DETAILED ACTION
This is a second non-final Office action in response to the preliminary amendments filed 06/25/2025. Hereby, the first non-final Office action is voided. The preliminary amendments filed 06/25/2025 are entered. Preliminarily, claim 1 was canceled and claims 2-20 were added. Claims 2-20 are pending in this Office 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 .
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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Claim 2 is rejected on the ground of nonstatutory double patenting over claim 1 of U.S. Patent No. 12,346,898 since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent. The subject matter claimed in claim 2 of the instant application is anticipated by claim 1 of the U.S. Patent No. 12,346,898. Although the claims at issue are not identical, they are not patentably distinct from each other, as shown in the following table:
U.S. Patent No. 12,346,898
Instant Application
1. A computer-implemented method comprising: receiving, by a node in a blockchain network, a first transaction associated with a digital asset, the node being a computing device having a processor and a memory storing instructions for the blockchain network, and the first transaction of a blockchain comprising a first locking script specifying at least: a first set of constraints, encoded into the first locking script, on a second transaction to transfer control of the digital asset, the first set of constraints referring to undetermined variable set of data; and a second set of constraints, encoded into the first locking script, on the second transaction, the second set of constraints including a constraint that the set of data includes a plurality of data items that enable verification that a predetermined block includes the first transaction, the predetermined block included in a blockchain associated with the blockchain network; executing an unlocking script to unlock the first locking script, by the processor of the node, to obtain one or more instructions usable to determine data satisfying the first set of constraints; determining, by the processor of the node, the data satisfying the first set of constraints such that the data corresponds to a value for use in a second locking script locking the second transaction; verifying that the first set of constraints and the second set of constraints are satisfied, wherein verifying that the first set of constraints and the second set of constraints are satisfied comprises: providing data about the predetermined block; identifying, by the processor of the node using the data about the predetermined block and the plurality of data items, that the predetermined block includes the first transaction; and transferring control of the digital asset based at least in part on: the verifying that the first set of constraints and the second set of constraints are satisfied; and the value is used to unlock the second transaction.
2. (New) A computer-implemented method comprising: receiving, at a node in a blockchain network being a computing device having a processor and memory storing instructions for the blockchain network, a first transaction that includes a first script that specifies a set of constraints on a second transaction, the set of constraints including a constraint that a set of data obtained by the node includes information obtained from a blockchain associated with the blockchain network; obtaining the second transaction, the second transaction including a second script that, as a result of being executed, causes the node to obtain the set of data; and validating the second transaction by executing the first script and the second script.
[Note: the features of verifying the constraints (in first and second scripts) and executing the transfer control in the U.S. Patent No. 12,346,898 would corresponds to the limitation of “validating the second transaction by executing the first script and the second script.”]
Claims 2-13
Claims 3, 5-14
Claim 1
Claims 19 and 20
The claims of the patent "anticipate" the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Furthermore, claim 4 of the current application is rejected over claim 1 of the U.S. Patent No. 12,346,898 in view of in view of Lin, TW M543413 U. Lin discloses transaction information associated with a block header and determining that a block header has a predetermined size (e.g., 80 bytes) (See Lin: at least highlight section in page 3 of the translation). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of U.S. Patent No. 12,346,898 with Lin’s teaching in order to get wherein the node determines whether the constraint that the set of data includes the block header of the block of the blockchain is satisfied by at least verifying that the block header has a predetermined size. The motivation for doing so would have been to improve verifying the accuracy of transaction information based on block header size.
Furthermore, claim 15-17 of the current application is rejected over claim 1 of the U.S. Patent No. 12,346,898 in view of in view of Puddu et al., US 2020/0067697. Puddu discloses wherein the node determines whether the constraint that the set of data includes the block header of the block of the blockchain is satisfied by at least verifying that the block header includes a difficulty value that is greater than or equal to a difficulty value (See Puddu: at least para 95). And, Puddu discloses wherein the node determines whether the constraint that the set of data includes the block header of the block of the blockchain is satisfied by at least verifying that a hash of the block header is less than or equal to a target value calculated from the difficulty value included in the block header (See Puddu: at least para 95). Puddu further discloses wherein the constraint of the second script includes that a block header chain is satisfied by at least selecting a pair of block headers based at least in part on the order associated with the plurality of block headers, the pair of block headers comprising a first block header of the pair of block headers and a second block header of the pair of block headers (See Puddu: at least Fig. 2 and para 92 and 119).
Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of U.S. Patent No. 12,346,898 with Puddu’s teaching in order to get. The motivation for doing so would have been to improve security and verifying the accuracy of transaction information.
