DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
General Information Matter
Please note, the instant Non-Provisional application (19/140,021) under prosecution at the United States Patent and Trademark Office (USPTO) has been assigned to David Zarka (Examiner) in Art Unit 2449. To aid in correlating any papers for 19/140,021, all further correspondence regarding the instant application should be directed to the Examiner.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicants are advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the Examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential § 102(a)(2) prior art against the later invention.
Preliminary Amendment and Claim Status
The instant Office action is responsive to the preliminary amendment received June 17, 2025.
Claims 1–20 are currently pending.
Provisional Application
The instant application claims benefit to provisional application Nos. 63/433,818 filed on December 20, 2022 (the ‘818 Prov.) and 63/453,201 filed on March 20, 2023 (the ‘201 Prov.) under 35 U.S.C. § 119(e).
The instant application must be an application for a patent for an invention which is also disclosed in the provisional application for which benefit is claimed. The disclosure of the invention in the provisional application and in the instant application must be sufficient to comply with the requirements of 35 U.S.C. § 112(a), except for the best mode requirement. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994); see also Manual of Patent Examining Procedure (MPEP) § 211.05 (9th ed. Rev. 08.2017, Jan. 2018) (citing Transco and New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)).
The disclosure of the ‘201 Prov. fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a) for claims 1–20 of the instant application.
Notably, claim 1 recites
generating a self-executing unit of program logic that contains the first identifier, the second identifier, a representation of the set of conditions, and a third identifier that uniquely identifies a third entity having authority to suspend, modify, or override execution of the program logic.
The ‘201 Prov. fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a).1 Claims 18 and 19 by analogy. Accordingly, claims 1–20 are not entitled to the benefit of the ‘201 Prov.
Information Disclosure Statement (IDS)
The IDSs filed June 17, 2025; February 10, 2026; March 16, 2026; and May 26, 2026 each comply with the provisions of 37 C.F.R. §§ 1.97, 1.98 and MPEP § 609. The IDSs have been placed in the application file, and the information referred to therein has been considered.
Specification
The use of trade names or marks used in commerce (e.g., “Microsoft Office” at Spec. ¶ 101) has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as TM, SM, or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
This is not an objection to the Specification.
The lengthy Specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicants’ cooperation is requested in correcting any errors of which Applicants may become aware in the Specification.
Means-plus-Function Language
The following is a quotation of 35 U.S.C. § 112(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 claims in the instant 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) 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):
(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 for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f). The presumption that § 112(f) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f). The presumption that § 112(f) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in the instant application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
The instant 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) 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 limitations2 are:
“first entity” (claim 1, line 5; claim 18, line 8; claim 19, line 10);
“second entity” (claim 1, line 5; claim 18, line 8; claim 19, line 10); and
“third entity” (claim 11, line 6).
If Applicants do not intend to have the claim limitations treated under 35 U.S.C. § 112(f), Applicants may amend the claims so that they will clearly not invoke § 112(f), or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of § 112(f).
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011) (available at https://www.govinfo.gov/content/pkg/FR-2011-02-09/pdf/2011-2841.pdf).
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(b): “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 MPEP recites “[d]uring examination, after applying the broadest reasonable interpretation consistent with the specification to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected.” MPEP § 2173.02(I) (citing In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)). “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) . . . is appropriate.” Id. See also id. § 2173.05(e)(discussing indefiniteness arising for terms lacking proper antecedent basis).
Claims 1–20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
(i) As discussed above, claim element “first entity” (claim 1, line 5; claim 18, line 8; claim 19, line 10) is a limitation that invokes 35 U.S.C. § 112(f). The Specification is devoid of adequate structure to perform the claimed function of exchanging a set of conditions. In particular, the Specification states the claimed function is performed by a “first entity.” Spec. ¶ 384. Moreover, paragraph 239 of the Specification recites “a seller may escrow an NFT and a buyer may escrow a cryptocurrency payment (or each side may escrow a different cryptocurrency to be swapped or a different NFT to be swapped)” which implies the claimed function of exchanging a set of conditions is performed by a “seller.” Thus, there is no disclosure of any particular structure, either explicitly, implicitly, or inherently, to perform the claimed function. The Specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure or structures perform(s) the claimed function.
