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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are as follow.
“an issuing entity” in Claim 34, line 1.
“a coin generating unit” in Claim 34, line 3.
“an electronic coin data set” in Claim 34, line 3.
“a coin output unit” in Claim 34, line 4.
“a participating unit” in Claim 34, line 5.
“a bank entity” in Claim 34, line 6.
“a portable data carrier” in Claim 36, line 3.
“a portable electronic data storage” in Claim 37, line 2.
“a banknote processing machine” in Claim 43, lines 1 and 2.
“a reader for opto-electronically reading the printout” in Claim 44, lines 1 and 2.
“a checking device for checking the printout” in Claim 46, line 2.
“a printout destruction unit for destroying printouts” in Claim 46, line 3.
“a register data set” in Claim 49, line 2.
“a coin register of the payment system” in Claim 49, lines 2 and 3.
“a masked electronic coin data set” in Claim 51, line 3.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 34-53 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 34 mentions the term “an air gap process” in the last two lines. However, Applicant’s specification mentions an air gap process at paragraph 12 as being an air gap or air wall process that separates the two units, i.e., the coin generating unit and the coin output unit while paragraph 186 refers to air gap (13) as well as air gap process (13). Paragraph 215 mentions air gap process (14). Claim 34, first line mentions “a payment system” which indicates the claim is an apparatus claim. Therefore, the mention of an “air gap process” is expressed as an improper method step/process within an apparatus claim and renders the claim unclear and indefinite since the air gap appears to be a structural element and appears to be described that way in the specification. Note also that figure 6 illustrates step (201) stating “Air-gap transmitting the request” and step (206) stating “Air-gap transmitting the coin data set”.
Claim 36 mentions the phrase “a transmitting by means of a secured transport container” in the last line. Applicant’s specification and disclosure do not provide any description enumerating what this refers to.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 38-42 and 46 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 38, lines 1 and 2, the phrase “wherein for transmitting by air gap process” is unclear and indefinite. What is being transmitted? How does the preamble relate to the rest of the limitations?
Claim 38 recites the limitation "air gap" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 49 and 50 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 49, the phrase “wherein p the coin output unit” in line 4 is unclear and indefinite.
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 34-53 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, Claims 34-53 are directed to a system comprising a memory and a processor. Therefore, these claims fall within the four statutory categories of invention.
The claim(s) recite(s) a system of “transferring value”. Specifically, the claims recite
an issuing entity for issuing electronic coin data sets in a payment system,
with:
a coin generating unit, configured for generating an electronic coin data set; and
a coin output unit, configured for obtaining the electronic coin data set generated by the coin generating unit and for outputting the electronic coin data set to a participating unit,
or a bank entity of the payment system, in electronic form,
wherein the issuing entity is configured such that the transmitting of the electronic coin data set between the coin generating unit and the coin output unit occurs via an air gap process,
which is grouped within the “certain methods of organizing human activity” and/or “fundamental economic practices” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)) because claims concern movement of value between persons or entities, noting that this touches organizing human activity as well as fundamental economic practices. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as the air gap, banknote processing machine, checking device and printout destruction unit merely use(s) a computer as a tool to perform an abstract idea and/or generally link(s) the use of a judicial exception to a particular technological environment. Specifically, the air gap, banknote processing machine, checking device and printout destruction unit perform(s) the steps or functions of generating an electronic coin set, obtaining the electronic coin data set, and transmitting the electronic coin data set. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a the air gap, banknote processing machine, checking device and printout destruction unit to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of a system of transferring value. As discussed above, taking the claim elements separately, the air gap, banknote processing machine, checking device and printout destruction unit perform(s) the steps or functions of generating an electronic coin set, obtaining the electronic coin data set, and transmitting the electronic coin data set. These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of “transferring value”. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 35-53 further describe the abstract idea of “transferring value”. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 34-40 and 42-53 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winklevoss (US 10,269,009 B1).
