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 Final office action is in response to an applicant’s REMARKs filed on 08/14/2025.
Priority Date: CON-PAT>(11,880,826)>(US APPL # 17/378,250)-(12/16/2020).
Claim Status:
Pending claims: 1-20
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 1-20 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 method/system/machine, which are a statutory category of invention.
Claim 1 (exemplary) recites a series of steps for converting digital asset to Fiat currency..
[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
generating and transmitting a first conversion rate application programming interface (API) request, wherein (i) the first conversion rate API request is associated with a first digital asset conversion request at a first timepoint and a digital asset user account identifiable by an identifier token associated with an end user, (ii) the first conversion rate API request comprises a conversion behavior analytics data object, (iii) the first conversion rate API request indicates a digital asset associated with the first digital asset conversion request, and (iv) the first digital asset conversion request indicates a first number of digital asset units, wherein the conversion behavior analytics data object comprises
(i) a first number of digital asset conversion requests received originating from the end user within a first configurable time period, (ii) a second number of digital asset conversion requests received originating from a conversion behavior cohort of the end user within the first configurable time period, (iii) one or more conversion rates at which one or more digital asset conversions were previously executed for the end user within the first configurable time period, and (iv) at least one conversion rate at which one or more digital asset conversions were previously executed for the conversion behavior cohort of the end user within the first configurable time period; receiving a first conversion rate API response comprising a first conversion rate for the digital asset and a fiat currency;
providing the first conversion rate for display via the client ...;
executing a digital asset conversion for the digital asset conversion request within a second configurable time period, wherein executing the digital asset conversion comprises causing the first number of digital asset units to be debited from the digital asset user account and causing a transfer of a first number of fiat currency units to a fiat currency user account originating from a fiat currency central operating account;
dynamically providing a notification of execution of the digital asset conversion via the client …;
updating a first account balance data object associated with the digital asset user account and a second account balance data object associated with the fiat currency user account based at least in part on the digital asset conversion; and
subsequent to executing the digital asset conversion, executing a fiat currency transaction with a digital asset exchange system.
The claimed method/system/machine simply describes series of steps for converting digital asset to Fiat currency and causing the debit of digital asset units from a digital account to a fiat currency account.
These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performance of the limitations of commercial or business activities/interactions, where once asset is valued in its equivalent fiat currency value; similar to evaluating and converting any assets to cash, but for the recitation of generic computer components and digital nature of the assets or units. 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 14, and 20.
Furthermore, the dependent claims 2-13 and 15-19 do not resolve the issues raised in the independent claims. The dependent claims 2-13 and 15-19 are directed towards
using (i) the conversion execution API request indicates the first number of digital asset units, (ii) the conversion execution API request comprises the identifier token associated with the end user, and (iii) the conversion execution API request is configured to cause the digital asset exchange system to debit the first number of digital asset units from the digital asset user account identifiable by the identifier token, and receiving a conversion execution API response indicating that the debiting of the first number of digital asset units from the digital asset user account was completed; wherein the identifier token is a federated identifier token and configured to identify a plurality digital asset user accounts associated with the end user and managed by one or more different digital asset exchange systems; wherein the digital asset is one of (i) a liability digital asset, (ii) a cryptocurrency digital asset, or (iii) a single-unit digital asset; and wherein the first conversion is determined based at least in part on the digital asset exchange system providing at least the conversion behavior analytics data object to a predictive model configured to determine a conversion rate with a significant likelihood of causing the end user to request execution of the digital asset conversion and the digital asset exchange system receiving a determined conversion rate from the predictive model.
These limitations are also part of the abstract idea identified in claim 1, and are similarly rejected under same rationale.
Accordingly, the dependent claims 2-13 and 15-19 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Double Patenting
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 therefore, subject to the conditions and requirements of this title".
The following non-statutory double patenting rejection is based on a judicially created doctrine grounded in the public policy (a policy reflected in the statute) so as to prevent the unjustified or improper time wise extension of the right to exclude granted by a patent. In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); In re White, 405 F.2d 904, 160 USPQ 644 (CCPA 1969); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Van Ornam, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 985); and In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993).
Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over Claims 1-9 of U.S.Patent No. 11,880,826. Although the conflicting claims are not identical, they are not patentably distinct from each other because they recite means or steps that are substantially the same and that would have been obvious to one of ordinary skill in the art.
Furthermore, the omission of an element with a corresponding loss of function is an obvious expedient. See In re Karlson, 136 USPQ 184 and Ex parte Rainu, 168 USPQ 375.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(b) would overcome an actual or provisional rejection on a non-statutory double patenting ground provided the conflicting patent is shown to be commonly owned with this application. See 37 CFR 1.78(d).
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mutter (US 20190303921 A1) in view of Mayblum et al (US 2020/0042996 A1).
Ref claim 1, Mutter discloses a computer-implemented method comprising:
generating and transmitting a first conversion rate application programming interface (API) request, wherein (i) the first conversion rate API request is associated with a first digital asset conversion request at a first timepoint and a digital asset user account identifiable by an identifier token associated with an end user, (ii) the first conversion rate API request comprises a conversion behavior analytics data object, (iii) the first conversion rate API request indicates a digital asset associated with the first digital asset conversion request, and (iv) the first digital asset conversion request indicates a first number of digital asset units, wherein the conversion behavior analytics data object comprises
(i) a first number of digital asset conversion requests received originating from the end user within a first configurable time period, (ii) a second number of digital asset conversion requests received originating from a conversion behavior cohort of the end user within the first configurable time period, (iii) one or more conversion rates at which one or more digital asset conversions were previously executed for the end user within the first configurable time period, and (iv) at least one conversion rate at which one or more digital asset conversions were previously executed for the conversion behavior cohort of the end user within the first configurable time period (para [0031], fig. 1; via asset transfer system 100/[SaaS] platform... on a user’s computer/network interface 140...[0032]; via a plurality of databases 125 to transfer digital assets between users ...[0146], fig.22; via GUI 220/a conversion algorithm operated by the asset transfer system 100 converts the amount of fiat currency to the same amount digital currency/digital assets 245 are sent to the recipient/transaction amount 2205...);
receiving a first conversion rate API response comprising a first conversion rate for the digital asset and a fiat currency (para [0119], fig. 12; via GUI-1200/user 215 logs into the asset transfer system 100/user to view ...all requests/to be displayed [implied on device]...);
providing the first conversion rate for display via a client device; executing a digital asset conversion for the digital asset conversion request within a second configurable time period, wherein [[ executing the digital asset conversion comprises causing the first number of digital asset units to be debited from the digital asset user account and causing a transfer of a first number of fiat currency units to a fiat currency user account originating from a fiat currency central operating account ]] (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/ server/database executing the transaction...);
dynamically providing a notification of execution of the digital asset conversion via the client device (para [0034]; via provide direction to a user of the asset transfer system 100/display showing GUI/a user input device ...);
updating a first account balance data object associated with the digital asset user account and a second account balance data object associated with the fiat currency user account based at least in part on the digital asset conversion (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time......[0146], fig. 22; via dashboard GUI 2200/...alternate embodiment, the transaction amount 2205 will be a value of fiat currency/conversion algorithm may be updated in real time or periodically by system 100...); and
subsequent to executing the digital asset conversion, executing a fiat currency transaction with a digital asset exchange system (para [0063]; via the asset transfer system 100 works with remote database 125/balances are always checked each transaction 225/how much digital currency a user has 215...[0146], fig. 22; via dashboard GUI 2200/...alternate embodiment, the transaction amount 2205 will be a value of fiat currency/conversion algorithm may be updated in real time or periodically by system 100...).
Mutter does not explicitly disclose the step of executing the digital asset conversion comprises causing the first number of digital asset units to be debited from the digital asset user account and causing a transfer of a first number of fiat currency units to a fiat currency user account originating from a fiat currency central operating account.