(ii) As discussed above, claim element “second entity” (claim 1, line 5; claim 18, line 8; claim 19, line 10) is a limitation that invokes 35 U.S.C. § 112(f). The Specification is devoid of adequate structure to perform the claimed function of exchanging a set of conditions. In particular, the Specification states the claimed function is performed by a “second entity.” Spec. ¶ 384. Moreover, paragraph 239 of the Specification recites “a seller may escrow an NFT and a buyer may escrow a cryptocurrency payment (or each side may escrow a different cryptocurrency to be swapped or a different NFT to be swapped)” which implies the claimed function is performed by a “buyer.” Thus, there is no disclosure of any particular structure, either explicitly, implicitly, or inherently, to perform the claimed function. The Specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure or structures perform(s) the claimed function.
(iii) As discussed above, claim element “third entity” (claim 11, line 6) is a limitation that invokes 35 U.S.C. § 112(f). The Specification is devoid of adequate structure to perform the claimed function of sending instructions to suspend, modify, or override execution of a program logic. In particular, the Specification states the claimed function is performed by a “third entity.” Spec. ¶¶ 386, 398. But the use of the term “third entity” is not adequate structure for performing the claimed function because it does not describe a particular structure for performing the function. Thus, there is no disclosure of any particular structure, either explicitly, implicitly, or inherently, to perform the claimed function. The Specification does not provide sufficient details such that one of ordinary skill in the art would understand which structure or structures perform(s) the claimed function.
(iv) With respect to sub-sections (i)-(iii) above, the written description, therefore, fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. Accordingly, the claim is indefinite and is rejected under 35 U.S.C. § 112(b).
Applicants 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
(b) Amend the written description of the Specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. § 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the Specification and linked or associated to the claimed function. For more information, see 37 CFR § 1.175(d) and MPEP §§ 608.01(o) and 2181.
(iv) claim 15, lines 2–3, “an original set of conditions begin modified into he set of conditions” appears to be grammatically incorrect and adds ambiguity to the claim because the Examiner is uncertain as to whether the limitation refers to
(a) an original set of conditions begin modification into he set of conditions
(b) an original set of conditions being modified into he set of conditions.
It is assumed for examination purposes that the limitation refers to (b). See MPEP § 2173.06 (reciting “When making a rejection over prior art in these circumstances, it is important that the examiner state on the record how the claim term or phrase is being interpreted with respect to the prior art applied in the rejection.”; emphasis omitted).
Claim Rejections – 35 U.S.C. § 101
The following is a quotation of 35 U.S.C. § 101: “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.”
MPEP § 2106.03(II) recites:
[T]he [broadest reasonable interpretation (BRI)] of machine readable media can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se. See In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007). When the BRI encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate. Thus, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter. See, e.g., Mentor Graphics v. EVE-USA, Inc., 851 F.3d at 1294-95, 112 USPQ2d at 1134 (claims to a “machine-readable medium” were non-statutory, because their scope encompassed both statutory random-access memory and non-statutory carrier waves).
Claim 18 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to nonstatutory subject matter. Notably, claim 18 is directed to “[a] non-transitory computer-readable medium.” Applicants’ Specification recites “[a] non-transitory computer readable medium can be considered a computer readable storage medium.” Spec. ¶ 409. Thus, the Examiner finds a broadest reasonable interpretation (BRI) of “a computer readable storage medium” includes non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se. See MPEP § 2106.03(II). “When the BRI encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate.” Id.
Claim Rejections – 35 U.S.C. § 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.
Turgman
Claims 1–3, 5, 6, 9–15, and 18–20 are rejected under 35 U.S.C. § 102 as being anticipated by Turgman et al. (US 2020/0380624 A1; filed May 21, 2019).