Claim 18 of the current application is rejected over claim 1 of the U.S. Patent No. 12,346,898 in view of in view of Puddu et al., US 2020/0067697 and further in view of n view of Ahn, US 2019/00207767. The U.S. Patent No. 12,346,898 does not disclose wherein the constraint that the second script includes the block header chain is satisfied by at least verifying that, for the pair of block headers, a hash of the first block header of the pair of block headers is equal to a hash value stored in the second block header of
the pair of block headers.
On the other hand, Ahn discloses determining a has value included in the header of a first/previous block is the same values of current hash values of a current block (See Ahn: at least para 37 and Fig. 2A-B). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of U.S. Patent No. 12,346,898 and Puddu with Ahn’s teaching in order to implement above function. The motivation for doing so would have been to improve blockchain efficiency by sequentially connecting the blocks based on hash values.
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.
Claim 2-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter of abstract ideas.
Step 1:
Claims 2-20 are directed to a method which is one of the statutory categories of invention.
Step 2A:
Prong 1:
Claims 2, 19, and 20 are directed to an abstract idea without significantly more. Claims 2, 19, and 20 recite the steps of:
obtaining the second transaction, the second transaction including a
second script that, as a result of being executed, validating the second transaction by executing the first script and the second script. [recited at a high level of generality and based on broadest and reasonable interpretation of the claim, it involves the concepts of observation, evaluation and/or judgement which could be practically performed in the human mind. A person can mentally receive a transaction (e.g., a financial/business transaction such as transferring money from one account to another) that includes instructions or notes, and validate and execute the transaction’s instructions]
The above-mentioned steps are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, nothing in the claim element precludes the step from practically being performed in a human mind or with pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Moreover,
The above-mentioned steps of claim 2 that, under its broadest reasonable interpretation, covers the organizing human activities (e.g. fundamental economic practice, or managing personal behavior or relationship or interaction between people) which is one of categories of abstract idea. For example, a human (a bank employee) can receive a transaction including instruction (script) to transfer money form one account to another. The human can validate the instruction and execute the transaction.
As such, claims 2, 19, and 20 recite steps that fall under both mental process
and organizing human activities categories. Therefore, claims 2, 19, and 20 recite an abstract idea.
Prong 2:
The judicial exception recited in claims 2, 19, and 20 is not integrated into a practical application. Claims 2, 19, and 20 recite the additional step of “receiving, at a node in a blockchain network being a computing device having a processor and memory storing instructions for the blockchain network” which is considered as an insignificant extra pre-solution activity of data gathering or data input. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the subject matter of “a first transaction that includes a first script that specifies a set of constraints on a second transaction, the set of constraints including a constraint that a set of data obtained by the node includes information obtained from a blockchain associated with the blockchain network” is merely data definition which is considered to be non-functional descriptive materials.
Moreover, the feature of “causes the node to obtain the set of data” is merely applying an instruction (“apply it”) to a computer device to implement a generic function of data gathering.
The node and blockchain network are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
These additional elements do not: (1) improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)-(c), (e)-(h). In other words, the aforementioned additional element (or combination of elements) recited in the claims do not integrate the judicial exception into a practical application.
Step 2B:
Claims 2, 19, and 20 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claims 2, 19, and 20 recite the additional step of “receiving, at a node in a blockchain network being a computing device having a processor and memory storing instructions for the blockchain network” which is considered as well-understood, conventional, and convenient activity of data gathering or data input. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the subject matter of “a first transaction that includes a first script that specifies a set of constraints on a second transaction, the set of constraints including a constraint that a set of data obtained by the node includes information obtained from a blockchain associated with the blockchain network” is merely data definition which is considered to be non-functional descriptive materials.
Moreover, the feature of “causes the node to obtain the set of data” is merely applying an instruction (“apply it”) to a computer device to implement a generic function of data gathering.
The node and blockchain network are recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Therefore, claims 2, 19, and 20 are not patent eligible.
Regarding dependent claims 3 and 7,
the dependent claims also lack additional elements that sufficient to amount to
significantly more than abstract idea found in the independent claims. The
dependent claims recite additional generic computer functions for receiving and
providing information do not amount significantly to more than abstract idea.
Regarding dependent claims 4-6 and 8-14,
the dependent claims also lack additional elements that sufficient to amount to
significantly more than abstract idea found in the independent claims. The
dependent claims additionally recite that "constraints" include certain type of data which is non-functional descriptive material and at most instruction to apply an exception using a generic computer component cannot provide an inventive concept. The claims further recite determining and evaluating the constrains that are considered to a mental process of evaluating the conditions. Thus, the recited additional limitations do not amount significantly to more than abstract idea.
