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 .
Acknowledgment
This Action is in response to the amendment filed on February 2, 2026. Claims 1, 4, 7-10, and 13-18 are currently pending and have been fully examined. Claims 2-3, 5-6 and 11-12 are cancelled by Applicant. Claims 16-18 are newly added.
Response to Arguments
With respect to the claim objection, the amendment overcomes the objection and the objection is withdrawn.
With respect to the rejections under 112, the amendment overcomes the rejection to claim 1 and the rejection is withdrawn.
With respect to the rejection of claim 7 under 112, Applicant argues that the trademarks used in the claim are not limited to a particular source or origin.
The examiner respectfully disagree and notes that a trademark is defined as “a trademark is any word, phrase, symbol, design, or combination thereof that identifies and distinguishes the source of goods or services from those of others.” The examiner further notes that “Java Card” is a registered trademark of “Oracle Corporation,” and “GSMA” and “IoT Safe” are registered trademark owned by the GSM Association, and “IoT Safe.” Therefore, using the trademarks for describing a product in claim 7 makes the claim indefinite because it does not clearly outline the metes and bounds of the claim. The rejection to unamended claim 7 is therefore maintained.
With respect to the rejections under 103, Applicant argues that amended portions of claims 1 and 10 are not taught by the previously cited prior art. The examiner respectfully notes that Applicant’s arguments are moot in light of new grounds of rejection, as the newly cited art of Fallah teaches a system that uses an intermediary proxy system between the client device and the distributed ledger, wherein the transaction information is stored remotely from the client device.
Claim Objections
Claim 16 is newly added by the amendment but is erroneously labeled as “previously presented.” No correction is required at this time.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 7, the claim recites: “wherein the applet generating the private and public key is a Java Card Application and/or a GSMA IoTSafe Applet.” Here, as discussed in MPEP 2173.05(u), the trademarks “Java Card” “GSMA” and “IoT Safe” are used in a claim as a limitation to identify or describe a particular material or product (the “Applet”) and the claim does not comply with the requirements of the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product, but is used as an identification of a source or origin, in this case the company that provides an applet for generating keys. Thus, the use of trademarks “Java Card” “GSMA” and “IoT Safe” in the claim to identify or describe a material or product not only renders the claim indefinite, but also constitutes an improper use of the trademark or trade name.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 8-10, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Wright (US Patent Publication No. 2024/0214179,) in view of Fallah (US Patent Publication No. 2024/0171548,) further in view of Kale (US Patent Publication No. 2019/0130392.)
With respect to claims 1 and 10, Wright teach:
generating a private and public key pair…(key pair derivation: [0166]-[0167], claim 9)
adding, by a …server, one or more transactions to a block of a distributed ledger, (transactions are recorded in nodes that are servers (i.e., proxy server): FG. 2, [0044], [0046]-[0047], [0050], [0061]-[0062], transactions having transaction ID: FIG. 2, [0065])
Identifying the one or more transaction by:
storing … a transaction identifier of the one or more transactions added to the block of the distributed ledger; (look-up table stores transaction identifier: [0195], [0211], [0300], [0331], Claim 6, look-up table is stored offline: [0237], off-chain look-up table: [0276])
mapping the stored transaction identifier to the public key of the generated public and private key pair. (look-up table stores transaction identifier mapped to public key: [0195], [0211], [0300], [0331])
In addition, with respect to claim 10, Wright teach:
a distributed ledger containing blocks storing one or more transactions…([0047], [0064]-[0065])
server having a processor and memory storing instructions, (each node is a server that records transactions: [0047], [0050])
wherein the …server further comprises a database… (nodes have storage module or database: [0038], [0093])
Wright do not explicitly teach; however, Fallah teach:
generating a private and public key pair using an applet of a Universal Integrated Circuit Card (UICC) within a device; (the processing unit of device 10 includes a secure memory for generating encryption keys: [0043], the trusted zone may include integrated SIM (i.e.: UICC): [0045])
storing the generated private and public key pair within the UICC; (the keys are stored in the secure memory of the device: [0043])
adding, by a proxy server, one or more transactions to a block of a distributed ledger,
the proxy server acting as an intermediary between the device and distributed ledger; (proxy system is intermediary between the device and the distributed ledger: [0037], the proxy system stores a transaction having an identifier on the ledger: [0098])
adding, by the proxy server, a … identifier of the proxy server to the block of the distributed ledger… (the proxy system updates the distributed ledger by adding keys (i.e. identifiers) to the ledger: [0133])
storing remotely from the device and accessible to the proxy server, a transaction identifier… (transaction information is stored externally (remotely from the device, proxy can retrieve information using transaction number: [0064], [0066])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the key pair generation and storage, as taught by Fallah , into the system of Wright for recording transaction on a blockchain, in order to ensure secure storage of the key pair using an intermediary proxy.
The examiner notes that the claim recitation “accessible to the proxy server…” indicates intended use of the transaction identifier and therefore does not further limit the scope of the claim.
Wright and Fallah do not explicitly teach; however, Kale teaches:
deriving from the public key of the generated private and public key pair an identifier; (transactions identified using identifier derived from a public key, a wallet address, etc. [0009], [0020], [0026], [0033])
wherein the one or more transaction is identified using the derived identifier; (transactions identified using identifier derived from a public key, a wallet address, etc. [0009], [0020], [0026], [0033])
In addition, with respect to claim 10, Fallah teach:
a device having a UICC with a processor and memory, the memory of the UICC containing an applet (client device having a SIM card: [0045])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the transaction identification using a public key or wallet address of an owner of the cryptocurrency , as taught by Kale, into the system of Wright and Fallah for recording transaction on a blockchain, in order to accurately identify the transaction and prevent double spending.
