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 .
Acknowledgments
The submission (RCE and Amendment) filed on 12/17/25 is acknowledged.
Status of Claims
Claims 1-8, 10-11, 13, 15-18 and 20-22 are pending.
In the Amendment filed on 12/17/25, claims 1, 15 and 17 were amended, claims 21-22 were added, and no claims were cancelled (claims 9, 12, 14 and 19 were cancelled in previous papers).
Claims 1-8, 10-11, 13, 15-18 and 20-22 are rejected.
Response to Arguments
Regarding the rejections under 35 U.S.C. 112
In view of the amendments to the claims, the rejections have been overcome.
Regarding the rejection under 35 U.S.C. 101
Applicant's arguments have been fully considered but are not persuasive.
The Office responds to Applicant's arguments below. In the discussion below, page numbers refer to Applicant's instant Response unless otherwise indicated.
At page 8, Applicant quotes from the account of additional elements in the independent claims, as set forth in the previous rejection, and Applicant disagrees that the claim limitations in question amount merely to 'apply it'.
Initially, for clarification of the record, the Examiner notes that the rejection stated that the additional elements amounted to no more than either mere instructions to apply the exception using generic computer elements or generally linking the use of a judicial exception to a particular technological environment or field of use.
Applicant proceeds to argue that claim 1 is directed to a practical application, with reference to specific claim limitations that allegedly accomplish a specified solution, and with reference to the "Kim Memo,"1 which Applicant argues allegedly supports Applicant's argument. Specifically, Applicant argues:
First, Applicant submits that amended claim 1 is directed at the practical application of how to prohibit nefarious individuals/organizations from exploiting digital currency for illegal purposes. See, e.g., Specification at para. [0028]. The system of amended claim 1 accomplishes this by reciting,
facilitating said management by receiving over the communications network a cancel request for removing an existing associated pair from being stored in the centralized list in order to remove the corresponding encrypted digital value as a valid form of digital currency of the encrypted digital currency in general circulation; and
removing the existing associated pair from the centralized list in response
to the cancel request [....] . (p. 8)
…
In respect of elements 1 and 3 quoted above from the Kim Memo2, amended claim 1 does much more than recite "only the idea" of a solution or outcome, and also recites with particularity how the claimed system addresses the practical problem of prohibiting nefarious individuals/organizations from exploiting digital currency for illegal purposes. Namely, it recites operations, including, inter alia, how the digital currency is generated and stored in a centralized list, how digital values are sent to a financial institution, and how those digital values are effectively removed from circulation. This is more than simply saying "apply it". (p. 9)
In response, the Examiner notes that, insofar as claim 1 recites a particular way to achieve a solution/outcome, this particularity is of the abstract idea, and not (1) of the additional elements or (2) of any interaction between the additional elements and the abstract idea.
As for (1) the additional elements:
For example, of the limitations argued by Applicant in the above quote block, only the limitations "communications network," "digital" and "financial institution" are additional elements. And the only other additional elements in claim 1 are a computer processor for executing a set of instructions stored on a computer readable medium, a storage, and an institution. None of these additional elements is recited with particularity. Rather, they are recited at a high level of generality and are not described.
As for (2) the interaction between the additional elements and the abstract idea:
Initially, note that, regarding "[a]nalysis of claim as a whole," the "Kim Memo" states:
The way in which the additional elements use or interact with the exception may integrate the judicial exception into a practical application. Accordingly, the additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception. Instead, the analysis should take into consideration all the claim limitations and how these limitations interact and impact each other when evaluating whether the exception is integrated into a practical application. (August 4, 2025 Memorandum ("Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101"), II.B., pp. 3-4; emphasis added)
In respect of claim 1, the additional elements (i.e., as indicated above) do not interact with the abstract idea in any meaningful way such as would integrate the abstract idea into a practical application. Rather, the additional elements are simply mechanically tacked onto the abstract idea content so as to apply it.
Thus, any particularity of claim 1 reflects a narrowing of the abstract idea, not integration of the abstract idea into a practical application. Narrowing of the abstract idea does not render a claim eligible.
