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 .
Examiner’s Note
2. The following is a Final Office action in response to communications received on September 19, 2025. Previously, Applicant indicated claim 22 as “Withdrawn”. Claim 22 is currently shown as “Original”. Additionally, the Remarks filed on September 19, 2025 indicate that claims 1-23 are now pending even though 24 claims are listed in the claims. For examining purposes, claim 22 is still considered to be Withdrawn and claims 23-24 are newly added. Therefore, claims 1-21 and 23-24 are pending and addressed below.
Response to Arguments
Applicant’s amendments/remarks did not address the claim objections set forth in the previous Office Action. The claim objections are maintained and repeated herein below.
Applicant’s amendments/remarks did not address the 35 U.S.C. 112(b) rejections set forth in the previous Office Action. The 35 U.S.C. 112(b) rejections are maintained and repeated herein below.
Applicant’s arguments regarding the 35 U.S.C. 103 rejections set forth in the previous Office Action have been fully considered but are moot in view of the new grounds of rejection. Applicant had amended the claims in such a way that the scope of the claims has been changed. Accordingly, new art is being used to address the newly amended claim language. Therefore, Applicants arguments are rendered moot.
Claim Objections
Claims 1, 9 and 15 are objected to because of the following informalities:
Claim 1 recites the phrase “the computer expansion card.” However, the claim previously recites a “crypto expansion card.” It is suggested the phrase be amended to “the crypto expansion card” for clarity and consistency. Also, claim 1 recites the phrase “the secure micro controller unit.” However, the claim previously recites a “secured micro controller unit.” It is suggested the phrase be amended to “the secured micro controller unit” for clarity and consistency.
Claim 9 recites the phrase “the secure micro controller unit.” However, the claim previously recites a “secured micro controller unit.” It is suggested the phrase be amended to “the secured micro controller unit” for clarity and consistency.
Claim 15 recites the phrase “the computer expansion card.” However, the claim previously recites a “crypto expansion card.” It is suggested the phrase be amended to “the crypto expansion card” for clarity and consistency
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7 and 15-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation “the micro controller unit configuration.” There is insufficient antecedent basis for this limitation.
Claim 15 recites the limitation “processing the verified off-blockchain cryptographic request and using the private cryptographic security key stored in the memory.” This limitation causes uncertainty about the meaning. For example, it is unclear if the limitation is stating that the private key is being used in processing the verified request or if the private key is just merely used at some point. For examining purposes, the latter is assumed. Dependent claims 16-21 are rejected for containing the same indefinite language as parent claim 15 without further remedying the indefinite language.
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.
Claim(s) 1, 2, 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk (U.S. Pub. No. 2022/0329437) in view of Hu et al. (U.S. Pub. No. 2020/0210402 and hereinafter referred to as Hu) in view of Thekadath et al. (U.S. Pub. No. 2020/0134206 and hereinafter referred to as Thekadath).
As to claim 1, Burk discloses a crypto card comprising:
a computer interface configured to couple the computer card to a computing device (paragraphs [0021]-[0022] and Fig.1, Burk teaches an interface to connect a cryptographic processor device to a processor); and
a secure computing enclave coupled to the computer interface, where the secure computing enclave includes a secured micro controller unit (paragraphs [0021]-[0022] and Fig.1, Burk teaches a security enclave containing a controller to perform secure operations) by:
receiving a cryptographic request via the computer interface (paragraphs [0053] and [0087], Burk teaches receiving a request containing a signature),
verifying the cryptographic request is signed by a specific cryptographic key (paragraphs [0054]-[0055], Burk teaches verifying the signature using a public key), and
processing the verified cryptographic request on the secure micro controller unit (paragraphs [0057]-[0059], Burk teaches proceeding with a storage request if the verification is successful.).
Burk does not specifically disclose a crypto expansion card; configured to run off-blockchain smart contracts; and an off-blockchain cryptographic request (emphasis added) as claimed as claimed. However, Hu does disclose
a crypto expansion card and configured to run smart contracts (paragraph [0054], Hu teaches an expansion card executing smart contracts.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Burk with the teachings of Hu for having a crypto expansion card because Burk already discloses an external cryptographic device connecting to a computer and it is a simple substitution to replace the cryptographic device of Burk with the expansion card of Hu to yield the predictable results of performing the cryptographic operations in an expansion card.
The combination of teachings between Burk and Hu does not specifically disclose off-blockchain smart contracts and an off-blockchain cryptographic request (emphasis added) as claimed. However, Thekadath does disclose
off-blockchain smart contracts and an off-blockchain cryptographic request (paragraph [0175], Thekadath teaches a smart contract may be stored and enforced without a blockchain.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Thekadath for having off-blockchain smart contracts because the modified invention of Burk already discloses a smart contract and it is a simple substitution to replace the smart contract of the modified invention of Burk with the off-blockchain smart contract of Thekadath to yield the predictable results of having an off-blockchain smart contract.
