Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to applicant's communication of September 4, 2025. The rejections are stated below. Claims 1, 3-4, 7, 9-10, 13, and 15-16 are pending and have been examined.
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/4/2025 has been entered.
Response to Amendment/Arguments
3. Applicant’s arguments concerning 35 U.S.C. 101 have been considered but are not persuasive. Applicant argues “The Examiner has alleged that the claims are directed to an abstract idea. Office Action, page 4. Applicant disagrees. First, claims 1, 3-4, 7, 9-10, 13, and 15-16 do not merely recite an abstract idea. Rather, claims 1, 3-4, 7, 9-10, 13, and 15-16 recite sequentially converting multiple digital assets to fiat currency until the end user possesses a sufficient number of fiat currency units for the merchant transaction. And second, the claims as a whole do not fall within any of the specified groupings or sub- groupings”.
Examiner acknowledges that the claims recite a sequence of steps. The inquiry under Step 1 of the Alice framework, however, is to determine the "focus" or "character as a whole" of the claim. The concept of obtaining funds from multiple sources in a specific order to satisfy a financial obligation is a fundamental economic practice. This practice includes managing a hierarchy of accounts, liquidating assets based on a predetermined plan, and applying the proceeds to a debt. The claim recites this fundamental concept using functional language such as "receiving," "determining," "retrieving," and "executing a conversion." The use of a sequential process to manage financial resources is an established method of organizing human activity. Therefore, the claim is directed to this abstract idea.
4. Applicant argues “Rather, claims 1, 3-4, 7, 9-10, 13, and 15-16 are directed to advantageously reducing network bandwidth and network load and accurately representing a real-time value or worth of a digital asset”.
Examiner's review of the claim language does not identify limitations that are necessarily tied to a technical improvement in computer functionality. The claim recites steps such as transmitting API requests and updating data objects, which are standard functions of computer networks when performing data retrieval and processing. The alleged benefits of "reducing network bandwidth and network load" are not recited in the claim as a solved technical problem. The claim describes a process for funding a transaction, and any effect on network load is an potential outcome of performing the process, not the subject of the claim itself. Similarly, "accurately representing a real-time value" describes a goal of data accuracy inherent in any system that uses real-time data feeds; it is not a recited improvement to the measurement or calculation capabilities of the computer system.
5. Applicant argues “However, assuming, arguendo, that claims 1, 3-4, 7, 9-10, 13, and 15-16 are considered to be directed to an abstract idea, claims 1, 3-4, 7, 9-10, 13, and 15-16 integrate the claimed elements into a practical application for advantageously reducing network bandwidth and network load and accurately representing a real-time value or worth of a digital asset”.
Examiner acknowledges the Applicant's contention that the claim integrates the abstract idea into a practical application. The analysis under Step 2 of Alice requires an examination of whether the additional elements recited in the claim reflect an invention that amounts to significantly more than the abstract idea itself. The claim recites a series of steps including receiving a pre-configuration, receiving an authorization request, retrieving account balance data objects, determining if a threshold is satisfied, and conditionally transmitting API requests to execute conversions. These steps describe a process for managing financial resources. The components used to effectuate this process, such as processors, API requests, and data objects perform functions of data retrieval, communication, and data updating. The asserted benefits of "reducing network bandwidth and network load" and "accurately representing a real-time value" describe potential outcomes or goals of the process. The claim language does not recite a specific mechanism or alteration in system architecture that is directed to achieving these outcomes as a technical solution. The claim is directed to the outcome of a completed transaction funded through a sequence of conversions, not to an improvement in the functioning of the network or data accuracy itself. The steps are organized to achieve the economic result of satisfying a payment obligation, not to solve a problem in network efficiency or data representation.
6. Applicant argues “Applicant further submits that claims 1, 3-4, 7, 9-10, 13, and 15-16 integrate any alleged abstract idea into a practical application”.
The claim describes a process that begins with receiving a pre-configuration and an authorization request and concludes with transmitting a response. The steps between these points detail a method for managing and converting financial assets. The use of computers is instrumental in performing this method. The Supreme Court in Alice cautioned that merely requiring a computer to perform an abstract idea "does not transform the abstract idea into a patent-eligible invention." The claim uses computers as tools to execute the steps of the financial practice more efficiently. This use of a computer as a tool to automate a manual process is an application of the abstract idea, but it is not a "practical application" that imposes a significant limitation on the idea itself for the purposes of the § 101 analysis.
