DETAILED ACTION
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 .
Status of Claims
This communication is responsive to the submission filed July 15, 2025.
Claims 1-20 are cancelled.
Claims 21-40 are new.
Claims 21-40 are pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on July 8, 2025, and December 5, 2025, is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Claim Objections
Claim 26 is objected to because of the following informalities: Claim 26 recites “Etherium” which appears to be a misspelling of “Ethereum”. Appropriate correction is required.
Claim 40 is objected to because of the following informalities: Claim 40 recites that it is a method that depends from claim 15. However, the independent method claim is claim 35, not 15 which is canceled. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-40 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Per Claims 21-40: Independent claim 21 recites “based on a second cryptographic wallet address of a second cryptocurrency wallet associated with the trade referrer, determine whether the trade referrer has previously caused execution of a first smart contract, wherein execution of the first smart contract verifies membership of the trade referrer in a decentralized settlement network and transfers a first amount of a cryptographic token from the second cryptocurrency wallet to a third cryptocurrency wallet associated with the decentralized settlement network, and wherein the first amount corresponds to a network fee plus a settlement fee”. However, the originally-filed specification fails to describe determining whether the trade referrer has previously caused execution of a first smart contract based on a second cryptographic wallet address of a second cryptocurrency wallet associated with the trade referrer. For example, ¶ 76 of the pre-grant publication describes that trade referrers who violate the network’s rules or are unsuitable to participate in the GLASS network will be removed from the network’s smart contract whitelists and will not be able to use the GLASS network to refer and settle trades. Further, ¶ 76 also describes that trade referrers can readily join the GLASS network once they stake the required number of GLASS tokens in the GLASS network. However, there is no description that any check is made as to whether the trade referrer has previously caused execution of any smart contract. Further, the specification also fails to describe that execution of the first smart contract verifies member of the trade referrer in the settlement network. As noted above, ¶ 76 describes that a smart contract contains a whitelist. However, it does not describe that execution of the smart contract requires or includes verifying the trade referrer in the settlement network. Further, because the originally-filed specification fails to describe determining whether the trade referrer has previously caused execution of the first smart contract, the claim elements that are performed in response to such a determination, i.e., “in response to determining that the trade referrer has not previously caused execution of the first smart contract, refrain from causing transmission of the trade request to the settlement provider; in response to determining that the trade referrer has previously caused execution of the first smart contract, cause transmission of the trade request to the settlement provider via peer-to-peer routing”, are also not supported by the originally-filed specification. Independent claims 29 and 35 recite similar subject matter and are also rejected for similar reasons. The respective dependent claims are rejected by reason of their dependency from the respective independent claims.
Per Claims 22, 30, and 38: Claim 22 recites “determine that a trade volume associated with a jurisdiction of the settlement provider is below a predetermined threshold; and in response to the verification and determination, add the settlement provider to a whitelist of the decentralized settlement network.” However, the originally-filed specification fails to describe that a trade volume associated with a jurisdiction of the settlement provider is below a predetermined threshold. Paragraph 68 generally describes that the managing entity will seek to balance the number of settlement provider sin each jurisdiction with the jurisdiction’s trade volume. However, it fails to describe the specifically recited subject matter of comparing trade volume with a predetermined threshold. Rather, it describes a general balancing. Further, because the originally-filed specification fails to describe the determining function, it also fails to describe adding the settlement provider to a whitelist in response to the determining function. Claims 30 and 38 recite similar subject matter and are rejected for similar reasons.
Per Claims 28 and 34: Claim 28 recites “wherein determining that the trade referrer has not previously caused execution of the first smart contract comprises identifying that a third amount of the cryptographic token was not transferred from the second cryptocurrency wallet to the third cryptocurrency wallet, wherein the third amount corresponds to the network fee.” However, as noted above, the originally-filed specification fails to describe determining that the trade referrer has not previously caused execution of the first smart contract. Therefore, it also fails to describe that such function includes identifying that a third amount of the cryptographic token was not transferred from the second cryptocurrency wallet to the third cryptocurrency wallet, as claimed. Claim 34 recites similar subject matter is rejected for similar reasons.
