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 .
DETAILED ACTION
The following Non-Final office action is in response to applicant’s RCEX/amendments/Remarks filed on 05/02/2025.
Priority Date: PCT/US2022/011660>(2022-01-07)
Claim Status:
Amended claims:19, 31, and 35-36
Canceled[previously] claims: 6-8, 22-23, 25-27, 32, 38, and 40
Pending claims: 1-5, 9-21, 24, 28-31, 33-37, and 39
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 1-5, 9-21, 24, 28-31, 33-37, and 39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In particular, claims are directed to a judicial exception (Abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (Step-1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. (Step-2A) If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, (Step-2B) it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
Examples of abstract ideas grouping include: (a) Mental processes; (b) Certain methods of organizing human activities [ i. Fundamental Economic Practice; ii. Commercial or Legal Interaction; iii. Managing Personal behavior or Relations between People]; and (c) Mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
Analysis is based on the new 2019 Patent Eligibility Guidance (2019 PEG).
[Step-1] The claims are directed to a system/machine, which are a statutory category of invention.
Claim 1 (exemplary) recites a series of steps for Private/Public Key authentication for Cryptocurrency Transaction.
[Step-2A]-Prong 1:The claim 1 is then analyzed to determine whether it is directed to a judicial exception:
The claim recites the limitations of
a storage device, the storage device having an integrated circuit comprising at least a first secure element, the first secure element having a processor, a digital memory, and a first near field communications (NFC) interface, the first secure element digital memory module embodying instructions readable by the first secure element processor for causing the first secure element to store a public key and a private key in encrypted states in the digital memory, generate a public key using the private key, and to perform sign and hash operations;
a processing device having a user interface, a second NFC interface, and a communication interface configured for connection to a global communications network, the processing device having a digital memory and a processor, the processing device digital memory programmed with instructions readable by the processing device processor for causing the processing device to establish a connection over NFC with the first secure element NFC interface, to send information to the first secure element for processing by the first secure element, and for establishing a user interface operable for accessing a transaction network via the global communications network;
wherein instructions readable by the storage device processor and the processing device processer, when read by the respective processors, are capable of causing the system to perform the steps of:
(a) the processing device receiving initiation of a transaction via the user interface;
(b) the processing device establishing the connection with the first secure element via NFC;
(c) the processing device sending information to the first secure element for processing via the NFC link;
(d) the first secure element retrieving the private key, performing hash operations using the private key to define a signature, checking a chain associated with the public key to confirm that the signature conforms to a public key signature that could only have been generated using the specific private key, signing the transaction, and sending signed transaction information to the processing device;
(e) the processing device establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate the transaction,
wherein the transaction comprises a cryptocurrency transaction corresponding to a currency value or token, the storage device comprises a cryptocurrency cold storage device, the first secure element digital memory comprises a cryptographic module, the first secure element also comprises a payment module configured to exchange payment information with a card reader for conducting a purchase transaction,
wherein the first secure element is a single secure element and the payment module is isolated from the cryptographic module via hardware or software partitions on the first secure element to prevent a communication pathway between the cryptographic module and the payment module.
The claimed system/machine simply describes series of steps for Private/Public Key authentication for Cryptocurrency Transaction.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations via human commercial or business or transactional activities/interactions, but for the recitation of generic computer components. That is, other than reciting one or more servers/processors, devices and computer network nothing in the claim precludes the limitations from practically being performed by organizing human business activity. For example, without the structure elements language, the claim encompasses the activities that can be performed manually between the users and a third party. These limitations are directed to an abstract idea because they are business interaction/sale activity that falls within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
[Step-2A]-Prong 2:
Next, the claim is analyzed to determine if it is integrated into a practical application. The claim recites additional limitation of using one or more servers/processors, devices and computer network to perform the steps. The processor in the steps is recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
[Step-2B]
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept).
As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a processor (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the processor at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept.
Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to a claim as a whole that is significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea, and the claim is not patent eligible. The analysis above applies to all statutory categories of invention including independent claims 19, 31, 37 and 39.
Furthermore, the dependent claims 2-5, 9-18, 20-21, 24, 28-30, and 33-36 do not resolve the issues raised in the independent claims.
