DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 7/21/25.
The Examiner notes that citations to United States Patent Application Publication paragraphs are formatted as [####], #### representing the paragraph number.
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 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.
Status of Claims
Claims 1-7, 9-16 are currently pending.
Claims 1-7, 9 are elected without traverse.
Claims 10-16 are withdrawn.
Claims 1-7, 9 are rejected as set forth below.
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 .
Election/Restriction
Applicant’s election without traverse of claims 1-7, 9 in the reply filed on 7/21/25 is acknowledged. It is noted that Applicant specifically elected Figure 2, which corresponds with the embodiment described in [0111]. See Restriction Requirement filed 5/19/25. Said embodiment described in [0111] is the service provider unit SPU. Claims 1-7, 9 correspond to the secure provider unit SPU.
Claims 10-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention. Election was made without traverse in the reply filed on 7/21/25.
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.
Claims 1-7, 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claims 1-7, 9, the claimed invention is directed to an abstract idea without significantly more because:
Claim 1 recites: A secure service provider unit (SPU) in an electronic transaction system (TS), the secure service provider unit (SPU) comprising: a secure wallet issuing unit (TMU-IU) comprising control means configured to issue secure wallets (TMU-U) for users (U) in the electronic transaction system (TS), wherein each secure wallet (TMU-Ux) comprises wallet identification data (TMU-ID), the wallet identification data (TMU-ID) being assigned to a secure wallet (TMU-Ux) for uniquely identifying the secure wallet (TMU-Ux) in the electronic transaction system (TS); wherein the control means of the secure wallet issuing unit (TMU-IU) for a secure wallet to be issued is configured to provide at least a part (TMU-ID-VAR) of the wallet identification data (TMU-ID) which is derived from external digital identification data (D-ID-Ux);wherein the secure service provider (SPU) is configured to derive at least the derived part of the wallet identification data (TMU-ID) or to receive at least the derived part from a central derivation unit (C-DER) of the transaction system (TS); and wherein the external digital identification data (D-ID-Ux) is assigned to the user in an external digital identity system for uniquely identifying the user.
Under Step 1 of the Section 101 analysis, assuming the claim(s) is/are directed to an apparatus, they would fall under a statutory category of invention. See the software per se 101 rejection below.
Under Step 2A Prong One of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claimed invention as drafted includes language (see underlined language above) that recites an abstract idea of issuing secure wallets and assigning wallet identification data based off external data (a certain method of organizing human activity such as a commercial or legal interactions, e.g. including agreements in the form of contracts, sales activities/behaviors, business relations) but for the recitation of additional claim elements. That is, other than reciting issuing secure wallets and assigning wallet identification data based off external data, nothing in the claim precludes the language from being considered as sales activities or business relations, i.e. issuing secure wallets to be used in a payment transaction. For example, a bank administrator is capable of issuing secure wallets to customers for use in a payment transaction, wherein the secure wallets are assigned wallet identification data based off external data such as a driver’s license number.
A similar analysis can be applied to dependent claims 2-7, 9, which further recite the abstract idea of issuing secure wallets and assigning wallet identification data based off external data.
Under Step 2A Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance, the additional claim element(s), considered individually, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The additional claim elements(s) merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. For example, making the transaction system electronic.
A similar analysis can be applied to dependent claim 7, which include additional claim elements that generally link the use of the judicial exception to a particular technological environment or field of use of server hosting.
Under Step 2A Prong Two, the additional claim element(s), considered in combination, do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception and in a manner that integrates the exception into a practical application of the exception. The combination of elements is no more than the sum of their parts. Unlike the eligible claims in Diehr and Bascom, in which the elements limiting the exception taken together improve a technical field, the instant claim lacks an improvement to the functioning of a computer or to any other technology or technical field.
Under Step 2B, the additional claim element(s), considered individually and in combination, do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself for similar reasons outlined under Step 2A Prong Two.
As per claims 1-7, 9, the secure service provider unit is directed to software per se as it consists of a secure wallet issuing unit. The Specification lacks a lexicographic definition of a secure wallet issuing unit. Furthermore, one of ordinary skill in the art at time of invention would have interpreted the aforementioned component as a software component that is a constituent of a system (unit: a single thing or person or group that is a constituent of a whole; Webster's New Collegiate Dictionary, 150th Anniversary Edition). According to MPEP 2106 (I), however, there are four categories of invention: process, machine, article of manufacture, and composition of matter. Therefore, as "software" is neither a category of invention nor a subset of one of the categories it does not represent patent eligible subject matter.
