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 .
Amended claims 1-20 as submitted on 1/27/26 were considered.
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Information Disclosure Statement
The IDS filed on 1/27/26 was considered.
Response to Amendment and Arguments
Applicant’s amendments and arguments to the claims were considered. Any new objections and/or rejections made below were in response to the amendments. Only arguments which are still relevant and not rendered moot due to applicant’s amendments will be addressed.
Regarding applicant’s arguments to claim 9 and 17, applicant argues that these claims are allowable over art for the same reasons as claim 1. However, this argument is not valid because the arguments to claim 1 were directed towards new limitations not found in either claim 9 or 17. Based on applicant’s arguments, it is assumed that applicant accidentally left off similar limitations to claim 1 for claims 9 and 17 in the latest filed amendments to the claims.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Osborn et al (US 2023/0188340).
Claim 17:
As per claim 17, Obsorn discloses:
receiving, from an application comprising instructions for executing on a user device, an authentication request for the provide key (paragraphs 65 and 69; and Fig 4, step 402);
receiving an authentication credential for the private key, wherein the authentication credential is associated with user identification data (paragraphs 49-41, 49, and 69-70; An encrypted cryptogram is received from computing device 102 for authentication. The cryptogram contains data associated with the private key, such as a MAC and/or other data encrypted with the private key. As seen in paragraph 39, authentication credential is used to authenticate the user, thus is associated with user authentication data. Also in paragraphs 47-48, MAC is verified/authenticated),
validating the authentication credential (paragraphs 39, 47-49, 69-70; and Fig 4, step 4040; The MAC in the cryptogram is verified).
transmitting, to the application, the private key (paragraphs 53 and 70; Fig 1C, Fig 2C, and Fig 4, step 410; Private key is sent to the application located in computing device 102 for storage).
Claim 18:
As per claim 18, Osborn further discloses wherein the procedures further comprise the step of decrypting, by a predetermined algorithm, the encrypted private key (paragraphs 53-54).
Claim 19:
Osborn further discloses wherein the procedures further comprise generating multiple private keys suitable for a cryptocurrency wallet (paragraphs 46-48 and 51).
Claim 20:
Osborn further discloses wherein the processor is associated with at least one selected from the group of a mobile device, an automated teller machine (ATM), or a separate server (Osborn: paragraph 35; Various mobile devices and servers disclosed).
Claim Rejections - 35 USC § 103
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) 9-16 is/are rejected under 35 U.S.C. 103 as being unpatentable Osborn et al (US 2023/0188340) in view of Puffer et al (US 10,706,400).
Claims 9:
As per claim 9, Obsorn discloses:
providing a server (Fig 1, sever 106) comprising a data storage unit (Fig 1A, memory 126 and/or HSM 130) configured to hold an encrypted private key (paragraph 44) and a processor including a data encoder (paragraph 44; Cryptographic algorithm is executed in cited paragraph);
receiving, by the processor from an application comprising instructions for executing on a user device, an authentication request for the provide key (paragraphs 65 and 69; and Fig 4, step 402);
receiving, by the processor from the application, an authentication credential for the private key, wherein the authentication credential is associated with user identification data (paragraphs 49-41, 49, and 69-70; An encrypted cryptogram is received from computing device 102 for authentication. The cryptogram contains data associated with the private key, such as a MAC and/or other data encrypted with the private key. As seen in paragraph 39, authentication credential is used to authenticate the user, thus is associated with user authentication data. Also in paragraphs 47-48, MAC is verified/authenticated),
validating, by the processor to the application, the private key (paragraphs 47-49, 69-70; and Fig 4, step 4040; The MAC in the cryptogram is verified).
transmitting, by the processor to the application, the private key (paragraphs 53 and 70; Fig 1C, Fig 2C, and Fig 4, step 410; Private key is sent to the application located in computing device 102 for storage).