Regarding Claim 34, Winklevoss discloses
an issuing entity for issuing electronic coin data sets in a payment system, i.e., digital math-based asset miner (65, 145), as mentioned at col. 10, line 35-col. 12, line 3 and col. 40, lines 30-48 and as illustrated in figures 1 and 13d, for example,
with:
a coin generating unit, i.e., a digital asset client (110a, 110b, 110n), as mentioned at col. 16, lines 4-32 and as illustrated in figure 1, or transaction ledger (115) as illustrated in figure 1, or accounting unit (25) in figure 13d, configured for generating an electronic coin data set, i.e., interpreted as adding digital coins/currency such as bitcoin to transaction ledger (115) and adding or removing digital coins/currency from digital wallet (30’) in figures 1 and 13d; and
a coin output unit, i.e., data network (15), accounting computer (25), data network (125) and transmitters (132) as mentioned at col. 9, lines 22-46 and as illustrated in figure 1, for example, configured for obtaining the electronic coin data set generated by the coin generating unit (25, 110a, 110b, 110n, 115) and for outputting the electronic coin data set to a participating unit, i.e., user device (105a, 105b, 105n) as illustrated in figure 1,
or a bank entity of the payment system, i.e., bank (3206-1, 3202, 3206n) as illustrated in figure 3 and as mentioned at col. 18, lines 31-61, for example, in electronic form, noting the digital nature of the digital math-based asset exchange,
wherein the issuing entity (65, 145) is configured such that the transmitting of the electronic coin data set between the coin generating unit (25, 110a, 110b, 110n, 115) and the coin output unit (15, 25, 125, 132) occurs via an air gap process, i.e., noting isolated wallet computer (30′) within faraday cage (50) or the isolated transaction computer (32) in faraday cage (60) which are air gapped from network computer (20) as illustrated in figure 13d and as mentioned at col. 41, line 59-col. 42, line 4, for example.
Regarding Claim 35, Winklevoss discloses
wherein the air gap process, i.e., via faraday cages (50, 60), between the coin generating unit (25, 110a, 110b, 110n, 115) and the coin output unit (15, 25, 125, 132) is configured to physically separate the coin generating unit (25, 110a, 110b, 110n, 115) from the coin output unit (15, 25, 125, 132), as illustrated in figure 13d, for example.
Regarding Claim 36, Winklevoss discloses
wherein the air gap process, i.e., via faraday cages (50, 60),
comprises a physical transmitting of the electronic coin data set between the coin generating unit (25, 110a, 110b, 110n, 115) and the coin output unit (15, 25, 125, 132), in particular by means of a portable data carrier, i.e., as mentioned in col. 42, lines 10-20, stating “[t]he transaction may be transferred to the isolated computer for signing”, and “[h]ence, an air gap or other lack of a required communication connection may exist between the isolated and networked computer” and “[i]n embodiments, the unsigned transaction data may be transferred manually, such as by saving the data from the networked computer to a removable storage medium (e.g., a USB flash drive, CD, CD-ROM, DVD, removable hard drive, disk, memory card, to name a few), and inputting or otherwise operatively connecting the storage medium to the isolated computer”,
and/or a transmitting by means of a secured transport container, i.e., interpreted as either secure storage chamber (60) as illustrated in figure 13d and as mentioned at col. 37, lines 19-22 or secure vaults (70-1, 70-2, 70-3) as illustrated in figure 13d and as mentioned at col. 40, line 49-col. 41, line 16, for example.
Regarding Claim 37, Winklevoss discloses
wherein the transmitting occurs
by means of a portable electronic data storage, as mentioned in col. 42, lines 10-20.
Regarding Claim 38, Winklevoss discloses
wherein for transmitting by (the) air gap process, i.e., via faraday cages (50, 60):
the coin generating unit (25, 110a, 110b, 110n, 115) is further configured for generating a printout representing the
electronic coin data set, i.e., the private key or key segment as mentioned at col. 37, lines 3-22 and as mentioned at col. 41, lines 17-30, mentioning etched coins or other substrates with the key or key segment, for example; and
the coin output unit (15, 25, 125, 132) is further configured for obtaining the electronic coin data set generated by the coin generating unit (25, 110a, 110b, 110n, 115) by reading the printout, i.e., via key reader (40), as mentioned at col. 39, lines 43-58, for example.