Claim Rejections - 35 USC § 112(b)
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 1-7, 9 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.
As per claims 1-7, 9, claim element(s) “a secure wallet issuing unit comprising control means configured to issue secure wallets” uses the phrase “means for” or “step for” or a generic placeholder (e.g. unit configured to) coupled with functional language (e.g. issue secure wallets) and invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. See MPEP 2181(I). However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function.
Applicant is required to:
(a) Amend the claim so that the claim limitation will no longer be a means (or step) plus function limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (Applicant is advised to be aware of potential 35 U.S.C. 101 "software per se" issues that may occur as a result of the amended claim); or
(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function without introducing any new matter (35 U.S.C. 132(a)); or
(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification that perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
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.
Claims 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20160180333 to Leyva in view of United States Patent Application Publication No. 20200202331 to Vudathu and United States Patent No. 7367049 to Robinson.
As per claim 1, Leyva teaches:
A secure service provider unit (SPU) in an electronic transaction system (TS), the secure service provider unit (SPU) comprising: a secure wallet issuing unit (TMU-IU) comprising control means configured to issue secure wallets (TMU-U) for users (U) in the electronic transaction system (TS), wherein each secure wallet (TMU-Ux) comprises wallet identification data (TMU-ID), the wallet identification data (TMU-ID) being assigned to a secure wallet (TMU-Ux) for uniquely identifying the secure wallet (TMU-Ux) in the electronic transaction system (TS); wherein the control means of the secure wallet issuing unit (TMU-IU) for a secure wallet to be issued is configured to provide at least a part (TMU-ID-VAR) of the wallet identification data (TMU-ID); ([0019], “Embodiments of the present invention may be directed at utilizing the infrastructure of a secure authentication system for performing authentications. In some embodiments of the present invention, a user may link an online banking account with a digital wallet to allow transactions to be conducted through a secure authentication system without requiring the user to perform multiple authentication processes once they have logged into their online banking account. In such embodiments, once the user has been authenticated through their online banking account, the user can perform a transaction without being prompted by their digital wallet to provide a response to a challenge question (e.g., a password).”; [0051], “The wallet server computer 106 may be associated with a digital wallet account that can store user profile information, payment account information, bank account information, and/or the like and can be used in a variety of transactions.”; [0063], “At step 204, utilizing an interface provided by the wallet server computer 106, the user may establish or create a digital wallet account associated with a wallet server computer 106 by entering user account information such as a username, password, and/or payment information for a payment account to be utilized by the wallet server computer 106 for transactions.”; [0029], ““Digital wallet data” may include information pertaining to a digital wallet account. In some examples, digital wallet data may include a digital wallet identifier that includes a unique identifier associated with the digital wallet account. A digital wallet identifier may be any suitable alphanumeric code, an email address, a name, etc. In at least one example, the presence of digital wallet data in a transaction request indicates that a transaction has been initiated subsequent to the user signing into his online bank account (e.g., via a website provided by an issuer).”)
Leyva does not explicitly teach, but Vudathu teaches:
wherein the wallet identification data (TMU-ID) which is derived from external digital identification data (D-ID-Ux); wherein the secure service provider (SPU) is configured to derive at least the derived part of the wallet identification data (TMU-ID) or to receive at least the derived part from a central derivation unit (C-DER) of the transaction system (TS); ([0039], “In step 215, the backend may generate a device wallet identifier. In one embodiment, the device wallet identifier may be based on the wallet identifier (e.g., the hardware identifier, operating system-generated identifier, and/or platform-generated identifier) and the issuer identifier using an algorithmic function. In one embodiment, the device wallet identifier that be a unique alphanumeric string that may not be reversible and/or replicable.”)
