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 .
Continuation Application
This Application is a continuation of US Application No. 18/339,721 filed on 06/22/2023 now patent US 12,147,978 B2 (“Parent Application”). See MPEP § 201.07. In accordance with MPEP § 609.02 (II)(A)(2) and MPEP § 2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also, in accordance with MPEP § 2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) is/are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desires the information to be printed on a patent issuing from this application. See MPEP § 609.02 (II)(A)(2).
Acknowledgements
This Office Action is in response to the claims filed on 05/08/2025.
Claims 1-21 were newly introduced.
Claims 1-21 are pending.
Claims 1-21 were examined.
Examiner’s Interview
An Examiner’s interview was conducted on 4/14/2026 in an attempt to advance prosecution (see Interview Summary attached).
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 (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 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.
Claims 1, 2, 6-9, 13-16 and 19-21 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yu et al. (CN 113422767 A), hereinafter Yu in view of DeLuca et al. (US 2023/0336523 A1), hereinafter DeLuca.
With respect to claims 1, 8 and 15, Yu teaches a non-transitory machine-readable storage medium; an apparatus, comprising: a processor; and a non-transitory machine-readable storage medium ; and a method (Domain name registration management method and system based on blockchain) comprising:
receiving a request from a first user to register a domain name with a domain registrar blockchain (see 2.2 Domain name registration management chain, page 15, line 51 to page 16, line 49; page 17, lines 38-43; Domain name management account book, page 18, line 41 to page 19, line 8; Fig. 5, page 21, lines 18-48, 3.2 Domain name life cycle: The initial stage of the domain name life cycle is the Available stage. In this stage, the domain name allows the registrant to register."; Open auction, page 22, lines 16-24. See also page 4, lines 6-8: Domain name data is the data maintained by the registration management and operation agencies and registrars related to the registered domain name. Domain name data is divided into domain name registration data and domain name resource record data; page 5, lines 24-28 and page 11, line 33 to page 12, line 41),
the domain registrar blockchain storing domain name registration data in smart contracts (see page 3, lines 15-25: Domain name life cycle management smart contract technology: The present invention combines domain name life cycle management with blockchain smart contracts, and proposes domain name life cycle management smart contract technology);
performing an off-chain registration process for the domain name with an off-chain domain registrar, the off-chain registration process including verifying and reserving the domain name with the off-chain domain registrar accredited by Internet Corporation for Assigned Names and Numbers (ICANN) (see page 23 lines 5-23, pay the fee/transfer domain name : "The winner needs to sign a domain name transfer agreement with the registrar. The winner provides a payment agreement record and signs a domain name transfer agreement with the registrar, and the registrar is the registrar in the registrant’s bid list. A new record is added to the domain name transfer agreement table in the domain name transaction account book."; For ICANN, see Registrars, page 5, lines 24-28);
responsive to the off-chain registration process, sending a blockchain transaction to the domain registrar blockchain to perform an on-chain registration process for the domain name with the domain registrar blockchain, , the blockchain transaction including the domain name and [the identity of] the first user… (see page 26, lines 24-28: "The domain name registrar or registry operation agency uploads the registered domain names under other domain name registration systems to the domain name registration management chain, and the registrant field of the corresponding record in the domain name registration agreement table is empty."; page 27, lines 34-40: 4.3.2 Domain ownership declaration, "The owner of the reserved domain name can declare ownership in the domain name registration management chain. The domain name owner initiates a domain name declaration, and the input data of the declaration includes information such as the domain name to be declared and the identity of the domain name owner”); and
[declaring domain ownership by recording relevant information on-chain] (see page 27, lines 40-43: 4.3.2 Domain ownership declaration, "After the ownership declaration application is initiated, the contract checks the legality of the declaration and records relevant information and returns a random string”).
Yu does not explicitly disclose a method, medium and apparatus comprising: [the identity of the first user is] a first digital wallet address for a first digital wallet associated with the first user. [declaring domain ownership by recording relevant information on-chain comprises] minting, by the domain registrar blockchain, an on-chain asset for the domain name to the first digital wallet associated with the first user, wherein minting the on-chain asset to the first digital wallet associated with the first user grants exclusive administrative control over the domain name to the first digital wallet associated with the first user.
