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 .
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.
This action is in response to the correspondence filed 05/23/2025.
Claims 1-10, 12, 14, 22-24, 26-28, 42 and 43 are presented for examination.
Claim Objections
Claim 27 is objected to because of the following informalities: the “causing” element recites, “a signature generating using a private key”. The Examiner believes this was meant to read “a signature generated using”. Appropriate correction is required.
Claim 43 is objected to because of the following informalities: the preamble of the claim recites, “perform a method of any of generating a network address”. The Examiner believes “any of” was intended to be removed with the previous amendment. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “processing apparatus comprising one or more processing units, wherein the memory stores code arranged to run on the processing apparatus, the code being configured so as when run on the processing apparatus, the processing apparatus performs” in claim 42.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 42 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 42, claim limitation “processing apparatus comprising one or more processing units, wherein the memory stores code arranged to run on the processing apparatus, the code being configured so as when run on the processing apparatus, the processing apparatus performs” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-10, 12, 14, 22-24, 26-28, 42 and 43 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As to claims 1, 42 and 43, the claims recite a method of generating a network address, wherein the method comprises: generating a first blockchain transaction, wherein the first transaction comprises a first data item based on a public key; and generating a first network address based on one or more second data items related to the first blockchain transaction.
The limitations of “generating a first blockchain transaction” and “generating a first network address” as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “computer-implemented” “computer equipment” “memory” “processing apparatus” “processing units” “computer readable medium” and “one or more processors” nothing in the claim element precludes the step from practically being performed in the mind with logical inference.
If claim limitations, under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components, then it falls in the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The claims do not include any additional limitations. Therefore, the judicial exception is not integrated into a practical application because the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
As to claims 2-10, 12, 14, 22-24 and 26-28, the claims do not cure the deficiency of claims 1, 42 and 43 and are rejected under 35 USC § 101 for their dependency upon claims 1, 42 and 43 while not integrating the abstract idea into practical application or include elements that amount to significantly more than the abstract idea.
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.
Claims 1, 2, 5, 6, 12, 14, 22, 23, 26, 27, 42 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0105142 A1 to Lee et al. (hereinafter Lee) in view of US 2013/0036307 A1 to Gagliano et al. (hereinafter Gagliano).
As to claims 1, 42 and 43, Lee teaches a computer-implemented method of generating a network address (paragraphs 70 and 74, generated address), wherein the method comprises: generating a first blockchain transaction, wherein the first transaction comprises a first data item based on a public key (paragraph 71, transaction is generated including the performed signature using the private key and public key).
Lee does not explicitly teach generating a first network address based on one or more second data items related to the first blockchain transaction.
However, Gagliano teaches generating a first network address based on one or more second data items related to the first blockchain transaction (paragraph 41, generated address, which may be a cryptographically generated address under the IPv6 protocol, based on a public key [public key is related to the blockchain transaction]).
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 teachings of Lee to include the method of generating the network address as taught by Gagliano in order to optimize the security, integrity and validity of the sender and address by using addresses and messages which may be self-proved and increases effectiveness and efficiency as authoritative certificate systems or validator are not needed.
As to claim 2, Lee teaches wherein the first data item comprises a hash of at least the public key (paragraph 71, signature included in the transaction and public key may be used using a private key and an elliptic curve function).
As to claim 5, Lee teaches causing the first blockchain transaction to be submitted to a blockchain network for being recorded on the blockchain (paragraph 166, deliver the digitally signed blockchain transaction data to the blockchain network through the blockchain application).
As to claim 6, Gagliano teaches wherein one or more of the second data items are related to a location of the first blockchain transaction in the blockchain (41, wherein the address is an IPv6 link local address).
As to claim 12, Gagliano teaches wherein the first network address comprises a network prefix (paragraph 2, IPv6 format includes prefix).
As to claim 14, Gagliano teaches wherein the network address is an internet protocol version 6, IPv6, address (41, wherein the address is an IPv6 link local address).
As to claim 22, Lee teaches waiting until at least a predetermined number of subsequent blocks have been added to the blockchain after a first block before generating the first network address ((paragraphs 71 and 74, generation of the address; wherein a positively recited step performed by the method would overcome the Lee reference, e.g. upon a predetermined number of subsequent blocks having been added to the blockchain, generating the first network address).
As to claim 23, Lee teaches making the first network address available to one or more parties (paragraph 74, information stored in a plurality of databases to combine several pieces of information to configure the information).
As to claim 26, Lee teaches wherein the first blockchain transaction comprises a signature generated using a private key corresponding to the public key (paragraph 71, may encrypt the message with a private key of the sender, and may generate a signature).
As to claim 27, Lee teaches wherein the first blockchain transaction comprises an output locked to the public key, and wherein the method comprises: causing a second blockchain transaction to be submitted to the blockchain network, wherein the second blockchain transaction comprises an input that references the output of the first blockchain transaction and comprises a signature generating using a private key corresponding to the public key and configured to unlock the output (paragraph 162 and 163, in operation 1810, the digital wallet application 1512 may deliver the signature request for the blockchain transaction data, the first information, and the signature data to a blockchain TA 1524. In operation 1812, the blockchain TA 1524 may perform a digital signature for a blockchain address (the first blockchain address or the second blockchain address) and the first information. In operation 1813, the blockchain TA 1524 may compare the value generate as a result of performing the digital signature with the received signature data … when the two data are identical to each other as a result of the comparison, in operation 1814, the blockchain TA 1524 may deliver transaction records corresponding to the signature request and the first information to a TUI application 1522. The transaction records corresponding to the signature request may be transaction records included in blockchain transaction data, a signature of which is requested).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Gagliano in further view of US 2022/0394026 A1 to Liu et al. (hereinafter Liu).
