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 .
Continuation Application
This Application is a continuation of US Application No. 15/655,227 and 17/064,762 filed on 07/20/2017 and 10/07/2020 now patents US 10,839,379 B2 and US 12,393,931 B2 (“Parent Applications”). See MPEP § 201.07. In accordance with MPEP § 609.02 (II)(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 Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) is/are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicant(s) desires the information to be printed on a patent issuing from this application. See MPEP § 609.02 (II)(A)(2).
Acknowledgements
This Office Action is in response to the claims filed on 07/23/2025.
Claims 1-28 were newly introduced.
Claims 1-28 are pending.
Claims 1-28 were examined.
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 1, 7-12, 14, 15, and 21-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 13-20 of U.S. Patent 12,393,931 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they represent a broader embodiment of the patented claims, as follows1:
US Patent US 12,393,931 B2
Current Application 19/278,354
1. A computer implemented method for digitally representing at least a non-fungible portion of an asset of an asset type, characterized by a fixed number of fungible portions thereof, to enable digital transactions in one or more of the fungible portions without exceeding the fixed number thereof, the method comprising:
receiving, by a processor, a first data message requesting to store data indicative of a first quantity of digital tradeable assets, each representative of one fungible portion of the asset type, in a data structure stored in a memory coupled with the processor;
generating, by the processor based on the request, data indicative of a corresponding digital inventory asset different from the digital tradeable assets, wherein the digital inventory asset is separate from and corresponds to the at least non-fungible portion of the asset, wherein the digital inventory asset comprises identification information which uniquely identifies the corresponding non-fungible portion of the asset among all other non-fungible portions of all other assets and data indicating the fixed number of fungible portions thereof, wherein each of the digital tradeable assets is independently transferrable there among as well as independent of the corresponding digital inventory asset via modification of the data structure; and
determining, by the processor, that the first data message is valid by at least (i) determining that the collective fungible portions of the asset type represented by each digital tradeable asset of the first quantity equals the fixed number of portions of the non-fungible portion of the asset to which the digital inventory asset corresponds, and (ii) determining that the identification information is not duplicative of identification information of another valid digital inventory asset stored in the data structure; andupon determining, by the processor, that the first data message is valid, storing, in a same transaction, the data indicative of each of the first quantity of digital tradeable assets and the data indicative of the corresponding digital inventory asset together in a same sub-structure of the data structure created as a function of the transaction.
1.A computer implemented method for digitally transacting one or more of a fixed number of fungible portions of one or more non-fungible portions of one or more assets of an asset type, the method comprising:
receiving, by a processor from a requestor, a data message comprising a request for a transaction for one or more of the fixed number of fungible portions, the processor coupled with a memory having stored therein a data structure comprising one or more sub-structures, each storing data indicative of each of a first quantity of active digital tradeable assets, each representative of one fungible portion of the asset type, and data indicative of a corresponding active digital inventory asset separate from and corresponding to at least one of the one or more non-fungible portions of at least one of the one or more assets, wherein the digital inventory asset comprises identification information which uniquely identifies the corresponding at least one of the one or more non-fungible portions of at least one of the one or more assets and data indicating the fixed number of fungible portions thereof, wherein each of the digital tradeable assets is associated with at least one of a plurality owners and is independently transferrable, via modification of the data structure, there among as well as independent of the corresponding digital inventory asset, it having been previously determined that the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non- fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond, and that the identification information was not duplicative of identification information of another valid digital inventory asset stored in the data structure; and
determining, by the processor, whether the received data message is valid by at least determining that, subsequent to completion of the requested transaction, the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non-fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond; and wherein when the received data message is determined to be valid, modifying, by the processor, the data structure in accordance with completion of the transaction and when the received message is determined not to be valid, not modifying the data structure.
2. The computer implemented method of claim 1, wherein the data structure comprises a blockchain.
7.The computer implemented method of claim 1, wherein the data structure comprises a blockchain.
3. The computer implemented method of claim 1, wherein the asset type comprises one of a precious metal, real property, a security instrument, or other type of uniquely identifiable asset.
8.The computer implemented method of claim 1, wherein the asset type comprises one of a precious metal, real property, a security instrument, or other type of uniquely identifiable item of value.
4. The computer implemented method of claim 1, wherein the asset corresponding to the digital inventory asset is a physical asset which has been placed in a secure physical vault containing a plurality of physical assets.
9.The computer implemented method of claim 1, wherein the asset corresponding to the digital inventory asset is a physical asset which has been placed in a secure physical vault containing a plurality of physical assets.
5. The computer implemented method of claim 1, wherein the corresponding asset is a metal, and wherein the identification information of the corresponding asset includes at least one of: the metal refiner; year of manufacture; a serial number; an assayed fineness of a unit of the metal; or a weight of the corresponding asset.
10.The computer implemented method of claim 1, wherein the corresponding asset is a metal, and wherein the identification information of the corresponding asset includes at least one of: the metal refiner; year of manufacture; a serial number; an assayed fineness of a unit of the metal; or a weight of the corresponding asset.
6. The computer implemented method of claim 5, wherein the first quantity is based on a total weight of the corresponding asset.
11.The computer implemented method of claim 10, wherein the first quantity is based on a total weight of the corresponding asset.
7. The computer implemented method of claim 1, wherein information about a digital tradeable asset that represents an amount of the asset type and its corresponding digital inventory asset that is associated with a specified asset are stored together in the data structure.
12.The computer implemented method of claim 1, wherein information about a digital tradeable asset that represents an amount of the asset type and its corresponding digital inventory asset that is associated with a specified asset are stored together in the data structure.
13. The computer implemented method of claim 1, further comprising:marking each of the quantity of digital tradeable assets and the digital inventory asset as active or inactive;storing those of the quantity of digital tradeable assets and the digital inventory asset marked active in an Unspent Transaction Output (“UTXO”) database; andtransmitting those of the quantity of digital tradeable assets and the digital inventory asset marked inactive to an OP_RETURN script operation code.
