DETAILED ACTION
Introduction
This Office action is responsive to the communications filed August 7, 2025. Claims 1-18 are pending.
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 .
Specification
The disclosure is objected to because of the following informalities: typographical error. The specification recites “block-chain” instead of “blockchain.”
Appropriate correction is required.
Abstract
The abstract of the disclosure is objected to because a typographical error. The abstract recites “block-chain” instead of “blockchain.” A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1-18 objected to because of the following informalities: typographical error. The claims recite “block-chain” instead of “blockchain”.
Also, claim 5 recites “harsh value” instead of “hash value.”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 17:
two counterparties for creating, updating, and closing.. and
an auditor for verifying…
The claim recites the generic placeholder “counterparties” and “auditor” for performing the functions identified above. Upon review, the Examiner notes that the claimed phrase meets Prongs (A) and (B) as set forth in MPEP § 2181, subsection I. Additionally, the Examiner notes that “counterparties” and “auditor” are not being modified by sufficiently definite structure, material, or acts for achieving the specified function; therefore, the claimed phrase meets Invocation Prong (C).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
It is unclear from the specification which structure and algorithm are performing the corresponding function.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “wherein a hash chain linking current and previous transactions of the off-chain payment channel in a chronological order is established during the transaction processes, and an Accountable Assertions with Flexible Public Key (AAFPK) mechanism is used to bind fund and commitment information generated by both of the counterparties to a flexible public key through assertions, the hash chain is submitted to the auditors for verifying an order and a consistency of the off-chain transaction of the off-chain payment channel when the off-chain payment channel is closed, and the AAFPK mechanism binds any inconsistencies or differences of the off-chain transaction to a responsible party,” which is unclear. There are multiple transactions described in the claim including audit transaction, off-chain transaction, current and previous transaction. At which stage is the hash chain established?
Claims 2 and 3 recite “a punishment mechanism,” which is unclear from the claims and specification. What is the punishment mechanism?
Claim 6 recites “the hash chain comprises incorporating at timestamp… and to establish a correlation with the chronological order of on-chain transactions,” which is unclear. Does the hash chain comprises establishing a correlation? This the on-chain transactions the same one that was incorporated in the timestamp?
As per claim 17, the following limitations invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
two counterparties for creating, updating, and closing… and
an auditor for verifying…
However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
It is unclear from the specification which structure and algorithm are performing the corresponding function.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-18 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of auditing a transaction. The claim under its broadest reasonable interpretation recites limitations grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The certain methods of organizing human activity abstract idea grouping is defined as concepts related to fundamental economic principles or practices, commercial or legal interactions including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. See MPEP § 2106.04(a)(2), subsection II. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas as they relate to auditing a transaction. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
1. A method for auditable off-chain transaction in block-chain network, comprising: defining participants and their responsibilities, wherein the participants include counterparties requiring an off-chain transaction and auditors that audit transaction information of the off-chain transaction;
creating an off-chain payment channel for carrying out the off-chain transaction between the counterparties and initializing the off-chain payment channel by both of the counterparties;
after creating the off-chain payment channel, updating channel status during each transaction process; and
initiating an audit process to verify an integrity of a history of the off-chain transaction happened on the off-chain payment channel after the off-chain payment channel is closed;
wherein a hash chain linking current and previous transactions of the off-chain payment channel in a chronological order is established during the transaction processes, and an Accountable Assertions with Flexible Public Key (AAFPK) mechanism is used to bind fund and commitment information generated by both of the counterparties to a flexible public key through assertions, the hash chain is submitted to the auditors for verifying an order and a consistency of the off-chain transaction of the off-chain payment channel when the off-chain payment channel is closed, and the AAFPK mechanism binds any inconsistencies or differences of the off-chain transaction to a responsible party.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the block-chain network and off-chain payment channel are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of auditing a transaction. Viewed as a whole, the use of block-chain network and off-chain payment channel as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the block-chain network and off-chain payment channel to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of auditing a transaction. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of auditing a transaction. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as creating an off-chain payment channel and initializing the off-chain payment channel by both of the counterparties by setting initial funds and submitting a transaction further comprises locally creating a funding transaction and a commitment transaction by both of the counterparties;
wherein the off-chain payment channel is successfully established when the funding transaction is published on the block-chain network, and the off-chain payment channel is ultimately closed when any commitment transaction is published to the block-chain network. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Additionally claims 9-16 under its broadest reasonable interpretation recites limitations grouped within the “mathematical concepts” grouping of abstract ideas. Mathematical concepts abstract idea grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. See MPEP § 2106.04(a)(2), subsection I.
Also, claim 17 is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter. The claim recites a system, but it is not a product, machine, or apparatus. “ [M]icroprocessor is generally understood to be a manufacture, a product claim to the microprocessor or a system comprising the microprocessor satisfies Step 1 regardless of whether the claim falls within any other statutory category (such as a machine).” MPEP 2106.03 (I).
Claim Rejections - 35 USC § 103
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 1-3, 5, 7, 8, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2026/0099840 to Rogojin et al. (“Rogojin”) in view of "Sleepy Channels: Bi-directional Payment Channels without Watchtowers" to Aumayr et al. (“Aumayr”) and "Signatures with Flexible Public Key: Introducing Equivalence Classes for Public Keys" to Bakes et al. (“Backes”).
As per claim 1, Rogojin discloses defining participants and their responsibilities, wherein the participants include counterparties requiring an off-chain transaction and auditors that audit transaction information of the off-chain transaction (Fig. 6, abstract);
creating an off-chain payment channel for carrying out the off-chain transaction between the counterparties and initializing the off-chain payment channel by both of the counterparties (abstract);
after creating the off-chain payment channel, updating channel status during each transaction process (paragraphs [0022] and [0064]); and
initiating an audit process to verify an integrity of a history of the off-chain transaction happened on the off-chain payment channel after the off-chain payment channel is closed (paragraphs [0066] and [0281]- Agents 800);
wherein a hash chain linking current and previous transactions of the off-chain payment channel in a chronological order is established during the transaction processes (paragraphs [0032], [0036], and [0078]).
