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 .
This Office Action is in response to the Applicant’s Response After Final, filed on July 2, 2026, in view of which PROSECUTION IS HEREBY REOPENED. Claims 1-18 are pending and under examination in this case. Claims 19-20 were previously canceled. We note no claims have been amended.
Response to Arguments
Applicant’s arguments, see REMARKS, filed July 2, 2026, with respect to the rejection under Yu (US 2011/0138275), have been fully considered and are persuasive. The rejection under Yu has been withdrawn.
We note, however, that the feature in claims 1 and 10 being argued, prompt(ing) the user, via the user interface, to select a source of user private information and to identify user-selected private information from that source to be stored, while not disclosed in Yu, under further consideration, is disclosed by Butler (US 2009/0166375).
Attention is directed to Butler at, e.g. abs “user or customer interface to allow the customer to select the desired digital content . . . “, see also par 19 “a user-friendly interface 16, including a graphical user interface with a touch screen capability”, par 21 “user (or consumer) interface 16 may also provide a user with choices in selecting physical products and/or digital content from the vending machine . . . a user interface that presents a visual display of pertinent information during the interaction and distribution processes”; par 27 “a user interface (typically integrated with the output device 124) that may provide a user with choices in selecting physical products and/or digital content from the vending machine“
Further, Feigelson teaches, as Butler does not specifically disclose, receive user-selected private information from the selected source, (par 39-40 “manufacturer could conduct a transaction 406 on the digital currency network transferring units of digital currency 404 to an address that may only be accessed using private key data stored within a physical token 416 manufactured at a previous time” also par 42 “After obtaining the secret data, the manufacturer encodes and stores it on a physical medium to be included as part of the token”)
It would be obvious to one of ordinary skill in the art to combine Butler and Feigelson for portability and ease of use.
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.
Claims 1-5, 9-14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al (US 2009/0166375) in view of Feigelson (US 2013/0166455).
Regarding claims 1 and 10 –
Butler discloses a terminal for dispensing a non-volatile memory storage device for storing information to a user (par 13), comprising:
a display and a keypad; (par 18, 25)
a device dispenser; (par 29-30)
a processor (par 32) configured to:
provide a user interface to the user via the display and the keypad, (par 32)
prompt the user, via the user interface, to select a source of user information and to identify user-selected information from that source to be stored, (bs “user or customer interface to allow the customer to select the desired digital content . . . “, see also par 19 “a user-friendly interface 16, including a graphical user interface with a touch screen capability”, par 21 “user (or consumer) interface 16 may also provide a user with choices in selecting physical products and/or digital content from the vending machine . . . a user interface that presents a visual display of pertinent information during the interaction and distribution processes”; par 27 “a user interface (typically integrated with the output device 124) that may provide a user with choices in selecting physical products and/or digital content from the vending machine“)
wherein the device dispenser is configured to program the removable non-volatile memory storage device with the user-selected information prior to dispensing the removable non-volatile memory storage device to the user. (par 29-30)
Feigelson teaches, as Butler does not specifically disclose, receive user-selected private information from the selected source, (par 39-40, 42) and
transfer the received user-selected private information to the device dispenser (par 23);
wherein the device dispenser is configured to couple a removable non-volatile memory storage device to a programming connector located in the device dispenser and wherein the removable non-volatile memory storage device comprises a connector electrically coupled to a memory controller, the memory controller being coupled to one or more non-volatile digital memory devices. (par 22)
It would be obvious to one of ordinary skill in the art to combine Butler and Feigelson for portability and ease of use.
Regarding claims 2 and 11 -
Feigelson discloses, wherein the source is a remote website wherein the source of information is a remote website for a cryptocurrency exchange. (par 33)
It would be obvious to one of ordinary skill in the art to combine Butler with Feigelson, such that cryptocurrency is stored rather than an amount that represents a credit amount or cash. The motivation for storing cryptocurrency instead of a credit amount, would be the desire or need to obtain greater flexibility in managing funds and use of those funds.