However, Mayblum being in the same field of invention discloses the step of executing the digital asset conversion comprises causing the first number of digital asset units to be debited from the digital asset user account and causing a transfer of a first number of fiat currency units to a fiat currency user account originating from a fiat currency central operating account (Abst. fig. 1; via system/method for facilitating a transaction between a first entity and a second entity using a digital currency[asset]…the digital currency is issued by the financial institution and fixed with respect to a Fiat Currency…; [para-0006]; via the financial institution provide its customers with digital currency transactions/keeping track of the value/corresponding to Fiat currency… ).
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 Mutter to include the disclosures as taught by Mayblum to facilitate transaction with digital asset converting to Fiat Currency.
Ref claim 2, Mutter discloses the computer-implemented method of claim 1, further comprising: responsive to determining that a third configurable time period has elapsed:
generating and transmitting a second conversion rate API request, wherein the second conversion rate API request indicates the digital asset, receiving a second current pricing data API response comprising a second conversion rate for the digital asset and the fiat currency, and providing the second conversion rate for display via the client device; and receiving a second digital asset conversion request, wherein the second digital asset conversion request (i) is at a second timepoint, (ii) is associated with the digital asset user account identifiable by the identifier token associated with the end user, and (iii) indicates a second number of digital asset units (para [0119], fig. 12; via GUI-1200/user 215 logs into the asset transfer system 100/user to view ...all requests/to be displayed [implied on client device]...).
Ref claim 3, Mutter discloses the computer-implemented method of claim 1, wherein the digital asset user account is managed by the digital asset exchange system, and causing the first number of digital asset units to be debited from the digital asset user account comprises: generating and transmitting a conversion execution API request such that the digital asset exchange system receives the conversion execution API request, wherein (i) the conversion execution API request indicates the first number of digital asset units, (ii) the conversion execution API request comprises the identifier token associated with the end user, and (iii) the conversion execution API request is configured to cause the digital asset exchange system to debit the first number of digital asset units from the digital asset user account identifiable by the identifier token, and receiving a conversion execution API response indicating that the debiting of the first number of digital asset units from the digital asset user account was completed (para [0034]; via provide direction to a user of the asset transfer system 100/display showing GUI/a user input device ... [0119], fig. 12; via GUI-1200/user 215 logs into the asset transfer system 100/user to view ...all requests/to be displayed [implied on device]...).
Ref claim 4, Mutter discloses the computer-implemented method of claim 3, wherein the identifier token is a federated identifier token and configured to identify a plurality digital asset user accounts associated with the end user and managed by one or more different digital asset exchange systems (para [0034]; via provide direction to a user of the asset transfer system 100/display showing GUI/a user input device ...; [0119], fig. 12; via GUI-1200/user 215 logs into the asset transfer system 100/user to view ...all requests/to be displayed ...).
Ref claim 5, Mutter discloses the computer-implemented method of claim 1, wherein executing the digital asset conversion comprises:
determining whether the first number of digital asset units and the first number of fiat currency units satisfy one or more configurable conversion thresholds, wherein at least one of the one or more configurable conversion thresholds is configured by the digital asset exchange system, and responsive to determining that the first number of digital asset units and the first number of fiat currency units do not satisfy the one or more configurable conversion thresholds, modifying at least the first number of digital asset units (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time… [0063]; via the asset transfer system 100 works with remote database 125/balances are always checked each transaction 225/how much digital currency a user has 215...).
Ref claim 6, Mutter discloses the computer-implemented method of claim 1, wherein: the fiat currency transaction with the digital asset exchange system is a fiat currency settlement for at least the transfer of the first number of fiat currency units to the fiat currency user account originating from the fiat currency central operating account, and executing the fiat currency transaction is responsive to generating and transmitting a settlement request such that the digital asset exchange system receives the settlement request, wherein the settlement request indicates a third number of fiat currency units (para [0063]; via the asset transfer system 100 works with remote database 125/balances are always checked each transaction 225/how much digital currency a user has 215...).