14.The computer implemented method of claim 1, further comprising: marking each of the quantity of digital tradeable assets and the digital inventory asset as active or inactive;storing those of the quantity of digital tradeable assets and the digital inventory asset marked active in an Unspent Transaction Output ("UTXO") database; andtransmitting those of the quantity of digital tradeable assets and the digital inventory asset marked inactive to an OP_RETURN script operation code.
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 1-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
According to MPEP 2106 II, It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. Further, MPEP 2103 I C establishes that the subject matter of a properly construed claim is defined by the terms that limit the scope of the claim when given their broadest reasonable interpretation. It is this subject matter that must be examined. Regarding the independent claims, claims 1, 15 and 28 recite “a memory having stored therein a data structure comprising one or more sub-structures, each storing data indicative of each of a first quantity of active digital tradeable assets, each representative of one fungible portion of the asset type, and data indicative of a corresponding active digital inventory asset separate from and corresponding to at least one of the one or more non-fungible portions of at least one of the one or more assets”; “the digital inventory asset comprises identification information which uniquely identifies the corresponding at least one of the one or more non-fungible portions of at least one of the one or more assets and data indicating the fixed number of fungible portions thereof”; “wherein each of the digital tradeable assets is associated with at least one of a plurality owners and is independently transferrable, via modification of the data structure, there among as well as independent of the corresponding digital inventory asset, it having been previously determined that the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non- fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond, and that the identification information was not duplicative of identification information of another valid digital inventory asset stored in the data structure”, language directed to non-functional descriptive material. See MPEP 2111.05. In addition, claims 1, 15 and 28 recite “a request for a transaction for one or more of the fixed number of fungible portions”, a statement of intended use or field use. See MPEP 2114 II. Lastly, claims 1, 15 and 28 recite “determining, by the processor, whether the received data message is valid by at least determining that, subsequent to completion of the requested transaction, the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non-fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond” (i.e. determining is contingent on completion of a requested transaction, while this completion is not required by the claims); “wherein when the received data message is determined to be valid, modifying, by the processor, the data structure in accordance with completion of the transaction and when the received message is determined not to be valid, not modifying the data structure” , language directed to contingent limitations (i.e. the modifying is contingent on “the… message… is… determined to be valid”, the modifying not being required by the claims when the message is not determined to be valid. Examiner notes the claims do not require determining that the message is valid, but rather whether the message is valid). The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential) for an analysis of contingent claim limitations in the context of both method claims and system claims. See also MPEP 2111.04.
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 1-14 are directed to a method, claims 15-27 are directed to a medium, and claim 28 are directed to a system. 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 (Exemplary Independent method claim 1):
a. receiving, by a processor from a requestor, a data message comprising a request for a transaction for one or more of the fixed number of fungible portions, the processor coupled with a memory having stored therein a data structure comprising one or more sub-structures, each storing data indicative of each of a first quantity of active digital tradeable assets, each representative of one fungible portion of the asset type, and data indicative of a corresponding active digital inventory asset separate from and corresponding to at least one of the one or more non-fungible portions of at least one of the one or more assets, wherein the digital inventory asset comprises identification information which uniquely identifies the corresponding at least one of the one or more non-fungible portions of at least one of the one or more assets and data indicating the fixed number of fungible portions thereof, wherein each of the digital tradeable assets is associated with at least one of a plurality owners and is independently transferrable, via modification of the data structure, there among as well as independent of the corresponding digital inventory asset, it having been previously determined that the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non- fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond, and that the identification information was not duplicative of identification information of another valid digital inventory asset stored in the data structureb. determining, by the processor, whether the received data message is valid by at least determining that, subsequent to completion of the requested transaction, the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non-fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond; and wherein when the received data message is determined to be valid, modifying, by the processor, the data structure in accordance with completion of the transaction and when the received message is determined not to be valid, not modifying the data structure.
Therefore, the portions highlighted in bold above recite validating a message, which is an abstract idea grouped within the and mental processes grouping of abstract ideas in prong one of step 2A. The claims are grouped within mental processes because the steps recited describe applying rules to a received message, which is a concept that can be performed in the human mind or by pen and paper. 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. Specifically, with respect to using a processor and memory to perform the recited steps/functions, these additional elements perform the steps or functions such as: “receiving… a… message…”, “determining… whether the received message is valid…”. 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 it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. 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. 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 additional computer elements, such as a processor and perform the steps/functions of “receiving… a… message…”, “determining… whether the received message is valid…”, 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 validating a message. 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 validating a message. 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. a processor and memory), 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 2-14 and 16-27 further recite the following additional language, in which elements which merely further define the identified abstract idea are marked in bold below:
c) wherein the determination of validity and any resultant modification of the data structure is completed atomically before at least another determination of validity of another subsequently received request for transaction. d) wherein the transaction comprises a change of ownership of a second quantity of the fungible portions, the modifying further comprising modifying the ownership association of an equivalent quantity of any of the active stored digital tradeable assets in the data structure in accordance with the transaction. e) wherein, prior to the modification, the associated owner of the modified stored digital tradeable assets was the requestor, the transaction comprising a payment. f) wherein the new owner is a trading exchange, the second quantity of the fungible portions to be used for trading on behalf of the requestor. g) wherein the transaction comprises a withdrawal of a second quantity of the one or more non-fungible portions of the one or more assets, the modifying further comprising: identifying, by the processor, a quantity of the active digital tradeable assets stored in the data structure equivalent to the second quantity where the associated owner thereof is the requestor; modifying, by the processor, the data structure to at least inactivate the identified active digital tradeable assets; and identifying, by the processor, all active digital inventory assets stored in the data structure corresponding to the one or more non-fungible portions to be withdrawn and at least modifying the data indicative of the fixed number of fungible portions thereof in accordance with a remainder thereof subsequent to the withdrawal, wherein any of the identified active digital inventory assets, for which the modified data indicative of the remaining fixed number of fungible portions thereof indicates no remaining fungible portions, are at least inactivated. h) wherein the data structure comprises a blockchain. i) wherein the asset type comprises one of a precious metal, real property, a security instrument, or other type of uniquely identifiable item of value. j) wherein the asset corresponding to the digital inventory asset is a physical asset which has been placed in a secure physical vault containing a plurality of physical assets. k) wherein the corresponding asset is a metal, and wherein the identification information of the corresponding asset includes at least one of: the metal refiner; year of manufacture; a serial number; an assayed fineness of a unit of the metal; or a weight of the corresponding asset. l) wherein the first quantity is based on a total weight of the corresponding asset. m) wherein information about a digital tradeable asset that represents an amount of the asset type and its corresponding digital inventory asset that is associated with a specified asset are stored together in the data structure. n) wherein determining whether the received data message is valid further includes determining whether the received data message has been cryptographically signed with a private key associated with the associated owner of any digital tradeable assets to be modified. o) further comprising: marking each of the quantity of digital tradeable assets and the digital inventory asset as active or inactive; storing those of the quantity of digital tradeable assets and the digital inventory asset marked active in an Unspent Transaction Output ("UTXO") database; and transmitting those of the quantity of digital tradeable assets and the digital inventory asset marked inactive to an OP_RETURN script operation code.
