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 Office Action addresses the response filed on 07/13/2026.
Claims 1, 2, 8 and 9 were amended.
Claims 4. 11 and 15-20 were canceled.
Claims 21-28 were newly introduced.
Claims 1-3, 5-10, 12-14 and 21-28 are pending and were examined.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-10, 12-14 and 21-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With respect to the Eligibility Step 1 of the Alice/Mayo two-part test of the subject matter eligibility analysis (see MPEP 2106), in the instant case, claims 1-3. 5-7 and 27 are directed to a system, claims 8-10. 12-14 and 28 are directed to a method, and claims 21-26 are directed to a medium. Therefore, these claims fall within the four statutory categories of invention.
Following step 2A, prong one of the analysis, the language of the independent claims reciting an abstract idea are marked in bold below:
a. computing a hash for a node in a graph, the hash being based at least in part on a transaction identifier;b. retrieving transaction information from the node in the graph identified by the hash and stored on a distributed ledger; andc. inserting a transaction associated with the transaction information into a list of transactions based at least in part on retrieving the transaction information from the distributed ledger, the transaction comprising the transaction identifier information retrieved from the node.
Therefore, the portions highlighted in bold above recite performing a mathematical calculation and retrieving and rearranging data, which is an abstract idea grouped within the mathematical concepts and mental processes grouping of abstract ideas in prong one of step 2A. The claims are grouped within mathematical concepts because the steps recited describe computing a hash, which represents a mathematical calculation. Additionally, the claims are also grouped within mental processes because the steps recited describe collecting information, analyzing it, and displaying certain results of the collection and analysis, which is a concept that can be performed in the human mind or by pen and paper. In situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP 2106.04 and 2106.05(II). Thus, the language identified in the mathematical concepts and mental processes groupings were considered as a single abstract idea. Accordingly, the claims recite an abstract idea.
With respect to step 2A, prong two of the analysis, this judicial exception is not integrated into a practical application. In particular, the additional element(s) of the claims include: a computing device, processor and memory, non-transitory computer readable medium, and a distributed ledger. Specifically, with respect to using a computing device, processor and memory, non-transitory computer readable medium to perform the recited steps/functions, these additional elements performs the steps or functions such as: “computing a hash...”, “retrieving… information…”, “inserting… transaction into a list…”. These additional elements are recited at a high-level of generality such that they represent no more than mere instructions to apply the exception using a generic computer component, which only serves to use computers as a tool to perform the abstract idea. Therefore, these elements do not integrate the abstract idea into a practical application because they require no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The claims further recite the additional element of a distributed ledger. However, this element merely serve to generally link the use of a judicial exception to a particular technological environment or field of use. 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. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.
With respect to step 2B of the analysis, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the claim recites the additional elements of a computing device, processor and memory, non-transitory computer readable medium, and a distributed ledger. The computing device, processor and memory, non-transitory computer readable medium perform the steps/functions of “computing a hash...”, “retrieving… information…”, “inserting… transaction into a list…”, and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the abstract idea of performing a mathematical calculation and retrieving and rearranging data With respect to the remaining additional element of a distributed ledger, this additional element amounts to more than generally linking the use of a judicial exception to a particular technological environment or field of use.. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of performing a mathematical calculation and retrieving and rearranging data. Therefore, the independent claims are not eligible.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. computing device, processor and memory, non-transitory computer readable medium, distributed ledger), the assessment of these elements under step 2A and step 2B for the dependent claims is inherited from the analysis of the independent claims and omitted for brevity, unless noted by Examiner below.
