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 .
Acknowledgements
This action is in response to the claims filed on 07/30/2025. Claim 1 has been canceled. Claims 2-21 have been added. Claims 2-21 are pending and presented for examination.
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
therefore, subject to the conditions and requirements of this title.
Claims 2-21 are rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more.
Step 1:
Claims 2-21 fall into at least one of the four categories of statutory subject matter. The eligibility analysis proceeds to Step 2A.1.
Step 2A.1:
The limitations of independent claim 2 have been denoted with letters by the Examiner for easy reference. Independent claims 10 and 16 recite similar distinguishing features as claim 2, therefore the following eligibility analysis shall apply to claims 2, 10, and 16. The judicial exceptions recited in claim 1 are identified in bold below:
receiving, by a computer system, an indication of an incoming external transaction that transfers a digital asset to a first user account associated with a first user of a transaction service, wherein the incoming external transaction is recorded on an external blockchain that is external to the transaction service;
in response to receiving a request associated with the first user, transferring, by the computer system in an internal transaction recorded on an internal ledger of the transaction service, ownership of at least a portion of the digital asset from the first user to a second user that is associated with a second user account, wherein the first and second user accounts are used on the external blockchain, and the internal transaction is not recorded on the external blockchain; and
wherein, after the transferring, the internal ledger indicates that the portion of the digital asset belongs to the second user while the external blockchain indicates that the portion of the digital asset belongs to the first user.
Under the broadest, most reasonable interpretation, A-C recite limitations that are reasonably categorized under certain methods of organizing human activity. Specifically, the bolded limitations can be grouped as commercial or legal interactions in the form of sales activities. Transferring a digital asset between a first user account and a second user account and recording such transfer, or transaction, in a ledger are analogous to sales activities.
Claims 2, 10, and 16 recite at least one abstract idea. The eligibility analysis proceeds to Step 2A.2.
Step 2A.2:
The judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element(s) not in bold above.
Claims 10 and 16 also recite “a non-transitory computer-readable medium having program instructions stored thereon that are executable by a computer system to perform operations,” “a system,” “at least one processor,” and “memory having program instructions stored thereon that are executable by at least one processor to cause the system to perform operations” as additional elements. These additional elements and a “computing system” in claim 2 have all been recited at a high-level of generality such that they amount to no more than generic computing components. Therefore, when the additional elements are considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere software instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. 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 additional element “external blockchain” has been generally recited such that it is general usage of a data structure. When the additional element is considered individually and as an ordered combination with the abstract idea, the claims amount to no more than mere steps to implement an abstract idea on a data structure. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Claims 2, 10, and 16 do not recite additional elements that integrate the judicial exception into a practical application. The eligibility analysis proceeds to Step 2B.
Step 2B:
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because the outcome of the considerations at Step 2B will be the same when considerations from Step 2A.2 are re-evaluated. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Claims 2, 10, and 16 are not patent eligible.
Dependent Claims
Dependent claims 3-6, 8-9, 11, 13, 15, 17-18, and 21 all elaborate on the abstract idea without reciting any new additional elements. When the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 7, 12, and 20 recite the additional element of “storing…respective private keys…wherein the private keys are stored such that the first and second users cannot access the private keys.” Storing private keys is considered insignificant extra-solution activity because it does not impose any meaningful limits on how the indication and/or request are received, how the ownership of the digital asset is transferred, or how the transfer is recorded. Furthermore, the courts have recognized that “storing and retrieving information in memory” is a well-understood, routine, and conventional function when claimed in a merely generic manner MPEP 2106.05(d)(II), Versata. Furthermore, claims 7 and 20 recite “generating digital signatures for transactions on the external blockchain” and “generating a digital signature using one of the private keys,” respectively. Claim 12 recites “performing a cryptographic operation using a private key of a cryptographic key pair.” These limitations can be reasonably categorized under mathematical concepts. Specifically, generating a digital signature and performing cryptographic operations are considered mathematical calculations. The claims do not recite any meaningful additional elements. Therefore, when the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Dependent claims 14 and 19 recite the additional element of “causing presentation of user interfaces to the first and second users.” The additional element is considered insignificant extra-solution activities because it amounts to no more than mere data outputting. The Examiner is taking official notice that presenting a user interface to users is a well-understood, routine, and conventional activity in computer and financial technology. Therefore, when the limitations are considered individually and as a whole in combination with the independent claims from which they depend, the claims do not recite additional elements that amount to significantly more than the judicial exception.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea(s) into a patent eligible application such that the abstract idea amounts to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 2-21 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 7, 10, 12-16, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 6, 9, 12, 15-17, and 20 of U.S. Patent 12,354,085. Although the claims at issue are not identical, they are not patentably distinct from each other because application 19/229,597 is broader in scope than U.S. Patent 12,354,085. Furthermore, any differences noted below are insignificant in that they are either merely differences in wording and order, or nominal, such that the functions and outcomes between the application and the patent remains the same.