The dependent claims 2-5, 9-18, 20-21, 24, 29-30, and 33-36 are directed towards:
using a cryptocurrency transaction corresponding to a currency value or token, the storage device comprises a cryptocurrency cold storage device, the first secure element digital memory module comprises a cryptographic module, and the user interface comprises a cryptocurrency virtual wallet, to access the transaction network indirectly through direct access to a second layer cryptocurrency network; the cryptocurrency wallet in an encoded form for providing to a payor; the system is further configured to buy or swap cryptocurrency; the first secure element also comprises a payment module configured to exchange payment information with a card reader for conducting a purchase transaction; a card reader for conducting a purchase transaction, wherein the processing device comprises a mobile device, comprises one of a smartphone, a tablet, or a laptop computer, wherein the storage device comprises a card having standard dimensions of a transaction card in conformance with ISO / IEC 7810:2003 ID-1, and wherein the card comprises metal, ceramic, glass, or a combination thereof.
These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2-5, 9-18, 20-21, 24, 28-30, and 33-36 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Claim Rejections - 35 USC § 103
The following is a quotation of AIA 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 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, 9-21, 24, 28-31, 33-37, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Goroff et al (US 2019/0325408 A1) in view of ARNOLD “YAU” et al (US 2016/0261411 A1).
Ref claim1, Goroff discloses a system for conducting a transaction, comprising: a storage device, the storage device having an integrated circuit comprising at least a first secure element, the first secure element having a processor, a digital memory, and a first near field communications (NFC) interface, the first secure element digital memory module embodying instructions readable by the first secure element processor for causing the first secure element to store a public key and a private key in encrypted states in the digital memory, generate a public key using the private key, and to perform sign and hash operations (Abstract; via a system for secure transactions…to store a public cryptocurrency key…a private encryption key…the computing device for signing a cryptocurrency transaction …hardware encryption device for verification of the transaction…);
a processing device having a user interface, a second NFC interface, and a communication interface configured for connection to a global communications network, the processing device having a digital memory and a processor, the processing device digital memory programmed with instructions readable by the processing device processor for causing the processing device to establish a connection over NFC with the first secure element NFC interface, to send information to the first secure element for processing by the first secure element, and for establishing a user interface operable for accessing a transaction network via the global communications network (para [0020], fig.1; via a system20/server 34/database 36/computing device 26 [smartphone]…[0021; via using wireless connections…[0023-25]; via smartphone…user interface…verification…authorization to the smartphone);
wherein instructions readable by the storage device processor and the processing device processer, when read by the respective processors, are capable of causing the system to perform the steps of:
(a) the processing device receiving initiation of a transaction via the user interface; (b) the processing device establishing the connection with the first secure element via NFC; (c) the processing device sending information to the first secure element for processing via the NFC link (para [0020], fig.1; via a system20/server 34/database 36/computing device 26 [smartphone ]…[0021; via using wireless connections…[0023-25]; via smartphone…user interface…verification…authorization to the smartphone);
(d) the first secure element retrieving the private key, performing hash operations using the private key to define a signature, checking a chain associated with the public key to confirm that the signature conforms to a public key signature that could only have been generated using the specific private key, signing the transaction, and sending signed transaction information to the processing device (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device [ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…);
(e) [[ the processing device establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate the transaction]],
wherein the transaction comprises a cryptocurrency transaction corresponding to a currency value or token, the storage device comprises a cryptocurrency cold storage device, the first secure element digital memory comprises a cryptographic module, the first secure element also comprises a payment module configured to exchange payment information with a card reader for conducting a purchase transaction (para [0049]; via referring to FIG. 4B, method include cryptocurrencies value or price changes cryptocurrency assets in each wallet in a flat currency in real-time…),
wherein the first secure element is a single secure element and the payment module is isolated from the cryptographic module via hardware or software partitions on the first secure element to prevent a communication pathway between the cryptographic module and the payment module (para [0026];FIGS. 3A-3F via. encryption device 22 stores the private key in secure element …[0041]; via the Secure Element used In the hardware encryption device 22…and is then placed in another hardware key in an attempt to bypass the biometric authentication.).
Goroff does not explicitly disclose the step of the processing device establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate the transaction
However, YAU being in the same field of invention discloses the step of the processing device establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate the transaction (para [0496-98]; via computer system 1200…interface 1218…[0497]; via Network Link 1220… [0498]; via an Internet/ a server 1230 transmit a requested code for an application program through Internet 1228…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Goroff to include the disclosures as taught by YAU to facilitate communication with exchange server for signed transaction.