Regarding claim 1, Turgman discloses a computer-implemented method comprising:
obtaining a first identifier (“the consumer’s Ethereum address is, for example, 0x1C039c9cb1965113065f679B55C429Cc77FA664e” at ¶ 56; “consumer.publicAddress” at fig. 3, item 302; fig. 4, item 408; “the Ethereum address for . . . a consumer” at ¶ 52) relating to a first entity (“consumer” at ¶¶ 52, 56), wherein the first identifier uniquely identifies the first entity within a backwardly-immutable cryptographic sequence of data blocks (“the blockchain” at ¶¶ 74–75);
exchanging, between the first entity and a second entity (“provider” at ¶¶ 52, 56), a set of conditions (fig. 3, item 304; ¶ 64; fig. 4, items 410–420), wherein a second identifier (“provider.publicAddress” at fig. 3, item 302; fig. 4, item 404; “the Ethereum address for . . . a . . . provider” at ¶ 52) uniquely identifies the second entity within the backwardly-immutable cryptographic sequence of data blocks;
receiving, from the first entity and the second entity, acceptances (fig. 3, item 306; “sign( ) function 306 as shown in FIG. 3 is an example smart contract action that may invoked when a user signs the smart contract” at ¶ 82; fig. 4, item 422) of the set of conditions;
generating a self-executing unit of program logic (fig. 5, item 504; ¶ 74) that contains the first identifier, the second identifier, a representation (fig. 3, item 306) of the set of conditions, and a third identifier (“mediator.publicAddress” at fig. 3, item 302; “the Ethereum address for . . . a . . . mediator” at ¶ 52) that uniquely identifies a third entity (“mediator” at ¶¶ 52, 56) having authority to suspend, modify, or override execution of the program logic (¶ 102; fig. 13);
adding, as a new data block (fig. 5, item 506), the self-executing unit of program logic on the backwardly-immutable cryptographic sequence of data blocks; and
notifying (“the immutable version of the smart contract (shown as text 702) is displayed to all the parties to the smart contract (e.g., via GUI 116A, GUI 116B, etc.).” at ¶ 76; fig. 7) one or more of the first entity or the second entity of the self-executing unit of program logic.
Regarding claim 2, Turgman discloses wherein the first identifier and the second identifier are addresses (fig. 3, item 302; ¶¶ 56–57) on the backwardly-immutable cryptographic sequence of data blocks.
Regarding claim 3, Turgman discloses wherein the backwardly-immutable cryptographic sequence of data blocks comprises a blockchain (“the blockchain” at ¶¶ 74–75).
Regarding claim 5, Turgman discloses wherein the self-executing unit of program logic comprises a smart contract (¶ 37).
Regarding claim 6, Turgman discloses wherein the self-executing unit of program logic includes an indication (“In accordance with an embodiment, the immutable version of the smart contract (shown as text 702) is displayed to all the parties to the smart contract (e.g., via GUI 116A, GUI 116B, etc.). For example, FIG. 7 shows an example GUI screen 700 in which an immutable version of the agreed upon smart contract is shown.” at ¶ 76) that the first entity and the second entity have agreed to be bound by the set of conditions.
Regarding claim 9, Turgman discloses wherein the self-executing unit of program logic is revoked or suspended (“example GUI screen 1300 may enable other actions such as rescinding the contract” at ¶ 102) upon determining
that a digital token has not been provided by the first entity or the second entity by a predetermined point in time or
that at least one of the set of conditions has not been met (fig. 12, item 1204; ¶ 99).
Regarding claim 10, Turgman discloses wherein the third entity is an arbiter, a judicial court, or another party (“the service provider and consumer may elect to include mediation terms in the smart contract, including identification of a designated mediator. In such instances, the selected mediator may likewise participate in creating the smart contract inasmuch as the mediator must signal his/her agreement to mediate any disputes per the express terms of the contract (e.g., by signing the contract).” at ¶ 44) whose resolutions the first entity and the second entity have agreed to be bound.
