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
This Action is in response to the amendment filed on September 12, 2025. Claims 1-14 are currently pending and have been fully examined.
Response to Remarks
With respect to the Objection to claim 8, the amendment overcomes the objection and the objection is withdrawn.
With respect to the double patenting rejection, Applicant states that a terminal disclaimer is submitted with the reply. However, a terminal disclaimer has not been received. Therefore, the rejection is maintained.
With respect to the claim interpretation under 112(f), Applicant acknowledges the interpretation.
With respect to the rejections under 112(a) and 112(b), Applicant provides paragraphs from the specification and argues that the paragraphs provide sufficient structure for the claimed limitations that are interpreted under 112(f) and therefore require sufficient structure to perform the recited functions. Applicant’s arguments are partially persuasive. However, not all the 112(a) and 112(b) rejections due to lack of structure are overcome. For example, with respect to the limitation of claims 1, 6 and 8: “secure data processing module of the secure module being configured to: check…if verification of the at least M1 digital signatures…succeeds,” Applicant’s provided paragraph [0074] disclosing that a standard algorithm such as ECDSA or Schnorr is used provides sufficient structure. However, with respect to claim limitations “secure data processing module of the secure module being configured to: …, cause a failure…sign…” provided paragraphs [0075] and [0076] merely repeat the same claimed phrase without providing any structure or algorithm to support “causing a failure” and “signing…” Similarly, with respect to claims 2, 4 and 7, paragraphs provided by Applicant fail to provide evidence of sufficient structure for the claimed limitations interpreted under 112(f).
With respect to the 103 rejections, Applicant argues, on pages 13-14 of the remarks, that the cited art does not teach “check, using an algorithm of digital signature validity verification, if verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transaction succeeds using M1 different keys in the fixed list of N1 authorization public keys stored in the secure data storage module of the secure module of the device.” Applicant further argues that “Hyuga does not describe a process where, for each signature, the system checks - using a digital signature verification algorithm such as ECDSA or Schnorr - that each signature is valid and that each signature corresponds to a different key from a fixed list of N1 authorization public keys stored in a secure module.” (emphasis added)
The examiner respectfully notes that the claims do not include limitation “for each signature, the system checks…” and “using a digital signature verification algorithm such as ECDSA or Schnorr.” The examiner further notes that, Hyuga at least in [0193], [0206] and [0226] and [0231] teaches using the ECDSA algorithm. In addition, Hyuga at least in [0186]-[0187] and [0220]-[0222] teaches verifying each signature using a plurality of private keys with a required number of signatures (M1) having a maximum number of required signatures ([0183[, [0216]), similar to the claimed features.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 8 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8 and 10 of copending Application No. 18/266388.
Although the claims at issue are not identical, they are not patentably distinct from each other, because claims 1, 8 and 10 recite similar features to claims 1+6, 8+6 and 10+6 of the copending Application No. 18/266388. claims 1, 8 and 10 of the copending Application No. 18/266388 recite additional limitations:
said secure data processing module of the secure module of the device being further configured to:
check, if the relative destination cryptocurrency address associated to the authorized unsigned cryptocurrency transaction belongs to the list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device,
in the case the relative destination cryptocurrency address associated to the authorized unsigned cryptocurrency transaction does not belong to the list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device, to cause a failure of the authorized unsigned cryptocurrency transaction,
in the case the relative destination cryptocurrency address associated to the unsigned cryptocurrency transaction belongs to the fixed list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device, sign, via a relative digital signature the unsigned cryptocurrency transaction using a private key of said deterministic list of private keys generating a signed cryptocurrency transaction.
Therefore, it would have been obvious to a person of ordinary skill in the art to modify claims 1, 8, and 10 of the copending Application No. 18/266388 by removing the above additional limitations and adding the limitations of claim 6 of the copending Application 18/266388 . It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-5, 7, 9 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5, 7, 9 and 11-14 of copending Application No. 18/266388.
The claims at issue are identical and not patentably distinct from each other, because claims 2-5, 7, 9 and 11-14 recite same features to claims 2-5, 7, 9 and 11-14 of the copending Application No. 18/266388.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/266388.