At page 9, penultimate paragraph, Applicant notes that examiners should give weight to additional elements regardless of their conventionality. In response, the Examiner has given appropriate weight to the additional elements. As discussed above, not only are the additional elements generic, but they interact with the abstract idea merely by way of 'apply it'.
At the paragraph bridging pages 9-10, Applicant argues that claim 1 recites additional limitation(s) that meaningfully limit the judicial exception, namely, "digital currency stored in a central register as encrypted digital values using associated pairs of unique serial IDs and corresponding currency denominations, with prohibition being implemented by removing an associated pair from that centralized list in response to a cancel request received over a communications network." In response, the Examiner notes that, with the exception of "digital" and "communications network," the subject matter cited here by Applicant constitutes part of the judicial exception, not additional elements. Of this subject matter, then, the limitations "digital" and "communications network" are merely generic computer elements, recited at a high level of generality and not described, that serve merely to apply the judicial exception. The remainder of this subject matter constitutes part of the judicial exception -- as such, it cannot meaningfully limit the judicial exception. Rather, it merely narrows the judicial exception, which does not render a claim eligible.
Finally, at page 10, Applicant argues that claim 1 is eligible based on Desjardins.3 Specifically, Applicant argues:
Namely, in Ex parte Desjardins, Appeal no. 2024-000567, Application no. 16/319,040 (Sept. 26, 2025), USPTO Director Squires comments at p. 10, "This case demonstrates that §§ 102, 103 and 112 are the traditional and appropriate tools to limit patent protection to its proper score. These statutory provisions should be the focus of examination." As there does not appear to be disagreement that the claims, following entry of the present amendments, comply with §§ 102, 103 and 112, and in view of the above arguments and amendments in respect of § 101, Applicant respectfully requests that the eligibility rejection against amended claim 1 be withdrawn and that the case be permitted to proceed to allowance.
In response, the Examiner does not find substantive content in this argument. To the extent that Applicant argues that the claims comply with 35 U.S.C. §§ 102, 103 and 112, the Examiner notes that even assuming this is true this does not demonstrate compliance with 35 U.S.C. § 101. 35 U.S.C. § 101 remains in force as a statutory requirement for patentability independent of 35 U.S.C. §§ 102, 103 and 112. As for Applicant's language "in view of the above arguments and amendments in respect of § 101," this language does not add to what Applicant has already presented. What Applicant has already presented has been addressed above.
For the sake of completeness, it is further noted that in light of Desjardins, MPEP § 2106.05(a), subsection I, second paragraph, was revised to add new examples xiii and xiv to the list of examples that may show an improvement in computer functionality:
xiii. An improved way of training a machine learning model that protected the model’s knowledge about previous tasks while allowing it to effectively learn new tasks; Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential); and
xiv. Improvements to computer component or system performance based upon adjustments to parameters of a machine learning model associated with tasks or workstreams; Ex Parte Desjardins, Appeal No. 2024-000567 (PTAB September 26, 2025, Appeals Review Panel Decision) (precedential).
In this regard, it is noted that Applicant's claims do not recite or otherwise involve machine learning or similar computer technology. As such, Applicant's claimed subject matter is distinct from that of Desjardins, and Applicant does not suggest any similarity between the two. Thus, Desjardins does not appear to be significantly relevant to Applicant's claims in respect of the eligibility analysis.
Claim Objections
Claims 11, 15, 17, 18 and 20 are objected to because of the following informalities:
A) Claim 11 recites:
wherein the set of instructions further includes an instruction of storing the encrypted digital values or a record representing the encrypted digital values in a storage prior to said-sending operation
In the underlined language, the hyphen does not appear to make sense, and its presence appears to be a typographical/clerical error. Applicant is understood to have intended the language "said-sending" to be "said sending." Accordingly, the language "said-sending" should be changed to "said sending."
B) Claim 15 recites:
regenerate a replacement encrypted digital corresponding to the existing associated pair.
The underlined language is not grammatical in context, as it lacks a noun. In light of corresponding claim 20 and specification 0034, the underlined language is understood to encompass/reflect a typographical/clerical error. In view of the claims and disclosure, Applicant is understood to have intended the language "a replacement encrypted digital" to be "a replacement encrypted digital value," consistent with claim 20 and specification 0034. Accordingly, the language "a replacement encrypted digital" should be changed to "a replacement encrypted digital value."
