Detailed Action
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the preliminary amendment filed on August 29, 2025.
Claims 4-6, 15, 18, 20-27, and 34-36 are cancelled.
Claims 1-3, 7-14, 16-17, 19, and 28-33 are pending.
Claims 1-3, 7-14, 16-17, 19, and 28-33 are examined.
This Office Action is given Paper No. 20260611 for references purposes only.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement filed on August 29, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Claim Objections
Claim 1 is objected to because it recites “performed by a first participant.” Examiner assumes that Applicant intended “performed by the first participant.” Appropriate correction is required.
Claim 1 is objected to because it recites “participants the coordinator.” Examiner assumes that Applicant intended “participants and the coordinator.” Appropriate correction is required.
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 1-3, 7-14, 16-17, 19, and 28-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A Prong 1: The claims recite an abstract idea of analyzing messages from a group of participants and determining an outcome, which is a certain method of organizing human activity (e.g. fundamental economic principles or practices including hedging, insurance, mitigating risk; commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations; managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions).
Claim 11, representative of claims 1 and 28, includes the following limitations:
Verifying that each respective commitment value corresponds to the respective encrypted message;
Decrypting the encrypted message to determine the respective message;
Determining an outcome based on each respective message.
Step 2A Prong 2: The claim limitations recite the following additional elements that are beyond the judicial exception:
Obtaining a respective commitment value generated by each participant;
Obtaining a respective encrypted message generated by each participant, wherein the encrypted message is generated by encrypting a message with a coordinator public key;
Obtaining respective reveal data generated by each participant.
These additional elements are not indicative of integration into a practical application because:
They add insignificant extra-solution activity to the judicial exception. Note that “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity can include both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process. An example of post-solution activity is an element that is not integrated into the claim as whole. See MPEP 2106.05(g).
Step 2B: The claim limitations do not recite additional elements, or an ordered combination of additional elements, that are sufficient to amount to significantly more than the judicial exception.
As discussed with respect to step 2A prong 2 above, the additional elements are extra solution activity that do not integrate a judicial exception into a practical application at step 2A or provide an inventive concept at step 2B.
According to the 2019 PEG, a conclusion that an additional element is insignificant extra solution activity under step 2A should be re-evaluated at step 2B. The limitations “obtaining a respective commitment value… participant”, “obtaining a respective encrypted message… public key”, and “obtaining respective reveal data… participant” are re-evaluated to determine whether they constitute well-understood, routine, and conventional activity in the field. The “receiving of data” is well-understood, routine, and conventional in the field. See Symantec, TLI Communications, and MPEP 2106.05(d). Thus, a conclusion that the limitations “obtaining a respective commitment value… participant”, “obtaining a respective encrypted message… public key”, and “obtaining respective reveal data… participant” are well-understood, routine, and conventional is supported under Berkheimer.
Therefore, when considering all the additional claim elements both individually and as an ordered combination, Examiner finds that the claim does not amount to significantly more than the exception.
The dependent claims fail to cure this deficiency and are rejected accordingly.
Claim 2 recites sending a first commitment transaction to a blockchain node, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Claim 3 recites sending a first reveal transaction to a blockchain node, which generally links the use of the judicial exception to a particular technological environment or field of use (e.g. merely an attempt to limit the use of the abstract idea to a particular technological environment). See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 and MPEP 2106.05(h).
Claim 7 recites the first encrypted message is generated using EIGamal encryption, which is merely describing data and further defining the abstract idea.
Claim 8 recites the first commitment value is a hash commitment or a Pederson commitment, which is merely describing data and further defining the abstract idea.
Claim 9 recites the first message comprises a vote or an offer, which is merely describing data and further defining the abstract idea.
Claim 10 recites making the first commitment value, first encrypted message, and first reveal data available to a verifier, which is insignificant extra-solution activity (e.g. selecting a particular data source or type of data to be manipulated). See Electric Power Group, and MPEP 2106.05(g).
Claim Rejections - 35 USC § 103
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 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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3, 7-14, 16-17, 19, and 28-33 are rejected under 35 U.S.C. 103(a) as being unpatentable over Galal, et al., “Verifiable Sealed-Bid Auction on the Ethereum Blockchain” (IDS filed August 29, 2025 NPL document #4) in view of Ren et al. (US 2023/0282052).