With respect to the eligibility analysis of claims 2 and 162, This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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. The claims further describe the "determining" function/step analyzed in conjunction with the independent claims above.
With respect to claims 3 and 173, the claims recite item d) 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 transaction comprises. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 4 and 18, the claims recite item e) 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 owner was and what the transaction comprises. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 5 and 19, the claims recite item f) 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 owner is. The claims further recite statements directed to intended use by describing what the portions are "to be used for". Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 6 and 204, the claims recite item g) above, language directed to non-functional descriptive material by describing what the transaction comprises. Those statements are insufficient to significantly alter the eligibility analysis. Item g) above introduces the additional elements/functions of modifying data and identifying data in a data structure. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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. Further manipulating stored data offer a more detailed description of the mental process as identified in the analysis of the independent claims.
With respect to claims 7 and 21, 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 data structure comprises. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 8 and 22, the claims recite item i) 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 asset type comprises. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 9 and 23, the claims recite item j) 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 asset is. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 10 and 24, the claims recite item k) 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 asset is. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 11 and 25, the claims recite item l) 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 quantity is "based on". Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 claims 12 and 26, the claims recite item m) 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 information represents. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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 13 and 27, Item n) above introduces the additional elements/functions of determining whether the message has been signed. This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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. Verifying contents of a received message, such as whether a message comprises a signature, is part of the mental process identified in the analysis of the independent claims above.
With respect to the eligibility analysis of claim 14, Item o) above introduces the additional elements/functions of keeping a database of active and inactive assets and transmitting a message (code). This language further elaborates the abstract idea of validating a message identified in the analysis of independent claims 1 and 15 above. Therefore, this language does not significantly alter the analysis with respect to the independent claims. 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. Examiner notes Fig. 9C, paragraph [00170] recite that the "OP_RETURN script opcode (operation code), which is used to mark transaction outputs as invalid and unspendable", however, merely transmitting a code is insufficient to "mark transaction outputs as invalid and unspendable in a blockchain. Examiner notes the claim doesn't even require this code to be transmitted and executed by a blockchain, however, positively incorporating this subject matter into the claims (i.e. blockchain code execution), in conjunction with the other recited claim elements, could offer some potential of rendering the claims eligible under 35 U.S.C. § 101.
Therefore, while the additional language c)-o) of dependent claims 2-14 and 16-27 slightly modify the analysis provided with respect to independent claims 1 and 15 above, 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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5, 7-12, 15-19 and 21-25 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Frolov et al. (US 2017/0372278 A1), hereinafter Frolov in view of Jackson et al. (US 2014/0279526 A1), hereinafter Jackson.