Rogojin does not expressly disclose an Accountable Assertions with Flexible Public Key (AAFPK) mechanism is used to bind fund and commitment information generated by both of the counterparties to a flexible public key through assertions, the hash chain is submitted to the auditors for verifying an order and a consistency of the off-chain transaction of the off-chain payment channel when the off-chain payment channel is closed, and the AAFPK mechanism binds any inconsistencies or differences of the off-chain transaction to a responsible party.
Aumayr in combination with Backes disclose an Accountable Assertions with Flexible Public Key (AAFPK) mechanism is used to bind fund and commitment information generated by both of the counterparties to a flexible public key through assertions, the hash chain is submitted to the auditors for verifying an order and a consistency of the off-chain transaction of the off-chain payment channel when the off-chain payment channel is closed, and the AAFPK mechanism binds any inconsistencies or differences of the off-chain transaction to a responsible party (Backes – flexible public key at least at abstract; Aumayr – UC protocol including “close”).
Additionally, the “wherein clause” has been considered; however, it merely expresses the intended results. See MPEP§ 2111.04. It is not a step that needs to be performed and does not patentable distinguish over the disclosure of the prior art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Aumayr in combination with Backes into the system of Rogojin as they all utilize cryptographic functions. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 2, Rogojin in combination with Aumayr and Backes disclose triggering a punishment mechanism if a dishonest behavior is detected during the audit process, wherein the dishonest behavior includes publishing revoked transactions or tampering with transaction history or making contradictory statement (Aumayr at abstract).
The claims recite the conditional /optional language “--if" Although the conditional/optional language has been considered, Applicants are reminded that optional or conditional elements do not narrow the claims because they can always be omitted. See MPEP §2111.04: "Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation."
As per claim 3, Rogojin in combination with Aumayr and Backes disclose wherein the punishment mechanism comprises allowing the counterparty to obtain a deposit of a malicious party who fails to publish the transaction correctly (Aumayr – UC protocol – punish).
As per claim 5, Rogojin in combination with Aumayr and Backes the establishment of the hash chain comprises: after the off-chain payment channel is initialized and the fund and commitment information is bound to the flexible public key through assertions, calculating a hash value accordingly as a first hash value of the hash chain; and
after each update of the channel status, calculating a new hash value based on a current latest channel status and the harsh value of the previous transaction, and the new hash value is linked to the previous transaction (Rogojin at paragraphs [0081] and [0145]).
As per claim 7, Rogojin in combination with Aumayr and Backes disclose wherein the hash chain is established by Extractable Chameleon Hash with Flexible Public Key (ECHFPK), where a public key or secret key is transformable into a new representative of the same equivalence class, namely, the pair of old and new key are related through a hard relation R (Backes at abstract).
As per claim 8, Rogojin in combination with Aumayr and Backes wherein the AAFPK mechanism generates a key pair including a public key and a secret key, the key pair is transformable into a different representative key pair, and the AAFPK mechanism allows both of the counterparties to make multiple statements in the same context under different representative secret keys without exposing the secret key (Backes at abstract).
Claims 17 and 18 are rejected on the same rationale as claim 1.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rogojin in combination with Aumayr and Backes as applied to claim 1 above, and further in view of U.S. Publication No. 2023/0360024 to Burgis et al. (“Burgis”).
As per claim 4, Rogojin in combination with Aumayr and Backes disclose the method claim 1. The references do not expressly disclose wherein the step of creating an off-chain payment channel and initializing the off-chain payment channel by both of the counterparties by setting initial funds and submitting a transaction further comprises locally creating a funding transaction and a commitment transaction by both of the counterparties;
wherein the off-chain payment channel is successfully established when the funding transaction is published on the block-chain network, and the off-chain payment channel is ultimately closed when any commitment transaction is published to the block-chain network.
Burgis discloses wherein the step of creating an off-chain payment channel and initializing the off-chain payment channel by both of the counterparties by setting initial funds and submitting a transaction further comprises locally creating a funding transaction and a commitment transaction by both of the counterparties;
wherein the off-chain payment channel is successfully established when the funding transaction is published on the block-chain network, and the off-chain payment channel is ultimately closed when any commitment transaction is published to the block-chain network (paragraphs [0065] and [0123] – dual funded channel).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Burgis into Rogojin in combination Aumayr in combination with Backes as they all utilize cryptographic functions. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Rogojin in combination with Aumayr and Backes as applied to claim 1above, and further in view of "TimeChain: A Secure and Decentralized Off-chain Storage System for IoT Time Series Data" to Teng et al. (“Teng”).
Rogojin in combination with Aumayr and Backes disclose the method of claim 1. The references do not expressly disclose wherein the establishment of the hash chain comprises: incorporating a timestamp of an on-chain transaction to accurately mark a timing of a commitment transaction created on the off-chain payment channel and to establish a correlation with the chronological order of on-chain transactions.
Teng discloses incorporating a timestamp of an on-chain transaction to accurately mark a timing of a commitment transaction created on the off-chain payment channel and to establish a correlation with the chronological order of on-chain transactions (see at least abstract – timechain).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Teng into Rogojin in combination Aumayr in combination with Backes as they all utilize cryptographic functions. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JALATEE WORJLOH whose telephone number is (571)272-6714. The examiner can normally be reached Monday-Friday 6:00am-2:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Hayes can be reached at (571) 272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697
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