The claims at issue are identical and not patentably distinct from each other, because claim 6 depends from claim 1 and considering that claim 6 incorporates limitations of claim 1, claim 6 recites same features to claims 1 and 6 of the copending Application No. 18/266388.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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:
“secure data processing module of the secure module 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:
“secure data processing module … being further configured to cause…”
“secure data processing module … being further configured to sign…”
Claim 7:
“third-party authority being configured to authorize…”
Claim 8:
“secure data processing module of the secure module 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 lacks corresponding structures for the components. 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 1-9 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 1, the claim recites: “secure data processing module of the secure module being configured to: “cause a failure…sign…” However, a structure or an algorithm for performing the functions “cause…,” “sign…” 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 2, the claim recites “ device is configured to be operatively connected…” “electronic calculator being configured to be used…” However, a structure or an algorithm for performing the functions “be connected…,” “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 4, the claim recites “ device …configured to be operatively connected…” However, a structure or an algorithm for performing the functions “to be connected…” 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 6, the claim recites “secure data processing module … being further configured to cause…” “secure data processing module … being further configured to sign…” However, a structure or an algorithm for performing the functions “cause…,” “sign…” 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 recites “secure data processing module of the secure module being configured to: “cause a failure…sign…” “ device is configured to be operatively connected…” “electronic calculator being configured to be used…” However, a structure or an algorithm for performing the functions “cause…,” “sign…” “to be connected” “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 2-7 and 9 are also rejected for being directed to the limitations of the rejected claims 1 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 1-9 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 1, the claim limitations “secure data processing module of the secure module being configured to: cause a failure…sign…” 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 2, the claim limitations “ device is configured to be operatively connected…” “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 4, the claim limitation “ device …configured to be operatively connected…” 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 6, the claim limitations “secure data processing module … being further configured to cause…” “secure data processing module … being further configured to sign…” 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 “secure data processing module of the secure module being configured to: …cause a failure…sign…” “ device is configured to be operatively connected…” “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 2-7 and 9 are also rejected for being directed to the limitations of the rejected claims 1 and 8.
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 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.
This application currently names joint inventors. In considering patentability of the claims, the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hyuga et al. et al. (US Patent Publication No. 2019/0378119,) in view of Joveski et al. (US Patent Publication No. 2020/0286047)
With respect to claims 1, 8 and 10, Hyuga et al. teach:
authorized unsigned transaction (unsigned transaction validated by signatures using private keys to create an extended transaction: [0149]-[0151], [0161]-[0165]
a data processing unit configured to receive an authorized unsigned cryptocurrency transaction, (transaction manager device receives extended transaction validated by signatures: [0182]-[0184])
wherein said authorized unsigned cryptocurrency transaction has been authorized with at least M1 digital signatures generated using M1 authorization private keys from a set of N1 authorization private keys, (multi-signature using a plurality of private keys with a required number of signatures (M1) : [0220]-[0222] with a maximum number of required signatures ([0183[, [0216])
Hyuga et al. do not explicitly teach 0 <M1<N1 and M1, N1 are integers. However, since M1 and N1 are number of signatures, they are necessarily integers. In addition, since M1 is interpreted as number of signatures in Hyuga and N1 is the maximum number of signatures, therefore, naturally number of signatures is a smaller number than a maximum.
said authorization private key being associated to a relative authorization public key; ([0216], [0220])
store a deterministic list of private keys used to sign the cryptocurrency
a fixed list of N1 authorization public keys, (a maximum number of required signatures ([0183[, [0216]) )
check, using an algorithm of digital signature validity verification, if verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transaction succeeds … (verify signatures: [0186]-[0187], [0220]-[0221])
…using M1 different keys in the fixed list of N1 authorization public keys… (multi-signature using a plurality of private keys with a required number of signatures (M1) : [0220]-[0222] with a maximum number of required signatures ([0183[, [0216])
in the case the verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transaction does not succeed … cause a failure of the authorized unsigned cryptocurrency transaction; (if verification fails, wait for exception: FIG. 6, [0225]-[0226])
in the case the verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transaction succeeds using M1 different keys … (if verification succeeds update transaction status to “signed”: [0186]-[0187], [0220]-[0221])
wherein the device is a portable device…([0198]-[0200])
Hyuga et al. do not explicitly teach:
a secure module, operatively connected to the data processing unit,
a secure data processing module;
a secure data storage module operatively connected to the secure data processing module,
… keys stored in the secure data storage module of the secure module of the device,
in case verification succeeds…sign via a relative digital signature the authorized unsigned cryptocurrency transaction using a private key of said deterministic list of private keys, generating an authorized signed cryptocurrency transaction.
In addition, with respect to claim 8, Hyuga et al. do not explicitly teach:
wherein the device is configured to be operatively connected to an electronic calculator of a user, said electronic calculator being configured to be used by the user to send the received authorized unsigned cryptocurrency transaction to the device, and wherein the device is a portable device distinct from and external to the electronic calculator and configured to be operatively connected to the electronic calculator;
an electronic calculator of a user, said device being configured to be operatively connected to said electronic calculator, said electronic calculator being configured to be used by the user to:
send the authorized unsigned cryptocurrency transaction to the device;
broadcast the authorized signed cryptocurrency transaction received from the device to a cryptocurrency communication network.