The examiner notes that the claim recitation “wherein the one or more transaction is identified…” indicates not-positively recited function, as the function “identifying” is not positively recited and therefore does not further limit the scope of the claim.
With respect to claim 8, Wright , Fallah , and Kale teach the limitations of claim 1.
Moreover, Fallah teach:
generating a further private and public key pair using the applet; (more than two keys are generated: [0090]))
storing the further generated private and public key pair within the UICC. (the keys are stored in the secure memory of the device: [0043])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the key pair generation and storage by a SIM card, as taught by Fallah , into the system of Wright for recording transaction on a blockchain, in order to ensure secure storage of the key pair.
With respect to claim 9, Wright , Fallah , and Kale teach the limitations of claim 1.
Moreover, Wright teach:
adding a transaction to a block of a further distributed ledger, (transactions are recorded in nodes that are servers (i.e., proxy server): FG. 2, [0044], [0046]-[0047], [0050], [0061]-[0062], transactions having transaction ID: FIG. 2, [0065])
In addition, Kale teaches:
deriving from the further public key of the generated private and public key pair a further identifier; (transactions identified using identifier derived from a public key, a wallet address, etc. [0009], [0020], [0026], [0033])
wherein the transaction is identified using the further identifier. (transactions identified using identifier derived from a public key, a wallet address, etc. [0009], [0020], [0026], [0033])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the transaction identification using a public key or wallet address of an owner of the cryptocurrency , as taught by Kale, into the system of Wright and Fallah for recording transaction on a blockchain, in order to accurately identify the transaction and prevent double spending.
The examiner notes that the claim recitation “wherein the transaction is identified…” indicates not-positively recited function, as the function “identifying” is not positively recited and therefore does not further limit the scope of the claim.
With respect to claim 13, Wright , Fallah , and Kale teach the limitations of claim 10.
Moreover, Wright teach:
wherein the device further comprises a device processor and device memory storing instructions causing the device processor to generate data. (device generates a transaction, a hash, etc.: [0114], [0120])
With respect to claim 14, Wright , Fallah , and Kale teach the limitations of claim 13.
Wright , Fallah , and Kale do not explicitly teach:
wherein the generated data is sensor data.
However, the claim recitation merely describes data which does not affect the claim functions and constitutes non-functional descriptive material. Therefore, the claim recitation does not further limit the scope of the claim.
With respect to claim 15, Wright , Fallah , and Kale teach the limitations of claim 13.
Moreover, Wright teach:
wherein the program instructions of the applet further cause the processor to sign the data generated by the device… (transaction data is signed: [0070]-[0073], [0122]
and wherein the distributed ledger further contains a block containing the signed data. (data is recorded on blockchain: [0061]-[0062], the data is signed [0063], [0072]-[0073])
The examiner notes that the claim recitation “wherein the distributed ledger further contains…,” describes content of the distributed ledger which is non-functional descriptive material and does not further limit the scope of the claim. In addition, since the distributed ledger is not a component of the claimed system, even if the recitation included functional language, it would still not limit the scope of the claim because the function would have been performed by the distributed ledger which is not a component of the system.
With respect to claims 16 and 18, Wright , Fallah , and Kale teach the limitations of claims 10 and 1, respectively.
Moreover, Fallah teaches:
wherein the device comprises an Internet of Things (IoT) device. ([0031], [0046])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the IoT client device, as taught by Fallah , into the system of Wright for recording transactions performed by the IoT device on a blockchain.
With respect to claim 17, Wright , Fallah , and Kale teach the limitations of claim 1.
Moreover, Fallah teaches:
wherein the transaction identifier is accessible to the proxy server by being stored within the proxy server. (client device sends identifiers to the proxy and the information is stored on the proxy: [0092], proxy can retrieve information using transaction number: [0064], [0066])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the proxy server, as taught by Fallah , into the system of Wright for recording transactions, in order to ensure secure storage of transaction information using an intermediary proxy.
The examiner notes that the claim recitation “accessible to the proxy server…” indicates intended use of the transaction identifier and therefore does not further limit the scope of the claim.
In addition the examiner notes that the claim recitation “being stored within the proxy server…” indicates not-positively recited language and does not further limit the scope of the claim, because the function “storing” is not positively recited.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Wright , in view of Fallah and Kale, further in view of Straitiff (US Patent No. 10,735,201.)
With respect to claim 4, Wright , Fallah , and Kale teach the limitations of claim 1.
Wright , Fallah , and Kale do not explicitly teach; however, Straitiff teach:
authenticating the device with the proxy server using the generated private and public keys. (authenticating mobile device using digital keys: Col. 5 l. 60-Col. 6 l. 10, the keys are public and private key pair: Col. 6 ll. 29-47)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the mobile device authentication using a key pair, as taught by Straitiff , into the system of Wright , Fallah , and Kale for recording transaction on a blockchain, in order to prevent unauthorized entities accessing restricted data.
With respect to claim 7, Wright , Fallah , and Kale teach the limitations of claim 1.
Wright , Fallah , and Kale do not explicitly teach; however, Straitiff teach:
wherein the applet generating the private and public key is a Java Card Application and/or a GSMA IoTSafe Applet. (Java Card: Col. 9 ll. 3-20)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the mobile device authentication using a key pair, as taught by Straitiff , into the system of Wright , Fallah , and Kale for recording transaction on a blockchain, in order to prevent unauthorized entities accessing restricted data.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Padilha US 11,037,227) teaches performing on-chain transactions using a proxy that bridges between client devices and the distributed ledger.
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 SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at (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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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698
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