DETAILED ACTION
This Office Action is in response to an application filed on April 25, 2025, in which claims 2 through 19 are pending, and ready for examination.
Acknowledgement is made of Applicant’s claim for domestic benefit as a Continuation of U.S. Application No. 18/395,619 filed on December 24, 2023, now U.S. Patent No. 12,314,379, that application a Continuation of U.S. Application No. 17/542,157 filed on December 3, 2021, now U.S. Patent No. 12,032,677, that application a Continuation of U.S. Application No. 16/078, 628 filed on August 21, 2018, now U.S. Patent No. 11,194,898, that application claiming benefit to PCT/IB2017/050821 filed on February 14, 2017.
Acknowledgement is made of Applicant’s preliminary amendment filed on May 8, 2025.
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 .
Priority
Acknowledgement is made of applicant’s claim for foreign priority based on applications filed in the United Kingdom on or about February 23, 2016.
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
Claims 13 and 16 are objected to because of the following informalities:
Claims 13 recites, “is influenced by state of the blockchain”.
It appears that the claim(s) should recite, “is influenced by a state of the blockchain”.
Appropriate correction is required.
Claims 16 does not end with a period.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of commonly-owned U.S. Patent No. 11,194,898. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reason(s):
Claims 2 and 13 of the instant application is merely a broader versions of the independent claim(s) of U.S. Patent No. 11,194,898. That is, the independent claim(s) of U.S. Patent No. 11,194,898 anticipate claims 2 and 13 of the instant application.
Dependent claims 3-12 and 14-19 are each dependent upon one of either claims 2 or 13, and are therefore rejected by virtue of at least that dependency, and further because those claims merely recite the same or similar subject matter recited in the various dependent claims of U.S. Patent No. 11,194,898.
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.
Claims 2 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 pre-AIA the applicant regards as the invention.
Claim 2 recites, “the state of [the blockchain]”.
There is insufficient antecedent basis for this element in the claim(s).
Claims 3-12 are each dependent from claim 2, and are therefore rejected under the same rationale.
Claim Rejections - 35 USC §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.
Claims 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yago, Yaron Edan, U.S. Pub. No. 2015/0206106 (hereinafter referred to as Yago).
With regard to claim 13, Yago discloses a system comprising: a blockchain (Yago, [0058]; [0070]; [0080]-[0082]); and a computing resource arranged to execute a loop such that execution of the loop is influenced by state of the blockchain (Yago, [0058]; [0070]; [0080]-[0082]; Figs. 7, 12; disclosed monitor module on separate transaction server oversees/manages private ledger in parallel with public (Bitcoin) ledger, by executing loops in the private ledger based on events in public (Bitcoin) ledger).
With regard to claim 14, Yago further discloses wherein for each iteration of the loop: a condition is evaluated and at least one action is performed based on the outcome of the evaluation; the at least one action comprising: causing at least one transaction to be written to the blockchain; and/or causing an off-blockchain action to be performed (Yago, [0058]; [0070]; [0082]).
With regard to claim 15, Yago further discloses wherein the condition relates to: data received, detected or generated by the computing resource; or the state of the blockchain (Yago, [0065]-[0067]).
With regard to claim 16, Yago further discloses wherein the computing resource is arranged to monitor: the state of the block chain; a value generated or received by the computing resource; and/or a data or signal source provided off the blockchain (Yago, [0007]);
With regard to claim 17, Yago further discloses wherein i) the blockchain serves as a storage component for data, instructions or a pointer to data and/or instructions; and ii) the computing resource serves as a control flow management component for a Turing complete process, the computing resource being arranged to execute a looping mechanism (Yago, [0058]-[0059]; [0070]; [0082]; Figs. 7, 12; see, e.g., disclosed workflow status module).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Spanos, et al., U.S. Pub. No. 2016/0027229
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/J. BRANT MURPHY/Primary Examiner, Art Unit 2435
July 11, 2026
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