DETAILED ACTION
Status of the Claims
This office action is in response to Applicant's communications received on July 15, 2025 and October 1, 2025. Claims 2-13 are pending, have been examined and currently stand rejected.
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 .
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 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.
Continuation
This application is a continuation of U.S. Patent Application No. 17/831,395, filed June 2, 2022, which is a Divisional of U.S. Patent Application No. 16/079,088, filed August 22, 2018, now U.S. Patent No. 11373152, issued June 28, 2022, which is a 371 National Stage of International Patent Application No. PCT/IB2017/050819, filed February 14, 2017, which claims priority to United Kingdom Patent Application No. 1604225.1, filed March 11 2016, and United Kingdom Patent Application No. 1603125.4, filed February 23, 2016. See MPEP §201.07. In accordance with MPEP §609.02 A.2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Applications. Also, in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Applications are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Applications need not be resubmitted in this application unless Applicant(s) desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A.2.
Drawings
The drawings submitted on July 15, 2025 are acceptable.
Claim Interpretation
As best understood, claims 12 and 13 were/are intended to be independent claims covering two different statutory categories. That is, although claims 12 and 13 refer to the method of claim 2, it is understood that this is merely a short-handed way to incorporate the same steps performed in the method (i.e., the method of claim 2) into a different statutory category. In order to avoid possible confusion, it is recommended that Applicant explicitly recite the steps included in the machine-readable instructions and the steps performed by the device/processing device.
Information Disclosure Statement
The two information disclosure statements (IDS’s) submitted on 12/16/2025 are in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Claim Objections
Claims 6-11 are objected to for the following informalities:
Claim 6 recites the limitation “the peer-to-peer distributed ledger” as in “sending, over the communications network, a second data output (02) to the peer-to-peer distributed ledger comprising an indication of a transaction of the first quantity of said digital asset (B1) to the issuer (I).” There is insufficient antecedent basis for this limitation in the claim. As best understood, “the peer-to-peer distributed ledger” should be amended to recite “a peer-to-peer distributed ledger.” Claim 7 is also objected to based on its dependency to claim 6.
Claim 8 recites the limitation “the peer-to-peer distributed ledger” as in “sending, over the communications network, a third data output (03) to the peer-to-peer distributed ledger comprising.” There is insufficient antecedent basis for this limitation in the claim. As best understood, “the peer-to-peer distributed ledger” should be amended to recite “a peer-to-peer distributed ledger.”
Claim 9 recites the limitation “the peer-to-peer distributed ledger” as in “sending first data output (01), second data output (02) and third data output (03) to the peer-to-peer distributed ledger.” There is insufficient antecedent basis for this limitation in the claim. As best understood, “the peer-to-peer distributed ledger” should be amended to recite “a peer-to-peer distributed ledger.”
Claim 10 recites the limitation “the peer-to-peer distributed ledger” as in “wherein the peer-to-peer distributed ledger comprises the bitcoin block chain.” There is insufficient antecedent basis for this limitation in the claim. As best understood, “the peer-to-peer distributed ledger” should be amended to recite “a peer-to-peer distributed ledger.”
Claim 11 recites the limitation “the peer-to-peer distributed ledger” as in “sending, over the communications network, a second data output (02) to the peer-to-peer distributed ledger comprising an indication of a transaction of the first quantity of said digital asset (B1) to the issuer (I).” There is insufficient antecedent basis for this limitation in the claim. As best understood, “the peer-to-peer distributed ledger” should be amended to recite “a peer-to-peer distributed ledger.”
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, 3, 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12 and 13 of U.S. Patent No. 12,406,237. Although the claims at issue are not identical, they are not patentably distinct from each other.
