CTFR 18/664,476 CTFR 94102 DETAILED ACTION This is an office action is in response to applicant’s communication dated 1/29/2026. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Response to Amendment Double Patenting Examiner cannot find the “Terminal Disclaimer” filed by the Applicant. Please file a new Terminal Disclaimer in the next response. 101 Step 2A – Prong One analysis. The claims are simply directed to an ordinary payment transaction regardless the type of currency that is conducting. The transaction is related to commercial activities, and/or fundamental economic principles. The mere sending of funds from one person to another captures the essence of business relations. Likewise, the sending of funds in cryptocurrency between users is an action that can be done using a human mind as well. As such, it is still an abstract idea. Step 2A – Prong Two analysis. Applicant contends that “Examiner must consider the entire claims and not just the additional elements in determining whether the claim recites a practical application of the alleged judicial exception.” In fact, Examiner did consider the entire claim by breaking down each of the limitations. If any of the limitations in the claim recites a judicial exception (an abstract idea), then examiner would then evaluate whether any of the limitations in the claim recites additional element that would integrate the exception into a practical application. Therefore, examiner did consider each of the limitations in the claim as well as the ordered combination, not just the pieces in isolation. Applicant further contends that independent claim 1 reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field. Examiner respectfully disagrees. The claimed additional elements are recited at a high level of generality and only perform generic functions such as establishing a transfer of funds. The additional elements merely automate the abstract idea. Each of the additional elements / limitations are no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application. Furthermore, the Specification fails to disclose a solution to a technical problem; MPEP 2106.04(d)(III). The MPEP section cited recites that the "specification must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner…. the examiner should not determine the claim improves technology. Second, if the specification sets for an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The instant claims fail to recite an improvement as argued by the Applicant that would amount to a practical application. Accordingly, even in combination, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The enablement of directing a refund of a cryptocurrency transaction in a shared wallet environment is merely a transaction between wallets. The limitations do not provide a technical solution, they recite a business process, and "it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int'l V. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology." MPEP 2106.05(a) (II). Neither the wallet nor the blockchain (off-chain or on-chain) appear to be improved. As for the Step-2B, 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 integration of the abstract idea into a practical application, the additional elements amount to merely instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. The claim limitations do not improve another technology or technical field, improve the functioning of a computer itself. As such, 101 rejection is maintained. Claims’ Status Claims 1 and 17 are amended. Claims 1-20 are pending and are considered in this action. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp. Claim 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-18 of Patent US12014337B2 (Information transaction infrastructure). Although the claims at issue are not identical, they are patentably distinct from each other because the scope of claim 1 of the present application is broader than and fully encompasses the species claimed in claim 1 of Patent US12014337B2, in which they have common limitations and the same inventive entity. The narrower scope of claim 1 of the Patent US12014337B2 anticipates the broader scope of claim 1 of the instant application because a species always anticipates a genus. Therefore, it would have been obvious to one of ordinary skill in the art to remove or add the additional limitations in the patents/co-pending applications above to result in the instant claims. Claim 1 of the Instant application Claim 1 of Patent US12014337B2 receiving a cryptocurrency balance transfer request from a first party computing device, the cryptocurrency balance transfer request being a request to transfer a cryptocurrency balance from a first party private address to a first party shared public address of a shared wallet service, the first party private address located in a logically protected space of the shared wallet service; receiving, by a service provider computing device, a cryptocurrency balance transfer request from a first party computing device, the cryptocurrency balance transfer request being a request to transfer a cryptocurrency balance from a first party private address associated with the first party to a first party shared public address used to transact cryptocurrency of a plurality of users of a shared wallet service including the first party, the first party shared public address located in the shared wallet service on the service provider computing device and the first party private address located in a logically protected space of the shared wallet service; performing the cryptocurrency balance transfer by sending the cryptocurrency balance from the first party private address to the first party shared public address, the cryptocurrency balance transfer being an off-blockchain; performing the cryptocurrency balance transfer by sending the cryptocurrency balance from the first party private address to the first party shared public address, the cryptocurrency balance transfer being a private off-blockchain transaction between the first-party and the shared wallet service; performing the cryptocurrency transaction by sending the cryptocurrency balance from the first party shared public address to a second party address associated with a second party computing device, wherein the cryptocurrency transaction is provided for public recordal on a blockchain; and performing the cryptocurrency transaction by sending the cryptocurrency balance from the first party shared public address to a second party address associated with a second party computing device, wherein the cryptocurrency transaction is provided for public recordal on a block of a block chain for verification; and receiving a refund transaction refunding the cryptocurrency balance of the cryptocurrency transaction from the second party address to the first party shared public address. receiving, by the service provider computing device , a refund of the cryptocurrency balance of the cryptocurrency transaction from the second party address to the first party shared public address. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03 Per Step 1, Claims 1-8 are drawn to a method; claim 9-16 are drawn to an apparatus; claims 17-20 are drawn to computer program product comprising a non-transitory computer readable medium which are all within the four statutory categories (i.e., a process). Independent claim 1 recites: (claims 9 and 17 being similar in scope): Claim 1: receiving a cryptocurrency balance transfer request from a first party computing device, the cryptocurrency balance transfer request being a request to transfer a cryptocurrency balance from a first party private address to a first party shared public address of a shared wallet service, the first party private address located in a logically protected space of the shared wallet service; performing the cryptocurrency balance transfer by sending the cryptocurrency balance from the first party private address to the first party shared public address, the cryptocurrency balance transfer being an off-blockchain transaction; performing the cryptocurrency transaction by sending the cryptocurrency balance from the first party shared public address to a second party address associated with a second party computing device, wherein the cryptocurrency transaction is provided for public recordal on a blockchain; and receiving a refund transaction refunding the cryptocurrency balance of the cryptocurrency transaction from the second party address to the first party shared public address. Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04 The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers certain methods of organizing human activity: 1) commercial interaction by including agreements in the form of contracts; 2) Fundamental economic principles, but for the recitation of generic computer components. The abstract idea, recited above, includes: receiving a cryptocurrency balance transfer request from a first party computing device, the cryptocurrency balance transfer request being a request to transfer a cryptocurrency balance from a first party private address to a first party shared public address of a shared wallet service; performing the cryptocurrency balance transfer by sending the cryptocurrency balance from the first party private address to the first party shared public address; performing the cryptocurrency transaction by sending the cryptocurrency balance from the first party shared public address to a second party address associated with a second party computing device; receiving a refund transaction refunding the cryptocurrency balance of the cryptocurrency transaction from the second party address to the first party shared public address. If a claim limitation, under its broadest reasonable interpretation, covers performance of limitations 1) commercial interactions by including agreements in the form of contracts; 2) Fundamental economic principles, but for the recitation of generic computer components, it falls within the Certain methods of organizing human activity, grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04. The recited computing elements (claim 9: a first/second party computing device; a processing server; claim 17: one or more non-transitory computer-readable medium) are recited at a high-level of generality, i.e. as generic computing element performing generic computer functions such that it amounts to no more than mere instructions to apply the exception using generic computer components (see MPEP 2106.05(f)). Simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more, since it amounts to no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer, as set forth in MPEP 2106.05(f). The other additional positive element(s): “the first party private address located in a logically protected space of the shared wallet service; wherein the cryptocurrency transaction is provided for public recordal on a blockchain” in claim 1, which amounts to linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) or simply “applying 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 - see MPEP 2106.05(f) Accordingly, these additional claim elements, alone and in combination do not integrate the abstract idea into a practical application, because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05(a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05(b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05(e) and the Vanda memo). Therefore, per Step 2A, Prong Two, the claim is directed to an abstract idea not integrated into a practical application. Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05. Step 2B of the eligibility analysis concludes that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner carries over the analysis from Step 2A related to the generic computing elements being no more than a recitation of the words "apply it" (or an equivalent) to implement an abstract idea or other exception on a computer (MPEP 2106.05(f)). The additional claim elements are simply linking the use of the judicial exception to a particular technological environment or field of use” are mere instructions to implement an abstract idea on a computer, are carried over for further analysis in Step 2B. When the independent claims are considered as a whole, as a combination, the claim elements noted above do not amount to any more than they amount to individually. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. Therefore, it is concluded that the elements of the independent claims are directed to one or more abstract ideas and do not amount to significantly more. (MPEP 2106.05) Further, Step 2B of the analysis takes into consideration all dependent claims as well, both individually and as a whole, as a combination: Claims 2-4 and 6-7 are further directed to additional abstract ideas because the steps performed are simply narrowing the scope of the abstract idea of claim 1 since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. For example, claim 2 further describes generating/transmitting a notification; claim 3 describes sharing the first party public address by the shared wallet service; claim 4 providing the private addresses in the logically protected space of the shared wallet service; claim 6 describes maintaining the first party private address to the first party and the service provider; claim 7 describes sending the refunded cryptocurrency balance; which all of the limitation are narrowing the steps performed in claim 1. Claims 5 and 8 are directed to nonfunctional descriptive material. While these descriptive elements may provide further helpful context for the claimed invention, these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not significantly more than the abstract concept at the core of the claimed invention. Claim 2 describes the first party private address is private; claim 8 describes what first/second computing devices can be. Moreover, the claims in the instant application do not constitute significantly more also because the claims or claim elements only serve to implement the abstract idea using computer components to perform computing functions (Enfish, see MPEP 2106.05(a)). The other dependent claims, claim 10-16 and 18-20, are similar in scope to the claim 2-8 are also rejected for the same reasons provided above. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified in the independent claims as an abstract idea. The fact that the associated computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility. In sum, the additional elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention. Therefore, it is concluded that the dependent claims of the instant application do not amount to significantly more either. (see MPEP 2106.05) In sum, claims 1-20 are rejected under 35 USC 101 as being directed to non-statutory subject matter. Allowable Subject Matter 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Claim 1 contains allowable subject matter. As per claim 1, the closest prior art of record, US20150262137A1 to Armstrong teaches systems and methods of facilitating bitcoin transaction between Off-block chain and on-block chain transactions. What is missing from Armstrong is the fact that Armstrong teaches transferring bitcoins between first and second wallets using available bitcoin address(es). Therefore, the closest prior arts of record fail to teach or suggest, in the context of the bitcoin transaction, the ordered combination of the claim, “the cryptocurrency balance transfer request being a request to transfer a cryptocurrency balance from a first party private address to a first party shared public address of a shared wallet service,…….. performing the cryptocurrency balance transfer by sending the cryptocurrency balance from the first party private address to the first party shared public address, the cryptocurrency balance transfer being an off-blockchain.” Overall, the other closest prior arts are: 1) Moser et al. (Anonymity of Bitcoin Transactions ”An Analysis of Mixing Services”); 2) Kote (US20170109748A1); 3) Ronca et al. (US20150365283); 4) Yang et al. (US20150287026); 5) Hu et al. (US20160125403) , Claims 2-8 are dependent on claim 1 and are allowable because of dependency on claim 1. In addition, claims 9 and 17 are analogous to claim 1, and thus contains allowable subject matter for the same reasons stated above. As such, dependent claims 10-16 and 18-20 are also allowable for the same reasons stated above. The closest prior arts in the field: 1) Armstrong (US20150262137A1); 2) Moser et al. (Anonymity of Bitcoin Transactions ”An Analysis of Mixing Services”); 3) Kote (US20170109748A1); 4) Ronca et al. (US20150365283); 5) Yang et al. (US20150287026); 6) Hu et al. (US20160125403), fail to teach or suggest the ordered combination of: “the cryptocurrency balance transfer request being a request to transfer a cryptocurrency balance from a first party private address associated with the first party to a first party shared public address used to transact cryptocurrency of a plurality of users of the shared wallet service including the first party.” Conclusion THIS ACTION IS MADE Final, necessitated by amendment. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). Any inquiry concerning this communication or earlier communications from the examiner should be directed to YIN Y CHOI whose telephone number is (571)272-1094 or yin.choi@uspto.gov. The examiner can normally be reached on M-F 7:30 - 5:30pm 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, Neha Patel can be reached on 571-270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /YIN Y CHOI/ Examiner, Art Unit 3699 6/7/2026 /NILESH B KHATRI/Primary Examiner, Art Unit 3699 Application/Control Number: 18/664,476 Page 2 Art Unit: 3699 Application/Control Number: 18/664,476 Page 3 Art Unit: 3699 Application/Control Number: 18/664,476 Page 4 Art Unit: 3699 Application/Control Number: 18/664,476 Page 5 Art Unit: 3699 Application/Control Number: 18/664,476 Page 6 Art Unit: 3699 Application/Control Number: 18/664,476 Page 7 Art Unit: 3699 Application/Control Number: 18/664,476 Page 8 Art Unit: 3699 Application/Control Number: 18/664,476 Page 9 Art Unit: 3699 Application/Control Number: 18/664,476 Page 10 Art Unit: 3699 Application/Control Number: 18/664,476 Page 11 Art Unit: 3699 Application/Control Number: 18/664,476 Page 12 Art Unit: 3699 Application/Control Number: 18/664,476 Page 13 Art Unit: 3699 Application/Control Number: 18/664,476 Page 14 Art Unit: 3699 Application/Control Number: 18/664,476 Page 15 Art Unit: 3699 Application/Control Number: 18/664,476 Page 16 Art Unit: 3699
Prosecution Insights