DETAILED ACTION
This is a final office action on the merits. The U.S. Patent and Trademark Office (the Office) has received claims 1 – 8 in application 18349829.
Claims 1-8 are amended.
Claims 1-8 are pending and have been examined.
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 .
Response to Arguments
101 Rejection
Applicant’s arguments, filed 8/14/2025, with respect to 101 rejection have been fully considered and are persuasive. The rejection of claims 1-8 has been withdrawn.
112 Rejection
Applicant’s arguments, filed 8/14/2025, with respect to 112 rejection have been fully considered and are persuasive. The rejection of claims 1-8 has been withdrawn.
103 Rejection
Applicant’s arguments with respect to claim(s) 8/14/2025 have been but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable by Smolen et al. (US20160086418A1) hereinafter Smolen in view of Bishop et al (US20070052517A1) hereinafter Bishop.
Regarding Claim 1. Smolen teaches in BOLD:
An information processing system comprising: a first apparatus; and a second apparatus,
Note – Smolen’s system has two apparatuses: (i) a portable computing device/smartphone holding the user’s digital currency and (ii) the vending machine that processes the payment.
Smolen - A vending machine is described that uses digital currency transactions to enable a user to purchase items from their portable computing device (Abstract).
wherein the first apparatus includes a first processor executing a process comprising: deciding secret information, and
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency, most likely from a smartphone or other portable computing device (¶ 0030).
publicizing a first transaction including limitation information enabling retrieving of crypto-assets by using the secret information on a distributed ledger,
Note – Smolen’s first purchase transaction is recorded on the bitcoin blockchain and includes a URI and private-key-based digital currency data. Those URIs/private keys are “secret information” and once on the blockchain, enable the retrieval of crypto-assets associated with that transaction.
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency… the URI of bit coin or other crypto currency may be transferred between the devices… recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain) (¶ 0030).
the limitation information enabling the retrieving of crypto-assets without using other secret information decided at the second apparatus,
Note - The limitation information in Smolen’s transaction comprises URIs and private key information that alone allow the remote digital-currency system to move the crypto-assets. No additional secret from the vending machine (second apparatus) is needed.
Smolen - databases 64 may include a digital currency repository 75 (including URIs and private key information) (¶ 0031).
wherein the second apparatus includes a storage device and a second processor wherein the storage device stores the secret information that has been used to receive crypto-assets, and
Note – Smolen’s vending machine (second apparatus) has a CPU (second processor) and memory/databases that store URIs and private key information for digital currency that is received, stored, and used by the machine.
Smolen - A central processing unit (CPU) module 60 is operatively connected to a suitable memory 62; one or more databases 64, containing the information and data needed for the supply of items to be selected; internet access module 66; payment processing module 68; touch screen display module 70; touch screen input module 72; and digital currency processing module 74. The databases 64 may include one or more databases for managing digital currency received, stored, and used by the vending machine. For example, the databases 64 may include a digital currency repository 75 (including URIs and private key information) (¶ 0031).
the second processor executes a process comprising: receiving the secret information;
Note – The vending machine’s CPU executes logic that receives the digital currency transaction, including the URI/private key based data (secret information) sent from the user device.
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency, most likely from a smartphone or other portable computing device. For example, the URI of bit coin or other crypto currency may be transferred between the devices (¶ 0030).
when the secret information is received, confirming whether the same secret information as the received information is stored in the storage device or not;
Note – Smolen teaches that the vending machine records and saves prior transaction information.