With respect to claims 1 and 15, Frolov teaches a non-transitory computer-readable medium storing instructions for digitally transacting one or more of a fixed number of fungible portions of one or more non- fungible portions of one or more assets of an asset type; a computer system for digitally transacting one or more of a fixed number of fungible portions of one or more non-fungible portions of one or more assets of an asset type, the system comprising: a processor and a non-transitory memory coupled therewith (see Fig. 1, paragraphs [0112]-[0123] and [0286]); and a computer implemented method for digitally transacting one or more of a fixed number of fungible portions of one or more non-fungible portions of one or more assets of an asset type (Payment system for carrying out electronic settlements using blockchain technology) comprising:
receiving, by a processor from a requestor, a data message comprising a request for a transaction for one or more of the fixed number of fungible portions, the processor coupled with a memory having stored therein a data structure comprising one or more sub-structures, each storing data indicative of each of a first quantity of active digital tradeable assets, each representative of one fungible portion of the asset type, and data indicative of a corresponding active digital inventory asset separate from and corresponding to at least one of the one or more non-fungible portions of at least one of the one or more assets, (see Fig. 3 , paragraph [0273]: “FIG. 3 illustrates another exemplary method of operation of the system for issuance and circulation of electronic currency illustrated in FIG. 1, and in particular a method of the Client working with the system. At step 31, the Client purchases an initial reserve of an asset (e.g., barrels of oil) from a broker. At step 32, the Client requests issuance of an electronic valuable from the Issuance Center (e.g., an electronic currency) using the Management Module...”),
wherein the digital inventory asset comprises identification information which uniquely identifies the corresponding at least one of the one or more non-fungible portions of at least one of the one or more assets and data indicating the fixed number of fungible portions thereof (see Fig. 4 , paragraph [0274]: “FIG. 4 contains a flowchart illustrating an exemplary method for maintaining a reserve of tangible or intangible assets that substantiate an electronic currency (e.g., gold), according to the present disclosure. Prior to or while carrying out the method, various parameters may be defined or dynamically adjusted as described in the various formulas and equations disclosed herein. In some aspects, a threshold minimum and maximum amount of value of one or more tangible assets in the reserve, necessary to fully substantiate the electronic currency is set by an operator of the reserve. In other aspects, these and other parameters may be controlled by software (e.g., a management module associated with the reserve), or by a remote server. As illustrated by this method, the sufficiency of a reserve of assets used to substantiate an electronic currency may be continuously monitored, in view of the number and value of orders for purchasing or selling said electronic currency being made at any given time point (41). The purchase or sale of electronic currency requires a concomitant increase or decrease in the amount of substantiation needed to fully back the issued currency. As such, when the amount of value of the one or more tangible assets in the reserve id determined to have reached either of the threshold minimum or maximum amounts of value at (42), a purchase/sale of tangible or intangible assets at an external market must be completed in order to maintain full substantiation (43). The operator (or the management module, etc.) may calculate the amount of value of one or more tangible assets that may be purchased/sold at the external market based upon any one of the formulas and/or one or more of the parameters disclosed herein. If neither of the thresholds is reached at a given moment, or when adequate amounts of tangible or intangible assets have been purchased/sold, the method proceeds to the continuous monitoring mode (41) and may repeat the cycle. In doing so, the method allows an operator to maintain full substantiation of an electronic currency backed by tangible or intangible assets held in the operator's reserve. While not shown here, the system may be implemented in a manner that allows for substantiation of a plurality of electronic currencies. To do so, the calculation step performed at (42) should account for the additional currencies, as described by the alternative formulas described herein.”),
wherein each of the digital tradeable assets is associated with at least one of a plurality owners and is independently transferrable, via modification of the data structure, there among as well as independent of the corresponding digital inventory asset (see paragraph [0094]: “In various aspects, every user of the system, including individuals and legal entities and also the Operator itself, may have one or several wallets (accounts) which store keys letting to get access to the amounts of assets which belong to the given users. Access to the wallets may additionally be controlled by entering a special password (PIN-code), optionally with the help of a tool for multi-factor authentication (mostly USSD), so that operating a wallet without participation of its owner is absolutely impossible.”; Fig. 3 , paragraph [0273]: “... At step 36, Client may then sell the issued electronic currency to one or more users at a rate set by the Client. At step 37, the Issuance Center may, if technically possible, monitor the current value of the asset reserve and the volume of the issued electronic valuable.”), it having been previously determined that the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non-fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond (see reserve, Fig. 4 , paragraph [0274]), and
determining, by the processor, whether the received data message is valid by at least determining that, subsequent to completion of the requested transaction, the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non-fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond (see Fig. 3 , paragraph [0273]: “...At step 33, the Issuance Center, if technically possible, verifies the existence and amount of the reserve asset is sufficient to substantiate the requested issuance of an electronic valuable...”); and
wherein when the received data message is determined to be valid, modifying, by the processor, the data structure in accordance with completion of the transaction and when the received message is determined not to be valid, not modifying the data structure. (see Fig. 3 , paragraph [0273]: “... At step 34, the Issuance Center releases an amount of the electronic valuable equivalent in value to all or part of the amount of the reserve of an asset, i.e. transfers the electronic valuable to the Client's issuance wallet in the Settlement Network. At step 35, the Client may purchase an additional amount of the reserve assets, sufficient to request an equivalent increase in issuance of the electronic valuable. At step 36, Client may then sell the issued electronic currency to one or more users at a rate set by the Client. At step 37, the Issuance Center may, if technically possible, monitor the current value of the asset reserve and the volume of the issued electronic valuable.”).
Frolov does not explicitly disclose a method, medium and system comprising: that the identification information was not duplicative of identification information of another valid digital inventory asset stored in the data structure.
While this language represents non-functional descriptive material and is therefore not given patentable weight, this difference is insufficient to distinguish the claims over Frolov. However, in the interest of compact prosecution and assuming weight was to be given to the non-functional descriptive material recitations above, Jackson discloses a method, medium and system (Systems and methods for a private sector monetary authority) comprising:
[at least determining that, subsequent to completion of the requested transaction,]… that the identification information was not duplicative of identification information of another valid digital inventory asset stored in the data structure (see paragraph [0253]: "...In order to minimize resource constraints such as prolonged table locking inherent to commitment of an atomic transaction in a relational database, systems may make use of sagas--a software design strategy commonly realized via a service bus to automate management of a potentially long running business process, possibly containing multiple distinct transactions that must be coordinated and that must ultimately settle and persist (or roll back) overall as an atomic transaction but must correctly handle more than one message that may arrive asynchronously, in any order, and that may also receive duplicate messages that should not be acted upon. An example might be encapsulation of the Issuance process enforcing an internal control to prevent duplicate logging of a bailed bullion bar or Issuance of Monetary Liabilities in excess of the assets bailed into reserves.").
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 internal controls as disclosed by Jackson in the method, medium and system of Frolov, the motivation being to prevent duplicate logging of a bailed bullion bar or Issuance of Monetary Liabilities in excess of the assets bailed into reserves (see Jackson et al., paragraph [0253]).