In this instance, claim 1 of the ‘237 patent corresponds to claim 2 of the instant application. Independent claim 2 differs from claim 1 of the ‘237 patent, in part, because claim 2 is broader in scope than claim 1 of the ‘237 patent. For example, although claim 2 of the instant application generates a blockchain transaction having an output related to a digital asset, claim 2 does not specify that the digital asset is a quantity of cryptocurrency. However, claim 3 of the instant application indicates that the digital asset is a quantity of cryptocurrency. Additionally, claim 2 in the instant application refers to the script in the transaction as a “redeem script”, whereas claim 2 of the ‘237 patent refers to the script in the transaction as a “locking script.” Additionally, claim 1 of the ‘237 patent recites steps not found in claim 2 of the instant application. For example, claim 1 of the ‘237 patent recites the additional steps of: receiving, over a communications network, a request from a user for the token (T1); allocating the quantity of cryptocurrency (Bl) for association with the token (T1), wherein the allocating comprises: determining a pegging rate (PR1) for the token (T1) that defines a relationship between the quantity of cryptocurrency and a fiat currency value; determining a token value (TV1) in the fiat currency; and determining the quantity of cryptocurrency (B1) based on the pegging rate (PR1) and the token value (TV1), wherein the quantity of cryptocurrency (B1) has a market value in the fiat currency less than the token value (TV1); and sending, over the communications network, a data output to a peer-to-peer distributed ledger comprising the blockchain transaction (Tx) including the output (TxO) and the locking script, wherein: the pegging rate (PR1) fixes the token value to the fiat currency value; and the contract terms in the metadata that specify the token (T1) is redeemable for the token value (V1) in the fiat currency.
It would have been obvious to a person of ordinary skill in the art to modify claim 1 of U.S. Patent No. 12,406,237 to achieve the recited functions found in independent claim 2 of Application no. 19/269,923 (i.e., the instant application) because it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Independent claims 12 and 13 of the instant application correspond to claims 12 and 13, respectively, of the ‘237 patent. Claims 12 and 13 of the instant applicant differ from claims 12 and 13 of the ‘237 patent in the same manner as described above with respect to independent claim 2. Accordingly, the double patenting rejection is also applicable to claims 12 and 13 of the instant application for the same reasons and rationale explained above.
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 2-13 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined at Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that claims 1-11 are directed to the statutory category of a process and claim 13 is directed to the statutory category of a machine. As further explained below, claim 12 is not directed to a statutory category because it is directed to a “computer program” not embodied or executed on any physical storage media (i.e., the claim is directed to software per se, which is not patent eligible). Accordingly, claim 12 does not pass step 1 of the analysis, however, in order to further prosecution, claim 12 has been further analyzed under steps 2A and 2B (seen below).
Under the Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 2 is selected as being representative of the independent claims in the instant application. Claim 2 recites:
A computer-implemented transfer method comprising the steps of: generating
a blockchain transaction (Tx) having an output (TxO) related to a digital asset and a hash of a redeem script which comprises:
metadata comprising a token which is a representation of, or a reference to, a tokenised entity; and
at least one public cryptographic key.
Here, the claims recite the abstract idea, or combination of abstract ideas, of generating transaction data (e.g., generating a transaction). This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic practice (e.g., transaction processing; generating a transaction that includes additional transaction information; etc.) and/or a commercial or legal interaction (e.g., preparing a transaction for a sale/exchange process). The tying of this concept to a particular environment (e.g., a blockchain environment) fails to move the claims beyond a general link of the use of the abstract idea in a particular environment. Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. Furthermore, the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F .3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear that the claim(s) focus on an abstract idea, and not on any improvement to technology and/or a technical field. It is further noted that, the performance of the one or more process steps using a generic computer component (e.g., computer-implemented, a processing device, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In this instance, claim 2 recites the additional element of a computer (i.e., computer-implemented) which performs the steps of the abstract idea. Independent claim 12 recites the additional element of a processing device which performs the steps of the abstract idea. Similarly, independent claim 13 recites the additional element of a device including a processing device that performs the steps of the abstract idea. The computer, processing device, and device are all recited at a high-level of generality such they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer or generic computer component. See MPEP 2106.05(f). The claims’ use of the computer, processing device and/or device does not transform the claimed subject matter into a patent-eligible application because the claims do not require any nonconventional computer components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for the performance of the abstract idea on a generic computing/processing device. Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016 WL 3514158, at *6-7 (Fed. Cir. June 27, 2016). Additionally, Examiner finds no indication in the Specification (See e.g., Specification [0290-292]), that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components (i.e., a particular machine, invoke any specialized programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions). See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). Furthermore, there is no indication in the claim(s) that the computing components in combination with the abstract idea leads to an improvement of the computing components, or another technology, or to a technical field. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually.