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.
7. Claims 1, 3-4, 7, 9-10, 13, and 15-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of funding of a merchant transaction without significantly more.
The Examiner has identified independent method Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent claims 7 and 13.
Claims 1, 3-4, 7, 9-10, 13, and 15-16 are directed to a method which is one of the four statutory categories of invention (Step 1: YES).
Claim recites a computer-implemented method comprising:
receiving, by …, a pre-configuration of a plurality of … and a plurality of associated precedence levels from an end user , the plurality of … comprising at least one … and at least one …;
receiving, by the one or more …, an authorization request data object originating from …, the authorization request data object describing a merchant transaction involving the end user and fiat currency unit threshold;
retrieving, by one or more using …, a first account balance data object corresponding to a fiat currency user account associated with the end user;
determining, by one or more … and using the first account balance data object, whether a balance of the fiat currency user account satisfies the fiat currency unit threshold of the merchant transaction;
responsive to determining that the balance of the fiat currency user account does not satisfy the fiat currency unit threshold of the merchant transaction:
retrieving, by one or more …, a second account balance data object corresponding to a first … pre-configured by the end user and specific to … associated with a first precedence level pre-configured by the end user;
transmitting, responsive to an … for a first configurable time period, by the …, a first conversion rate … request comprising an indication of the … and an identifier … associated with the end user;
receiving, by the …, a first conversion rate … response comprising a first real-time conversion rate between the first … and the fiat currency;
automatically executing, by one or more …, a first digital asset conversion based at least in part on transmitting a conversion execution … query … to automatically initiate a first debit a first number of digital asset units from the first …and a credit of a first number of fiat currency units to the fiat currency …; and
updating by one or more …, the first account balance data object according to the first digital asset conversion;
responsive to determining that the balance of the fiat currency user account still does not satisfy the fiat currency unit threshold of the merchant transaction:
retrieving, by the …, a third account balance data object corresponding to a second … pre-configured by the end user and specific to a second … associated with a second precedence level pre- configured by the end user, wherein the second precedence level is lower than the first precedence level;
transmitting, responsive to an … for the first configurable time period, by the …, a second conversion rate … request comprising an indication of the second … and the identifier … associated with the end user;
receiving, by the …, a second conversion rate … response comprising a second … conversion rate between the second … and the fiat currency;
automatically executing, by the …, an off-chain transaction comprising a second debit of a second number of digital asset units from the second internally-custodied digital asset user account and a credit of a second number of fiat currency units to the fiat currency user account, wherein each of the first debit of the first number of digital asset units from the first externally custodied digital asset user account and the second debit of the second number of digital asset units from the second internally-custodied digital asset user account are executed within a second configurable time period after receiving the authorization request data object;
updating, using the …, the first account balance data object according to off-chain transaction; and
responsive to determining that the balance of the fiat currency user account satisfies the fiat currency unit threshold of the merchant transaction:
transmitting, by one or more …, a response data object to the merchant device, the response data object comprising an authorization of the merchant transaction based at least in part on the balance of the fiat currency user account resulting from the first digital asset conversion and the off-chain transaction and described by the first account balance data object.
These limitations (with the exception of italicized limitations) describe an abstract idea of funding of a merchant transaction and corresponds to Certain Methods of Organizing Human Activity (sales activities or business relations). Accordingly, claim 1 recites an abstract idea (Step 2A: Prong 1: YES).
8. The claim also recites as additional elements such as “one or more processors, digital, merchant device, API, automatically executing, by the one or more processors, automated timing trigger” which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 1 recites an abstract idea without a practical application (Step 2A - Prong 2: NO).
9. Further, as the additional elements of claim 1 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 1 is not patent eligible (Step 2B: NO).
