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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 30, 2026, has been entered.
Acknowledgments
This Action is in response to the request for continued examination and the amendment filed on April 30, 2026. Claims 1-14 are currently pending and have been fully examined.
Response to Arguments
With respect to the double patenting rejection over copending Application No. 18/266388, Applicant filed a Terminal Disclaimer on April 30, 2026, which was approved on May 5, 2026. Therefore, the rejection is withdrawn.
With respect to the claim interpretation under 112(f) and related 112(a) and 112(b) rejections, Applicant’s amendment and arguments were considered and they are partially persuasive.
With respect to independent claims 1 and 8, as noted by Applicant, paragraph [0070] provides sufficient structure for the Hardware Security Module. In addition, paragraph [0071] shows that the “secure data storage module” is a microprocessor. Therefore, although the “data processing module,” is still interpreted under 112(f), the Specification provides sufficient structure for the component. As a result, the 112(a) and 112(b) rejections of claims 1 and 8 for lack of structure are withdrawn.
Applicant argues, on page 12 of remarks, with respect to claims 2 and 4 that paragraph [0090] provides structure for the device being configured to be operatively connected to the calculator via USB or Bluetooth. Applicant’s argument is persuasive and although the component is still interpreted under 112(f) the Specification provides sufficient structure for the component. As a result, the 112(a) and 112(b) rejections of claims 2 and 4 for lack of structure are withdrawn.
The examiner notes that the claim recitations with respect to the “electronic calculator,” and the “third party authority” still lack structure. For example, Applicant argues, on page 12 of remarks, with respect to claim 7, that paragraphs [0098]-[0104] provide structure for the third-party authority. The examiner respectfully disagrees and notes that the noted paragraphs merely describe the third party authority with the same features claimed without providing sufficient structure.
No argument is provided with respect to the “electronic calculator being configured to…” in claims 2 and 8, and the claim recitation is still interpreted under 112(f) and lacks structure in the Specification, hence the related 112(a) and 112(b) rejections are maintained.
With respect to the 103 rejections, Applicant arguments were persuasive. Specifically the following claim recitations, where the processing module of the HSM uses a list of different public keys for checking validity of digital signatures and the feature where all the combinations of M1 public keys are used of checking the validity, is not taught by the prior art.
said data processing module of the secure module HSM being configured to: check, using an algorithm of digital signature validity verification, if the verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transaction succeeds using M1 distinct keys in the fixed list of N1 authorization public keys stored in the secure-data storage module of the secure module HSM of the device, and
in the case the verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transaction does not succeed using all combination of M1 distinct keys in the fixed list of N1 authorization public keys stored in the data storage module of the HSM of the device, cause a failure of the cryptocurrency transaction by refraining from generating the authorized signed cryptocurrency transaction;
Claim Objection
With respect to claims 1 and 8 the claim “recites in the case the verification of the at least M1 digital signatures used to authorize said authorized unsigned cryptocurrency transaction does not succeed using all combination of M1 distinct keys…” (emphasis added) The underlined portion should be updated to “using all combinations.” (emphasis added)
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:
Claim 1:
“data processing module of the HSM being configured to: … cause a failure…sign…”
Claim 2:
“ device is configured to be operatively connected…”
“electronic calculator being configured to be used…”
Claim 4:
“ device …configured to be operatively connected…”
Claim 6:
“data processing module … being further configured to cause…”
“data processing module … being further configured to sign…”
Claim 7:
“third-party authority being configured to authorize…”
Claim 8:
“data processing module of the HSM being configured to: cause a failure…sign…”
“ device is configured to be operatively connected…”
“electronic calculator being configured to be used…”
Because the above listed 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 functions, and equivalents thereof.
The Specification in paragraphs [0070] and [0071] provides structure for the “data processing module of the HSM,” as a microprocessor.
The Specification in paragraph [0090] provides structure for the “device being configured to connect,” as USB or Bluetooth connection.
However, the Specification lacks corresponding structures for the “electronic calculator being configured to be used…” and “third-party authority being configured to authorize…”, in claims 2, 7 and 8. The Specification merely describes the listed components with the same features claimed without providing sufficient structure, material, or acts for performing the claimed functions associated with the component.
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 2-5 and 7-9 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.
With respect to claim 2, the claim recites “electronic calculator being configured to be used…” However, a structure or an algorithm for performing the functions “be used…,” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.” (MPEP 2161.01 I) Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 7, the claim recites “third-party authority being configured to authorize…” However, a structure or an algorithm for performing the functions “authorize…,” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.” (MPEP 2161.01 I) Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
With respect to claim 8, the claim “electronic calculator being configured to be used…” However, a structure or an algorithm for performing the functions “to be used” must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.” (MPEP 2161.01 I) Therefore, the claim lacks written description because the functional language specify a desired result but the specification does not sufficiently describe how the functions are performed.
Dependent claims 3-5 and 9 is also rejected for being directed to the limitations of the rejected claims 2 and 8.
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 2-5 and 7-9 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.
With respect to claim 2, the claim limitations “electronic calculator being configured to be used…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
With respect to claim 7, the claim limitations “third-party authority being configured to authorize…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
With respect to claim 8, the claim limitations “electronic calculator being configured to be used…” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Dependent claims 3-5 and 9 is also rejected for being directed to the limitations of the rejected claims 2 and 8.
Allowable Subject Matter
Claims 1, 6, and 10-14 are allowable.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dvorak (US 2015/0324789,) teaches a virtual wallet for managing cryptocurrency transactions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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/SIMA ASGARI/Examiner, Art Unit 3698 /PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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