DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
2. The information disclosure statements filed 7/31/2025 and 5/21/2026 fail to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
The information disclosure statements filed 7/31/2025 and 5/21/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Applicant failed to provide an English translation of the cited Foreign references. Although the Abstract was translated, the Full translations are necessary as the foreign references are recited in the Search report and Written opinion of the International Searching Authority.
It is further noted that on the Information Disclosure Statements filed by Applicant on 7/31/2025 and 5/21/2026, the cited Foreign references do not indicate “Pages, Columns, Lines where Relevant Passages or Relevant Figures Appear” section as required on the form.
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 1-17, 20-21 are rejected under 35 U.S.C. 101 because the claimed invention recites an abstract idea without significantly more.
Using the language in claim(s) 1 to illustrate, the limitations of transmitting, by the transaction initiator node, a transaction request for a current transaction to a blockchain, …; obtaining, by the transaction initiator node from the blockchain, a transaction response transmitted by the transaction recipient node; invoking, by the transaction initiator node, a smart contract on the blockchain to execute the current transaction and generate a first transaction event, in response to the transaction response indicating that the transaction recipient node agrees to execute the current transaction, wherein the first transaction event indicates that the transaction initiator node has invoked the smart contract to execute the current transaction; and determining, by the transaction initiator node, that the current transaction is completed, in response to determining that a second transaction event is generated, wherein the second transaction event is generated by the transaction recipient node through invoking the smart contract on the blockchain to execute the current transaction, and the second transaction event indicates that the transaction recipient node has invoked the smart contract to execute the current transaction, as drafted, is a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity, in particular, commercial or legal interaction, and does NOT recite computer implementation. The claims as a whole recite a method of organizing human activity. The claimed invention allows for a blockchain-based way for two parties to complete a transaction which is a commercial interaction. The claim does not recite computer systems. Thus, under Eligibility Step 2A, prong one, (MPEP §2106.04(a)), the claims recite an abstract idea.
Under Eligibility Step 2A, prong two, (MPEP §2106.04(d)), this judicial exception is not integrated into a practical application. In particular, the claim 1 fails to recite the additional elements (i.e., computer implementation). Accordingly, claim 1 does not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Similar arguments can be extended to independent claims 9, and 16 and hence claims 9 and 16 are rejected on similar grounds as claim 1. In addition, claim 20 recites an electronic device, comprising a processor and a memory and claim 21 recites a non- transitory computer-readable storage medium comprising instructions that when executed by the processor of an electronic device implements the transaction method of claim 1 that amount to generic computer implementation.
The claims are directed to an abstract idea.
Under Eligibility Step 2B, (MPEP §2106.05), the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, claims 1, 9 and 16 do NOT recite computer implementation. The additional elements of an electronic device comprising a processor and memory storing instructions executable by a processor to implement the steps in claim 1, amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims have been given the full two part analysis including analyzing the additional limitations both individually and in combination. The dependent claim(s) when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 because for the same reasoning as above and the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. Dependent claims 2-8, 10-15, 17 simply help to define the abstract idea. The additional limitations of the dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Viewing the claim limitations as an ordered combination does not add anything further than looking at the claim 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. Accordingly, claim(s) 1-17, 20-21 is/are ineligible.
Claim Rejections - 35 USC § 102
4. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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)(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.
5. Claim(s) 1-2, 7-8, 9-10, 14-16, 20-21 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 2022/0156776 (Long et al.).
Re-claim 1. Long discloses:
transmitting, by the transaction initiator node, a transaction request for a current transaction to a blockchain (task initiator node-[0017], transaction request sent to blockchain [0109]);
wherein the transaction request is for soliciting confirmation on whether a transaction recipient node agrees to execute the current transaction (agreement between participating parties regarding transaction-[0092]);
obtaining, by the transaction initiator node from the blockchain, a transaction response transmitted by the transaction recipient node (agreement between participating parties are reached-[0129];
invoking, by the transaction initiator node, a smart contract on the blockchain to execute the current transaction and generate a first transaction event, in response to the transaction response indicating that the transaction recipient node agrees to execute the current transaction (smart contract on blockchain invoked in response to agreement of parties –[0129]),
wherein the first transaction event indicates that the transaction initiator node has invoked the smart contract to execute the current transaction (“A deployed smart contract may be invoked, called, or executed deterministically, for example upon the submission of a transaction directed to a contract address-[0129]);
and determining, by the transaction initiator node, that the current transaction is completed, in response to determining that a second transaction event is generated, wherein the second transaction event is generated by the transaction recipient node through invoking the smart contract on the blockchain to execute the current transaction, and the second transaction event indicates that the transaction recipient node has invoked the smart contract to execute the current transaction ( A smart contract may react to a transaction by further calling or invoking another smart contract, or functions within the other smart contract.-[0129]).