Ref claim 2, Goroff discloses the system of claim 1, the user interface comprises a cryptocurrency virtual wallet (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 3, Goroff discloses the system of claim 2, wherein cryptocurrency virtual wallet is configured to access the transaction network indirectly through direct access to a second layer cryptocurrency network (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 4, Goroff discloses the system of claim 2, wherein the system is further configured to receive a cryptocurrency deposit, wherein the processing device is configured to display a cryptocurrency address associated with the cryptocurrency virtual wallet in an encoded form for providing to a payor (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 5, Goroff discloses the system of claim 2,wherein the system is further configured to buy or swap cryptocurrency (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Claims 6-8 (canceled)
Ref claim 9, Goroff discloses the system of claim 1, wherein the processing device comprises a mobile device (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 10, Goroff discloses the system of claim 9, wherein the mobile device comprises one of a smartphone, a tablet, or a laptop computer (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 11, Goroff discloses the system of claim1, wherein the storage device comprises a card having standard dimensions of a transaction card in conformance with ISO / IEC 7810:2003 ID-1 (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 12, Goroff discloses the system of claim 2, wherein the card comprises metal, ceramic, glass, or a combination thereof. (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 13, Goroff discloses the system of claim 2, wherein the storage device comprises a card having standard dimensions of a transaction card in conformance with ISO / IEC 7810:2003 ID-1 (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 14, Goroff discloses the system of claim 2, wherein the card further comprises a magnetic stripe configured to interact with a card reader (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 15, Goroff discloses the system of claim 1, wherein the storage device comprises a key fob comprising metal, ceramic, glass, or a combination thereof (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…).
Ref claim 16, Goroff discloses the system of claim 1, wherein the storage device further comprises a biometric reader module connected to the processor and configured to restrict activity of the storage device based upon biometric information detected by the biometric reader (para [0021]; via computing devices 26, 38 …receiving password or biometric information[ biometric reader…]…).
Ref claim 17, Goroff discloses the system of claim 1, wherein the processing device further comprises a biometric reader module connected to the processing device processor and configured to restrict access to the storage device from the processing device based upon biometric information detected by the biometric reader (para [0021]; via computing devices 26, 38 …receiving password or biometric information[ biometric reader…]…).
Ref claim 18, Goroff discloses the system of claim 1, wherein the connection between the processing device and the first secure element is a secure NFC communication link (para [0020], fig.1; via a system20/server 34/database 36/computing device 26 [smartphone]…[0021; via using wireless connections…).
Claim 19 [amended], recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Claims 20-21 are rejected as per the reasons set forth in claims 2-3 respectively..
Claims 22-23 (canceled)
Claim 24 is rejected as per reasons set forth in claim 14
Claim 25-27 (canceled).
Claims 28-30 are rejected as per the reasons set forth in claims 16-18 respectively.
Claim 31[amended], recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Claim 32 (canceled).
Claims 33-34 are rejected as per the reasons set forth in claims 9-10 respectively.
Claims 35-36 [amended] are rejected as per the reasons set forth in claims 17-18 respectively.
Claim 37, recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Claim 38 (canceled).
Claim 39, recites similar limitations to claim 1 and thus rejected using the same art and rationale in the rejection of claim 1 as set forth above.
Claim 40 (canceled).
Response to arguments:
Applicant's arguments filed on 05/02/2025 have been fully considered and they are deemed to be non-persuasive:
Response to Applicant’s arguments with respect to the 35 USC 103 rejection is addressed in the above rejection.
Applicant argues further with 101 rejection in substance that "The claims are Not Directed to an Abstract Idea and the claims Recite” Significantly More" than abstract idea, and noted PEG-2019 [Step-2A-Prong One-Prong two & Step-2B].
In addition to 101 rejections Applicant noted about 103 rejections with applied prior arts.
In response:
Examiner respectfully disagrees. Updated claim analysis as a whole including amended features are provided above again based on the latest Patent Eligibility Guidance [2019-PEG].
Applicant’s REMARKS/ARGUMENTS:
“Status of the Claims:
Claims 1-5, 9-21, 24, 28-31, 33-37, and 39 are pending and stand rejected in this application. Applicant herein amends claims 19, 31, 35, and 36. No new matter is added. Reconsideration is respectfully requested in view of the above amendments and the following remarks.”
Rejections Under 35 U.S.C. § 101:
Applicant argued that “Claims 1-5, 9-21, 24,28-31, 33-37, and 39 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.. …;…;…;
Applicant respectfully disagrees and submits that independent claims 1, 31, 37, and 39, satisfy both the Step 2A-Prong One and the Step 2A-Prong Two analyses, as they integrate any alleged abstract idea into a practical application;…;into a patent-eligible application.