Application 19/229,597
U.S. Patent 12,354,085
Claim 2. A method, comprising:
receiving, by a computer system, an indication of an incoming external transaction that transfers a digital asset to a first user account associated with a first user of a transaction service, wherein the incoming external transaction is recorded on an external blockchain that is external to the transaction service;
in response to receiving a request associated with the first user, transferring, by the computer system in an internal transaction recorded on an internal ledger of the transaction service, ownership of at least a portion of the digital asset from the first user to a second user that is associated with a second user account, wherein the first and second user accounts are used on the external blockchain, and the internal transaction is not recorded on the external blockchain; and
wherein, after the transferring, the internal ledger indicates that the portion of the digital asset belongs to the second user while the external blockchain indicates that the portion of the digital asset belongs to the first user.
Claim 9. A method, comprising:
receiving, at a computer system, an indication of an
incoming transaction transferring a digital asset to a
first user account of a transaction service, the incoming transaction being recorded on a blockchain external to the transaction service;
in response to a request associated with the first user
account, transferring, by the computer system in an
internal transaction, ownership of at least a portion of the digital asset from the first user account to a second user account, wherein the first and second user accounts are used on the external blockchain, and wherein the transferring is recorded using an internal ledger of the transaction service;
causing, by the computer system, presentation of a user interface for the first user account indicating a transfer of ownership of the portion of the digital asset to the second user account based on the internal ledger without recording the internal transaction on the blockchain, wherein the blockchain indicates that the portion of the digital asset belongs to the first user account and not the second user account; and
causing, by the computer system, recordation of the
transfer of ownership of the portion of the digital asset in response to receiving a request from the second user account to perform an outgoing transaction.
Claim 7.
Claim 12.
Claim 10. A non-transitory computer-readable medium having program instructions stored thereon that are executable by a computer system to perform operations comprising:
receiving an indication of an incoming external transaction that transfers a digital asset to a first user account associated with a first user of a transaction service, wherein the incoming external transaction is recorded on an external blockchain that is external to the transaction service;
in response to receiving a request associated with the first user, transferring, in an internal transaction recorded on an internal ledger of the transaction service, ownership of at least a portion of the digital asset from the first user to a second user that is associated with a second user account, wherein the first and second user accounts are used on the external blockchain, and the internal transaction is not recorded on the external blockchain, and wherein, after the transferring, the internal ledger indicates that the portion of the digital asset belongs to the second user while the external blockchain indicates that the portion of the digital asset belongs to the first user; and
in response to receiving a request associated with the second user to transfer ownership of the portion to a third user that is external to the transaction service, causing recordation of an outgoing external transaction on the external blockchain that transfers the portion from the first user account to a third user account associated with the third user.
Claim 15. A non-transitory machine-readable medium having instructions stored thereon that are executed by a computer system to perform operations comprising:
receiving an indication of an incoming transaction transferring a digital asset to a first user account of a transaction service, the incoming transaction being
recorded on a blockchain external to the transaction
service;
in response to a request associated with the first user
account, transferring, in an internal transaction, ownership of at least a portion of the digital asset from the first user account to a second user account, wherein the first and second user accounts are used on the external blockchain, and wherein the transferring is recorded using an internal ledger of the transaction service;
causing presentation of a user interface for the first user account indicating a transfer of ownership of the portion of the digital asset to the second user account based on the internal ledger without recording the internal transaction on the blockchain, wherein the blockchain indicates that the portion of the digital asset belongs to the first user account and not the second user account; and
causing recordation of the transfer of ownership of the portion of the digital asset in response to receiving a request from the second user account to perform an outgoing transaction.
