DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/09/2026 has been entered.
Status of Claims
Claims 1 and 4-5 have been amended. Claims 2-3 and 6 have been canceled. Claims 1, 4-5, and 7 are pending and presented for examination.
Response to Arguments
Applicant’s amendments, filed 03/09/2026, with respect to claims 1 and 5 have overcome the previous claim objections. Therefore, the previous claim objections to claims 1 and 5, set forth in Final Rejection 10/08/2025, have been withdrawn.
Applicant’s amendments, filed 03/09/2026, with respect to claim 1 has overcome the previous 35 U.S.C. 112(a) and 112(b) rejections of claims 1 and 4-7. Claim 6 has been canceled, therefore, the previous 35 U.S.C. 112(a) rejection of claim 6 has been rendered moot. The previous 35 U.S.C. 112(a) and (b) rejections of claims 1 and 4-7, set forth in the Final Rejection 10/08/2025, has been withdrawn.
Applicant’s arguments, see pgs. 7-8, filed 03/09/2026, with respect to the prior art not teaching using blockchain confirmation as the basis for approving the transaction have been fully considered and are persuasive. Therefore, the prior 35 U.S.C. 103 rejection of claims 1 and 4-7 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Tu U.S. 2022/0005022.
In response to Applicant’s remark that none of Sells, Brock, or Abbas discloses executing a previously recorded smart contract, Examiner notes that Sells discloses using smart contracts to facilitate transactions [0013], [0054] and Abbas discloses recording a smart contract when it is created [0073]. Abbas further discloses that execution of the smart contract is triggered by one or more preconditions [0073]. Therefore, Abbas does disclose executing a previously recorded smart contract. The combination of Sells in view of Abbas would therefore teach executing a previously recorded smart contract in response to a payment request. For purposes of brevity, please see below for the combination and rationale.
Claim Objections
Claim 1 is objected to because of the following informalities: “the point-of-sale device” on pg. 3, lines 18-19 should be “a point-of-sale device.” Appropriate correction is required.
Claim 7 is objected to because of the following informalities: “from the point-of-sale device” should be removed. Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sells et al. WO 2022/027027 (herein referred to as “Sells”) in view of Abbas et al. U.S. 2024/0386427 (herein referred to as “Abbas”), and further in view of Tu U.S. 2022/0005022.
Re Claim 1, Sells discloses a method for conducting a debit card-based transaction using by a user having a crypto-currency account, comprising:
entering a smart contract, on a crypto-currency network, between a user and an authorizing entity ([0092] – “The third-party financier can facilitate the transaction (for a user),” [0087] – “The various options for users present many optimization opportunities, which may be undertaken using a set of rules or a model (optionally embodied by a smart contract that facilities execution upon ingesting applicable data sets),” i.e. entering a smart contract), the smart contract configured to transfer a maximum number of tokens from a user’s wallet associated with the user to an authorizing entity wallet (EOA) associated with the authorizing entity at a later time when the smart contract is executed ([0098] – “the wallet holder may transfer an amount of cryptocurrency, i.e. tokens, to an account of the third-party financier (i.e. EOA),” [0013] – “the exchange may be automatically performed by the platform based at least in a part on a rule stored in a smart contract…The rule may relate to…a transaction size (minimum, maximum, or range),” i.e. maximum number of tokens), wherein entering the smart contract comprises […] allowing the transfer of the maximum number of tokens from the user’s wallet to the authorizing entity wallet associated with the authorizing entity at the later time when the smart contract is executed;
One of ordinary skill in the art would know that smart contracts are executed upon meeting the predetermined requirements/conditions, therefore, the actions associated with executing a smart contract are “delayed” or occurs “at a later time” because the terms and/or conditions of the smart contract must first be met and/or triggered. Since Sells discloses using a smart contract to store rules and performing automatic exchanges, i.e. transactions, Sells at least discloses allowing the transfer at the later time when the smart contract is executed [0013, 54, 87].
