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 .
Status of Claims
Claims 1-20 are pending. Claims 1-12 have been examined.
Information Disclosure
The information disclosure statement(s) (IDS) submitted 01/26/2026 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,823,180 (“ ‘180 patent”).
Claims 1-8 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 8 of the ‘180 patent recites an asset issuer computing device comprising:
an input/output circuit configured to:
receive a request to track a specific asset in an exchange on a distributed ledger network, the request includes a dataset of the specific asset, wherein the at least one processing circuit is a node of a plurality of nodes on the distributed ledger network, wherein the plurality of nodes are interconnected via a peer-to-peer network, and wherein the specific asset is a digital currency based on a unit of fiat currency;
an identifier generation system configured to:
identify a reason for the exchange, wherein the reason for exchange is based on a set of predefined actions;
determine an asset type associated with the specific asset based on the dataset;
generate a unique identifier identifying the specific asset;
generate a unique tracking identifier, the unique tracking identifier including a subset of identifiers, the subset of identifiers including: an asset issuer identifier comprising at least a location code identifying a location of an asset issuer; an asset type identifier comprising a pre-determined code of a pre-determined length identifying the asset type of the asset issuer; a subset identifier comprising at least a geolocation of the specific asset, biometric data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership; and the unique identifier comprising a universal unique identifier (UUID);
generate a cryptographic code unique to the specific asset, the cryptographic code comprising the asset issuer identifier, the asset type identifier, the subset identifier, the unique identifier, and metadata of the specific asset based on executing a cryptographic hash;
update a key-value pair of the specific asset and the metadata of the dataset of the specific asset based on executing a smart contract, wherein a key of the key-value pair identifies the specific asset, and wherein a value of the key-value pair identifies the unique tracking identifier and the metadata of the specific asset, and wherein the metadata comprises smart contract execution history comprising each smart contract that has been executed associated with that unique tracking identifier, wherein the cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset over a period of time;
an asset circuit configured to:
provide, to the plurality of nodes via the peer-to-peer network on the distributed ledger network, the cryptographic code, the specific asset, the reason for the exchange, and the dataset associated with the specific asset, wherein providing includes storing by each node of the plurality of nodes the updated key-value pair based on executing the smart contract comprising program code causing the node to execute a set of instructions updating the specific asset and the dataset; and
receive, from the distributed ledger network, a confirmation notification indicating a successful association of the unique tracking identifier with the specific asset.
Furthermore, and determining each update of a plurality of updates of the dataset associated with the unique tracking identifier. Claim 8 of the ‘180 patent differs since it further recites additional claim limitations, “an input/output circuit configured to:” “an identifier generation system configured to:” “identify a reason for the exchange, wherein the reason for exchange is based on a set of predefined actions;” “generating a unique tracking identifier identifying the specific asset,” “the unique identifier comprising a universal unique identifier (UUID),” “update a key-value pair,” “generate a cryptographic code unique to the specific asset,” “executing a smart contract” “the metadata comprises smart contract execution history comprising each smart contract that has been executed associated with that unique tracking identifier,” an asset circuit configured to:” “storing by each node of the plurality of nodes the updated key-value pair based on executing the smart contract comprising program code causing the node to execute a set of instructions updating the specific asset and the dataset” However, it would have been obvious to a person of ordinary skill in the art to modify claim 8 of the ‘180 patent by removing the limitations directed to components including an input/output circuit, an identifier generation system, and an asset circuit, as well as identifying a reason based on predefined action for the exchange, as well as executing a smart contract that updates the ledger generally in claim 8 of the present application since the claim of the present application and the claim recited in the ‘180 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 9-16 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the ‘180 patent recites a method of tracking a plurality of assets on a distributed ledger network, the method comprising:
receiving, by an asset issuer computing device, a request to track a specific asset in an exchange on the distributed ledger network, the request includes a dataset of the specific asset, wherein the asset issuer computing device is a node of a plurality of nodes on the distributed ledger network, wherein the plurality of nodes are interconnected via a peer-to-peer network, and wherein the specific asset is a digital currency based on a unit of fiat currency;
identifying, by the asset issuer computing device, a reason for the exchange, wherein the reason for exchange is based on a set of predefined actions;
determining, by the asset issuer computing device, an asset type associated with the specific asset based on the dataset;
generating, by the asset issuer computing device, a unique identifier identifying the specific asset;
generating, by the asset issuer computing device, a unique tracking identifier, the unique tracking identifier including subset of identifiers, the subset of identifiers including: an asset issuer identifier comprising at least a location code identifying a location of an asset issuer; an asset type identifier comprising a pre-determined code of a pre-determined length identifying the asset type of the asset issuer; a subset identifier comprising at least a geolocation of the specific asset, biometric data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership; and the unique identifier comprising a universal unique identifier (UUID);
