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 .
Acknowledgements
This Office Action addresses the response filed on 12/29/2025.
Claim 1 was amended.
Claims 2, 3 and 7 were canceled.
Claims 9-20 were previously withdrawn.
Claims 1, 4-6 and 8 are pending.
Claims 1, 4-6 and 8 were examined.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-6 and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With respect to the Eligibility Step 1 of the Alice/Mayo two-part test of the subject matter eligibility analysis (see MPEP 2106), in the instant case, claims 1, 4-6 and 8 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
Following step 2A, prong one of the analysis, the language of the independent claims reciting an abstract idea are marked in bold below:
a. displaying, by a touchscreen on a payment terminal, one or more cryptocurrency payment wallet iconsb. receiving, by the touchscreen of the payment terminal, an icon selection of one of the one or more cryptocurrency payment wallet icons displayed on the touchscreen, wherein the icon selection indicates a wallet selection of a cryptocurrency payment wallet for conducting a transactionc. encoding, by the payment terminal, the wallet selection and transaction information into a machine-readable coded. displaying, by the touchscreen on the payment terminal, the machine-readable codee. receiving, by the payment terminal, a payment confirmation from a cryptocurrency payment provider associated with a cryptocurrency selected from the cryptocurrency payment walletf. displaying, by the touchscreen on the payment terminal, the payment confirmation
Therefore, the portions highlighted in bold above recite issuing a code upon request and confirming a payment, which is an abstract idea grouped within the certain methods of organizing human activity and mental processes grouping of abstract ideas in prong one of step 2A. The claims are grouped within certain methods of organizing human activity because the steps recited describe the fundamental economic practice of issuing a payment token and receiving a payment confirmation. Additionally, the claims are also grouped within mental processes because the steps recited describe collecting information, analyzing it, and displaying certain results of the collection and analysis, which is a concept that can be performed in the human mind or by pen and paper. In situations like this where a series of steps recite judicial exceptions, examiners should combine all recited judicial exceptions and treat the claim as containing a single judicial exception for purposes of further eligibility analysis. See MPEP 2106.04 and 2106.05(II). Thus, the language identified in the certain methods of organizing human activity and mental processes groupings were considered as a single abstract idea. Accordingly, the claims recite an abstract idea.
With respect to step 2A, prong two of the analysis, this judicial exception is not integrated into a practical application. Specifically, with respect to using payment terminal, touchscreen to perform the recited steps/functions, these additional elements performs the steps or functions such as: “displaying… icons..”, “receiving… selection…”, “encoding… code…”, “displaying… code..”, “receiving… confirmation…”, “displaying… confirmation…”. These additional elements are recited at a high-level of generality such that it represents no more than mere instructions to apply the exception using a generic computer component, which only serves to use computers as a tool to perform the abstract idea. Therefore, these elements do not integrate the abstract idea into a practical application because they require no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional element(s) of cryptocurrency amount to generally linking the use of the judicial exception to a particular technological environment or field of use.. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, following the analysis of step 2A, prong two, the claims are still directed to an abstract idea.
With respect to step 2B of the analysis, 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 the integration of the abstract idea into a practical application, the additional computer elements, such as payment terminal, touchscreen, cryptocurrency. The payment terminal, touchscreen perform the steps/functions of “displaying… icons..”, “receiving… selection…”, “encoding… code…”, “displaying… code..”, “receiving… confirmation…”, “displaying… confirmation…”, and amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept beyond the abstract idea of issuing a code upon request and confirming a payment. The additional element(s) of cryptocurrency amount to generally linking the use of the judicial exception to a particular technological environment or field of use.. As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of issuing a code upon request and confirming a payment. Therefore, the independent claims are not eligible.
Examiner notes that, for elements recited in the dependent claims which were previously analyzed as additional elements of the independent claims above (i.e. payment terminal, touchscreen), the assessment of these elements under step 2A and step 2B for the dependent claims is inherited from the analysis of the independent claims and omitted for brevity, unless noted by Examiner below. Dependent claims 4-6 and 8 further recite the following additional language, in which elements which merely further define the identified abstract idea are marked in bold below:
g) wherein the machine-readable code is a quick response (QR) code. h) wherein the transaction information comprises a payment total, a merchant identifier, a payment terminal identifier, product information, and /or service information. i) wherein the machine-readable code is displayed with the payment total, and wherein the payment confirmation is displayed as a government-issued currency payment total and /or a cryptocurrency payment total. j) wherein the payment terminal is configured to display one or more cryptocurrency icons, and wherein the cryptocurrency payment provider corresponds to one of the one or more cryptocurrency icons.
