DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 10/15/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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.
Status of Claims
Claims 1, 3-8, 10-14 are currently pending.
Claims 1, 3-8, 10-14 are rejected as set forth below.
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 .
Response to Arguments
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claim(s) 1, 8 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
Applicant contends Capkun fails to teach or suggest “when the user computing device does not send funds to cover the payment to the network computing device: storing, by the network computing device, the amount of the collateral cryptocurrency to cover the payment”. The Examiner respectfully disagrees. First, it is noted that the limitation is interpreted as the collateral remaining on the network computing device for a period of time when the user computing device has not sent funds to cover the payment. The claims do not specify when the determination of if the user computing device has covered payment occurs in time. See the 35 USC 112(b) rejection. Second, since the claims do not specify when the determination actually occurs, one of ordinary skill in the art could reasonably interpret the limitation as the collateral remaining on the network computing device for the period of time immediately following the collateral being initially provided to the network computing device. In that period of time, the user computing device will not have sent funds to cover the payment.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-8, 10-14 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.
As per claims 1, 8, the limitations “providing, by the user computing device, the amount of the collateral cryptocurrency to the network computing device”, “when the user computing device does not send funds to cover the payment to the network computing device: storing, by the network computing device, the amount of the collateral cryptocurrency to cover the payment” renders the scope of the claim indefinite. It is unclear how collateral that is already provided to, or stored on, the network computing device can be stored onto the network computing device again. For purposes of examination, the limitations will be interpreted as the collateral remaining on the network computing device for a period of time when the user computing device has not sent funds to cover the payment.
By virtue of their dependence, the dependent claims are similarly rejected.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-6, 8, 10-13 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WIPO Patent Application Publication No. 2021048056 to Capkun.
As per claims 1, 8, Capkun teaches:
A method comprising: initiating, by a user computing device of one or more user computing devices of a cryptocurrency collateral system, a payment with a merchant computing device of the cryptocurrency collateral system via a network computing device of the cryptocurrency collateral system, wherein the merchant computing device accepts a desired currency; ([0015], “According to the invention, these aims are achieved by means of a data processing and telecommunication system for executing transactions, wherein the system includes a decentralized blockchain operable as a ledger for storing transactions between a merchant and a customer, a plurality of customer devices and a plurality of merchant devices all operable to communicate over the communication system, and a storage and computational module operable as an Arbiter for executing smart contracts, each customer devices being operable to cause a customer collateral to be controlled by said Arbiter, each customer device being further operable to send an intent to a merchant device, the merchant devices being programmed to execute the transaction after a verification of the customer collateral deposited by a customer having sent such an intent, but before the corresponding transaction is stored in said blockchain, each customer device being further operable to send to said Arbiter a transaction, the merchant devices being further arranged for storing accepted transactions to said blockchain, the smart contract being programmed for forwarding the value of the transaction to the merchant once the transaction is added to the blockchain respectively for recovering that value from the customer’s collateral if a pending transaction does not get stored on the blockchain.”)
determining, by the network computing device, an amount of collateral cryptocurrency required to back the payment; providing, by the user computing device, the amount of the collateral cryptocurrency to the network computing device, locking, by the network computing device, the amount of the collateral cryptocurrency to back the payment; ([0015], [0027], [0035]-[0036], “According to another aspect, the invention is related to a method for executing transactions in a system including a blockchain operable as a ledger for storing transactions between a merchant and a customer, comprising following steps: a customer device causes a customer collateral to be controlled by smart contract executed by a storage and computational module operable as an Arbiter; the customer device sends an intent to a merchant device, the customer collateral of the customer is verified “; “In one preferred embodiment, the collaterals cover all of the authorized customer's purchases. In another embodiment, at least some customers, for example customers with good reputation or who have been honest for years, are allowed to spend more than their collaterals.”)
sending, by the network computing device, an amount of the desired currency to the merchant computing device to complete the payment; ([0015], “the smart contract being programmed for forwarding the value of the transaction to the merchant”; [0079], “A payment from a customer device is initially routed to the account controlled by the Arbiter that logs the approval details into its state and after that forwards the payment value to the account of the receiving merchant device.”)
