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 .
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: Zero-Knowledge (ZK) rollup components within one or more TEEs comprising at least a sequencer component and a prover component in claims 41-60.
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 and as performing the claimed function, and equivalents thereof.
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.
The Examiner additionally notes that the claims recite significant intended use/intended result language (e.g. “wherein the validity proof attests to the integrity...,” “for posting to a smart contract...thereby securing...,” “wherein hosting the ZK rollup components obviates...,” “wherein the grace period enforces...thereby causing...,” and “thereby providing...”). Such language does not differentiate the claims from the prior art and lacks patentable weight. MPEP 2114 (II) states: "A claim containing a 'recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus' if the prior art apparatus teaches all the structural limitations of the claim,” See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter, 1987). See also Texas Instruments Inc. v. International Trade Commission, 26 USPQ2d 1010 (Fed. Cir. 1993); Amazon.com Inc. v. Barnesandnoble.com Inc., 57 USPQ2d 1747 (CAFC 2001). ("A (whereby/wherein) clause that merely states the result of the limitations in the claim adds nothing to the patentability or substance of the claim"); Griffin v. Bertina, 62 USPQ2d 1431 (Fed. Cir. 2002).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Fig. 2 “API SDK 114” and “User environment 116” and Fig. 4 “ZK rollup contracts 600”. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “Trust handshake & key sharing Sequencer consensus 700” in Fig. 5 has been used to designate both “method steps of TEE’s symmetrically exchanging 700 secret recovery keys 112s” (pg. 6 of the specification) and “microprocessor or GPU 700” (pg. 27). Furthermore, reference character “TEE 300” has been used to designate both the “RCA support 300” (pg. 27) and “TEE 300,” and reference character “user signs and encrypts transaction 800” has been used to designate “runtime code attestation 800,” “secure TEE 800,” and “RCA support 800” (pg. 27) as well as “signing and encrypting transaction 800” (pgs. 7 and 24). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “ZK rollups 100” on pg. 4; “Hardware Secure Enclave 211” on pgs. 5, 9, 12, 14, and 21; “sealed status 325” and “validity proof 335” on pg. 8; “sequencer 212” on pg. 20; and “microprocessor or GPU 700,” “runtime code attestation (RCA) 800,” “RCA support 300,” “secure TEE 800,” and “RCA support 800” on pg. 27. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 41-60 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 41 recites, “a. hosting Zero-Knowledge (ZK) rollup components within one or more Trusted Execution Environments (TEEs), the ZK rollup components comprising at least a sequencer and a prover.” Similarly, claim 51 recites, “b. one or more Trusted Execution Environments (TEEs) operable on the one or more processors; and c. a non-transitory computer-readable medium storing instructions that, when executed by the one or more processors, cause the system to host Zero-Knowledge (ZK) rollup components within the one or more TEEs... ii. as a sequencer component, order...iii. as a prover component, generate...” Figs. 4-5 and pgs. 12-13 of the specification merely disclose the sequencer and prover being “components of the ZK rollup” located within a TEE 300 comprised within a microprocessor 210 of a server 200. However, the specification does not disclose the structure of the sequencer and prover (e.g. software, hardware, a combination, etc.), merely that they are comprised/hosted within TEE 300. Furthermore, pg. 14 of the specification discloses that TEE 300 may be implemented using a CPU, GPU, or “any combination thereof.” Therefore, the structure of the sequencer, prover, and TEE(s) is unclear as they appear to be any number of combinations of various software and hardware (e.g. CPU, GPU, etc.).
Additionally, claims 41 and 51 further recite, “...rollup components within one or more Trusted Execution Environments (TEEs)...c. ordering, by the sequencer within a TEE...d. generating, by the prover within a TEE...” and “b. one or more Trusted Execution Environments (TEEs)...ii. as a sequencer component, order the plurality of user transactions into a transaction batch inside a TEE; iii. as a prover component, generate a single cryptographic validity proof for the entire transaction batch inside a TEE...” respectively. Fig. 4 appears to disclose an embodiment in which both the sequencer and prover are comprised within a single TEE, however, Fig. 5 appears to disclose an embodiment in which the sequencer and prover are comprised within different TEEs on different devices. Therefore, it is also unclear whether the claims are directed to the embodiment in which the sequencer and prover are comprised within a single TEE and device or separate TEEs and devices (e.g. in a “TEE mesh”).
Claims 42-50 and 52-60 are also rejected due to their dependence on at least claim 41 or 51.
Claims 42 and 52 recite, “wherein the one or more TEEs are hosted in a Hardware Secure Enclave in a CPU, GPU, or any combination thereof” and “wherein the one or more TEEs comprise a Hardware Secure Enclave.” However, pgs. 5 and 14 of the specification specifically disclose that the TEEs are themselves Hardware Secure Enclaves (“...wherein said TEE is a Hardware Secure Enclave 211” and “In the present invention, the TEE Hardware Secure Enclave 211 can use a CPU, GPU or any combination thereof.”). Therefore, the claims recite new matter not disclosed in the specification.
