DETAILED ACTION
Acknowledgements
This Office Action is in response to Applicant’s correspondence filed on 1/20/26.
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, 9-18 are currently pending.
Claims 1, 3-11 are elected without traverse.
Claims 2, 12-18 are withdrawn.
Claims 1, 3-7, 9-11 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, 3-11 in the reply filed on 6/27/25 is acknowledged.
Claims 2, 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention.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 6/27/25.
Response to Arguments
Claim Rejections - 35 U.S.C. § 101
Applicant’s arguments with respect to claim(s) 1, 3-7, 9-11 have been fully considered but are not persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is maintained.
In light of the amendments, the secure token issuer unit is still representative of software since the amendment merely states that the secure token issuer unit is implemented on a hardware module. The secure token issuer unit itself needs to be a physical hardware in order to not be interpreted as software.
Claim Rejections - 35 U.S.C. § 112(a)
Applicant’s arguments with respect to claim(s) 1, 3, 7 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 112(b)
Applicant’s arguments with respect to claim(s) 1, 3-11 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Applicant’s arguments with respect to claim(s) 1, 3, 7 have been fully considered and are persuasive. The rejection (and corresponding rejections to its dependent claims, if applicable) is withdrawn.
Claim Rejections - 35 U.S.C. § 103
Applicant’s arguments with respect to claims 1, 3-7, 9-11 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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, 3-7, 9-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
As per claims 1, 3-7, 9-11, the secure unit is directed to software per se as it consists of units and means. The Specification lacks a lexicographic definition of a unit and a means. Furthermore, one of ordinary skill in the art at time of invention would have interpreted the aforementioned components as software (unit: a single thing or person or group that is a constituent of a whole; Webster's New Collegiate Dictionary, 150th Anniversary Edition; means: an action or system by which a result is brought about; Oxford Languages, 2025 Oxford University Press). 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 § 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, 3-7, 9, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20210182806 to Ornelas in view of United States Patent Application Publication No. 20160260091 to Tobias and United States Patent Application Publication No. 20100268832 to Lucas.
As per claim 1, Ornelas teaches:
A secure token issuer unit of an electronic payment transaction system, implemented in a secure hardware module comprising one or more processors and a non-transitory memory, the secure token issuer unit comprising: a minting unit configured to generate a new token to be issued in the electronic payment transaction system and/or a melting unit configured to delete old tokens to be deleted from the electronic payment transaction system; and an issuer token management unit comprising one or more, new or old, token of the electronic payment transaction system; ([0025], “Governments have an interest in controlling their money supply. In order to create additionally currency, governments will “mint” (or create) more currency and put it into circulation. Conversely, governments can also destroy currency to tighten the supply. Some governments may seek to digitize their currency using a blockchain, e.g., to increase transparency, reduce transaction fees, increase the speed of transactions, bridge the trust gap in transactions, etc.”; [0038], “The system 100 may also include a currency management department 110 within a central bank. A central bank is a governmental or quasi-governmental institution that manages the supply of currency and interest rates for a country or countries and is run by a board of directors (or “governors”), e.g., the Eastern Caribbean Central Bank (ECCB) is an example, which controls the supply of the Eastern Caribbean Dollar (XCD). The currency management department 110 may own and/or operate one or more computing devices 104 used to generate a minting request, e.g., computing device 104-5 through computing device 104-6.”)
wherein the secure token issuer unit is configured to: cause an exchange of tokens with at least one first service provider token management unit of a service provider unit in the electronic payment transaction system; and send registration requests including token references to a token register of the electronic payment transaction system; ([0062]-[0063], “When implemented at a currency management department 110, the computing device 104 may also include an optional formatting module 209 that formats the (singly- or doubly-) signed currency request(s) from the financial institution(s) 112 into a minting request. The client/server module 217 may implement client and/or server functionality to enable the computing device 104 to communicate via at least one network 106. When the computing device 104 is implemented at a financial institution, the client/server module 217 may implement at least some web browser functionality that submits commands to a server (e.g., another computing device 104) to receive, store, perform cryptographic and/or other functions on a currency request. When the computing device 104 is implemented at a currency management department 110, the client/server module 217 may implement at least some web browser functionality that submits commands to a server (e.g., another computing device 104) to receive, store, and/perform cryptographic and/or other functions on a minting request.”; [0057], “In examples, a digital minting module 220 can perform the digital minting using at least one smart contract. In examples, the digital minting module 220 may update (e.g., increase) a scalar value in the distributed ledger 108 (e.g., in the state of the smart contract) that indicates the total supply of tokens/digital currency. Updating this scalar value may include executing a minting transaction in the distributed ledger 108, e.g., newly-minted tokens are sent to an address belonging to the currency management department 110 (e.g., a governor's currency control gateway wallet), after which the newly-minted tokens are optionally transferred to address(es) belonging to the requesting financial institution(s) 112.”)
