DETAILED ACTION
Claims 1-2 are pending. This application is a Continuation of 18/186,753 which filed on March 20, 2023, as Patent 12,250,315. The 18/186,753 is a Continuation of 17/706,438 which filed on March 28, 2022, as Patent 11,611,438. The 17/706,438 claims priority to the Provisional 63/166,917 which filed on March 26, 2021.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,250,315. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar features as follows:
Claim 1 Claim 1 of Patent 12,250,315
an activity initiation request from a client device associated with a user;
wherein the activity initiation request comprises: at least one operation on a blockchain for exchange of at least one first token of a first token type for at least one second token of a second token type;
detecting, by the at least one processor, a transfer of the at least one token of the first token type into at least one segregated token storage;
detecting, by the at least one processor, a transfer of the at least one second token of the second token type into the at least one segregated token storage; and
automatically locking, by the at least one processor, access to the at least one token of the first token type in the at least one segregated token storage according to at least one condition in response to the transfer of the at least one second token of the second token type; and
automatically facilitating, by the at least one processor, the exchange of the at least one first token of the first token type for the at least one second token of the second token type
an activity initiation request from a first client device associated with a first user;
wherein the activity initiation request comprises: at least one operation on a blockchain for exchange of a first token type for a second token type, and at least one reverse operation on the blockchain for exchange of the second token type for the first token type upon at least one condition being satisfied;
… detect a transfer of the first token type into at least one segregated token storage; wherein the first client device has permissions to access the at least one segregated token storage;
detecting, by the at least one processor, a transfer of the second token type from a second token storage associated with the second client device to a first token storage associated with the first client device;
automatically locking, by the at least one processor, access to the first token type in the at least one segregated token storage according to condition-dependent permissions in response to the transfer of the second token type;
detecting, by the at least one processor, the at least one reverse operation matching the at least one condition; automatically unlocking, by the at least one processor and in response to the detected at least one reverse operation of the first token type…
This is an anticipation rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over PG Pub 20210073913 (hereinafter Ingargiola) in view of Pub 20210119807 (hereinafter Chen)
Regarding claim 1, Ingargiola discloses a method comprising:
receiving, by at least one processor, an activity initiation request from a client device associated with a user (par. [0133]-[0135] disclose a client requests for an asset);
wherein the activity initiation request comprises: at least one operation on a blockchain for exchange of at least one first token of a first token type for at least one second token of a second token type (Fig. 6 and par. [0158]-[0163] disclose a trading network performs an exchange of US dollar tokens for bitcoin tokens between two entities);
detecting, by the at least one processor, a transfer of the at least one token of the first token type into at least one segregated token storage; detecting, by the at least one processor, a transfer of the at least one second token of the second token type into the at least one segregated token storage (Fig. 9 and par. [0166]-[0167] disclose “…a custodian module operating on behalf of a custodian entity…at least a first blockchain-based ledger associated with the custodial entity and associated with a first asset type, wherein the first blockchain-based ledger is generated with a first asset genesis block that includes a first signature of a first hash digest of first raw data for the first asset genesis block, the first signature being generated by a central administration module…separate from the custodian module (902). Next, the process …can include approving the first request by issuing a first token to the first client (912) and generating a first new block (e.g. first segregated token storage) on the first blockchain-based ledger that identifies the first client and the first collateral associated with the first token. Par. [0168]-[0169] disclose similar process as presented above for the second client. Par. [0170]-[0180] disclose a trade can be a payment transaction or repo or repossession (reverse operation) transaction. Furthermore, a redemption request received at the custodial entity from the first client to redeem the first token, the process can include burning the first token and transferring the first client assets of the second asset type from the custodial ledger to the first client. The first asset genesis block can further include redemption conditions for the first client to redeem the first collateral. And similarly, the process can provide the second client access to redeem the second token).
Ingargiola does not expressly disclose automatically locking, by the at least one processor, access to the at least one token of the first token type in the at least one segregated token storage according to at least one condition in response to the transfer of the at least one second token of the second token type. However, locking an account when a transaction not completed is known art. Chen discloses this feature (Fig. 3 and par. [0066]-[0069] discloses a token includes restrictions on the ability for the digital asset to be transferred from one blockchain account to another with the use of a locking script that checks that the recipient of the digital asset is a specific blockchain address to prevent a transfer of the digital asset to another blockchain). Therefore, it would have been obvious before the effective filing date of the claimed invention to modify Ingargiola with Chen to further teach the above features. One would have done so to combine known elements according to known methods to yield predictable results; and
Ingargiola discloses automatically facilitating, by the at least one processor, the exchange of the at least one first token of the first token type for the at least one second token of the second token type (par. [0170]-[0180] disclose a trade can be a payment transaction or repo or repossession (reverse operation) transaction. Par. [0159] discloses the custodian issues a digital representation of assets, such as a token. Since it is an exchange between dollars to Bitcoin, the tokens issued to both clients represent dollars and Bitcoin for each type of token)).
Regarding claim 2, Ingargiola discloses wherein the at least one first token is in at least one first token storage; and wherein the at least one second token is in at least one second token storage (as presented above, Figs. 6, 9 and related text disclose the custodian generates different wallets (e.g. segregated storages for segregated tokens) for the US dollar account and the Bitcoin account and each client is received a new token that reflect the account they can access to which the tokens reflect the amount for the exchange they agree upon).
Inquiry communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI M TRAN whose telephone number is (571)270-1994. The examiner can normally be reached Mon-Fri: 9am-5pm.
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/TRI M TRAN/Primary Examiner, Art Unit 2432
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