Prosecution Insights
Last updated: August 17, 2026
Application No. 19/469,787

METHODS PERFORMED BY A COMPUTING DEVICE

Non-Final OA §103
Filed
Sep 26, 2025
Priority
Mar 28, 2023 — GB 2304523.0 +1 more
Examiner
KUO, CHENYUH
Art Unit
3697
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Nchain Licensing AG
OA Round
1 (Non-Final)
74%
Grant Probability
Favorable
1-2
OA Rounds
1y 10m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allowance Rate
181 granted / 246 resolved
+21.6% vs TC avg
Strong +52% interview lift
Without
With
+52.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
16 currently pending
Career history
262
Total Applications
across all art units

Statute-Specific Performance

§101
26.3%
-13.7% vs TC avg
§103
35.2%
-4.8% vs TC avg
§102
7.9%
-32.1% vs TC avg
§112
27.1%
-12.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 246 resolved cases

Office Action

§103
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 1-19 are pending. Claims 1-19 have been examined. Priority Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Information Disclosure The information disclosure statement(s) (IDS) 09/26/2025 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. 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 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. The factual inquiries 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. 1, 3-10, 12-16 and 21 Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Botta et al. (“Towards Data Redaction in Bitcoin”, IEEE TRANSACTIONS ON NETWORK AND SERVICE MANAGEMENT, IEEE, vol. 19. No.4, 4, DECEMBER 2022, pages 3872-3883), (“Botta”)) in view of Pratkanis, A. (US 2020/0174990A1 (“Pratkanis”)). Per Claims 1, 18 and 19, Botta discloses a method performed by a computing device, the method comprising: (sec. V.A, pages 3879-3880) …to a node of a blockchain network, … indicating that data in a transaction of a plurality of transactions, stored by the node and associated with a blockchain, should not be distributed by the node; (sec. I.B, 1st paragraph, p.3873, left col) receiving, from the node, a zero knowledge proof proving removal of the data from the transaction in compliance with the data distribution control message; (sec. I.C., item 3), page 3874, left col) generating a recordal transaction, the recordal transaction comprising evidence of removal of the data from the transaction in compliance with the data distribution control message; and (sec. I.C., items 1)- 3) ), page 3874, left col) transmitting the recordal transaction to the node for committal to the blockchain. (sec. I.C., item 4), page 3874, left col) Additionally, for claim 18, Botta discloses a non-transitory computer-readable medium storing processor-executable instructions, the processor-executable instructions including instructions that, when executed by one or more processors, cause the one or more processors to perform a method comprising…(sec. V.A, pages 3879-3880) Additionally, for claim 19, Botta discloses a computing device, the computing device including: one or more processors; memory storing computer-executable instructions that, when executed by the one or more processors, cause the processors to perform a method comprising:… (sec. V.A, pages 3879-3880) Botta discloses a node of a blockchain network and indication of data in a transaction of a plurality of transactions, stored by the node and associated with a blockchain, should not be distributed by the node (sec. I.B, 1st paragraph, p.3873, left col). However, Botta does not explicitly disclose transmit a data distribution control message triggering removal of transaction data. Pratkanis discloses transmitting a data distribution control message indicating that data in a transaction of a plurality of transactions, stored by the node and associated with a blockchain, should not be distributed by the node. (¶¶17, 69-70, 74, 80) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta to incorporate the teachings of data control mechanism triggering data redaction, as disclosed in Pratkanis, to meet data protection laws such as GDPR (Pratkanis: ¶17) and to improve the performance of redaction (Pratkanis: ¶119). Additionally, regarding the recitation, “…the data distribution control message indicating that data in a transaction of a plurality of transactions…should not be distributed by the node,” the language, “should not be distributed”, does not further describe a previous act of distributing. Nor are they a method step performed by the node. Therefore, the language will not differentiate the claim from the prior art. Per Claim 2, Botta in view of Pratkanis discloses all the limitation of claim 1. Botta discloses: wherein the evidence comprises the zero knowledge proof. (sec. I.C., 1st paragraph after item 4), page 3874, left col) Per Claim 3, Botta in view of Pratkanis discloses all the limitations of claim 1. Botta discloses: wherein the evidence comprises a commitment of the zero knowledge proof. (sec. I.C., 1st paragraph after item 4), page 3874, left col) Per Claim 4, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein the evidence comprises the data distribution control message. (Fig. 10, item 990, Fig. 12; ¶¶70, 72-73, 80, 83) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Per Claim 5, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein the evidence comprises a commitment of the data distribution control message. (Fig. 10, item 990, Fig. 12; ¶¶70, 72-73, 80, 83) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Per Claim 6, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein at least a portion of the evidence is stored in an output of the recordal transaction. (¶¶102) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Furthermore, note that the recitations, “wherein at least a portion of the evidence is stored in an output of the recordal transaction”, are intended use language. Therefore, this intended use language will not differentiate the claimed invention from the prior art in terms of patentability. (MPEP §2103 I C, 2114) Per Claim 7, Botta in view of Pratkanis discloses all the limitations of claim 6. Pratkanis discloses: wherein the output is a spendable output of the recordal transaction. (¶¶64, 79, 102) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Additionally, note the expression, "t wherein the output is a spendable output of the recordal transaction ", recites non-functional descriptive material language. The limitation describes characteristics of the output and is non-functional because the claimed method does not use or process the characteristics 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 Claim 8, Botta in view of Pratkanis discloses all the limitations of claim 6. Pratkanis discloses: wherein the output is an unspendable output of the recordal transaction. (¶¶64, 79, 102) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Additionally, note the expression, "wherein the output is a