DETAILED ACTION
This is first office action on the merits in response to the application filed on 03/28/2025.
Claims 1-20 have been filed by the applicant.
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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-18 are directed to a method, and claims 19-20 are directed to a non-transitory computer-readable storage medium. Therefore, these claims fall within the four statutory categories of invention.
The limitations of independent claim 1, which is representative of independent claim 19, have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 1 are identified in bold below:
A method for execution by one or more computing devices of a communication network for anonymous acquisition of an exchange item, the method comprises:
generating a new exchange item, wherein the new exchange item is controllable by a marketplace server of the communication network at least until acquisition of the new exchange item by an initial owner computing device;
taking control of the new exchange item in accordance with a secure custody protocol of the communication network;
receiving set up information from the initial owner computing device, wherein the set up information includes a request to associate the new exchange item with the initial owner computing device; and
facilitating transfer of at least a portion of the control of the new exchange item to associate the new exchange item with the initial owner computing device in accordance with the secure custody protocol
Limitations A through E under the broadest reasonable interpretation covers steps or functions of following rules or instructions. Other than reciting generic computer hardware in limitations and a “protocol” that are simply instructions, nothing in the claim element differentiates the limitation from processes that managing personal interactions between people. Therefore, limitations A through E recite an abstract idea, as highlighted above, that is consistent with the following rules or instructions aspects of certain methods of organizing human activities.
Accordingly, claim 1, and by analogy similar claim 19, recite an abstract idea 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:
A method for execution by one or more computing devices of a communication network for anonymous acquisition of an exchange item, the method comprises:
generating a new exchange item, wherein the new exchange item is controllable by a marketplace server of the communication network at least until acquisition of the new exchange item by an initial owner computing device;
taking control of the new exchange item in accordance with a secure custody protocol of the communication network;
receiving set up information from the initial owner computing device, wherein the set up information includes a request to associate the new exchange item with the initial owner computing device; and
facilitating transfer of at least a portion of the control of the new exchange item to associate the new exchange item with the initial owner computing device in accordance with the secure custody protocol
The additional element(s) in limitation A through E are recited at a high level of generality. The “protocol” elements of limitations C and F, are merely software “instructions” that as an ordered combination with limitations amount to a computer programmed to carry out the abstract idea. 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 and 19 are not patent eligible.
Dependent claims 2-4 further recite exchange information of the exchange item which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 5 further recite verifying the new exchange item which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 6 further recite additional element of signing blockchain with private key. The additional element recites the function of the blockchain without provide improvement to the blockchain technology. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 7 further recite additional element of key pair. The additional element recites digital key pair without provide improvement to the technology. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 8 further recite authorization for transfer which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 9 further recite verifying exchange item identifier which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 10 further recite indicating ownership of exchange item which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 11 further recite additional element of signing using private key. The additional element recites the function of the digital keys without provide improvement to the technology. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 12 further recite updating exchange item record which further recites the abstract idea. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 13 further recite additional element of updating blockchain with key pair. The additional element recites the function of the blockchain without provide improvement to the blockchain technology. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 14-16 further recite additional element of blockchain. The additional element recites the blockchain without provide improvement to the blockchain technology. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 17-18 further defines secure custody protocol. The additional elements fail to recite a practical application nor significantly more than the abstract idea.
Dependent claims 20 further recite the same limitations as in claims 10-12. Therefore, claim 20 does not recite a practical application nor significantly more than the abstract idea.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 9-10, 14-15 and 18-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lingham et al. (US 20160267605 A1).