With respect to claim 4, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the code "is" (i.e. type of code). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of issuing a code upon request and confirming a payment identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 5, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what the information "comprises" (i.e. data description). Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of issuing a code upon request and confirming a payment identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 6, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what **NPMS**. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of issuing a code upon request and confirming a payment identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
With respect to claim 8, the claim includes language which do not introduce additional elements/functions. The additional language merely represents statements directed to directed to non-functional descriptive material by describing what **NPMS**. Those statements are insufficient to significantly alter the eligibility analysis. This language further elaborates the abstract idea of issuing a code upon request and confirming a payment identified in the analysis of independent claim 1. The additional elements/functions, alone or in combination, are insufficient to integrate the abstract idea into a practical application because the additional elements/functions do not pertain to an improvement to the functioning of a computer or to another technology. The additional elements/functions, alone or in combination, do not offer significantly more than the abstract idea, because the additional elements/functions merely further recite additional instructions to implement the abstract idea on a computer.
Therefore, while the additional language g), - j) of dependent claims 4-6 and 8 slightly modify the analysis provided with respect to independent claim 1, these additional elements/functions are insufficient to render the dependent claims eligible, as detailed above. Therefore, these dependent claims are also ineligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-6 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 was amended to recite “encoding, by the payment terminal, the wallet selection and transaction information into a machine-readable code”. The specification as filed recites, inter alia:
“[0006] The payment terminal then generates a machine-readable code containing transaction information. The machine-readable code can be a quick response (QR) or bar code encoded with the transaction information. The transaction information can include a wide variety of data related to the present transaction including a payment total (such as a figure in US dollars), a merchant identifier (such as the name or location of a store), a payment terminal identifier (such as an alphanumeric code corresponding to the payment terminal), product information (such as the names of the products being purchased and their associated prices and/or quantities), and/or service information (such as the names of the services being purchased and their associated prices and/or quantities). [0007] In some examples, the machine-readable code may correspond to a selected cryptocurrency payment wallet. In these examples, the customer chooses the cryptocurrency payment wallet by entering an input into the payment terminal. In one example, the display of the payment terminal is a touchscreen, and the customer selects a cryptocurrency payment wallet by touching a corresponding cryptocurrency payment wallet icon. In another example, the customer selects the cryptocurrency payment wallet via a keypad of the payment terminal. [0009] Capturing the machine-readable code triggers the electronic device to launch a cryptocurrency payment wallet. If the machine-readable code includes information indicating the selection of a particular cryptocurrency payment wallet, the selected cryptocurrency payment wallet will be launched. If not, the customer may the select then desired cryptocurrency payment wallet on the electronic device. Alternatively, a default cryptocurrency payment wallet may be launched. [0055] The processor 125 of the payment terminal 100 encodes the transaction information 10 into a machine-readable code 108, such as a quick-response (QR) code or a bar code. The machine-readable code 108 may indicate additional information, such as a selected cryptocurrency payment wallet 14 (see FIG. 12) or a selected type of cryptocurrency 16 as chosen by the customer on the payment terminal 100 or by the merchant. For instance, the customer may indicate a cryptocurrency payment wallet selection 114 (see FIG. 11) by selecting a cryptocurrency payment wallet icon 104 (see FIG. 2) shown on the display 102. Similarly, the customer may indicate a cryptocurrency selection 116 (see FIG. 11) by selecting a cryptocurrency icon 106 (see FIG. 10) shown on the display 102. In the example of the display 102 as a touchscreen, the cryptocurrency payment wallet selection 114 and/or cryptocurrency selection 116 may be received by touching the display 102.
Therefore, the specification as filed does not recite the manner in which the wallet selection is "encoded" "into" the machine readable code, as claimed. For instance, the specification as filed describes "the machine-readable code can be... encoded with the transaction information". The specification as filed also describes the code "may correspond to a selected... wallet". The specification as filed, however does not disclose A. encoding the wallet selection into the code; and B. encoding both the transaction information and wallet selection into the code, as claimed. Examiner does not dispute the code "may indicate additional information, such as a selected cryptocurrency payment wallet", however this fact is insufficient to limit the additional information to be part of the disclosed encoding procedures. For instance, one of ordinary skill in the art could reasonably arrive at a scenario in which different types of codes are generated for different wallet selections, and only the transaction information is encoded into the selected code type. This would allow the code to both "indicate" additional information (i.e. code “type” based on wallet selection) without necessarily requiring "encoding" this information (additional information) into the code. For purposes of Examination, examiner adopts the language found in the specification as filed, i.e. the code is encoded with transaction information and "indicates" additional information (i.e. wallet selection). Therefore, the specification as filed does not provide sufficient written description for the claimed language (see MPEP 2161.01). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. Dependent claims 4-6 and 8 are also rejected since they depend on claims 1, respectively.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MyCryptoCheckout (NPL 2019, listed in PTO-892 as reference "U").