However, DeLuca discloses a method, medium and apparatus (Domain name registration based on verification of entities of reserved names) comprising:
[the identity of the first user is] a first digital wallet address for a first digital wallet associated with the first user (see paragraph [0066]: “When the user is verified as the entity of the reserved name as determined at operation 330, registration module 116 registers the requested domain name at operation 340. For example, the user may select one or more available extensions for the requested domain name on the user interface of client system 114. The registration module creates and posts a transaction (and other information) to a corresponding blockchain associated with each selected extension to register the requested domain name for that extension. In the case of a non-fungible token (NFT) domain name, a non-fungible token (NFT) for each domain registration is created and placed in the user wallet. For example, a non-fungible token (NFT) for a domain name may be associated with an address of a cryptocurrency wallet of the user. Once a domain registration is posted to the blockchain, only the user may perform operations with respect to the domain, such as adding/altering content and/or functionality”);
[declaring domain ownership by recording relevant information on-chain comprises] minting, by the domain registrar blockchain, an on-chain asset for the domain name to the first digital wallet associated with the first user, wherein minting the on-chain asset to the first digital wallet associated with the first user grants exclusive administrative control over the domain name to the first digital wallet associated with the first user. (see paragraph [0033]: “A blockchain domain name is stored on a blockchain. The blockchain domain name may be a non-fungible token (NFT) domain name that is associated with a non-fungible token (NFT) stored in a user wallet. The blockchain domain name may be associated with various information (e.g., wallet addresses, user information (e.g., name, address, email, etc.), data or other access restrictions, etc.). The blockchain domain name is associated with software or smart contracts on the blockchain that may perform various functions (e.g., provide a registry for corresponding wallet addresses, indicate locations of content for the domain (e.g., or a website, etc.) hosted on the blockchain or other system, etc.). In order to access a blockchain domain, the blockchain is accessed to find the record corresponding to the blockchain domain name (which may initiate the corresponding smart contracts for the corresponding functionality). The private key of the user wallet enables the user to have sole control of the blockchain domain name (e.g., authenticating operations or transactions for the blockchain domain name similar to the cryptocurrency example described above, etc.). For example, the user may have sole control to perform operations that alter content and/or functionality for the blockchain domain name”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the decentralized domain registration mechanisms as disclosed by DeLuca in the method, medium and apparatus of Yu, the motivation being to enabling a user to secure registration for a protected or otherwise reserved name by associating a non-fungible token (NFT) with an address of a cryptocurrency wallet of the user (see DeLuca, paragraphs [0016] and [0066]).
With respect to claims 2, 9 and 16, the combination of Yu and DeLuca teaches all the subject matter of the method, medium and apparatus as described above with respect to claims 1, 8 and 15. Furthermore, DeLuca discloses a method, medium and apparatus wherein minting the on-chain asset for the domain name to the first digital wallet associated with the first user further comprises:
accessing nameserver smart contracts associated with the domain registrar blockchain (see paragraph [0033]: “...The blockchain domain name may be associated with various information (e.g., wallet addresses, user information (e.g., name, address, email, etc.), data or other access restrictions, etc.). The blockchain domain name is associated with software or smart contracts on the blockchain that may perform various functions (e.g., provide a registry for corresponding wallet addresses, indicate locations of content for the domain (e.g., or a website, etc.) hosted on the blockchain or other system, etc.). In order to access a blockchain domain, the blockchain is accessed to find the record corresponding to the blockchain domain name (which may initiate the corresponding smart contracts for the corresponding functionality). The private key of the user wallet enables the user to have sole control of the blockchain domain name (e.g., authenticating operations or transactions for the blockchain domain name similar to the cryptocurrency example described above, etc.). For example, the user may have sole control to perform operations that alter content and/or functionality for the blockchain domain name.”; Examiner notes nameservers "indicate locations of content for the domain (e.g., or a website, etc.)"); and
storing a mapping between the domain name and the first digital wallet associated with the first user in a smart contract (see paragraph [0033]: “...The blockchain domain name is associated with software or smart contracts on the blockchain that may perform various functions (e.g., provide a registry for corresponding wallet addresses…").
