DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to applicant's communication of February 19, 2024. The rejections are stated below. Claims 1-20 are pending and have been examined.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claim 9 is directed to performing a transaction.
3. Claim 9 recites “a … method for performing a transaction for a customer of a financial institution using math-based currency (MBC), the … method comprising: when a … determines that a requested transaction is a credit transaction;
mining, by the …, an amount of MBC corresponding to an amount of fiat currency within a wallet account on a …;
increasing, by the …, the amount of MBC in an MBC account of the customer according to the mined amount of MBC;
causing, by the …, a fiat account of the customer to be credited according to the amount of fiat currency;
when the … determines that the requested transaction is a debit transaction:
decreasing, by the …, the amount of MBC in the MBC account of the customer based on the amount of fiat currency debited from the fiat account of the customer; and
burning, by the …, once the amount of MBC has been decreased from the MBC account of the customer, an MBC amount within the … account”.
These limitations describe an abstract idea of performing a transaction and corresponds to Certain Methods of Organizing Human Activity (commercial interactions or sales activities or behaviors, business relations, managing personal behavior or relationships or interactions between people). Accordingly, claim 9 recites an abstract idea (Step 2A: Prong 1: YES).
4. The claim also recites as additional elements such as “computer-implemented-method”, “processing circuit”, “wallet”, and “permissioned blockchain system”, which do no more than implement the abstract idea and/or provide a particular technological environment. Therefore, claim 9 recites an abstract idea without a practical application (Step 2A - Prong 2: NO).
5. Further, as the additional elements of claim 9 do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment, they do not improve computer functionality or improve another technology or technical field. Thus, claim 9 is not patent eligible (Step 2B: NO).
6. Claims 1 and 17 also recite the abstract idea of performing a transaction and corresponds to Certain Methods of Organizing Human Activity (commercial interactions or sales activities or behaviors, business relations, managing personal behavior or relationships or interactions between people) step one of step 2A (MPEP 2106.04). Claim 1 includes the additional elements of “a system comprising: comprising: a permissioned ledger banking system comprising a transaction circuit comprising a transaction processor and a transaction memory, an account mapping circuit comprising an account mapping processor and an account mapping memory, and an MBC account database” and “wallet“. Claim 17 includes the additional elements of “one or more non-transitory computer-readable storage media having instructions stored thereon that, when executed by at least one processing circuit, cause the at least one processing circuit”, “permissioned blockchain system”, and “wallet”. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or lo any other technology or technical field (MPEP 2106.05(a}.
7. Claim 2 recites “wherein the transaction information relates to the credit transaction and the credit transaction is between the financial institution and a partner financial institution, the partner financial institution being an authorized member of the permissioned blockchain system” which further describe the abstract idea.
8. Claim 3 recites “wherein the MBC account of the customer is for processing transactions between the customer of the financial institution and customers of the partner financial institution” which further describe the abstract idea.
9. Claim 4 recites “wherein the MBC account of the customer is configured for use processing transactions between the customer of the financial institution and customers of the partner financial institution” which further describe the abstract idea.
10. Claim 5 recites “wherein the …, when … by the …, further cause the account … to perform steps comprising: receiving an indication of a transaction request associated with the transaction information; determining that the MBC account does not exist; and creating the MBC account for processing the transaction request based on the determination that the MBC account does not exist”. The claim includes “wherein the account mapping instructions, when executed by the account mapping processor, further cause the account mapping processor to” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
11. Claim 6 recites “wherein a first routing number is designated for an MBC transfer and a second routing number is designated for a fiat currency transfer” which further describe the abstract idea.
12. Claim 7 recites “wherein the amount of MBC is used as a placeholder to complete the credit transaction, wherein a second amount of MBC does not have intrinsic value” which further describe the abstract idea.
13. Claim 8 recites “wherein, when the … is used for payment at checkout to purchase the product or service, the amount of the payment is established as an installment loan associated with the user account according to terms of the financing offer”. The claim includes “overlay ledger” and “MBC account database” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
14. Claim 10 recites “wherein the transaction information relates to the credit transaction and the credit transaction is between the financial institution and a partner financial institution, the partner financial institution being an authorized member of the permissioned blockchain system” which further describe the abstract idea.
15. Claim 11 recites “wherein the MBC account of the customer is for processing transactions between the customer of the financial institution and customers of the partner financial institution” which further describe the abstract idea.