As to claim 3, Lee and Gagliano do not explicitly teach wherein the one or more second data items comprise a transaction identifier of the first blockchain transaction.
However, Liu teaches the one or more second data items comprise a transaction identifier of the first blockchain transaction (paragraph 112, uses the transaction identifier to generate address of the blockchain node).
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 teachings of Lee and Gagliano to include the method of using a transaction identifier to generate the address as taught by Liu in order to further optimize the security of the nodes’ identity in the blockchain system by hiding the addresses of the nodes (paragraph 112).
As to claim 4, Lee teaches wherein the first network address is generated prior to the first blockchain transaction being recorded on the blockchain (paragraphs 71 and 74, generation of the address is recited before indication of the transaction being recorded on the blockchain).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Gagliano in further view of US 20110197072 A1 to Shen.
As to claim 9, Lee and Gagliano do not explicitly teach wherein the first network address is also based on a first modifier value.
However, Shen teaches wherein the first network address is also based on a first modifier value (paragraph 22, CGA is generated according to a public key and auxiliary information by using a hash algorithm).
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 teachings of Lee and Gagliano to include the method of the first network address being also based on a first modifier value as taught by Shen in order to optimize the protection of the message by increasing the complexity of generating the address reducing the chance of interpretation by an attacker or eavesdropper (paragraph 3).
As to claim 10, Shen teaches generating a plurality of modifier values, wherein the plurality of modifier values comprises the first modifier value; and generating a third data item that encodes the plurality of modifier values, wherein the first blockchain transaction comprises the third data item (paragraph 22, CGA is generated according to a public key and auxiliary information by using a hash algorithm; wherein there are one or more public keys, paragraphs 9 and 12).
Claims 24 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Gagliano in further view of US 20210217084 A1 to Diamond.
As to claim 24, Lee and Gagliano do not explicitly teach obtaining a first proof that the first blockchain transaction is recorded in the blockchain; and sending the first proof to a verifier for verifying the first network address.
However, Diamond teaches obtaining a first proof that the first blockchain transaction is recorded in the blockchain; and sending the first proof to a verifier for verifying the first network address (paragraph 5, receiving the first proof and verifying the address).
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 teachings of Lee and Gagliano to include the method of obtaining a proof and verifying the address as taught by Diamond in order to provide secure provably transactions in the blockchain system (paragraph 5).
As to claim 28, Diamond teaches obtaining a third proof that the second blockchain transaction is recorded in the blockchain; and sending the third proof to a verifier for verifying the first network address (paragraph 5, receiving the first proof and verifying the address).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Gagliano in view of Liu in further view of US 2023/0129227 A1 to Karlapalem et al. (hereinafter Karlapalem).
As to claim 8, Lee and Gagliano do not explicitly teach a transaction identifier of the first blockchain transaction.
However, Liu teaches the one or more second data items comprise a transaction identifier of the first blockchain transaction (paragraph 112, uses the transaction identifier to generate address of the blockchain node).
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 teachings of Lee and Gagliano to include the method of using a transaction identifier to generate the address as taught by Liu in order to further optimize the security of the nodes’ identity in the blockchain system by hiding the addresses of the nodes (paragraph 112).
Lee, Gagliano and Liu do not explicitly teach wherein the one or more second data items comprise a block header of a first block.
However, Karlapalem teaches the one or more second data items comprise a block header of a first block (paragraph 79, block header).
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 teachings of Lee, Gagliano and Liu to include the block header of a first block as taught by Karlapalem in order to ensure the integrity of the mutable blockchain.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20230283489 A1 to Lupowitz et al. teaches a method, controller, and non-transitory computer-readable medium of a distributed crypto-ledger network, including receiving an instruction to perform an operation between a first user and a second user, the first user corresponding to a first entity that is a member of the distributed crypto-ledger network, the instruction comprising a destination address corresponding to the second user, querying a top-level name registry with the destination address to determine a second entity associated with the destination address, the second entity being a different member of the crypto-ledger network, and executing the operation between the first user and the second user by transmitting execution instructions to the first entity and the second entity, the execution instructions causing a first entity controller to modify data stored on a first distributed crypto-ledger of the first entity, and causing a second entity controller to modify data stored on the second distributed crypto-ledger of the second entity.
US 20230222476 A1 to Lim teaches a method of issuing an electronic receipt, which enables a user to conveniently check an electronic receipt through a smartphone. The method of issuing an electronic receipt includes receiving, by an electronic receipt generator, information regarding a transaction from a point of sale (POS) terminal, generating an address corresponding to the information, wherein the information comprises a unique identifier corresponding to transaction information.
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Dependent claim 7 is allowable over the prior art of record, including Lee, Gagliano, Liu, Shen and the references cited by the Examiner and the Applicant’s IDS, taken individually or in combination, because the prior art of record fails to particularly disclose, fairly suggest or render obvious the one or more second data items comprise a block height of the a first block and a transaction index, wherein the transaction index indicates a position of the first blockchain transaction in the first block, in view of the other limitations of their respective independent claims 1 and 16, as to claims 13 and 24.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALCOLM CRIBBS whose telephone number is (571)270-1566. The examiner can normally be reached Monday-Friday 930a-330p; 430p-630p.
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, Eleni Shiferaw can be reached at (571)272-3867. 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.
MALCOLM . CRIBBS
Examiner
Art Unit 2497
/MALCOLM CRIBBS/Primary Examiner, Art Unit 2497
Prosecution Insights