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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 15, 2025, has been entered.
Acknowledgements
This Office Action is in reply to the request for continued examination and the amendment filed on September 15, 2025. Claims 1-2, 7-8, 10-12, and 17-23 are currently pending and have been examined. Claims 3-6, 9, 13-16 and 24-48 have been cancelled by Applicant.
Response to Arguments
With respect to the 103 rejections, Applicant argues, on pages 6-7 of the remarks, that the amendments create a distinction is from the prior art that “the claimed output component must indicate which input action to perform on the input component,” and that “this requires the output component to provide specific, actionable guidance about individual input actions, not general procedural or informational displays.” Applicant argues that neither of the cited references teach the “input action” as claimed. Applicant further argues, on page 10 of the remarks, that Frank’s guidance system operates exclusively at the business workflow level, regardless of whether its display panels are electronically connected or disconnected and that workflow guidance tells users what type of business operation to perform next in a multi-step process, but never tells users which specific input action to take on an input component.
The examiner respectfully disagrees and notes that neither the claims nor the specification provide specific details or definitions of “actionable guidance” provided by the output component and/or “input actions” by the user. The specification does not provide any details on what an “input action” includes.
Frank teaches display panels 102 and 110 (i.e., output component) electronically disconnected from [main] IC and adapted to receive a data piece indicative of a data string and presenting to a user a representation of said data piece (FIG. 5; [0022]) “the display panel provides guided procedure to the user: FIGs. 2,3; [0019]-[0020)]) (i.e., indicates to said user which input action to perform on the input component,) and that the output component is electronically disconnected from the keyboard ([0023]: “display panel(s) and/or the keypad may be located wherever desired on the keyboard or on an extension (attached or unattached to the keyboard itself) of the keyboard.”). Frank, at least in [0018] teaches that the keys of an input panel may be associated with a stored value (i.e., input actions) which can be inputted with the touch of the key into whatever document and/or application is open. Therefore, the examiner notes that by broadest reasonable interpretation, the “guided procedure” provided by display panels 102 and 110 (i.e., output component) to a user, as taught by Frank reads on the claimed “input action.”
Applicant further argues, on pages 7-9 and 11 of the remarks, that the cited references address different technical problems in different domains, and provide no suggestion that they should be combined to create input action guidance for electronically isolated cryptocurrency devices. Applicant further argues that the proposed combination of Frank with Dvorak/Yuan fails under KSR for lack of motivation in the prior art, hindsight-based motivation, incompatible technical domains and changing principle of operation.
The examiner respectfully disagrees and notes that for prior art combination it is not required that the prior art provide a motivation to combine. MPEP provides various rationales that may support a conclusion of obviousness, one of which is suggestion or motivation provided in the prior art (See MPEP 2143.I (G). As per the present Application, Dvorak/Yuan provide a wallet device using a QR code for scanning the signed transaction. Frank teaches an output component that represents to the user a guide on which input action to perform on the input component. The motivation to combine is combining prior art elements (i.e., display panel of Frank) according to known methods (i.e. providing guidance to a user for entering input using a keyboard) to yield predictable results(i.e., alleviate user confusion when using the keyboard) (See MPEP 2143.I (A).
In addition, the examiner notes that further arguments are moot in light of new grounds of rejection.
Claim Rejections - 35 U.S.C. § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claims 1, 7-8, and 18–22 are rejected under 35 U.S.C. § 103 as being unpatentable over Dvorak et al. (US 2015/0324789 A1) (“Dvorak”), in view of Yuan et al. (US 2019/0080318 A1) (“Yuan”), Frank (US 2009/0167688 A1) and Takai (US 20160149895 A1) (“Takai”)
As per claim 1, Dvorak discloses [a] digital wallet device (fig. 1, 10) for storing and managing cryptocurrency, (figs. 1–3; [0019] “the secure device”) and comprising:
a cryptocurrency management integrated circuit (IC) (figures 1–3; [0019]; fig. 17; [0158] “the functional block diagram 350 provides a simplified view of the circuitry for performing the functions of secure device 10”);
a non-transitory computer readable storage medium ([0050] “digital storage element”) mounted on said cryptocurrency management IC and storing a private key of a cryptocurrency and a public key of said cryptocurrency ([0050]; [0056]; [0005]);
an input component comprising a keyboard ([0050] “key pad 16”) or a touchscreen ([0055] “use the keypad 16 to receive input from the user”);
at least one processor ([0056] “microprocessor 360”; [0055]) mounted on said cryptocurrency management IC, said at least one processor of said cryptocurrency management IC is configured for:
(i) receiving the data string through the keyboard or the touchscreen, (using keypad 16 to receive input: [0055])
(ii) executing transaction code to create a transaction of said cryptocurrency based on said data string, (performing transaction based on input: [0055])
(iii) sign said transaction using said private key ([0056] “signing transactions”); and
a unidirectional communication hardware ([0053] “display screen 12”) for sending said transaction to a communication device which is connected to a network for broadcasting said transaction via the network;
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to implement device of Dvorak to use keypad for entry of destination address (i.e., instead of QR code containing destination address). One would have been motivated to do so in order to reduce the cost of the device.
