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 .
This Office Action is in response to the Applicant’s Amendment filed December 15, 2025. Claims 1, 7-15, and 17-20 are pending and under examination in this case. Claims 2-6 and 16 are currently canceled. Claims 1, 7-8, 10, and 17-18 are currently amended.
Response to Arguments
Applicant's arguments filed December 15, 2025, have been fully considered but they are not persuasive.
Applicant argues, regarding claims 1 and 18, as currently amended, that the claims recite statutory subject matter.
Examiner respectfully disagrees.
Applicant more specifically argues, that storage via password-protection is inherently statutory.
We find that such storage is merely a way locking away the encrypted information, and therefore capable of being done with, e.g. a sealed paper envelope. In other words, these are using additional element(s) of using one or more hardware processors, user terminal, and a memory, to perform the steps amounts to no more than using a computer to automate and/or implement the abstract idea of receiving and storing information.
Applicant further argues, that claim 18, as currently amended, is statutory as it recites an apparatus.
Examiner respectfully disagrees.
Note that clam 18, as currently amended, is directed to an apparatus and therefore falls within the within the four statutory categories of invention. We note, however, that even apparatus claims can be found to be non-statutory. In the instant case, the apparatus is merely being used as a tool to carry out the abstract idea.
Applicant’s further arguments with respect to the claims, as currently amended, have been considered 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 § 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, 7-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1 and 7-15 are directed to a method, and claims 18-20 are directed to a system or apparatus. Therefore, these claims fall within the four statutory categories of invention.
The claims recite receiving and storing encrypted information. Specifically, the claims recite receiving encrypted wallet information, and storing the said information receiving encrypted wallet information, and storing the said information, which is a mental process capable of being performed with pen and paper in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because it describes a process capable of being performed with pen and paper. The claims are further grouped within certain methods of organizing human activity because the steps recited describe the fundamental economic practice of safeguarding sensitive information to avoid theft. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of the claims such as the one or more processors, user terminal, and a memory, merely uses a computer as a tool to perform an abstract idea. Specifically, one or more processors, user terminal, and a memory perform the steps or functions of receiving and storing encrypted information. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional element(s) of using one or more hardware processors, user terminal, and a memory, to perform the steps amounts to no more than using a computer to automate and/or implement the abstract idea of receiving and storing information. As discussed above, taking the claim elements separately, one or more hardware processors, user terminal, and memory performs the steps or functions of receiving encrypted information and storing the said encrypted information. These functions correspond to the actions required to perform the abstract idea. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2, 7-15, 17, and 19-20 further describe the abstract idea of receiving and storing information. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim 17 is additionally rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter.
Claim 17 is directed to a transitory signal as it recites a "computer-readable storage medium." As recited, the "computer-readable storage medium" is broad enough to read on a transitory signal.
Transitory signals are defined according to the "Microsoft Press Dictionary Definition" or "IEEE Definition". According to MPEP § 2106, however, there are four categories of invention: process, machine, article of manufacture or composition of matter. Therefore, as "transitory signals" are neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter. In re Nuijten, Docket no. 2006-1371 (Fed. Cir. Sept. 20, 2007) (slip. op. at 18).
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, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Iamarenko et al (US 2019/0236591) in view of Deliwala et al (US 2016/0379208) and Sepulveda (US 2021/0042748).
Regarding claims 1, 17, and 18 –
Iamarenko discloses a method for providing a decentralized wallet service, (par 93) the method comprising:
receiving from a user terminal, wallet specific information encrypted by using a wallet password input when a wallet is created by a user,(par 14)
wherein the wallet specific information is a private key or mnemonic, (par 14-16) and
storing the wallet specific information encrypted by using the wallet password (par 14-16) wherein the wallet specific information encrypted by using the wallet password is not stored in the user terminal (par 135), and wherein in the storing of a signature target message, the signature target message as signed is stored, and a one-time transaction key is transmitted to the web browser type wallet service client, (par 135)
Deliwala discloses, as Iamarenko does not,
wherein the user terminal is a web browser type wallet service client executed by the user terminal; (par 63, also 64, 65)
wherein a one-time transaction key is transmitted to the web browser type wallet service client (par 27);
performing a signature with stored encrypted wallet specific information (par 32) the performing of the signature includes:
storing the signature target message as signed when the signature target message is received from the web browser type wallet service client; (par 33)
transmitting the stored encrypted wallet specific information and the stored signature target message to the web browser type wallet service client when a wallet information request is received from the web browser type wallet service client (par 33) and
receiving, from the web browser type wallet service client, the signature target message signed based on the wallet specific information decrypted from the wallet specific information encrypted by using the wallet password input when performing the signature by the user; (par 33)
in the transmitting of the encrypted wallet specific information, the encrypted wallet specific information is re-encrypted by using the one-time transaction key, and the re-encrypted wallet specific information and the signature target message are transmitted to the web browser type wallet service client, (par 27) and
in the receiving of the signature target message as signed, the re-encrypted wallet specific information is decrypted by using the one-time transaction key, and then the signature target message signed based on the wallet specific information decrypted from the wallet specific information encrypted by using the wallet password input is received from the web browser type wallet service client when performing the signature by the user; (par 30, 33).