Claim 1
Galal discloses:
generating a first encrypted message (outcome ciphertext, see p 8) by encrypting a first message (bid, see p 7) with the coordinator public key (auctioneer’s public key, see p 7-8);
generating a first commitment value (bid commitment, see p 7) based on the first encrypted message;
making the first commitment value available (commitment, see p 8) to the group of participants (bidders, see p 8) and the coordinator (auctioneer, see p 8); and
upon determining that each other participant (each bidder, see p 8) has made a respective commitment value available to the group of participants and the coordinator, making the first encrypted message (ciphertext, see p 8) and first reveal data (parameters x and r, see p 8-9) available to the group of participants and the coordinator (auctioneer, see p 8), wherein the first reveal data enables the first encrypted message to be obtained from the first commitment value.
Galal does not explicitly disclose:
Encrypting.
Ren teaches:
Encrypting (encrypt, see [0006]).
Galal discloses generating a first encrypted message, generating a first commitment value, making the first commitment value available, and making the first encrypted message and first reveal data available. Galal does not explicitly disclose encrypting, but Ren does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the verifiable sealed-bid auction on the Ethereum blockchain of Galal with the encrypting of Ren because 1) a need exists for preserving privacy of bids and preventing collusion between the auctioneer and a malicious bidder (see Galal p 2); and 2) a need exists for a secure system that preserves voter privacy (see Ren [0008]). Encryption can help preserve voter privacy.
Claim 2
Furthermore, Galal discloses:
said making of the first commitment value available to the group of participants and the coordinator comprises sending a first commitment transaction (commitment, see p 8) to one or more blockchain nodes for publishing on a blockchain (Ethereum blockchain, see abstract), wherein the first commitment transaction comprises the first commitment value.
Claim 3
Furthermore, Galal discloses:
said making of the first encrypted message and the first reveal data available to the group of participants and the coordinator comprises sending a first reveal transaction (function Reveal, see p 8) to one or more blockchain nodes for publishing on a blockchain (Ethereum blockchain, see abstract), wherein the first reveal transaction comprises the first encrypted message and the first reveal data.
Claim 7
Furthermore, Ren teaches:
the first encrypted message is generated using EIGamal encryption (ElGamal, see [0051,98 0053]).
Claim 8
Furthermore, Galal discloses:
the first commitment value is one of: a hash commitment or a Pederson commitment (Pedersen commitment scheme, see p 7) generated based on the first encrypted message.
Claim 9
Furthermore, Galal discloses:
the first message comprises a vote or an offer (bid, see p 7).
Claim 10
Furthermore, Galal discloses:
making the first commitment value available to a verifier (auction contract, see p 8); and
making the first encrypted message and first reveal data available to the verifier (auction contract, see p 8).
Claim 11
Galal discloses:
obtaining a respective commitment value (bid commitment, see p 7) generated by each respective participant (each bidder, see p 8);
obtaining a respective encrypted message (outcome ciphertext, see p 8) generated by each respective participant, wherein the respective encrypted message is generated by encrypting (encrypting, see p 8) a respective message (bid, see p 7) with the coordinator public key (auctioneer’s public key, see p 7-8);
obtaining respective reveal data (function Reveal, see p 8) generated by each respective participant;
for each respective participant, using the respective reveal data to verify that the respective commitment value corresponds (verify the opening correctness of the commitments, verify, see p 8-10) to the respective encrypted message;
determining an outcome (WinnerPay, see p 11) based on each respective message.
Galal does not disclose:
For each… message.
Ren teaches:
for each respective participant, determining the respective message by decrypting (decrypting, see [0006]) the respective encrypted message (encrypted ballot, see [0006]).
Galal discloses obtaining a commitment value, obtaining an encrypted message, obtaining reveal data, verifying the commitment value, and determining an outcome. Galal does not disclose decrypting the encrypted message, but Ren does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the verifiable sealed-bid auction on the Ethereum blockchain of Galal with the decrypting the encrypted message of Ren because 1) a need exists for preserving privacy of bids and preventing collusion between the auctioneer and a malicious bidder (see Galal p 2); and 2) a need exists for a secure system that preserves voter privacy (see Ren [0008]). Decrypting the encrypted message can help preserve voter privacy.
Claim 12
Furthermore, Galal discloses:
said determining of the outcome comprises using only the respective messages whose respective encrypted message corresponds (verify the opening correctness of the commitments, verify, see p 8-10) to the respective commitment value to determine the outcome.
Claim 13
Furthermore, Galal discloses:
the outcome (WinnerPay, see p 11) comprises or is associated with one of the respective messages.
Claim 14
Furthermore, Galal discloses:
making the outcome (WinnerPay, see p 11) available to the group of participants.