Per Claim 36: Claim 36 recites “in response to determining that the second trade referrer has not previously caused execution of the first smart contract, refrain from causing transmission of the second trade request to the settlement provider.” However, as noted above, the originally-filed specification fails to describe determining that a trade referrer has not previously caused execution of the first smart contract. Therefore, the originally-filed description also fails to describe refraining from causing transmission in response to making such a determination.
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 26 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.
Claim 26 contains the trademark/trade name “Etherium” [sic]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the source of a blockchain implementation and, accordingly, the identification/description is indefinite.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more. There are two criteria for subject matter eligibility. The first is that the claimed invention must be to one of the four statutory categories, i.e., a process, machine, manufacture, or composition of matter. See MPEP 2106(I). Second, the claimed invention also must qualify as patent-eligible subject matter, i.e., the claim must not be directed to a judicial exception unless the claim as a whole includes additional limitations amounting to significantly more than the exception. See MPEP 2106(I). Here, claims 21-28 are directed towards a manufacture, claims 29-34 are directed towards a machine, and claims 35-40 are directed towards a process. Therefore, the analysis proceeds to determine whether the claims recite abstract ideas.
Per Claim 21: Claim 21, as a whole, is directed towards the abstract idea of verifying membership of a trade referrer within a network and, if so, executing a trade for the trade referrer. In particular, the claim recites receiving a trade request from a trade referrer. Based on a wallet and account of the trade referrer, the claim determines whether the trade referrer has been previously verified as a member of a settlement network. The claim also transfers a first amount of currency from the wallet and account of the trade referrer to a wallet and account associated with the settlement network. If the claim determines that the trade referrer has not been previously verified, then the trade request is not transmitted to a settlement provider. However, if the claim determines that the trade referrer has been previously verified, then the trade request is sent to the settlement provider. The claim then receives a compliance indicator from the settlement provider. In response to the compliance indicator indicating that that a digital compliance certificate is issued, the claim stores the digital compliance certificate and transmits an approval to the trade referrer. Further, the claim causes a transfer of an amount of currency from the settlement network wallet to the settlement provider. However, if the compliance indicator indicates that the digital compliance certificate has not been issued, the claim causes transfer of currency from the settlement network wallet to the wallet of the trade referrer and does not transmit the approval. In other words, the claim recites Certain Methods of Organizing Human Activities recognized as reciting abstract ideas. More specifically, the following underlined claim elements recite abstract ideas while the non-underlined claim elements recite additional elements according to MPEP 2106.04(a).
receive a trade request from a trade referrer, wherein the trade request is an encrypted file that is stored off-chain and includes trade information enabling compliance certification for the trade request by a settlement provider, and wherein the trade information includes a trade hash and a first cryptographic wallet address of a first cryptocurrency wallet associated with the settlement provider;
based on a second cryptographic wallet address of a second cryptocurrency wallet associated with the trade referrer, determine whether the trade referrer has previously caused execution of a first smart contract, wherein execution of the first smart contract verifies membership of the trade referrer in a decentralized settlement network and transfers a first amount of a cryptographic token from the second cryptocurrency wallet to a third cryptocurrency wallet associated with the decentralized settlement network, and wherein the first amount corresponds to a network fee plus a settlement fee;
in response to determining that the trade referrer has not previously caused execution of the first smart contract, refrain from causing transmission of the trade request to the settlement provider;
in response to determining that the trade referrer has previously caused execution of the first smart contract, cause transmission of the trade request to the settlement provider via peer-to-peer routing;
in response to causing transmission of the trade request, receive a compliance indicator from the settlement provider, wherein the compliance indicator is generated by the settlement provider based on the trade information;
in response to determining the compliance indicator indicates issuance of a digital compliance certificate:
store the digital compliance certificate in a second smart contract,
transmit an approval associated with the trade information to the trade referrer, thereby causing the trade referrer to execute a trade specified in the trade information, and
based on the first cryptographic wallet address and the second cryptographic wallet address, cause transfer of a second amount of the cryptographic token from the third cryptocurrency wallet to the first cryptocurrency wallet, wherein the second amount corresponds to the settlement fee; and
in response to determining the compliance indicator does not indicate issuance of the digital compliance certificate, cause transfer of the second amount of the cryptographic token from the third cryptocurrency wallet to the second cryptocurrency wallet and refrain from transmitting the approval.