Ref claim 7, Mutter discloses the computer-implemented method of claim 6, wherein the settlement request is transmitted based at least in part on a fourth configurable time period (para [0034]; via provide direction to a user of the asset transfer system 100/display showing GUI/a user input device ...).
Ref claim 8, Mutter discloses the computer-implemented method of claim 7, wherein the fiat currency transaction with the digital asset exchange system is a fiat currency settlement for a plurality of transfers of fiat currency units to a plurality of fiat currency user accounts originating from the fiat currency central operating account executed within the fourth configurable time period (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time…).
Ref claim 9, Mutter discloses the computer-implemented method of claim 1, wherein providing the first conversion rate for display via a client device comprises dynamically determining a first number of fiat currency units based at least in part on the first conversion rate and the first number of digital asset units, and displaying the first number of fiat currency units via the client device (para [0119], fig. 12; via GUI-1200/user 215 logs into the asset transfer system 100/user to view ...all requests/to be displayed [implied on device]...).
Ref claim 10, Mutter discloses the computer-implemented method of claim 1, further comprising updating the conversion behavior analytics data object based at least in part on the digital asset conversion (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time).
Ref claim 11, Mutter discloses the computer-implemented method of claim 2, wherein the third configurable time period is a conversion rate refresh time period within which the first conversion rate is accurate for a value of the digital asset, and wherein the second configurable time period is a conversion rate execution time period within which the second conversion rate is valid for the execution of a digital asset conversion (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time…).
Ref claim 12, Mutter discloses the computer-implemented method of claim 1, wherein the digital asset is one of (i) a liability digital asset, (ii) a cryptocurrency digital asset, or (iii) a single-unit digital asset (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time …).
Ref claim 13, Mutter discloses the computer-implemented method of claim 1, wherein the first conversion is determined based at least in part on the digital asset exchange system providing at least the conversion behavior analytics data object to a predictive model configured to determine a conversion rate with a significant likelihood of causing the end user to request execution of the digital asset conversion and the digital asset exchange system receiving a determined conversion rate from the predictive model (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time).
Claim 14 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 15-18 are rejected as per the reasons set forth in claims 3-6 respectively
Claim 19 is rejected as per the reasons set forth in claim 9.
Claim 20 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.
Response to Arguments
Applicant's arguments filed on 12/15/2021 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 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-2B].
Applicant also cited analogy with the court cases such as, hedging, Bilski v. Kappos, etc.,
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>Step 2A-Prong 1 & Prong 2-Step-2B].
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more. The rejection of the previous action was a direct result of the Supreme Court's decision in Alice Corp. Pty. Ltd v. CLS Bank I'ntl. 573 U.S. (2014); Under Alice.
APPLICANT’s REMARKS:
Applicant’s Remarks on page [2/15], that “This Amendment is filed in response to the Non-Final Office Action dated February 14, 2025. In the Office Action, Claims 1-20 were rejected under 35 U.S.C. § 101 as allegedly being directed to non- statutory subject matter;
Claims 1-20 were rejected under 35 U.S.C. § 103 as allegedly being obvious in light of Mutter (U.S. Publication No. 2019/0303921 Al) and Mayblum (U.S. Publication No. 2020/0042996 Al); and Claims 1-20 were rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over Claims 1-9 of U.S. Patent No. 11,880,826.
Applicant requests reconsideration in light of the following remarks.
A. Rejections under 35 U.S.C. § 101:
Applicant’s Remarks pages[2-14/15] that, “Claims 1-20 are rejected under 35 U.S.C. § 101 as allegedly being directed to a judicial exception (i.e., an abstract idea) without significantly more. Applicant respectfully traverses this rejection at least in view of the following remarks.