With respect to claim 1 and 19:
Lingham teaches:
generating a new exchange item, wherein the new exchange item is controllable by a marketplace server of the communication network at least until acquisition of the new exchange item by an initial owner computing device. (First a server would issue a token, the token represents a given monetary value to a specified merchant, the given monetary value is expendable via reference to a debit code representing a gift card, wherein the debit code stored on the server. [0006])
taking control of the new exchange item in accordance with a secure custody protocol of the communication network. (the server publishes the expenditure of the given monetary value and the modified monetary amount to a public ledger as an expenditure record. A blockchain is a public ledger. The public ledger includes all such transactions that have ever been executed. The blockchain is constantly growing as ‘completed’ blocks are added with a new set of recordings. The blocks are added to the blockchain in a linear, chronological order, like a chain. [0006 0018])
receiving set up information from the initial owner computing device, wherein the set up information includes a request to associate the new exchange item with the initial owner computing device; facilitating transfer of at least a portion of the control of the new exchange item to associate the new exchange item with the initial owner computing device in accordance with the secure custody protocol. (First, a user of the system will purchase a gift card through an online web server, and the web server will issue a representative token 68 for that gift card (602). The web server then attaches the issued token to the user's account (604). When the token is attached to the user's account the server will publish the token generation to a public blockchain ledger (606). [0033-0034])
Claim 19, a CRM with the same scope as claim 1, is rejected.
With respect to claim 9:
Lingham further teaches further comprises verifying an exchange item identifier of the set up information with an exchange item identifier of the new exchange item stored in a database of the communication network. (The server 48 acquires a gift card on behalf of the customer 52, from a merchant 10. That debit card is manifested by a debit code 58. The debit codes 58 may be used For the system to work efficiently, it is not necessary for the server 48 to obtain debit codes 58 individually each time a customer 52 orders. A given debit code 58 may cover the orders of multiple customers 52, or inversely, multiple debit codes 58 may cover a single order from a single customer 52. The debit codes 58 on the server 48 may predate an order by a customer 52 or the debit codes 58 may be acquired in response to an order by a customer 52. In use, a variable authentication code 60 can be used at a specified merchant 10. The merchant 10 then communicates the variable authentication code 60 supplied by the customer 52 to the server 48. Should the variable authentication code 60 supplied by the customer 52 match the code 60 that is “live” on the server 48, the server 48 will indicate to the merchant 10 one or more debit codes 58 to use to fulfil the customer's 52 order. [0026-0029])
With respect to claim 10:
Lingham further teaches wherein the facilitating transfer of the ownership comprises generating a new exchange item rule indicating ownership of the exchange item by the initial owner computing device. (Through the user interface, the user would direct the server to transfer the gift card to another user's account—the transfer of the gift card would transfer the representative token between accounts as well (506). Finally, the token transfer of step 506 will be published online to a blockchain ledger (508). [0033])
With respect to claim 14:
Lingham further teaches wherein the secure custody protocol includes a transactions blockchain associated with the new exchange item. (the server publishes the expenditure of the given monetary value and the modified monetary amount to a public ledger as an expenditure record. A blockchain is a public ledger. The public ledger includes all such transactions that have ever been executed. The blockchain is constantly growing as ‘completed’ blocks are added with a new set of recordings. The blocks are added to the blockchain in a linear, chronological order, like a chain. [0006 0018])
With respect to claim 15:
Lingham further teaches wherein the transactions blockchains stored in a database of the communication network. (the server publishes the expenditure of the given monetary value and the modified monetary amount to a public ledger as an expenditure record. A blockchain is a public ledger. The public ledger includes all such transactions that have ever been executed. The blockchain is constantly growing as ‘completed’ blocks are added with a new set of recordings. The blocks are added to the blockchain in a linear, chronological order, like a chain. [0006 0018])
With respect to claim 18:
Lingham further teaches wherein the secure custody protocol comprises an exchange item modification right for the marketplace server. (When the first user wished to either transfer some or all of the value associated with the token to either a merchant or another user, the first user would direct the server to transfer the selected amount of the given monetary value using the one or more debit codes at the discretion of the first account user to either the specified merchant or to a second account, thereby establishing a modified monetary amount represented by the token associated with the first account. Finally, the server publishes the expenditure of the given monetary value and the modified monetary amount to a public ledger as an expenditure record. [0006])
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) 2-8, 11-13, 16-17 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Lingham" as applied to claim 1 and 19 above, and further in view of Lingham et al. (US 20160267472 A1). Since two prior art is by the same inventor, the secondary prior art is represented as the applicant name “Gyft”.
