 and 15, recite abstract ideas and the analysis proceed to Step 2A.2.
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional elements in bold below:
An apparatus for generating attribution data associated with transactions, the apparatus comprising: at least one memory; and at least one processor coupled to the at least one memory and configured to:
receive a notification of an event associated with a transaction in a network;
determine, based on the event, a proposed change to a group attribution state by obtaining first data related to a listing of group addresses in which each member in the listing of group addresses has at least one respective member address and second data from a first table comprising the group attribution state, wherein the first table having the group attribution state is maintained off-chain from a distributed ledger of the network, and wherein the group attribution state represents current attribution data, for a plurality of addresses, of tokenized assets to one or more groups associated with the listing of group addresses; and
[D] apply the proposed change to the group attribution state to the first table to obtain a second table with a new attribution state.
The additional element(s) in limitation A are recited at a high level of generality, merely serving as a tool to perform the abstract idea (MPEP § 2106.05(f)). The “in a network” language in limitation B is a high-level instruction to implement the abstract idea in a technological environment, recited at a high level of generality. As such, when the additional elements are considered individually and as an ordered combination, the claim as a whole amounts to no more than or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, the additional element(s) do not integrate the abstract idea into a practical application because they do not recite any additional elements indicative of integration into a practical application. Rather, the claim as whole generally links the judicial exception to a technological environment defined by high level recitations of a computer and the Internet. Therefore, the claim is directed to an abstract idea and the analysis proceeds to 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 the considerations from Step 2A.2 are reevaluated. As discussed under Step 2A.2, the additional element(s) amount to no more than generally link the abstract idea to a technological environment through “instructions” performed by a generic computer. Because those instructions embody the abstract idea, the claim itself is merely a recitation of the abstract idea and an instruction to “apply it” on a computer. This is not enough to provide an inventive concept. Therefore, claims 1, 8, and 15 are not patent eligible.
Dependent claims 2, 9 and 16 further recite passing data in a request which further recites the abstract idea. The claim does not recite additional elements that integrate the abstract idea to a practical application nor provide significantly more than the abstract idea.
Dependent claims 3, 10 and 17 further recite the event data which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea. The claim does not recite additional elements that integrate the abstract idea to a practical application nor provide significantly more than the abstract idea.
Dependent claims 4-6, 11-13 and 18-20 further recite additional elements of blockchain network, nodes and consensus protocol which generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 7 and 14 further recite recording transactions which further recites the abstract idea. The additional element of distributed ledger in an immutable manner generally link the use of the judicial exception to a particular technological environment (MPEP § 2106.05(h)). The additional elements fail to recite a practical application nor significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims 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, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
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 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(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bougalis (US 20200202344 A1), and further in view of Wilson (US 20200051069 A1) and Jacques de Kadt (US 20180096163 A1).
With respect to claim 1, 8 and 15:
Bougalis teaches (in italic):
An apparatus for generating attribution data associated with transactions, the apparatus comprising: at least one memory; and at least one processor coupled to the at least one memory and configured to. (In still other embodiments, the techniques provided herein are implemented with hardware circuits. Still other embodiments are implemented with a microcontroller having a processor, a number of input/output ports for receiving and outputting data, and a number of embedded routines by the processor for carrying out the functionality provided herein. The storage devices may include any number of durable storage devices (e.g., any electronic, optical, and/or magnetic storage device, including RAM. [0114-0117])
receive a notification of an event associated with a transaction in a network. (agent 104 utilizes computing device 114 to generate a transaction 120. In 242, transaction 120 is received. the term “transaction” refers to any proposed change to the ledger. The submitted transaction then assumes a state as a proposed change/modification to the ledger, which may ultimately be reflected in an updated ledger if such transaction is authenticated and verified. [0047 0085])