Dependent claims 2, 3, 5-7, 9, 10, 12-14 and 22-26 further recite the following additional language, in which elements which merely define the identified abstract idea are marked in bold below:
d) wherein the node is a first node and the method further comprises: identifying a second node in the graph that is linked to the first node; retrieving additional transaction information from the second node; and the transaction inserted into the list of transactions further comprises the additional transaction information retrieved from the second node. e) further comprising preparing a transaction statement that comprises the list of transactions and the transaction information from the node in the graph identified by the hash. f) wherein retrieving transaction information from the node in the graph identified by the hash further comprises: providing the hash of the node to a distributed agent executed by the distributed ledger; and receiving the transaction information from the distributed agent in response. g) further comprising decrypting the transaction information in response to retrieving transaction information from the node in the graph identified by the hash. h) wherein the hash is further based at least in part on an account number associated with the transaction identifier. i) wherein the machine-readable instructions/method further comprises querying the distributed ledger for one or more additional nodes associated with the node based at least in part on the graph.
With respect to the eligibility analysis of claims 2, 9 and 22, Item d) above introduces the additional elements/functions of identifying a second node, retrieving additional data. This language further elaborates the abstract idea of performing a mathematical calculation and retrieving and rearranging data identified in the analysis of independent claims 1, 8 and 21. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 8 and 21. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claims 3, 10 and 23, the claims recite item e) above, language directed to non-functional descriptive material by describing what a transaction statement "comprises". Those statements are insufficient to significantly alter the eligibility analysis. Item e) above introduces the additional elements/functions of preparing a statement. This language further elaborates the abstract idea of performing a mathematical calculation and retrieving and rearranging data identified in the analysis of independent claims 1, 8 and 21. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 8 and 21. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 5, 12 and 24, Item f) above introduces the additional elements/functions of providing a hash to an agent and receiving transaction information. This language further elaborates the abstract idea of performing a mathematical calculation and retrieving and rearranging data identified in the analysis of independent claims 1, 8 and 21. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 8 and 21. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to the eligibility analysis of claims 6, 13 and 25, Item g) above introduces the additional elements/functions of decrypting information. This language further elaborates the abstract idea of performing a mathematical calculation and retrieving and rearranging data identified in the analysis of independent claims 1, 8 and 21. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 8 and 21. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claims 7, 14 and 26, the claims recite item h) above, language which does not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the hash is "based" on. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of performing a mathematical calculation and retrieving and rearranging data identified in the analysis of independent claims 1, 8 and 21. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 8 and 21. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because no further additional elements/functions are introduced to the BRI of the claims. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because no further additional elements/functions are introduced to the BRI of the claims.
With respect to the eligibility analysis of claims 27 and 28, Item i) above introduces the additional elements/functions of querying… ledger.... This language further elaborates the abstract idea of performing a mathematical calculation and retrieving and rearranging data identified in the analysis of independent claims 1, 8 and 21. Therefore, this language does not significantly alter the analysis with respect to the independent claims 1, 8 and 21. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because no further additional elements/functions are introduced to the BRI of the claims. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because no further additional elements/functions are introduced to the BRI of the claims.
Therefore, while the additional language d) - i) of dependent claims 2, 3, 5-7, 9, 10, 12-14, and 22-28 slightly modify the analysis provided with respect to independent claims 1, 8 and 21, these additional elements/functions are insufficient to render the dependent claims eligible, as detailed above. Therefore, these dependent claims are also ineligible.
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.
Claims 1-3, 7-10, 14, 21-23 and 26-28 are rejected under 35 U.S.C. 102(a)(1) and as being anticipated by Dan (NPL 2019, listed in PTO-892 as reference "U").