Re-claim 2. Long discloses:
wherein: the transaction request comprises at least one of:
a first account address of the transaction initiator node, a second account address of the transaction recipient node, a first transaction amount transferred from an account address of the transaction initiator node, a second transaction amount transferred from an account address of the transaction recipient node, first currency utilized by the transaction initiator node, or second currency utilized by the transaction recipient node (“ For example, in some embodiments, each member smart contract may correspond to a respective contract address”-[0129];
and transmitting, by the transaction initiator node, the transaction request for the current transaction to the blockchain comprises:
obtaining, by the transaction initiator node, a public key of the transaction recipient node (More specifically, task initiator 210 may publish its public key so that edge node 230 may encrypt the solution using this public key (e.g. via the ElGamal encryption protocol-[0152]);
encrypting, by the transaction initiator node, the transaction request using the public key of the transaction recipient node (the solution submitted is indeed the encrypted plain-text solution using the public key of task initiator 210.-[0152]); and transmitting, by the transaction initiator node, the encrypted transaction request to the blockchain (task information may be encrypted and sent to blockchain [0159]).
Re-claim 7.
****It is noted that the Specification, ¶ [0065], recites, “In some embodiments of the present disclosure, the blockchain transaction system 10 further includes a supervisor node 13. The supervisor node 13 may be any blockchain node in the blockchain transaction system 10.”
Long discloses:
wherein before invoking, by the transaction initiator node, the smart contract on the blockchain to execute the current transaction and generate the first transaction event, the method further comprises:
transmitting, by the transaction initiator node, a first transaction message to the blockchain to enable a supervisor node to query or store the first transaction message (Task Initiator 210 may assign the task to edge computing node 230 by sending task details or task information to edge computing node 230, possibly through a secure channel.[0154]);
wherein the first transaction message comprises content of the current transaction (Task information refers to any one or combinations of task definition, description, metadata, input data, computing instructions, or the like, that allows edge computing node 230 to generate an acceptable solution to the task [0154]),
and the content is encrypted using a public key of the supervisor node (If task initiator 210 requires solution encryption, edge computing node 230 may also provide a zk-SNARK proof zkProof.-[0156]; More specifically, task initiator 210 may publish its public key so that edge node 230 may encrypt the solution using this public key (e.g. via the ElGamal encryption protocol.-[0152]).
Re-claim 8. Long discloses wherein transmitting, by the transaction initiator node, the first transaction message to the blockchain and invoking, by the transaction initiator node, the smart contract on the blockchain to execute the current transaction and generate the first transaction event (see Long Fig. 2) comprises:
performing, by the transaction initiator node, compliance verification on the first transaction message using the smart contract and a zero-knowledge circuit; and generating, by the transaction initiator node, the first transaction event in response to the first transaction message passing the compliance verification.
(For a smart contract to verify the correctness of an encrypted solution without decrypting it, zero-knowledge proof techniques like non-interactive zero-knowledge proof may be used. In cryptography, a zero-knowledge proof technique or protocol is a method in which a first party known as the “prover” can prove to a second party known as a “verifier” that the prover possesses knowledge of certain information without revealing the information itself, or any other information apart from the fact that the prover knows the information. A non-interactive zero-knowledge proof is a zero-knowledge proof that requires no interactions between the prover and verifier… , edge node 230 may generate a zk-SNARK proof for the solution it has computed for a task from task initiator 210, and submit the proof together with the encrypted solution to blockchain 290.-[0146]; Transactions on the blockchain and may contain data payload for smart contract invocation.- [0120]-[0122]).
Claims 9, 16, 20-21 have similar limitations found in claim 1 above, and therefore is rejected by the same art and rationale.
Re-claim 10: Long discloses:
decrypting, by the transaction recipient node, the transaction request using a private key of the transaction recipient node to obtain content of the current transaction, wherein the content of the current transaction (Task initiator 210 may download the verified encrypted solution from blockchain 290, and optionally use its private key to decrypt the solution-[0158] ) comprises at least one of:
transmitting, by the transaction recipient node, the transaction response to the blockchain- [0173].
Claims 14 and 15 have similar limitations found in claims 7 and 8 above, and therefore is rejected by the same art and rationale.
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.
6. Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long in view of US 2024/0029036 (Bennett et al.).
Re-claim 17. Long discloses executing, by the blockchain transaction system, the smart contract to perform synchronous transaction between a first account address of the transaction initiator node and a third account address of the transaction recipient node (“each member smart contract may correspond to a respective contract address, and the submission of a transaction to any member contract address may be viewed as an invocation of the overall smart contract.”-[0129]).
Long fails to disclose wherein the synchronous transaction comprises transferring first currency of a first transaction amount to the third account address and transferring second currency of a second transaction amount to the first account address.
Bennett however, teaches a decentralized peer-to-peer transaction service including smart contracts and a transaction service receives a notification that the smart contract released the blockchain-based media of value to the second user. The transaction service transfers the fiat currency from a financial account associated with the transaction service to a financial account registered to the first user. This is a situation where the first user wants the fiat currency directly deposited into a registered financial account of the first user and the registered financial account is not embedded in the conditions of the smart contract for the smart contract to initiate this transfer on behalf of the first user.-[0062]; That is, the transaction identifier may be an address for the smart contract over the blockchain, which the workflow uses to interact with the smart contract for the blockchain-based transaction.-[0070]; the transaction service provides the wallet identifier as an address for a smart contract wallet.-[0056]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Long to include a first currency transferred to an account address and a transferring a second currency to another address as taught by Bennett in order to complete a transaction with conditions agreed to between parties.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELDA MILEF whose telephone number is (571)272-8124. The examiner can normally be reached Monday-Thursday 6:30am-3:30pm; Friday 7am-12pm.
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, Bennett Sigmond can be reached at (303)297-4411. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELDA G MILEF/Primary Examiner, Art Unit 3694