As to claim 2, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 1 where the processing of the verified cryptographic request includes using a private cryptographic security key (paragraphs [0021], [0055], [0062] and [0063], Thekadath teaches using a private key for a digital signature before storing.).
Examiner supplies the same rationale for the combination of the references as in claim 1 above.
As to claim 4, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 2 where the secure computing enclave also includes: a secure memory that stores the private cryptographic security key (paragraph [0022], Burk teaches a secure memory that stores a private key.).
As to claim 5, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 2 where the processing of the verified cryptographic request includes using the private cryptographic security key to generate a cryptographic signature (paragraphs [0021], [0055], [0062] and [0063], Thekadath teaches using a private key for a digital signature before storing.).
Examiner supplies the same rationale for the combination of the references as in claim 1 above.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Thekadath as applied to claim 2 above, and further in view of Bell et al. (U.S. Pub. No. 2004/0201751 and hereinafter referred to as Bell).
As to claim 3, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 2. The combination of teachings between Burk, Hu and Thekadath does not specifically disclose where the private cryptographic security key is accessed via an auxiliary data connector as claimed. However, Bell does disclose
disclose where the private cryptographic security key is accessed via an auxiliary data connector (paragraph [0015], Bell discloses multiple ways for obtaining a private key including downloading it from a separate device (i.e. auxiliary).).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Bell for accessing a private cryptographic security key via an auxiliary data connector because this would increase flexibility.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Thekadath as applied to claim 1 above, and further in view of Abeloe (U.S. Patent No. 10,802,488).
As to claim 7, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 1. The combination of teachings between Burk, Hu and Thekadath does not specifically disclose where the micro controller unit configuration is unalterable as claimed. However, Abeloe does disclose
where the micro controller unit configuration is unalterable (col. 19 lines 6-11, Abeloe teaches a controller is unchangeable.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Abeloe for having the micro controller unit configuration be unalterable because thus would increase security.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Thekadath as applied to claim 1 above, and further in view of Tait et al. (U.S. Pub. No. 2023/0010440 and hereinafter referred to as Tait).
As to claim 8, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 1. The combination of teachings between Burk, Hu and Thekadath does not specifically disclose where the secure computing enclave is on a single integrated circuit chip as claimed. However, Tait does disclose
where the secure computing enclave is on a single integrated circuit chip (paragraph [0028], Tait teaches the enclave is on a system-on-chip.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Tait for having the secure computing enclave be on a single integrated circuit chip because thus would increase efficiency.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Thekadath as applied to claim 1 above, and further in view of Madrid et al. (U.S. Pub. No. 2018/0217828 and hereinafter referred to as Madrid).
As to claim 9, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 1. The combination of teachings between Burk, Hu and Thekadath does not specifically disclose where the secure micro controller unit is updatable with a cryptographically signed update as claimed. However, Madrid does disclose
where the secure micro controller unit is updatable with a cryptographically signed update (paragraphs [0037] and [0042], Madrid teaches signed updates for a controller.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Madrid for having the secure micro controller unit be updatable with a cryptographically signed update because thus would increase flexibility.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk, Hu and Thekadath as applied to claim 1 above, and further in view of Wang (U.S. Pub. No. 2021/0097528).
As to claim 10, the combination of teachings between Burk, Hu and Thekadath disclose the crypto expansion card of claim 1. The combination of teachings between Burk, Hu and Thekadath does not specifically disclose where the cryptographic request is to transfer a crypto asset as claimed. However, Wang does disclose
where the cryptographic request is to transfer a crypto asset (paragraph [0039], Wang teaches processing a request for transferring digital assets in an enclave.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Wang for having the cryptographic request be to transfer a crypto asset because Burk already discloses a cryptographic request and it is a simple substitution to replace the cryptographic request of Burk with the transfer of a crypto asset in Wang to yield the predictable results of performing the cryptographic request to transfer of a crypto asset.
Claim(s) 15, 16 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burk (U.S. Pub. No. 2022/0329437) in view of Hu et al. (U.S. Pub. No. 2020/0210402 and hereinafter referred to as Hu) in view of Thekadath et al. (U.S. Pub. No. 2020/0134206 and hereinafter referred to as Thekadath) in view of Abeloe (U.S. Patent No. 10,802,488).