However, Joveski et al. teach:
a secure module, operatively connected to the data processing unit, ([0045])
a secure data processing module; ([0045])
a secure data storage module operatively connected to the secure data processing module, ([0045])
… keys stored in the secure data storage module of the secure module of the device, ([0045], [0077])
in case verification succeeds…sign via a relative digital signature the authorized unsigned cryptocurrency transaction using a private key of said deterministic list of private keys, generating an authorized signed cryptocurrency transaction. (signing module signs an unsigned transaction after verification: [0038], [0123]-[0126])
In addition, with respect to claim 8, Joveski et al. teach:
wherein the device is configured to be operatively connected to an electronic calculator of a user, (front end module (i.e., the device) connected to platform 105 (i.e., electronic calculator of a user): FIG. 1A, [0033]-[0034], [0038]-[0040])
The examiner notes that claim recitation “the device is configured to be operatively connected to an electronic calculator…” indicates an intended use of the device and therefore does not further limit the scope of the claim.
The examiner further notes that according to the Specification (PGPub [0080]) “examples of an electronic calculator 150 of the user are a personal computer, a laptop, a tablet, a smartphone and so on.” Therefore, the platform 105 of Joveski is interpreted as an electronic calculator.
wherein the device is … distinct from and external to the electronic calculator; (front end module (i.e., the device) connected to platform 105 (i.e., electronic calculator of a user): FIG. 1A, [0033]-[0034], [0038]-[0040])
an electronic calculator of a user, said device being configured to be operatively connected to said electronic calculator, (front end module (i.e., the device) connected to platform 105 (i.e., electronic calculator of a user): FIG. 1A, [0033]-[0034], [0038]-[0040])
said electronic calculator being configured to be used by the user to send the authorized unsigned cryptocurrency transaction to the device; (front end module receives unsigned transaction from platform: [0038], [0050], [0054])
broadcast the authorized signed cryptocurrency transaction received from the device to a cryptocurrency communication network. (broadcasting module 130 sends signed transaction to cryptocurrency network(CCN): [0055]
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
The examiner notes that claim recitation “said electronic calculator being configured to be used by the user to…” indicates an intended use of the electronic calculator by a user and therefore does not further limit the scope of the claim.
With respect to claims 2 and 11, Hyuga et al. and Joveski et al. teach the limitations of claims 1 and 10.
In addition, Joveski et al. teach:
wherein the device is configured to be operatively connected to an electronic calculator of a user, (front end module (i.e., the device) connected to platform 105 (i.e., electronic calculator of a user): FIG. 1A, [0033]-[0034], [0038]-[0040])
said electronic calculator being configured to be used …to send the received authorized unsigned cryptocurrency transaction to the device. (front end module receives unsigned transaction from platform: [0038], [0050], [0054])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
The examiner notes that claim recitation “the device is configured to be operatively connected to …” indicates an intended use of the device and therefore does not further limit the scope of the claim.
The examiner notes that claim recitation “said electronic calculator being configured to be used by the user to send…” indicates an intended use of the electronic calculator by a user and therefore does not further limit the scope of the claim.
With respect to claims 3 and 12, Hyuga et al. and Joveski et al. teach the limitations of claims 2 and 11.
Moreover, Joveski et al. teach:
wherein the data processing unit of the device is further configured to send to the electronic calculator of the user the authorized signed cryptocurrency transaction. (signing module signs an unsigned transaction after verification and sends to the platform: [0038], [0123]-[0126])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
The examiner notes that claim recitation “wherein the data processing unit of the device is further configured to send …” indicates an intended use of the data processing unit and therefore does not further limit the scope of the claim.
With respect to claim 4, Hyuga et al. and Joveski et al. teach the limitations of claim 2.
Moreover, Hyuga et al. teach:
wherein the device is a portable device…([0198]-[0200])
In addition, Joveski et al. Teach:
device distinct from and external to the electronic calculator and configured to be operatively connected to the electronic calculator. (front end module (i.e., the device) connected to platform 105 (i.e., electronic calculator of a user): FIG. 1A, [0033]-[0034], [0038]-[0040])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
The examiner notes that claim recitation “device distinct from and external to the electronic calculator and configured to be operatively connected to the electronic calculator,” indicates an intended use of the device and therefore does not further limit the scope of the claim.
With respect to claim 5, Hyuga et al. and Joveski et al. teach the limitations of claim 2.
Moreover, Joveski et al. teach:
wherein the device is embedded within the electronic calculator of the user. (the front end included in a client system: [0044])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
With respect to claim 9, Hyuga et al. and Joveski et al. teach the limitations of claim 8.