receiving, at one or more processors associated with the authorizing entity, from one or processors associated with a card processor, a request to approve an amount in fiat currency ([0098] – “The user may initiate a fiat currency payment transaction funded by a cryptocurrency on the user’s application. This transaction may be initiated by the user’s client device, debit card or wearable debit card. The request may be received at the user’s bank,” [0092] – “the bank may contact the third-party financier”);
forwarding a new on-chain transaction request to the crypto-currency network, from the one or more processors associated with the authorizing entity, based on the received request ([0098] – “The bank may relay the request (i.e. based on the received request) to the third-party financier and the user’s wallet holder,” i.e. crypto-currency network) and information stored in one or more databases associated with the authorizing entity, [0094] – “The third-party financier 710 may store…information which can facilitate transactions” to execute the smart contract on the crypto-currency network, [0087] – “a smart contract that facilitates transaction execution,” the information stored in the one or more databases associated with the authorizing entity including information about the entered smart contract ([0094] – “The third-party financier 710 may store…information which can facilitate transactions,” i.e. smart contract);
executing the smart contract on the crypto-currency network in response to receiving the new on-chain transaction requestion [0087] – “smart contract that facilitates transaction execution upon ingesting applicable data sets,” comprising
initiating a fund transfer and withdrawing, on the crypto-currency network, a quantity of the tokens from the user's wallet to the EOA, the number of tokens corresponding to the amount of the fiat currency ([0098] – “In response, the wallet holder may transfer an amount of cryptocurrency (i.e. quantity of tokens) to an account of the third-party financier (i.e. EOA).” [0011] – “the cryptocurrency amount corresponds to the request for payment based on the cryptocurrency valuation, exchanging the cryptocurrency amount for a fiat currency amount of corresponding value”) and […];
approving, utilizing the one or more processors associated with the authorizing entity, the request from the card processor […] [0098] – “Upon receipt of the cryptocurrency, the third-party financier may transfer a sum of fiat currency to an account associated with the bank. Upon receipt of the funds, the bank may authorize the payment”;
storing information related to the approved request in the one or more databases
associated with the authorizing entity ([0094] – “database structure 700 is shown for storing information by various entities to facilitate the transaction in conjunction with the platform…transaction data, an amount for each transaction…,” i.e. related to the approved request); and
settling a payment between the authorizing entity and a merchant associated with the
point-of-sale device based on the previously approved request [0098] – “The merchant may receive the currency selected for the purchase of a good or service or other transaction type as an outcome of this process 1018”, comprising:
withdrawing at least a portion of the number of tokens from the EOA ([0098] – “The third-party financier 1020 may have a settlement account at the bank 1000 that is linked to registered users 1004,” [0093] - “an entity separate from the third-party financier may hold the user’s cryptocurrency wallet and the third-party financier may receive/send cryptocurrency from/to the wallet holder,” i.e. withdraw tokens) and
converting the at least a portion of the number of tokens into an amount of settlement fiat currency [0058] – “convert cryptocurrency to fiat currency”; and
transferring the settlement fiat currency from a fiat currency account associated with the authorizing entity to a merchant fiat account associated with the merchant based on an amount corresponding to the previously approved request ([0087] – “The corresponding payment (USD, i.e. fiat currency) transferred by conventional payment processing channels, such as by either a bank or third-party financier (i.e. authorizing entity) to the merchant”).
However, Sells does not expressly disclose
generating the smart contract, on the crypto-currency network;
accepting terms of the smart contract, utilizing a user device associated with the user, allowing the transfer of the maximum number of tokens from the user’s wallet to the authorizing entity wallet associated with the authorizing entity at the later time when the smart contract is executed; and
recording the smart contract on a ledger on the crypto-currency network.