Smolen - vending machine microcontroller 19 records and saves information regarding the activities of the vending machine (¶ 0031).
if the same secret information is not stored in the storage device in the confirming, performing the predetermined operation to sell items or provide services, the operation not beIN a process on the distributed ledger;
Smolen - the payment criteria have been met and purchase information shared via the MDB trigger the item to be dispensed by the vending machine, such as actuation of a mechanical dispensing device (¶ 0030).
if the same secret information is stored in the storage in the confirming, not performing the predetermined operation;
Smolen - the payment criteria have been met and purchase information shared via the MDB trigger the item to be dispensed by the vending machine, such as actuation of a mechanical dispensing device (¶ 0030).
after the first transaction is publicized on a distributed ledger, publicizing a second transaction including the secret information received on a distributed ledger thereby to receive crypto-assets; and
Smolen - a purchase transaction 114 by recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain)… initiating a change transaction 118…executing an additional digital currency change transaction 122 and transferring the output to the user's smartphone (¶ 0030).
causing the storage device to store the secret information that has been used to receive crypto-assets.
Smolen - databases 64 may include one or more databases for managing digital currency received, stored, and used by the vending machine. For example, the databases 64 may include a digital currency repository 75 (including URIs and private key information) and a digital currency transaction log 65 (¶ 0031).
Smolen does not teach, however Bishop discloses:
wherein the first apparatus includes a first processor executing a process comprising: deciding secret information, and
Note – In Bishop, the RF uses a secret key and counter to generate an authentication tag; this is “secret information” decided/generated by the first apparatus.
Bishop - The RF device at a minimum contains a simple processor chip capable of incrementing a counter and producing an authentication tag (¶ 0033).
when the secret information is received, confirming whether the same secret information as the received information is stored in the storage device or not;
Note – Bishop supplies the explicit confirmation step: the issuer (back-end processor) checks the stored counter/secret, and if a reused value is detected, the transaction is treated differently.
Bishop - the issuer validates the counter from the account… Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
if the same secret information is not stored in the storage device in the confirming, performing the predetermined operation to sell items or provide services, the operation not beIN a process on the distributed ledger;
Bishop - the issuer validates the counter from the account. Depending on the method used to increment the counter, the acquirer may identify the expected counter value that it will match to the incoming counter value. Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
if the same secret information is stored in the storage in the confirming, not performing the predetermined operation;
Bishop - If they are found to be valid, the actual account number is submitted for payment authorization, using the normal process. The authorization response is then returned to the merchant. If the payment is authorized the merchant submits the request through its existing submissions infrastructure and network for settlement (¶ 0040).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the vending/payment device of Smolen with the confirming technique of Bishop because doing so increases security against replay and double spending, ensures that each “secret information” (token, URI, counter) is used only once, and decides whether or not to carry out the operation.
Regarding Claim 2. The combination of Smolen and Bishop further discloses:
The information processing system according to claim 1, wherein the first processor further performs: in the deciding, deciding a plural pieces of secret information, in the publicizing, publicizing the first transaction corresponding to the plural pieces of secret information, and
Smolen - databases 64 may include one or more databases for managing digital currency received, stored, and used by the vending machine. For example, the databases 64 may include a digital currency repository 75 (including URIs and private key information) and a digital currency transaction log 65 (¶ 0031).
the second processor further performs: in the receiving, receiving a part or whole of secret information among the plural pieces of information and in the publicizing, publicizing the second transaction including the part of secret information, to send crypto-assets related to the part of secret information.
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency, most likely from a smartphone or other portable computing device…recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain) (¶ 0030).
Regarding Claim 3. The combination of Smolen and Bishop further discloses:
The information processing system according to claim 2, wherein the first processor further performs: in the deciding, deciding the plural pieces of secret information by applying a one-way function on one piece of secret information multiple times.
Smolen - The present disclosure provides a vending machine that uses digital currency transactions to enable a user to purchase items from their portable computing device. Using a control system in communication with various components of the vending machine and an internet connection for communicating with a remote digital currency system, such as a bitcoin network, a digital currency processing system executes digital currency transactions and stores the resulting digital currency in a transaction storage repository. The control system initiates dispensing of purchased items based on communication from the digital currency processing system (¶ 0006).
Regarding Claim 4. The combination of Smolen and Bishop further discloses:
The information processing system according to claim 1, wherein the storage device is further configured to store a use history comprising at least one selected from the group consisting of: a used electronic signature, a transaction ID of the first transaction, and the limitation information.