With respect to claim 2:
Lingham further teaches wherein the generating the new exchange item comprises exchanging exchange item information associated with the new exchange item, and […], with an exchange item issuing server of the communication network. (The server 48 acquires a gift card on behalf of the customer 52, from a merchant 10. That debit card is manifested by a debit code 58. The debit codes 58 may be used For the system to work efficiently, it is not necessary for the server 48 to obtain debit codes 58 individually each time a customer 52 orders. A given debit code 58 may cover the orders of multiple customers 52, or inversely, multiple debit codes 58 may cover a single order from a single customer 52. The debit codes 58 on the server 48 may predate an order by a customer 52 or the debit codes 58 may be acquired in response to an order by a customer 52. In use, a variable authentication code 60 can be used at a specified merchant 10. The merchant 10 then communicates the variable authentication code 60 supplied by the customer 52 to the server 48. Should the variable authentication code 60 supplied by the customer 52 match the code 60 that is “live” on the server 48, the server 48 will indicate to the merchant 10 one or more debit codes 58 to use to fulfil the customer's 52 order. [0026-0029])
Lingham does not teach an exchange item rule set associated with the new exchange item. However,
Gyft teaches an exchange item rule set associated with the new exchange item. (Upon verification of the authentication token, the wallet service returns a card token with an expiration date/time. [0025])
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 Lingham to set up rules with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 3:
Lingham further teaches further comprises exchanging set up verification information associated with the new exchange item, with an exchange item trusted module of the communication network, to verify the new exchange item. (In use, a variable authentication code 60 can be used at a specified merchant 10. The merchant 10 then communicates the variable authentication code 60 supplied by the customer 52 to the server 48. Should the variable authentication code 60 supplied by the customer 52 match the code 60 that is “live” on the server 48, the server 48 will indicate to the merchant 10 one or more debit codes 58 to use to fulfil the customer's 52 order. [0029])
With respect to claim 4:
Gyft teaches further comprises exchanging trust information between the exchange item issuing server and the exchange item trusted module of the communication network, wherein the trust information includes a first contract block of a contract blockchain associated with the new exchange item. (The issuance transaction 700 refers to the creation of a gift card record on the public ledger (blockchain). At a first input 708, controlled by the merchant providing the credit, a dust amount 704 is supplied for use as an encoded transaction. The encoding contains the data concerning the gift card asset 710 (in FIG. 7, the gift card asset 710 comprises fifty units of credit for a merchant) is now associated with the user. At a second input 712, controlled by the issuance service, a transaction fee 706 is supplied. The output of the transaction is the multi-signature digital wallet associated with the user. This portion of the transaction is verified by two of: the wallet service, the merchant, and the issuance service. The invention teaches using 2-of-3 addresses controlled by the 3 parties to a gift card contract (the merchant, issuer, and cardholder) to secure and enforce compliance of digital gift cards. [0063 0080])
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 Lingham to exchange blockchain information with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 5:
Gyft further teaches wherein the verifying the new exchange item comprises verifying a signature over the new exchange item in accordance with the secure custody protocol. (They offer a high level of security against unauthorized spend and against double-spend of digital assets through the use of public-key cryptography, decentralized record-keeping and decentralized consensus. The transaction is authorized only if 2 of 3 signatures for these 3 addresses are present. Second, the gift card issuance services and the issuing merchant sign the transaction. [0023 0067-0072])
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 Lingham to verifying a signature with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 6:
Gyft further teaches wherein the taking control comprises utilizing a private key of a marketplace server to sign a portion of a blockchain ledger associated with the new exchange item. (Funds transferred out of the 2-of-3 address are only accepted by the secure public ledger if 2 of the 3 private keys of the respective 2 of the 3 addresses used to generate the 2-of-3 addresses are present. The invention teaches using 2-of-3 addresses controlled by the 3 parties to a gift card contract (the merchant, issuer, and cardholder) to secure and enforce compliance of digital gift cards. The present invention utilizes 2-of-3 addresses as follows: [0064] One of the 3 addresses used is controlled by a private key belonging to the digital gift cardholder and held in the cardholder's wallet service. [0065] One of the 3 addresses used is controlled by a private key belonging to the issuance service provider who ensures compliance with regulations. [0066] One of the 3 addresses used is controlled by a private key belonging to the issuance merchant who ensures compliance with its own terms. [0063-0070])
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 Lingham to sign transaction with private key with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 7:
Gyft further teaches wherein the portion comprises a public key of a private/public key pair that includes the private key. (At setup time, the cardholder wallet service, issuer service, and merchant securely share with each other a public key called an extended public key 502 which consists of a public key together with a key derivation code. [0072])
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 Lingham to utilizing key pairs with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 8:
Gyft further teaches wherein an exchange item rule associated with the new exchange item includes authorization for the marketplace server to transfer the at least the portion of the control of the new exchange item upon subsequently receiving the request regarding the acquisition of the new exchange item. (Upon verification of the authentication token, the wallet service returns a card token with an expiration date/time. [0025])
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 Lingham to set up rules with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 11:
Gyft teaches further comprises signing the new exchange item rule utilizing the private key to produce an updated exchange item. (Funds transferred out of the 2-of-3 address are only accepted by the secure public ledger if 2 of the 3 private keys of the respective 2 of the 3 addresses used to generate the 2-of-3 addresses are present. The invention teaches using 2-of-3 addresses controlled by the 3 parties to a gift card contract (the merchant, issuer, and cardholder) to secure and enforce compliance of digital gift cards. The present invention utilizes 2-of-3 addresses as follows: One of the 3 addresses used is controlled by a private key belonging to the digital gift cardholder and held in the cardholder's wallet service. One of the 3 addresses used is controlled by a private key belonging to the issuance service provider who ensures compliance with regulations. One of the 3 addresses used is controlled by a private key belonging to the issuance merchant who ensures compliance with its own terms. [0063-0070])
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 Lingham to sign transaction using private key with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 12:
Lingham further teaches further comprises updating a blockchain ledger associated with the new exchange item to include the updated exchange item for storage in one or more of a digital wallet of the initial owner computing device and a database of the communication network. (Through the user interface, the user would direct the server to transfer the gift card to another user's account—the transfer of the gift card would transfer the representative token between accounts as well (506). Finally, the token transfer of step 506 will be published online to a blockchain ledger (508). [0033])
With respect to claim 13:
Gyft further teaches further comprises updating the blockchain ledger associated with the new exchange item to include a public key of a public/private keypair associated with the initial owner computing device such that the initial owner computing device is allowed to utilize the at least the portion of the control of the exchange item in accordance with the new exchange item rule and a private key of the public/private keypair associated with the initial owner computing device. (They offer a high level of security against unauthorized spend and against double-spend of digital assets through the use of public-key cryptography, decentralized record-keeping and decentralized consensus. The transaction is authorized only if 2 of 3 signatures for these 3 addresses are present. Second, the gift card issuance services and the issuing merchant sign the transaction. [0023 0067-0072])
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 Lingham to updating blockchain with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 16:
Gyft further teaches wherein the transactions blockchain further includes a contract blockchain. (The invention teaches using 2-of-3 addresses controlled by the 3 parties to a gift card contract (the merchant, issuer, and cardholder) to secure and enforce compliance of digital gift cards. [0063])
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 Lingham to include a contract blockchain with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 17:
Gyft further teaches wherein the secure custody protocol comprises an exchange item modification restriction for a computing device of the communication network. (Embodiments also include a method for supporting a variety of assets for each gift card, each asset with its own enforceable terms and rules, and a combination of assets. For instance, a single gift card may combine two assets: prepaid credits that never expire and bonus credits that expire on a certain date. Upon verification of the authentication token, the wallet service returns a card token with an expiration date/time. This expiration date/time can vary among wallet service providers [0005 0025])
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 Lingham to include modification restriction with the technique as disclosed by Gyft to preventing fraudulent transfer.
With respect to claim 20:
Lingham in view of Gyft further teaches claim 20. Claim 20 contains the same scope as claim 10-12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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US 20160267474
US 20160267566
US 20160267605
US 20170154331
US 20170200147
US 20170243193
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 8:30-5 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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