The specification identifies the problem of: "A private key stored electronically in a digital wallet connected to the internet (i.e. a "hot wallet") is vulnerable to hacking. When using a hot wallet, the steps of conducting a transaction...are typically performed by a single online device, which broadcasts the signed transaction over the network. A signed transaction broadcast over a network is vulnerable to attack. "Cold storage" avoids the foregoing problems by signing the transaction using the private keys in an environment that not connected to the Internet…;...;…;
In some embodiments, there may be advantages to configuring the card or other form factor (fob, etc.) for payment plus authentication (e.g. using FIDO)." In this way, the claimed systems, methods, and devices are more efficient in being able to conduct both the cryptocurrency functions and payment transactions…;…;…;
Thus, contrary to the Office's assertion, that added limitations recited in the amended claims provide a technical solution to this known technical problem (i.e., hacking payment software), and consequently "impose...meaningful limits on practicing the abstract idea" and the claim is thus patent-eligible. Therefore, Applicant respectfully requests that the rejection of claims 1-5, 8-21, 24, 28-31, 33-37, and 39 be withdrawn.”
In Response: Examiner Disagrees:
Under Alice-Step (2A)-Prong 1: A method/system for deriving financial information from transactions is akin to the abstract idea subject matter grouping of:
(Certain Method/Systems of Organizing Human Activity as ‘Fundamental economic practice to Managing personal behavior or relationships or interactions between people including, teaching, and following rules or instructions).
As such, the claims include an abstract idea. The specific limitations of the invention are identified to encompass the abstract idea include: ([a] receiving initiation of a transaction via the device user interface;[b] establishing a communications link with the secure element via NFC; [c] sending high-level information to the secure element for processing via the NFC link; [d] receiving signed transaction information from the secure element; [e] establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate a transaction, wherein the storage device is a cryptocurrency cold storage device … and the payment module is isolated from the cryptographic module via hardware or software partitions on the first secure element to prevent a communication pathway between the cryptographic module and the payment module).
Under Alice-Step (2A)-Prong 2: When considered individually and in combination, the instant claims do not integrate the exception into a practical application because the steps of:
([a] receiving initiation of a transaction via the device user interface;[b] establishing a communications link with the secure element via NFC; [c] sending high-level information to the secure element for processing via the NFC link; [d] receiving signed transaction information from the secure element; [e] establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate a transaction, wherein the storage device is a cryptocurrency cold storage device … and the payment module is isolated from the cryptographic module via hardware or software partitions on the first secure element to prevent a communication pathway between the cryptographic module and the payment module).
The instant recited claims including additional elements (i.e. “receiving…interface; establishing a communication link…NFC; sending high level information…NFC link; receiving signed transaction…element; and establishing… the payment module”),
do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely use a generic computing technology (Specification [Summary]: processor, memory, instructions, storage medium, and electrical communication) as tools to perform an abstract idea or merely add insignificant extra-solution activity to the judicial exception. (MPEP 2106.05 (f) (g)). Therefore, the claims are directed to an abstract idea.
Under Alice-Step (2B): Additionally, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (Claims: e.g., processor, equations, instructions, memory, electrical communication, and storage medium) amount to no more than generally linking the use of the judicial exception to a particular technological environment or merely using generic components as tool to perform an abstract idea.
In conclusion, merely “linking/applying” the exception using generic computer components does not constitute ‘significantly more’ than the abstract idea. (MPEP 2106.05 (f) (h)). Therefore, the claims are not patent eligible under 35 USC 101.
What Applicant describes here is how any generic computer process data without stating how or if this transformation is intended to, in some way improves the function of the computer itself.
Examiner notes that the computer processor limitations and the claim as a whole do not add significantly more than the abstract idea itself, because the claim does not amount to an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment. A generic recitation of a device performing its generic computer functions does not make the claims less abstract.
The Court gave examples, which included an improvement to another technology or technical field; improvement to the function of the computer itself; or some other meaningful limitation beyond generally linking the use of an abstract idea to a particular technological environment. Such as in Diamond v. Diehr, the claims were found statutory in which the Arrhenius equation is used to improve a process of controlling the operation of a mold in curing rubber parts.
A generic recitation of a computer processor performing its generic computer functions does not make the claims less abstract. Examiner notes that the instant claims provide a generically computer-implemented solution to a business-related or economic problem. The focus of the claimed invention in the present is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem. Also, limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
Lastly, dependent claims do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea. The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. The claims merely amount to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself. Therefore none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea. Accordingly, claims 2-5, 9-18, 20-21, 24, 28, 30, and 33-36, are rejected as ineligible for patenting under 35 U.S.C. 101.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Rejections Under 35 U.S.C. § 103:
“Claims 1-5, 9-21, 24, 28-31, 33-37, and 39 are rejected as being unpatentable over Goroff (US 2019/0325408) and Yau (US 2016/0261411).