With respect to claim 1, MyCryptoCheckout teaches a method for cryptocurrency payments (Paying with Enjin Coin & Enjin Crypto Wallet) comprising:
displaying, by a touchscreen on a payment terminal, one or more cryptocurrency payment wallet icons (see 00:25, display of multiple cryptocurrency payment wallet icons. Examiner notes the video displays a mobile phone (payment terminal) from around 2019, comprising a touchscreen. The BRI of a cryptocurrency payment wallet icon is the selection icon):
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receiving, by the touchscreen of the payment terminal, an icon selection of one of the one or more cryptocurrency payment wallet icons displayed on the touchscreen, wherein the icon selection indicates a wallet selection of a cryptocurrency payment wallet for conducting a transaction (see 00:27 selection of the icon for Enjin Crypto Wallet / Enjin Coin):
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encoding, by the payment terminal, the wallet selection and transaction information into a machine-readable code; displaying, by the touchscreen on the payment terminal, the machine-readable code (see 00:38 Machine code encoded and displayed. Examiner notes the machine-readable code is encoded for the wallet selection (i.e. Enjin Wallet) and transaction information (i.e. transaction amount (i.e. 49.84050231)):
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receiving, by the payment terminal, a payment confirmation from a cryptocurrency payment provider associated with a cryptocurrency selected from the cryptocurrency payment wallet; and displaying, by the touchscreen on the payment terminal, the payment confirmation (see 01:34 "Payment complete!". Examiner notes the payment confirmation is received from mycryptocheckout.com, the cryptocurrency payment provider associated with the cryptocurrency (Enjin) selected from the cryptocurrency payment wallet (Enjin Crypto Wallet):
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With respect to claim 4, MyCryptoCheckout teaches all the subject matter of the method as described above with respect to claim 1. Furthermore, MyCryptoCheckout disclose a method wherein the machine-readable code is a quick response (QR) code (see 00:38 QR-code). Regarding the BRI of the claim, Examiner notes that claim 4 recites “wherein the machine-readable code is a quick response (QR) code”, language directed to non-functional descriptive material. See MPEP 2111.05.
With respect to claim 6, MyCryptoCheckout teaches all the subject matter of the method as described above with respect to claim 1. Furthermore, MyCryptoCheckout disclose a method wherein the machine-readable code is displayed with the payment total, and wherein the payment confirmation is displayed as a government-issued currency payment total and /or a cryptocurrency payment total (see 00:38 Machine code displayed with the payment total (i.e. 49.84050231). Examiner notes the payment confirmation is also displayed with the same cryptocurrency total (i.e. 49.84050231 ENJ)). Regarding the BRI of the claim, Examiner notes that 0 is a method claim and recites “wherein the machine-readable code is displayed with the payment total, and wherein the payment confirmation is displayed as a government-issued currency payment total and /or a cryptocurrency payment total....”, language directed to not positively recited method steps.
With respect to claim 8, MyCryptoCheckout teaches all the subject matter of the method as described above with respect to claim 1. Furthermore, MyCryptoCheckout disclose a method wherein the payment terminal is configured to display one or more cryptocurrency icons, and wherein the cryptocurrency payment provider corresponds to one of the one or more cryptocurrency icons (see 00:27 cryptocurrency icon (Enjin), which corresponds to the Enjin wallet).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over MyCryptoCheckout (NPL 2019, listed in PTO-892 as reference "U"), in view of Cvetkovich (US 2019/0287111 A1)
With respect to claim 5, MyCryptoCheckout teaches all the subject matter of the method as described above with respect to claim 1. MyCryptoCheckout does not explicitly teach a method wherein the transaction information comprises a payment total, a merchant identifier, a payment terminal identifier, product information, and /or service information.