16. Claim 12 recites “wherein the MBC account of the customer is configured for use processing transactions between the customer of the financial institution and customers of the partner financial institution” which further describe the abstract idea.
17. Claim 13 recites “receiving, by the …, a transaction request associated with the requested transaction; determining, by the …, that the MBC account does not exist; and creating, by the …, the MBC account for processing the transaction request based on the determination that the MBC account does not exist.” which further describe the abstract idea. The claim includes a “processing circuit” as an additional element. However, the additional element does no more than link the judicial exception to a particular technological environment. The additional element does no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment.
18. Claim 14 recites “wherein a first routing number is designated for an MBC transfer and a second routing number is designated for a fiat currency transfer” which further describe the abstract idea.
19. Claim 15 recites “wherein the amount of MBC is used as a placeholder to complete the credit transaction, wherein a second amount of MBC does not have intrinsic value” which further describe the abstract idea.
20. Claim 16 recites “updating, by the …, an … configured to provide a record of association of MBC stored in an …”. The claim includes “updating, by the processing circuit, an overlay ledger” and “MBC account database” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
21. Claim 18 recites “wherein the transaction information relates to the credit transaction and the credit transaction is between the financial institution and a partner financial institution, the partner financial institution being an authorized member of the permissioned blockchain system” which further describe the abstract idea.
22. Claim 19 recites “wherein the MBC account of the customer is for processing transactions between the customer of the financial institution and customers of the partner financial institution” which further describe the abstract idea.
23. Claim 20 recites “… to:
receive a transaction request associated with the requested transaction;
determine that the MBC account does not exist; and create the MBC account for processing the transaction request based on the determination that the MBC account does not exist”. The claim includes “one or more non-transitory computer-readable storage media of claim 17, having additional instructions stored thereon that, when executed by the at least one processing circuit, cause the at least one processing circuit” as additional elements. However, the additional elements do no more than link the judicial exception to a particular technological environment. The additional elements do no more than serve as a tool to implement the abstract idea and/or provide a particular technological environment. There is no improvement to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a).
Claim Rejections – 35 USC §112
21. 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.
22. Claims 4 and 12 are rejected under 35 U.S.C. 112(a), 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
23. Claims 4 and 12 each recite “herein the MBC account of the customer is configured for use processing transactions between the customer of the financial institution and customers of the partner financial institution". The claim uses “configured for use processing transactions” without explaining what this configuration details. The lack of detail in defining the configuration and its role in the system does not convey the necessary understanding of the invention.
24. 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.
25. Claims 8 and 16 are 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 pre-AIA the applicant regards as the invention.
Means-Plus-Function
26. Claims 8 and 14 each recite:
“…an overlay ledger configured to provide a record of …”.
27. The claim limitations above do not use the word “means” but are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use generic placeholders, “overlay ledger configured to”, that are coupled with functional language, “acts”, without reciting sufficient structures to perform the recited functions and the generic placeholders are not preceded by structural modifiers.
The claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections – 35 USC 102
28. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
form the rejections under this section made in this Office action.
A person shall be entitled to a patent unless -
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
29. Claim 9 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cobban et al. [US Pub No. 2016/0358161 A1].
30. Regarding claim 9, Cobban discloses a computer-implemented method for performing a transaction for a customer of a financial institution using math-based currency (MBC), the computer-implemented method comprising: when a processing circuit determines that a requested transaction is a credit transaction:
The first limitation is as follows: "when a processing circuit determines transaction information corresponds to a credit transaction". However, as
this is optional, it and the subsequent limitations of "mining..."... and "burning..." do not occur (MPEP 2103 I C). As a result, prior art such as
20160358161, para 37, that teaches a computer-implemented method for performing a transaction (paras 33 and 37) for a customer (fig 1,
"Artists", "Consumers"; para 33) of a financial institution (fig 1, item 102; para 37) using math-based currency (MBC) (paras 37 and 82)
anticipates the claim. Additionally, as "when...", "mining..." and "burning..." do not occur.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN T POE whose telephone number is (571)272-9789. The examiner can normally be reached on Monday-Friday 9:30am through 6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Calvin Hewitt can be reached on 571-272-6709. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.T.P/Examiner, Art Unit 3692 /KEVIN T POE/
/DANIEL S FELTEN/Primary Examiner, Art Unit 3692