generating, by the asset issuer computing device, a cryptographic code unique to the specific asset, the cryptographic code comprising the asset issuer identifier, the asset type identifier, the subset identifier, the unique identifier, and metadata of the specific asset based on executing a cryptographic hash;
updating, by the asset issuer computing device, a key-value pair of the specific asset and the metadata of the dataset of the specific asset based on executing a smart contract, wherein a key of the key-value pair identifies the specific asset, and wherein a value of the key-value pair identifies the unique tracking identifier and the metadata of the specific asset, and wherein the metadata comprises smart contract execution history comprising each smart contract that has been executed associated with that unique tracking identifier, wherein the cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset over a period of time;
providing, by the asset issuer computing device to the plurality of nodes via the peer-to-peer network on the distributed ledger network, the cryptographic code, the specific asset, the reason for the exchange, and the dataset associated with the specific asset, wherein providing includes storing by each node of the plurality of nodes the updated key-value pair based on executing the smart contract comprising program code causing the node to execute a set of instructions updating the specific asset and the dataset; and
receiving, by the asset issuer computing device from the distributed ledger network, a confirmation notification indicating a successful association of the unique tracking identifier with the specific asset.
Furthermore, claim 6 of the ’180 patent recites retrieving the dataset based on providing the unique tracking identifier of the specific asset from the distributed ledger network and determining each update of a plurality of updates of the dataset associated with the unique tracking identifier. Claim 1 of the ‘180 patent differs since it further recites additional claim limitations, “an asset issuer computing device,” “generating, by the asset issuer computing device, a unique tracking identifier identifying the specific asset,” “the unique identifier comprising a universal unique identifier (UUID),” “update a key-value pair,” “generating, by the asset issuer computing device, a cryptographic code unique to the specific asset,” “executing a smart contract” “the metadata comprises smart contract execution history comprising each smart contract that has been executed associated with that unique tracking identifier,” an asset circuit configured to:” “storing by each node of the plurality of nodes the updated key-value pair based on executing the smart contract comprising program code causing the node to execute a set of instructions updating the specific asset and the dataset” However, it would have been obvious to a person of ordinary skill in the art to modify claim 1 of the ‘180 patent by removing the limitations directed to identifying a reason based on predefined action for the exchange, as well as executing a smart contract that updates the ledger generally in claim 1 of the present application since the claim of the present application and the claim recited in the ‘180 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 17-20 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 14 of the ‘180 patent recites one or more non-transitory computer-readable storage media having instructions stored thereon that, when executed by at least one processing circuit, cause the at least one processing circuit to:
receive a request to track a specific asset in an exchange on a distributed ledger network, the request includes a dataset of the specific asset, wherein the at least one processing circuit is a node of a plurality of nodes on the distributed ledger network, wherein the plurality of nodes are interconnected via a peer-to-peer network, and wherein the specific asset is a digital currency based on a unit of fiat currency;
identify a reason for the exchange, wherein the reason for exchange is based on a set of predefined actions;
determine an asset type associated with the specific asset based on the dataset;
generate a unique identifier identifying the specific asset;
generate a unique tracking identifier, the unique tracking identifier including subset of identifiers, the subset of identifiers including: an asset issuer identifier comprising at least a location code identifying a location of an asset issuer; an asset type identifier comprising a pre-determined code of a pre-determined length identifying the asset type of the asset issuer; a subset identifier comprising at least a geolocation of the specific asset, biometric data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership; and the unique identifier comprising a universal unique identifier (UUID);
generate a cryptographic code unique to the specific asset, the cryptographic code comprising the asset issuer identifier, the asset type identifier, the subset identifier, the unique identifier, and metadata of the specific asset based on executing a cryptographic hash;
update a key-value pair of the specific asset and the metadata of the dataset of the specific asset based on executing a smart contract, wherein a key of the key-value pair identifies the specific asset, and wherein a value of the key-value pair identifies the unique tracking identifier and the metadata of the specific asset, and wherein the metadata comprises smart contract execution history comprising each smart contract that has been executed associated with that unique tracking identifier, wherein the cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset over a period of time;
provide, to the plurality of nodes via the peer-to-peer network on the distributed ledger network, the cryptographic code, the specific asset, the reason for the exchange, and the dataset associated with the specific asset, wherein providing includes storing by each node of the plurality of nodes the updated key-value pair based on executing the smart contract comprising program code causing the node to execute a set of instructions updating the specific asset and the dataset; and
receive, from the distributed ledger network, a confirmation notification indicating a successful association of the unique tracking identifier with the specific asset.