Claim 12.
Claim 20.
Claim 13.
Claim 16.
Claim 14.
Claim 15.
Claim 15.
Claim 17.
Claim 16. A system, comprising: at least one processor; and memory having program instructions stored thereon that are executable by the at least one processor to cause the system to perform operations comprising:
receiving an indication of an incoming external transaction that transfers a digital asset to a first user account associated with a first user of a transaction service, wherein the incoming external transaction is recorded on an external blockchain that is external to the transaction service;
in response to receiving a request associated with the first user, transferring, in an internal transaction recorded on an internal ledger of the transaction service, ownership of at least a portion of the digital asset from the first user to a second user that is associated with a second user account, wherein the first and second user accounts are used on the external blockchain, and the internal transaction is not recorded on the external blockchain, and wherein, after the transferring, the internal ledger indicates that the portion of the digital asset belongs to the second user while the external blockchain indicates that the portion of the digital asset belongs to the first user; and
causing recordation of an outgoing external transaction on the external blockchain in response to receiving a request associated with the second user to perform the outgoing external transaction, wherein the outgoing external transaction transfers ownership of at least a subportion of the portion of the digital asset to a third user account associated with a third user that is external to the transaction service,
Claim 1. A system, comprising: a non-transitory memory; and one or more hardware processor coupled to the non-transitory memory and configured to read instructions from the non-transitory memory to cause the system to perform operations comprising;
receiving an indication of an incoming transaction transferring a digital asset to a first user account of a transaction service, the incoming transaction being
recorded on a blockchain external to the transaction
service;
in response to a request associated with the first user account, transferring, in an internal transaction, ownership of at least a portion of the digital asset from the first user account to a second user account, wherein the first and second user accounts are used on the external blockchain, and wherein the transferring is recorded using an internal ledger of the transaction service;
causing presentation of a user interface to the owners of the first user account reflecting the transfer of the portion of the digital asset indicated in the internal ledger without recording the internal transaction on the blockchain, wherein the blockchain indicates that the portion of the digital asset belongs to the first user account and not the second user account; and the internal ledger indicates that the portion of the digital asset is assigned to the second user account and not the first user account.
Claim 16.
Claim 6.
Claim 19.
Claim 6.
Claim Rejections - 35 USC § 102
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 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.
(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 2-6, 8-11, 13, 15-18, and 21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Griffin et al. WO 2020/124199 (herein as “Griffin”).
Re Claim 2, Griffin discloses a method, comprising:
receiving, by a computer system, an indication of an incoming external transaction that transfers a digital asset to a first user account associated with a first user of a transaction service ([0037] - "One or more tokens are transferred from a first user to a second user using a transaction. For example, a transaction may record that a number of tokens are being transferred from the first user to a public address of a second user,” [0040] – “Each transaction involving the internal tokens is recorded in an “internal blockchain”,” i.e. receiving an indication), wherein the incoming external transaction is recorded on an external blockchain that is external to the transaction service ([0040] – “transactions recorded on the internal and external blockchains are reconciled with each other from time to time.” Examiner notes that the wherein clause merely provides context to the incoming external transaction without positively reciting any active method step(s) or computer operation(s). The transaction being recorded on an external blockchain that is external to the transaction service does not meaningfully limit how a computer system receives an indication of an incoming external transaction. Therefore, the wherein clause cannot be given patentable weight see MPEP 2111.04. However, for purposes of compact prosecution, prior art is provided.);