Abbas discloses method and system for triggering execution of a smart contract. Specifically, Abbas discloses
generating the smart contract, on the crypto-currency network [0073] – “When a smart contract is created, it is compiled into bytecode and stored on the blockchain network 200”;
accepting terms of the smart contract, utilizing a user device associated with the user ([0082] – “The indication of acceptance may include an acknowledgment to one or more terms of the smart contract,” thereby suggesting that the client device is used to acquiesce to the agreement of the smart contract); and
recording the smart contract on a ledger on the crypto-currency network [0073] – “When a smart contract is created, it is compiled into bytecode and stored on the blockchain network 200.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sell’s method for cryptocurrency payments with the teachings of generating the smart contract, accepting terms of the smart contract, and recording the smart contract on a ledger in Abbas. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
However, Sells in view of Abbas do not explicitly teach
updating the ledger on the crypto-currency network corresponding to the transferred number of tokens responsive to withdrawing the quantity of tokens from the user’s wallet to the EOA,
confirming, by the one or more processors associated with the authorizing entity, an onchain transaction corresponding to the new on-chain transaction request on a blockchain based on the updated ledger on the crypto-currency network;
approving the request only after confirmation of the on-chain transaction.
Tu discloses a rapid approval of blockchain-based transactions. Specifically, Tu discloses
updating the ledger on the crypto-currency network corresponding to the transferred number of tokens responsive to withdrawing the quantity of tokens from the user’s wallet to the EOA ([0034] – “The transaction queue manager 108 can update and maintain the queued transactions 116 (i.e. ledger). Upon receipt of a request for approval of a transaction…the transaction queue manager 108 can identify a particular transaction amount of the transaction and a digital wallet from which the digital asset (e.g., cryptocurrency) is to be withdrawn”),
confirming, by the one or more processors associated with the authorizing entity, an onchain transaction corresponding to the new on-chain transaction request on a blockchain based on the updated ledger on the crypto-currency network [0021] – “With both the pending transactions and balance in the blockchain, the cloud transaction manager is able to confirm that the digital wallet has an available balance sufficient to complete the transaction”;
approving the request only after confirmation of the on-chain transaction ([0021] – “(based on the confirmation of pending transactions and balance in the blockchain) transmit a message back to the client device instructing the client device to…commit to the transaction”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sell in view of Abbas’ method for cryptocurrency payments with the teachings of updating the ledger, confirming an on-chain transaction based on the updated ledger, and approving the request only after confirmation of the on-chain transaction in Tu. One would be motivated to make this combination to increase the speed and usability of blockchain-based transactions Tu, [0017].
Re Claim 4, Sells in view of Abbas and Tu teach the method of claim 1, and Sells in view of Abbas and Tu further teach wherein generating the smart contract comprises:
accessing terms of an agreement of the smart contract, utilizing a user device Abbas [0089] – “a graphical user interface may be displayed that includes terms and conditions of an agreement,” [0082] – “The indication of acceptance may include acknowledgment to one or more terms of the smart contract”; and
inputting acquiescence to the agreement utilizing the user device (Abbas, [0089] – the message is displayed on the client device 110, [0082] – “The indication of acceptance may include an acknowledgment to one or more terms of the smart contract,” thereby suggesting that the client device is used to acquiesce to the agreement of the smart contract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sell’s method for cryptocurrency payments with the teachings of acquiescing to the terms of the agreement of the smart contract using a device in Abbas. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. Therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 5, Sells in view of Abbas and Tu teach the method of claim 1, and Sells in view of Abbas and Tu further teach wherein the tokens comprise Ethereum tokens Sells, [0087].
Re Claim 7, Sells in view of Abbas and Tu teach the method of claim 1, and Sells in view of Abbas and Tu further teach wherein approving the request from the point-of-sale device comprises verifying confirmation of the token transfer on a publicly distributed blockchain Tu, [0021] – ““With both the pending transactions and balance in the blockchain, the cloud transaction manager is able to confirm that the digital wallet has an available balance sufficient to complete the transaction and can transmit a message back to the client device instructing the client device to…commit to the transaction,” [0041] – “the blockchain 124 is a public blockchain.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sell in view of Abbas’ method for cryptocurrency payments with the teachings of approving the request comprises verifying confirmation of the token transfer on a publicly distributed blockchain in Tu. One would be motivated to make this combination to increase the speed and usability of blockchain-based transactions Tu, [0017].
Conclusion
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/CHRISTINE DANG/Examiner, Art Unit 3698
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