Smolen - The vending machine microcontroller 19 records and saves information regarding the activities of the vending machine and may provide information driven features of the vending machine, such as inventory control, preference survey, purchase activity (¶ 0031).
Regarding Claim 5. The combination of Smolen and Bishop further discloses:
The information processing system according to claim 1, wherein the second processor further performs: in the publicizing, publicizing the second transaction on a distributed ledger when a success probability of tampering on the first transaction has become sufficiently low.
Smolen - Digital currency not being tied to any bank, credit card, or financial organization, stealing and corruption of the digital currency is a risk that must be faced in all of the above embodiments. In one embodiment, this is accomplished by building into the spending of any digital currency received in a transaction a time delay in the authorization process so that a fraudulent next transaction cannot be entertained or completed before the first digital currency transfer has been validated and appropriate transfer limitations entered (¶ 0035).
Regarding Claim 6. Smolen teaches:
An information processing apparatus comprising a processor and a storage device wherein, the storage device stores the secret information that has been used to receive crypto-assets, and the processor executes a process comprising:
Smolen - A vending machine is described that uses digital currency transactions to enable a user to purchase items from their portable computing device (Abstract).
receiving secret information from a sending source that has publicized a first transaction including limitation information enabling retrieving of crypto-assets by using the secret information on a distribution ledger;
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency… the URI of bit coin or other crypto currency may be transferred between the devices… recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain) (¶ 0030).
when the secret information is received, confirming whether the same secret information as the received information is stored in the storage device or not;
Smolen - vending machine microcontroller 19 records and saves information regarding the activities of the vending machine (¶ 0031).
if the same secret information is not stored in the storage device in the confirming, performing the predetermined operation to sell items or provide services, the operation not being a process on the distributed ledger;
Smolen - the payment criteria have been met and purchase information shared via the MDB trigger the item to be dispensed by the vending machine, such as actuation of a mechanical dispensing device (¶ 0030).
if the same secret information is stored in the storage in the confirming, not performing the predetermined operation, receiving crypto-assets when the secret information is received after the first transaction is publicized on a distributed ledger and by publicizing a second transaction including the secret information received on a distributed ledger; and
Smolen - the payment criteria have been met and purchase information shared via the MDB trigger the item to be dispensed by the vending machine, such as actuation of a mechanical dispensing device (¶ 0030).
performing a predetermined operation in response to reception of the secret information when the secret information is received after the first transaction is publicized on a distributed ledger, publicizing a second transaction including the secret information received on a distributed ledger thereby to receive crypto-assets; and
Smolen - databases 64 may include a digital currency repository 75 (including URIs and private key information) (¶ 0031).
causing the storage device to store the secret information that has been used to receive crypto-assets, wherein the limitation information enables the retrieving of crypto-assets without using other secret information decided at the second apparatus.
Smolen - databases 64 may include one or more databases for managing digital currency received, stored, and used by the vending machine. For example, the databases 64 may include a digital currency repository 75 (including URIs and private key information) and a digital currency transaction log 65 (¶ 0031).
Smolen does not teach, however Bishop discloses (in BOLD):
when the secret information is received, confirming whether the same secret information as the received information is stored in the storage device or not;
Bishop - the issuer validates the counter from the account… Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
if the same secret information is not stored in the storage device in the confirming, performing the predetermined operation to sell items or provide services, the operation not being a process on the distributed ledger;
Bishop - the issuer validates the counter from the account… Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
if the same secret information is stored in the storage in the confirming, not performing the predetermined operation, receiving crypto-assets when the secret information is received after the first transaction is publicized on a distributed ledger and by publicizing a second transaction including the secret information received on a distributed ledger; and
Bishop - the issuer validates the counter from the account… Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the vending/payment device of Smolen with the confirming technique of Bishop because doing so increases security against replay and double spending, ensures that each “secret information” (token, URI, counter) is used only once, and decides whether or not to carry out the operation.