Because the claim recites abstract ideas, the analysis proceeds to determine whether the claim recites additional elements that recite a practical application of the abstract ideas. According to MPEP 2106.04(d), additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, or that generally link the use of the abstract ideas to a particular technological environment or field of use are not indicative of a practical application. Here, the claim recites the additional elements of cryptographic wallet addresses, cryptocurrency wallets, smart contracts, cryptographic tokens, and a digital compliance certificate. However, these additional elements, when evaluated in combination with the abstract ideas, fails to recite a practical application of the abstract ideas because they amount to an instruction to apply the abstract ideas using computers. Therefore, the claim as a whole fails to recite a practical application of the abstract ideas.
The analysis then proceeds to determine whether the additional elements, when considered individually and in combination, recite significantly more than the abstract ideas. According to MPEP 2106.05, additional elements that recite an instruction to apply the abstract ideas using a computer, that recite insignificant extra-solution activities, that generally link the use of the abstract ideas to a particular technological environment or field of use, or that recite well-understood, routine, and conventional activities are not indicative of reciting significantly more than the abstract ideas. Claim elements previously considered to recite insignificant extra-solution activities are reevaluated at this step to determine whether they recite well-understood, routine, and conventional activities. Such findings must be supported by the evidentiary requirements set forth in the Berkheimer Memo. Here, the claim recites the additional elements of cryptographic wallet addresses, cryptocurrency wallets, smart contracts, cryptographic tokens, and a digital compliance certificate. However, these additional elements, when evaluated in combination with the abstract ideas, fails to recite significantly more than the abstract ideas because they amount to an instruction to apply the abstract ideas using computers. Therefore, the additional claim elements, when considered individually and in combination, fail to recite significantly more than the abstract ideas.
Accordingly, claim 21 is rejected as being directed towards patent ineligible subject matter.
Per Claim 29: Claim 29 recites abstract subject matter similar to that discussed above in connection with claim 21 and does so in the context of a machine. Claim 29 recites the following additional elements not already considered in claim 21:
at least one hardware processor; and
at least one non-transitory memory storing instructions, which, when executed by the at least one hardware processor, cause the system to:
However, these additional elements also fail to recite a practical application of the abstract ideas or significantly more than the abstract ideas because they amount to instructions to apply the abstract ideas using computers.
Accordingly, claim 29 is rejected as being directed towards patent ineligible subject matter.
Per Claim 35: Claim 35 recites abstract subject matter similar to that discussed above in connection with claim 21 and does so in the context of a process. However, claim 35 fails to recite any additional elements not already considered in connection with claim 21. Therefore, claim 35 also fails to recite a practical application of the abstract ideas or significantly more than the abstract ideas.
Accordingly, claim 35 is rejected as being directed towards patent ineligible subject matter.
Per Claims 22-28, 30-34, and 36-40: Claims 22-28, 30-34, and 36-40 have also been analyzed for subject matter eligibility. However, these claims also fail to recite patent eligible subject matter for the following reasons:
Claims 22, 30, and 38 recite the abstract idea of verifying that the settlement provider has been approved, determine that trade volume of the settlement provider is below a threshold, and add the settlement provider to a whitelist of the settlement network, which is a Certain Method of Organizing Human Activities.
Claims 23, 31, and 39 recite the abstract idea of receiving and storing a trade execution notification and causing the settlement provider to transmit a trade execution report to a regulator, which is a Certain Method of Organizing Human Activities.
Claims 24, 32, and 40 recite the abstract idea of causing a transfer of a third amount of currency from the settlement network wallet to the settlement provider wallet and causing transfer of a fifth amount of currency from the settlement network wallet to a second settlement provider wallet, which is a Certain Method of Organizing Human Activities.
Claim 25 recites the abstract idea of retrieving escrow information associated with the trade referrer, based on whether a third amount of currency was transferred from the trade referrer wallet to the settlement network wallet, determine whether the trade referrer has been previously verified, determine whether a transfer of currency from the settlement provider wallet to the settlement network wallet, determine another value associated with the escrow information, and if all three determinations are positive, cause transmission of the trade request to the settlement provider, which is a Certain Method of Organizing Human Activities.