Furthermore, claim 16 of the ’180 patent recites retrieving the dataset based on providing the unique tracking identifier of the specific asset from the distributed ledger network and determining each update of a plurality of updates of the dataset associated with the unique tracking identifier. Claim 14 of the ‘180 patent differs since it further recites additional claim limitations, “generate a unique tracking identifier identifying the specific asset,” “the unique identifier comprising a universal unique identifier (UUID),” “update a key-value pair,” “generate a cryptographic code unique to the specific asset,” “executing a smart contract” “the metadata comprises smart contract execution history comprising each smart contract that has been executed associated with that unique tracking identifier,” “storing by each node of the plurality of nodes the updated key-value pair based on executing the smart contract comprising program code causing the node to execute a set of instructions updating the specific asset and the dataset” However, it would have been obvious to a person of ordinary skill in the art to modify claim 14 of the ‘180 patent by removing the limitations directed to identifying a reason based on predefined action for the exchange, as well as executing a smart contract that updates the ledger generally in claim 14 of the present application since the claim of the present application and the claim recited in the ‘180 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,469,024 (“ ‘024 patent”).
Claims 1-8 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 10 of the ‘024 patent recites a system comprising: at least one processing circuit configured to:
receive a request to track a specific asset comprising a dataset in an exchange on a distributed ledger network;
identify predefined action of the exchange, wherein the predefined action is identified from a set of predefined actions, the set of predefined actions corresponding with a list of actions for exchanging assets of asset type associated with the specific asset;
generate a unique tracking identifier, the unique tracking identifier by combining a subset of identifiers comprising an asset issuer identifier, an asset type identifier, and a unique identifier into the unique tracking identifier, wherein the unique tracking identifier corresponds with an ownership percentage of the specific asset;
generate a cryptographic code unique to the specific asset, the cryptographic code comprising the asset issuer identifier, the asset type identifier, the unique identifier, and metadata of the specific asset based on executing a cryptographic hash, wherein the cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset;
identify a reason for the exchange from the set of predefined actions corresponding with the asset type;
provide, to the distributed ledger network, the cryptographic code and the reason for the exchange, wherein providing comprises executing a smart contract, the smart contract comprises program code that causes the distributed ledger network to execute a set of instructions updating the specific asset and the dataset; and
receive, from the distributed ledger network, a confirmation notification indicating a successful association of the unique tracking identifier with the specific asset.