Regarding claims 3 and 12 -
Feigelson discloses wherein the requested information comprises a private key representing ownership of an amount of cryptocurrency. (par 41)
It would be obvious to one of ordinary skill in the art to combine Butler with Feigelson, such that cryptocurrency is stored rather than an amount that represents a credit amount or cash. The motivation for storing cryptocurrency instead of a credit amount, would be the desire or need to obtain greater flexibility in managing funds and use of those funds.
Regarding claims 4 and 13 –
Feigelson discloses wherein private information (such as keys) is programmed on a removable non-volatile storage media in an encrypted format. (par 41).
It would be obvious to one of ordinary skill in the art to combine Butler with Feigelson, motivated by the desire to obtain a more secure transaction, wherein the transaction is secure enough to be suitable for cryptocurrency – in other words, where the addition of encryption makes for a more secure transaction.
Regarding claims 5 and 14 –
Feigelson discloses wherein the key for the encrypted format is kept private in the terminal. (par 41-42).
It would be obvious to one of ordinary skill in the art to combine Butler with Feigelson, motivated by the desire to obtain a more secure transaction, wherein the transaction is secure enough to be suitable for cryptocurrency – in other words, where the addition of encryption makes for a more secure transaction.
Regarding claims 9 and 18 –
Feigelson discloses wherein user identification information is programmed with the private information that is programmed on the removable non-volatile storage device. (par 39-40)
It would be obvious to one of ordinary skill in the art to combine Butler with Feigelson, motivated by the desire to obtain a more secure transaction, wherein the transaction is secure enough to be suitable for cryptocurrency – in other words, where the addition of encryption makes for a more secure transaction.
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al (US 2009/0166375) and Feigelson (US 2013/0166455) and further in view of Park et al (US 2009/0172265).
Butler in view of Feigelson discloses as above.
Regarding claims 6 and 15 –
Park discloses wherein a key for the encrypted format is kept private in a controller ( par 36 “memory controller 30 encrypts data of the flash file and stores the encrypted data in the data block, and stores an object header of the corresponding flash file, which includes a decryption key to decrypt the encrypted data, in the header block”) in the removable non-volatile storage device. (par 33 “flash memory device 10 includes a flash memory 20 and a memory controller”)
It would be obvious to combine Butler, Feigelson and Yu with the storage of Park in order to obtain greater security in transactions.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable Butler et al (US 2009/0166375), Feigelson (US 2013/0166455), and further in view of Moore et al (US 2011/0302066).
Butler in view of Feigelson discloses as above.
Regarding claims 7 and 16 –
Moore discloses wherein the private information is programmed on the removable non-volatile storage device in a proprietary format. (par 34 this “tax information . . . stored in an XML or proprietary data format on one or more magnetic, semiconductor, flash, optical, or other like storage devices”)
It would be obvious to one of ordinary skill in the art to combine It would be obvious to combine Butler, Feigelson and Yu with the proprietary format of Moore for greater information security.
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al (US 2009/0166375) in view of Feigelson (US 2013/0166455) and further in view of Franks (US 2006/0073883),
Butler in view of Feigelson discloses as above.
Regarding claims 8 and 17 –
Feigelson discloses wherein information is programmed on the removable non-volatile storage device in a password protected format. (par 39-40)
Feigelson does not expressly disclose wherein the information programmed, stored, dispensed, etc., is private user information. However Franks does disclose wherein the information programmed, stored, dispensed, etc., is private user information. (par 58, e.g. customer credit information)
It would be obvious to one of ordinary skill in the art to combine Franks with Feigelson and Butler, motivated by the desire to obtain a more secure transaction, wherein the transaction is secure enough to be suitable for cryptocurrency – in other words, where the addition of encryption makes for a more secure transaction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Park (US 2007/0102511) discloses a method of providing secured access with a payment device.
Simon (US 2021/0125111) discloses a hospitality services processing system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRISTINA OWEN SHERR whose telephone number is (571)272-6711. The examiner can normally be reached 8:30 - 5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cristina Owen Sherr/ Examiner, Art Unit 3697
/JOHN W HAYES/ Supervisory Patent Examiner, Art Unit 3697
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