determine, based on the event, a proposed change to a group attribution state […]. (the various components of the triple (public key 308, transaction ID 316 and signature 318) are extracted. In 244, it is determined whether transaction signature 318 is valid. for purposes of the present disclosure, the term “transaction” refers to any proposed change to the ledger. Upon authentication, in order for a proposed transaction 120 to be verified and thereby reflected in decentralized ledger 140, it may be expected or required for decentralized consensus layer 408 (described below) to reach consensus with respect to that transaction 120. The submitted transaction then assumes a state as a proposed change/modification to the ledger, which may ultimately be reflected in an updated ledger if such transaction is authenticated and verified. [0047 0084-0085])
apply the proposed change to the group attribution state to the first table to obtain a second table with a new attribution state. (authentication succeeds in 252 and the transaction 120 may be performed. transaction 120, which may include a triple of a transaction ID 316, transaction signature 318 and public key 308 is transmitted by client 112 in order to initiate an attempted update to decentralized ledger 140 in decentralized transaction system 106. [0086-0088])
Bougalis does not explicitly teach the following limitations. However,
Wilson teaches:
by obtaining first data related to a listing of group addresses in which each member in the listing of group addresses has at least one respective member address[…]. (The table of balances 105 may account for all tokens that have been deployed or issued. When a transfer of the token occurs (i.e., balances change), the table of balances 105 may be updated and distributed to each copy of the security token 102 stored on the different network nodes 140. In some configurations, the compliance rule 106 may determine whether the tokens in the parent smart contract 302 are allowed to continue trading by determining whether the upgraded address 111 field is set (indicating that trading is restricted) or unset (indicating that trading is allowed). [0055-0058 0102])
wherein the group attribution state represents current attribution data, for a plurality of addresses, of tokenized assets to one or more groups associated with the listing of group addresses. (The table of balances 105 may account for all tokens that have been deployed or issued. When a transfer of the token occurs (i.e., balances change), the table of balances 105 may be updated and distributed to each copy of the security token 102 stored on the different network nodes 140. [0055-0058 0102])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as disclosed by Bougalis to obtain data from address listing with the technique as disclosed by Wilson to allow a clear ability to perform audits and provide an easy way to navigate as Wilson suggested [0027].
Bougalis in view of Wilson does not explicitly teach the following limitations. However,
Jacques de Kadt teaches:
second data from a table comprising the group attribution state. (At step 504, a database table, such as of a non-relational database, is updated and/or generated from the data contained within the cryptographically secured ledger, and in some embodiments, reflects one or both of the current state of the associated data and/or historical transactions associated with that data. The database table is made available, for example, via a standard interface, such as a programmatic interface provided by an implementing database engine (e.g., a database management system). [0059])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as disclosed by Bougalis in view of Wilson to obtain data from a state table with the technique as disclosed by Jacques de Kadt to provide data immutability and synchronization as Jacques de Kadt suggested [0012].
Bougalis in view of Wilson and Jacques de Kadt does not explicitly teach the following limitations. However,
MERCURI teaches:
wherein the first table having the […] attribution state is maintained off-chain from a distributed ledger of the network, and. (In an example, when the system 100 receives an event from the participant to sell a car on the blockchain 120, the system 100 may identify the participant using the identity service 192. Once the participant is identified, the system 100 may retrieve further events from the off-chain storage or the blockchain 120 to identify events associated with the identified participant. The system 100 may then determine whether the message changes the state of the blockchain object and updates the state if needed in the off-chain storage 110, where it maintains a copy of the current state of the blockchain object. [0087-0127])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system as disclosed by Bougalis in view of Wilson and Jacques de Kadt to maintain attribution state in off-chain storage with the technique as disclosed by MERCURI to provide efficient management of data as MERCURI suggested [0012].
Claim 8, a method with the same scope as claim 1, is rejected.
Claim 15, a CRM with the same scope as claim 1, is rejected.
With respect to claim 2, 9 and 16:
Wilson further teaches a wherein the first data is passed in a request. (In some configurations, the compliance rule 106 may determine whether the tokens in the parent smart contract 302 are allowed to continue trading by determining whether the upgraded address 111 field is set (indicating that trading is restricted) or unset (indicating that trading is allowed). The term “determining” may include calculating, computing, generating, processing, deriving, investigating, looking up (e.g., looking up in a table, a database or another data structure) [0102 0141])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system to pass data in a request with the technique as disclosed by Wilson to allow a clear ability to perform audits and provide an easy way to navigate as Wilson suggested [0027].