Technical Problem Overcome by the Claims In at least paragraphs [0020]-[0026] of the Specification as originally filed, Applicant describes technical problems that the claims address. These paragraphs are provided below for the Examiner's convenience…;…;…;…;
Under the Revised Subject Matter Guidance, the Examiner is to apply the various steps of the Alice Mayo test including the two-prong analysis of Step 2A to determine whether the claimed invention is directed to an abstract idea and the analysis of Step 2B to determine whether the claim is patent eligible because it recites "significantly more" than the alleged judicial exception. See Manual of Patent Examining Procedure, § 2106 (10th ed. Rev. June 2020) [hereinafter MPEP]. For at least the following reasons,
Applicant submits that Claims 1-20 are recite patent eligible subject matter under both Step 2A and Step 2B of the Alice Mayo test….;…;…;…;
Based at least on the above, Applicant respectfully submits that the pending claims amount to significantly more under Step 2B. Therefore, Applicant respectfully requests that the rejection of Claims 1-20 be withdrawn and the claims allowed.
In Response A: Examiner Disagrees:
Under Alice-Step (2A)-Prong 1: A method for deriving financial information from digital asset user accounts is akin to the abstract idea subject matter grouping of:
(Certain Methods 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:
(generating and transmitting a first conversion rate application programming interface (API) request, wherein (i) the first conversion rate API request…, and (iv) the first … digital asset units, wherein the conversion behavior analytics data object comprises (i) a first number of …time period, and (iv) at least one conversion rate … time period; receiving a first conversion rate API response comprising a first conversion rate for the digital asset and a fiat currency; providing the first conversion rate ...; executing a digital asset … operating account; dynamically providing a notification …; updating a first account balance data; and subsequent…, executing a fiat currency transaction with a digital asset exchange system.)
As stated above, this abstract idea falls into the subject matter grouping (b) of: (Certain Methods of Organizing Human Activity as ‘Fundamental economic practice to Managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions’).
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:
(generating and transmitting a first conversion rate application programming interface (API) request, wherein (i) the first conversion rate API request…, and (iv) the first … digital asset units, wherein the conversion behavior analytics data object comprises (i) a first number of …time period, and (iv) at least one conversion rate … time period; receiving a first conversion rate API response comprising a first conversion rate for the digital asset and a fiat currency; providing the first conversion rate ...; executing a digital asset … operating account; dynamically providing a notification …; updating a first account balance data; and subsequent…, executing a fiat currency transaction with a digital asset exchange system.)
do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception (i.e. the abstract idea).
The instant recited claims including additional elements (i.e. “generating and transmitting a first conversion rate (API) request; receiving a first conversion rate… a fiat currency; providing the first conversion rate…; updating a first account balance data; and subsequent…; executing a fiat currency transaction with a digital asset exchange system.”)
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 [0046-47]: 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, machine learning, 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.
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.
Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and database technology. The Courts have repeatedly held that such invocations of computers and networks that are not even arguably inventive are “insufficient to pass the test of an inventive concept in the application” of an abstract idea. BuySAFE, 765 F.3d at 1353, 1355; see, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); Internet Patents, 790 F.3d at 1348–49; Content Extraction, 776 F.3d at 1347–48.
Examiner submits that under the current 35 USC 101 examining practice, the existence of such novel features would still not cure the deficiencies with respect to the abstract idea. See for example: Ultramercial, Inc. v. Hulu, LLC, 112 USPQ2d 1750, U.S. Court of Appeals Federal Circuit, No. 2010-1544, Decided November 14, 2014, 2014 BL 320546, 772 F.3d 709, Page 1754 last two ¶ : “We do not agree with Ultramercial that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete”. Indeed, in this in instant case, the limitations simply narrow or limit the abstract idea without providing anything significantly more than the abstract idea itself.
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. Accordingly, claims 1-20 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.
B. Rejections Under 35 U.S.C. § 103:
Applicant argued in pages[13-14/15], that, “Claims 1-20 were rejected under 35 U.S.C. § 103 as allegedly being obvious in light of Mutter (U.S. Publication No. 2019/0303921 Al) and Mendhi (U.S. Publication No. 2020/0042998 Al).
Applicant respectfully traverses these rejections for at least the following reasons.
