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 is a first office action on the merits in response to the application filed January 24, 2025.
Claims 2-21 are pending in the application.
Claims 15-21 are withdrawn from consideration.
Claims 2-14 are examined below.
Based on a comparison of the PGPub US 2025/0225505 A1 with applicant’s originally submitted specification, the PGPub appears to be a fair and accurate record of the applicant’s specification. Therefore, references to applicant’s specification will typically be made by this examiner as references to the PGPub. Unless otherwise noted, references to applicant’s specification as published via PGPub will be in the format [####], and references to applicant’s specification as filed will be in the format ¶## or by page and line number.
The notations in the immediately preceding paragraph apply to any future office actions from this examiner.
Examiner Request
Applicant is requested to indicate where in the specification there is support for amendments to claims should applicant amend. The purpose of this is to reduce potential 35 USC 112(a) or 35 USC 112, 1st paragraph issues that can arise when claims are amended without support in the specification. Examiner thanks applicant in advance. See also relevant portions of MPEP 2163.II.A:
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a "simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported."); see also MPEP § 714.02 and § 2163.06 ("Applicant should ... specifically point out the support for any amendments made to the disclosure."); and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.").
Election/Restrictions
Applicant’s election without traverse of Invention I is acknowledged.
Claims 15-21 are withdrawn from further consideration pursuant to 37 CFR § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The restriction requirement mailed September 10, 2025 is hereby made final.
Information Disclosure Statement
The attached information disclosure statement is in compliance with the provisions of 37 CFR § 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd Paragraph
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.
Claims 2-8 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 that the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 2, applicant’s recitation “wherein the host platform does not have access to a private key associated with the custodial wallet; wherein the host platform is configured to facilitate the communication by: receiving an encrypted private key from the third-party wallet platform, enabling a software application executing on the user device to receive the encrypted private key, decrypt the encrypted private key using a user-provided passphrase and generate an encrypted transfer request using the decrypted private key, and transmitting a transfer order based on the encrypted transfer request to the third-party wallet platform” would have been unclear to a person having ordinary skill in the art at the time of the invention. Claim 2 is directed to a “system … comprising: a server computer of a host platform …” The claim is not directed to the entirety of the host platform, only a single server computer within that platform. The recitation in question further limits this host platform but does not require that the limitation is met by the server computer. Therefore, one of ordinary skill would not understand whether the limitations were required to be embodied by the server computer, or another part of the host platform, which would be outside the scope of the claim. If the latter, then it would be further unclear as to what effect this limitation on the host platform would have on the positively recited server computer. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting “wherein the host platform is configured to …” as “wherein the server computer is configured to …” in order to eliminate additional clarity issues and maintain parallel claim scope with method claim 9.
Further regarding claim 2, applicant’s recitation “enabling a software application executing on the user device to receive the encrypted private key, decrypt the encrypted private key using a user-provided passphrase and generate an encrypted transfer request using the decrypted private key” would have been unclear to a person having ordinary skill in the art at the time of the invention. It is unclear what—if anything—is done by the server computer or host platform to “enabl[e]” the software application on the user application to “decrypt the encrypted private key” and “generate an encrypted transfer request.” Based on the specification, these actions appear to be performed entirely by the software application on the user device. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting the user device, software, and their functionality to be an element of claim 2 in order to give clarity to this recitation and maintain parallel claim scope with method claim 9.
Regarding claim 6, applicant’s recitation “wherein the third-party wallet platform utilizes a secure multi-party computation (MPC) protocol that: …” would have been unclear to a person having ordinary skill in the art at the time of the invention. The claim is directed to a system comprising a server computer. The claim does not include within its scope the third-party wallet platform. Therefore, it’s unclear what limitation this recitation would place on the claimed server computer. For the purposes of determining patent eligibility and comparison with the prior art, the examiner is interpreting this recitation as failing to further limit the claim, consistent with the broadest reasonable interpretation
Claim 7 contains language similar to claim 6 as discussed in the immediately preceding paragraph, and for reasons similar to those discussed above, claim 7 is also rejected as unclear and interpreted similarly as not further limiting.
Allowable Subject Matter
Claims 9-14 are allowable over the prior art of record.
Claims 2-8 are not obvious or anticipated by the prior art of record and would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112 set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest art of record is the combination of Meilich (US 2022/0016529 A1), Li (US 12,496,526 B1), and Silver (US 2023/0066424 A1). Meilich discloses as follows:
Claim
Limitation
Meilich
2,9
receiving, by a server computer of a host platform, a transfer request from a first user account to transfer a digital asset from a custodial wallet provisioned by a third-party wallet platform to a different digital wallet, wherein the custodial wallet is associated with the first user account
"the player can select the game asset from the vault interface and designate a wallet to which the token should be transferred" [0012]
2,9
transmitting, by the server computer, a transfer order based on the encrypted transfer request to the third-party wallet platform to transfer the digital asset from the custodial wallet to the different digital wallet
"the vault communicates with the in-game management system to remove the game asset from the player's inventory and cause the corresponding token to be transferred, via the vault smart contract, to the designated wallet address" [0012]
Meilich fails to explicitly disclose but Li teaches: in response to receiving the request, facilitating, by the server computer, communication between a user device associated with the first user account and a server of the third-party wallet platform ("The players may use the connect wallet component 143 to connect a digital (or crypto) wallet" C6). It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Meilich to include the third party wallet platform communication of Li in order to achieve the predictable result of increased security. Meilich/Li fails to explicitly disclose using an end-to-end encrypted (E2E) protocol, wherein the host platform does not have access to a private key associated with the custodial wallet. Silver teaches the use of end-to-end encryption to access a wallet at [0031], which likely makes inherent the lack of access to the private key associated with a custodial wallet. It would have been obvious to one having ordinary skill in the art at the time of the invention to modify Meilich/Li to include the end-to-end encrypted wallet access of Silver in order to achieve the predictable result of increased security. However even if the host platform’s lack of access to the private key is inherent to Silver, the combination of Meilich / Li / Silver does not teach at least "receiving, by a software application executing on the user device, an encrypted private key associated with the custodial wallet from the third-party wallet platform; decrypting, by the software application, the encrypted private key using a passphrase input by a user associated with the first user account; generating, by the software application, an encrypted transfer request using the decrypted private key; transmitting, by the software application, the encrypted transfer request to the server computer.” Moreover, the missing claimed elements from Meilich / Li / Silver are not found in a reasonable number of references.
Citation of Relevant Prior Art
All references listed on form PTO-892 are cited in their entirety. The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Singhal (US 2010/0057573 A1) discloses a coupon delivery and redemtion system for mobile devices, including one-time use rights similar to the claimed badge system (see [0010]).
Borzilleri (US 2019/0205881 A1) discloses a compliance platform that checks a token purchase for compliance prior to allowing a transaction.
McLaughlin (US 2025/0343768 A1) discloses a system for executing multi-party validations including multi-party computation protocols and threshold signature schemes (see [0037] and 0038])
Spivack (US 2024/0296442 A1) discloses a wallet management system similar to applicant's third-party wallet platform but appears to lack applicant's host platform.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMIE KUCAB whose telephone number is (571)270-3025. The examiner can normally be reached Monday through Friday, 9 a.m. to 4:30 p.m. ET. The examiner’s email address is Jamie.Kucab@USPTO.gov. See MPEP 502.03 regarding email communications. Following is the sample authorization for electronic communication provided in MPEP 502.03.II: “Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.” Without such an authorization in place, an examiner is unable to respond via email.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Neha Patel, can be reached at telephone number (571) 270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/JAMIE R KUCAB/Primary Examiner, Art Unit 3699
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