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 .
DETAILED ACTION
This communication is in response to the application filed on 14 February 2025. Claims 1-25 have been canceled. Claims 26-45 are currently pending. The rejections are as stated below.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted in this application on 14 February 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner. The initialed copies of the1449 are enclosed herewith.
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 26-45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claims are directed to a judicial exception (abstract idea) without significantly more.
The instant claims are rejected under 35 USC 101 in view of The Decision in Alice Corporation Ply. Ltd. v. CLS Bank International, et al. in a unanimous decision, the Supreme Court held that the patent claims in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ("Alice Corp. ") are not patent-eligible under 35 U.S.C. § 101.
Claim 26 (exemplary) recites a series of steps for providing a computational interfacing between a first exchange and a second exchange.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception.
Independent method claim 26, recites the limitations of generating a plurality of trading units for trading on a first exchange and a plurality of tokens for trading on a second exchange, and pairing the plurality of trading units with the plurality of tokens to create a plurality of trading unit token pairs; placing in a custody, for each of the plurality of trading unit token pairs, either the token to allow trading of the paired trading unit on the first exchange or the trading unit to allow trading of the paired token on the second exchange; receiving one or more platform switching requests for a trading unit token pair and for each trading unit token pair determining whether the trading unit is in the custody or the token is in the custody, and if the token is in the custody then placing the associated trading unit in the custody and releasing the token for trading on the second exchange, and if the trading unit is in the custody then placing the associated token in the custody and releasing the trading unit for trading on the first exchange, wherein the first exchange is a financial exchange and the plurality of trading units are N trading units which are generated in response to a listing request to list N trading units of a tradeable asset on the financial exchange, and approval of the listing request triggers generating N tokens on the second exchange.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via transactional activities/interactions, but for the recitation of generic computer components, nothing in the claim precludes the limitations from practically being performed by methods of organizing human activity which includes fundamental economic practice (simultaneous trading of the same economic interest on two platforms). These limitations are directed to an abstract idea because they are commercial or legal interactions or sales activities (coordinating trading rights between two exchanges). If a claim limitation covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the "Certain Methods of Organizing Activity" grouping of abstract ideas. See MPEP § 2106.04(a)(2).
Accordingly, independent claim 1 recites an abstract idea.
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitations of a computational system, a first exchange, a second exchange at least one memory, at least one processor, and a custody storage to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic computer performing a generic computer function of processing data. These generic computer limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.04(d). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application or provide an inventive concept. See MPEP 2106.05(f).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 26, 36 and 45. Furthermore, dependent claims 27-35 and 37-44 do not add limitations that meaningfully limit the abstract idea.
Dependent claims 27-35 and 37-44 recite additional limitations such as distributed ledger, generating a smart contract, cold wallet custody and cryptographic signatures . These limitations further define the abstract idea and are rejected under the same rational of claim 1. The claims merely amounts to the application or instructions to apply the abstract idea on a generic processor, and is considered to amount to nothing more than requiring a generic computer to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
The dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer.
Accordingly, claims 26-45 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kilroe et al. US 20210027281 A1 disclose “a computer-implemented method for managing cryptocurrency. A plurality of users are provided with an in-marketplace wallet suitable for storing linked digital tokens that are linked in value to cryptocurrency tokens and are required to transact on a digital marketplace platform. A cryptocurrency reserve is provided for storing cryptocurrency tokens. Responsive to a user purchasing linked digital tokens from a marketplace store, linked digital tokens are transferred to the in-marketplace wallet an equivalent value of cryptocurrency tokens are transferred to the cryptocurrency reserve. Responsive to a user withdrawing a number of linked digital tokens from the in-marketplace wallet, the desired number of linked digital tokens are removed from the user's in-marketplace wallet and an equivalent value of cryptocurrency tokens are transferred from the cryptocurrency reserve to an out-of-marketplace wallet of the user for storing cryptocurrency tokens outside of the marketplace platform”.
Brogger US 20190333051 A1 discloses “a computer-implemented method for performing a token escrow swap on a network of nodes. The method includes placing buy/sell orders through a broker-dealer node and sending signed buy/sell order transactions with cryptocurrency wallets to the token escrow swap node. The method further includes performing a buy-order filling operation by requesting a transfer of currency tokens to the token escrow swap node and receiving the currency tokens via the buyer node. For each sell order, security tokens are transferred to the token escrow swap node via the seller node. The security tokens are sent from the token escrow swap node. For each sell order, the currency tokens are sent to the seller node. The method includes an analogous operation to fill a sell order”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