With respect to claims 1, 8 and 21, Dan teaches a system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory; a non-transitory, computer-readable medium, comprising machine-readable instructions; and a method (Cryptocurrency with Fully Asynchronous Communication based on Banks and Democracy) comprising:
computing a hash for a node in a graph, the hash being based at least in part on a transaction identifier (see page 9, Fig. 1, Update node, Fig. 2, Hash of Start Node (B1, #1) in Update node, see also: A bank creates a start node when it wants to publish transactions it received from its users. It then sends the issued start node to the other banks. The other banks in return can create update nodes that reference that start node. A reference to a node is basically its hash together with its true id (the id of the bank that issued it, and that node’s sequence number in its bank’s chain). When a bank creates such an update node, this means that it acknowledges the node it references". Examiner notes each transaction has a sequence number (transaction identifier i, see page 7: "A transaction is defined by (s,t,m,i,d) where s,t ∈ A are the source and destination accounts respectively, m ∈ R+ is the amount of money to be transferred from s to t, i ∈ N is a sequence number and d is a digital signature of (s,t,m,i) created using the private key of s. The first transaction issued by s should have the sequence number i = 1, and the sequence number should be increased by 1 for every following transaction. The sequence number has two uses: (1) It allows the creation of two identical money transfers (transferring the same amount to the same destination), and (2) It allows us to define below a simple requirements from the system.);
retrieving transaction information from the node in the graph identified by the hash and stored on a distributed ledger; and (see pages 9-10: "A bank that created a start node has to wait for other banks to acknowledge its start node, so that this node will be in “consensus”. To show that other banks have indeed acknowledged its node, it has to acknowledge their acknowledgments. It does so by creating update nodes of its own, that reference the update nodes of the other banks (directly or indirectly). Once enough banks have acknowledged its original start node, and it has acknowledged those banks’ acknowledgments, that bank can tell everyone to accept the transactions that are listed in this start node. It does so by creating an accept node, that marks the end of the block"); and
inserting a transaction associated with the transaction information into a list of transactions based at least in part on retrieving the transaction information from the distributed ledger, the transaction comprising the transaction identifier information retrieved from the node. (see page 12, transaction-chain of u as the list, "We can now define the validity requirements for start nodes. Let v be a start node that belongs to bank B and whose subgraph, G, is valid. v will be valid if all the transactions that it contains are valid. Let t be a transaction that appears in v, that belongs to the user u and transfers amount of m to another account. Roughly speaking, t is considered valid if it is indeed the next transaction in the transaction-chain of u, and if u has a balance of at least m. We start with deciding if t is indeed the next transaction in u’s chain. First, we consider all the accepted transactions of u in G (ignoring identical transactions). Assuming there are N such transactions, their sequence numbers must cover all the range of 1 to N, or else t will be considered invalid, as that user has no valid transaction chain. The sequence number of t must be N + 1 in this case, and there must be no other, different, transaction of u with the sequence number of N + 1 that appears in G.").
With respect to claims 2, 9 and 22, Dan teaches all the subject matter of the system, method and medium as described above with respect to claims 1, 8 and 21. Furthermore, Dan discloses a system, method and medium wherein the node is a first node and the method further comprises:
identifying a second node in the graph that is linked to the first node (see page 12: "There might be however another transaction that is identical to t, as long that it appears in a start node of another bank, B (where B= B). In this case this means that u has resubmitted t to B, maybe because B stopped responding.");
retrieving additional transaction information from the second node (see page 12: "When computing the total balance, we mentioned above that there is a problem if two blocks that contain conflicting transactions don’t know of each other. In such case, the two conflicting transactions will be both applied when computing the total balance, and that might result in an account that has a negative balance. Such account has managed to spend more than what it originally had, and unlike in real life, no one can come to that account owner and ask the money back. To avoid this problem, we want to make sure that all the blocks know each other."); and
the transaction inserted into the list of transactions further comprises the additional transaction information retrieved from the second node (see pages 13 and 14: " if a user has several uncertain transactions, then they all have the same sequence number. If our graph is proper (and remains proper), this means that at most one of these transactions might be later accepted, and so that money will belong either to only one of the destination banks (if one of the transactions gets accepted) or to the source bank (in case all the transactions get rejected). Thus, we define that money as shared between the source bank and the destination banks of all those conflicting transactions (as exactly one of them might get that money). Note that those conflicting transactions might wish to transfer different amounts of money, so we simply take the biggest amount among those amounts of money").