Claim 16
Furthermore, Galal discloses:
said obtaining of the respective commitment value comprises obtaining the respective commitment value from a blockchain (Ethereum blockchain, see abstract), and/or
said obtaining of the respective encrypted message comprises obtaining the respective encrypted message from the blockchain, and/or
said obtaining of the respective reveal data comprises obtaining the respective encrypted message from the blockchain.
Claim 17
Furthermore, Galal discloses:
generating an outcome proof (VerifyAll, see p 11) proving that the outcome is based on each respective message; and
making the outcome proof available to the group of participants (see p 11).
Claim 19
Furthermore, Galal discloses:
said making of the outcome proof available to the group of participants comprises sending an outcome proof transaction (VerifyAll, see p 11) to one or more nodes of a blockchain network (Ethereum blockchain, see abstract), wherein the outcome proof transaction comprises the outcome proof.
Claim 28
Galal discloses:
obtaining a respective commitment value (bid commitment, see p 7) generated by each respective participant (each bidder, see p 8);
obtaining a respective encrypted message (outcome ciphertext, see p 8) generated by each respective participant, wherein the respective encrypted message is generated by encrypting a respective message (bid, see p 7) with a coordinator public key (auctioneer’s public key, see p 7-8);
obtaining respective reveal data (function Reveal, see p 8) generated by each respective participant;
obtaining an outcome (WinnerPay, see p 11) generated by the coordinator;
for each respective participant, using the respective reveal data to verify (verify the opening correctness of the commitments, verify, see p 8-10) that the respective commitment value corresponds to the respective encrypted message;
verifying the outcome (check valid proofs, see p 11); and
making a result of the verification available to the group of participants and/or the coordinator (refund the initial deposit to all honest players, see p 11).
Galal does not explicitly disclose:
Encrypting.
Ren teaches:
Encrypting (see [0006]).
Galal discloses obtaining a commitment value, obtaining an encrypted message, obtaining reveal data, obtaining an outcome, verifying the commitment value, verifying the outcome, and making a result of the verification available. Galal does not explicitly disclose encrypting, but Ren does. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to combine the verifiable sealed-bid auction on the Ethereum blockchain of Galal with the encrypting of Ren because 1) a need exists for preserving privacy of bids and preventing collusion between the auctioneer and a malicious bidder (see Galal p 2); and 2) a need exists for a secure system that preserves voter privacy (see Ren [0008]). Encrypting can help preserve voter privacy.
Claim 29
Furthermore, Galal discloses:
obtaining an outcome proof (WinnerPay, valid proof, see p 11) proving that the outcome is based on each of the respective messages and/or that the outcome comprises or is associated with one of the respective messages; and
using the outcome proof to verify the outcome (valid proof, see p 11).
Claim 30
Furthermore, Galal discloses:
the outcome comprises or is associated with one of the respective messages, and wherein said verifying of the outcome comprises: obtaining, for each respective message which the outcome does not comprise or is not associated with, a respective comparison proof proving that the outcome does not comprise or is not associated with the respective message (invalid proof, see p 11); and
using the respective comparison proofs to verify the outcome (see p 11).
Claim 31
Furthermore, Galal discloses:
said verifying of the outcome comprises: obtaining, a single comparison proof (WinnerPay, see p 11) proving how the outcome is associated with each respective message; and
using the single comparison proof to verify the outcome (see p 11).
Claim 32
Furthermore, Galal discloses:
said obtaining of the respective commitment value comprises obtaining the respective commitment value from a blockchain (Ethereum blockchain, see abstract), and/or
said obtaining of the respective encrypted message comprises obtaining the respective encrypted message from the blockchain, and/or
said obtaining of the respective reveal data comprises obtaining the respective encrypted message from the blockchain, and/or
said obtaining of the outcome comprises obtaining the outcome from the blockchain.
Claim 33
Furthermore, Galal discloses:
said making of the result available to the group of participants and/or the coordinator comprises sending a result transaction to one or more nodes of a blockchain network (Ethereum blockchain, see abstract), wherein the result transaction comprises the result.
Claim Interpretation
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure (see attached form PTO-892).
Agrawal et al. (US 2019/0164153) discloses a blockchain system for confidential and anonymous smart contracts.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from Examiner should be directed to Chrystina Zelaskiewicz whose telephone number is 571-270-3940. Examiner can normally be reached on Monday-Friday, 9:30am-5:00pm. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Neha Patel can be reached at 571-270-1492.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal/pair <http://pair-direct.uspto.gov>. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866.217.9197 (toll-free).
/CHRYSTINA E ZELASKIEWICZ/Primary Examiner, Art Unit 3699
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