wherein the secure token issuer unit further comprises a second service provider token management unit provided for the service provider unit, and the second service provider token management unit being provided to comprise a new token received from the issuer token management unit and/or an old token to be send to the issuer token management unit. ([0062]-[0063], “When implemented at a currency management department 110, the computing device 104 may also include an optional formatting module 209 that formats the (singly- or doubly-) signed currency request(s) from the financial institution(s) 112 into a minting request. The client/server module 217 may implement client and/or server functionality to enable the computing device 104 to communicate via at least one network 106.; [0043], “Furthermore, a single private key could optionally be shared between institutions in some examples, e.g., if a group of agents authorized to act on behalf of the currency management department 110 overlaps (or is identical) with a group of agents authorized to act on behalf of the director's office 120.”)
Ornelas does not explicitly teach, but Tobias teaches:
a local unit causing a direct exchange of tokens with a local unit of a separate entity in the electronic payment transaction system; ([0010], “A method for a crypto-coin wallet system has the steps of installing the wallet system on a local computer system to form an instance of a crypto-coin wallet, selecting a crypto-coin type to become a base currency, generating a unique wallet address that is permanently associated with the instance of the wallet, adding one or more crypto-coins to the wallet, wherein each crypto-coin has a unique address, and sending and receiving crypto-coins from a coin address of each coin to form a transaction.”)
One of ordinary skill in the art would have recognized that applying the known technique of Tobias to the known invention of Ornelas 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 cryptocurrency wallet features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to include local cryptocurrency wallets that exchange cryptocurrency tokens with each other results in an improved invention because applying said technique excludes the possibility of network-based wallets being hacked, thus improving the overall security of the invention (Tobias, [0008]).
Ornelas as modified does not explicitly teach, but Lucas teaches:
an exchange unit that is dedicated to a particular client and configured with usage restrictions comprising a sender restriction and a recipient restriction that limit data exchanges of the exchange unit to the server management unit and the client management unit of the particular client; ([0034], “As noted above, the relay server 116 can establish connections with both the client 102 and the server 104 so that data can be relayed from one connection to another.”; [0043], “Connections can be approved or rejected according to any suitable rules (function 312). As noted above, any number of business rules could be implemented to limit or restrict access to the relay server. Such rules may include limiting the feature to particular users, particular servers, and/or particular clients.”)
One of ordinary skill in the art would have recognized that applying the known technique of Lucas to the known invention of Ornelas 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 data exchange features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the second service provider token management unit so it is dedicated to a particular client, i.e. serve provider unit, and configured with usage restrictions comprising a sender restriction and a recipient restriction that limit data exchanges, i.e. token exchanges, of the second service provider token management unit to the server management unit, i.e. the issue token management unit, and the client management unit of the particular client, i.e. the first service provider token management unit of the particular service provider unit, results in an improved invention because applying said technique excludes the ensures that the tokens are only exchanged between authorized entities based on the usage restrictions, thus improving the overall security of the invention.
As per claim 3, Ornelas as modified teaches:
wherein the second service provider token management unit is exclusively provided as an intermediary token management unit of the secure service provider unit between the first service provider token management unit and the issuer token management unit; and/or exclusively provided for the transfer of new tokens issued in the electronic payment transaction system by secure token issuer unit and/or old tokens to be deleted from the electronic payment transaction system by the secure token issuer unit. (see rejection of claim 1)
As per claim 4, Ornelas teaches:
the second service provider token management unit may be a new (second) service provider token management unit for new tokens or an old (second) service provider token management unit for old tokens, wherein the secure unit further comprises a old/new (second) service provider token management unit for old/new tokens respectively; or a (second) service provider token management unit for old and new tokens. ([0062]-[0063])
As per claim 5, Ornelas teaches:
wherein token management units of the electronic payment transaction system, besides one or more token of the electronic payment transaction system, comprise: a token management unit identifier; and/or at least one cryptographic key; and/or a certificate. ([0038], “The currency management department 110 may be considered a “second level” in the signature hierarchy of the digital minting process herein. Accordingly, when a private key is generated for an agent of the currency management department 110 (to be used in signing minting requests), the corresponding public key is recorded in the distributed ledger 108 and designated as a second-level public key.”)