Claim 9, a method with the same scope as claim 2, is rejected.
Claim 16, a CRM with the same scope as claim 2, is rejected.
With respect to claim 3, 10 and 17:
Bougalis further teaches wherein the event flags whether an address is tracked and stored in an address table. (The submitted transaction then assumes a state as a proposed change/modification to the ledger, which may ultimately be reflected in an updated ledger if such transaction is authenticated and verified. [0047])
Claim 10, a method with the same scope as claim 3, is rejected.
Claim 17, a CRM with the same scope as claim 3, is rejected.
With respect to claim 4, 11 and 18:
Bougalis further teaches wherein the network comprises a blockchain network. (As a specific example, a shared distributed ledger may be implemented on a blockchain that records every transaction that occurs in a cryptocurrency system. [0024])
Claim 11, a method with the same scope as claim 4, is rejected.
Claim 18, a CRM with the same scope as claim 4, is rejected.
With respect to claim 5, 12 and 19:
Bougalis further teaches wherein the blockchain network comprises a plurality of compute nodes comprising a distributed consensus algorithm and the distributed ledger. (a ledger may be utilized in a decentralized fashion, whereby the ledger is effectively a distributed or decentralized database shared with a plurality of nodes. According to this embodiment, multiple peer-to-peer transaction nodes or servers maintain a list of candidate transactions (described below) in an attempt to reach consensus. [0044-0045])
Claim 12, a method with the same scope as claim 5, is rejected.
Claim 19, a CRM with the same scope as claim 5, is rejected.
With respect to claim 6, 13 and 20:
Bougalis further teaches wherein transactions are recorded on the distributed ledger when a threshold level of consensus is obtained from the distributed consensus algorithm on the blockchain network. (decentralized consensus system includes a transaction in a decentralized ledger if said transaction achieves an approval rating greater than a predetermined threshold. [claim 7, 0110-0112])
Claim 13, a method with the same scope as claim 6, is rejected.
Claim 20, a CRM with the same scope as claim 6, is rejected.
With respect to claim 7 and 14:
Jacques de Kadt further teaches wherein transactions are recorded on the distributed ledger in an immutable manner. (In the case of asset tracking, it may be appreciated that recording various transactions, such as ownership transactions for a given asset or set of assets, in a cryptographically secured ledger would provide an immutable audit trail for those transactions. [0018])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system to record data in immutable manner with the technique as disclosed by Jacques de Kadt to provide data immutability and synchronization as Jacques de Kadt suggested [0012].
Claim 14, a method with the same scope as claim 7, is rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20170301047 A1: System and methods for managing dynamic electronic documents on a private distributed ledger comprise establishing a dynamic electronic document comprising a first state object, wherein the state object references a prior approved first transaction; proposing a second transaction comprising as an input the first state object and as an output a transaction command to alter the state object as well as what parameters are required to validate the second transaction; validating the proposed second transaction; and updating the state object on a private distributed ledger to reference the second transaction.
US 20230028089 A1: Decentralized computer systems and methods are disclosed for efficient transaction dispute management using blockchain. One method includes: receiving transaction information of a transaction, wherein the transaction information includes (1) an identifier of an issuer of a payment source account, (2) an identifier of an acquirer of a payment account of a merchant, and (3) the amount of resources to be applied in the transaction; generating a blockchain entry that stores the received transaction information in a shared ledger to participants of the blockchain; receiving in the shared ledger, from a participant, (1) an indication of a dispute of the transaction information, and (2) a proposed change to the transaction information; prompting the participants of the blockchain to respond to the indication of the dispute; if one of the participants denies the proposed change, executing a dispute settlement process to determine a revised transaction information.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZESHENG XIAO whose telephone number is (571)272-6627. The examiner can normally be reached 10:00am-4:30pm M-F.
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, Patrick McAtee can be reached on (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.X./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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