Furthermore, claim 18 of the ’024 patent recites the unique tracking identifier further comprises a subset identifier corresponding to at least one of a duration, biometric information, geolocation information, or a fractional ownership percentage, and wherein the unique tracking identifier further comprises biological or behavioral characteristic information of the specific asset, and claim 14 of the ’24 patent recites retrieving the dataset based on providing the unique tracking identifier of the specific asset from the distributed ledger network and determining each update of a plurality of updates of the dataset associated with the unique tracking identifier. Claim 10 of the ‘024 patent differs since it further recites additional claim limitations, “identify predefined action of the exchange, wherein the predefined action is identified from a set of predefined actions, the set of predefined actions corresponding with a list of actions for exchanging assets of asset type associated with the specific asset;” “generate a unique tracking identifier,” “generate a cryptographic code,” “identify a reason for the exchange from the set of predefined actions corresponding with the asset type;” “provide, to the distributed ledger network, the cryptographic code and the reason for the exchange, wherein providing comprises executing a smart contract, the smart contract comprises program code that causes the distributed ledger network to execute a set of instructions updating the specific asset and the dataset.” However, it would have been obvious to a person of ordinary skill in the art to modify claim 10 of the ‘024 patent by removing the limitations directed to identifying a predefined action and reason for the exchange, as well as executing a smart contract that updates the ledger generally in claim 10 of the present application since the claim of the present application and the claim recited in the ‘024 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 9-16 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 1 of the ‘024 patent recites a method of tracking a plurality of assets on a distributed ledger network, the method comprising:
receiving, by a computing system, a request to track a specific asset comprising a dataset in an exchange on the distributed ledger network;
identifying, by the computing system, a predefined action of the exchange, wherein the predefined action is identified from a set of predefined actions, the set of predefined actions corresponding with a list of actions for exchanging assets of asset type associated with the specific asset;
generating, by the computing system, a unique tracking identifier by combining a subset of identifiers comprising an asset issuer identifier, an asset type identifier, and a unique identifier into the unique tracking identifier, wherein the unique tracking identifier corresponds with an ownership percentage of the specific asset;
generating, by the computing system, a cryptographic code unique to the specific asset, the cryptographic code comprising the asset issuer identifier, the asset type identifier, the unique identifier, and metadata of the specific asset based on executing a cryptographic hash, wherein the cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset;
identifying, by the computing system, a reason for the exchange from the set of predefined actions corresponding with the asset type;
providing, by the computing system to the distributed ledger network, the cryptographic code and the reason for the exchange, wherein providing comprises executing a smart contract, the smart contract comprises program code that causes the distributed ledger network to execute a set of instructions updating the specific asset and the dataset; and
receiving, by the computing system from the distributed ledger network, a confirmation notification indicating a successful association of the unique tracking identifier with the specific asset.
Furthermore, claim 9 of the ’24 patent recites the unique tracking identifier further comprises a subset identifier corresponding to at least one of a duration, biometric information, geolocation information, or a fractional ownership percentage, and wherein the unique tracking identifier further comprises biological or behavioral characteristic information of the specific asset, and claim 5 of the ’24 patent recites retrieving the dataset based on providing the unique tracking identifier of the specific asset from the distributed ledger network and determining each update of a plurality of updates of the dataset associated with the unique tracking identifier. Claim 1 of the ‘024 patent differs since it further recites additional claim limitations, “identifying, by the computing system, a predefined action of the exchange, wherein the predefined action is identified from a set of predefined actions, the set of predefined actions corresponding with a list of actions for exchanging assets of asset type associated with the specific asset;” “generating, by the computing system, a unique tracking identifier,” “generating, by the computing system, a cryptographic code,” “identifying, by the computing system, a reason for the exchange from the set of predefined actions corresponding with the asset type;” “providing, by the computing system to the distributed ledger network, the cryptographic code and the reason for the exchange, wherein providing comprises executing a smart contract, the smart contract comprises program code that causes the distributed ledger network to execute a set of instructions updating the specific asset and the dataset.” However, it would have been obvious to a person of ordinary skill in the art to modify claim 1 of the ‘024 patent by removing the limitations directed to identifying a predefined action and reason for the exchange, as well as executing a smart contract that updates the ledger generally in claim 1 of the present application since the claim of the present application and the claim recited in the ‘024 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Claims 17-20 of the present application
Although the conflicting claims are not identical, they are not patentably distinct from each other. Claim 19 of the ‘024 patent recites one or more non-transitory computer-readable storage media having instructions stored thereon that, when executed by at least one processing circuit, cause the at least one processing circuit to:
receive a request to track a specific asset comprising a dataset in an exchange on a distributed ledger network;
identify predefined action of the exchange, wherein the predefined action is identified from a set of predefined actions, the set of predefined actions corresponding with a list of actions for exchanging assets of asset type associated with the specific asset;
generate a unique tracking identifier, the unique tracking identifier by combining a subset of identifiers comprising an asset issuer identifier, an asset type identifier, and a unique identifier into the unique tracking identifier, wherein the unique tracking identifier corresponds with an ownership percentage of the specific asset;
generate a cryptographic code unique to the specific asset, the cryptographic code comprising the asset issuer identifier, the asset type identifier, the unique identifier, and metadata of the specific asset based on executing a cryptographic hash, wherein the cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset;
identify a reason for the exchange from the set of predefined actions corresponding with the asset type;
provide, to the distributed ledger network, the cryptographic code and the reason for the exchange, wherein providing comprises executing a smart contract, the smart contract comprises program code that causes the distributed ledger network to execute a set of instructions updating the specific asset and the dataset; and
receive, from the distributed ledger network, a confirmation notification indicating a successful association of the unique tracking identifier with the specific asset.
