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 is a final office action on the merits. The U.S. Patent and Trademark Office (the Office) has received claims 1–54 in application number 17802246.
Claims 1–27 are canceled.
Claim 28 is currently amended.
No claims are currently added.
Claims 28–54 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 28–54 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claims 28–54. In the present application, claims 28–48 are directed to a method (i.e., process) and claims 49–54 are directed to a product that performs the method of claim 28. Thus, the eligibility analysis proceeds to Step 2A.1.
The limitations of independent claim 28 have been denoted with letters by the Examiner for easy reference. The judicial exceptions recited in claim 28 are identified in bold below:
A method for directly transferring electronic coin data sets between terminals for payment in a payment system, wherein a first terminal has at least one electronic coin data set, the at least one electronic coin data set having a monetary amount and an obfuscation amount as coin data set elements, comprising the steps of:
generating a masked first electronic coin data set element of the electronic coin data set using a computing unit in the first terminal, by applying a cryptographic one-way function comprising a homomorphic one-way function or elliptic curve encryption (ECC) to the first coin data set element of the electronic coin data set for masking the first electronic coin data set element in cryptographically encrypted form;
generating a quasi-masked electronic coin data set including a second coin data set element of the electronic coin data set and the masked first electronic coin data set element by the computing unit in the first terminal; [[and]]
transmitting the quasi-masked electronic coin data set to a monitoring entity for registering the electronic coin data set by a computing unit of the monitoring entity, wherein the second coin data set element is unmasked, the computing unit of the monitoring entity verifying the masked first electronic coin data set using the second coin data set element; and
directly transferring the electronic coin data set from the first terminal to a second terminal, wherein the transfer is secured by a cryptographic key.
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. Limitation B also recites a cryptographic one-way function (i.e., a hash) which is a mathematical concept. Accordingly, claim 28 recites 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 “electronic” coin datasets, a first terminal comprising a computing unit, a computing unit of a monitoring entity, and a second terminal. The additional element(s) are recited at a high level of generality (e.g., consistent with Applicant’s specification at 0139). 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 claim is 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 29–30, 39, and 44–48 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 30) that does not further limit the scope of the method of claim 28. 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 28 and are ineligible for the same reasons as provided for claim 28 above.
Dependent claims 31 and 32 further recite determining masking modes and then applying the masking modes to the coin data set, specifically to mask the monetary amount (claim 32) using the one-way function (i.e., mathematical process). Accordingly, these dependent claims further elaborate on the abstract ideas identified in claim 28. There are no new additional elements in claims 31 and 32 and the additional elements are not being used in a new ordered combination. Accordingly, the Step 2A, prong 2 and Step 2B analyses of claim 28 also applies to claims 31 and 32, which are ineligible.
Dependent claim 33 further recites a step of registering the coin data set. Strictly speaking, this is not a further step of the claimed method because it refers back to the intended use of the “transmitting” step in claim 28 (i.e., transmitting … for registering). Nonetheless, claim 33 elaborates on the abstract ideas identified in claim 28. There are no new additional elements in claim 33 and the additional elements are not being used in a new ordered combination. Accordingly, the Step 2A, prong 2 and Step 2B analyses of claim 28 also applies to claim 33, which is ineligible.
Dependent claims 34–36 further recite a generic step of determining which masking mode will be used to mask the coin data, that one of the entities selects the mode to determine the mode, and that the masking mode is changed. This elaborates on the abstract ideas identified in claim 28. There are no new additional elements in claims 34–36 and the additional elements are not being used in a new ordered combination. Accordingly, the Step 2A, prong 2 and Step 2B analyses of claim 28 also applies to claims 34–36, which are ineligible.
Dependent claims 37 and 38 further recite generating and adding a signature to the quasi-masked coin data set, and transmitting the signature. This elaborates on the abstract ideas identified in claim 28. There are no new additional elements in claim 37 and 38 and the additional elements are not being used in a new ordered combination. Accordingly, the Step 2A, prong 2 and Step 2B analyses of claim 28 also applies to claims 37 and 38, which are ineligible.