Regarding claim 11, Turgman discloses further comprising:
receiving a request (“smart contract 804 is now being disputed by one or both parties” at ¶ 100) from the first entity or the second entity to invoke the authority of the third entity to suspend, modify, or override execution of the program logic (intended use in italics);
providing, to the third entity, a representation (fig. 13, item 1300; “FIG. 13 is an example GUI screen 1300 in which user interface elements are displayed based on querying smart contract 804 on behalf of the mediator after either the service provider or consumer has initiated a dispute” at ¶ 100) of the set of conditions; and
receiving, from the third entity, instructions (“user interface elements 1302 permits the mediator to select a percentage of the escrowed reward amount (after the mediation fee is deducted) to release to the provider, with the remainder to be returned to the consumer” at ¶ 101) to suspend, modify, or override execution of the program logic.
Regarding claim 12, Turgman discloses further comprising:
receiving a request (fig. 12, item 1204) from the first entity or the second entity indicating that the set of conditions have not been met and a variance (“the mediator will get in contact with the parties to gather facts and discuss the nature of the dispute.” at ¶ 100; one skilled in the art would reasonable be expected to infer the mediator receiving a variance since the terms of the contract are in dispute; see MPEP § 2144.01; “a percentage of the escrowed reward amount (after the mediation fee is deducted) to release to the provider, with the remainder to be returned to the consumer” at ¶ 101) to the set of conditions; and
guiding the first entity and the second entity through a series of actions (“the mediator will get in contact with the parties to gather facts and discuss the nature of the dispute.” at ¶ 100; one skilled in the art would reasonable be expected to infer the mediator asking the first and second entities of facts and nature of the dispute) that narrow a scope of the variance.
Regarding claim 13, Turgman discloses further comprising:
adding, as a further new data block (“the compiled smart contract (e.g., byte code 614)” at ¶ 75; fig. 5, item 506), a representation of execution of the program logic (fig. 5, item 504; ¶ 74) on the backwardly-immutable cryptographic sequence of data blocks (“the blockchain” at ¶¶ 74–75).
Regarding claim 14, Turgman discloses wherein the set of conditions (fig. 3, item 304; ¶ 58; fig. 4, items 410–420) include conditions provided by the first entity, the second entity, or both (“Each of user interface elements 404, 406, 408, 410, 412, 414, 416, and 418 may be text boxes that enable a user to specify certain terms of the contract.” at ¶ 64) the first entity and the second entity.
Regarding claim 15, Turgman discloses wherein exchanging the set of conditions (fig. 3, item 304; ¶ 64; fig. 4, items 410–420) comprises an original set of conditions (“Code fragment 300 of FIG. 3 comprises an excerpt from a source code template file corresponding to an example smart contract template.” at ¶ 51) begin modified into the set of conditions through transactions (figs. 9–13, items 902, 904, 906, 908, 910, 902’, 904’, 906’, 908’, 910’) between the first entity and the second entity.
Regarding claim 18, Turgman discloses a non-transitory computer-readable medium (fig. 18, item 1820) storing program instructions that, when executed by one or more processors (fig. 18, item 1810) of a computing system (fig. 18, item 1802), cause the computing system to perform operations according to claim 1. Thus, references/arguments equivalent to those present for claim 1 are equally applicable to claim 18.
Regarding claim 19, Turgman discloses a computing system (fig. 18, item 1802) comprising: one or more processors (fig. 18, item 1810); memory (fig. 18, item 1820); and program instructions, stored in the memory, that upon execution by the one or more processors cause the computing system to perform operations according to claim 1. Thus, references/arguments equivalent to those present for claim 1 are equally applicable to claim 19.
Regarding claim 20, claim 11 recites substantially similar features. Thus, references/arguments equivalent to those present for claim 11 are equally applicable to claim 20.
Claim Rejections – 35 U.S.C. § 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.
Turgman and Kanovitz
Claims 4, 7, and 8 are rejected under 35 U.S.C. § 103 as being obvious over Turgman in view of Kanovitz et al. (US 2024/0039731 A1; PCT filed Mar. 11, 2022).