See also col. 14, lines 38-46, col. 15, lines 55-57, col. 23, line 65-col. 24, line 5, col. 36, lines 46-59, col. 36, line 60-col. 37, line 2, col. 37, lines 4-22, col. 37, line 40-col. 38, line 13, col. 45, lines 36-45 and col. 46, lines 16-31, for example.
Regarding Claim 39, Winklevoss discloses
wherein the printout has at least
one of the following elements:
an alphanumeric character string, as mentioned in col. 13, lines 28-49 and particularly lines 41-45;
an opto-electronically readable code, in particular a two-dimensional code, i.e., a QR code as mentioned at col. 15, lines 30-41, or col. 37, lines 22 and particularly lines 8-10;
a laser engraving, as mentioned at col. 45, lines 37-45 (mentioning engraving), for example. See also col. 39, lines 43-58 (etching, printing, laser, QR reader), col. 46, lines 16-31 (etching and QR codes),
Regarding Claim 40, Winklevoss discloses
wherein the printout occurs on paper substrate or plastic substrate in banknote format, as mentioned at col. 37, lines 4-22, col. 45, lines 19-28, col. 37, line 40-col. 38, line 12 and col. 56, lines 18-63.
Regarding Claim 42, Winklevoss discloses
wherein multiple coin data sets, i.e., interpreted as key or key segments, are arranged on a printout, as mentioned in col. 37, line 40-col. 38, line 12 and col. 41, lines 17-30 and col. 17, line 63-col. 18, line 7.
Regarding Claim 43, Winklevoss discloses
wherein the coin output unit (15, 25, 125, 132) has a banknote processing machine, i.e., noting cash storage (2128) and cash dispenser (2130) as illustrated in figure 22 and as mentioned at col. 56, lines 18-63 and col. 57, lines 22-32, for example.
Regarding Claim 44, Winklevoss discloses
wherein the coin output unit (15, 25, 125, 132) has a reader, i.e., key reader (40), as illustrated in figure 13d, for opto-electronically reading the printout, as mentioned at col. 39, lines 43-58, noting that the QR reader and laser are construed as being opto-electronic readers.
Regarding Claim 45, Winklevoss discloses
wherein the coin output unit (15, 25, 125, 132) has a reader, i.e., key reader (40), for opto-electronically reading a generation request, as mentioned at col. 40, lines 4-20, which state as follows.
(197) In embodiments, reassembled keys may be input directly into a networked computer 20, which may then be used to access one or more digital wallets and/or perform one or more transactions. Key reader 40 and/or corresponding software (e g, running on a computer operationally connected to the key reader) may be programmed or otherwise designed to assemble key segments into completed keys. Key reader 40 and/or corresponding software (e.g., running on a computer operationally connected to the key reader) may also correlate the private keys with their corresponding public keys, optionally using the reference number master list. In embodiments, one or more pieces of software may be used to retrieve, decrypt, assemble, and/or decipher keys and/or key segments. In embodiments, such software may be run on any of one or more secure storage system computers and/or user devices. In embodiments, multiple authority may be required to initiated a retrieval of stored private keys.
Emphasis provided.
Regarding Claim 46, Winklevoss discloses
wherein the coin output unit has:
a checking device for checking the printout, as mentioned at col. 23, line 38-col. 24, line 5, noting that “[i]n a step S4722, the exchange computer system may perform one or more validation transactions using the fiat funding account” and “[i]n a step S4724, the exchange computer system may receive validation transaction information, which may include a transaction amount, date, and/or time”,
and/or
a printout destruction unit for destroying printouts.
