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 .
This Office Action is in response to the Applicant’s Amendment filed December 3, 2025. Claims 1-20 are pending in this case. Claims 1 and 9 are currently amended.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 18, 2026, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant's arguments filed December 3, 2025, have been fully considered but they are not persuasive.
Applicant argues, regarding claims 1 and 9, as currently amended, that the claims recite statutory subject matter.
Examiner respectfully disagrees.
More specifically, Applicant argues that the claims, in their current version, do not recite an abstract idea.
Examiner respectfully disagrees.
In the instant case, the claims recite receiving an identifier (certificate), storing the identifier, generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee -- a process that describes carrying out a commercial or legal interaction/transaction which involves receiving and recognizing information, making a decision, and processing information. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
Applicant further argues that the claims, in their current version, recite an integration into a practical application.
Examiner respectfully disagrees.
In the instant case, the additional element(s) of the claims such as a processor, transmitter, receiver, first and second computing devices, merely use a computer as a tool to perform an abstract idea. Specifically, the processor, transmitter, receiver, first and second computing devices perform the steps or functions of generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Applicant further argues Desjardins.
In Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential), the claimed invention was a method of training a machine learning model on a series of tasks.
Note that in the instant case the claims are different from those of Desjardins. In this case, the claims recite receiving an identifier (certificate), storing the identifier, generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee -- a process that describes carrying out a commercial or legal interaction/transaction which involves receiving and recognizing information, making a decision, and processing information, rather than training a machine learning model on a series of tasks.
Applicant further argues Bascom.
We find that, in the instant case, the claims are not similar to BASCOM (BASCOM Global Internet Service inc. v. ATT&T Mobility LLC.) BASCOM is clearly not applicable to the instant claims. There, (Bascom), where the court determined that there was an ordered combination of conventional components that provided for filtering of internet content based on the location of a filtering component in a network. On the other hand, the claims in the instant case, recite receiving an identifier (certificate), storing the identifier, generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee -- which is a process that deals with commercial or legal interactions.
Applicant further argues McRO.
The claims are not in any way similar to McRo as the claims do not make any technological improvement to any algorithm in performing improvement to animation techniques. Clearly this is simply a gratuitous citation to a case that was held as eligible when the facts clearly argue against any kind of McRo improvement. The claims in the instant case are clearly directed to receiving an identifier (certificate), storing the identifier, generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee -- which is a process that deals with commercial or legal interactions, and, therefore, is an abstract idea.
Applicant further argues that the claims, in their current version, recite an integration into a practical application.
Examiner respectfully disagrees.
In the instant case, the additional element(s) of the claims such as a processor, transmitter, receiver, first and second computing devices, merely use a computer as a tool to perform an abstract idea. Specifically, the processor, transmitter, receiver, first and second computing devices perform the steps or functions of generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Applicant further argues, regarding claims 1 and 9, as currently amended, that nothing in the cited references teaches, discloses, or suggests, wherein the transaction is an offline blockchain transaction.
Examiner respectfully disagrees.
Attention is directed to Govindarajan at, e.g. abs “payer transaction device enables secure offline transactions using a secure element providing a secure payer account database”; par 33 “secure offline transaction described herein”; par 39 “he wallet application 106 in the secure element subsystem 104 on the payer transaction device 504 may utilize the wireless communication subsystem 112 to connect to the payment service provider system via the Internet, retrieve a payer account balance associated with an available balance in the payer payment account, and store the payer account balance in the account database 110 in the secure element subsystem 104 on the payer transaction device 504. In addition, the wallet application 106 in the secure element subsystem 104 on the payer transaction device 404 may utilize the wireless communication subsystem 112 to connect to the payment service provider system via the Internet, retrieve ledger information, and store the ledger information in the ledger database 108 in the secure element subsystem 104 on the payer transaction device 504. In embodiments where the storage capacity of the payer transaction device 504 is sufficient, the ledger information may include an entire blockchain of transaction associated with a crypto currency. However, in embodiments in which the storage capacity of the payer transaction device 504 is limited, the ledger information may only include transactions from a blockchain that are associated with public addresses that are controlled by the payer (e.g., for which the wallet application 106 includes private keys that can sign transactions to transfer funds stored in those public addresses)”.
It would be obvious to one of ordinary skill in the art to combine Stelzner, with the blockchain and offline transactions of Govindarajan for greater flexibility in where/when transactions can be performed and further with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption.
It would be obvious to one of ordinary skill in the art to combine Stelzner, with the blockchain and offline transactions of Govindarajan for greater flexibility in where/when transactions can be performed and further with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption.
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.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 1-20 –
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-8 and 17-18 are directed to a method, and claims 9-16 and 19-20 are directed to a system or apparatus. Therefore, these claims fall within the four statutory categories of invention.