Regarding dependent claims 15-18,
the dependent claims also lack additional elements that sufficient to amount to
significantly more than abstract idea found in the independent claims. The
dependent claims recite additional steps for determining and verifying whether certain conditions are satisfied that could be performed mentally. As such, the recited additional limitations do not amount significantly to more than abstract idea.
Claim Rejections - 35 USC § 102
(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.
Claims 2, 3, 5-10, 12-17, 19, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Puddu et al., US 2020/0067697 (Puddu, hereafter).
Regarding claim 2,
Puddu discloses a computer-implemented method comprising:
receiving, at a node in a blockchain network being a computing device
having a processor and memory storing instructions for the blockchain network (See Puddu: at least Fig. 1, Fig. 4, para 24, 89, 109, and 117), a first transaction that includes a first script that specifies a set of constraints on a second transaction, the set of constraints including a constraint that a set of data obtained by the node includes information obtained from a blockchain associated with the blockchain network (See Puddu: at least Fig. 1, Fig. 4, para 24, 34, 47, 67, 89, 109, 112-115, a mutable transaction associated with a mutability policy/conditions (constraints) on a second transaction, wherein the conditions include data or information (e.g., information of a party allowed to mutate the transaction) receiving from the blockchain system); and
obtaining the second transaction, the second transaction including a second script that, as a result of being executed, causes the node to obtain the set of data; (See Puddu: at least Fig. 1, Fig. 4, para 24, 34, 47, 67, 89, 109, 112-115, a mutable transaction specifies a second condition that the data of the second transaction include reference data to the first transaction (i.e. mutable transaction) causing the device/node to obtain the information specified in the mutability policy (e.g., information of a party allowed to mutate the transaction)); and
validating the second transaction by executing the first script and the second script (See Puddu: at least Fig. 1, Fig. 4, para 33, 89, 109, 112-115, validating the transaction based on verifying whether the obtained information (e.g., information of a party allowed to mutate the transaction) is true).
Regarding claim 3,
Puddu discloses wherein the set of data is received at the node in the
second transaction (See Puddu: at least Fig. 1, Fig. 4, para 24, 34, 89, 109, and 112-115).
Regarding claim 5,
Puddu discloses wherein the first set of constraints includes a constraint that the set of data includes a third transaction from a block of the blockchain (See Puddu: at least Fig. 4-5, para 24, 34, 89, 109, and 112-119, a policy/condition can issue several mutant transactions (i.e. second or third transactions) for a mutable transaction).
Regarding claim 6,
Puddu discloses wherein the first set of constraints includes a constraint that the set of data includes a block header chain that includes an ordered set of block headers, the ordered set Page 2 of 5of block headers including a plurality of block headers, the ordered set of block headers specifying an order associated with the plurality of block headers (See Puddu: at least Fig. 2, para 24 and 92).
Regarding claim 7,
Puddu discloses wherein, a set of properties of the blockchain network is provided to the node as a result of verifying that the first set of constraints and the second set of constraints are satisfied (See Puddu: at least Fig. 1-2, Fig. 4, para 24, 89, 92, 109, and 112-115).
Regarding claim 8,
Puddu discloses wherein the set of properties of the blockchain network includes a corresponding timestamp associated with each block of a blockchain of the blockchain network (See Puddu: at least Fig. 1-2, Fig. 4, para 24, 89, 92, 109,
and 112-115, timestamp).
Regarding claim 9,
Puddu discloses the first set of constraints includes a constraint that the second transaction includes a timestamp relative to the block; and verifying the constraint that the second transaction includes the timestamp relative to the block is based at least in part on the set of properties of the blockchain network (See Puddu: at least Fig. 1-2, Fig. 4, para 24, 89, 92, 109, and 112-115, timestamp).
Regarding claim 10,
Puddu discloses the first set of constraints includes a constraint that the set of data includes a block header; the second set of constraints includes a constraint that the second transaction includes an identifier of the first transaction; and the second set of constraints includes a constraint that the identifier of the first transaction is associated with a value of the block header (See Puddu: at least Fig. 1-2, Fig. 4, para 24, 89, 109, and 112-115).
Regarding claim 12,
Puddu discloses wherein the first transaction specifies a third set of constraints on the second transaction, the third set of constraints including a constraint on a value of a data item of the set of data (See Puddu: at least Fig. 1-2, Fig. 4, para 24, 89, 109, 112-115, 117-119, specifying another condition such as verifying a time window, a value of previous block, hash value).