Osborn’s invention as discussed above differs from claim 9 in that Osborn’s server is not disclosed as an automated teller machine (ATM). However, a server being an ATM was taught by Puffer (abstract and Fig 1, ATM 102). Before the effective filing date of applicant’s claimed invention, it would have been obvious to one of ordinary skill in the art to modify Osborn’s server so that it was an ATM as per Puffer’s teachings. The rationale for why it would have been obvious to one of ordinary skill in the art to modify Osborn’s invention using Puffer’s teachings in the manner discussed is that both Osborn’s server and Puffer’s ATM are both computers used in financial transactions with a user’s computer and wireless card, thus modifying Osborn’s invention in the manner discussed is nothing more than simple substitution of one known element for another to achieve predicable results, see KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claim 10:
Osborn further discloses wherein the user device is a computer-enabled device comprising at least one selected from the group of a smart phone, computer, and a tablet (paragraph 35).
Claim 11:
Osborn further discloses wherein the private key is transmitted to the application through near field communication (NFC) (paragraphs 34, 121, and 124). Osborn does not explicitly the private key is transmitted to the application through at least at least one selected from a flash drive and a disk. However, a private key is data and official notice is taken that transmitting data of any type through at least one selected from the a flash drive and a disk was well known in the art before the effective filing date of applicant’s claimed invention.
It would have been obvious to one of ordinary skill in the art to utilize one of the aforementioned prior art data transmission device to transmit the private key in Osborn’s modified invention. The rationale for why it would be obvious is that doing so is nothing more than simple substitution of one known element (i.e. data transmission method/medium) for another (i.e. different data transmission method/medium) to obtain predicable results, see KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Claim 12:
Osborn further discloses/makes obvious wherein the private key is transmitted to a card or a computer-enabled device through near field communication (NFC) with the ATM (paragraphs 34, 121, and 124).
Claim 13:
Osborn further discloses/makes obvious wherein the method further comprises the steps of:
providing, by the processor over a network, a private key to a second data storage unit, wherein the second data storage unit is not associated with the ATM (paragraphs 53-54; Digital wallet is sent for store either in a cloud or an application in computing device 102. The digital wallet has an encrypted private key. The application storage or cloud storage can be considered equivalent to the claimed second data storage unit);
receiving, by the processor, a request to retrieve the private key from the data storage unit (paragraphs 37-39; A user can request access to the private key in the digital wallet stored in the computing device to perform financial transactions);
requesting, by the processor, an authentication credential from the user device (paragraphs 37-39 and 53-54);
receiving, by the processor over a network, the authentication credential from the user device, the authentication credential associated with user identification data (paragraph 37);
validating, by the processor, the authentication credential (paragraph 37); and
transmitting, from the data storage unit over the network, the private key to the application (paragraph 53-54).
Claim 14:
Osborn further discloses wherein the data storage unit is associated with a banking or financial institution associated with a user associated with the user device (paragraphs 37 and 39; The user’s account and cryptowallet is used for financial transactions, so whoever or whatever the user performs the transactions with is considered a banking/financial institution associated with the user of the user device).
Claim 15:
Osborn further discloses wherein the private key is stored and transmitted in an encrypted form within the data storage unit (paragraphs 53-54).
Claim 16:
Osborn further discloses wherein the authentication credential can be at least one selected from the group of a social security number associated with the user, banking or financial information associated with the user, and biometric information associated with the user (paragraph 37; Various biometric types recited).
Allowable Subject Matter
Claims 1-8 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 is allowed over the prior art due to new limitations added in the amendment filed on 1/27/26 for the reasons discussed on p9 of the remarks filed on 1/27/26. Claims 2-8 are allowed over the prior art due to dependency.
The closest prior art found which are relevant to the subject matter recited in claim 1 for which it was allowed are:
Irwin, Jr. et al (US 2023/0186284)
Dolan et al (US 2020/0389306).
Each of the above art found discloses using a mnemonic phrase as a seed for generating a key, which is the opposite of what is required in claim 1 as per the latest amendments, which is use of a private key to generate a mnemonic phrase based on the private key.
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 PONNOREAY PICH whose telephone number is (571)272-7962. The examiner can normally be reached M-F 9am-5pm EST, 10am-6pm during Daylight Savings Time.
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/PONNOREAY PICH/ Primary Examiner, Art Unit 2495
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