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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05 February 2026, has been entered.
The following is a Non-Final office action on the merits in response to the communications filed on 05 February 2026. Claims 1-21 are withdrawn from consideration due to the restriction requirement. Claims 22-27 are canceled. Claims 28-45 have been amended and claims 46-62 have been added. Claims 1-21 and 28-62 are currently pending. The rejection 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 28-62 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 facilitating a transaction between a first entity and a second entity using a line of credit based on a 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 one or more pairs of public and private keys for a user holding one or more currencies from one or more financial institutions, including a line of credit based on a currency issued by a financial institution and that is fixed with respect to a fiat currency, store transaction information representing one or more transactions using the line of credit based on the currency issued by the financial institution, store and maintains a respective copy of the distributed ledger, receive a transaction for the wallet of the user to draw on the line of credit for 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, generate new transaction information representing the transaction for addition to the ledger, transmit the new transaction information, receive 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, insert the new transaction information into the ledger to complete the transaction, and wherein the one of the pair of public and private keys for the line of credit based on the currency is used for the user to draw on the line of credit based on the currency and to record the transaction in the ledger for the financial institution.
The claimed process simply describes series of steps for facilitating a transaction between a first entity and a second entity using a line of credit based on a 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 digital wallet for one or more digital currencies, at least one computing node, at least one computing node is included in a plurality of computing nodes that participate in a private distributed ledger, 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 digital wallet for one or more digital currencies, at least one computing node, at least one computing node is included in a plurality of computing nodes that participate in a private distributed ledger 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 28 and 62. Furthermore, the dependent claims 29-61 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 29-61 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 29-61 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 28-62 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 28-62 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Examiner incorporates herein the response to arguments from the previous office actions.
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 applies to the newly added claimed limitations as discussed above and in the previous office action rejections.
Moreover, the Examiner respectfully disagrees with Applicant’s assertion. The claims here do not recite an improvement in computers. The claims do not improve the functioning of the computer, or solve any technological problem. Rather, the claim simply “includes instructions to implement an abstract idea on a computer” and “does no more than generally link the use of a judicial exception to a particular technological environment or field of use”. The claim uses generic computer components and generic computer functionality to manage transactions between entities. The claims merely use instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitations do not integrate the judicial exception into a practical application.
Applicant cites Ex parte Desjardins. In Ex parte Desjardins, the claims are related to a specific improvement to machine learning models and to computer security architecture (improved authentication techniques), to ‘effectively learn new tasks in succession whilst protecting knowledge about previous tasks.’ In contrast, the instant claims do not improve the functioning of the computer. 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.
Examiner respectfully disagrees, we determine whether the claims recite a practical application of the recited judicial exception. For example, (1) any additional elements of the claims reflect an improvement in the functioning of a computer or to another technological field, (ii) an application of the judicial exception with, or by use of, a particular machine, (iii) a transformation or reduction of a particular article to a different state or thing (iv) or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55; See also MPEP § 2106.05(a){(c), (e}(h).
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). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. 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.
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”).
Examiner respectfully disagrees, 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.”
Applicant’s citation of DDR is non-persuasive because the claims at issue in DDR are readily distinguishable over the instant claims. In the case of DDR Holdings "E-Commerce Outsourcing System/Generating a Composite Web Page", the claims were directed to automatically generating and transmitting a web page in response to activation of a link using data identified with a source web page having certain visually perceptible elements.
Moreover, Applicant’s citation of BASCOM is non-persuasive because the claims at issue in BASCOM are readily distinguishable over the instant claims. In BASCOM v. AT&T: The claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. …recite a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. For example, one filtering scheme could be “a word-screening type filtering scheme” and one set of filtering elements (from a plurality of sets) could be a “master list [] of disallowed words or phrases together with [an] individual [list of] words, phrases or rules.” Id. at 4:30-35.
In contrast, the instant claims provide a generically computer-implemented solution to a business-related or economic problem ("Another advantage of at least some embodiments is the provision of fast, low cost transactions from one customer to another customer of the financial institution"), and are thus incomparable to the claims at issue in DDR or BASCOM. The present case is different, the focus of the claims is not on such 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.
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.
In making the determination of if the claimed idea is significantly more, the Court gave examples, which included an improvement to another technology or technical field; improvement to the function of the computer itself; or some other meaningful limitation beyond generally linking the use of an abstract idea to a particular technological environment. Such as in Diamond v. Diehr, the claims were found statutory in which the Arrhenius equation is used to improve a process of controlling the operation of a mold in curing rubber parts.
As mentioned previously, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer. Taking the additional elements individually and in combination, 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 claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
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.
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.
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”.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691
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