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the use of a computer, device, and/or processing device amounts to no more than mere instructions to apply the exception using a generic computer and/or generic computer component. Mere instructions to apply an exception using a generic computer and/or generic computer component cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 2, 12 and 13 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 2-11 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea.
Dependent claim 3 further refines the abstract idea by describing the particular type of asset (i.e., cryptocurrency) that is associated with the generated transaction. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 4 further refines the abstract idea by describing the particular location of the data in the generated transaction. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 5 further refines the abstract idea by describing the submitting of the generated transaction. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 6 recites the additional abstract idea of receiving a request to redeem a token, preparing a transaction to redeem the token, and sending the prepared transaction, which is a fundamental economic practice and/or a commercial or legal interaction. This claim fails to include any new additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea.
Dependent claim 7 refines the token redemption process described in claim 6 by describing that a portion of the token is redeemed and that a second portion of the token is associated with a second token and the first user. This claim fails to include any new additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea.
Dependent claim 8 recites the additional abstract idea of receiving a request to reallocate a portion of an asset and subsequently reallocating the portion of the asset to a different user (i.e., the second user), which is a fundamental economic practice and/or a commercial or legal interaction. This claim fails to include any new additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea.
Dependent claim 9 further refines the abstract idea by describing the determining and sending of a transaction fee. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 10 further refines the abstract idea by describing the particular type/name of the peer-to-peer ledger. It is noted that independent claim 2 and claim 10 both fail to use the ledger/blockchain in any manner. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 11 recites the additional abstract idea of receiving a request to redeem a token, preparing a transaction to redeem the token by receiving the necessary signatures (i.e., the first user signature and the issuer signature), and sending the prepared transaction, which is a fundamental economic practice and/or a commercial or legal interaction. This claim fails to include any new additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount 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, the dependent claims are also not patent eligible.
Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Claim 12 is further rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 12 is directed to a “computer program” not embodied or executed on any physical storage media. The rationale for this finding is that claim 12 does not appear to have any structural elements (i.e., any physical or tangible form). Since the claimed computer program does not have a physical or tangible form, Examiner has interpreted claim 12 as reciting software per se (i.e., program code not stored or processed on any physical media). Functional descriptive material such as a computer program (e.g., logic) must be structurally and functionally interrelated with a medium to allow its intended uses to be realized. Accordingly, claim 12 is directed to software per se is not patentable subject matter because it does not fall within at least one of the four categories of patent eligible subject matter. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1760 (Fed. Cir. 1994). See MPEP § 2106.03 for further guidance and discussion on computer-related non-statutory subject matter. In order to overcome this non-statutory issue, Examiner recommends amending claim 12 to recite “A non-transitory computer-readable medium having stored thereon instructions that, when executed by at least one processor, are operable to perform the steps of: [then write the steps recited in the method claim] (e.g., generating a blockchain transaction […].).”
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.
(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 12 and 13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by White, R. (2004). How Computers Work, 7th Ed. Que Corp. (hereinafter “White”).
Regarding Claim 12: White discloses a computer program comprising machine-readable instructions to cause a processing device to implement [instructions] (See at least White p. 4; see also pp. 8-9; pp. 12-13; p. 80). In reference to the claim language “to cause a processing device to implement the method according to claim 2”, this is merely a recited intended use of the claimed computer program. See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being “for … [performing a specific functionality]”, etc. does not mean that the functions are required to be performed, or are actually performed. In this instance, White is sufficient in terms of art since the method is not functionally tied to the computer program/medium, rather, it merely conveys the intended use. Amending claim 12 in the manner suggested above in the 35 U.S.C. 101 rejection will also functionally tie the computer program/medium to the method steps. If claim 12 is amended in the manner suggested, the current 35 U.S.C. 102 rejection on claim 12 would be withdrawn.