Regarding the BRI of the claim, Examiner notes that claim 5 recites “wherein the transaction information comprises a payment total, a merchant identifier, a payment terminal identifier, product information, and /or service information.”, language directed to non-functional descriptive material. While this language is representative of non-functional descriptive material (i.e. description of fata content/types “comprised” by transaction information) and shouldn’t be granted patentable weight, for purposes of compact prosecution, Cvetkovich discloses a method (Payer-controlled payment processing) wherein:
the transaction information comprises a payment total, a merchant identifier, a payment terminal identifier, product information, and /or service information (see Fig. 8, paragraph [0134]: “FIG. 8 illustrates an example flow of a method for transaction validation which may be suitable for providing a payer-controlled payment processing service. At 810, merchant identification, kiosk identification identifying the merchant kiosk, a security key and transaction information are received from a merchant kiosk such as merchant kiosk 600. A merchant IP address may also be received. Provided the payer approves the transaction, at 820, a payer device, for example payer device 700, transmits to the authorization server, the merchant identification, the kiosk identification, the security key and the transaction information as well as payer identification associated with the payer device in an authorization database of the authorization server. The payer device may further transmit the merchant IP address and a payer IP address.”; paragraph [0135]: “In an example, the payer device receives the merchant identification, the kiosk identification, the security key, the transaction information and the payer identification packaged as a QR code.”).
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 packaging of additional transaction information into the QR code as disclosed by Cvetkovich in the method of MyCryptoCheckout, the motivation being to increase security by allowing a server to perform validation tests to the transaction information to obtain a level of confidence that both the merchant and the payer are registered for the transaction authorization service and allowing the payer device to receive a fraud notification when the merchant identification is not registered with the kiosk identification in the authorization database, for instance (see Cvetkovich, paragraphs [0053] and [0138]).
Response to Arguments/Amendments
Claim rejections - 35 USC § 101
Applicant’s amendments and arguments (see remarks, pages 6 and 7, filed on 12/29/2025), with respect to the rejection of claims 1-8 under 35 USC § 101 as being directed to an abstract idea have been fully considered but are not persuasive. Applicant asserts “the newly added features to system claim 1 could not performed via mental process. For example, encoding the wallet selection and transaction information into a machine-readable code could not be accomplished simply via a mental process”. Examiner respectfully disagrees. Upon further review of the amended language, Examiner is in the position that the claims are still directed to an abstract idea. Encoding information into a visual representation merely requires generic computer implementation. Therefore, Examiner is unpersuaded that the claims contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Applicant further asserts “Additionally, the newly added features to system claim 1 incorporate the claimed subject matter into a practical application by describing an improvement to communication technology between the payment terminal and another electronic device”. Examiner respectfully disagrees. As an initial matter, Examiner disagrees that the amended claims are directed to "an improvement to communication technology between the payment terminal and another electronic device". Examiner notes that "another electronic device" is not comprised by the BRI of the claims at issue. The claims, for instance, do not require the code to be read or processed by another device. The claims merely recite outputting a code and receiving and displaying a confirmation. Further, the payment confirmation is not even required to be related to the machine-readable code. The only requirement in the claim language is the payment confirmation to be from a cryptocurrency payment provider associated with a cryptocurrency selected from the cryptocurrency payment wallet. Therefore, the BRI of the claims even allows for an embodiment in which the payment confirmation receipt and display is barely linked to the initial steps of receiving, encoding and displaying, namely by being linked by "the cryptocurrency payment wallet". The claims do not require, for instance, the payment confirmation to be a confirmation of the transaction encoded into the machine-readable code. Therefore, Examiner is in the position that an "improvement to communication technology between the payment terminal and another electronic device" is not recited in the claims at issue. The claims merely recite receiving user input, encoding the input into a code, displaying this code, followed by receiving a payment confirmation from another device (i.e. provider). It appears the elements (steps) necessary to justify Applicant's arguments (i.e. an additional device communicating with both the payment terminal and the payment provider) is not part of the BRI of the claims. Therefore, while Examiner acknowledges the effort in attempting to overcome the rejection, Examiner is in the position that the claims, as amended, are still directed to an abstract idea and do not offer significantly more than the abstract idea itself. Therefore the claims are still rejected under 35 USC § 101 as further detailed above.
Claim rejections - 35 USC § 103
Applicant’s amendments and arguments (see remarks, pages 7 and 8, filed on 12/29/2025), with respect to the rejection of claims 1-8 under 35 USC § 103 have been fully considered , but are moot because the arguments do not apply to the reference being used in the current rejection of the amended claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Non-Patent Literature
BCVAULT (NPL 2020, listed in PTO-892 as page 1, reference "V") disclose How to pay with crypto.com, including a QR-code checkout mechanism and cryptographic wallet selection.
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 EDUARDO D CASTILHO whose telephone number is (571)270-1592. The examiner can normally be reached Mon-Fri 8-5.
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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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/EDUARDO CASTILHO/Primary Examiner, Art Unit 3698