Claims 7 and 8. Smolen teaches:
An information processing method executed by a processor of information processing apparatus comprising the processor and a storage device and a non-transitory computer-readable recording medium storing an information processing program causing a process of information processing apparatus comprising the processor and a storage device to execute an information process wherein the storage device stores the secret information that has been used to receive crypto-assets, and the processor executes a process comprising:
Smolen - A vending machine is described that uses digital currency transactions to enable a user to purchase items from their portable computing device (Abstract). the vending machine receives a digital currency transaction from the user's store of digital currency, most likely from a smartphone or other portable computing device (¶ 0030).
receiving secret information from a sending source that has publicized a first transaction including limitation information enabling retrieving of crypto-assets by using the secret information on a distribution ledger;
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency… the URI of bit coin or other crypto currency may be transferred between the devices… recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain) (¶ 0030).
when the secret information is received, confirming whether the same secret information as the received information is stored in the storage device or not if the same secret information is not stored in the storage device in the confirming, performing the predetermined operation to sell items or provide services, the operation not being a process on the distributed ledger;
Note – Smolen teaches that the vending machine records and saves prior transaction information.
Smolen - vending machine microcontroller 19 records and saves information regarding the activities of the vending machine (¶ 0031). the payment criteria have been met and purchase information shared via the MDB trigger the item to be dispensed by the vending machine, such as actuation of a mechanical dispensing device (¶ 0030).
if the same secret information is stored in the storage in the confirming, not performing the predetermined operation;
Smolen - the payment criteria have been met and purchase information shared via the MDB trigger the item to be dispensed by the vending machine, such as actuation of a mechanical dispensing device (¶ 0030).
when the secret information is received after the first transaction is publicized on a distributed ledger,
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency… the URI of bit coin or other crypto currency may be transferred between the devices… recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain) (¶ 0030).
publicizing a second transaction including the secret information received on a distributed ledger thereby to receive crypto- assets; and
Smolen - the vending machine receives a digital currency transaction from the user's store of digital currency… the URI of bit coin or other crypto currency may be transferred between the devices… recording the transfer through a remote digital currency system (such as recording a new transaction to a bitcoin block chain) (¶ 0030).
causing the storage device to store the secret information that has been used to receive crypto-assets, wherein the limitation information enables the retrieving of crypto-assets without using other secret information decided at the second apparatus.
Smolen - databases 64 may include one or more databases for managing digital currency received, stored, and used by the vending machine. For example, the databases 64 may include a digital currency repository 75 (including URIs and private key information) and a digital currency transaction log 65 (¶ 0031).
Smolen does not teach, however Bishop discloses:
when the secret information is received, confirming whether the same secret information as the received information is stored in the storage device or not if the same secret information is not stored in the storage device in the confirming, performing the predetermined operation to sell items or provide services, the operation not being a process on the distributed ledger;
Bishop - the issuer validates the counter from the account… Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
if the same secret information is stored in the storage in the confirming, not performing the predetermined operation;
Bishop - the issuer validates the counter from the account… Any unexpected or reused value may indicate a likely misuse of the RFID or a fraudulent replay of a previous RFID transaction request transmission. To account for undelivered or missing requests, the acquirer may allow for acceptable gaps in the counter value, but reused values may always be rejected (¶ 0039).
Therefore, it would have been obvious to one of ordinary skilled of the art before the effective filing date of the claimed invention to modify the vending/payment device of Smolen with the confirming technique of Bishop because doing so increases security against replay and double spending, ensures that each “secret information” (token, URI, counter) is used only once, and decides whether or not to carry out the operation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ohara et al. (JP2020184125A) – to release money receipt amount from a content purchaser to other providers by using a distributed ledger that records information related to content transactions.
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 CHRISTINA C STEVENSON whose telephone number is (571)270-7280. The examiner can normally be reached on Monday to Friday to 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee, can be reached at telephone number 571-272-7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698