DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the application filed on 05/30/2025.
Claims 1-20 are currently pending and have been examined.
Specification
The disclosure is objected to because of the following informalities: [0001] recites “This application claims priority to and the benefit as a continuation of U.S. patent application Ser. No. 18/136,087, filed April 18, 2023, now U.S. Pat. No. ____________, which is a continuation”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in claim 21 in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the token generator" in line 20 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the token generator" in line 22 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "the token generator" in line 20 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-10 and 12-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, by virtue of being dependent on claims 1 and 11 respectively.
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 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more, and fails step 2 of the analysis because the focus of the claims is not on the devices themselves or a practical application but rather directed towards an abstract idea, the analysis is provided below.
Step 1 (Statutory Categories) - The claims pass step 1 of the subject matter eligibility test (see MPEP 2106(III)) as the claims are directed towards a method and systems.
Step 2A – Prong One (Do the claims recite an abstract idea?) - The idea is recited in the claims, in part, by:
generate one or more private or public tokens, each of the one or more public tokens being generated based on one of a generated private token or on another public token included in request messages received from another of the plurality of market participant computer systems; store the generated one or more public and private tokens; augment a received request message with one of the generated public tokens; transmit the augmented request message to an exchange configured to process the augmented request message, generate, based thereon, result messages including confidential data in association with the public token of the augmented request message and store the generated result messages; identify all result messages associated with any public tokens that were generated by the token generator; and decrypt, using any of the stored one or more private and public tokens, any encrypted confidential data included in any of the identified result messages.
The steps recited above under Step 2A Prong One of the analysis under the broadest reasonable interpretation covers commercial or legal interactions (including sales activities or behaviors; business relations) but for the recitation of generic computer components. That is other than reciting a processor of a token management system instance of a plurality of token management system instances, each coupled with a market participant computer system of a plurality of market participants computer systems, a memory coupled with the processor, an electronic communications network, a database and in the dependent claims a first processor of a first token management system instance, a second processor of the second token management system instance, and other exchange computer systems nothing in the claim elements are directed towards anything other than commercial or legal interactions tracking the results of requests using tokens generated based on tokens received in a request. If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A – Prong Two (Does the claim recite additional elements that integrate the judicial exception into a practical application?) - This judicial exception is not integrated into a practical application. In particular, the claims only recite the additional elements of a processor of a token management system instance of a plurality of token management system instances, each coupled with a market participant computer system of a plurality of market participants computer systems, a memory coupled with the processor, an electronic communications network, a database and in the dependent claims a first processor of a first token management system instance, a second processor of the second token management system instance, and other exchange computer systems. The processor of a token management system instance of a plurality of token management system instances, each coupled with a market participant computer system of a plurality of market participants computer systems, memory coupled with the processor, electronic communications network, database and in the dependent claims a first processor of a first token management system instance, a second processor of the second token management system instance, and other exchange computer systems are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment of computers. Mere instructions to apply the judicial exception using generic computer components and limiting the judicial exception to a particular environment are not indicative of a practical application (see MPEP 20106.05(f) and MPEP 20106.05(h)). As MPEP 2106.05(f) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone);. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed towards an abstract idea.
Step 2B (Does the claim recite additional elements that amount to significantly more than the judicial exception?) - The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, with respect to integration of the abstract idea into a practical application, using the additional elements of a processor of a token management system instance of a plurality of token management system instances, each coupled with a market participant computer system of a plurality of market participants computer systems, a memory coupled with the processor, an electronic communications network, a database and in the dependent claims a first processor of a first token management system instance, a second processor of the second token management system instance, and other exchange computer systems to perform the steps recited in Step 2A Prong One of the analysis amounts to no more than mere instructions to apply the exception using generic computer components and limits the judicial exception to the particular environment. Mere instructions to apply an exception using generic computer components and limiting the judicial exception to a particular environment does not provide an inventive concept. The additional elements have been considered separately, and as an ordered combination, and do not add significantly more (also known as an “inventive concept”) to the judicial exception. Further, MPEP 2106.05(d)(ii) provides that receiving and transmitting data over a network (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network), and Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26, 110 USPQ2d 1984-1985 (2014) (see also creating and maintaining "shadow accounts", "create electronic records, track multiple transactions, and issue simultaneous instructions" (, Alice Corp. Pty. Ltd. v. CLS Bank Int'l 573 U.S. at 224-26, 110 USPQ2d at 1984-85);, are well-understood routine and conventional, similar to the instant application claims which recites and sending and receiving messages over a network, and tracking, storing and retrieving results associated with the tokens and requests (akin to tracking transactions in Alice) from the database. The claims are not patent eligible.