With respect to claims 3, 10 and 23, Dan teaches all the subject matter of the system, method and medium as described above with respect to claims 1, 8 and 21. Furthermore, Dan discloses a system, method and medium further comprising preparing a transaction statement that comprises the list of transactions and the transaction information from the node in the graph identified by the hash (see balance of each account, page 11: "Before considering the requirements of start nodes, we define the way we compute the balance of each account according to a given blockgraph. Recall that the blockgraph contains an init node that encodes the initial balance, and transactions that appear in start nodes. When computing the total balance, we consider only accepted transactions, i.e., transactions that appear in start nodes that have matching accept nodes. We compute the total balance by starting with the initial balance, and then applying the accepted transactions"). Regarding the BRI of the claims, Examiner notes that claims 3, 10 and 23 recite “a transaction statement that comprises the list of transactions and the transaction information from the node in the graph identified by the hash”, language directed to non-functional descriptive material. See MPEP 2111.05.
With respect to claims 7, 14 and 26, Dan teaches all the subject matter of the system, method and medium as described above with respect to claims 1, 8 and 21. Furthermore, Dan discloses a system, method and medium wherein the hash is further based at least in part on an account number associated with the transaction identifier (see page 7, source and destination accounts associated with sequence number in transaction. See also page 9, Fig. 1, Update node, Fig. 2, Hash of Start Node (B1, #1) in Update node). Regarding the BRI of the claims, Examiner notes that claims 7, 14 and 26 recite “the hash is further based at least in part on an account number associated with the transaction identifier”, language directed to non-functional descriptive material. See MPEP 2111.05.
With respect to claims 27 and 28, Dan teaches all the subject matter of the system and method as described above with respect to claims 1 and 8. Furthermore, Dan discloses a system and method wherein the machine-readable instructions/method further comprises querying the distributed ledger for one or more additional nodes associated with the node based at least in part on the graph (see page 9: "Acknowledgment applies even with indirect references– every node acknowledges all the nodes that are reachable from it (by means of paths in the graph). For example, in Figure 1, the top accept node of B2 acknowledges all the nodes in the graph excluding the two top nodes of B3.").
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 5, 6, 12, 13, 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Dan (NPL 2019, listed in PTO-892 as reference "U"), and in view of Dobrek (US 10,320,843 B1).
With respect to claims 5, 12 and 24, Dan teaches all the subject matter of the system, method and medium as described above with respect to claims 1, 8 and 21. Dan does not explicitly teach a system, method and medium wherein retrieving transaction information from the node in the graph identified by the hash further comprises: providing the hash of the node to a distributed agent executed by the distributed ledger; and receiving the transaction information from the distributed agent in response.
However, Dobrek discloses a system, method and medium (Methods, systems, and devices for encrypted electronic storage and confidential network transfer of private data through a trustless distributed ledger technology system) wherein
retrieving transaction information from the node in the graph identified by the hash further comprises: providing the hash of the node to a distributed agent executed by the distributed ledger (see Crypto proxy decryption, col. 13 lines 20-35: “In some embodiments, each or some nodes on the system, comprises a Crypto Proxy 106, 126 for encrypting and/or decrypting one or more transactions using an encryption key, such as a symmetric key or asymmetric key…"); and
receiving the transaction information from the distributed agent in response (see col. 13 lines 36-53: “...a Crypto Proxy 106, 126 on a node may decrypt an encrypted transaction on the Distributed Log 102, 122 if the node has stored in its Secret Database 108, 128 the applicable encryption key for that transaction and channel. If so, then a Crypto Proxy 106, 126 on the node may retrieve an encrypted transaction from the Distributed Log 102, 122 or Log Database 104, 124 and also retrieve the applicable encryption key from the Secret Database 108, 128 on that node and decrypt the transaction.”; col. 17, line 64 to col. 18, line 14: “In contrast, in the illustrated example embodiment, Node A and Node B have access to Symmetric Key X. In other words, in the illustrated example embodiment, the Crypto Proxy on Node A and the Crypto Proxy on Node B both have Symmetric Key X and therefore are able to decrypt Transaction X previously encrypted with Symmetric Key X at block 214 to access the underlying plaintext or information. After decryption, the decrypted or unencrypted version of Transaction X can be passed by Node A and Node B to the State Machine of each node at block 214. In some embodiments, each State Machine on Node A and Node B can then execute the unencrypted or decrypted version of Transaction X and update the State Database on Node A (“StateDB.sub.A”) and the State Database on Node B (“StateDB.sub.B”) for Channel X accordingly at block 216. As such, in this illustrated example, all members of Channel X at this point (i.e., Node A and Node B) have now executed Transaction X.”).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the trusted sharing of private data and/or transactions as disclosed by Dobrek in the system, method and medium of Dan, the motivation being to increase security by avoiding disclosing transaction information to malicious participants or nodes (see Dobrek, col. 5 lines 36-54).