With respect to the BRI of the claims, Examiner notes that claims 1 and 15 recite “a memory having stored therein a data structure comprising one or more sub-structures, each storing data indicative of each of a first quantity of active digital tradeable assets, each representative of one fungible portion of the asset type, and data indicative of a corresponding active digital inventory asset separate from and corresponding to at least one of the one or more non-fungible portions of at least one of the one or more assets”; “the digital inventory asset comprises identification information which uniquely identifies the corresponding at least one of the one or more non-fungible portions of at least one of the one or more assets and data indicating the fixed number of fungible portions thereof”; “wherein each of the digital tradeable assets is associated with at least one of a plurality owners and is independently transferrable, via modification of the data structure, there among as well as independent of the corresponding digital inventory asset, it having been previously determined that the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non- fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond, and that the identification information was not duplicative of identification information of another valid digital inventory asset stored in the data structure”, language directed to non-functional descriptive material. See MPEP 2111.05. In addition, claims 1 and 15 above recite “a request for a transaction for one or more of the fixed number of fungible portions” , a statement of intended use or field use. See MPEP 2114 II. Lastly, claims 1 and 15 above recite “determining, by the processor, whether the received data message is valid by at least determining that, subsequent to completion of the requested transaction, the collective fungible portions of the asset type represented by all of the active digital tradeable assets stored in the data structure equals the fixed number of portions of the at least one of the one or more non-fungible portions of the at least one of the one or more assets to which all of the active digital inventory assets correspond”; “wherein when the received data message is determined to be valid, modifying, by the processor, the data structure in accordance with completion of the transaction and when the received message is determined not to be valid, not modifying the data structure”; , language directed to contingent limitations. The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential) for an analysis of contingent claim limitations in the context of both method claims and system claims. See also MPEP 2111.04.
With respect to claims 2 and 16, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein the determination of validity and any resultant modification of the data structure is completed atomically before at least another determination of validity of another subsequently received request for transaction (see paragraph [0133]: “In one exemplary aspect, the issuance center 4 repeatedly analyzes the balance of the valuables reserve (e.g., the amount of gold) which is owned by the Operator and disposed in a specialized storage, and on the basis of the offered method of management of the reserve transfers an order for purchase of the necessary amount of a valuable to the broker via the back-office module. Upon completion of purchasing of the valuable by the broker, the issuance center 4 carries out additional (further) issuance which is also transferred to the settlement network 3. The issuance center 4 detects the stream of users' orders and in case the total amount of orders for purchase of electronic currency exceeds the volume of the issued currency, a request for purchase of backing (substantiating) reserve valuables from a broker is automatically formed, at the same time the service of orders for purchase of electronic currency of the volume exceeding the issued one is ceased until the moment of confirmation of purchasing gold and carrying out further issuance.”). Regarding the BRI of the claims, Examiner notes the "modifying" is a contingent limitation in the independent claims”, rendering the language further narrowing this step/function also directed to a contingent limitation. Examiner further notes claim 2 is a method claim and recites “wherein the determination of validity and any resultant modification of the data structure is completed atomically before at least another determination of validity of another subsequently received request for transaction....” language directed to not positively recited method steps. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 3 and 17, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein the transaction comprises a change of ownership of a second quantity of the fungible portions, the modifying further comprising modifying the ownership association of an equivalent quantity of any of the active stored digital tradeable assets in the data structure in accordance with the transaction (see paragraph [0052]: “In one exemplary aspect, a computer-based method for maintaining a reserve of tangible or intangible assets that substantiate an electronic currency, the method comprises: continuously monitoring, by a processor, a sufficiency of the reserve based on a stream of orders for purchasing or selling the electronic currency; when the amount of the tangible or intangible assets in the reserve reaches a threshold amount, calculating, by the processor, an amount of a portion of the tangible or intangible assets to be sold at or purchased from an external market in order to fully substantiate the electronic currency, wherein the calculating step is based upon a mathematical model that accounts for distributions of moments of time of receiving orders for purchasing or selling the electronic currency substantiated by tangible or intangible assets and the amount of purchase or sale of the orders; and initiating, by the processor, the purchasing or selling of the portion of the tangible or intangible assets in the reserve, to or from the external market, to maintain a sufficient amount of the reserve to fully substantiate the electronic currency.”). Regarding the BRI of the claims, Examiner notes that claims 3 and 17 recite “wherein the transaction comprises a change of ownership of a second quantity of the fungible portions”, language directed to non-functional descriptive material. See MPEP 2111.05. Lastly, claims 3 and 17 recite “the modifying further comprising modifying the ownership association of an equivalent quantity of any of the active stored digital tradeable assets in the data structure in accordance with the transaction. Examiner notes the "modifying" is a contingent limitation in the independent claims”, rendering the language further narrowing this step/function also directed to a contingent limitation. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 4 and 18, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 3 and 17. Furthermore, Frolov discloses a method and medium wherein, prior to the modification, the associated owner of the modified stored digital tradeable assets was the requestor, the transaction comprising a payment (see paragraph [0094]: “In various aspects, every user of the system, including individuals and legal entities and also the Operator itself, may have one or several wallets (accounts) which store keys letting to get access to the amounts of assets which belong to the given users. Access to the wallets may additionally be controlled by entering a special password (PIN-code), optionally with the help of a tool for multi-factor authentication (mostly USSD), so that operating a wallet without participation of its owner is absolutely impossible.”). Regarding the BRI of the claims, Examiner notes that claims 4 and 18 recite “the associated owner of the modified stored digital tradeable assets was the requestor”; “the transaction comprising a payment”, language directed to non-functional descriptive material. Examiner also notes “the transaction” is not required to be performed by the claims. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 5 and 19, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 3 and 17. Furthermore, Frolov discloses a method and medium wherein the new owner is a trading exchange, the second quantity of the fungible portions to be used for trading on behalf of the requestor (see paragraph [0102]: “In one exemplary aspect, the system allows its clients to create their own valuable and facilitates management of issuance of that valuable via the management module 2 and the issuance center 4. At the same time, for circulation of this valuable, a special settlement network 3 may be automatically created in the system. However, in such event, if there is physical substantiation of the valuable created and issued by the client, it is stored outside the system and is totally controlled by the issuer itself. In this aspect, in instances where one of the system's clients is the issuer of any kind of electronic valuables, the task of purchasing substantiating assets for those valuables from an appropriate broker (if necessary) is carried out by that issuer itself, in that case the issuance center of the system does not anyhow control the reserve of assets substantiating that valuable but only informs of the amount of electronic liquidity issued by the client, available in the system.”). Regarding the BRI of the claims, Examiner notes that claims 5 and 19 recite “wherein the new owner is a trading exchange”, language directed to non-functional descriptive material. In addition, claims 5 and 19 recite “the second quantity of the fungible portions to be used for trading on behalf of the requestor” , a statement of intended use or field use. See MPEP 2114 II. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 7 and 21, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein the data structure comprises a blockchain (see paragraph [0092]: “In one exemplary aspect, the settlement network 3 may be built on the basis of blockchain technology (e.g., private blockchain) different from known blockchain technologies used for functioning of other known cryptocurrencies (e.g., Bitcoin cryptocurrency)..."; see also paragraph [0108]). Regarding the BRI of the claims, Examiner notes that claims 7 and 21 recite “wherein the data structure comprises a blockchain”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 8 and 22, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein the asset type comprises one of a precious metal, real property, a security instrument, or other type of uniquely identifiable item of value (see paragraph [0104]: “In one exemplary aspect, at the stage of launching the system, the primary issuance of electronic currency is performed. It is carried out corresponding to the initial reserve of assets, for example, a gold reserve. The initial reserve is formed by the Operator itself at its own expense.”). Regarding the BRI of the claims, Examiner notes that claims 8 and 22 recite “wherein the asset type comprises one of a precious metal, real property, a security instrument, or other type of uniquely identifiable item of value”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 9 and 23, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein the asset corresponding to the digital inventory asset is a physical asset which has been placed in a secure physical vault containing a plurality of physical assets (see paragraph [0108]: “At the initial moment, with help of the preliminary mining procedure, the issuance center 4 creates an amount of electronic valuables maximally possible for circulation in the settlement network 3 and locates it in a special pre-issuance wallet stored in the issuance center 4. The blockchain base used for carrying out the given pre-issuance procedure may be used for establishing a settlement network 3 (by copying). After purchasing the initial amount of a valuable (for example, gold) from the broker by the Operator, the issuance center 4 carries out primary issuance of electronic currency in correspondence with the purchased amount of the valuable. The issued electronic currency is transferred to the Operator's wallet in the settlement network 3 (the issuance wallet) and becomes available for sale to the end user.”). Regarding the BRI of the claims, Examiner notes that claims 9 and 23 recite “wherein the asset corresponding to the digital inventory asset is a physical asset which has been placed in a secure physical vault containing a plurality of physical assets”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 10 and 24, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein the corresponding asset is a metal, and wherein the identification information of the corresponding asset includes at least one of: the metal refiner; year of manufacture; a serial number; an assayed fineness of a unit of the metal; or a weight of the corresponding asset (see paragraph [0105]: “In a preferred aspect, all the amount of the virtual currency issued by the Operator for circulation is not less than 100% substantiated by a reserve of assets (for example, physical gold). The substantiation reserve, in case of gold, is formed of bullions of a certain weight, and because insufficient substantiation is unacceptable, it leads to excessive substantiation.”). Regarding the BRI of the claims, Examiner notes that claims 10 and 24 recite “wherein the corresponding asset is a metal, and wherein the identification information of the corresponding asset includes at least one of: the metal refiner; year of manufacture; a serial number; an assayed fineness of a unit of the metal; or a weight of the corresponding asset”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 11 and 25, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 10 and 24. Furthermore, Frolov discloses a method and medium wherein the first quantity is based on a total weight of the corresponding asset (see paragraph [0106]: “For example, if the bullions of gold are 1 kg of weight each, in case of receiving an order for purchasing electronic currency corresponding to 10 g of gold the Operator must purchase 1 kg of gold for maintaining the necessary reserve amount, leaving 990 g of a free reserve for executing further orders.”). Regarding the BRI of the claims, Examiner notes that claims 11 and 25 recite “wherein the first quantity is based on a total weight of the corresponding asset”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
With respect to claims 12 and 26, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. Furthermore, Frolov discloses a method and medium wherein information about a digital tradeable asset that represents an amount of the asset type and its corresponding digital inventory asset that is associated with a specified asset are stored together in the data structure (see paragraph [0134]: “In one exemplary aspect, the volume of the virtual currency reserves necessary for successful functioning of the system may be defined on the basis of a mathematical model calculating the dynamics of the demand for the virtual currency, as illustrated by the examples provided below. In some aspects, if during the continuous monitoring of sufficiency of reserves with help of the mathematical model the system detects that received orders of purchase of an amount of electronic currency exceed the amount of the reserves on the Operator's wallets, at first the amount of gold calculated with the help of the mathematical model is purchased, after which further issuance of virtual currency is carried out and the issued currency is transferred to the client's wallet. This approach guarantees rigorous observance of the principle of 100% backing of the virtual currency by physical gold.”). Regarding the BRI of the claims, Examiner notes that claims 12 and 26 recite “wherein information about a digital tradeable asset that represents an amount of the asset type and its corresponding digital inventory asset that is associated with a specified asset are stored together in the data structure”, language directed to non-functional descriptive material. The motivation for combining the references remain unaltered from the motivation described above in conjunction with the rejection of the independent claims.
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Frolov (US 2017/0372278 A1), in view of Jackson (US 2014/0279526 A1), and in view of Minor (US 2015/0332256 A1).