Applicant submits that these claims are patentable over the applied references for at least the reasons set forth below.
Pending claim 1 includes features which are not disclosed, taught, or suggested by the applied references, including:
“a storage device, the storage device having an integrated circuit comprising at least a first secure element, the first secure element having a processor, a digital memory, and a first near field communications (NFC) interface,…;…;…;
The rejection based on Goroff and Yau should not be maintained against independent claims 1, 19,31, 37, and 39 because the proposed combination does not disclose all features of the pending claims. Claim 1 requires, …;…;…;
However, unlike claim 1, Goroff fails to expressly mention any payment module with a card reader for conducting a purchase transaction. Additionally, the cited ¶18 of Goroff is silent as to the feature of the payment module being isolated from the cryptographic module. Indeed, the cited ¶41 of Goroff merely states that the ARM processor generates a unique random key that is sent to the secure element, which then stores this unique key and require all messages over the SPI bus to be signed by this unique key….;…;…;
“In contrast, the present application describes advantages for the configuration as claimed in amended claim 1 and as described above. Namely, the claimed system is more efficient in conducting both cryptocurrency functions and payment transactions because the claims require that the payment module is isolated from the cryptographic module...to prevent a communication pathway between the cryptographic module and the payment module." In this way, a "hack into the payment software of the [secure element] would not provide a pathway to the crypto software, and vice versa"). See e.g. page 8, line 8 to page 9, line 6 of the specification as filed.
Accordingly, Applicant submits that Goroff fails to disclose, teach, or suggest all of the features recited in claim 1. Still further, Yau fails cure this deficiency of Goroff and/or fails to disclose, teach, or suggest all of the features recited in claim 1. Therefore, Applicant respectfully requests that this rejection of 1 be withdrawn. Claims 19,31, 37, and 39, while not identical to claim 1, includes similar features which are not disclosed, taught, or suggested by the applied references.
Accordingly, Applicant respectfully submits that claims 2-5, 9-21, 24, 29, 30, and 33-36 are allowable for at least the reasons discussed above with respect to claims 31, 37, and 39. Therefore, Applicant respectfully requests that the rejection of claims 2-5, 9-21, 24, 29, 30, and 33-36 be withdrawn.”
IN RESPONSE- Examiner Disagrees with applicant’s assertions:
However, Goroff discloses (obviously) in view of Yau, a system for conducting a transaction, comprising:
a storage device, the storage device having an integrated circuit comprising at least a first secure element, the first secure element having a processor, a digital memory, and a first near field communications (NFC) interface, the first secure element digital memory module embodying instructions readable by the first secure element processor for causing the first secure element to store a public key and a private key in encrypted states in the digital memory, generate a public key using the private key, and to perform sign and hash operations (Abstract; via a system for secure transactions…to store a public cryptocurrency key…a private encryption key…the computing device for signing a cryptocurrency transaction …hardware encryption device for verification of the transaction…);..;…; and wherein the first secure element is a single secure element and the payment module is isolated from the cryptographic module via hardware or software partitions on the first secure element to prevent a communication pathway between the cryptographic module and the payment module (para [0026];FIGS. 3A-3F via. encryption device 22 stores the private key in secure element … [0049]; via referring to FIG. 4B, method include cryptocurrencies value or price changes cryptocurrency assets in each wallet in a flat currency in real-time…), And
YAU being in the same field of invention discloses the step of the processing device establishing a communication session over the global communications network with an exchange server of the transaction network and sending the signed transaction information to the exchange server to initiate the transaction (para [0496-98]; via computer system 1200…interface 1218…[0497]; via Network Link 1220… [0498]; via an Internet/ a server 1230 transmit a requested code for an application program through Internet 1228…).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the features mentioned by Goroff to include the disclosures as taught by YAU to facilitate communication with exchange server for signed transaction.
Moreover, applicant noted Goroff’s paras 18 & 41, where it [obviously] discloses by (para [0018]; via a software implemented method/a local computing device [e.g., a smartphone, a laptop, desktop, and the like] and hardware encryption device[ or hardware wallet]…stores the private key/smartphone for signing the translations/authentication…) and [0041]; via the Secure Element used In the hardware encryption device 22…and is then placed in another hardware key in an attempt to bypass the biometric authentication.).
CONCLUSION
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
Kim et al (US 20200394620 A1) discloses SYSTEM AND METHOD FOR CRYPTOCURRENCY POINT OF SALE.
Lowe et al (US 10318859 B2) discloses Dual Interface Metal Smart Card With Booster Antenna.
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/HATEM M ALI/
Examiner, Art Unit 3691
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691