One of ordinary skill in the art would have recognized that applying the known technique of Vudathu to the known invention of Leyva would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such wallet identifier features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the secure service provider to derive the wallet identification data from external digital identification data results in an improved invention because applying said technique provides an immutable identifier that survives events involving the wallet or device (e.g., resets, uninstalls, operating system resets, etc.), thereby “hack-proofing” the hardware identifier and improving the overall security of the invention (Vudathu, [0027]).
Leyva as modified does not explicitly teach, but Robinson teaches:
wherein the external digital identification data (D-ID-Ux) is assigned to the user in an external digital identity system for uniquely identifying the user; (col 12 lines 16-25, “If the system operator does not know or does not have access to any of a user's personal numbers, he may have the system pull a specified number type from a third party database. For example, the system operator may tell the system he wants the user pre-enablement record associated with the user's driver's license number. The system would then pull from a third party database, in this case most likely a Department of Motor Vehicles, the user's driver's license number and that number would be associated with the user's pre-enablement record.”)
One of ordinary skill in the art would have recognized that applying the known technique of Robinson to the known invention of Leyva as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such user identification features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention so the external digital identification data is assigned to the user in an external digital identity system for uniquely identifying the user results in an improved invention because applying said technique ensures that an accurate external digital identification data is provided for the generation of the wallet identification data, thus ensuring the wallet identification is tied to the user and therefore improving the overall security of the invention.
As per claim 2, Vudathu teaches:
wherein the secure wallet issuing unit (TMU-IU) is configured to provide the derived part (TMU- ID-VAR) of the wallet identification data (TMU-ID) or the derived wallet identification data (TMU-ID); and/or the wallet identification data (TMU-ID) comprises data fields, wherein one of the data fields is used for inserting the derived part (TMU-ID-VAR) of the wallet identification data (TMU-ID). ([0039])
As per claims 3-4, 6,
Applicant attempts to further limit the method by describing characteristics of the wallet identification data. However, this is representative of non-functional descriptive material as characteristics of the wallet identification data does not result in a functional relationship with the service provider unit and therefore cannot be used to differentiate Applicant's invention from the prior art invention. See MPEP 2111.05; In re Gulack, 217 USPQ 401 (Fed. Cir. 1983) (“When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability.”). Specifically, the step of deriving the wallet identification data is carried out the same way regardless of the data fields included in the wallet identification data: there is no evidence the data fields included in the wallet identification data changes the efficiency or the accuracy or any other characteristic of the derivation. See Ex Parte Nehls, 88 USPQ2d 1883 (BPAI 2008) (“Here, the descriptive material (SEQ ID NOs) recited in the claims is not functional material like the data structures in Lowry. There is no evidence that SEQ ID NOs 9-1008 functionally affect the process of comparing a target sequence to a database by changing the efficiency or accuracy or any other characteristic of the comparison. Rather, the SEQ ID NOs are merely information being manipulated by a computer; the SEQ ID NOs are inputs used by a computer program that calculates the degree of similarity between a target sequence and each of the sequences in a database. The specific SEQ ID NOs recited in the claims do not affect how the method of the prior art is performed – the method is carried out the same way regardless of which specific sequences are included in the database (emphasis added).”)
As per claim 4, Vudathu teaches:
wherein the wallet identification data (TMU-ID) comprises one or more variable data fields, for the derived part and optionally for the type-value and/or the count-value, and one or more predefined data fields. ([0047]-[0052], “In step 405, a number, X, may be selected. In one embodiment, this may be an available ID_PREFIX value from the first table (e.g., the DEVICE_ID_PREFIX table). The selected ID_PREFIX may be marked as unavailable. In one embodiment, the number X may be randomly or pseudo-randomly selected. In step 410, a second number, Y, may be selected. In one embodiment, an available ID_SUFFIX value from the second table (e.g., the DEVICE_ID_SUFFIX table) may be selected and may be marked as unavailable. In one embodiment, the number Y may be randomly or pseudo-randomly selected. In step 415, the two values (X and Y) may be appended and passed as a parameter into a Device Hash algorithm. In one embodiment, additional parameter(s), such as such as a person identifier, a customer identifier, a profile identifier, a hardware identifier, etc. may be appended with the two values as is necessary and/or desired. In one embodiment, a system time stamp (e.g., in milliseconds) may be appended and passed to the Device Hash function.”)