Yuan teaches another method to communicate transaction information. Specifically, Yuan teaches creating a signed transaction at a first terminal, displaying a QR code of the signed transaction on the first terminal, and using a second terminal to scan the QR code and transmit the signed transaction (figs. 2(a)–2(d); [0049]–[0052]). Therefore, Yuan teaches a method to communicate transaction information including a first terminal that does not need a transceiver to do so.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak to not include the transceiver, but instead to include another method to communicate the created transaction information, i.e., by creating the signed transaction and displaying the signed transaction as a QR code, as taught by Yuan. One would have been motivated to do so in order to reduce the cost of the device.
Furthermore, Dvorak/Yuan does not expressly disclose an output component electronically disconnected from said input component and adapted to receive a data piece indicative of a data string and presenting to a user a representation of said data piece, wherein said representation indicates to said user which input action to perform on the input component, and that the keyboard or touchscreen is receiving the data string from the user in response to said representation indicating which input action to perform.
Frank teaches an output component electronically disconnected from [main] IC ([0023]: “display panel(s) and/or the keypad may be located wherever desired on the keyboard or on an extension (attached or unattached to the keyboard itself) of the keyboard.”) and adapted to receive a data piece indicative of a data string and presenting to a user a representation of said data piece (FIG. 5; [0022] “The keypad 500 may consist of hard and/or soft keys … the remaining keys 504, 506, 508, 510, 512, 514, 516, and 518, concern specific predetermined and/or dynamically set values … then the remaining keys 504 et seq. are set to another set of values … for example, top customer names and data, user company data, sales data, dynamically saved value data ( e.g., a numerical string such as a dollar total for a purchase order)”; [0018] “FIG. 1 shows an example keyboard 100 having a display panel 102, function keys 104, data entry keys 106, cursor control 108, another display panel 110, and a keypad 112. In embodiments of the present invention, not all of these features need be included on the keyboard. In embodiments of the present invention, the various keys for any of the features may be hard or soft entry devices or buttons … the keypad 112 may contain soft keys, i.e., touch keys appearing on an input-display screen. The key(s) may be associated with a stored value which can be inputted with the touch of the key into whatever document and/or application is open”);
said representation indicates to said user which input action to perform on the input component, ([0018] “the remaining steps may be lighted to indicate or highlight the next steps.” [0019]: “such navigation is useful to track so that a user, when in the middle of a complex and/or unwieldy procedure, can see the next steps.” “the display panel provides guided procedure to the user: FIGs. 2,3; [0019]-[0020)]) (i.e., indicates to said user which input action to perform on the input component.)
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Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan to include an output component as taught by Frank. One would have been motivated to do so in order to simplify entry of complex data strings.
Dvorak/Yuan/Frank does not expressly disclose the keyboard or touchscreen is receiving the data string from the user in response to said representation indicating which input action to perform.
Takai teaches the keyboard or touchscreen is receiving the data string from the user in response to said representation indicating which input action to perform. (“the notified hint display unit 208 displays character types that compose the corresponding registered user ID or registered password by each character, in an entry field of the unmatched input user ID or input password: FIG. 3, S109, [0045], combination result key and combination result screen are displayed: FIG. 3, S110, S11: [0048], user inputs ID and password: FIG. 3 S112: [0052])
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank to include an execution procedure as taught by Takai to receive input from user in response to a hint display provided to the user by the output component. One would have been motivated to do so in order to assist the user with data entry.
The examiner notes that the claim recitation "wherein said keyboard or touchscreen is adapted for receiving the data string from the user...” indicates intended use of the keyboard or touchscreen and therefore does not further limit the scope of the claim because the function "receiving" is not positively recited.
As per claim 7, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, wherein said communication device is a mobile device; and said broadcasting is done by a software application installed on said mobile device (Dvorak, [0053]; note: the structure of the communication device is outside the scope of the claimed “digital wallet device of claim 1,” and is therefore not afforded patentable weight; alternatively, see also Yuan, figs. 2(a)–2(i)).
As per claim 8, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, wherein said data string comprising at least one of a destination account address for said transaction and an amount for said transaction (Dvorak, [0055]).
As per claim 18, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, wherein said private key is further sent via said unidirectional communication hardware (Dvorak, [0053] [0058]; note: limitation “private key is further sent” represents what the device does, not what the device is, and therefore does not achieve a structural difference (see MPEP 2114 II.); note: “private key” is nonfunctional descriptive data and therefore is not afforded patentable weight).
