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 .
DETAILED ACTION
Claims 1-20 are presented for examination.
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. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of patent no. 1236935. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same limitations and are anticipated by the parent application.
Application # 19/235204
US Patent 1236935
1. A computer-implemented method of sending digital tokens using blockchain transactions, wherein each token is represented by one or more units of an underlying digital asset in native units of a blockchain, and wherein the method comprises: generating a first token transaction; and transmitting the first token transaction to a blockchain network, wherein the first token transaction comprises a first token output, the first token output comprising a first token locking script and a first token amount, wherein the first token locking script comprises a constant component, wherein the constant component comprises a token mechanics sub-component, and wherein, when executed alongside an input script of a spending transaction, the input script comprising a plurality of fields of the spending transaction and a respective locking script and an amount locked in a previous transaction output that is being spent, the token mechanics sub-component is configured to: obtain one or more data pairs from the input script of the spending transaction, each data pair comprising i) at least a respective payment address included in a respective locking script of an output of the spending transaction and ii) a corresponding amount of the underlying digital asset locked by the respective locking script of that output; verify that one or more outputs of the spending transaction comprise a respective locking script that comprises a) a predetermined payment address, or b) the constant component; and for those one or more outputs of the spending transaction, verify that a total amount of the underlying digital asset locked by the respective locking scripts of the one or more outputs is equal to the first token amount, and wherein the token mechanics sub-component is configured to fail during execution if any of verification steps fail.
1. A computer-implemented method of sending digital tokens using blockchain transactions, wherein each digital token is represented by a single unit of an underlying digital asset native unit of a blockchain network, and wherein the method comprises: generating a first token transaction; and transmitting the first token transaction to the blockchain network, wherein the first token transaction comprises a first token output, the first token output comprising a first token locking script and a first token amount, wherein the first token locking script comprises a variable component and a constant component, wherein the variable component comprises a first payment address, embedded in a payment template, wherein the constant component comprises a token mechanics sub-component, and wherein, when executed alongside an input script of a spending transaction, the input script comprising all but itself of the spending transaction as well as a respective locking script and an amount locked in a previous transaction output that is being spent, the token mechanics sub-component is configured to: obtain one or more data pairs from the input script of the spending transaction, each data pair comprising i) at least a respective payment address included in a respective locking script of the spending transaction outputs and ii) a corresponding amount of the underlying digital asset locked by the respective locking script of that output; verify that one or more outputs of the spending transaction comprise a respective locking script that comprises a) a respective payment script template that includes a predetermined payment address, or b) a respective variable component comprising a respective payment address other than the predetermined payment address, followed by the constant component; and for those one or more outputs of the spending transaction, verify that a total amount of the underlying digital asset locked by the respective locking scripts of the one or more outputs is equal to the first token amount, and wherein the token mechanics sub-component is configured to fail during execution if any of verification steps fail.
“A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). “ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Allowable Subject Matter
2. Claims 1-20 are allowed. The following is an examiner's statement of reasons for allowance: In interpreting the claims, in light of the Specification and the applicant's amendments filed on 06/11/2025, the Examiner finds the claimed invention to be patentably distinct from the prior art of record.
3. BARTOLUCCI et al (US patent app. Pub. 20230244656) is concerned transmitting and/or submitting digital content such as feedback for an entity to a blockchain is disclosed. This may be, for example, the Bitcoin blockchain. The method, which is implemented at a first node, includes: submitting, to the blockchain, a first transaction for committing a first quantity of tokens to transfer to a second node associated with the entity, the first transaction having a first output; generating a first content for submission to the blockchain; and submitting, to the blockchain, a second transaction that returns a second quantity of the committed first quantity of tokens to an address associated with the first node, the second transaction having the first output of the first transaction as an input, wherein the first content is used to unlock the first output of the first transaction.
4. Kalabic et al (US patent app. Pub. 20210374843) is concerned disclosing that debt management in a distributed ledger system. The methods and systems provide for representing and assigning debt in the form of tokens in the distributed ledger. The debt tokens are implemented in a UTXO model by creating debt-only addresses that can send credit only with permission. The credit tokens are implemented based on UTXO model by requiring an input as well as an output specified for the credit transaction.
5. The totality of each element and/or step in claims 1-20 are not alluded to in the combined art of BARTOLUCCI and Kalabic. Their teachings either individually or in combination failed to teach or suggest the method recited in claim 1. More specifically, the combination of BARTOLUCCI and Kalabic does not teach or suggest "each digital token is represented by a single unit of an underlying digital asset native unit of a blockchain network, and wherein the method comprises: generating a first token transaction; and transmitting the first token transaction to the blockchain network, wherein the first token transaction comprises a first token output, the first token output comprising a first token locking script and a first token amount, wherein the first token locking script comprises a variable component and a constant component, wherein the variable component comprises a first payment address, embedded in a payment template, wherein the constant component comprises a token mechanics sub-component, and wherein, when executed alongside an input script of a spending transaction, the input script comprising all but itself of the spending transaction as well as a respective locking script and an amount locked in a previous transaction output that is being spent, the token mechanics sub-component is configured to: obtain one or more data pairs from the input script of the spending transaction, each data pair comprising i) at least a respective payment address included in a respective locking script of the spending transaction outputs and ii) a corresponding amount of the underlying digital asset locked by the respective locking script of that output; verify that one or more outputs of the spending transaction comprise a respective locking script that comprises a) a respective payment script template that includes a predetermined payment address, or b) a respective variable component comprising a respective payment address other than the predetermined payment address, followed by the constant component; and for those one or more outputs of the spending transaction, verify that a total amount of the underlying digital asset locked by the respective locking scripts of the one or more outputs is equal to the first token amount, and wherein the token mechanics sub-component is configured to fail during execution if any of verification steps fail" as recited in claim 1. Accordingly, all the independent claims are allowable over the combination of BARTOLUCCI and Kalabic. So, all the dependent claims are allowable by virtue of their dependency upon the independent claims and also due to additional limitations recited in these claims. Therefore, for the foregoing reasons, examiner withdraws of the rejection of claims 1-20.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD W REZA whose telephone number is (571)272-6590. The examiner can normally be reached on Monday-Friday 8:30-5:30 ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Cathy Thiaw can be reached on 571-270-1138. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/MOHAMMAD W REZA/Primary Examiner, Art Unit 2407
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