C) Claim 17 recites:
accessing over the communications network the centralized list and storing the plurality of unique serial IDs and corresponding currency denominations in a centralized list, the centralized list being the centralized or general ledger containing a plurality of records associating the plurality of unique serial IDs with said corresponding currency denominations as associated pairs, …;
Regarding the underlined language "a centralized list": on its face the antecedent basis of this language is not clear. That is, it is not clear whether this recitation refers to the previously recited "centralized list" or not, because on the one hand the use of "a" instead of "the" would indicate that this recitation does not refer to the previous recitation, but on the other hand the use of the same term (namely, "centralized list") would indicate that this recitation does refer to the previous recitation.
Regarding the underlined language "the centralized or general ledger": on its face this recitation lacks antecedent basis, as there is no previous recitation of a "centralized or general ledger."
However, in view of corresponding claim 1 and the disclosure, the underlined language is understood to encompass/reflect typographical/clerical errors. That is, despite the apparent antecedent basis issues, in view of corresponding claim 1 and the disclosure it is understood that Applicant intended the underlined language "a centralized list" to be "the centralized list," and that Applicant intended the underlined language "the centralized or general ledger" to be "a centralized or general ledger." Accordingly, the underlined language "a centralized list" should be changed to "the centralized list," and the underlined language "the centralized or general ledger" should be changed to "a centralized or general ledger."
D) Claim 17 recites:
wherein the result of said-sending is that said units of the encrypted digital values are distributed as new currency into the general circulation for use in the plurality of transactions between the several sequential entities
In the underlined language, the hyphen does not appear to make sense, and its presence appears to be a typographical/clerical error. Applicant is understood to have intended the language "said-sending" to be "said sending." Accordingly, the language "said-sending" should be changed to "said sending."
E) Claim 18 recites:
The method of claim 17 further comprising: receive a request for one or more of the encrypted values for said account deposit.
The underlined language is not grammatical in context, as it is a present tense rather than a gerund. However, the underlined language is understood to encompass/reflect a typographical/clerical error. In light of base claim 17, Applicant is understood to have intended the language "receive" to be "receiving," consistent with claim 17. Accordingly, for clarity and consistency with claim 17, the language "receive" should be changed to "receiving."
F) Claim 20 recites:
regenerating a replacement encrypted digital value as replacement encrypted digital value corresponding to the existing associated pair.
The underlined language is not grammatical in context, as it lacks the article "a." In light of the remainder of claim 20, corresponding claim 15, and specification 0034, the underlined language is understood to encompass/reflect a typographical/clerical error. In view of the claims and disclosure, Applicant is understood to have intended the underlined language "replacement encrypted digital value" to be "a replacement encrypted digital value," consistent with the remainder of claim 20, corresponding claim 15, and specification 0034. Accordingly, the underlined language "replacement encrypted digital value" should be changed to "a replacement encrypted digital value."
Appropriate correction is required.
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 1-8, 10-11, 13, 15-18 and 20-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-8, 10-11, 13, 15-18 and 20-22 are directed to a system or method, which are/is one of the statutory categories of invention. (Step 1: YES)
Claims 1 and 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a system and method for generating and managing currency such that units of the currency are usable for a plurality of financial transactions between several sequential entities.
For claims 1 and 17 (claim 1 being deemed representative), the limitations (indicated below in bold) of:
a computer processor for executing a set of instructions stored on a computer readable medium for:
storing a centralized list in a storage, the centralized list accessible over a communications network;
generating a plurality of unique serial IDs and corresponding currency denominations for the encrypted digital currency, each of the currency denominations associated with at least one of the plurality of unique serial IDs;
accessing over the communications network the centralized list and storing the plurality of unique serial IDs and corresponding currency denominations in the centralized list, the centralized list being a centralized ledger containing a plurality of records associating the plurality of unique serial IDs with said corresponding currency denominations as associated pairs, such that history of ownership of said corresponding currency denominations is absent from the plurality of records of the centralized list;
accessing the list over the communications network and generating units of encrypted digital values using each associated pair of the plurality of unique serial IDs and corresponding currency denominations for the encrypted digital currency, each of the units of the encrypted digital values representing the encrypted digital currency, the units of the encrypted digital values including one or more predefined denominations and one or more custom denominations stored in the centralized list;
sending one or more of the units of the encrypted digital values to an institution over the communications network for storage in a financial account as an account deposit of the one or more of the units of the encrypted digital values;
facilitating said management by receiving over the communications network a cancel request for removing an existing associated pair from being stored in the centralized list in order to remove the corresponding encrypted digital value as a valid form of digital currency of the encrypted digital currency in general circulation; and
removing the existing associated pair from the centralized list in response to the cancel request,
wherein the result of said sending is that said units of the encrypted digital values are distributed as new currency into the general circulation for use in the plurality of transactions between the several sequential entities.
