DETAILED ACTION
This is a final office action on the merits. The U.S. Patent and Trademark Office (the Office) has received claims 1–29 in application number 17802008.
Claims 1–14 are canceled.
Claim 15 is currently amended.
Claim 29 is currently added.
Claims 15–29 are pending and have been examined on the merits.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 U.S.C. § 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 15–29 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 15–29. In the present application, claims 15–25 and 29 are directed to a method (i.e., process) and claims 26–28 are directed to a product that performs the method of claim 15. Thus, the eligibility analysis proceeds to Step 2A.1.
The limitations of independent claim 15, which encompasses independent claim 29, have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 15 are identified in bold below:
A method for directly transmitting electronic coin datasets between terminals of a payment system, wherein a computing unit of a monitoring entity of the payment system registers anonymous masked electronic coin datasets, comprising the following steps in a first terminal:
receiving an electronic coin dataset by a computing unit of the first terminal, the electronic coin dataset having a monetary value and a concealment value;
masking a modified electronic coin dataset or the received electronic coin dataset by applying a one-way function to the electronic coin dataset in order to obtain a masked electronic coin dataset;
providing a pseudonym for the first terminal comprising a terminal number, a number derived from the terminal number, and/or a public key of a public/private key pair;
generating a pseudonymized masked electronic coin dataset, including linking the masked electronic coin dataset to the pseudonym for the first terminal, wherein the linking comprises generating a digital signature over the masked electronic coin dataset using a signature key and appending the digital signature to the masked electronic coin dataset; and
sending the pseudonymized masked electronic coin dataset to the monitoring entity;
wherein a computing unit of the monitoring entity registers the pseudonymized masked electronic coin dataset, including storing a linkage between the masked electronic coin dataset and the pseudonym.
Under the broadest reasonable interpretation, the bold portions above recite a commercial interaction in the form of managing coin datasets by creating information that masks the coin dataset owner and monitoring information related to the coin dataset by a monitoring entity. This falls under certain methods of organizing human activity and is consistent with the examples under that grouping. Accordingly, claims 15 and 29 recite an abstract idea and the analysis proceeds to Step 2A.2.
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements a computing unit of the monitoring entity, “electronic” coin datasets, a computing unit of a first terminal, data identifying the first terminal (e.g., a terminal number, a number derived from the terminal number, and/or a public key of a public/private key pair), and a “digital” signature. The additional element(s) are recited at a high level of generality (e.g., consistent with Applicant’s specification at 0081). As such the claim amounts to no more than instructions to perform the abstract idea by “applying it” in a technical environment. There is no improvement to the computing devices or another technology, and the technology is only generally linked to the recited abstract idea. Accordingly, the additional element(s) do not integrate the abstract idea into a practical application because the claim does not provide more than a general link between the abstract idea and the generic computers that implement it. Therefore, the claims are directed to an abstract idea and the analysis proceeds to Step 2B.
The additional elements, both individually and as an ordered combination, do not amount to significantly more than the judicial exception because upon reconsideration the outcome of the Step 2A, prong 2 considerations is the same. As discussed under Step 2A.2, the additional element(s) amount to no more than general link to the technological environment. This is not enough to provide an inventive concept. Therefore, claims 15 and 29 are not patent eligible.
Dependent claims 16 and 19–25 either do not recite a further step of the method because they recite a function of an element that is not performing any method steps, or information contained in data (e.g., claim 21) that does not further limit the scope of the method of claim 15. Accordingly, these claims only characterize the operating environment of the method, but under the broadest reasonable interpretation do not further limit the positively recited method steps and therefore have no patentable weight. As a result, these claims have the same scope as claim 15 and are ineligible for the same reasons as provide for claim 15 above.
Dependent claims 17 and 18 further recite steps of receiving a request and responding to the request with information and creating information and sending that information. These aspects of claims 17 and 18 also recite an abstract idea. The additional elements in claims 17 and 18 is the “first terminal.” Not only is the first terminal recited at a high level of generality as in claim 15, but the first terminal is still recited merely as a computer on which the abstract idea is carried out. This fails to provide more than a general link to the technological environment and therefore the Step 2A, prong 2 and Step 2B analysis of claim 15 applies the same to claims 17 and 18, which are ineligible.
Dependent claims 26, 27, and 28 each recite a terminal (computer), a monitoring entity (computer), and a payment system (computer) that interact to perform the method of claim 15. As noted above, these computers are recited at a high level of generality merely to carry out the abstract idea. This is no more than instructions to perform the abstract idea by “applying it” on a computer or in a generic computing environment. These dependent claims are ineligible for the same reasons provided for claim 15 above.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Response to Remarks
Applicant's arguments filed October 30, 2025, have been fully considered but they are not persuasive.
On page 11 applicant argues that “the claimed signing of a masked dataset and registration that stores the linkage is a security-protocol solution to double-spend and spoofing, not a business policy.” The examiner respectfully disagrees. The claims might encompass that interpretation but it is not the only required interpretation under the broadest reasonable interpretation, which does encompass an abstract idea as shown in the rejection above.
On page 11 applicant argues that “claim 15 integrates any such concepts into a practical application that improves the security and reliability of a computer-implemented system under Step 2A, Prong Two.” The examiner respectfully disagrees. The claim language is much broader than the alleged improvement and as such does not require it. In other words, the nexus between the alleged improvement and the required scope of the claims has not been demonstrated by the remarks. Rather, it appears the remarks are attempting to argue based on the details of the specification which are not currently required by the claims. Accordingly, the examiner finds the improvement to the technology or technical field has not yet been recited in the claims with sufficient specificity to support the applicant’s position.
On pages 11–12 the applicant argues the additional elements “work together to link electronic coin datasets to privately verified identifies, as taught in” the specification. As noted above, the examiner respectfully disagrees as the details cited in applicant’s specification are not recited in the claim in such a way that the alleged improvement carries weight at Step 2A, prong 2 or Step 2B.
On page 12 the applicant argues that “the current Action indicates that incorporating the details of pseudonymization would demonstrate a technical improvement and overcome the current 35 USC 101 rejection. The amendment to claim 15 accordingly provides such detail, and places the claims in condition for allowance.” The examiner respectfully disagrees. The current claims at most recite the information that is used for pseudonymization without recite the details of how the information is pseudonymized. This does not distinguish the claim from the abstract idea or show how the technological additional elements in the claim are either improved or specifically called upon to carry out this process. Therefore the remarks are not persuasive.
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 Patrick McAtee whose telephone number is (571)272-7575. The examiner can normally be reached Weekdays 8:30am - 4:30pm ET.
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Patrick McAtee
Supervisory Patent Examiner
Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698