Regarding Claim 47, Winklevoss discloses
wherein the coin generating unit (25, 110a, 110b, 110n, 115) is further configured for generating a signature for the electronic coin data set by signing the electronic coin data set with a private cryptographic key part of the issuing entity (65, 145),
wherein the generated electronic coin data set comprises the signature, as mentioned at col. 8, lines 26-32, col. 16, line 50-col. 17, line 2, col. 17, lines 8-21, col. 35, lines 52-65, col. 41, line 43-col. 42, line 40, noting in particular col. 42, lines 8-34, col. 47, line 53-col. 48, line 6, and noting figure 17, step S712, i.e., “ the unsigned transaction data may be signed using the digital wallet on the isolated computer”, for example.
Regarding Claim 48, Winklevoss discloses
wherein the coin generating unit (25, 110a, 110b, 110n, 115)
is further configured for generating issuer security data, i.e., private keys for example as mentioned at col. 16, lines 24-31, and the coin output unit also obtains the generated issuer security data from the coin generating unit (25, 110a, 110b, 110n, 115) via the air gap process, i.e., faraday cages (50, 60) as illustrated in figure 13d, for example. See also col. 22, lines 31-38 noting the mention of the use of security rules and col. 24, lines 32-37 mention of encryption and “other security protocols”, col. 27, line 30-col. 28, line 2, col. 36, lines 15-36 and col. 39, lines 4-35 mentioning encryption and ciphers for example.
Regarding Claim 49, Winklevoss discloses
wherein the coin generating unit (25, 110a, 110b, 110n, 115) is configured for generating a register data set which is intended for storage in a coin register, i.e., the reference number master list, of the payment system, as mentioned at col. 37, lines 4-22, col. 40, lines 4-20, and
wherein p the coin output unit also obtains the generated register data set, i.e., the reference identifier as mentioned in step (S6010) as illustrated in figure 15a, and as mentioned at col. 43, lines 39-52, from the coin generating unit (25, 110a, 110b, 110n, 115) via the air gap process, i.e., via faraday cages (50, 60) as illustrated in figure 13d, for example.
Regarding Claim 50, Winklevoss discloses
wherein the coin output unit (15, 25, 125, 132) is configured for registering the electronic coin data set in the coin register, i.e., the reference number master list, by outputting the register data set and the issuer security data, i.e., the security keys, to the coin register, i.e., the master list,
wherein either the register data set, i.e., the master list, comprises the issuer security data, i.e., the private keys and/or public keys, for storing in the coin register, i.e., the master list, or the issuer security data is outputted in addition to the register data set to be stored, as mentioned at col. 37, lines 4-22, col. 43, lines 39-52, for example. See also figures 15a-16 and col. 44, line 40-col. 47, line 52, for example.
Regarding Claim 51, Winklevoss discloses
wherein the register data set has
one or more of the following data elements:
a masked electronic coin data set, in particular generated by applying a homomorphic one-way function to the electronic coin data set;
a signature as issuer security data, in particular as signature of the electronic coin data set, the register data set, and/or a masked electronic coin data set, as mentioned at col. 13, lines 27-49, mentioning in the last sentence at lines 46-49, “[i]n embodiments, a public key may be generated from a private key, e.g., using a cryptographic protocol, such as the Elliptic Curve Digital Signature Algorithm (“ECDSA”)”;
a range proof of the electronic coin data set;
a check value regarding the electronic coin data set, i.e., interpreted as a hash produced by a hash algorithm, as mentioned at col. 11, lines 4-33, col. 13, lines 50-67 and as mentioned at col. 16, line 50-col. 17, line 21 and col. 39, lines 4-35; and/or
a monetary amount of the electronic coin data set, as mentioned in col. 24, lines 38-57, noting the mention of use of ACH transfer including a funding amount value, for example.