Regarding claim 4, while Turgman teaches wherein the backwardly-immutable cryptographic sequence of data blocks comprises a blockchain (“the blockchain” at ¶¶ 74–75),
Turgman does not teach the blockchain being a distributed database.
Kanovitz teaches a distributed database (“a distributed database” at ¶ 31).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Turgman’s blockchain to be a distributed database as taught by Kanovitz for “protect[ing] from hacking and/or other forms of misuse or corruption.” Kanovitz ¶ 165.
Regarding claim 7, while Turgman teaches wherein the self-executing unit of program logic (fig. 5, item 504; ¶ 74) causes a GUI screen (fig. 12, item 1200; ¶ 96) to be transferred between the first entity and the second entity upon determining that the set of conditions (fig. 3, item 304; ¶ 64; fig. 4, items 410–420) have been met,
Turgman does not teach the GUI screen including a digital token.
Kanovitz teaches a digital token (¶ 161).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Turgman’s GUI screen to include a digital token as taught by Kanovitz for “protect[ing] from hacking and/or other forms of misuse or corruption.” Kanovitz ¶ 165.
Regarding claim 8, while Turgman teaches wherein the self- executing unit of program logic (fig. 5, item 504; ¶ 74) causes a GUI screen (fig. 12, item 1200; ¶ 96) to be automatically transferred between the first entity and the second entity at a predetermined point in time (“after the service provider has signed smart contract 804” at ¶ 96),
Turgman does not teach the GUI screen including a digital token.
Kanovitz teaches a digital token (¶ 161).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Turgman’s GUI screen to include a digital token as taught by Kanovitz for “protect[ing] from hacking and/or other forms of misuse or corruption.” Kanovitz ¶ 165.
Turgman
Claims 16 and 17 are rejected under 35 U.S.C. § 103 as being obvious over Turgman.
Regarding claim 16, while Turgman teaches wherein a signature (“total deposit made by the consumer when they signed smart contract 804” at ¶ 96) is provided by the first entity (“consumer” at ¶¶ 52, 56),
Turgman does not teach the signature including the second identifier.
Turgman teaches the second identifier (“provider.publicAddress” at fig. 3, item 302; fig. 4, item 404; “the Ethereum address for . . . a . . . provider” at ¶ 52).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Turgman’s signature to include the second identifier as taught by Turgman “to create a smart contract between at least two users.” Turgman ¶ 44.
Regarding claim 17, while Turgman teaches wherein a signature (“the service provider signs smart contract 804” at ¶ 93) is provided by the second entity (“provider” at ¶¶ 52, 56),
Turgman does not teach the signature including the second identifier.
Turgman teaches the second identifier (“provider.publicAddress” at fig. 3, item 302; fig. 4, item 404; “the Ethereum address for . . . a . . . provider” at ¶ 52).
It would have been obvious to one of ordinary skill in the art before the filing date of the invention for Turgman’s signature to include the second identifier as taught by Turgman “to create a smart contract between at least two users.” Turgman ¶ 44.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure: US-20210110388-A1; US-20190334886-A1; US-20190122317-A1; US-20200364813-A1; US-20200372505-A1; US-20190370799-A1; US-20190377904-A1; and US-20190108140-A1.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner reminds Applicants that the instant Office action contains no rejection under 35 U.S.C. § 112(a). 35 U.S.C. § 112(a) is mentioned because that is the manner in determining whether claims 1–20 are not entitled to the benefit of the ‘201 Prov.
2 The Examiner notes “Applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim. We have never held otherwise.” Rain Computing, Inc. v. Samsung Elecs. Am. Inc., 989 F.3d 1002, 1006 (Fed. Cir. 2021). See also Media Rights Technologies, Inc. v. Capital One Financial Corp., 800 F.3d 1366, 1374 (Fed. Cir. 2015) (holding that the term “compliance mechanism” in a method claim was a means-plus-function term); see also MPEP § 2181.
Prosecution Insights