Mutter is generally directed to the transfer of assets from peer-to-peer through an asset transfer system. Mutter, [0002]. Mutter discloses an asset transfer system that may store user information and communicate with remote servers hosting user wallets. Mutter, Abstract. The Office Action cites paragraph [0043] of Mutter as allegedly disclosing the claimed features….;…;…;
Mendhi is generally directed to managing rights and revenue of digital assets using decentralized infrastructure and decentralized ledger technology. Mendhi, [0002]. Mendhi does not cure the deficiencies of Mutter above and is not cited as such.
Accordingly, Claims 1-20 are not disclosed, taught, or suggested by Mutter and Mendhi-whether considered alone or in combination. Accordingly, Applicant requests withdrawal of the § 103 rejections.”
In Response to B: Examiner Disagree:
However, Mutter disloses obviously all limitations of the claims in views of Mayblum [not Mendhi as Applicant argued with wrong-art]; Such as via Mutter; (para [0031], fig. 1; via asset transfer system 100/[SaaS] platform... on a user’s computer/network interface 140...[0032]; via a plurality of databases 125 to transfer digital assets between users ...[0146], fig.22; via GUI 220/a conversion algorithm operated by the asset transfer system 100 converts the amount of fiat currency to the same amount digital currency/digital assets 245 are sent to the recipient/transaction amount 2205... para [0119], fig. 12; via GUI-1200/user 215 logs into the asset transfer system 100/user to view ...all requests/to be displayed [implied on device]... (para [0043]; via the data structure 210 associates timestamps 230 with wallets 235/240/digital asset 245 and an asset value 250...user accounts 155/executing the transaction ...and update the asset transfer system 100 in real-time......para [0146], fig. 22; via dashboard GUI 2200/...alternate embodiment, the transaction amount 2205 will be a value of fiat currency/conversion algorithm may be updated in real time or periodically by system 100... para [0063]; via the asset transfer system 100 works with remote database 125/balances are always checked each transaction 225/how much digital currency a user has 215...para [0146], fig. 22; via dashboard GUI 2200/...alternate embodiment, the transaction amount 2205 will be a value of fiat currency/conversion algorithm may be updated in real time or periodically by system 100...), AND
Via Mayblum being in the same field of invention discloses the step of: executing the digital asset conversion comprises causing the first number of digital asset units to be debited from the digital asset user account and causing a transfer of a first number of fiat currency units to a fiat currency user account originating from a fiat currency central operating account (Abst. fig. 1; via system/method for facilitating a transaction between a first entity and a second entity using a digital currency[asset]…the digital currency is issued by the financial institution and fixed with respect to a Fiat Currency…; [para-0006]; via the financial institution provide its customers with digital currency transactions/keeping track of the value/corresponding to Fiat currency… ).
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 Mutter to include the disclosures as taught by Mayblum to facilitate transaction with digital asset converting to Fiat Currency.
C. Rejections Under the Doctrine of Obviousness Type Double Patenting:
Applicant respectfully submits that, “there are meaningful differences between the claims of the related issued patent and this patent application that are not obvious. Thus, Applicant respectfully requests withdrawal of this rejection.”
In Response to C: Examiner Disagrees:
However, Claims 1-20 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over Claims 1-9 of U.S.Patent No. 11,880,826. Application’s claim limitations and elements are substantially the same and that would have been obvious to one of ordinary skill in the art.
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.
The prior arts made of record and not relied upon are considered pertinent to applicant's disclosure.
Mendhi et al (US 20200042998 A1) discloses System and Method for Autonomous Sustenance of Digital Assets.
Brian et al (US 10055715 B1) discloses Cryptocurrency Payment Network.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HATEM M. ALI whose telephone number is (571) 270-3021, E-mail: Hatem.Ali@USPTO.Gov and FAX (571)270-4021. The examiner can normally be reached Monday-Friday from 8:00 AM to 6:00 PM ET.
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/HATEM M ALI/
Examiner, Art Unit 3691
/ABHISHEK VYAS/Supervisory Patent Examiner, Art Unit 3691