as drafted, constitute a process that, under the broadest reasonable interpretation, covers "certain methods of organizing human activity," specifically, "fundamental economic practices or principles" and/or "commercial or legal interactions," but for recitation of generic computer components or generally linking the use of a judicial exception to a particular technological environment or field of use. The Examiner notes that "fundamental economic practices" or "fundamental economic principles" describe concepts relating to the economy and commerce, including hedging, insurance, and mitigating risks, and "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. MPEP 2106.04(a)(2)II.A.,B. If a claim limitation, under its broadest reasonable interpretation, covers "fundamental economic practices or principles" and/or "commercial or legal interactions," but for recitation of generic computer components or generally linking the use of a judicial exception to a particular technological environment or field of use, then it falls within the "certain methods of organizing human activity" grouping of abstract ideas. Accordingly, claims 1 and 17 recite an abstract idea. (Step 2A - Prong 1: YES. The claims recite an abstract idea.)
This judicial exception is not integrated into a practical application. Claims 1 and 17 recite the additional elements of a computer processor for executing a set of instructions stored on a computer readable medium, a storage, a communications network, digital (currency, values), and an institution (all of the foregoing recited by claims 1 and 17), that implement the abstract idea. These additional elements are not described by the applicant and they are recited at a high level of generality (i.e., one or more generic computer elements performing generic computer functions or generally linking the use of a judicial exception to a particular technological environment or field of use), such that they amount to no more than mere instructions to apply the exception using generic computer elements (a computer processor for executing a set of instructions stored on a computer readable medium, a storage, a communications network, digital) or generally linking the use of a judicial exception to a particular technological environment or field of use (institution). Accordingly, even in combination 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. (Step 2A - prong 2: NO. The additional elements do not integrate the abstract idea into a practical application.)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a computer processor for executing a set of instructions stored on a computer readable medium, a storage, a communications network, digital (currency, values), and an institution (all of the foregoing recited by claims 1 and 17), to perform the noted steps amount to no more than mere instructions to apply the exception using generic computer elements or generally linking the use of a judicial exception to a particular technological environment or field of use. Mere instructions to apply an exception using generic computer elements or generally linking the use of a judicial exception to a particular technological environment or field of use cannot provide an inventive concept ("significantly more"). Accordingly, even in combination, these additional elements do not provide significantly more. As such, claims 1 and 17 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more.)
Dependent claims 2-8, 10-11, 13, 15-16, 18 and 20-22 are similarly rejected because they further define/narrow the abstract idea of independent claims 1 and 17 as discussed above, and/or do not integrate the abstract idea into a practical application or provide an inventive concept such as would render the claims eligible, whether each is considered individually or as an ordered combination.
As for further defining/narrowing the abstract idea:
Dependent claim 2 merely describes processing a request for one or more of the encrypted values for said account deposit, the financial account associated with entity information such that the entity information is registered.
Dependent claim 3 merely describes wherein the currency denominations include one or more predetermined values representing a standardized sequence of currency denomination.
Dependent claims 4 and 5 merely describe the timing of receipt of the request.
Dependent claim 6 merely describes wherein the request includes a custom denomination amount.
Dependent claim 7 merely describes generating a serial ID for the custom denomination amount and storing the serial ID and the custom denomination amount as associated with one another in the list.
Dependent claim 8 merely describes wherein the financial account is associated with entity information such that the entity information is registered.