Claim 50 recites, “wherein hosting the ZK rollup components obviates the need for creating an additional, separate blockchain network with an independent consensus mechanism.” However, the specification does not disclose the ZK rollup components obviating the need for additional blockchains nor how the ZK rollup components “obviate” the need for additional blockchains. Therefore, the claims recite new matter not disclosed in the specification.
Claim 55 recites, “...an encryption key protected by a provisioner TEE.” Page 25 Step 9 of the specification discloses the sequencer encrypting its state using a TEE key. However, the specification does not specifically disclose that the encryption key is protected by the provisioner TEE nor how the provisioner TEE “protects” the encryption key. Therefore, claim 55 lacks disclosure within the specification of what algorithms are used for performing certain actions within the claims (MPEP 2161.01 I “In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”).
Claims 56-57 are also rejected due to their dependence on at least claim 55.
Similarly, claim 58 recites, “wherein the system allows an operator to upgrade code...” Pages 18-19 of the specification generally disclose a “ZK Rollup TEE Code Upgrade.” However, the specification does not specifically disclose how the system “allows” nor prevents an operator to upgrade TEE code. Therefore, claim 58 lacks disclosure within the specification of what algorithms are used for performing certain actions within the claims (MPEP 2161.01 I “In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”).
Claim 59 is also rejected due to its dependence on at least claim 58.
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 41-60 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 limitations “sequencer” and “prover” in claims 41 and 51 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. 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. For example, Figs. 4-5 and pgs. 12-13 of the specification merely disclose the sequencer and prover being “components of the ZK rollup” located within a TEE 300 comprised within a microprocessor 210 of a server 200. However, the specification does not disclose the structure of the sequencer and prover (e.g. software, hardware, a combination, etc.), merely that they are comprised/hosted within TEE 300. Furthermore, pg. 14 of the specification discloses that TEE 300 may be implemented using a CPU, GPU, or “any combination thereof.” Therefore, the structure of the sequencer, prover, and TEE(s) is unclear as they appear to be any number of combinations of various software and hardware (e.g. CPU, GPU, etc.).
The claims use a placeholder for “means” (e.g. “component”), coupled with a function (e.g. “ordering, by the sequencer...,” “generating, by the prover...,” “as a sequencer component, order...,” and “as a prover component, generate...”), and recite insufficient structure to perform the functions. 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.
Claims 42-50 and 52-60 are also rejected due to their dependence on at least claim 41 or 51.
Claim 49 recites the limitation "the TEE Mesh" in “enabling a blockchain wallet holder to retrieve their specific transaction data from the TEE Mesh.” There is insufficient antecedent basis for this limitation in the claim.
Claim 51 is specifically directed to, “...Zero- Knowledge (ZK) rollup components within the one or more TEEs, the ZK rollup components configured to...” (similar to Fig. 4). However, dependent claims 53-59 appear to be directed to “a plurality of TEEs forming a TEE Mesh” (similar to Fig. 5). Accordingly, it is unclear whether the TEE Mesh is directed to the same system of claim 51 or a different system. Furthermore, claim 51 makes reference ZK rollup components “as a sequencer/prover component” whereas claims 55-59 are directed to “provisioner TEE(s)” and “receiver TEE(s).” It is unclear whether the provisioner/receiver TEEs are separate and distinct from the sequencer/prover components or whether they are a part of the system of claim 51. Therefore, the scope of claims 53-59 is unclear (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).
Conclusion
Due to the numerous issues with claim interpretation and 35 USC 112 noted above, a rejection under the prior art could not reasonably be made. However, the prior art listed below is believed to disclose similar concepts to those claimed and the lack of a rejection under 35 USC 102/103 should not be considered an indication of allowable subject matter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Filter et al. (US 20230376949) generally discloses a multi-layer digital asset distributed ledger system.
Garoffolo et al. (US 20230401226) generally discloses a system and method for creating and maintaining zero-knowledge audit chains.
Jentzsch et al. (US 20240289793) generally discloses systems and methods for validating distributed ledger transactions via a layer 2 service.
Rybakken (US 20240386404) generally discloses a method for a ZK-rollup network for a blockchain governed by ZK-rollup smart contracts.
Wright et al. (USP 12562929) generally discloses a method of using a multi-level data chain protocol to embed a data chain on a core blockchain.
Buterin, Vitalik (“An Incomplete Guide to Rollups”) generally discloses layer-1 and layer-2 scaling utilizing ZK-rollups.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR RAK whose telephone number is (571)270-1575. The examiner can normally be reached Monday-Friday 11:00-7:00 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 at (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.
/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
Prosecution Insights