As per claim 5, Robinson teaches:
wherein the external digital identity system is a national or government digital identity system, and/or wherein the digital identification data (D-ID-Ux) is at least one of the following: a tax number of a tax system, an identity card number of a national or international identity card system, a passport identity number of a national or international identity card system, a driver license number of a national or international driver license system or a mobile subscriber identity of a mobile communication system. (col 12 lines 16-25)
As per claim 6, Vudathu teaches:
wherein the wallet identification data (TMU-ID) includes the external digital identification data (D-ID-Ux) - and optionally the type-value and/or the count-value - in a form hidden by the derivation; and/or the external digital identification data (D-ID-Ux) - and optionally the type-value and/or the count-value - can only be inverse-derived from the wallet identification data (TMU- ID) based on secret inverse-derivation data. ([0047]-[0052])
As per claim 7, Leyva teaches:
wherein the secure wallet issuing unit (TMU-IU) is configured to issue a hosted secure wallet (TMU-SPU), hosted on the secure service provider unit (SPU) or hosted on another secure service provider unit, or an independent secure wallet (TMU-Ux), by issuing a secure element including the secure wallet or by provisioning the secure wallet into a secure element including an secure execution environment. ([0049]-[0051], “The wallet server computer 106 may manage and provide services to a user or consumer. The wallet server computer 106 may be associated with a digital wallet account that can store user profile information, payment account information, bank account information, and/or the like and can be used in a variety of transactions.”)
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20160180333 to Leyva in view of United States Patent Application Publication No. 20200202331 to Vudathu and United States Patent No. 7367049 to Robinson, and further in view of United States Patent Application Publication No. 20150324789 to Dvorak.
As per claim 9, Leyva as modified does not explicitly teach, but Dvorak teaches:
wherein the secure wallet issuing unit (TMU-IU) is further configured to issue one or more secure sub-wallets from the issued secure wallet (TMU-Ux) for that user (U) in the electronic transaction system (TS), wherein the wallet identification data (TMU-ID) of the one or more secure sub-wallets is generated from the wallet identification data (TMU-ID) of the issued secure wallet (TMU-Ux) for that user (U) for uniquely identifying the one or more secure sub-wallet in the electronic transaction system (TS), in particular by adding a sub- wallet indicator and/or increasing or adding a count value in the wallet identification data (TMU-ID) of the issued secure wallet (TMU-Ux). ([0059], “Since bitcoin transactions are publicly visible on the block chain ledger, many users generate a new private encryption key, and therefore a new public bitcoin address, for each transaction so that the full balance of their bitcoin wallet isn't known to those they transact with. These encryption keys may be generated randomly or they may be derived from a master key. Each key can also spawn its own chain of derived keys and this is known as a hierarchical deterministic wallet. The addresses generated on one branch are only used for receiving bitcoins. The addresses generated on another branch are only used for buying bitcoins. The addresses generated on the third branch are only used as change addresses, which receive the unspent portions of transaction inputs. By segregating transactions in this way, the wallet architecture itself, as stored on the block chain and without additional logging data, can provide information on when and how many bitcoins were bought, when and how many bitcoins were received, and when and how many bitcoins were sent, while isolating bitcoins that were received from oneself as change from unspent portions of transactions.”)
One of ordinary skill in the art would have recognized that applying the known technique of Dvorak to the known invention of Leyva as modified would have yielded predictable results and resulted in an improved invention. It would have been recognized that the application of the technique would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate such wallet generation features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to issue one or more secure sub-wallets from the issued secure wallet, wherein the wallet identification data of the sub-wallet is generated from the wallet identification data of the master wallet, results in an improved invention because applying said technique ensures that dedicated sub-wallets are used for a specific purpose, i.e. sending money, receiving money, etc., thus improving the overall user convenience of the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent Application Publication No. 20120296741 to Dykes discloses a payment system including a transaction server, a virtual wallet server (VWS), at least one point of sale device including a secure element and being operative to provide secure data communication of a purchaser wallet personal identification number (WPIN), but not purchaser payment particulars, to at least the VWS and at least one mobile communicator communicating a mobile communicator presence indicator (MCPI) but neither the purchaser WPIN nor the purchaser payment particulars to the at least one point of sale device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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/JAY HUANG/Primary Examiner, Art Unit 3619