With respect to claims 6, 13 and 25, Dan teaches all the subject matter of the system, method and medium as described above with respect to claims 1, 8 and 21. Dan does not explicitly teach a system, method and medium further comprising decrypting the transaction information in response to retrieving transaction information from the node in the graph identified by the hash.
However, Dobrek discloses a system, method and medium (Methods, systems, and devices for encrypted electronic storage and confidential network transfer of private data through a trustless distributed ledger technology system) further comprising decrypting the transaction information in response to retrieving transaction information from the node in the graph identified by the hash (see Crypto proxy decryption, col. 13 lines 20-35: “In some embodiments, each or some nodes on the system, comprises a Crypto Proxy 106, 126 for encrypting and/or decrypting one or more transactions using an encryption key, such as a symmetric key or asymmetric key…").
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the trusted sharing of private data and/or transactions as disclosed by Dobrek in the system, method and medium of Dan, the motivation being to increase security by avoiding disclosing transaction information to malicious participants or nodes (see Dobrek, col. 5 lines 36-54).
Response to Arguments/Amendments
Claim rejections - 35 USC § 101
Applicant’s amendments and arguments (see remarks, pages 9-18, filed on 07/13/2026), with respect to the rejection of claims 1-14 under 35 USC § 101 as being directed to an abstract idea have been fully considered but are not persuasive. With respect to Step 2A prong one, Applicant asserts “Applicant respectfully submits that claims 1-3, 5-10, and 12-14 are patent eligible under Step 2A, Prong One, because the claims do not recite an abstract idea.”. Examiner respectfully disagrees. Examiner notes that the amended claims are still directed to the abstract idea of performing a mathematical calculation and retrieving and rearranging data, grouped within the Mathematical Concepts and Mental process groupings of abstract ideas. With respect to the claim limitation "computing a hash", Applicant disagrees that computing a hash represents a mathematical calculation. As an initial matter, Examiner notes the specification as filed does not offer a lexicographic definition for "hash". One of ordinary skill in the art would recognize "Hash functions are the most commonly used mathematical functions in cryptography for implementing security. A hash function converts an input value of any arbitrary size to a fixed-size value. Thus, the input can be of any length but the output generated is always of a fixed length. The output generated is called hash values or hashes."1 Examiner further disagrees that the claimed subject matter could be related to training a machine learning model. Examiner is in the position that calculating a hash represents manipulating information through mathematical correlations. The claimed language is directed to generating second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form, which is a mathematical concept (see 2106.04(a)(2) A). Therefore, Examiner is unpersuaded the language is not directed to a mathematical concept, as to one of ordinary skill in the art, "computing a hash" is understood by one of ordinary skill in the art as applying a mathematical function to an input value to obtain a "hash". Applicant further disagrees the claims encompass mental process, particularly asserting that "one cannot "insert a transaction associated with the transaction information into a list of transactions based at least in part on retrieving the transaction information from the distributed ledger" using pen and paper". Examiner respectfully disagrees. Receiving information and inserting data into a list is precisely directed to collecting/analyzing information. Therefore, Examiner is unpersuaded by Applicant's arguments directed to step 2A, prong one of the analysis.