As per claim 6, Ornelas teaches:
wherein the secure unit is configured to access multiple token management units, including the second service provider token management unit, in the secure service provider unit including user token management units of multiple users of the electronic payment transaction system or in the secure token issuer unit including second service provider token management units of multiple service provider units. ([0062]-[0063])
As per claim 7, Ornelas teaches:
wherein the second service provider token management unit is configured to communicate with the first service provider token management unit of the service provider unit and with the issuer token management unit of the token issuer unit, and/or to create one or more replacement tokens based on one or more new token, particularly by performing a switch, split or merge of tokens; ([0062]-[0063])
Tobias teaches:
a local unit causing a direct exchange of tokens with a local unit of a separate entity in the electronic payment transaction system; ([0010])
Ornelas as modified teaches:
the second service provider token management unit configured to exclusively exchange tokens with the first service provider token management unit of the service provider unit and with the issuer token management unit of the token issuer unit by enforcing the sender and recipient usage restrictions; (see rejection of claim 1)
As per claim 9, Ornelas teaches:
a communication interface for accessing a token storage accessible exclusively for the secure unit, wherein the token storage is a token vault. ([0057])
As per claim 11, Ornelas teaches:
wherein the second service provider token management unit is a new token management unit for receiving one or more new token from the issuer token management unit; ([0062]-[0063], [0057])
Tobias teaches:
wherein the second service provider unit is configured to: cause a direct transfer of the received one or more new token to the local unit of a separate entity; and/or is an old token management unit for sending one or more token to be deleted at the token issuer unit, wherein the second service provider unit is configured to: receive the one or more token to be deleted from the first secure management unit of the secure service provider unit; send the one or more token to be deleted to the issuer token management unit. ([0010])
Claim 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 20210182806 to Ornelas in view of United States Patent Application Publication No. 20160260091 to Tobias and United States Patent Application Publication No. 20100268832 to Lucas, and further in view of United States Patent Application Publication No. 20210374731 to Kim.
As per claim 10, Ornelas teaches:
wherein the second service provider token management unit is provided as a single token management unit in which new tokens issued from the token issuer unit are separately managed from old tokens, wherein the separation is assured by: marking the token as new token or as old token to be deleted; and/or providing a token storage exclusively dedicated to the new token or the old token to be deleted; and/or defining dedicated access rights for accessing the new token and the old token to be deleted. ([0062]-[0063], [0057])
Ornelas as modified does not explicitly teach, but Kim teaches:
marking tokens to be deleted at the token issuer unit; ([0036], “In variants, a minter burns tokens via the burn function. The minter specifies the amount of tokens to burn, and the minter must have a balance greater than or equal to the amount.”)
One of ordinary skill in the art would have recognized that applying the known technique of Kim to the known invention of Ornelas 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 cryptocurrency burning features into a similar invention. Further, it would have been recognized by those of ordinary skill in the art that modifying the invention to mark tokens to be deleted at the token issuer unit results in an improved invention because applying said technique allows the central bank to control inflation and create scarcity, thus improving the overall functionality 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. 20220122062 to Mayblum discloses systems and methods for facilitating transactions using a digital currency. In some aspects, a system is described for facilitating a private transaction between a first entity and a second entity using a government issued digital currency issued by a government institution. In some aspects, a system is described for facilitating a transaction between a first entity and a second entity using a digital currency issued by a bank or an entity with a bank charter. In some aspects, a digital wallet is described for one or more digital currencies from one or more financial institutions where the digital wallet is a self-hosted digital wallet. In some aspects, a digital wallet is described for one or more digital currencies from one or more financial institutions, including a line of credit based on a digital currency issued by a financial institution and that is fixed with respect to a fiat currency.
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 JAY HUANG whose telephone number is (408)918-9799. The examiner can normally be reached 9:00a - 5:30p PT.
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, Anita Coupe can be reached at (571) 270-3614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAY HUANG/Primary Examiner, Art Unit 3619