Claim 26 recites the additional element that the first smart, second contract, and cryptographic token are implemented on a blockchain. However, this fails to recite a practical application of the abstract ideas or significantly more than the abstract ideas because they amount to an instruction to apply the abstract ideas using computers.
Claim 27 recites the abstract idea of encrypting the digital compliance certificate, which is a Certain Method of Organizing Human Activities.
Claims 28 and 34 recite the abstract idea of identifying a third amount of cryptocurrency was not transferred from the wallet of the trade referrer to the wallet of the settlement network, which is a Certain Method of Organizing Human Activities as well as a Mental Process.
Claim 33 recites the abstract idea of verifying that the settlement provider has acquired a third amount of currency and, in response, add the settlement provider to a whitelist of the settlement network, which is a Certain Method of Organizing Human Activities.
Claim 36 recites the abstract idea of receiving a second trade request from a second trade referrer and refrain from causing transmission of the second trade request to the settlement provider if the second trade referrer has not been previously verified, which is a Certain Method of Organizing Human Activities.
Claim 37 recites the abstract idea of receiving a second trade request from the first trade referrer, causing transmission of the second trade request to the settlement provider, receiving a second compliance indicator from the settlement provider, and if the second compliance indicator does not indicate issuance of the digital compliance certificate, causing transfer of the second amount of currency from the settlement network wallet to the trade referrer and not transmit the trade execution, which is a Certain Method of Organizing Human Activities.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pub. No. 2019/0068365 discloses a secure method for exchanging entities via a blockchain. The invention incorporates tokenisation techniques, and also techniques for embedding metadata in a redeem script of a blockchain transaction. Embodiment(s) provide a computer implemented method of performing a transfer, the method comprising: generating a first exchange transaction, and broadcasting, over a first network, the first exchange transaction for inclusion on a P2P distributed ledger, wherein the first exchange transaction comprises: an indication of a first quantity of a cryptocurrency to be transferred; a first input provided from an output of a first invitation transaction from a first user, the first invitation transaction previously included on the P2P distributed ledger, a first script, a first user private key associated with the first user, a first third-party private key associated with a first third-party, and a first output indicating a transfer of a first entity from the first user to a second user; and wherein the first script comprises: a first set of metadata providing an indication of the first entity to be transferred and a first set of conditions for the transfer, a first user public key associated with the first user, the first user public key being a cryptographic pair with the first user private key, and a first third-party public key associated with the first third-party, the first third-party public key being a cryptographic pair with the first third-party private key.
U.S. Patent Pub. No. 2019/0197622 discloses a method includes generating CUSIP unique identifiers that are embedded in each token of a tokenized asset offering that is blockchain-based. Cryptocurrency wallets associated with managing tokens can also each have a unique identifier. As an alternative trading system manages trades of tokens having unique identifiers with buyers and sellers having wallets with associated unique identifiers, a reporting of transaction data can be made to a transfer agent that is registered with the a regulatory agency. Separately recording transaction data from the data recorded on the blockchain can enable the transfer agent to be the arbiter of ownership. Having the transaction data stored by the transfer agent can reduce or eliminate the incentive to hacked security wallets, can enable audits, and can enable regulatory compliance when thresholds, such as a number of shareholders, are met.
U.S. Patent Pub. No. 2009/0106140 discloses a supply-and-demand-driven, bankless, interest-rate and yield-setting mechanism for a fiduciary-based financial system that includes parties who want to trade cash and assets as a way of originating arbitrage transactions for the purpose of making money, includes an interest-rate and yield-setting mechanism constructed to provide the parties with the rates and yields necessary to cooperatively mine arbitrage opportunities and, in turn, make money. The mechanism is constructed to operate according to a market-driven, rate-setting process that establishes interest rates without the participation of banks, and may be constructed for a global fiduciary-based financial system to operate in parallel with the global banking system. Many system and method embodiments are proposed, including an automated arbitrage trading-platform system, and a method of providing an alternative international fiduciary financial system that manages investments and risks associated with the transfer of funds between different parties, while enabling non-banking entities to provide traditional banking services without violating national and international banking laws.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NILESH B KHATRI whose telephone number is (571)270-7083. The examiner can normally be reached 8:30 AM - 5:30 PM Monday-Friday, alternating Fridays off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel can be reached at (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NILESH B KHATRI/Primary Examiner, Art Unit 3699