As per claim 19, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, wherein said at least one processor is further executing code to create a message request based on said data string and to sign said message request using said private key (Dvorak, [0056]); and said message request is sent by said unidirectional communication hardware to said communication device for transmitting to a smart contract capable of managing cryptocurrency based on said public key (Yuan, figs. 2(a)–2(g); note: “for transmitting …” is intended use language not afforded patentable weight).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank to send message request via the unidirectional hardware in order to effect on offline transfer of the message request, as taught by Yuan.
As per claim 20 Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, wherein said at least one processor is further executing code to create a cryptocurrency rule or definition and to sign said rule or definition using said private key (Dvorak, at least [0020] [0084]; creating rule or definition, e.g., what signatures are required to redeem transaction output in a locking script, is inherent to transaction with multi-signature).
As per claim 21, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, wherein said at least one processor is further executing code to create policy for a multi-signature scheme and to sign said policy using said private key (Dvorak, at least [0020] [0084]; creating policy, e.g., what signatures are required to redeem transaction output in a locking script, is inherent to transaction with multi-signature); and said policy is sent (Dvorak, [0052] [0058]; note: limitation “said policy is sent” represents what the device does, not what the device is, and therefore does not achieve a structural difference (see MPEP 2114 II.)).
Nevertheless, Yuan teaches transaction policy is sent by [a] unidirectional communication hardware to [a] communication device (figs. 2(a)–2(g)).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank to send transaction with policy via the unidirectional hardware in order to effect on offline transfer of the transaction/policy, as taught by Yuan.
As per claim 22, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 21, wherein said multi-signature scheme is based on one of standard blockchain multi-signature and encryption key splitting mechanism (Dvorak, at least [0084].
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over Dvorak/Yuan/Frank/Takai in view of Suer et al. (US 6,431,439 B1) (“Suer”).
As per claim 2, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1. Dvorak/Yuan/Frank/Takai teaches does not expressly teach, wherein said unidirectional communication hardware includes a data diode.
However, Suer teaches wherein said unidirectional communication hardware includes a data diode. (Suer, 10:44–47).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank/Takai to include the data diode of Suer. One would have been motivated to do so in order to communicate data to a device unequipped with a camera, yet equipped with an appropriate receiver.
Claims 10, 12, and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Dvorak/Yuan/Frank/Takai, in view of van de Ruit et al. (US 10,891,384 B2) (“van de Ruit”).
As per claim 10, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, but does not disclose further comprising: a removable non-transitory computer readable storage medium storing said transaction code.
van de Ruit teaches a removable non-transitory computer readable storage medium storing said transaction code (van de Ruit, 2:38).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank/Takai to include medium of van de Ruit. One would have been motivated to do so in order to pass transaction data using a sneaker-net.
As per claim 12, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, but does not teach further comprising a hardware security module (HSM) storing said private key.
van de Ruit teaches a hardware security module (HSM) storing said private key (van de Ruit, fig. 1c).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank/Takai to include module of van de Ruit. One would have been motivated to do so in order to strengthen security of private key storage.
As per claim 17, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, but does not teach wherein said at least one processor is further executing code to create said private key and said public key.
van de Ruit teaches wherein at least one processor is further executing code to create said private key and said public key (van de Ruit, 8:27–28).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank/Takai to include key generation taught by van de Ruit in order to create keys internally, thereby improving security by eliminating outside communication of keys.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Dvorak/Yuan/Frank/Takai, in view of Hawkins et al. (US 2009/0152339 A1) (“Hawkins”).
As per claim 11, Dvorak/Yuan teaches the digital wallet device of claim 1, wherein said non-transitory computer readable storage medium (Dvorak, [0050]; [0056]; [0005]).
Dvorak/Yuan does not expressly teach the medium includes a removable write-only data storage card.
Hawkins teaches medium includes a removable write-only data storage card ([0021]).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify device of Dvorak/Yuan/Frank/Takai to include medium of Hawkins. One would have been motivated to do so in order to secure the device against virus and hacking codes (Hawkins, [0021]).
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over Dvorak/Yuan/Frank/Takai, in view of Cheng et al. (US 2018/0262341 A1) (“Cheng”).
As per claim 23, Dvorak/Yuan/Frank/Takai teaches the digital wallet device of claim 1, but does not expressly teach further comprising a mechanical input component for reading mechanically encoded data, wherein said creation of said transaction is further based on said mechanically encoded data.
However, Cheng teaches any mechanization and/or embodiment allowing a processor to affect the storage and/or retrieval of information is regarded as memory, including storage devices are provided by a paper punch tape or paper punch card mechanism.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to modify storage of input data in Dvorak/Yuan/Frank/Takai to include mechanical means, as taught by Cheng. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself – that is in the substitution of the electrical input of Dvorak/Yuan for the mechanical input of Cheng. Thus, the simple substitution of one known element for another, producing predictable results, renders the claim obvious.
Conclusion
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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698