Furthermore, claim 18 of the ’24 patent recites the unique tracking identifier further comprises a subset identifier corresponding to at least one of a duration, biometric information, geolocation information, or a fractional ownership percentage, and wherein the unique tracking identifier further comprises biological or behavioral characteristic information of the specific asset, and claim 20 of the ’24 patent recites retrieving the dataset based on providing the unique tracking identifier of the specific asset from the distributed ledger network and determining each update of a plurality of updates of the dataset associated with the unique tracking identifier. Claim 19 of the ‘024 patent differs since it further recites additional claim limitations, “identify predefined action of the exchange, wherein the predefined action is identified from a set of predefined actions, the set of predefined actions corresponding with a list of actions for exchanging assets of asset type associated with the specific asset;” “generate a unique tracking identifier,” “generate a cryptographic code,” “identify a reason for the exchange from the set of predefined actions corresponding with the asset type;” “provide, to the distributed ledger network, the cryptographic code and the reason for the exchange, wherein providing comprises executing a smart contract, the smart contract comprises program code that causes the distributed ledger network to execute a set of instructions updating the specific asset and the dataset.” However, it would have been obvious to a person of ordinary skill in the art to modify claim 19 of the ‘024 patent by removing the limitations directed to identifying a predefined action and reason for the exchange, as well as executing a smart contract that updates the ledger generally in claim 19 of the present application since the claim of the present application and the claim recited in the ‘024 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
In the instance case, claims 1-8 are directed to a system (‘machine’), claims 9-16 are directed to a method (‘process’), and claims 17-20 are directed to a non-transitory computer-readable storage media. Therefore, these claims fall within the four statutory categories of invention.
Independent Claims 1, 9 and 17
Step 2A Prong One
The claims recite (i.e., sets forth or describes) an abstract idea of tracking assets. Specifically, the following underlined claim elements recite abstract ideas while the nonunderlined claim elements recite additional elements according to MPEP 2106.04(a). The claims recite:
receiving a request for metadata, wherein the metadata is for a specific asset based on executing a cryptographic hash, wherein a cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset;
analyzing a plurality of databases associated with the specific asset based on a unique tracking identifier, wherein the unique tracking identifier comprising a subset of identifiers, the subset of identifiers comprising:
an asset issuer identifier comprising at least a location code identifying a location of an asset issuer;
an asset type identifier comprising a pre-determined code identifying the asset type of the asset issuer;
a subset identifier comprising at least a geolocation of the specific asset, biometric data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership;
analyzing an electronic transaction ledger;
retrieving the metadata from a plurality of databases and the electronic transaction ledger;
providing a confirmation notification comprising the metadata.
More specifically, but for the additional elements, the claims, under its broadest reasonable interpretation, recite the abstract idea because the claims describe a process of organizing and retrieving asset information including receiving a request for data for an asset, looking information for the asset, retrieving asset data and providing the requested data, grouped within “certain methods of organizing human activity” grouping of the abstract ideas. The claim limitations reciting the abstract idea are grouped within the “certain methods of organizing human activity” grouping of abstract ideas because the limitations describe commercial or legal interactions, including advertising, marketing or sales activities or behavior, and business relations. Additionally, the claims recite concepts that can be performed in the human mind, including observations, evaluations and judgements. In particular, the claims recite “receiving….,” “analyzing…,” “analyzing…” “retrieving…” and “providing…” under its broadest reasonable interpretation, characterize an observation, evaluation, judgement, opinion that can be performed in the human mind or with pen and paper, which falls within the “mention processes” grouping of abstract ideas. Furthermore, the limitations, “executing a cryptographic hash” is also an abstract idea grouped within “mathematical concepts” (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations). The claims are still abstract idea because merely combining several abstract ideas does not render the combination any less abstract.