Dependent claims 10 and 11 merely describe storing the encrypted values or a record representing them prior to said sending operation.
Dependent claim 13 merely describes wherein the list includes at least one of the currency denominations having a plurality of instances in the list, such that each instance is associated with a respective one of the plurality of unique serial IDs.
Dependent claims 15 and 20 merely describe regenerating a replacement encrypted value corresponding to the existing associated pair.
Dependent claim 16 merely describes wherein the IDs are represented using alphanumeric characters.
Dependent claim 18 merely describes receiving a request for one or more of the encrypted values for said account deposit.
Dependent claims 21 and 22 merely describe wherein the generating of the units of the encrypted … values and the sending of the one or more units of the encrypted … values are performed synchronously in response to a request.
As for additional elements:
Claims 2, 7, 10, 11 and 15 recite “wherein the set of instructions further includes an instruction.” This recitation is at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer element. Even in combination these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself.
Claims 2 and 8 further recite “a financial system.” This recitation is at a high level of generality such that it amounts to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. Even in combination these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself.
Claims 4, 5, 10, 11, 15 and 20-22 further recite “digital.” This recitation is at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer element. Even in combination these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself.
Claims 10 and 11 further recite “storage.” This recitation is at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer element. Even in combination these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself.
Claims 3, 6, 13, 16, and 18 do not recite any additional elements, and accordingly, for the reasons provided above with respect to the independent claims, are not patent eligible.
Therefore, dependent claims 2-8, 10-11, 13, 15-16, 18 and 20-22 are not patent eligible.
Conclusion
The prior art made of record and not relied upon, as set forth in the accompanying Notice of References Cited (PTO-892), is considered pertinent to applicant's disclosure.
Wilkes (US-20130218763-A1) teaches a central authority generating electronic currency and providing for transfers/transactions using the electronic currency, the electronic currency being anchored to an asset, e.g., physical currency, and each of the electronic currency notes (referred to as "PEAC" (persistent electronically anchored currency) notes) including inter alia a unique identifier (e.g., serial number) and a denomination, and hence tracking/tracing the currency and transactions.
Hurry (US-20200151682-A1) teaches a digital fiat currency based on physical currency, generated and administered by a central authority, including generating the digital currency and removing the associated physical currency from circulation (hence converting physical currency to digital currency), the digital currency including inter alia a serial number and a denomination, and providing for transfers/ transactions using the digital currency, recording the digital currency and the transactions on a blockchain, and hence tracking/tracing the currency and transactions.
Ramanathan (US-11681995-B1) teaches transforming physical currency to digital currency, thus generating digital currency and destroying the corresponding physical currency.
Rose (US-20190108517-A1) teaches a bank generating digital cash certificates and providing for transfers/transactions using them, the digital cash certificates including inter alia a unique identifier (e.g., serial number) and a denomination, and providing for anonymous transactions.
Coughlan (WO-2022229144-A1) teaches a system of tokens as electronic currency, each token including inter alia a serial number and a denomination, and using denominations and dividing/splitting of tokens/denominations in data structures to conserve storage space / reduce database storage requirements.
Marlov (US-20150287133-A1) teaches generating digital records of physical currency (Banknote-IDs) in a method of locking and unlocking the currency to protect against theft of physical currency during transport.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS W PINSKY whose telephone number is (571)272-4131. The examiner can normally be reached on 8:30 am - 5:30 pm ET.
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/DOUGLAS W. PINSKY/
Examiner, Art Unit 3626
1 The term "Kim Memo" as used by Applicant is understood to refer to the USPTO's August 4, 2025 Memorandum ("Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101").
2 By "elements 1 and 3 [of] the "Kim Memo," Applicant is referring to the following:
1. Whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished, or the claim covers a particular solution to a problem or a particular way to achieve a desired outcome.
3. The particularity or generality of the application of the judicial exception.
3 Appeals Review Panel decision in In re Desjardins, Appeal No. 2024-000567. See the USPTO's Dec. 5, 2025 Memorandum ("Advance notice of change to the MPEP in light of Ex Parte Desjardins") and Dec. 4, 2025 Memorandum ("Subject Matter Eligibility Declarations").