unspendable output of the recordal transaction", recites non-functional descriptive material language. The limitation describes characteristics of the output and is non-functional because the claimed method does not use or process the characteristics 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 Claim 9, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein at least a portion of the evidence is stored in an input of the recordal transaction. (¶¶64, 79, 102) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Furthermore, note that the recitations, “wherein at least a portion of the evidence is stored in an input of the recordal transaction”, are intended use language. Therefore, this intended use language will not differentiate the claimed invention from the prior art in terms of patentability. (MPEP §2103 I C, 2114) Per Claim 10, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein the recordal transaction comprises metadata associated with the removal of the data from the transaction. (¶¶97) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Per Claim 11, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein the recordal transaction does not include a signature of data comprising a spendable output of the transaction. (Fig. 22, item 2290; ¶100) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Additionally, note the expression, "wherein the recordal transaction does not include a signature of data comprising a spendable output of the transaction", recites non-functional descriptive material language. The limitation describes characteristics of the recordal transaction and is non-functional because the claimed method does not use or process the characteristics 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 Claim 12, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein a spendable output of the transaction assigns a value of a digital asset to an entity, and the recordal transaction comprises a spendable output which reassigns the value of the digital asset to a different entity. (Fig. 9; ¶79) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Furthermore, note that the recitations, “wherein a spendable output of the transaction assigns a value of a digital asset to an entity, and the recordal transaction comprises a spendable output which reassigns the value of the digital asset to a different entity”, are intended use language. Therefore, this intended use language will not differentiate the claimed invention from the prior art in terms of patentability. (MPEP §2103 I C, 2114) Per Claim 13, Botta in view of Pratkanis discloses all the limitations of claim 1. Pratkanis discloses: wherein the data distribution control message indicates that data in multiple transactions of the plurality of transactions should not be distributed by the node. (¶¶17, 69-70, 74, 80) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified a method of Botta in view of Pratkanis to incorporate the teachings of accountable redactable data structures, as disclosed in Pratkanis, to improve the performance of redaction (Pratkanis: ¶119). Additionally, regarding the recitation, “wherein the data distribution control message indicates that data in multiple transactions of the plurality of transactions should not be distributed by the node,” the language, “should not be distributed”, does not further describe a previous act of distributing. Nor are they a method step performed by the node. Therefore, the language will not differentiate the claim from the prior art. Per Claim 14, Botta in view of Pratkanis discloses all the limitations of claim 13. Botta discloses: receiving, from the node, a plurality of zero knowledge proofs, each zero knowledge proof of the plurality of zero knowledge proofs proving removal of the data from a respective transaction of the multiple transactions in compliance with the data distribution control message; (sec. IV. E) generating one or more recordal transactions to provide evidence of removal of the data from the multiple transactions in compliance with the data distribution control message; and (sec. IV. E) transmitting the one or more recordal transactions to the node for committal to the blockchain. (sec. IV. E) Per Claim 15, Botta in view of Pratkanis discloses all the limitations of claim 1. Botta discloses: wherein the computing device is external to the blockchain network. (sec. V.A, pages 3879-3880; sec. I.B. 1st paragraph p.3873, left col) Additionally, note the recitation, "wherein the computing device is external to the blockchain network", recites non-functional descriptive material language. The limitation describes characteristics of the recordal transaction and is non-functional because the claimed method does not use or process the characteristics 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 Claim 16, Botta in view of Pratkanis all the limitations of claim 1. Botta discloses: wherein the zero knowledge proof is a zkSNARK (Zero-Knowledge Succinct Non-Interactive Argument of Knowledge) proof. (sec III. C; page 3876-3877) Per Claim 17, Botta in view of Pratkanis discloses all the limitations of claim 1. Botta discloses: wherein the zero knowledge proof provides proof that only the indicated data has been removed from the transaction, and that the node has not removed or modified any other data of the transaction. (sec. I.C., items 1)- 3)) Conclusion The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Ateniese et al. (US 10,348,707B2) teaches rewritable blockchain. Anderson et al. (US 10,171,509B2) teaches filtering and redacting blockchain transactions. A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENYUH KUO whose telephone number is (571)272-5616. The examiner can normally be reached on Monday-Friday 8-4 PM EST. 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, John W. Hayes can be reached on ((571)272-6708. 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. /CHENYUH KUO/Primary Examiner, Art Unit 3697
Read full office action

Prosecution Timeline

Sep 26, 2025
Application Filed
Jul 31, 2026
Non-Final Rejection mailed — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12682293
INFORMATION PROCESSING APPARATUS, INFORMATION PROCESSING METHOD, AND STORAGE MEDIUM
2y 6m to grant Granted Jul 14, 2026
Patent 12682351
METHOD AND SYSTEM FOR PAYMENT CARD AUTHENTICATION
2y 4m to grant Granted Jul 14, 2026
Patent 12682344
MULTI-PATH COMMUNICATION OF ELECTRONIC DEVICE SECURE ELEMENT DATA FOR ONLINE PAYMENTS
2y 3m to grant Granted Jul 14, 2026
Patent 12682018
SYSTEM AND METHOD FOR AUTOMATIC MARK MANAGEMENT ON THE BLOCKCHAIN
2y 2m to grant Granted Jul 14, 2026
Patent 12670462
Decentralized Shipping Network Using Blockchains
1y 11m to grant Granted Jun 30, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
74%
Grant Probability
99%
With Interview (+52.4%)
2y 9m (~1y 10m remaining)
Median Time to Grant
Low
PTA Risk
Based on 246 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month