DETAILED ACTION
This is in response to the application filed on 05/22/2025 in which claim 1 is preserved for examination.
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 1 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 1 of the instant application is anticipated by claim 1 of the U.S. Patent No. 12,346,898. Claim 1 of the U. S. Patent No. US 12,346,898 is presented in the instant application with some omitted limitations and in much broader scopes, 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.
1. A computer-implemented method comprising:
receiving, at a node in a blockchain network,
a first transaction associated with a digital asset, the first transaction specifying at least:
a first set of constraints on a second transaction to transfer control of the digital asset, the first set of constraints including one or more constraints that cause the second transaction to contain a set of data from the blockchain network; and a second set of constraints on the second transaction, the second set of constraints including a constraint that the set of data includes a block that includes the first transaction, the block included in a blockchain associated with the blockchain network;
verifying that the first set of constraints and the second set of constraints are satisfied; and
transferring control of the digital asset based at least in part on the verifying.
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.
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 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter of abstract ideas.
Step 1:
Claim 1 is directed to a method which is one of the statutory categories of invention.
Step 2A:
Prong 1:
Claim 1 is directed to an abstract idea without significantly more. Claim 1 recites the steps of:
verifying that the first set of constraints and the second set of constraints are satisfied; and transferring control of the digital asset based at least in part on the verifying. [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 evaluate if particular constraints or conditions are satisfied and based on evaluation transfer control of an asset]
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 1 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 can transfer the control or custody of an asset to another person, upon verifying that the terms of a contract are satisfied.
As such, claim 1 recite steps that fall under both mental process and organizing human activities categories. Therefore, claim 1 recite an abstract idea.
Prong 2:
The judicial exception recited in claim 1 is not integrated into a practical
application. Claim 1 recites the additional step of “receiving, at a node in a blockchain network, a first transaction associated with a digital asset” which is considered as an insignificant extra pre-solution activity of data gathering and data input. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the subject matters of “the first transaction specifying at least: a first set of constraints on a second transaction to transfer control of the digital asset, the first set of constraints including one or more constraints that cause the second transaction to contain a set of data from the blockchain network; and a second set of constraints on the second transaction, the second set of constraints including a constraint that the set of data includes a block that includes the first transaction, the block included in a blockchain associated with the blockchain network” are merely data definition which is considered to be non-functional descriptive materials.
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:
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Claim 1 recites the additional step of “receiving, at a node in a blockchain network, a first transaction associated with a digital asset” which is considered as well-understood, conventional, and convenient activity of data gathering and data input. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the subject matter of “the first transaction specifying at least: a first set of constraints on a second transaction to transfer control of the digital asset, the first set of constraints including one or more constraints that cause the second transaction to contain a set of data from the blockchain network; and a second set of constraints on the second transaction, the second set of constraints including a constraint that the set of data includes a block that includes the first transaction, the block included in a blockchain associated with the blockchain network” is merely data definition which is considered to be non-functional descriptive materials.
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, the claim is not patent eligible.
First Art rejection:
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Puddu et al., US 2020/0067697 (Puddu, hereafter).
Puddu discloses a computer-implemented method comprising:
receiving, at a node in a blockchain network, a first transaction associated with a digital asset, the first transaction specifying at least (See Puddu: at least Fig. 1, Fig. 4, para 24, 89, 109, and 117):
a first set of constraints on a second transaction to transfer control of the digital asset, the first set of constraints including one or more constraints that cause the second transaction to contain a set of data from the blockchain network (See Puddu: at least Fig. 1, Fig. 4, para 24, 34, 89, 109, 112-115, a mutable transaction specifies a first condition that causes a second transaction (i.e. a mutated transaction) to contain data from blockchain data such an identifier data); and
a second set of constraints on the second transaction, the second set of constraints including a constraint that the set of data includes a block that includes the first transaction, the block included in a blockchain associated with the blockchain network (See Puddu: at least Fig. 1, Fig. 4, para 24, 34, 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));
verifying that the first set of constraints and the second set of constraints are satisfied (See Puddu: at least Fig. 1, Fig. 4, para 33, 89, 109, 112-115, verifying the whether the conditions are true); and
transferring control of the digital asset based at least in part on the verifying (See Puddu: at least Fig. 1, Fig. 4, para 24, 89, 109, and 112-115).
Second Art rejection:
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.
Claim) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Andreas Antonopoulos authoring “Mastering Bitcoin - Unlocking Digital Crypto-Currency” published in 2014.
Antonopoulos discloses a computer-implemented method comprising:
receiving, at a node in a blockchain network, a first transaction associated
with a digital asset (second transaction in figure 2-4 of page 19; transaction #2 in figure 2-10 in page 29), the first transaction specifying at least:
a first set of constraints on a second transaction to transfer control of the
digital asset ("In simpler terms, Alice's transaction output will contain a script that says something like This output is payable to whoever can present a signature from the key corresponding to Bob's public address", page 23), the first set of constraints including one or more constraints that cause the second transaction to contain a set of data from the blockchain network ("The transaction output would have a locking script of the form: OP DUP OP HASH160 <Cafe Public Key Hash> OP _EQUAL OP CHECKSIG", page 129); and
a second set of constraints on the second transaction, the second set of
constraints including a constraint that the set of data includes a block that
includes the first transaction, the block included in a blockchain associated
with the blockchain network (Transaction #3 in figure 2-10 in page 29, "Unlocking script of the form: <Cafe Signature> <Cafe Public Key>, page 129; P2SH, pages 134-
137);
verifying that the first set of constraints and the second set of constraints are satisfied ("First, the unlocking script is executed, using the stack execution engine. If the unlocking script executed without errors (e.g., it has no "dangling" operators left over), the main stack (not the alternate stack) is copied and the locking script is executed. If the result of executing the locking script with the stack data copied from the unlocking script is "TRUE; the unlocking script has succeeded in resolving the conditions imposed ... Note that the UTXO is permanently recorded in the blockchain", pags 124-125; "The two scripts together would form the following combined validation
script ... when executed, this combined script will evaluate to TRUE if, and only if, the unlocking script matches the conditions set by the locking script.", page 129); and
transferring control of the digital asset based at least in part on the verifying ("First, the unlocking script is executed, using the stack execution engine. If
the unlocking script executed without errors (e.g., it has no "dangling" operators left over), the main stack (not the alternate stack) is copied and the locking script is executed. If the result of executing the locking script with the stack data copied from the unlocking script is "TRUE; the unlocking script has succeeded in resolving the conditions imposed ... Note that the UTXO is permanently recorded in the blockchain", pags 124-125; "The two scripts together would form the following combined validation script ... when executed, this combined script will evaluate to TRUE if, and only if, the
unlocking script matches the conditions set by the locking script.", page 129).
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
03/06/2026