in response to receiving a request associated with the first user ([0063], Examiner notes this limitation is not a positively claimed, active step, at most, it provides a temporal limit to the subsequent limitation. Therefore, it cannot be given patentable weight, however, for purposes of compact prosecution, prior art is provided.), transferring, by the computer system in an internal transaction recorded on an internal ledger of the transaction service, ownership of at least a portion of the digital asset from the first user account to a second user account ([0039] – “one user of the system may transfer tokens to another user of the system, either directly or via an intermediary such as a system operator,” i.e. operator is also analogous to a user account, [0040] – “Each transaction involving internal tokens is recorded in an “internal blockchain.”), wherein the first and second user accounts are used on the external blockchain ([0068] – “the operator 108 may have a unique pair of internal and external wallets…for each of the purchasers 104 and sellers 106”), and the internal transaction is not recorded on the external blockchain ([0040] – “Each transaction involving internal tokens is recorded in an “internal blockchain,” therefore, transaction(s) involving internal token(s) are not recorded on the external blockchain, at least initially. Examiner notes that the wherein clause merely provides context to the first and second user accounts and the internal transaction without positively reciting any active method step(s) or computer operation(s). The user accounts being used on the external blockchain and the internal transaction not being recorded on the external blockchain does not meaningfully limit how the portion of the digital asset is transferred. Therefore, the wherein clause cannot be given patentable weight see MPEP 2111.04. However, for purposes of compact prosecution, prior art is provided.); and
wherein, after the transferring, the internal ledger indicates that the portion of the digital asset belongs to the second user while the external blockchain indicates that the portion of the digital asset belongs to the first user ([0040] – “Each transaction involving internal tokens is recorded in an “internal blockchain,” “transactions recorded on the internal and external blockchains are reconciled with each other from time to time,” thereby indicating that there exists a point in time when they are not reconciled, and a transaction recorded in the internal blockchain is not yet reflected in the external blockchain. Examiner notes that the wherein clause merely provides context to the internal ledger and the external blockchain without positively reciting any active method step(s) or computer operation(s). What the internal ledger indicates and what the external blockchain indicates do not meaningfully limit how the portion of digital asset is transferred. Therefore, the wherein clause cannot be given patentable weight see MPEP 2111.04. However, for purposes of compact prosecution, prior art is provided.)
Re Claim 3, Griffin discloses the method of claim 2, and Griffin further discloses further comprising:
in response to receiving a request associated with the second user to transfer ownership of the portion to a third user that is external to the transaction service ([0063] – “receives a request from a first user to transfer to a second user at least part of a float of internal cryptographic tokens.” Examiner notes this limitation is not a positively claimed, active step, at most, it provides a temporal limit to the subsequent limitation. Therefore, it cannot be given patentable weight, however, for purposes of compact prosecution, prior art is provided.), causing, by the computer system, recordation of an outgoing external transaction on the external blockchain that transfers the portion from the first user account to a third user account associated with the third user ([0059] – “recording the net change using only two transactions on the external blockchain 114: a first transaction in which the operator 108 sends the purchaser 104 75 tokens; and a second transaction in which the operator 108 sends the seller 106 25 tokens,” i.e. operator is analogous to a first user account and purchaser and seller are analogous to a second and/or third user).
Re Claim 4, Griffin discloses the method of claim 2, and Griffin further discloses further comprising:
in response to receiving a request associated with the second user to transfer ownership of a second digital asset to a third user that is external to the transaction service ([0063], Examiner notes this limitation is not a positively claimed, active step, at most, it provides a temporal limit to the subsequent limitation. Therefore, it cannot be given patentable weight, however, for purposes of compact prosecution, prior art is provided.), causing, by the computer system, recordation of a set of outgoing external transactions on the external blockchain that transfers [0057] – “In some example embodiments, there is a one-to-one mapping between the transactions stored on the sidechain 112 and the transactions stored on the external blockchain 114”:
a first portion of the second digital asset from the first user account to a third user account associated with the third user [0059] – “a first transaction in which the operator 108 sends the purchaser 104 75 tokens”; and
a second portion of the second digital asset from the second user account to the third user account [0059] – “a second transaction in which those 100 tokens are then transferred from the seller 106 to the purchaser 104.”
