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 .
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 a judicial exception (i.e., abstract idea) without significantly more.
The claims recite methods and system for conducting transactions between one or more nodes within a blockchain distributed network.
Exemplary claim 1 recites in part,
“creating, by the processor at the first node, a smart contract representing a transaction based on the assigned token value; and
deploying, by the processor at the first node, the smart contract on a blockchain accessible by a respective processor at each of the one or more nodes of the distributed network, the deployed smart contract configured to:
identify a second node of the one or more nodes of the distributed network that satisfies one or more requirements of the transaction in exchange for the assigned token value;
settle the transaction between the first node and the identified second node; and
record information of the settled transaction on the blockchain such that the recorded information of the settled transaction is accessible by the one or more nodes of the distributed network.”
The above limitations describe the steps of, 1) creating a smart contract, including transaction request, 2) storing the smart contract on a blockchain, 3) selecting a matching transaction response, 4) processing the transaction, and 5) updating the blockchain.
The above steps describe the process of conducting transactions between one or more nodes within a blockchain distributed network. The above limitations, under their broadest reasonable interpretation, encompass "Certain Methods of Organizing Human Activity" (commercial or legal interactions – contracts or legal obligations) enumerated in MPEP 2106.04(a)(2)(II)(B). If a claim limitation, under its broadest reasonable interpretation, covers commercial or legal interactions – contracts or legal obligations, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The judicial exception is not integrated into a practical application. The claim recites additional elements including a computer (processor), distributed network (one or more nodes) and blockchain (database), to perform the limitations encompassing the abstract idea identified above. The computing elements represent using a computer as a tool to perform the judicial exception as in MPEP 2106.05(f). In addition, the step of “assigning, by a processor of a computer at a first node of one or more nodes of a distributed network, a token value, each node of the distributed network maintaining a predetermined token value as a requirement for participation in the distributed network” represents designating a token value to a node, which amounts to insignificant extra-solution activities that do not impose meaningful limits on the abstract idea. See MPEP 2106.05(g).
When considered both individually and as a whole, the additional elements do not integrate the abstract idea into a practical application.
The recitation of additional elements is acknowledged as identified above. The discussion with respect to practical application is equally applicable to consideration of whether the additional elements amount to significantly more. The computing elements represent using a computer as a tool to perform the judicial exception as in MPEP 2106.05(f). In addition, the step of “designating a token value”, amounts to insignificant extra-solution activities that do not impose meaningful limits on the abstract idea. See MPEP 2106.05(g).
Therefore, there are no meaningful recitations, considered in combination, that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
Accordingly, claim 1 is directed to a judicial exception (i.e., abstract idea) without significantly more.
Claims 10 and 16 recite similar limitations as set forth in claim 1, and therefore are rejected based on similar rationale.
Dependent claims 2-9, 11-15 and 17-21 recite limitations directed to the abstract idea, and do not integrate the abstract idea into a practical application nor amount to significantly more.
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 §§ 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/patent/patents-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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-12, 14, 17-22, 25, 26 and 30-33 of U.S. Patent No. 12,050,446 (hereinafter ‘446). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present application perform the same functions as claims 1, 7-12, 14, 17-22, 25, 26 and 30-33 of ‘446. Claims 1-21 of the present application describe methods and system of conducting transactions between one or more nodes within a blockchain distributed network, similar to claims 1, 7-12, 14, 17-22, 25, 26 and 30-33 of ‘446.
U.S. Patent Appl. No. 19/238,605
U.S. Patent No. 12,050,446
1. A computer-implemented method comprising:
assigning, by a processor of a computer at a first node of one or more nodes of a distributed network, a token value, each node of the distributed network maintaining a predetermined token value as a requirement for participation in the distributed network;
creating, by the processor at the first node, a smart contract representing a transaction based on the assigned token value; and
deploying, by the processor at the first node, the smart contract on a blockchain accessible by a respective processor at each of the one or more nodes of the distributed network, the deployed smart contract configured to:
identify a second node of the one or more nodes of the distributed network that satisfies one or more requirements of the transaction in exchange for the assigned token value;
settle the transaction between the first node and the identified second node; and
record information of the settled transaction on the blockchain such that the recorded information of the settled transaction is accessible by the one or more nodes of the distributed network.
1. A computer-implemented method comprising:
assigning, by a processor of a computer at a first node of one or more nodes of a distributed network, a token value representing a value of a quantity of energy, each node of the distributed network maintaining a predetermined token value as a requirement for participation in the distributed network;
creating, by the processor at the first node, a smart contract representing an energy transaction of the quantity of energy based on the assigned token value; and
deploying, by the processor at the first node, the smart contract on a blockchain accessible by a respective processor at each of the one or more nodes of the distributed network, the deployed smart contract configured to:
identify a second node of the one or more nodes of the distributed network that satisfies one or more requirements of the energy transaction for the quantity of energy in exchange for the assigned token value;
settle the energy transaction between the first node and the identified second node; and
record information of the settled energy transaction on the blockchain such that the recorded information of the settled energy transaction is accessible by the one or more nodes of the distributed network.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
In view of the prosecution history of U.S. Patent Application No. 17/965,969 (now U.S. Patent No. 12,050,446), as well as the inspection of relevant prior art including patent literature and non-patent literature, claims 1-21 are allowable over prior art as there has not been any prior art references or combination there that has been identified to read over the claimed invention.
The relevant prior art do not teach,
“assigning, by a processor of a computer at a first node of one or more nodes of a distributed network, a token value, each node of the distributed network maintaining a predetermined token value as a requirement for participation in the distributed network; and
creating, by the processor at the first node, a smart contract representing a transaction based on the assigned token value”,
as recited in claims 1, 10 and 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLUSEGUN GOYEA whose telephone number is (571)270-5402. The examiner can normally be reached on M-F: 9am-5pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FAHD OBEID can be reached on 5712703324. 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). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/OLUSEGUN GOYEA/ Primary Examiner, Art Unit 3687
Prosecution Insights