Regarding Claim 52, Winklevoss discloses
wherein the coin generating unit (25, 110a, 110b, 110n, 115) is configured for signing the register data set, in particular of at least one masked/encrypted electronic coin data set, with a private cryptographic key part of the issuing entity, as; and/or
the coin output entity both authenticates itself to a coin register, i.e., reference data master list (60) as illustrated in figure 13d or the ledger (115) as illustrated in figures 2 and 5a and mentioned at col. 8, lines 33-46, and outputs the issuer
security data to the coin register, i.e., the ledger (115, 5116), in particular as a signature of the register data set and/or
of a masked electronic coin data set, as mentioned at col. 9, lines 3-21, col. 10, line 45-col. 11, line 3, col. 13, lines 28-49, col. 21, lines 7-28, col. 22, lines 26-30, col. 23, line 65-col. 24, line 37, col. 26, line 31-col. 27, line 7, col. 9, lines 3-21 (all mentioning ledgers), col. 50, lines 19-34 (mentioning encryption and key copies), col. 39, lines 4-35 (encryption and keys), col. 42, line 40, col. 43, lines 30-38, for example.
Regarding Claim 53, Winklevoss discloses
wherein each electronic coin data set has at least a monetary amount as a data element, i.e., a funding amount value as mentioned at col. 24, line 38-col. 25, line 11 and col. 25, lines 20-56, and an obfuscation amount as a data element, i.e., a hash value, as mentioned at col. 11, lines 4-33, col. 13, lines 50-67 and as mentioned at col. 16, line 50-col. 17, line 21 and col. 39, lines 4-35, wherein the obfuscation amount is secret for a coin register, i.e., interpreted as the ledger (115, 5116), as mentioned at col. 13, lines 28-49, col. 44, lines 20-31, and col. 47, lines 36-52; and
further has a check value as a data element which has a value of zero upon generating the electronic coin data set, noting col. 13, lines 50-67 mentioning alphanumeric characters being used for the hash value and col. 14, lines 1-7 mentioning particular letters such as “L” for “Litecoin”, col. 37, lines 4-39, mentioning a reference number which may correlate the private key with the public key, and that is stored as a number, which is interpreted as including “zero”, col. 40, lines 4-20, col. 43, lines 39-52, mentioning a reference identifier that can be a number, of which zero is just such a character, and col. 45, lines 55-61, mentioning a reference identifier, for example.
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.
Claim(s) 41-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winklevoss (US 10,269,009 B1) in view of Samyn et al (US 5,672,859).
Regarding Claim 41, Winklevoss teaches the system as described above.
Regarding Claim 41, Winklevoss does not expressly teach wherein the printout occurs on paper in DIN A4 format.
Regarding Claim 41, Winklevoss does not expressly teach, but Samyn teaches wherein the printout occurs on paper in DIN A4 format, as mentioned at col. 6, lines 5-25, which state as follows.
(16) Assume, for example, that the surface of the scanning area is equal to the surface of a standard DIN A4 paper, which is 21 cm .times.29.7 cm, and that the width of a banknote is 7 cm.
(17) The maximum detection width obtainable with a single emitter and receiver in the frequency range of 20 to 30 GHz is about 1 cm to 1.5 cm. It is not possible to detect with one single linear scanning movement the presence of banknotes having stainless steel fibres incorporated therein, since proper positioning of the banknote, e.g. in the longitudinal direction and somewhat remote from the course of the emitter and receiver could avoid detection. Taken the above example of the A4 scanning area and assuming that the banknote has stainless steel fibres spread over its whole volume and assuming that the scanning movement is done in the longitudinal direction of the A4 scanning area, four sensors would be sufficient to detect all possible positions of a banknote. Security documents having smaller linear dimensions (e.g. credit cards), or security documents having only in a part of it stainless steel fibres incorporated, or a scanning area being larger than a DIN A4 document would require more sensors.
Emphasis provided.
Regarding Claim 41, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to have provided wherein the printout occurs on paper in DIN A4 format, as taught by Samyn, in Winklevoss’ issuing entity as a matter of design choice for the purpose of printing coins on a commonly sized and available substrate.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Levovitz ‘443 is cited as teaching records/printouts that are destroyed by a shredder, as mentioned at paragraph 10.
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/JEFFREY A SHAPIRO/Primary Examiner, Art Unit 3619
February 19, 2026