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 Amendment filed August 28, 2025. Claims 1-12 are pending in this case. Claims 13-20 are canceled pursuant to a Requirement for Restriction issued March 12, 2025. Claim 1 is currently amended. Accordingly, claims 1-12 are under examination in this case.
Response to Arguments
Applicant’s arguments with respect to claim 1, as currently amended, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant further argues, that the combination of Solis and Forzley is improper.
Examiner respectfully disagrees.
We note that the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co. , 221 USPQ 481 (Fed. Cir. 1984). In this case, we find that a person of ordinary skill in the art would reasonably expect the payment method of SOLIS, in combination with the method of processing cryptocurrency disclosed by FORZLEY, to retain their respective properties and functions when performed in combination. See MPEP § 2143 Part II.A Ex.5 (discussing Sundance, Inc. v. DeMonte Fabricating Ltd., 89 USPQ2d 1535 (Fed. Cir. 2008)). Therefore, by the rationale outlined above, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the disclosure of SOLIS with the blockchain of FORZLEY to obtain the claimed invention.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Solis (US 2015/0178693) in view of Forzley et al (US 2017/0116608) and further in view of Sethi (US 2020/0356986).
Regarding claim 1 –
Solis discloses a method, comprising:
integrating a payment by digital wallet option into a user interface of a fiat currency account management application (app); (par 19)
receiving through the user interface a selection of the payment by digital wallet option from a user operating the app; (par 60)
causing a transfer in a first amount from a first digital wallet of the user to a second digital wallet based on the receiving; (par 60-62, par 80) and
transferring a second amount of a fiat currency to a financial account of a financial institution (FI) associated with the user as the payment on a user account with the FI. (par 60-62, par 80)
Forsley discloses, as Solis does not specifically disclose, wherein the transfer occurs over a blockchain (BC). (par 44)
A person of ordinary skill in the art would reasonably expect the payment method of SOLIS, in combination with the method of processing cryptocurrency disclosed by FORZLEY, to retain their respective properties and functions when performed in combination. See MPEP § 2143 Part II.A Ex.5 (discussing Sundance, Inc. v. DeMonte Fabricating Ltd., 89 USPQ2d 1535 (Fed. Cir. 2008)). Therefore, by the rationale outlined above, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the disclosure of SOLIS with the blockchain of FORZLEY to obtain the claimed invention.
Sethis discloses, as Solis and Forsley do not, wherein the second digital wallet is managed by a gateway service, (par 28), and , wherein transferring the second amount comprises transferring the second amount from a financial account of the gateway service to the financial account of the FI. (par 28).
It would be obvious to one of ordinary skill in the art to combine Solis with the gateway of Sethis, in order to achieve greater accuracy in transactions, that is, in order to better avoid sending payments to the wrong recipient.
Regarding claim 2 –
Solis discloses wherein receiving further includes receiving an account identifier for the user account and a wallet identifier for the first digital wallet from the app based on the selection.(par 56)
Regarding claim 3 –
Solis discloses wherein receiving further includes presenting within the user interface a code and instructing through the user interface the user to scan the code, wherein the code encoded with a wallet identifier for the second digital wallet. (par 81, 72)
Regarding claim 4 –
Solis discloses causing a wallet application on a user-operated device to generate and submit the transfer on the BC using the first amount from the first digital wallet and the wallet identifier for the second digital wallet when the code is scanned. (par 81, 72)
Regarding claim 5 -
Forzley discloses, as Solis does not specifically disclose, using the wallet identifier for the second digital wallet and confirming the transfer appears on the BC. (par 29, 44)
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the disclosure of SOLIS with the identifiers and blockchain of FORZLEY to obtain the claimed invention.
Regarding claim 6 –
Solis discloses wherein causing further includes presenting within the user interface a wallet identifier for the second digital wallet and instructing the user to initiate the payment from the first digital wallet to the second digital wallet on the blockchain using a wallet application on a user-operated device. (par 99-100)
Regarding claim 7 –
Solis discloses wherein presenting further includes identifying the transfer on the BC as a pending transfer to the second digital wallet and linking a wallet identifier for the first digital wallet appearing in the pending transfer to a user account identifier for the user account of the user. (par 48, 76)
Regarding claim 8 -
Forzley discloses, as Solis does not specifically disclose, transferring further includes converting the first amount of the cryptocurrency to an equivalent amount in the fiat currency to identify the second amount of the fiat currency. (par 44)
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the disclosure of SOLIS with the multiple currencies of FORZLEY to obtain the claimed invention, along with greater user convenience.
Regarding claim 9 –
Solis discloses wherein transferring further includes transferring a user account identifier for the user account with the second amount. (par 99, 127, 12-16)
Regarding claim 10 –
Solis discloses wherein transferring further includes transferring the second amount from a financial account of a provider who provides the method. (par 12-16)
Regarding claim 11 –
Forzley discloses, as Solis does not specifically disclose, wherein transferring further includes exchanging the first amount of the cryptocurrency within the second wallet to a third amount of a stable cryptocurrency over the BC. (par 44)
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the disclosure of SOLIS with the identifiers and blockchain of FORZLEY to obtain the claimed invention.
Regarding claim 12 -
Solis discloses processing the method as a cryptocurrency payment gateway service. (par 80)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zimmerman et al (US 2020/0005283) discloses a cryptocurrency payment and refund processing on a transaction terminal.
THIS ACTION IS MADE FINAL. 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 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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