10. Claims 7 and 13 also recite the abstract idea of idea of funding of a merchant transaction and corresponds to Certain Methods of Organizing Human Activity (sales activities or business relations) step one of step 2A (MPEP 2106.04). Claim 7 includes the additional elements of “a system comprising one or more memory storage areas and one or more processors, the system configured, digital, merchant device, API, real-time, automatically executing, ”. Claim 13 includes the additional elements of “a computer program product comprising at least one non-transitory computer-readable storage medium having computer-readable program code portions stored therein, the computer-readable program code portions comprising executable portions configured, digital, merchant device, API, automatically executing”. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. Therefore, as they do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
11. Claim 3 recites “wherein executing the first … asset conversion comprises determining the first number of …asset units for the first debit based at least in part on the balance of the fiat currency user account, the fiat currency unit threshold of the merchant transaction, and the first … conversion rate between the first … asset and the fiat currency” which further define the abstract idea. The claim includes “digital and real-time” as an additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
12. Claim 4 recites “wherein the first number of … asset units for the first is determined further based at least in part on one or more conversion limits associated with the end user and/or the … asset” which further define the abstract idea. The claim includes “digital” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
13. Claim 9 recites “wherein executing the first … asset conversion comprises determining the first number of …asset units for the first debit based at least in part on the balance of the fiat currency user account, the fiat currency unit threshold of the merchant transaction, and the first … conversion rate between the first … asset and the fiat currency” which further define the abstract idea. The claim includes “digital and real-time” as an additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
14. Claim 10 recites “wherein the first number of … asset units for the first is determined further based at least in part on one or more conversion limits associated with the end user and/or the … asset” which further define the abstract idea. The claim includes “digital” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
15. Claim 15 recites “wherein executing the first … asset conversion comprises determining the first number of …asset units for the first debit based at least in part on the balance of the fiat currency user account, the fiat currency unit threshold of the merchant transaction, and the first … conversion rate between the first … asset and the fiat currency” which further define the abstract idea. The claim includes “digital and real-time” as an additional elements. The additional elements do no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as they no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field.
16. Claim 16 recites “wherein the first number of … asset units for the first is determined further based at least in part on one or more conversion limits associated with the end user and/or the … asset” which further define the abstract idea. The claim includes “digital” as an additional element. The additional element does no more than serve as a tool to implement the abstract idea and/or link the abstract idea a particular technological environment. And, as it does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, it does not improve computer functionality or improve another technology or technical field.
Claim Rejections – 35 USC §112
17. The following is a quotation of the first paragraph 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.
18. Claims 1, 3-4, 7, 9-10, 13, and 15-16 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 pre-AIA the applicant regards as the invention.
19. Claims 1, 7, and 13 each recite the term “precedence levels”. This term lacks an objective anchor. The claim does not define the criteria or basis for the "precedence." Is it based on the user's subjective preference, the volatility of the digital asset, transaction speed, conversion fees, or some other factor? While a user can configure it, the claim itself provides no standard for determining what constitutes a "precedence level," making it unclear how to interpret the scope of this limitation. For example, it is uncertain whether a system that uses an automated algorithm to assign an order of liquidation, even if based on user-defined parameters, would infringe this "precedence level" configured by an end user.
20. Claims 1, 7, and 13 each recite the phrase “automated timing trigger for a first configurable time period”. This phrase is ambiguous. It is unclear what event triggers the "timing trigger." Does it trigger immediately after determining the fiat account is insufficient? After retrieving the balance of the digital asset account? Furthermore, the relationship between the "trigger" and the "configurable time period" is vague. Does the trigger initiate an action that lasts for the time period? Or does the trigger wait for the time period to elapse before acting? The lack of clarity regarding the trigger's initiating event and its functional relationship to the time period renders this phrase indefinite.
21. Claims 1, 7, and 13 each recite the term “off-chain transaction”. While this is a known term, its precise boundaries are critical and may be ambiguous. The claim contrasts an "off-chain transaction" for the internal account with the "first digital asset conversion" from the external account. The external account conversion involves an API call to initiate a debit. The definiteness issue arises in distinguishing what constitutes an "off-chain transaction" versus other types of digital asset transfers that might also use an API. If the "off-chain transaction" is also executed via an API call (as the claim suggests with "automatically executing"), the distinction between the two types of conversions becomes blurred, leaving the scope of the term unclear.
22. Claims 3-4, 9-10, and 15-16 are rejected as each depends on claims 1, 7, and 13 respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin Hewitt can be reached on 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/DANIEL S FELTEN/Primary Examiner, Art Unit 3692