Dependent claim 40 elaborates on the abstract idea above as shown in the bold language below:
The method according to claim 32, comprising the further method steps:
switching the electronic coin data set while generating an electronic coin data set to be switched in the first terminal, from the electronic coin data set, wherein an obfuscation amount for the electronic coin data set to be switched is generated using the obfuscation amount of the electronic coin data set in the first terminal and the monetary amount of the electronic coin data set is used as a monetary amount for the electronic coin data set to be switched; and/or
splitting the electronic coin data set into a first electronic coin partial data set and a second electronic coin partial data set, wherein the monetary amount is split into at least a first monetary amount and a second monetary amount; and/or
combining a first and a second electronic coin data set into a combined electronic coin data set in the first terminal, comprising the steps of:
calculating an obfuscation amount for the electronic coin data set to be combined by forming a sum of the respective obfuscation amounts of the first and second electronic coin data sets; and
calculating the monetary amount for the electronic coin data set to be combined by forming a sum of the respective monetary amounts of the first and second electronic coin data sets;
wherein masking the electronic coin data set in the masking step of the first, second or third masking mode comprises masking the coin data set to be switched, the first and/or second coin partial data set and/or a linked coin data set, or
wherein masking the data set element of the electronic coin data set, comprises masking a data record element of the coin partial data set to be switched, the data record element, of the first and/or the data record element, of the second coin partial data set and/or the data record element, of the linked coin data set, and
transmitting the fully masked electronic coin data set or the quasi-masked electronic coin data set or a partially amount-masked electronic coin data set to the monitoring entity from the first terminal, to the monitoring entity for checking a validity of the electronic coin data set by the monitoring entity.
As shown above, and consistent with the analysis of claim 28, claim 40 recites an abstract idea. Note that limitations G, H, and I are recited in the alternative, with limitations J through N apparently only part of the option in limitation I. Given that claim 40 is a method claim, and optional steps are not required to be performed, the broadest reasonable interpretation of claim 40 might include only limitation G or H. Under this broadest reasonable interpretation, claim 40 still elaborates on the abstract ideas identified in claim 28. Also under this broadest reasonable interpretation, there are no new additional elements in claim 40 and the additional elements are not being used in a new ordered combination. Accordingly, the Step 2A, prong 2 and Step 2B analyses of claim 28 also applies to claim 40, which is ineligible.
Dependent claims 41–43 elaborate on the “registering” step which was discussed with respect to claim 33 as not having patentable weight; it is an intended use. Nonetheless, in elaborating on the “registering” intended step, claims 41–43 also elaborate on the abstract ideas identified in claim 28 by receiving data about the coin data set, checking that data, and checking whether that data is valid and the coin data can be registered as intended by the “registering” step. Otherwise, there are no new additional elements in claims 41–43 and the additional elements are not being used in a new ordered combination. Accordingly, the Step 2A, prong 2 and Step 2B analyses of claim 28 also applies to claims 41–43, which are ineligible.
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 November 3, 2025, have been fully considered but they are not persuasive.
On page 15 applicant argues that “the claims are not directed to managing data or organizing human activity but to a specific cryptographic data-structure and verification process that improves the functioning of computer-implemented payment systems.” The examiner respectfully disagrees. The claims do not recite improvements to a computer or computing system. Rather, the features applicant points to are part of an administrative process and rule set for managing data that represents currency, which is a business process.
On pages 15–16 applicant identifies additional elements in claim 28. The examiner notes that the same additional elements are identified in the rejection. By definition of the SME analysis anything that is not part of the abstract idea is an additional element, and the converse is also true. Accordingly, applicant’s own articulation of the additional elements suggests that the remainder of the claims recite the abstract idea, which reinforces the examiner’s position regarding the nature of the alleged improvements. Specifically, the alleged improvements reside in the recited abstract idea, and even a newly discovered or novel judicial exception is still an exception. MPEP 2106.04. As discussed in the rejection, the additional elements identified in applicant’s remarks are recited at a high level of generality and while they “work together to provide modification and verification that can be done securely” (Remarks, p. 16), this is consistent with the examiner’s position that the claims recite the abstract idea with instructions to “apply it” on a computer or group of computers, providing only a general link to a technological environment.
The remainder of the remarks either allege an improvement in the abstract idea should make the claim eligible or argue features from the specification rather than the claims. These remarks are not persuasive for the same reasons provided above. Therefore the rejection has been maintained.
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