The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 6, 13 and 20, the combination of Yu and DeLuca teaches all the subject matter of the method, medium and apparatus as described above with respect to claims 1, 8 and 15. Furthermore, Yu discloses a method, medium and apparatus wherein the on-chain asset includes a registration expiration date for the domain name (see page 18, lines 1-6: "The data objects in the domain name registration management chain are stored as several account books. The design idea of the account book is based on the data function to separate data for different purposes. According to the purpose of the data, the account books are divided into member account books, domain name data account books, domain name management account books, and domain name transaction account books."; Expiration time, page 18, line 54 to page 19, line 3: "The registration agreement form is an agreement between the registrar and the registrant, which grants the registrant the ownership of the registered domain name. The record content of the registration agreement table includes domain name registrant ID, domain name creation time, domain name life cycle, domain name update time, domain name expiration time, etc. The domain name status agreement table records the agreement between the registry operator or registrar and the registrant, and assigns different statuses to the domain name. The main record content of the domain name status protocol table includes domain name status, status effective time, status expiration time, etc.”).
The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 7, 14 and 21, the combination of Yu and DeLuca teaches all the subject matter of the method, medium and apparatus as described above with respect to claims 1, 8 and 15. Furthermore, Yu discloses a method, medium and apparatus wherein minting the on-chain asset to the first digital wallet associated with the first user grants exclusive administrative control over changes to DNS records for the domain name to the first digital wallet associated with the first user (see page 25, lines 51-56: "4.1 Proof of domain name ownership: Proof of ownership of a domain name refers to the process by which a domain name holder proves its ownership to a third party in some way. One of the goals of the domain name registration management chain is to be compatible with the registered domain names in the current domain name registration management system. All registrants can manage their own domain names through the domain name registration management chain. Registrants can directly manage domain names in the domain name management chain for domain names registered in the domain name management chain”).
Claims 5, 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (CN113422767A), in view of DeLuca (US 2023/0336523 A1), in view of Pezeshki (US 2022/0222245 A1), and as evidenced by Github.com/handshake-org/ (NPL 2022, listed in PTO-892 as reference "V").
With respect to claims 5, 12 and 19, the combination of Yu and DeLuca teaches all the subject matter of the method, medium and apparatus as described above with respect to claims 1, 8 and 15. While Yu discloses Domain Transfers (see at least page 25, lines 1-13), the combination of Yu and DeLuca does not explicitly teach a method, medium and apparatus receiving a second request from the first user to transfer the domain name to a second user, the second request including the first digital wallet address for the first digital wallet associated with the first user and a second digital wallet address for a second digital wallet associated with the second user, wherein the first digital wallet address indicates the second request is from the first user associated with the first digital wallet with the exclusive administrative control over the domain name; determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user; and performing an on-chain transaction to transfer the on-chain asset for the domain name from the first digital wallet associated with the first user to the second digital wallet associated with the second user in response to determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user, wherein the exclusive administrative control over the domain name is transferred from the first digital wallet to the second digital wallet with the on-chain asset.