With respect to claims 6 and 20, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 1 and 15. The combination of Frolov and Jackson does not explicitly teach a method and medium wherein the transaction comprises a withdrawal of a second quantity of the one or more non-fungible portions of the one or more assets, the modifying further comprising: identifying, by the processor, a quantity of the active digital tradeable assets stored in the data structure equivalent to the second quantity where the associated owner thereof is the requestor; modifying, by the processor, the data structure to at least inactivate the identified active digital tradeable assets; and identifying, by the processor, all active digital inventory assets stored in the data structure corresponding to the one or more non-fungible portions to be withdrawn and at least modifying the data indicative of the fixed number of fungible portions thereof in accordance with a remainder thereof subsequent to the withdrawal, wherein any of the identified active digital inventory assets, for which the modified data indicative of the remaining fixed number of fungible portions thereof indicates no remaining fungible portions, are at least inactivated.
However, Minor discloses a method and medium (System and method for converting cryptocurrency to virtual assets whose value is substantiated by a reserve of assets) wherein
the transaction comprises a withdrawal of a second quantity of the one or more non-fungible portions of the one or more assets, the modifying further comprising: identifying, by the processor, a quantity of the active digital tradeable assets stored in the data structure equivalent to the second quantity where the associated owner thereof is the requestor (see paragraph [0059]: “A real-world “asset” shall refer to fiat currency (e.g. USD, Yen, Pounds etc.), a commodity (e.g. gold, silver, etc.), a security (i.e. an equity stake of ownership of a company) or bond (an instrument of indebtedness), or other known and accepted object having value for which there are exchanges through which the asset can be easily bought and sold in exchange for fiat currency.”; paragraph [0060]: “A “virtual asset” shall refer to a representation of an asset in digital form that is associated with an account holder's sub-account.”; Figs. 13 and 14, paragraph [0109]: “FIG. 13 shows the communications that occur within the system 1300 when virtual assets from a first sub-account 1312 are sent to a second sub-account 1314. The sub-accounts 1312, 1314 are associated with the same user account 1311 for two different virtual assets. FIG. 14 shows the user interfaces from the viewpoint of the user during the transaction of FIG. 13. The originating sub-account 1312 has value stored in the form of a virtual asset, shown in FIG. 14 as virtual USD 1400. In this example, $100 USD is being transferred from a user's Online Shopping sub-account 1400 storing virtual USD to a user's sub-account titled Paris Trip 1404, which represents value in virtual Euros. The user indicates through the graphical interface of FIG. 14 that the user wishes to move the virtual USD to the Paris Trip sub-account. (corresponding to 1214 in FIG. 13) This request is transmitted to the transaction engine 1304, and the transaction engine 1304 registers the reduction of the obligation in the account database server 1305...");
modifying, by the processor, the data structure to at least inactivate the identified active digital tradeable assets (see paragraph [0109]: “...Once the transaction engine 1304 obtains the exchange rate from the external exchange 1316, the first sub-account 1312 is debited $100 virtual USD. The transaction engine 1304 communicates with the reserve processing server 1306 which updates the account database server 1306. The account database server 1306 registers the obligation for the sub-account 1314 having a destination address 1315. The transaction engine 1304 also causes the user's destination sub-account 1314 (i.e. virtual Euros sub-account) to be credited with Euros at the prevailing exchange rate. As shown in FIG. 14, the second sub-account is credited $100 USD at the prevailing exchange rate...”; ); and
identifying, by the processor, all active digital inventory assets stored in the data structure corresponding to the one or more non-fungible portions to be withdrawn and at least modifying the data indicative of the fixed number of fungible portions thereof in accordance with a remainder thereof subsequent to the withdrawal, wherein any of the identified active digital inventory assets, for which the modified data indicative of the remaining fixed number of fungible portions thereof indicates no remaining fungible portions, are at least inactivated (see paragraph [0012]: “It should be understood that the system performs the accounting of transactions in users' accounts in real-time while the reallocation of assets in the reserve may be performed asynchronously via exchange operations.”; paragraph [0023]: “The transaction engine is in communication with the system's reserve. The reserve may be a physical location that stores assets or may be a computer system that keeps track of asset allocations (both withdrawals and deposits, as well as purchases and sales conducted on exchanges). The transaction engine coordinates the movement of assets into and out of the reserve. Movements of assets into and out of the reserve correlate to net aggregate movements of cryptocurrency and virtual assets into, within, and out of the system.”; Fig. 2, universal rebalancing, paragraphs [0089]-[0091]: “FIG. 2 shows a universal rebalancing in accordance with illustrative embodiments of the system. In some preferred embodiments, the reserve processing server does not rebalance the assets in the reserve 205A when a transaction request occurs at T1. Instead, the reserve processor performs a universal system rebalancing of a pool of transactions... When a rebalancing trigger occurs at T2, the exchange processor pools together all of the transactions 209, 210 that have been requested, prior to the trigger, into a pooled transaction 208. That pooled transaction 208 is communicated with the exchange 207 at T2. The reserve 205C assets are updated..."; paragraph [0109]: “...Given that the virtual assets of the sub-accounts 1312, 1314 are of different asset classes, the transaction engine 1304 will have to incorporate these transactions in the pool of transactions when a global rebalancing is performed for the reserve 1307.”; ). 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 reserve rebalancing as disclosed by Minor in the method and medium of Frolov and Jackson et al., the motivation being to maintain assets that are equivalent to the assets held in the user accounts (see Minor, paragraph [0086]).
Regarding the BRI of the claims, Examiner notes that claims 6 and 20 recite “the transaction comprises a withdrawal of a second quantity of the one or more non-fungible portions of the one or more assets”; “wherein any of the identified active digital inventory assets, for which the modified data indicative of the remaining fixed number of fungible portions thereof indicates no remaining fungible portions, are at least inactivated”, language directed to non-functional descriptive material. Lastly, claims 6 and 20 recite “the modifying further comprising: identifying… modifying… identifying…”;“at least modifying the data indicative of the fixed number of fungible portions thereof in accordance with a remainder thereof subsequent to the withdrawal” , language directed to contingent limitations given the conditional language in the independent claims.