The claims recite verifying a payee and making a payment. Specifically, the claims recite generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee -- a process that describes carrying out a commercial or legal interaction/transaction which involves receiving and recognizing information, making a decision, and processing information. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional element(s) of the claims such as a processor, transmitter, receiver, first and second computing devices, merely uses a computer as a tool to perform an abstract idea. Specifically, the processor, transmitter, receiver, first and second computing devices perform the steps or functions of generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional element(s) of a processor, transmitter, receiver, first and second computing devices to perform the steps amounts to no more than using a computer to automate and/or implement the abstract idea of verifying a payee and making a payment. As discussed above, taking the claim elements separately, the processor, transmitter, receiver, first and second computing devices perform(s) the steps or functions of generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept generating and transmitting a message to a payee, receiving and verifying a handshake message from the payee, generating and transmitting a pay message, receiving and verifying an accept message from the payee. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-8 and 10-20 further describe the abstract idea of verifying a payee and making a payment. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
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 (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.
Claims 1-3, 9-11, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Stelzner et al (US 2016/0065537) in view of Banwaitt et al (US 2022/0116785) and in view of Govindarajan et al (US 2019/0095907).
Regarding claims 1 and 9 –
Stelzner discloses a method for processing a transaction, comprising:
receiving, by a receiver of a first computing device from a provisioning entity computing device, a first computing device certificate, the first computing device certificate authorizing one or more transactions by the first computing device (par 35 “ security device, such as HSM 106, receives data with a first certificate chain from a first device. The first certificate chain includes information associated with at least one certificate in a chain of trust. At 410, the security device authenticates the first certificate chain. At 415, the security device adjusts the first certificate chain. At 420, the security device transmits the data with the adjusted first certificate chain to a second device. At 425, the second device maintains a second certificate chain. The second certificate chain includes information associated with at least one certificate in the chain of trust and the first certificate chain is different from the second certificate chain. At 430, the second device uses the adjusted first certificate chain to establish a trust relationship with the first device”.)
storing, by the first computing device, the first computing device certificate in a database of the first computing device; (par 32 “ device 102 is configured to store the full chain of trust”; claim12 “certificates stored on the security device”)
receiving, by the receiving device of the first computing device from the provisioning entity computing device, a second computing device certificate chain; (par 35 “ security device, such as HSM 106, receives data with a first certificate chain from a first device. The first certificate chain includes information associated with at least one certificate in a chain of trust. At 410, the security device authenticates the first certificate chain. At 415, the security device adjusts the first certificate chain. At 420, the security device transmits the data with the adjusted first certificate chain to a second device. At 425, the second device maintains a second certificate chain. The second certificate chain includes information associated with at least one certificate in the chain of trust and the first certificate chain is different from the second certificate chain. At 430, the second device uses the adjusted first certificate chain to establish a trust relationship with the first device”.)
receiving, by the receiving device of the first computing device from the provisioning entity computing device, a second computing device certificate chain; (par 35, Claim8)
second computing device certificate authorizing one or more transactions by the second computing device (par 35, claim8)
verifying the second computing device certificate using the second computing device certificate chain(par 35, claim8)
Govindrajan discloses, as Stelzner does not specifically, wherein the transaction is an offline blockchain transaction (par 1, 39, abs)
Govindarajan further discloses, as Stelzner does not, and in analogous art, the handshake message including at least a certificate and a recipient public key; (par 35)
generating, by the processor of the first computing device, a pay message, the pay message including transfer data, the transfer data including one or more data values for a proposed blockchain transaction; (par 44)
transmitting, by the transmitter of the first computing device, the generated pay message to the second computing device; (par 44)
receiving, by the receiver of the first computing device, an accept message from the second computing device, the accept message including at least a digital signature of the transfer data;(par 60, 31) and
verifying, by the processor of the first computing device, the digital signature of the transfer data using as least the recipient public key. (par 21, 24)
It would be obvious to one of ordinary skill in the art to combine Stelzner, with the blockchain and offline transactions of Govindarajan for greater flexibility in where/when transactions can be performed and further with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption.
Banwaitt discloses, as Stelzner does not specifically disclose, and in analogous art, generating, by a processor of the first computing device, an initiate message; (par 11 also par 31)
transmitting, by a transmitter of the first computing device, the initiate message to a second computing device; (par 12, also par 31)
receiving, by a receiver of the first computing device, a handshake message from the second computing device; (par 16-17, 30, 31)
verifying, by the processor of the first computing device, the handshake message, wherein verifying the handshake message. (par 25-26 “a completed handshake may verify that two users or a group of users want to “connect” to each other on a social networking platform, connect to make a payment from one user to another, use an electronic ticket at an entrance to an event (i.e. to create a “connection” between the used ticket and the event entrance), etc. ).