Regarding Claim 13: White discloses a device including a processing device [that is capable of performing programmed steps] (See at least White p. 4 last paragraph “What makes your PC such a miraculous device is that each time you turn it on, it is a tabula rasa, capable of doing anything your creativity-or, more usually, the creativity of professional programmers-can imagine for it to do. It is a calculating machine, an artist's canvas, a magical typewriter, an unerring accountant, and a host of other tools. To transform it from one persona to another merely requires setting some of the microscopic switches buried in the hearts of the microchips, a task accomplished by typing a command or by clicking with your mouse on some tiny icon on the screen.”; see also pp. 8-9; pp. 12-13; p. 80). In reference to the claim language “to perform the method according to claim 2”, this is merely a recited intended use of the claimed device and/or its processing device. See MPEP 2103 C and 2111.04. Simply because the limitation recites something as being “for … [performing a specific functionality]”, etc. does not mean that the functions are required to be performed, or are actually performed. Accordingly, if the prior art structure is capable of performing the intended use, then it reads on the claimed limitation. In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) ("The manner or method in which such a machine is to be utilized is not germane to the issue of patentability of the machine itself."); In re Otto, 136 USPQ 458, 459 (CCPA 1963). See also MPEP 2114 and 2115. Here, the computer system of White is capable of performing the intended use (i.e. the method of claim 2). In order to overcome this rejection Examiner recommends amending Claim 13 to recite:
A device comprising:
a processor;
a memory storing non-transitory computer readable instructions which, when executed by the processor, cause the processor to perform the operations of:
[then write the steps recited in the method claim] (e.g., generating a blockchain transaction […].).
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.
(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, 3, 5, 9 and 10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Middleton et al. (US 2017/0187535 A1) (hereinafter “Middleton”).
Regarding Claim 2: Middleton discloses a computer-implemented transfer method comprising the steps of:
generating a blockchain transaction (Tx) having an output (TxO) related to a digital asset and a hash of a redeem script (See at least Middleton [0056]; [0237-251]; [0291-0299]. Middleton discloses generating a blockchain transaction (Tx) (i.e., a transaction, e.g., an inchoate offer transaction) having an output (TxO) (i.e., one or more outputs) related to a digital asset (e.g., a quantity of Bitcoin (BTC), e.g., 0.5 BTC) and a hash of a redeem script (i.e., a hash of an output script).);
[where the hash of the redeem script] compris[es]:
metadata comprising a token which is a representation of, or a reference to, a tokenised entity (See at least Middleton [0291-0299]. Where the hash of the redeem script (i.e., hash of the output script) comprises metadata (i.e., transaction record metadata) comprising a token (i.e., an offer) which is a representation of, or a reference to, a tokenised entity (i.e., represents terms/conditions).); and
at least one public cryptographic key (See at least Middleton [0298] “[pub. key]” and “[fac. pub. key]”. Where the hash of the redeem script (i.e., output script) comprises at least one public cryptographic key (i.e., [pub. key] and [fac. pub. key]).).
Regarding Claim 3: Middleton discloses the method of claim 2. Middleton further discloses wherein the digital asset is a quantity of cryptocurrency (See at least Middleton [0238]; [0245]; [0295]. Middleton discloses wherein the digital asset (e.g., a quantity of Bitcoin (BTC)) is a quantity of cryptocurrency (e.g., 0.5 BTC).).
Regarding Claim 5: Middleton discloses the method of claim 2. Middleton further discloses submitting the blockchain transaction (Tx) to a blockchain network (See at least Middleton [0292]; [0337]. Middleton discloses submitting the blockchain transaction (Tx) (i.e., transaction, e.g., offer transaction) to a blockchain network (i.e., to a block chain).).
Regarding Claim 9: Middleton discloses a method according to claim 2. Middleton further discloses:
determining a fourth quantity of said digital asset (B4) as a transaction fee (See at least Middleton [0058]; [0062]. Middleton discloses determining a fourth quantity of said digital asset (B4) as a transaction fee (i.e., fees, e.g., transfer fees, withdrawal fees, wire fees, etc.).); and
sending first data output (01), second data output (02) and third data output (03) to the peer-to-peer distributed ledger (See at least Middleton [0126-0133]; [0236]; [0279-0286]; [0319]; [0337]. Middleton discloses sending (i.e., submitting) first data output (01) (i.e., a first disbursement output), second data output (02) (i.e., a second disbursement output), and third data output (03) (i.e., third disbursement output) to the peer-to-peer distributed ledger (i.e., to the transfer mechanism, e.g., one or more network participants).),
wherein the first data output (01), second data output (02) and third data output (03) to the peer-to-peer distributed ledger further comprises:
an indication of a transaction of the fourth quantity of said digital asset (B4) as a transaction fee (See at least Middleton [0126-0133]; [0236]; [0279-0286]; [0319]. Middleton discloses wherein the first data output (01), second data output (02) and third data output (03) to the peer-to-peer distributed ledger further comprises an indication of a transaction of the fourth quantity of said digital asset (B4) as a transaction fee (i.e., fee amount).).