It would be obvious to one of ordinary skill in the art to combine Iamarenko with Deliwala for a more secure transaction though additional encryption.
Sepulveda discloses, as Iamarenko does not specifically, logging in to a wallet service account of the user through identity provider (IdP) log by a manipulation of the user. (par 30)
It would be obvious to one of ordinary skill in the art to combine Iamarenko with the login of Sepulveda in order to obtain greater security for data and transactions.
Claims 7-15 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Iamarenko et al (US 2019/0236591) in view of Deliwala et al (US2016/0379208) and Sepulveda (US 2021/0042748) and further in view of Desmarais (US 2021/0083872).
Iamarenko in view of Deliwala, and Sepulveda disclose as above.
Regarding claim 7 –
Desmarais discloses wherein the signature target message is a transaction message created by the web browser type wallet service client. (par 10, 270)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda and Sepulveda with Desmarais, for greater data security.
Regarding claim 8 –
Desmarais discloses when a connection request of an external wallet is received from the web browser type wallet service client, connecting the external wallet to the wallet service account. (par 72)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda and Sepulveda with Desmarais, for greater data security.
Regarding claim 9 –
Desmarais discloses wherein the connecting of the external wallet includes
receiving the encrypted wallet specific information of the external wallet by using the wallet password input when connecting the external wallet by the user from the web browser type wallet service client; (par 72) and
storing the encrypted wallet specific information of the external wallet, (par 195) and
the encrypted wallet specific information of the external wallet is not stored in the web browser type wallet service client. (par 195)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda with Desmarais, for greater data security. In other words, you can’t steal what is not there.
Regarding claim 10 –
Desmarais discloses when a login request of a blockchain-based external service is received from a blockchain-based external service providing server, performing the login of the blockchain-based external service by using a wallet selected by the user among the wallets connected to the wallet service account. (par 199)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda with Desmarais, for greater data security.
Regarding claim 11 –
Desmarais discloses when a signature target message according to an external service is received from the blockchain-based external service providing server, performing the signature by using the stored encrypted wallet specific information. (par 199)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda with Desmarais, for greater data security.
Regarding claim 12 –
Desmarais discloses when the signature target message is received from the blockchain-based external service providing server, storing the signature target message as received; (par 195)
when a wallet information request is received from a web browser type external service client executed by the user terminal through the web browser type wallet service client, transmitting the stored encrypted wallet specific information and the signature target message as stored to the web browser type wallet service client; (par 199) and
receiving, from the web browser type wallet service client, the signature target message signed based on the wallet specific information decrypted from the wallet specific information encrypted by using the wallet password input when performing the signature by the user. (par 199)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda with Desmarais, for greater data security.
Regarding claim 13 –
Desmarais discloses wherein in the storing of the signature target message, the signature target message as received is stored, and a one-time transaction key is transmitted to the blockchain-based external service providing server, (par 195)
in the transmitting of the encrypted wallet specific information, the encrypted wallet specific information is re-encrypted by using the one-time transaction key, and the re-encrypted wallet specific information and the signature target message are transmitted to the web browser type wallet service client, (par 10, 270) and
in the receiving of the signature target message as signed, the re-encrypted wallet specific information is decrypted by using the one-time transaction key provided from the web browser type external service client, and then the signature target message signed based on the wallet specific information decrypted from the wallet specific information encrypted by using the wallet password input is received from the web browser type wallet service client when performing the signature by the user. (par 10, 270)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda with Desmarais, for greater data security.
Regarding claim 14 –
Iamarenko discloses wherein the signature target message is a transaction message created by a web browser type external service client. (par 135)
Regarding claim 15 –
Desmarais discloses wherein the wallet password is set to correspond to the wallet service account by the user to be used for all of the wallets connected to the wallet service account, or set for each wallet by the user. (par 290)
It would be obvious to one of ordinary skill in the art to combine Iamarenko, Deliwala, and Sepulveda with Desmarais, for greater data security.
Regarding claim 19 –
Iamarenko discloses that the user terminal is a web browser type wallet service client executed by the user terminal. (par 93)
Sepulveda teaches, as Iamarenko does not teach specifically, logging in to a wallet service account of the user through identity provider (IdP) log by a manipulation of the user. (par 30)
Iamarenko teaches wherein in the receiving of the wallet specific information, the wallet specific information encrypted by using the wallet password input by the user who logs in to the wallet service account is received from the web browser type wallet service client. (par 93)
It would be obvious to one of ordinary skill in the art to combine Iamarenko with the login of Sepulveda in order to obtain greater security for data and transactions.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/Cristina Owen Sherr/Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697