when the user computing device sends funds to the network computing device to cover the payment: releasing, by the network computing device, the amount of the collateral cryptocurrency; when the user computing device does not send funds to cover the payment to the network computing device: storing, by the network computing device, the amount of the collateral cryptocurrency to cover the payment. ([0015], By definition, collateral is released when the guaranteed transaction is executed.; [0105], “The process is carried out in two steps, first by clearing the customer’s pending transactions and subsequently by returning any remaining collateral. This two-step process allows enough time for any pending settlements to be processed before the collateral is returned to the customer.”; The Examiner notes that the collateral remains in control by the smart contract for a period of time when the user computing device has not sent funds to cover the payment, i.e. the period of time immediately following the collateral being initially provided to the network computing device. In that period of time, the user computing device will not have sent funds to cover the payment.)
As per claims 3, 10¸ Capkun teaches:
wherein the determining the amount of the collateral cryptocurrency is based on one or more of: characteristics of the payment; characteristics of the user computing device; characteristics of the merchant computing device; characteristics of the collateral cryptocurrency; and characteristics of the cryptocurrency wallet. ([0035]-[0036])
As per claims 4, 11¸ Capkun teaches:
wherein the desired currency includes one of: fiat currency; and a cryptocurrency accepted by the merchant computing device. ([0015])
As per claims 5, 12¸ Capkun teaches:
wherein the locking the amount of the collateral cryptocurrency comprises: locking, by the network computing device, the amount of the collateral cryptocurrency in a smart contract of one or more smart contracts of the cryptocurrency collateral system. ([0015])
As per claims 6, 13¸ Capkun teaches:
when the user computing device does not send funds to cover the payment to the network computing device: using, by the network computing device, the amount of the collateral cryptocurrency to cover the payment. ([0062], “According to one aspect, customer collaterals are held by a smart contract stored in and executed by the Blockchain. This smart contract is called Arbiter and enable merchants to safely accept payments before a transaction reaches finality on the chain. If a pending transaction does not get confirmed on the chain (for example in case of double spending attack), the victim merchant can recover the lost funds from the customer’s collateral.”)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over WIPO Patent Application Publication No. 2021048056 to Capkun in view of United States Patent No. 11423398 to Mullins.
As per claims 7, 14¸ Capkun does not explicitly teach, but Mullins teaches:
sending, by the network computing device, the amount of the desired currency to a merchant banking computing device associated with the merchant computing device for deposit therein. (col 5 lines 30-47, “Generally, when a customer and a merchant enter into an electronic payment transaction, the transaction is processed by electronically transferring funds from a financial account associated with the customer to a financial account associated with the merchant. As such, the payment processing service 126 may communicate with one or more computing devices of a payment card network 140 (or “card payment network”), e.g., MasterCard®, VISA®, over network(s) 110 to conduct financial transactions electronically. Payment processing service 126 may also communicate with one or more computing devices of one or more banks, processing/acquiring services, or the like over the network 110. For example, payment processing service 126 may communicate with an acquiring bank, and/or an issuing bank, and/or a bank maintaining customer accounts for electronic payments. Payment processing service 126 may also communicate with, or access customer and merchant accounts maintained by payment service 108.”)
One of ordinary skill in the art would have recognized that applying the known technique of Mullins to the known invention of Capkun would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such financial institution features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to send and deposit fiat currency into a merchant’s financial institution results in an improved invention because applying said technique expands the application of the invention beyond cryptocurrency, thus improving the overall functionality of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
United States Patent Application Publication No. 20210090166 to Bayne discloses a system and method to provide for acquiring a cryptocurrency via an exchange. A cryptocurrency owner's financial transaction is completed by another in exchange for an amount of cryptocurrency equal to the cost of completing the financial transaction, plus a premium, when the financial transaction cannot be paid for using the cryptocurrency owner's cryptocurrency.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619