Regarding Claim 10: Middleton discloses a method according to claim 2. Middleton further discloses wherein the peer-to-peer distributed ledger comprises the bitcoin block chain (See at least Middleton [0016]; [0049]; [0193] “a client is configured such that when it detects a new spendable output comprising an amount (e.g., by monitoring changes in or updates to the block chain when using the Bitcoin or similar protocol as the transfer mechanism),”; [0331] “A transfer mechanism (110) comprising a distributed ledger of transactions (often referred to as a "block chain", e.g., with the Bitcoin protocol and progeny)”).
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Middleton, as applied above, and further in view of Pour (Pour: "Bitcoin multisig the hard way: Understanding raw P2SH multisig transactions", December 20, 2014, URL: https://www.soroushjp.com/2014/12/20/bitcoin-multisig-the-hard-way-understanding-raw-multisignature-bitcoin-transactions/).
Regarding Claim 4: Middleton discloses the method of claim 2. Middleton discloses that a specialized transaction record can be generated that contains terms of an offer. Middleton [0292]. Middleton indicates that these terms can be encoded into the transaction record, for example as metadata. Middleton [0292-0293]. However, Middleton does not explicitly disclose, but Pour teaches, wherein the metadata is provided in the redeem script at a location which is designated in a blockchain protocol as a location for a cryptographic key (See at least Pour p. 2 “instead of letting senders put in long scripts into their scriptPubKey (where spending conditions usually go), they would let each sender put in a hash of their spending conditions instead. These spending conditions are known as the redeemscript”. Pour teaches wherein the metadata (i.e. spending conditions) is provided in the redeem script (i.e. redeem script) at a location which is designated in a blockchain protocol as a location for a cryptographic key (i.e. scriptPubKey).).
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 teachings of Pour into Middleton’s method of encoding terms into a transaction record. One of ordinary skill in the art would have been motivated to include such features in order to allow senders to put a hash of their spending conditions into a spending transaction (Pour p. 2).
Allowable Over the Prior Art
Claims 6-8 and 11 found to have subject matter not explicitly disclosed by the prior art.
Regarding Claims 6 and 7: Middleton discloses the use of various scripts in order to facilitate swaps and/or offers. See e.g., Middleton [0063]; [0292-0295]. Middleton indicates that these scripts could be signed by one or more private keys in order to authorize a transaction. Middleton [0057]; [0301-0309]. Middleton also indicates that these signed scripts/transaction are then sent to a transfer mechanism (e.g., a peer-to-peer network) to effect the offer transaction. Middleton [0301]; [0337].
Andreas M. Antonopoulos ("Mastering Bitcoin", Publisher: O'Reilly Media, Inc., Release Date: December 2014) also generally discloses the use of redeem scripts and one or more signatures in order to spend an output. Antonopoulos pp. 135-136.
Poon et al.: "The Bitcoin Lightning Network: Scalable Off-Chain Instant Payments", January, 14 2016, Retrieved from the Internet: https://lightning.network/lightning-network-paper.pdf (“Poon”) discloses the creating of a multisig output from a funding transaction with a single multisig output. The output is a Pay to Script Hash transaction which requires two different users to both agree to spend from the funding transaction. Poon p. 25 Sect. 3.3.5.
Accordingly, the prior art teaches aspects of claim 6 such as token redemption and applying two signatures to a script. However, the prior art, either alone or in reasonable combination, fails to explicitly disclose the particular flow and combination of steps recited in claim 6 where an issuer receives a user request to redeem the first token, receives a first user private key, and subsequently signs a redeem script with the user private key and the issuer private key. Claim 7 is also allowable over the prior art based on its dependency to claim 6.