Step 2A Prong Two
This judicial exception is not integrated into a practical application. The non-underlined additional elements of “databases,” “an electronic transaction ledger,” and “at least one processing circuit configured to” recited in claim 1, as well as “one or more non-transitory computer-readable storage media having instructions stored thereon that, when executed by at least one processing circuit, cause the at least one processing circuit to” recited in claim 17, merely use computers as a tool to perform the abstract idea and it amounts to no more than mere instructions to apply the exception using generic computer components. Accordingly, the additional elements, individually and in combination, do not integrate the judicial exception into a practical application. The claims are directed to an abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A, the additional elements merely use computers as a tool to perform the abstract idea and it amounts 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. Viewed as a whole, the additional elements, taken individually and in combination, do not result in the claims, amounting to significantly more than the judicial exception. Therefore, the claims do not provide an inventive concept, and thus, are not patent eligible.
Dependent Claims 2-8, 10-16, 18-20
Claims 2, 10 and 18 recites the following underlined claim elements as abstract ideas while the nonunderlined claim elements recite additional elements according to MPEP 2106.04(a).
wherein the at least one processing circuit is configured to receive a notification indicating an exchange of the unique tracking identifier not on a distributed ledger network and including a reason for the exchange.
As above, the claims further recites the abstract idea of tracking assets including asset exchange. The additional non-underlined element of “a distributed ledger network,” merely uses a computer as a tool to perform the abstract idea and it amounts no more than merely instructions to apply the exception using a generic computer component. Therefore, the claims do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Claims 3, 11 and 19 recite further characteristics of the subset of identifiers. Claims 4 and 12 recite further characteristics of a distributed ledger network. Claims 7 and 15 recite further characteristics of the at least one processing circuit. Claims 8 and 16 recite further characteristics of the specific asset. Therefore, the claims further recite the abstract idea of tracking assets. The claims do not introduce any new additional element. Therefore, the claims do not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Claims 5, 13 and 20 recite the following underlined claim elements as abstract ideas while the nonunderlined claim elements recite additional elements according to MPEP 2106.04(a).
retrieve, from the distributed ledger network, a dataset based on providing the unique tracking identifier of the specific asset; and
determine each update of a plurality of updates of the dataset associated with the unique tracking identifier.
As above, the claim further recites the abstract idea of tracking assets. The claim does not introduce any new additional element. Therefore, the claim does not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Claims 6 and 14 recite the following underlined claim elements as abstract ideas while the nonunderlined claim elements recite additional elements according to MPEP 2106.04(a).
receive a request to report each update of the unique tracking identifier; and
report a timeline of update data of the specific asset based on the unique tracking identifier.
As above, the claim further recites the abstract idea of tracking assets. The claim does not introduce any new additional element. Therefore, the claim does not integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over HOWIE, D. (US 2020/0175623A1 (“HOWIE”)) in view of Chan, S. (US 2015/0019362A1 (“Chan”)).
Per Claims 1, 9 and 17: HOWIE discloses a method performed by at least one processing circuit (¶197), comprising:
receiving a request for metadata (Fig. 14, item 1402; ¶163), wherein the metadata is for a specific asset based on executing a cryptographic hash (Fig. 14, item 1404B, Fig. 18; ¶¶51, 58, 164, 176), wherein a cryptographic code is structured to identify the metadata of the specific asset and uniquely identify the specific asset (Fig. 14, item 1404A; ¶¶58, 163);
analyzing a plurality of databases associated with the specific asset based on a unique tracking identifier (Fig. 1A, Fig. 14; ¶¶27, 58, 83-86, 163-164, 176)…
analyzing an electronic transaction ledger; (Fig. 14; ¶¶58, 86, 150, 163-164)
retrieving the metadata from a plurality of databases and the electronic transaction ledger; (Fig. 14; ¶¶49, 135, 163-164, 173-174, 176)
providing a confirmation notification comprising the metadata. (Fig. 14, Fig. 18; ¶¶86, 89, 138, 163- 165, 176)
Additionally, for claim 1, HOWIE discloses a system, comprising: at least one processing circuit configured to: (Fig. 1A; ¶¶66, 197)
Additionally, for claim 17, HOWIE discloses one or more non-transitory computer-readable storage media having instructions stored thereon that, when executed by at least one processing circuit, cause the at least one processing circuit to: (Fig. 1A; ¶¶66, 194)
HOWIE does not explicitly teach the unique tracking identifier comprising a subset of identifiers, an asset issuer identifier, an asset type identifier, a subset identifier comprising at least a geolocation of the specific asset, data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership.