With respect to Step 2A prong two of the analysis, Applicant asserts “at least "retrieve transaction information from the node in the graph identified by the hash and stored on a distributed ledger" is closely related to the "technical solution" described2 and therefore integrates the alleged judicial exception into a practical application”. Examiner respectfully disagrees. Retrieving information from a database is directed to "collecting information". This represents the real-world analog of retrieving a book from a library based on its index number. Therefore, Examiner is unpersuaded that retrieving information represents a technical solution of a technical problem. As evaluated above, it merely represents the abstract idea/mental process of collecting information. Examiner notes that the claims were amended to introduce a "distributed ledger", which was evaluated as an additional element. This additional element generally links the use of the judicial exception to a particular technological environment or field of use (i.e. distributed computing). Therefore, the claim as a whole does not integrate the exception into a practical application.
With respect to Step 2B of the analysis, Applicant asserts “Applicant respectfully submits that claims 1-3, 5-10, and 12-14 contain language that is not "well-understood" or "routine" for the relevant "industry." For example, claim 1 recites "retrieve transaction information from the node in the graph identified by the hash and stored on a distributed ledger" and "insert a transaction associated with the transaction information into a list of transactions based at least in part on retrieving the transaction information from the distributed ledger, the transaction comprising the transaction identifier." Applicant submits that in the surrounding industry, none of this language is "conventional activity" and instead represents an "inventive concept" and "significantly more" than the alleged judicial exception”. Examiner respectfully disagrees. MPEP 2106.05 recites "Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973... As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016). MPEP 2106.05 A also establishes relevant considerations for evaluating whether additional elements amount to an inventive concept (items i-vi). It appears that Applicant considers the claim elements of "retrieving… information…" and "inserting… a transaction… into a list of transactions…" as "v. adding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application" see MPEP 2106.05 A. This consideration is based on BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016), which introduced "non-conventional and non-generic arrangement of various computer components for filtering Internet content". In BASCOM, the additional elements in the claims, such as a "local client computer," "remote ISP server," "Internet computer network," and "controlled access network accounts" (827 F.3d at 1349, 119 USPQ2d at 1242) were evaluated, individually and in combination, to arrive at claim eligibility. Examiner respectfully disagrees that the same rationale can be applied into the current claim language. In step 2B, Applicant relies on the limitations identified as abstract ideas instead of identifying additional elements and evaluating whether those, individually or in combination, amount to an inventive concept. Examiner is in the position that the element of a distributed ledger is an additional element to the abstract idea and generally links the use of the judicial exception to a particular technological environment or field of use, e.g., describing how the abstract idea of retrieving and rearranging data is implemented in distributed environments. Examiner notes the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, such as performing a calculation, retrieving data from a distributed database/ledger and adding data to a list. Therefore, Examiner disagrees with Applicant's position that the claims overcome step 2B of the analysis. The new and amended claims do not offer significantly more than the abstract idea itself, therefore the claims are still rejected under 35 USC § 101 as further detailed above.
Claim rejections - 35 USC § 103
Applicant’s amendments and arguments (see remarks, pages 18-22, filed on 07/13/2026), with respect to the rejection under 35 USC § 103 have been fully considered, but are moot because the arguments do not apply to the reference being used in the current rejection of the amended claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Non-Patent Literature
F. M. Bencic and I. P. Zarko (NPL , listed in PTO-892 as page 1, reference "V") disclose Distributed Ledger Technology: Blockchain Compared to Directed Acyclic Graph, including the usage of directed acyclic graph paradigm in the context of distributed ledgers.
Z. Akhtar (NPL 2019, listed in PTO-892 as page 1, reference "W") disclose From Blockchain to Hashgraph: Distributed Ledger Technologies in the Wild, including a Hashgraph Consensus Algorithm.
R. K. Raman and L. R. Varshney (NPL , listed in PTO-892 as page 1, reference "X") disclose Dynamic Distributed Storage for Scaling Blockchains, including a dynamic zone allocation strategy among peers.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
1 see for instance, https://www.infosecinstitute.com/resources/cryptography/introduction-to-hash-functions/
2 in the specification as filed.
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