As to claim 15, Burk discloses a crypto card comprising:
a computer interface configured to couple the computer card to a computing device (paragraphs [0021]-[0022] and Fig.1, Burk teaches an interface to connect a cryptographic processor device to a processor);
a memory that stores a private cryptographic security key (paragraph [0022], Burk teaches a secure memory that stores a private key) and
a micro controller unit (paragraphs [0021]-[0022] and Fig.1, Burk teaches a security enclave containing a controller to perform secure operations) by:
receiving a cryptographic request via the computer interface (paragraphs [0053] and [0087], Burk teaches receiving a request containing a signature),
verifying the cryptographic request is authenticated by a cryptographic proof (paragraphs [0054]-[0055], Burk teaches verifying the signature using a public key),
processing the verified cryptographic request (paragraphs [0057]-[0059], Burk teaches proceeding with a storage request if the verification is successful.). Burk does not specifically disclose a crypto expansion card; an unalterable micro controller unit configured to run off-blockchain smart contacts; an off-blockchain cryptographic request (emphasis added); and using the private cryptographic security key stored in the memory as claimed. However, Hu does disclose
a crypto expansion card and configured to run smart contracts (paragraph [0054], Hu teaches an expansion card executing smart contracts); and
using the private cryptographic security key stored in the memory (paragraphs [0039] and [0067], Hu teaches using a private key.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Burk with the teachings of Hu for having a crypto expansion card because Burk already discloses an external cryptographic device connecting to a computer and it is a simple substitution to replace the cryptographic device of Burk with the expansion card of Hu to yield the predictable results of performing the cryptographic operations in an expansion card.
The combination of teachings between Burk and Hu does not specifically disclose an unalterable micro controller unit; off-blockchain smart contracts and an off-blockchain cryptographic request (emphasis added) as claimed. However, Thekadath does disclose
off-blockchain smart contracts and an off-blockchain cryptographic request (paragraph [0175], Thekadath teaches a smart contract may be stored and enforced without a blockchain.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Thekadath for having off-blockchain smart contracts because the modified invention of Burk already discloses a smart contract and it is a simple substitution to replace the smart contract of the modified invention of Burk with the off-blockchain smart contract of Thekadath to yield the predictable results of having an off-blockchain smart contract
The combination of teachings between Burk, Hu and Thekadath does not specifically disclose an unalterable micro controller unit as claimed. However, Abeloe does disclose
an unalterable micro controller unit (col. 19 lines 6-11, Abeloe teaches a controller is unchangeable.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified invention of Burk with the teachings of Abeloe for having an unalterable micro controller unit because thus would increase security.
As to claim 16, the combination of teachings between Burk, Hu, Thekadath and Abeloe disclose the crypto expansion card of claim 15 where the processing of the verified cryptographic request includes generating a cryptographic signature with the private cryptographic security key (paragraphs [0021], [0055], [0062] and [0063], Thekadath teaches using a private key for a digital signature before storing.).
Examiner supplies the same rationale for the combination of the references as in claim 15 above.
As to claim 23, the combination of teachings between Burk, Hu, Thekadath and Abeloe disclose the crypto expansion card of claim 15 where the cryptographic proof uses a cryptographic signature verified using a specific cryptographic key ((paragraphs [0054]-[0055], Burk teaches verifying the signature using a public key. paragraphs [0021], [0055], [0062] and [0063], Thekadath teaches using a private key for a digital signature.).
Examiner supplies the same rationale for the combination of the references as in claim 15 above.
Allowable Subject Matter
Claims 6, 11-14 and 24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 17-21 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 6 recites, inter alia, “the processing of the verified cryptographic request includes an on-blockchain transaction with a multi signature address.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 6 is considered to recite allowable subject matter over the prior art.
Claim 11 recites, inter alia, “the cryptographic request to transfer the crypto asset involves an on-blockchain address.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 11 is considered to recite allowable subject matter over the prior art. Dependent claims 12-14 are considered to recite allowable subject matter over the prior art based on their dependency.
Claim 17 recites, inter alia, “the processing of the verified cryptographic request includes an on-blockchain address.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 17 is considered to recite allowable subject matter over the prior art.
Claim 18 recites, inter alia, “the processing of the verified cryptographic request includes an open transactions protocol transaction.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 18 is considered to recite allowable subject matter over the prior art.
Claim 19 recites, inter alia, “the memory and the unalterable micro controller unit are on a single integrated circuit.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 19 is considered to recite allowable subject matter over the prior art.
Claim 20 recites, inter alia, “the processing of the verified cryptographic request moves crypto assets between an on-blockchain address and an off- blockchain account.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 20 is considered to recite allowable subject matter over the prior art.
Claim 21 recites, inter alia, “the processing of the verified cryptographic request moves crypto assets out of an off-blockchain account.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 21 is considered to recite allowable subject matter over the prior art.
Claim 24 recites, inter alia, “the cryptographic proof uses a multi-signature blockchain address signature.” This limitation, when combined with the other limitations, is not considered to be taught in the prior art. Therefore, claim 24 is considered to recite allowable subject matter over the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS J PLECHA whose telephone number is (571)270-7506. The examiner can normally be reached M-F 8-4:30.
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/THADDEUS J PLECHA/Examiner, Art Unit 2438
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