The dependent claims have been given the full analysis including analyzing the additional limitations both individually and in combination as a whole. For instance, similar to above, claims 2-10 are all steps that fall within the “Certain Methods of Organizing Human Activities” groupings of abstract ideas but for generally linking the use of the judicial exemption to a particular technical computing environment (with respect to the first processor of a first token management system instance, second processor of the second token management system instance, and other exchange computer systems). The Dependent claims when analyzed both individually and in combination are also held to be patent ineligible under 35 U.S.C. 101 for the same reasoning as above and the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
No Prior Art Rejections
Based on the prior art search results, the prior art of record fails to anticipate or render obvious the claimed subject matter of the instant application. For the same reasons as in the parent patent US Patent 12,333,603, specifically, one of ordinary skill in the art would not be motivated to modify the teachings of the prior art to provide the systems and method of claims 1, 11, and 21, which perform the operations of:
generating, by a processor of a token management system instance of a plurality of token management system instances, each coupled with a market participant computer system of a plurality of market participants computer systems, one or more private or public tokens, each of the one or more public tokens being generated based on one of a generated private token or on another public token included in a request message received from another of the plurality of market participant computer systems; storing, by the processor, the generated one or more public or private tokens in a memory coupled with the processor; augmenting, by the processor, a received request message with one of the generated public tokens; transmitting, by the processor, via an electronic communications network, the augmented request message to an exchange computer system configured to process the augmented request message, generate, based thereon, result messages including confidential data in association with the public token of the augmented request message and store the generated result messages in a database of result messages, wherein the database is accessible to any of the plurality of token management system instances over the electronic communications network; identifying, by the processor, all result messages stored in the database associated with any public tokens that were generated by the token generator; and decrypting, by the processor, using any of the stored one or more private and public tokens, any encrypted confidential data included in any of the identified result messages stored in the database.
The closest art of record, US Patent Application Publication 20170279736, to Pitio, et al. disclose A client system may submit a request to a broker system for one or more financial transactions to occur…The client request may be denoted as a parent request, which may be transmitted to a broker system, which then provides one or more related child requests to cause the routing of one or more financial transactions… In some embodiments, instructor processor sends an instructor key (CK) to the intermediary computing system in conjunction with the parent request. The instructor key and the parent request can be sent in the same message. For example, the instructor key may be a tag or a value stored in a header or other field associated with the parent request message… In some embodiments, asymmetric keys may be utilized. For example, a client may expose a public key which may be utilized to encrypt order information related to the client's orders. The client may maintain a copy of the associated private key for use in decryption.
The closest art of record, US Patent Application Publication 20200280546 to Bartolucci, et al., discloses “In some implementations, the present application may provide that encrypting each of the at least two messages to provide ciphertext includes: receiving a transaction public key and an ordered list of public keys from a dealer node, the ordered list of public keys includes a public key associated with each participating node in the plurality of nodes, the ordered list of public keys in descending order such that the public key associated with the next node is the last public key in the ordered list of public keys; and encrypting each of the at least two messages with the transaction public key and, subsequently, with the ordered list of public keys such that each encrypted message is a nested encryption of that message.”
The closest art of record, US Patent Application Publication 20190108513 to Kano, et al., discloses “According to a third aspect, there is provided a computer program for processing a transaction in which a transaction noted with transaction information is recorded in the database on the basis of a request from the node on the network. The computer program causes a computer to perform a process, with respect to a transaction noted with a compound transaction in which there are a plurality of sources of assets, which includes a first step of verifying a validity of a plurality of signatures which are attached to the transaction and created by a private key of an address managed by each of a plurality of sources using public keys corresponding to respective private keys, and a second step of recording the transaction to the database on the condition that all of the plurality of signatures are valid.”
The closest art of record, US Patent Application Publication 20180097638 to Halden, et al., discloses “FIG. 4 illustrates a method 350 for generating one or more child keys for one or more domains within a group of domains. At step 352, a client device 104 generates a transaction request including a request for the registration of one or more child key pairs. In some embodiments, the transaction request is generated using one or more device-related identifiers, a proposed child public/private key, and/or any other suitable information. In other embodiments, the CA 150 automatically generates one or more child key pairs after registering a master key pair for a domain/group. In some embodiments, the child public/private key is derived from the master public/private key using one or more key derivation functions (KDF) such as a keyed cryptographic hash function, although it will be appreciated that any suitable KDF can be used. The child public/private key can be derived by the client device 102 prior to generation of the transaction request, derived by the CA 150 during processing of the transaction request, and/or generated by a key generator stored on a remote system.”
The closest art of record, US Patent Application Publication 20190066228 to Wright discloses “The invention relates generally to cryptographic techniques for secure processing, transmission and exchange of data. It also relates to peer-to-peer distributed ledgers such as (but not limited to) the Bitcoin blockchain. In particular, it relates to control solutions for identifying, protecting, extracting, transmitting and updating data in a cryptographically controlled and secure manner. It also relates to system inter-operability and the ability to communicate data between different and distinct computing systems. The invention provides a computer implemented method (and corresponding systems) comprising the steps of identifying a set of first structure public keys comprising at least one public root key associated with a first structure of interest of an entity and one or more associated public sub-keys; deriving a deterministic association between the at least one public root key and the one or more associated public sub-keys; and extracting data from a plurality of transactions (TXs) from a blockchain. The data comprises data indicative of a blockchain transaction (Tx) between the first structure and at least one further structure; and a first structure public key associated with the first structure. The first structure public key is part of a cryptographic public/private key. The method includes the step of generating an output for the first structure of interest by matching at least part of the set of first structure public keys to the extracted transaction data using the deterministic association. The one or more public sub-keys is generated or determined using Elliptic Curve Cryptography (ECC) and a deterministic key (DK) that is based on a cryptographic hash of a message (M). The one or more public sub-keys is determined based on a scalar addition of an associated public parent key and the scalar multiplication of a deterministic key (DK) and a generator (G).”
Conclusion
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GREGORY S. CUNNINGHAM II
Primary Examiner
Art Unit 3694
/GREGORY S CUNNINGHAM II/Primary Examiner, Art Unit 3694
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