Regarding Claim 8: Middleton discloses the use of various scripts in order to facilitate swaps and/or offers. See e.g., Middleton [0063]; [0292-0295]. Middleton indicates that these scripts could be signed by one or more private keys in order to authorize a transaction. Middleton [0057]; [0301-0309]. Middleton also discloses a process where a
withdrawing party (A) has convinced an entering party (C) to substitute into a value transfer with a remaining party (B). As part of the process the entering party transfers a negotiated amount to the withdrawing party. The process is facilitated via a substitution transaction, a second commit transaction, and a second refund transaction. Middleton [0203]; [0208-0231]. Additionally, Middleton indicates that these signed scripts/transaction are then sent to a transfer mechanism (e.g., a peer-to-peer network) to effect the offer transaction. Middleton [0301]; [0337].
Accordingly, the prior art teaches aspects of claim 8 such allocating assets to different individuals via the use of scripts and one or more signatures applied to a script. However, the prior art, either alone or in reasonable combination, fails to explicitly disclose the particular flow and combination of steps recited in claim 8 pertaining to the transfer of value from a first token to a third token.
Regarding Claim 11: Middleton discloses the use of various scripts in order to facilitate swaps and/or offers. See e.g., Middleton [0063]; [0292-0295]. Middleton indicates that these scripts could be signed by one or more private keys in order to authorize a transaction. Middleton [0057]; [0301-0309]. Middleton also indicates that these signed scripts/transaction are then sent to a transfer mechanism (e.g., a peer-to-peer network) to effect the offer transaction. Middleton [0301]; [0337].
Andreas M. Antonopoulos ("Mastering Bitcoin", Publisher: O'Reilly Media, Inc., Release Date: December 2014) also generally discloses the use of redeem scripts and one or more signatures in order to spend an output. Antonopoulos pp. 135-136.
Poon et al.: "The Bitcoin Lightning Network: Scalable Off-Chain Instant Payments", January, 14 2016, Retrieved from the Internet: https://lightning.network/lightning-network-paper.pdf (“Poon”) discloses the creating of a multisig output from a funding transaction with a single multisig output. The output is a Pay to Script Hash transaction which requires two different users to both agree to spend from the funding transaction. Poon p. 25 Sect. 3.3.5.
Accordingly, the prior art teaches aspects of claim 11 such as token redemption and applying two signatures to a script. However, the prior art, either alone or in reasonable combination, fails to explicitly disclose the particular flow and combination of steps recited in claim 11 where an issuer receives a user request to redeem the first token, sends a first redeem script for signing by the first user, receives the redeem script signed by the first user, and subsequently signs a redeem script with the issuer private key.
Examiner notes that claims 6, 7, 8 and/or 11 would be allowable over the prior art if rewritten to include all of the limitations of the base claim and any intervening claims. Examiner further notes that claims 6-8 and 11 would still need to overcome the claim objections and the 35 U.S.C. 101 rejection set forth in this Office action before any of these claims could be indicated as allowable. Examiner also notes that claims 6, 8 and 11 recites steps performed by an issuer. Accordingly, if claims 6, 8 and/or 11 are incorporated into the independent claims, Applicant should make sure that the scope of the claim(s) includes the actions performed by the issuer/issuer device (e.g., make sure the issuer device is part of the system).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Haldenby et al. (US 2017/0046806 A1) discloses the use of smart contracts that leverage conventional block-chain ledgers to enforce agreements in a timely and efficient manner, creating a permanent record of the transaction with all the enforceable rules associated with the contracts. Haldenby [0194]. The smart contract may specify scheduled disbursements based on mutually agreed-upon inspections of work. Haldenby [0197].
Kakavand et al. (US 2021/0056070 A1) discloses where contract data and metadata are included on the Bitcoin Blockchain using multiple transactions that encode the data as invalid public key hashes which are included in transactions. In some embodiments the encoded data and metadata are stored in a distributed private ledger and optionally in the Bitcoin network. Kakavand [0071-0072].
Reiner et al.: "Bitcoin Wallet Identity Verification Specification", 27 February 2015, XP055245135, Retrieved from the Internet: http://diyhpl.us/~bryan/papers2/bitcoin/armory-verisign-bitcoin-wallet-identity-specification.pdf> [retrieved on 7-12-2021] (“Reiner”) discloses that when P2SH is to be used, the payment script will be generated. The script will then be hashed using the Hash160 sequence and placed into a standard P2SH TxOut script. The P2SH TxOut script is what will actually be included in the final transaction. Reiner p. 13 Sect. 3.3.2.
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/J.F./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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