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 .
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 07 August 2025. Claims 1-45 are currently pending. Claims 1-21 are withdrawn from consideration due to the restriction requirement. Claims 22-45 are pending. Examiner acknowledges Applicant’s filing of the terminal disclaimer on 07 August 2025 and withdraws the rejections of claims 22-45 under 35 USC § 101 directed to double patenting. However, the rejections under 35 USC § 101 directed to non-statutory subject matter is maintained. The rejections are as stated below.
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 22-45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 22 (exemplary) recites a series of steps for using a digital wallet to receive and send digital currency issued by a financial institution.
The claim is directed to a machine, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of a user holding one or more currencies from one or more of financial institutions, including a currency issued by a financial institution and that is fixed with respect to a fiat currency, receives a transaction for the wallet of the user to receive from and/or send to the wallet of the user or a wallet another user an amount of the currency, wherein the transaction includes a signature of the user, wherein the wallet includes a pair of public and private keys for the user, and wherein, based on authorization from the user, one of the pair of public and private keys is used to generate the signature of the user to include in the transaction, generates new transaction information representing the transaction for addition, transmits the new transaction information, receives an indication of validity of the new transaction information, wherein the indication of validity comprises an indication of validity of the signature of the user included in the transaction and generated using the one of the pair of public and private keys for the user, and based on the indication of validity, inserts the new transaction information to complete the transaction, and record the transaction for the financial institution and/or clearing house.
The claimed process simply describes series of steps for using a digital wallet to receive and send digital currency issued by a financial institution. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via human transactional activities/interactions, but for the recitation of generic computer components. That is, other than reciting a payment processor company, a digital wallet, one or more pairs of public and private keys and a digital currency in a plurality of computing nodes in a distributed ledger and a self-hosted digital wallet, nothing in the claim precludes the limitations from practically being performed by methods of organizing human activity. For example, without the structure elements language, the claim encompasses fundamental economic principles or practices (i.e. mitigating risk), commercial interactions (i.e., business relations). These limitations are directed to an abstract idea because they are activities that fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG. See MPEP 2106.04 II
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using a payment processor company, a digital wallet, one or more pairs of public and private keys and a digital currency in a plurality of computing nodes in a distributed ledger and a self-hosted digital wallet to perform the steps. The computer in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(h). The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept See MPEP 2106.05(h).
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to all statutory categories of invention including claims 22 and 28. Furthermore, the dependent claims 23-27 and 29-45 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea.
Furthermore, the dependent claims 23-27 and 29-45 do not resolve the issues raised in the independent claims. Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Dependent claims 23-27 and 29-45 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic server to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application.
Accordingly, claims 22-45 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 22-45 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above-mentioned steps. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations as discussed above and in the previous office action rejections.
Applicant argues in substance that “it is improper to characterize the claims as reciting a method of organizing human activity”. Examiner respectfully disagrees, the claims are directed to the abstract idea of using a digital wallet to receive and send digital currency issued by a financial institution. The steps of receiving a transaction for the user to receive from and/or send to the user or another user an amount of the currency, generates new transaction information representing the transaction for addition, transmits the new transaction information, receives an indication of validity of the new transaction information, and based on the indication of validity, inserts the new transaction information to complete the transaction, the claim clearly encompasses fundamental economic principles or practices (i.e. mitigating risk), commercial interactions (i.e., business relations). The use of the additional elements of a payment processor, a digital wallet, one or more pairs of public and private keys and a digital currency in a plurality of computing nodes in a distributed ledger and a self-hosted digital wallet are evaluated under integration into practical application. Therefore, it seems reasonable for the Examiner to refer to group the abstract idea under “Certain methods of organizing human activity” as enumerated in Section I of the 2019 PEG.
The focus of the claims in the present case is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem.
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
What Applicant describes here is how any generic computer process data without stating how or if this transformation is intended to in some way improves the function of the computer itself.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.-see MPEP 2106.05(f).
According to 2019 Patent Eligibility Guidelines (2019 PEG), limitations that are indicative of integration into a practical application include:
• Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
• Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
• Effecting a transformation or reduction of a particular article to a different state or thing -see MPEP 2106.05(c)
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e).
In the instant case, the judicial exception is not integrated into a practical application, because none of the above criteria is met. The amended limitations of the claims do not result in computer functionality improvement or technical/technology improvement when the underlying abstract idea is implemented using technology. The amendments to the claims only further define the data being used however, a specific abstract idea is still an abstract idea. All the features in the Applicant’s claims can at best be considered an improvement in the abstract idea. The advantages over conventional systems are directed towards improving the abstract idea. Hence, the additional elements in the claims are all generic components suitably programmed to perform their respective functions. The additional elements are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f)). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Hence, the claims as a whole are not integrated into a practical application.
The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Examiner respectfully disagrees that the claims are directed to an improvement computer technology. As found by the courts “In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly . . ..” SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Content Extraction, 2013 WL 3964909, at *12 (“the mere use of a computer to more quickly and efficiently . . . accomplish a given task does not create meaningful limitation on an otherwise abstract and wide ranging concept”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
Examiner notes that the processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a processor/device performing its generic computer functions does not make the claims less abstract.
Lastly, dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself.
Examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶: “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
Accordingly, claims 22-45 are rejected as ineligible for patenting under 35 U.S.C. 101.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HYUGA et al., US 20190378119 A1 discloses “A wallet device comprising, a central control server device to accept a trading request data from external, a transaction manage device, a hot wallet server device, a cold wallet server device and a remote signature device, the transaction manager device comprising unit to create/output transaction data conforming to the bitcoin network in the internet, is located in-between the central server device creating internal format model transaction and other devices group of hot wallet server device, cold wallet server device and the remote signature device performing to sign multi-signatures, providing more secured wallet device for cryptocurrency”.
Srinivasan et al. US 10839378 B1 discloses “A first device may be coupled to a second device over a network. The first device may maintain a first cryptocurrency wallet and may include mining circuitry that generates cryptocurrency rewards for the wallet. The first device may transmit a communications request to the second device. The second device may transmit payment information identifying a second wallet and a selected authentication amount to the first device. The second device may select the authentication amount to perform a desired amount of device connection rate limiting. The first device may generate an authentication transaction for a cryptocurrency network to transfer the authentication amount from the first wallet to the second wallet. The second device may determine whether the authentication transaction has been verified by the cryptocurrency network. In response to determining that the authentication transaction has been verified by the cryptocurrency network, the second device may establish the communication link”.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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