Re Claim 5, Griffin discloses the method of claim 2, and Griffin further discloses further comprising:
in response to receiving a request associated with the second user to transfer ownership of a subportion of the portion to a third user that is external to the transaction service ([0063], Examiner notes this limitation is not a positively claimed, active step, at most, it provides a temporal limit to the subsequent limitation. Therefore, it cannot be given patentable weight, however, for purposes of compact prosecution, prior art is provided.), causing, by the computer system, recordation of a set of outgoing external transactions on the external blockchain that transfers ([0059] – “recording the net change using only two transactions on the external blockchain 114”):
the subportion of the portion from the first user account to a third user account associated with the third user ([0059] – “a first transaction in which the operator 108 sends the purchaser 104 75 tokens”); and
a remaining subportion of the portion from the first user account to the second user account ([0059] – “a second transaction in which the operator 108 sends the seller 106 25 tokens”).
Re Claim 6, Griffin discloses the method of claim 2, and Griffin further discloses further comprising:
transferring, by the computer system in a second internal transaction recorded on the internal ledger, ownership of the portion to a third user of the transaction service that is associated with a third user account ([0059] – “the sidechain 112 may store…a second transaction in which those 100 tokens are then transferred from the seller 106 to the purchaser 104”), wherein the third user account is used on the external blockchain and the second internal transaction is not recorded on the external blockchain ([0059] – “Instead of recording three transactions in the external blockchain 114…recording the net change using only two transactions on the external blockchain 114,” the transaction between the seller and purchaser is not recorded. Examiner notes that the wherein clause merely provides context to the third user account and the second internal transaction without positively reciting any active method step(s) or computer operation(s). The third user account being used on the external blockchain and the second internal transaction not being recorded on the external blockchain do not meaningfully limit how the ownership of the portion is transferred to a third user. Therefore, the wherein clause cannot be given patentable weight see MPEP 2111.04. However, for purposes of compact prosecution, prior art is provided.); and
causing, by the computer system, recordation of a single outgoing external transaction on the external blockchain that transfers the portion from the first user account to the third user account ([0059] – “recording the net change…on the external blockchain 114: a first transaction in which the operator 108 sends the purchaser 104 75 tokens.).
Re Claim 8, Griffin discloses the method of claim 2, and Griffin further discloses wherein the internal ledger specifies, for the internal transaction, a blockchain address of the first user account and a blockchain address of the second user account ([0037]. Examiner notes this is merely content of information. The internal transaction merely serves as a support for the content, i.e. blockchain addresses, without meaningfully limiting how the ownership of at least a portion of the digital asset is transferred. Therefore, this limitation is considered nonfunctional descriptive language see MPEP 2111.05. However, for purposes of compact prosecution, prior art is provided).
Re Claim 9, Griffin discloses the method of claim 2, and Griffin further discloses wherein the incoming external transaction includes a cryptographic indicator associated with the first user [0037], [0044] while the internal transaction includes a noncryptographic indicator associated with the second user [0060].
Examiner notes this is merely content of information. The external and internal transactions merely serve as a support for the content, i.e. indicators, without meaningfully limiting any of the method steps and/or computer operations. Therefore, this limitation is considered nonfunctional descriptive language see MPEP 2111.05. However, for purposes of compact prosecution, prior art is provided.
Re Claims 10-11, they are the computer-readable medium claims of method claims 2-4. They recite similar distinguishing features as claims 2-4. Furthermore, Griffin discloses a non-transitory computer readable medium having stored thereon computer program code that is executable by a processor and that, when executed by the processor, causes the processor to perform the disclosed aspects of the method or suitable combinations thereof [0022]. Therefore, claims 10-11 are rejected for similar reasons above.
Re Claim 13, Griffin discloses the non-transitory computer-readable medium of claim 10, and Griffin further discloses wherein the indication of the incoming external transaction including an indication of a public key of a cryptographic key pair associated with the first user account [0037, 40, 41, 43, 50].
Examiner notes this is merely content of information. The content of the indication does not meaningfully limit how it is received. Therefore, this limitation is considered nonfunctional descriptive language see MPEP 2111.05. However, for purposes of compact prosecution, prior art is provided.
Re Claim 15, Griffin discloses the non-transitory computer-readable medium of claim 10, and Griffin further discloses wherein the request associated with the first user includes an account indicator linked to the second user, and wherein the account indicator is not linked to the external blockchain ([0008] – “The request may comprise a message indicating funds are to be paid from the purchaser to the seller,” [0040] – funds could be internal tokens, which are recorded in an “internal blockchain,” i.e. not linked to the external blockchain).