Claims 13 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Frolov (US 2017/0372278 A1), in view of Jackson (US 2014/0279526 A1) and view of Roth (US 2015/0089244 A1)
With respect to claims 13 and 27, the combination of Frolov and Jackson teaches all the subject matter of the method and medium as described above with respect to claims 12 and 26. The combination of Frolov and Jackson does not explicitly teach a method and medium wherein determining whether the received data message is valid further includes determining whether the received data message has been cryptographically signed with a private key associated with the associated owner of any digital tradeable assets to be modified.
However, Roth discloses a method and medium (Data security using request-supplied keys) wherein determining whether the received data message is valid further includes determining whether the received data message has been cryptographically signed with a private key associated with the associated owner of any digital tradeable assets to be modified (see paragraphs [0034]-[0036], particularly “...if the authentication system 208 determines that the signature 206 is valid, the customer interface 202 may determine to process the request. Processing the request may involve the transfer of encrypted data 210 between the customer interface 202 and request processing infrastructure 212...").
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 electronic signature verification as disclosed by Roth in the method and medium of Frolov and Jackson et al., the motivation being to check whether fulfillment of the request is in compliance with any applicable policy (see Roth, paragraph [0023]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Frolov (US 2017/0372278 A1), in view of Jackson (US 2014/0279526 A1) and in view of Antonopolous (NPL 2017, listed in PTO-892 as reference "U").
With respect to claim 14, the combination of Frolov and Jackson teaches all the subject matter of the method as described above with respect to claim 1. The combination of Frolov and Jackson does not explicitly teach a method further comprising: marking each of the quantity of digital tradeable assets and the digital inventory asset as active or inactive; storing those of the quantity of digital tradeable assets and the digital inventory asset marked active in an Unspent Transaction Output ("UTXO") database; and transmitting those of the quantity of digital tradeable assets and the digital inventory asset marked inactive to an OP_RETURN script operation code.
However, Antonopolous discloses a method (Mastering Bitcoin) further comprising: marking each of the quantity of digital tradeable assets and the digital inventory asset as active or inactive; storing those of the quantity of digital tradeable assets and the digital inventory asset marked active in an Unspent Transaction Output ("UTXO") database; and transmitting those of the quantity of digital tradeable assets and the digital inventory asset marked inactive to an OP_RETURN script operation code (see pages 115-117 and 133-134).
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 teachings as disclosed by Antonopolous in the method of Frolov and Jackson et al., the motivation being to allow tracking of tokens in the Bitcoin network (see , pages 115-117 and 133-134).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Parikh et al. (US 2018/0211318 A1) disclose system and method for trading an asset, including a trade facilitating platform configured to split an in fungible asset into a fungible and non-fungible segments.
Melika et al. (US 2016/0350728 A1) disclose method for cryptographically managing title transactions, including transferring title of assets making use of cryptographic public ledgers.
Sebag et al. (US 2016/0328705 A1) disclose mediated conversion of cryptographic currency and other funding sources to gold, including aggregating a plurality of gold purchase order commands from a plurality of users to purchase vaulted gold in the designated vault.
Wager et al. (US 2017/0024817 A1) disclose device, system, and method for transfer of commodities, including a mechanism in which tokens provide a basis for an exchange of commodities. Accordingly, the exemplary embodiments are described with regard to two processes. In a first process of the exemplary embodiments, the tokens are created or generated for a participating entity who owns the commodity. In a second process of the exemplary embodiments, the tokens are exchanged for funds in a transaction between at least two participating entities.
Youb et al. (US 2019/0080392 A1) disclose method for creating commodity assets from unrefined commodity reserves utilizing blockchain and distributed ledger technology, including tokens issued backed by a portfolio of secured assets.
Friesen et al. (US 6,993,504 B1) disclose user interface for semi-fungible trading, including enabling a trader to view at a glance the difference in values among related semi-fungible goods or multiple non-fungible goods.
Samuels et al. (US 10,762,565 B2) disclose system and method for trading distinct and identifiable portions of a physical commodity, including tracking ownership interests of users, using a map 500 (an allocation table, an ownership register, a ledger or collection of ledgers, or other record of ownership) that subdivides each of the one or more physical units into a plurality of discrete, identifiable segments.
Cao (CN 10,595,6923 A) discloses asset trading platform and digital authentication and trade method of asset, including dividing an asset into separable (fungible) assets and non-separable (non-fungible) assets.
Aronson (WO 2018145024 A1) discloses system and method for asset backed crypto-currency, including staking a portion of a cryptocurrency value with OZcoin Platform crypto-coins and Gold Assets, backing their value with 24 karat Gold.
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.
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, Patrick McAtee can be reached at (571) 272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698
1 Claims 15 and 21-26 were omitted from the table below for brevity. Those claims are commensurate in scope to claims 1 and 7-12 of the current Application and are rejected in view of claims 14-20 of the US Patent.
2 Examiner notes that claims 2 and 16 recite “wherein the determination of validity and any resultant modification of the data structure is completed atomically before at least another determination of validity of another subsequently received request for transaction.”, language directed to contingent limitations. The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential) for an analysis of contingent claim limitations in the context of both method claims and system claims. See also MPEP 2111.04.
3 Examiner notes that claims 3 and 17 further describe the contingent step of "modifying" as evaluated above in conjunction with the independent claims, reciting “the modifying further comprising modifying the ownership association of an equivalent quantity of any of the active stored digital tradeable assets in the data structure in accordance with the transaction.
4 Examiner notes that claims 6 and 20 recite “the modifying further comprising: identifying… modifying… identifying…”“at least modifying the data indicative of the fixed number of fungible portions thereof in accordance with a remainder thereof subsequent to the withdrawal” , language directed to contingent limitations.
Prosecution Insights