However, Pezeshki discloses a method, medium and apparatus (Blockchain registry scaling) comprising
receiving a second request from the first user to transfer the domain name to a second user, the second request including the first digital wallet address for the first digital wallet associated with the first user and a second digital wallet address for a second digital wallet associated with the second user, wherein the first digital wallet address indicates the second request is from the first user associated with the first digital wallet with the exclusive administrative control over the domain name (see Fig. 3, step 301, paragraph [0035]: “FIG. 3 is a flowchart illustrating an embodiment of a process for responding to a management action for a domain of a multi-layer blockchain-based name service. For example, an owner of a domain name registered with a multi-layer blockchain-based name service accesses a management service of the multi-layer blockchain-based name service to perform a variety of domain name management actions. Each management action can be submitted as a management request to the management service. Example management action requests can include actions such as transferring and/or selling a domain name..."; paragraph [0036]: “At 301, a management request is received. The management action may be one or more of the following: transfer a domain to a new owner... In some embodiments, a process is performed to first determine which layer of the blockchain the domain name is stored, and the program function call is made to an address of the registry smart contract on the appropriate blockchain.”; see paragraph [0037] for first digital wallet address (i.e. owner address)and paragraph [0039] for second digital wallet address (i.e. buyer's address). This is evidenced by Github.com/handshake-org/ (NPL 2022, listed in PTO-892 as reference "V"), see "Alice signs and broadcasts a TRANSFER covenant committing to Bob's address");
determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user (see Fig. 3, step 303, paragraph [0037]: “At 303, a determination is made whether the request is authorized. In the event the request is authorized, processing proceeds to 305 where the management request is performed. In the event the request is not authorized, processing proceeds to 307 where the management request is rejected. In some embodiments, a request is authorized if it is provided by an owner of a domain, an approved alternative account specified for the domain (e.g., specified using the registry smart contract), or an operator account specified (e.g., using the registry smart contract) to be allowed to control every domain owned by the owner. In order to prove that the user account that provided the request is authentic, the user account can sign the request using a private cryptographic key of the user account and this signature is verified using a public key of the user account to authenticate the user account. In the event the authenticated user account is an owner, an approved account, or an operator of the domain according to the blockchain record of the registry smart contract, it is determined that the request is authorized. In the event the account that provided the request cannot be authenticated or the authenticated user account is not authorized for the domain, the request is not authorized”); and
performing an on-chain transaction to transfer the on-chain asset for the domain name from the first digital wallet associated with the first user to the second digital wallet associated with the second user in response to determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user, wherein the exclusive administrative control over the domain name is transferred from the first digital wallet to the second digital wallet with the on-chain asset (see Fig. 3, step 305, paragraph [0039]: “At 305, a management request is performed. For example, the management action is allowed to be performed if the request is determined to be authorized at 303. Examples of performed management actions include transferring the domain of the request to a new owner, setting one or more resolution targets for the domain, creating a subdomain for the domain, deleting or burning the domain, adding or removing an approved account that can control the domain, adding or removing an operator account for an owner that can control every domain owned by the owner, and/or migrating the domain to a different blockchain layer of the multi-layer blockchain-based name service”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the management action for a domain of a name service as disclosed by Pezeshki in the method, medium and apparatus of Yu and DeLuca, the motivation being to assist the owner to manage its domain(s) (see Pezeshki, paragraph [0024]).
Prior Art Analysis
Claims 3, 4, 10, 11, 17 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record does not appear to reasonably disclose receiving a second request from the first user to update a DNS record associated with the domain name, the second request including the first digital wallet address for the first digital wallet associated with the first user; determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user indicating the first user has control over the domain name corresponding to the on-chain asset; retrieving the DNS record by performing a forward lookup process with the domain registrar blockchain; and updating the DNS record in response to determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user, as recited in claims 3, 10 and 17. Specifically, the updating the DNS record in response to determining the on-chain asset for the domain name is stored at the first digital wallet associated with the first user appears to be allowable subject matter, therefore claims 3, 10 and 17 appear to be allowable if rewritten in independent form including all of the limitations of the base claims.
Examiner notes that further search and consideration will be required upon presentation of the rewritten claims. Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14. Claims 4, 11 and 18 would also be allowable upon allowance of claims 3, 10 and 17, due to their dependency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Literature
Li (CN 113329106 A) discloses domain name distribution and management method and system based on block chain public chain, including generating a change domain name owner transaction.
Liu et al. (CN 112671950 A) disclose a domain name processing method based on blockchain, device, electronic device and storage medium, including decentralized domain name processing service provided through a block chain network.
Richardson (WO 2018213880 A1) discloses system for blockchain based domain name and IP number register, including transfer of a domain from one user to another.
Non-Patent Literature
Khoury et al. (NPL 2022, listed in PTO-892 as page 1, reference "U") disclose Implementation of Blockchain Domain Control Verification (B-DCV), including a Blockchain-Based Domain Control Validation Method.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
Prosecution Insights