Examiner notes this is merely content of information. The content of the request does not meaningfully limit how it is received. Therefore, this limitation is considered nonfunctional descriptive language see MPEP 2111.05. However, for purposes of compact prosecution, prior art is provided.
Re Claims 16-18 and 21, they are the system claims of method claims 2-3, 5, and 9. They recite similar distinguishing features as claims 2-3, 5, and 9. Furthermore, Griffin discloses at least one processor and memory Fig. 2, [0021]. Therefore, claims 16-18 and 21 are rejected for similar reasons above.
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.
Claims 7, 12, 14, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Griffin et al. WO 2020/124199 (herein as “Griffin”) in view of Walgenbach WO 2020/104961.
Re Claim 5, Griffin discloses the method of claim 2, however, Griffin does not expressly disclose further comprising:
storing, by the computer system for the first and second user accounts, respective private keys for generating digital signatures for transactions on the external blockchain that involve the first user account or the second user account, wherein the private keys are stored such that the first and second users cannot access the private keys.
Walgenbach discloses systems and methods that enable transacting in cryptographic currencies. Specifically, Walgenbach discloses
storing, by the computer system for the first and second user accounts, respective private keys for generating digital signatures for transactions on the external blockchain that involve the first user account or the second user account, wherein the private keys are stored such that the first and second users cannot access the private keys pg., 34, lines 4-9, pg. 42, lines 13-18.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Griffin’s method and system for transferring cryptographic tokens with the teachings of storing private keys on the blockchain such that the users cannot access the private keys in Walgenbach. One would be motivated to make this combination to control what type of tasks should or should not be executed Walgenbach, pg. 28, lines 1-3.
Re Claim 12, it is the computer-readable medium claim of method claim 7. Furthermore, Griffin discloses using a private key to digitally sign the transaction, thereafter the signed transaction is recorded on the blockchain [0037]. Therefore, claim 12 is rejected for similar reasons above.
Re Claim 14, Griffin discloses the non-transitory computer-readable medium of claim 10, however, Griffin does not expressly disclose wherein the operations further comprise:
causing presentation of user interfaces to the first and second users reflecting the transfer of the portion of the digital asset indicated in the internal ledger without recording the internal transaction on the external blockchain.
Walgenbach discloses systems and methods that enable transacting in cryptographic currencies. Specifically, Walgenbach discloses
causing presentation of user interfaces to the first and second users reflecting the transfer of the portion of the digital asset indicated in the internal ledger without recording the internal transaction on the external blockchain pg. 56, lines 10-11 – “The user interface 200 of the crypto ATM 20 displays the user’s 22 crypto balance,” a user’s balance would reflect any transfers previously conducted. Walgenbach does not disclose that the user interface is presented by recording the internal transaction on the external blockchain. Therefore, causing presentation of user interfaces is performed without recording the internal transaction on the external blockchain.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Griffin’s method and system for transferring cryptographic tokens with the teachings of causing presentation of user interfaces to the first and second users reflecting the transfer of the portion of the digital asset indicated in the internal ledger without recording the internal transaction on the external blockchain in Walgenbach. One would be motivated to make this combination to allow the user to confirm the correctness of their banking details Walgenbach, pg. 56, lines 16-18.
Re Claim 19, it is the system claim of computer-readable medium claim 14. It recites similar distinguishing features as claim 14. Therefore, claim 19 is rejected for similar reasons above.
Re Claim 20, it is the system claim of method claim 7. Furthermore, Griffin discloses using a private key to digitally sign the transaction, thereafter the signed transaction is recorded on the blockchain [0037]. Therefore, claim 20 is rejected for similar reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Simons U.S. 2021/0174368 directed to techniques for expediting processing of blockchain transactions. See at least [0047].
Chan et al. U.S. 2019/0220621 directed to system and method for maintaining a segregated database in a multiple distributed ledger system. See at least [0022].
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/CHRISTINE DANG/Examiner, Art Unit 3698