Chan discloses the unique tracking identifier comprising a subset of identifiers (Fig. 5, Fig. 7; ¶¶11-12, 21, 25, 76-78), an asset issuer identifier (¶¶11-12), an asset type identifier (Chan: ¶¶11-12), a subset identifier comprising at least a geolocation of the specific asset, data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership (Fig. 6; ¶¶11-12, 71, 74-77).
It would have been obvious to one of ordinary skill in the art to include in the method, as disclosed by HOWIE, based on generation of tracking identifier comprising a subset of identifiers, as taught by Chan, 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, and one or ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one or ordinary skill in the art before the effective filing date of the claimed invention to modify HOWIE, for securely recording and tracking assets. (Chan: ¶19)
Howie in view of Chan does not explicitly disclose “a location code identifying a location of an asset issuer,” “a pre-determined code identifying the asset type of the asset issuer,” “biometric data.” However, the limitations, "the subset of identifiers comprising: an asset issuer identifier comprising at least a location code identifying a location of an asset issuer; an asset type identifier comprising a pre-determined code identifying the asset type of the asset issuer; a subset identifier comprising at least a geolocation of the specific asset, biometric data of an asset owner, and an ownership percentage of the specific asset, wherein the ownership percentage tracks fractional ownership", recites non-functional descriptive material language. The limitations describe characteristics of the subset of identifiers and are non-functional because the claimed method does not use or process the characteristics of the subset of identifiers to carry out any steps or functions. Therefore, this descriptive material language will not differentiate the claimed invention from the prior art in terms of patentability.
Per Claims 2, 10 and 18: HOWIE in view of Chan discloses all the limitations of claims 1, 9 and 17.
HOWIE discloses comprising:
wherein the at least one processing circuit is configured to receive a notification indicating an exchange of the unique tracking identifier not on a distributed ledger network and including a reason for the exchange. (¶¶137)
Per Claims 3, 11 and 19: HOWIE in view of Chan discloses all the limitations of claims 1, 9 and 17.
HOWIE discloses comprising:
wherein each identifier of the subset of identifiers has a predetermined length such that the unique tracking identifier is a fixed length and corresponds with the specific asset while stored on a distributed ledger network. (Fig. 17, ¶¶49, 89-134)
Per Claims 4 and 12: HOWIE in view of Chan discloses all the limitations of claims 1 and 9.
HOWIE discloses comprising:
wherein a distributed ledger network is configured with a plurality of nodes, wherein each node of the plurality of nodes stores each dataset associated with each asset on the distributed ledger network. (¶¶58-59)
Per Claims 5, 13 and 20: HOWIE in view of Chan discloses all the limitations of claims 1, 9 and 17.
HOWIE discloses comprising:
retrieve, from the distributed ledger network, a dataset based on providing the unique tracking identifier of the specific asset; and (Fig. 18-23; ¶¶50)
determine each update of a plurality of updates of the dataset associated with the unique tracking identifier. (Fig. 18-23; ¶¶50)
Per Claims 6 and 14: HOWIE in view of Chan discloses all the limitations of claims 1 and 9.
HOWIE discloses comprising:
receive a request to report each update of the unique tracking identifier; and (Fig. 18-23; ¶¶86)
report a timeline of update data of the specific asset based on the unique tracking identifier. (Fig. 18-23; ¶¶86)
Per Claims 7 and 15: HOWIE in view of Chan discloses all the limitations of claims 1 and 9.
HOWIE discloses comprising:
wherein the at least one processing circuit is a node of a plurality of nodes on a distributed ledger network, and wherein the plurality of nodes are interconnected via a peer-to-peer network. (¶¶580
Per Claims 8 and 16: HOWIE in view of Chan discloses all the limitations of claims 1 and 9.
HOWIE discloses comprising:
wherein the specific asset is at least one of a digital currency based on a unit of fiat currency, a physical asset, a financial institution instrument, or confidential information. (Fig. 22; ¶¶186)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Zinder, A. (US 10,097,356B2) teaches a method for providing secure provenance in distributed transaction databases.
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/CHENYUH KUO/Primary Examiner, Art Unit 3697
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