It would be obvious to one of ordinary skill in the art combine the certificates of Stelzner with the handshake and initiate messages of Banwaitt, in order to achieve greater transaction security, through the more precise authentication and identification of parties involved in the transaction.
Regarding claims 2 and 10 –
Govindarajan discloses the second computing device certificate and recipient public key in the handshake message are digitally signed, (par 24) and
verifying the handshake message further includes verifying the digital signature of the second computing device certificate and recipient public key in the handshake message using a second computing device certificate public key included in the second computing device certificate. (par 21, 24)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption.
Regarding claims 3 and 11 -
Govindarajan discloses generating the pay message further includes:
generating, by the processor of the first computing device, a symmetric key using the recipient public key and a sender private key; (par 40, 51) and
encrypting, by the processor of the first computing device, the transfer data using the symmetric key, and (par 40, 51)
the pay message further includes a sender public key of a cryptographic key pair including the sender private key. (par 40, 51)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption.
Regarding claims 18 and 20 -
Banwaitt discloses wherein prior to the receiving the first computing device certificate and the certificate chain the method further comprises:
establishing, by the processor of the first computing device, a communication channel with the provisioning entity computing device; (par 11, 25)
generating, by the processor of the first computing device, a request for the first computing device certificate; (par 11 also par 31)
transmitting, by the transmitter of the first computing device, the request to the provisioning entity computing device. (par 16-17, 30, 31)
Govindarajan discloses, as Banwaitt does not, receiving, by the receiver of the first computing device, a verification request from the provisioning entity computing device; (par 21, 24)
digitally signing, by the processor of the first computing device, a first computing device local datastore with a sender private key; (par 40, 51) and
transmitting, by the transmitter of the first computing, the digitally signed local datastore to the provisioning entity computing device. (par 40, 51)
It would be obvious to one of ordinary skill in the art to combine Banwaitt, with the digital signatures/tokens of Govindarajan and the certificates of Stelzner in order to obtain greater transaction security through the use of additional encryption.
Claims 4-8 and 12-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Stelzner et al (US 2016/0065537) and Banwaitt et al (US 2022/0116785) in view of Govindarajan et al (US 2019/0095907) and further in view of Hu et al (US 2016/0125403).
Stelzner in view of Banwaitt and Govindarajan discloses as above.
Regarding claims 4 and 12 -
Hu discloses generating, by the processor of the first computing device, an accepted message; (abs, par 11) and
transmitting, by the transmitter of the first computing device, the generated accepted message to the second computing device. (abs, par 11)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Regarding claims 5 and 13 -
Hu discloses generating the accepted message further includes digitally signing the accept message using a sender private key, (par 33) and
the pay message further includes a sender public key of a cryptographic key pair including the sender private key. (par 33, 34)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Regarding claims 6 and 14 -
Hu discloses that generating the pay message further includes generating a reference value by hashing the recipient public key, (par 33, 34) and
the pay message further includes the reference value. (par 33, 34)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Regarding claims 7 and 15 -
Hu discloses that the accept message further includes a reference value, (par 33, 34) and
the method further comprises:
generating, by the processor of the first computing device, a hash value by hashing a sender public key; (par 33, 34) and
verifying, by the processor of the first computing device, the reference value using the generated hash value. (par 33, 34)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Regarding claims 8 and 16 -
Hu discloses that the pay message further includes the sender public key. (par 34)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Regarding claims 17 and 19 –
Banwaitt discloses receiving, by the receiver of the first computing device, a subsequent handshake message from a third computing device after the first computing device has transmitted the pay message to the second computing device, the subsequent handshake message including at least a third computing device certificate and a third computing device public key; (par 16-17, 30, 31)
Hu discloses, as Banwaitt does not, generating, by the processor of the first computing device, a reference value by hashing the third computing device public key; (par 33, 34)
generating, by the processor of the first computing device, a reject message, the reject message including a reference value and a digital signature generated over the symmetric key, the digital signature generated using the sender private key; (par 33, 34)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Govindarajan discloses, as Stelzner in view of Banwaitt does not, generating, by the processor of the first computing device, a symmetric key using the third computing device public key and a sender private key; (par 40, 51)
generating, by the processor of the first computing device, a reject message, the reject message including a reference value and a digital signature generated over the symmetric key, the digital signature generated using the sender private key. (par 40, 51)
It would be obvious to one of ordinary skill in the art to combine Stelzner and Banwaitt, with the digital signatures/tokens of Govindarajan in order to obtain greater transaction security through the use of additional encryption as well as with Hu for better tracking transactions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
THIS ACTION IS MADE FINAL. 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 CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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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.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697