Regarding claim 13,
Puddu discloses wherein the first transaction specifies a third set of constraints on the second transaction, the third set of constraints including a constraint derived from one or more values associated with data items of the set of data (See Puddu: at least Fig. 1-2, Fig. 4, para 24, 89, 109, 112-115, 117-119, specifying another condition such as verifying a time window, a value of previous block, hash value).
Regarding claim 14,
Puddu discloses validating the second transaction as a result of the verifying that the first set of constraints and the second set of constraints are satisfied, wherein validating the second transaction is successfully performed without verifying that an entity that created the second transaction has access to secret information (See Puddu: at least Fig. 1, Fig. 4, para 24, 89, 109, and 112-115).
Regarding claim 15,
Puddu discloses wherein the node determines whether the constraint that the set of data includes the block header of the block of the blockchain is satisfied by at least verifying that the block header includes a difficulty value that is greater than or equal to a difficulty value (See Puddu: at least para 95).
Regarding claim 16,
Puddu discloses wherein the node determines whether the constraint that the set of data includes the block header of the block of the blockchain is satisfied by at least verifying that a hash of the block header is less than or equal to a target value calculated from the difficulty value included in the block header (See Puddu: at least para 95).
Regarding claim 17,
Puddu discloses wherein the constraint of the second script includes that a block header chain is satisfied by at least selecting a pair of block headers based at least in part on the order associated with the plurality of block headers, the pair of block headers comprising a first block header of the pair of block headers and a second block header of the pair of block headers (See Puddu: at least Fig. 2 and para 92 and 119).
Regarding claims 19 and 20,
the scopes of the claims are substantially the same as claim 2, and are rejected on the same basis as set forth for the rejection of claim 2.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Puddu et al., US 2020/0067697 in view of Lin, TW M543413 U.
Although, Puddu discloses verifying the transaction information associated with mutability policies, Paddu does not expressly teach wherein the node determines whether the constraint that the set of data includes the block header of the block of the blockchain is satisfied by at least verifying that the block header has a predetermined size.
On the other hand, Lin discloses transaction information associated with a block header and determining that a block header has a predetermined size (e.g., 80 bytes) (See Lin: at least highlight section in page 3 of the translation). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of Puddu with Lin’s teaching in order to implement above function with reasonable expectation of success. The motivation for doing so would have been to improve verifying the accuracy of transaction information based on block header size.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Puddu et al., US 2020/0067697 in view of Dowding, US 2018/0253702.
Although, Puddu discloses wherein the first set of constraints and the second set of constraints are included in a script of the first transaction, Paddu does not expressly teach a locking script.
On the other hand, Dowding discloses locking script (See Dowding: at least para 151). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of Puddu with Dowding’s teaching in order to include the first set of constraints and the second set of constraints in a locking script of the first transaction, with reasonable expectation of success. The motivation for doing so would have been to improve cryptocurrency transaction verification and validation by utilizing a locking script written in bitcoin scripting language.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Puddu et al., US 2020/0067697 in view of Ahn, US 2019/0207767.
Although, Puddu discloses constrains and a block header chain with at least a pair of block headers, Paddu does not expressly teach wherein the constraint that the second script includes the block header chain is satisfied by at least verifying that, for the pair of block headers, a hash of the first block header of the pair of block headers is equal to a hash value stored in the second block header of the pair of block headers.
On the other hand, Ahn discloses determining a has value included in the header of a first/previous block is the same values of current hash values of a current block (See Ahn: at least para 37 and Fig. 2A-B). Therefore, it would have been obvious to one of ordinary skill in the art before the time the invention was effectively filed to modify the teachings of Puddu with Ahn’s teaching in order to implement above function with reasonable expectation of success. The motivation for doing so would have been to improve blockchain efficiency by sequentially connecting the blocks based on hash values.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pierce et al., US 2018/0039667 disclosing a syntax for altering one or more rules by which a blockchain may be modified wherein the software implementing each client of a blockchain network are programmed to be responsive to requests or directives to alter one or more rules by which blocks may be added to a blockchain responsive to transactions received for storage therein, the requests/directives being processed by the client as a transaction and added to the block in accordance with the current state of the operating rules, thereby adding a new rule or modifying an existing rule for subsequent operation of the client.
Naqvi, US 2017/0293747 disclosing responsive to a data request, one or more locks are derived and assigned to one or more of the data operations. Each of the locks control invocation of the data operations to which the respective lock is assigned. The deriving is based in part on (i) user context data obtained from a user issuing the request and (ii) data context comprising one or more attributes of the request. Each of the one or more locks is unlocked and the one or more data operations are invoked after the one or more locks are unlocked.
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/Hares Jami/ Primary Examiner, Art Unit 2162
05/28/2026