Moreover, Hyuga et al. teach:
at least one third-party authority operatively connected to the electronic calculator of the user via a data communication network to send the authorized unsigned cryptocurrency transaction to the electronic calculator of the user. (service provided by oner or more cloud servers: [0054], FIG. 13, [0251], remote signature device: [0151], [0204]-[0206])
In addition, Joveski et al. teach:
wherein said data processing unit is configured to receive the authorized unsigned cryptocurrency transaction from a third-party authority, (a third-party system: [0047]-[0048])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
Claims 6-7 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Hyuga et al. et al., in view of Joveski et al., as applied to claim 1 above, further in view of Yang (US Patent Publication No. 2016/0300222)
With respect to claims 6 and 13, Hyuga et al. and Joveski et al. teach the limitations of claims 1 and 10.
Moreover, Joveski et al. teach:
wherein said authorized unsigned cryptocurrency transaction has associated a relative destination cryptocurrency address, (destination address: [0024]-[0025])
said secure data storage module of the secure module of the device being further configured to store a list of destination cryptocurrency addresses; (the platform stores destination addresses: [0032], [0049], [0062], [0070], [0075])
The examiner notes that the claim recitation “said secure data storage module …being further configured to store…” indicates intended use of the data storage module and therefore does not further limit the scope of the claim.
said secure data processing module of the secure module of the device being configured to sign via the relative digital signature the authorized unsigned cryptocurrency transaction using the private key of said deterministic list of private keys, generating the authorized signed cryptocurrency transaction, in the case the relative destination address associated to the authorized unsigned cryptocurrency transaction belongs to the list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device. (sign after validating right payment information including addresses: [0028]
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
The examiner notes that the claim recitation “said secure data storage module …being further configured to sign…” indicates intended use of the data storage module and therefore does not further limit the scope of the claim.
Hyuga et al. and Joveski et al. do not explicitly teach:
said secure data processing module of the secure module of the device being further configured to check, after having checked if the verification of the at least M1 digital signature used to authorize the authorized unsigned cryptocurrency transactionsucceeds using M1 different keys in the fixed list of N1 authorization public keys
said secure data processing module of the secure module of the device being configured, in the case the relative destination cryptocurrency address associated to the authorized unsigned cryptocurrency transaction does not belong to the list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device, to cause a failure of the authorized unsigned cryptocurrency transaction,
However, Yang teaches:
data processing module … being further configured to check…if the relative destination cryptocurrency address associated to the authorized unsigned cryptocurrency transaction belongs to the list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device, (compliance system verify destination address: [0041], matching destination address, : Fig. 8, [0048])
The examiner notes that the claim recitation “said secure data storage module …being further configured to check…” indicates intended use of the data storage module and therefore does not further limit the scope of the claim.
data processing module … being configured in the case the relative destination cryptocurrency address associated to the authorized unsigned cryptocurrency transaction does not belong to the list of destination cryptocurrency addresses stored in the secure data storage module of the secure module of the device, to cause a failure of the authorized unsigned cryptocurrency transaction, (compliance system unable to verify address: [0046], [0048], [0065]-[0067])
The examiner notes that the claim recitation “said secure data storage module …being further configured to …cause failure…” indicates intended use of the data storage module and therefore does not further limit the scope of the claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the information compliance, as taught by Yang, into the cryptocurrency wallet device of Hyuga et al. and Joveski et al., in order to prevent fraudulent cryptocurrency transactions. (Yang: Abstract, [0012])
With respect to claims 7 and 14, Hyuga et al. , Joveski et al. and Yang teach the limitations of claims 1 and 10.
Moreover, Hyuga et al. teach:
wherein said data processing unit is configured to receive the authorized unsigned cryptocurrency transaction from a third-party authority, (service provided by oner or more cloud servers: [0054], FIG. 13, [0251], remote signature device: [0151], [0204]-[0206])
said third-party authority being configured to receive an unsigned cryptocurrency transaction, said unsigned cryptocurrency transaction having associated a relative destination cryptocurrency address, said third party authority being configured to authorize said unsigned cryptocurrency transaction using the relative digital signature generated using the relative authorization private key. remote signature device: [0151], [0204]-[0206])
The examiner notes that the claim recitation “said third-party authority being configured to receive…” indicates intended use of the third-party and therefore does not further limit the scope of the claim. In addition, with respect to claim 7, the examiner notes that “the third-party” is not claimed as a component of the claimed device and therefore, any functions performed by the third party does not gain patentable weight in claim 7.
In addition, Joveski et al. teach:
wherein said data processing unit is configured to receive the authorized unsigned cryptocurrency transaction from a third-party authority, (a third-party system: [0047]-[0048])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the secure environment including a secure module, a secure storage, as taught by Joveski et al., into the cryptocurrency wallet device of Hyuga et al., in order to prevent security risk of cryptocurrency transactions. (Joveski et al.: [0004], [0016])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Frederick (US 2018/0262504,) Ghosh (US 2019/0108109.)
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 SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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